Panache Lingerie LimitedDownload PDFTrademark Trial and Appeal BoardFeb 7, 2011No. 77673960 (T.T.A.B. Feb. 7, 2011) Copy Citation Mailed: February 7, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Panache Lingerie Limited ________ 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 4 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 5 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 6 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 7 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 8 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 9 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 10 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 11 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 12 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 13 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. Copy with citationCopy as parenthetical citation