Panache Lingerie Limited

Trademark Trial and Appeal Board

Feb 7, 2011

No. 77673960 (T.T.A.B. Feb. 7, 2011)

Mailed:
February 7, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Panache Lingerie Limited
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Serial No. 77673960
_______

Ester Martin Maillaro of Holland & Hart LLP for Panache
Lingerie Limited.

Linda A. Powell, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Taylor and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Panache Lingerie Limited (“applicant”) filed an
intent-to-use application to register the mark HARLEQUIN,
in standard character form, for the following goods as
amended:
LINGERIE, ARTICLES OF UNDERCLOTHING FOR LADIES,
NAMELY, BRAS, BRA TOPS, CROP TOPS, BRIEFS, PANTIES,
SHORTS, THONGS, BASQUES, CORSELETTES, CAMISOLE
TOPS, BRA AND BRIEF SETS, BRA AND PANTY SETS,
GARTER BELTS; SWIMWEAR, in Class 25.1

1 A “basque” is “tight-fitting underwear for women which covers
the top part of the body and provides support for the breasts.”
Cambridge Advanced Lerner’s Dictionary (2009)(Cambridge.org). A
“corselette” is “an undergarment combining girdle and brassiere.”
Merriam-Webster’s Online Dictionary (merriam-webster.com). Both
references were attached to the May 12, 2009 Office Action.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77673960
2
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s
mark is likely to cause confusion with the previously
registered mark HARLEQUIN NATURE GRAPHICS LTD, in standard
character form, for “clothing, namely, printed t-shirts,
hats, jackets, polo shirts and pants” in Class 25.2
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973); see also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential

2 Registration No. 3601589, issued April 7, 2009. Registrant
disclaimed the exclusive right to use the term “Nature Graphics
Ltd.”
Serial No. 77673960
3
characteristics of the goods and differences in the
marks”).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn first to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd.,
8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co.,
6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks,
we are mindful that the test is not whether the marks can
be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression so
that confusion as to the source of the goods offered under
the respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
The proper focus is on the recollection of the average
Serial No. 77673960
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customer, who retains a general rather than a specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975). In this case, the average consumer of
applicant’s lingerie, underclothing for ladies, and
swimwear and registrant’s clothing items are ordinary
consumers.
On one hand, the marks at issue are similar in that
they share the word “Harlequin,” but on the other hand, the
marks are different because the registered mark includes
the term “Nature Graphics Ltd.”
In analyzing the marks, we find that the word
“Harlequin” is the dominant portion of the registered mark
because a purchaser would be more likely to remember and
use that part of the mark when referring to the
registrant’s products. It is a well-established principle
that, in articulating reasons for reaching a conclusion on
the issue of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re
Serial No. 77673960
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National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
The significance of the word “Harlequin” as the
dominant element of applicant’s mark is supported by its
location as the first part of the mark. See Presto
Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“it is often the first part of a mark
which is most likely to be impressed upon the mind of a
purchaser and remembered”); see also Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689,
1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part
of the mark VEUVE CLICQUOT because “veuve” is the first
word in the mark and the first word to appear on the
label); Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992) (upon encountering the marks, consumers must first
notice the identical lead word).
Further supporting the importance of the word
“Harlequin” in the registered mark is the fact that the
goods in the cited registration are printed t-shirts, hats,
jackets, shirts and pants. Thus, the term “Nature Graphics
Ltd” suggests, if not describes, the designs printed on the
products. See In re National Data Corp., 224 USPQ at 751
(“That a particular feature is descriptive or generic with
Serial No. 77673960
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respect to the involved goods or services is one commonly
accepted rationale for giving less weight to a portion of a
mark”). In this regard, we note that registrant disclaimed
the exclusive right to use the term “Nature Graphics Ltd.”
We also note that the word “Harlequin” has no inherent
meaning in connection with clothing and, thus, when used as
part of a mark in connection with clothing products, it is
a strong term entitled to a broad scope of protection. As
a noun, “Harlequin” is defined as follow:
1. A conventional buffoon of the
commedia dell’arte, traditionally
presented in a mask and parti-
colored tights.

2. A clown; buffoon.

3. A small duck.

As an adjective, “Harlequin” is defined as follows:
1. Bright; parti-colored; spangled,
suggesting the dress of Harlequin.

2. Having frames that flare in an
upward slant, suggesting the slits
of Harlequin’s mask.3

Applicant argues to the contrary that as used in
connection with registrant’s clothing, the word “Harlequin”
in the mark HARLEQUIN NATURE GRAPHICS LTD means a small

3 The American Heritage Dictionary of the English Language (1981)
attached to applicant’s April 21, 2010 Request for
Reconsideration.
Serial No. 77673960
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duck emphasizing the term “Nature Graphics,” and when used
in connection with lingerie and women’s undergarments, the
word “Harlequin” means bright and parti-colored engendering
a “sexy and girly” female commercial impression.4 Suffice
it to say that we are not persuaded by applicant’s argument
because there is nothing in the record to support its
contention that the average consumer will perceive
registrant’s use of the word “Harlequin” as engendering the
commercial impression of a duck and applicant’s use of the
word “Harlequin” as meaning bright and parti-colored or
that “harlequin” is associated with “sexy and girly.”
Furthermore, there is nothing in the record describing
applicant’s goods or indicating that applicant intends to
design and sell parti-colored clothing.5
In analyzing the two marks in light of the foregoing,
we find them to be more similar than dissimilar in terms of
appearance, sound, meaning and commercial impression.
Specifically, we find that the addition of the term “Nature
Graphics Ltd” in the registered mark, although describing
the designs or prints appearing on the clothing, is not

4 Applicant’s April 21, 2010 Request for Reconsideration.
5 If applicant’s clothing is indeed parti-colored, there could be
an issue as to whether applicant’s mark is merely descriptive.
Also, in its September 5, 2009 Response, applicant claims to have
attached excerpts from its website, but they were not made of
record.
Serial No. 77673960
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sufficient to differentiate the two marks. Consumers who
are familiar with the registered mark used on clothing are
likely to believe, upon seeing applicant’s mark on its
identified goods, that applicant has adopted a shortened
form of its mark, and that HARLEQUIN is merely a variation
of the registered mark, with both marks indicating a single
source of the goods. See also the discussion below
regarding lingerie, undergarments and swimwear with animal
print designs.
B. The similarity or dissimilarity and nature of the
goods described in the application and goods described
in the registration, likely-to-continue trade channels
and classes of consumers.

To show that applicant’s lingerie, undergarments for
women, and swimwear are related to the clothing listed in
the registration, the examining attorney submitted third-
party registrations identifying different types of apparel.
Third-party registrations which individually cover a number
of different products that are based on use in commerce may
have some probative value to the extent that they serve to
suggest that the listed products are of a type which may
emanate from the same source. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky
Serial No. 77673960
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Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Representative registrations are listed below.6
Mark Registration
No.
Goods/Services
PEAKE 3241544 Swimwear, t-shirts, jackets,
underwear, lingerie, hats

WILLOW RIDGE 3193041 T-shirts, jackets, lingerie,
underwear, foundation garments,
body shapers, corsets,
brassieres, panties, camisoles

S and design 3424421 T-shirts, jackets, swimsuits,
underwear, lingerie, hats

DEMI COUTURE
WORLD
3617633 Bathing suits, bras, bustiers,
camisoles, hats, jackets,
lingerie, panties, t-shirts

TEAM SEXY 3555382 Jackets, t-shirts, lingerie,
hats, bras, panties, camisoles,
swimwear

The examining attorney also submitted excerpts from
websites from several clothing manufacturers showing that
the same company produces the clothing identified in both
the application and the registration. The following
website excerpts were made of record:7

6 We have not included the entire description of goods listed in
each registration. Only the goods found in both applicant’s
application and the cited registration or encompassing such goods
are listed.
7 We did not consider the excerpt from the FRUIT OF THE LOOM
website (fruitoftheloom.co.uk) because it is from a foreign
source and the examining attorney did not explain why U.S.
consumers would access the foreign website instead of the U.S.
website.
Serial No. 77673960
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1. HANES (hanes.com) displaying HANES t-shirts,
pants, polo shirts, dress shirts, bras and panties.
2. Shopstyle.com online clothing retailer
advertising VICTORIA SECRET t-shirts, bras, camisoles,
thongs, and pants.
3. Yahoo! Shopping (yahoo.com) advertising LAND’S END
lingerie, bras, and panties and LAND’S END (landsend.com)
advertising a full line of men’s and women’s clothing.
4. JOCKEY (jockey.com) advertising a full line of
men’s and women’s clothing including women’s underwear,
pants, t-shirts and men’s t-shirts, shorts, and jackets.
Finally, the examining attorney submitted excerpts
from websites promoting the sale of women’s lingerie,
undergarments and swimwear featuring animal graphics. For
example,
1. Cafe Press (cafepress.com) advertising underwear
and panties with inter alia coyote and duck designs;
2. Sears (sears.com), Shopzilla.com, Myra Boutique
(myraboutique.com), Pronto Style (prontostyle.com)
advertising panties and swimwear with animal graphics
(e.g., zebra stripes, tiger stripes, leopard spots, etc.);
3. Yandy.com advertising animal print lingerie.
Because lingerie and women’s undergarments are decorated
with animal graphics, these website excerpts demonstrate
Serial No. 77673960
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that, even if we accept applicant’s argument about the
connotation of the registrant’s mark, because applicant’s
identified goods can include lingerie, undergarments and
swimwear with animal print designs, consumers are likely
to ascribe the same connotation to applicant’s mark, and to
believe, upon seeing the mark HARLEQUIN on applicant’s
identified goods, that applicant’s products emanate from
the same source as the clothing identified by HARLEQUIN
NATURE GRAPHICS LTD.
In view of the foregoing, we find that the goods are
related. Moreover, because there are no limitations as to
channels of trade or classes of purchasers in the
description of goods in either the application or the
registration, we must presume that applicant’s lingerie,
women’s underclothing and swimwear and registrant’s printed
t-shirts, hats, jackets, polo shirts and pants
move in all channels of trade normal for those goods, and
that they are available to all classes of purchasers for
the listed gods. See In re Linkvest S.A., 24 USPQ2d 1716,
1716 (TTAB 1992). The webpages submitted by the examining
attorney show, at the very least, that applicant’s and the
registrant’s identified goods move in the same channels of
trade. Moreover, because of the complementary nature of
the products, with undergarments being used in conjunction
Serial No. 77673960
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with outerwear, we also find that they are sold to the same
classes of consumers.
C. The conditions under which and buyers to whom sales
are made (i.e., “impulse” vs. careful, sophisticated
purchasing).

Applicant argues that the products identified in the
application are purchased with a high degree of care.
Applicant’s goods are lingerie and
swimwear, both of which are careful and
personal purchases made by the girls
and women who wear them and selection
is primarily based on fit. The
clothing offered under the Cited Mark,
printed t-shirts … are usually impulse
buys based primarily on the aesthetics
of the t-shirts, specifically, the
nature designs printed on the front.8

The problem with applicant’s argument is that, even if
the purchases are made with care, the care is focused on
the fit rather than the source of the goods. Applicant’s
contention that its consumers exercise a high degree of
care such that there is no likelihood of confusion is not
supported by the record or even its own arguments. In any
event, the marks are so similar that, even if consumers
note the presence or absence of the descriptive words
NATURE GRAPHICS LTD, they will not, for the reasons
previously discussed, ascribe the differences to a
difference in the source of the goods.

8 Applicant’s Brief, p. 1.
Serial No. 77673960
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D. Balancing the factors.
Because the marks are similar, the goods are related,
and move in the same channels of trade and are sold to the
same classes of consumers, we find that applicant’s mark
HARLEQUIN for lingerie, women’s undergarments and swimwear
is likely to cause confusion with Registration No. 3601589
for the mark HARLEQUIN NATURE GRAPHICS LTD for “clothing,
namely, printed t-shirts, hats, jackets, polo shirts and
pants.”
Decision: The refusal to register is affirmed.