Park Lane Shoes Limited

Trademark Trial and Appeal Board

Sep 6, 2011

No. 79073835 (T.T.A.B. Sep. 6, 2011)

Mailed: 9/6/11

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Park Lane Shoes Limited
________

Serial No. 79073835
_______

Dermot M. Sheridan of Epstein Drangel for Park Lane Shoes
Limited.

Howard Smiga, Trademark Examining Attorney, Law Office 102
(Karen M. Strzyz, Managing Attorney).
_______

Before Quinn, Kuhlke and Taylor, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:
Park Lane Shoes Limited filed an application to
register the mark PARK LANE for “leather and imitation
leather bags and handbags” (in International Class 18); and
“articles of clothing for men, women and children, namely
tops, bottom and jackets; footwear; belts” (in
International Class 25).1

1 Application Serial No. 79073835, filed June 23, 2009, under
Section 66(a) of the Trademark Act, 15 U.S.C. §1141f, based on
International Registration No. 1015828, issued June 23, 2009.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser No. 79073835
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when applied
to applicant’s goods in International Class 25, so
resembles the previously registered mark shown below

for “women’s hosiery and footwear” (in International Class
25)2 as to be likely to cause confusion.
When the refusal to register was made final, applicant
appealed. Applicant and the examining attorney filed
briefs.
So as to be clear, the examining attorney, in his
final refusal, refused registration in both Classes 18 and
25. In his appeal brief, however, the examining attorney
only addressed the refusal in Class 25, indicating the
following in footnote 1: “The applicant’s refusal is
limited to International Class 25 only and does not bar
registration of its goods in International Class 18.”
Accordingly, this appeal only involves Class 25.

2 Registration No. 1294538, issued September 11, 1984; renewed.
Ser No. 79073835
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Applicant argues that the commonality of “PARK” in the
marks is an insufficient basis upon which to find the marks
to be similar. Rather, applicant contends, the marks must
be considered in their entireties and, when so considered,
the marks differ in connotation and overall commercial
impression. Applicant asserts that Park Avenue in
Manhattan is one of the most famous thoroughfares in the
world, conjuring up, in the minds of consumers, images of a
fashionable, glamorous and sophisticated lifestyle in New
York City. The mark PARK AVENUE, as a whole, engenders a
much different commercial impression than does the word
PARK standing alone. Further, applicant’s mark PARK LANE
refers to a well-known street in London, England, an
address synonymous with wealth and an aristocratic English
lifestyle. Although applicant acknowledges that the terms
“avenue” and “lane” may be similar in certain contexts,
when the terms are used in the marks PARK AVENUE and PARK
LANE, applicant contends they are very different.
Moreover, according to applicant, the term “PARK” is weak
when applied to clothing, with applicant pointing to
several third-party registrations that it introduced, most
especially, PARK STREET and PARK PLACE. In support of its
arguments, applicant also submitted information about “Park
Ser No. 79073835
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Avenue” and “Park Lane” retrieved from third-party
websites.
The examining attorney maintains that the goods in
Class 25 are, in part, identical, namely as to “footwear.”
The examining attorney argues that the first portion of the
marks, PARK, is identical, and that this is the portion
most likely to be remembered by purchasers. Further, the
examining attorney asserts, on the basis of dictionary
definitions, that the second portions of the marks, AVENUE
and LANE, have similar meanings, and that, therefore, the
marks have similar connotations and similar overall
commercial impressions.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Ser No. 79073835
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Applicant’s and registrant’s identification of goods
in Class 25 each includes “footwear.” Thus, for purposes
of our likelihood of confusion analysis, the goods are
considered to be legally identical. Likelihood of
confusion may be found based on any item that comes within
the identification of goods in the involved application or
registration. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Given that applicant’s and registrant’s goods are, in
part, identical, we presume that they travel in the same
trade channels (e.g., shoe stores), and that the footwear
is bought by the same classes of purchasers. These classes
would include ordinary consumers, who would be expected to
exercise nothing more than ordinary care in making their
purchasing decision.
The identity or otherwise close relationship between
the goods, and the identity in trade channels and
purchasers are factors that weigh in favor of a finding of
a likelihood of confusion.
We next turn to compare the marks in their entireties
as to appearance, sound, connotation and commercial
impression to determine the similarity or dissimilarity
between them. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
Ser No. 79073835
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1689 (Fed. Cir. 2005). The test, under the first du Pont
factor, 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 that confusion as to the
source of the goods offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Finally, where, as in the present case, the marks are
used on identical goods (at least in part), the degree of
similarity between the marks that is necessary to support a
finding of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992).
The marks share a common first word, PARK. Thus, the
marks are somewhat similar in sound and appearance.
Further, the examining attorney submitted dictionary
definitions of the second words in the respective marks:
“lane: narrow street; a narrow path, road or street,
typically in older town areas or in the countryside, often
enclosed by walls or hedges”; and “avenue: a wide street
or road in a town.” (www.encarta.msn.com). Although the
Ser No. 79073835
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words “avenue” and “lane” may have a vaguely similar
meaning as identifying a type of street or road, the marks
PARK AVENUE and PARK LANE, when considered in their
entireties, nevertheless have different meanings and
commercial impressions.
As often stated, the marks must be considered in their
entireties, and when so compared, PARK AVENUE and PARK LANE
as a whole take on different meanings and commercial
impressions. In this connection, applicant introduced
evidence bearing on these two commonly recognized
locations, Park Avenue in New York City, and Park Lane in
London. The following is of record: “Park Avenue: a wide
thoroughfare extending north to south on the East Side of
Manhattan Island. Traditionally associated with luxurious
apartment houses, it is now the location of many high-rise
commercial buildings.” (www.answers.com); and “Park Lane:
name of a street in the West End of London, running
alongside Hyde Park, used allusively to refer to the
wealthy and aristocratic lifestyle traditionally typified
by it.” (www.encyclopedia.com). Park Lane became a
fashionable address from the eighteenth century onwards,
offering both views across Hyde Park and a position at the
most fashionable western edge of London. Park Lane is the
second most valuable property in the London edition of the
Ser No. 79073835
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MONOPOLY brand game, and has been the address of notable
residents, such as the Duke of Westminster and the former
owner of Harrods. (www.wikipedia.com).
The Board in the past has held that even if similar
marks are used for the same goods, there may be no
confusion as to source if the meanings and/or commercial
impressions of the marks are different. See, e.g., In re
Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987) (CROSS-OVER
for bras held not likely to be confused with CROSSOVER for
ladies’ sportswear, with the term being suggestive of
sportswear that “crosses over” the line between informal
and more formal wear when applied to ladies’ sportswear);
In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984)
(PLAYERS for men’s underwear held not likely to be confused
with PLAYERS for shoes, the Board finding that the term
PLAYERS implies a fit, style, color, and durability adapted
to outdoor activities when applied to shoes, but “implies
something else, primarily indoors in nature,” when applied
to men’s underwear); and In re Sydel Lingerie Co., Inc.,
197 USPQ 629 (TTAB 1977) (BOTTOMS UP for ladies’ and
children’s underwear held not likely to be confused with
BOTTOMS UP for men’s clothing, the Board finding that the
term connotes the drinking phrase “Drink Up” when applied
to men’s suits, coats, and trousers, but does not have this
Ser No. 79073835
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connotation when applied to ladies’ and children’s
underwear). We find this to be the case between the marks
PARK AVENUE and PARK LANE. PARK AVENUE suggests a
lifestyle for an address in New York City. See Philip
Morris, Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d
1487 (TTAB 1990) (PARK AVENUE represents a certain
“upscale, affluent” imagery and style; mark is used to
suggest a sophisticated aura linked to that street
associated with fashionable living in Manhattan). PARK
LANE suggests sophistication associated with a fashionable
address in London. Accordingly, we find that the marks
PARK AVENUE and PARK LANE are different in meaning, and
engender different overall commercial impressions. These
differences outweigh any similarities in sound and
appearance. See Champagne Louis Roederer S.A. v. Delicato
Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998)
(CRISTAL for champagne held not confusingly similar to
CRYSTAL CREEK for wine); and In re Hearst Corp., 982 F.2d
493, 25 USPQ2d 1238 (Fed. Cir. 1992) (VARGAS GIRL for
calendars held not confusingly similar to VARGAS for
calendars).
In finding that the marks have different meanings and
overall commercial impressions, we realize that consumers
in this country may be more familiar with Park Avenue than
Ser No. 79073835
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they are with Park Lane. But, their familiarity with Park
Avenue, in itself, is likely to sufficiently distinguish
the marks in terms of meaning and commercial impression.
We have considered applicant’s evidence of third-party
registrations, including PARK STREET for “industrial
uniforms, namely, shirts” (RN 2073480); and PARK PLACE and
design for clothing (RN 1219913). Suffice it to say, this
evidence is of limited probative value to support
applicant’s position because “[t]he existence of [third-
party] registrations is not evidence of what happens in the
market place or that consumers are familiar with them nor
should the existence on the register of confusingly similar
marks aid an applicant to register another likely to cause
confusion, mistake or to deceive.” AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973); and In re Max Capital Group Ltd., 93 USPQ2d
1243, 1248 (TTAB 2010).
Based on the record before us, we see the likelihood
of confusion as amounting to only a speculative,
theoretical possibility. Because of the differences
between the marks PARK AVENUE and PARK LANE in meaning and
overall commercial impression, we find that the examining
attorney has not met his burden of establishing that
confusion is likely to occur, even when identical goods are
Ser No. 79073835
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involved. Language by our primary reviewing court is
helpful in resolving the likelihood of confusion issue in
this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception, or mistake or with de
minimis situations but with the
practicalities of the commercial world,
with which the trademark laws deal.

Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 21 USPQ2d at 1391 (Fed. Cir. 1992), citing Witco
Chemical Co. v. Whitfield Chemical Co., Inc., 418 F.2d
1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g 153 USPQ
412 (TTAB 1967).
Decision: The refusal to register is reversed.