Paul Stuart, Inc.

Trademark Trial and Appeal Board

Jul 5, 2007

No. 78246819 (T.T.A.B. Jul. 5, 2007)

Hearing: Mailed: 7/5/07
3/8/07

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Paul Stuart, Inc.
________

Serial No. 78246819
_______

Paul Fields, Laura J. Winston and Kathryn A. Starnella of
Darby & Darby for Paul Stuart, Inc.

Barbara A. Gaynor, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Quinn, Bucher and Cataldo, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Paul Stuart, Inc. filed an application to register the
mark SILKY POWDER (“SILKY” disclaimed) for “clothing,
namely, suits, pants, skirts, and jackets” in International
Class 25.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that

1 Application Serial No. 78246819, filed May 7, 2003, alleging a
bona fide intention to use the mark in commerce. Applicant
subsequently filed an amendment to allege use setting forth dates
of first use of July 15, 2003.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78246819
2
applicant’s mark, as used in connection with applicant’s
goods, so resembles the previously registered mark shown
below

for “clothing, namely, underwear, undergarments,
undershirts, underpants, thongs, t-shirts, pajamas,
sleepwear, sleep shirts, socks, blouses, dresses, panties,
pants, skirts, jackets, jeans, swimwear, sweatshirts and
hats” in International Class 252 as to be likely to cause
confusion.
When the refusal to register was made final, applicant
appealed. Applicant and the examining attorney filed
briefs. An oral hearing was held at which applicant’s
attorney and the examining attorney appeared.
Applicant argues, in urging reversal of the refusal,
that the involved marks are different in sight, sound and
meaning. Applicant also contends that, in view of the
existence of third-party registered marks of POWDER-
formative marks in the clothing field, the cited mark is

2 Registration No. 2843001, issued May 18, 2004.
Ser No. 78246819
3
entitled to only a narrow scope of protection. In
connection with this argument, applicant submitted five
third-party registrations that, applicant asserts,
demonstrate that the Office “has ascertained an improbable
likelihood of consumer confusion among these marks for
clothing products.” (Brief, p. 10).
The examining attorney maintains that the goods are
identical in part, and otherwise are closely related. As
to the marks, the examining attorney contends that they are
similar inasmuch as applicant essentially has adopted the
entirety of the literal portion of registrant’s mark and
merely added the descriptive word “silky” to it. The
examining attorney is not persuaded by the third-party
registration evidence, stating that none of the five
registered marks is as close to the cited mark as is
applicant’s mark. In support of the refusal, the examining
attorney submitted a dictionary definition of the word
“silky.”
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.
Ser No. 78246819
4
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also: In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Insofar as the goods are concerned, the goods are
identical in part, or otherwise are related. The
identifications of goods in the application and the cited
registration both list “pants, skirts, [and] jackets.”
Given that applicant’s and registrant’s goods are
legally identical or otherwise related, we assume that
these goods travel in the same channels of trade (e.g.,
retail clothing stores, boutiques, etc.), and that the same
classes of purchasers buy these goods. These purchasers
would include ordinary consumers who would be expected to
exercise nothing more than ordinary care in buying either
applicant’s or registrant’s goods.
That the goods are legally identical in part, and that
they move in the same trade channels to the same purchasers
are factors that weigh heavily in favor of a finding of a
likelihood of confusion.
Ser No. 78246819
5
We next turn to compare registrant’s mark POWDER and
design with applicant’s mark SILKY POWDER. In determining
the similarity or dissimilarity of the marks, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 their entireties 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.
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). Finally, where, as in the present case, the marks
appear on, at least in part, legally identical goods, 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).
With respect to the cited mark, it is well settled
that one feature of a mark may be more significant than
another, and it is not improper to give more weight to this
Ser No. 78246819
6
dominant feature in determining the commercial impression
created by the mark. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) [“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
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.”] For
example, in the past it has been stated that the literal
portion of a mark dominates a design feature because
consumers will use the literal portion to refer to the
goods. Ceccato v. Manifattura Lane Gaetano Marzotto &
Figli S.p.A., 32 USPQ2d 1192 (TTAB 1994); and In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). We
find this clearly to be the case with registrant’s mark.
The literal element, POWDER, is the dominant element of the
mark and is therefore accorded greater weight in
determining the likelihood of confusion. Although we
acknowledge that there is no general rule as to whether a
word or a design dominate in any particular mark, it is
highly unlikely that consumers will remember the rather
non-distinct background design in registrant’s mark. We
disagree with applicant’s assessment that the design
feature is “significant.” (Reply Brief, p. 3). Rather,
Ser No. 78246819
7
given the easily pronounced word “Powder,” it is far more
likely that this term will be the element remembered and
used by customers in buying registrant’s clothing.
Applicant’s mark SILKY POWDER is similar to the
dominant element, “POWDER,” in registrant’s mark.
Applicant has merely added a descriptive, disclaimed term
to the literal portion of registrant’s mark. The term
“silky” is defined, in pertinent part, as “resembling silk;
lustrous.” The American Heritage Dictionary of the English
Language (3d ed. 1992). Given the descriptiveness of this
term for applicant’s goods, and the fact that it has been
disclaimed, the addition of “SILKY” in applicant’s mark
does not serve to sufficiently distinguish it from
registrant’s mark. The general rule is that a subsequent
user may not appropriate the entire mark of another and
avoid a likelihood of confusion by adding descriptive or
subordinate matter thereto. See, e.g., Hewlett-Packard Co.
v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002) [HEWLETT PACKARD and PACKARD TECHNOLOGIES]; In
re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988)
[MACHO and MACHO COMBOS]; In re Equitable Bancorporation,
229 USPQ 709 (TTAB 1986) [RESPONSE and RESPONSE CARD]; and
In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) [CONFIRM
and CONFIRMCELLS]. Although applicant adopted the entirety
Ser No. 78246819
8
of only the literal portion of registrant’s mark, the same
principle applies here.
The marks involved herein, POWDER and design, and
SILKY POWDER, are similar in sound and appearance. Neither
the stylization of the letters in “POWDER” nor the design
feature in registrant’s mark serves to sufficiently
distinguish the marks in appearance. As to meaning, the
term “silky” accentuates or further defines the term
“powder,” giving applicant’s mark a lustrous image. Thus,
we agree with applicant that its mark suggests a smoothness
or softness about the feel of applicant’s clothing, a
suggestion not present in registrant’s mark. Nonetheless,
the terms “silky” and “powder” go together, and the
involved marks, when applied to identical goods, engender
sufficiently similar overall commercial impressions.
Consumers familiar with registrant’s pants, skirts and
jackets sold under the mark POWDER and design are likely to
mistakenly believe that the mark SILKY POWDER identifies a
silk line of clothing sold by registrant.
In attempting to distinguish the marks, applicant
points to the existence of five third-party registrations
of POWDER-formative marks. Applicant essentially argues
that if these third-party registered marks can peacefully
Ser No. 78246819
9
coexist on the register, then applicant’s and registrant’s
marks likewise can peacefully coexist.
The third-party registration evidence is entitled to
limited probative value. The registrations are not
evidence of use of the marks shown therein and they are not
proof that consumers are familiar with such marks so as to
be accustomed to the existence of similar marks in the
marketplace, and as a result would be able to distinguish
between the POWDER marks based on differences between them.
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177
USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc. v.
Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). In any
event, as thoroughly discussed by the examining attorney,
each of the third-party registered marks, GOT POWDER?,
POWDER ROOM, POWDER BLU, POWDER RIVER and POWDER BANDIT,
has a meaning and commercial impression different from each
other and from registrant’s mark. (Appeal Brief, pp. 9-
10). Contrary to the gist of applicant’s argument, we view
applicant’s mark to be closer in sound, appearance, meaning
and commercial impression to registrant’s mark than any of
the third-party registered marks.
We conclude that consumers familiar with registrant’s
pants, skirts, and jackets sold under the mark POWDER and
design would be likely to believe, upon encountering
Ser No. 78246819
10
applicant’s mark SILKY POWDER for the identical clothing
items, that the goods originated with or are somehow
associated with or sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.