Peek & Cloppen-burg KG

Trademark Trial and Appeal Board

Sep 22, 2006

No. 76051090 (T.T.A.B. Sep. 22, 2006)

Mailed: September 22, 2006
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark
Trial and Appeal Board
________

In re Peek & Cloppenburg KG
________

Serial No. 76051090
_______

William D. Raman and H. Lisa Calico of Wong, Cabello, Lutsch,
Rutherford & Brucculeri, L.L.P. for Peek & Cloppenburg KG.

Connie Kan, Trademark Examining Attorney, Law Office 107 (Leslie
Bishop, Managing Attorney).
_______

Before Quinn, Hohein and Zervas, Administrative Trademark Judges.

Opinion by Hohein, Administrative Trademark Judge:

Peek & Cloppenburg KG has filed an application to
register on the Principal Register in standard character form the
mark "JAKE'S" for "outer clothing, namely, shirts, pants,
blouses, skirts, T-shirts, tank tops, dresses, belts, footwear,
coats, hats, gloves, jackets, pajamas, robes, shorts, swimwear,
vests, caps and baby clothing" in International Class 25.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that

1 Ser. No. 76051090, filed on May 16, 2000, which is based on both an
allegation of a bona fide intention to use such mark in commerce and
ownership of German Reg. No. 1098578, which issued on September 16,
1986 and expires on September 30, 2006. The above identification of
goods is as ultimately set forth by applicant in an amendment, which
was approved, that it included with a request for reconsideration.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 76051090
2
applicant's mark, when applied to its goods, so resembles the
following marks, which are registered by the same registrant on
the Principal Register in standard character form in
International Class 25 for the goods set forth below, as to be
likely to cause confusion, or to cause mistake, or to deceive:
(i) the mark "JAKE & CO.," which is
registered for (a) "men's and boys' boxer
underwear shorts";2 (b) "adult, children['s]
and infants['] knit underwear, thermal
undergarments and boxer shorts";3 and (c)
"men['s] and boys['] socks and hosiery";4 and

(ii) the mark "JAKE JR.," which is
registered for "boys' woven knit and thermal
underwear, boxer shorts, undershirts, briefs,
socks, hosiery and neckties."5

Applicant has appealed. Briefs have been filed,6 but
an oral hearing was not held. We affirm the refusal to register.

2 Reg. No. 1,687,935, issued on May 19, 1992, which sets forth a date
of first use of the mark anywhere and in commerce of November 8, 1990;
renewed. The phrase "& CO." is disclaimed.

3 Reg. No. 2,009,330, issued on October 22, 1996, which sets forth a
date of first use of the mark anywhere and in commerce of December 13,
1993; combined affidavit §§8 and 15. The phrase "& CO." is
disclaimed.

4 Reg. No. 2,014,746, issued on November 12, 1996, which sets forth a
date of first use of the mark anywhere of November 8, 1990 and a date
of first use thereof in commerce of May 18, 1994; combined affidavit
§§8 and 15. The phrase "& CO." is disclaimed.

5 Reg. No. 2,021,696, issued on December 10, 1996, which sets forth a
date of first use of the mark anywhere of November 3, 1991 and a date
of first use thereof in commerce of March 31, 1992. The term "JR." is
disclaimed.

6 With respect to the evidence attached as Exhibit A to applicant's
brief, which applicant states consists of "copies of records from the
Canadian Intellectual Property Office's Trademark Database," the
Examining Attorney in her brief has objected to consideration thereof,
accurately observing that "applicant improperly submits evidence that
was not previously provided to the trademark examining attorney."
Inasmuch as such evidence is clearly untimely under Trademark Rule
2.142(d), the objection is sustained. It is pointed out, however,
that even if such evidence, which applicant maintains shows the
coexistence of Canadian registrations for the mark "JAKE & CO" for
Ser. No. 76051090
3
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods at issue and the similarity or
dissimilarity of the respective marks in their entireties.7
Turning first to consideration of the goods at issue,
applicant notes in its brief that while it "realizes that the ...
respective goods can be classified as clothing items," it insists
nonetheless that "there cannot be a per se rule that all clothing
items are necessarily similar or related goods" such that "there
must be a likelihood of confusion from the use of similar marks
in relation thereto." According to applicant, "clothing is a
very broad, general category, having an entire classification of
goods (Class 25) devoted to it," and thus "[t]he mere fact that
the respective goods may fall into the broad category of clothing
is insufficient to establish that the goods are so related."

"shorts, being underwear for men and boys," and the mark "JAKE'S" for
various items of "clothing," were to be given consideration, it would
make no difference in the disposition of this appeal. See, e.g.,
Person's Co. Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1479
(Fed. Cir. 1990) ["[t]he concept of territoriality is basic to
trademark law; trademark rights exist in each country solely according
to that country's statutory scheme"].

7 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
Ser. No. 76051090
4
Here, with the obvious exception of "neckties" and "hosiery"
items, applicant argues that the goods at issue "are designed for
inherently different purposes, [with] the Applicant's being for
outerwear, while the registrant's are underwear." Applicant also
contends that, aside therefrom, "there is no 'under the same
roof' rule that all products with similar marks sold in a store
will cause confusion." Applicant asserts, instead, that:
Although the respective goods might be found
in similar types of stores, the goods are
typically offered in different areas of the
stores in which they are sold. Therefore,
Applicant respectively submits that the
respective products have dissimilarities
which support a finding of no likelihood of
confusion.

In support of its position, applicant points to the
following cases in which the Board "compared identical or nearly
identical marks offered in connection with different articles of
clothing, and found no likelihood of confusion," as demonstrating
that "different clothing items, such as underwear and outerwear,
can be sufficiently dissimilar so as to support a finding of no
likelihood of confusion, even where the marks are identical"
(emphasis in original):
The ... Board has considered several
cases similar to the instant case and
determined that various clothing goods were
sufficiently dissimilar. For example, in In
re British Bulldog, Ltd., 224 U.S.P.Q. (BNA)
854 (Trademark Trial & App. Bd. 1984), the
... Board reversed a § 2(d) refusal to
register the mark PLAYERS for men's
underwear, finding no likelihood of confusion
with the identical mark PLAYERS for shoes.
The Board remarked that the goods in question
"are distinctly different in nature; when

essential characteristics of the goods and differences in the marks."
192 USPQ at 29.
Ser. No. 76051090
5
sold in the same stores, e.g., department
stores, they would ordinarily be displayed in
different sections thereof; they are not
complementary or companion items. Id.

Moreover, in In re Sears[,] Roebuck and
Co., 2 U.S.P.Q. (BNA) 1312 (Trademark Trial &
App. Bd. 1987), the Board reversed a § 2(d)
refusal to register the mark CROSS-OVER for
bras (i.e., underwear), and held that the
mark was not likely to be confused with the
mark CROSSOVER for ladies' sportswear, namely
tops, shorts and pants. The Board
acknowledged that they are "clearly related
in that they are all clothing items" but
found a competitive difference between the
respective products since "they are different
types of clothing, having different uses, and
are normally sold in different sections of
department stores." Id. The Board cautioned
against "disregarding the competitive
distance between different items of apparel
considered in light of the particular facts
disclosed in each case ...." Id.

Furthermore, in In re Sydel Lingerie
Co., 197 U.S.P.Q. (BNA) 629 (Trademark Trial
& App. Bd. 1977), the Board reversed a § 2(d)
refusal to register the mark BOTTOMS UP for
ladies' and children's underwear, and held
that the mark was not likely to be confused
with the identical mark BOTTOMS UP for men's
suits, coats, and trousers. The Board
remarked that "The fact that applicant's
underwear and men's coats, suits and trousers
may be found in some of the same types of
stores, such as department stores and similar
establishments, which house a wide variety of
products ..., while relevant in a Section
2(d) situation, is not controlling thereon."
Id. at 630.

Finally, in In re Palm Beach Inc., 225
U.S.P.Q. (BNA) 785 (Trademark Trial & App.
Bd. 1985), the Board found no likelihood of
confusion between the mark ADLER (stylized)
for pants and the identical mark ADLER for
knitted socks. The Board stated that while
the respective marks of applicant and
registrant are closely related, "pants and
knitted socks are specifically different
items of clothing which are normally
Ser. No. 76051090
6
displayed in different sections of the stores
in which they are sold." Id. at 787-88.

The Examining Attorney, on the other hand, properly
points out in her brief that the goods at issue need not be
identical or directly competitive in order for there to be a
likelihood of confusion. Instead, it is sufficient that the
respective goods are related in some manner and/or that the
circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed in
connection therewith, to the mistaken belief that they originate
from or are in some way associated with the same producer or
provider. See, e.g., In re Martin's Famous Pastry Shoppe, Inc.,
748 F.2d 156, 223 USPQ 1289, 1290 (Fed. Cir. 1984); Monsanto Co.
v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978); and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978). Moreover, it is well settled that the issue of
likelihood of confusion must be determined on the basis of the
goods as they are set forth in the application and the cited
registration, and not in light of what such goods may actually
be. See, e.g., Octocom Systems Inc. v. Houston Computer Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990);
Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987); CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983);
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983); and Paula Payne Products Co. v. Johnson Publishing
Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Ser. No. 76051090
7
Based upon such principles, the Examining Attorney
contends that:
[I]t is therefore assumed that
registrant's and applicant's goods are sold
everywhere that is normal for such items,
i.e., clothing and department stores. Thus,
it can also be assumed that the same classes
of purchasers shop for these items and that
consumers are accustomed to seeing them sold
under the same or similar marks. See Kangol
Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161,
23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith
and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).

Moreover, with respect to applicant's argument that its outerwear
and registrant's underwear items are such specifically different
goods that confusion is unlikely, the Examining Attorney
accurately points out that:
[T]he Board [as well as its primary reviewing
court] has frequently held many different
types of apparel to be related under Section
2(d), including outerwear and underwear.
Cambridge Rubber Co. v. Cluett, Peabody &
Co., Inc., 286 F.2d 623, 128 USPQ 549
(C.C.P.A. 1961) ("WINTER CARNIVAL" for
women's boots v. men's and boys' underwear);
Jockey Int'l, Inc. v. Mallory & Church Corp.,
25 USPQ2d 1233 (TTAB 1992) ("ELANCE" for
underwear v. "ELAAN" for neckties); In re
Melville Corp.[,] 18 USPQ2d 1386 (TTAB 1991)
("ESSENTIALS" for women's pants, blouses,
shorts and jackets v. women's shoes); In re
Pix of America, Inc., 225 USPQ 691 (TTAB
1985) ("NEWPORTS" for women's shoes v.
"NEWPORT" for outer shirts); In re Mercedes
Slacks, Ltd., 213 USPQ 397 (TTAB 1982)
("OMEGA" for hosiery v. trousers): In re Cook
United, Inc., 185 USPQ 444 (TTAB 1975)
("GRANADA" for men's suits, coats, and
trousers v. ladies' pantyhose and hosiery);
Esquire Sportswear Mfg. Co. v. Genesco Inc.,
141 USPQ 400 (TTAB 1964) ("SLEEX" for
brassieres and girdles v. slacks for men and
young men).

Furthermore, the Examining Attorney insists, "the similarity
between the applicant's mark and the registered marks makes it
Ser. No. 76051090
8
all the more likely that consumers would mistakenly believe that
the applicant's and the registrants' [sic] goods come from the
same source."
We agree with the Examining Attorney that, on the facts
of this case, applicant's various items of outerwear must be
considered closely related articles of apparel to registrant's
underwear, such as undershirts and briefs, and its socks, hosiery
and neckties. That is, while we recognize that the respective
goods are, for the most part, specifically different items of
apparel which would typically be sold in different sections of
department and clothing stores, it is nonetheless the case that
the purchasers for such goods are identical, namely, ordinary
consumers, and that they have become accustomed to encountering
lines of clothing under marks which encompass collections of
apparel ranging from outerwear garments to underwear items. At
the very least, it is clear that applicant's T-shirts, while
nominally items of outerwear, could also be worn, like
registrant's boxer shorts, undershirts and brief, as underwear
and that registrant's neckties could be worn as complementary
items to applicant's shirts. Circumstances are thus such that if
the goods at issue were to be marketed under the same or similar
marks, confusion as to the source or affiliation of such goods
would be likely to occur.
Moreover, in finding the respective goods to be closely
related in a commercial sense, we have not ignored the cases
cited by applicant; instead, we find that they are readily
distinguishable from the facts herein. In particular, the Palm
Ser. No. 76051090
9
Beach case involved two detailed letters of consent to the
registration sought therein. The Board, in light thereof, held
that (emphasis added):
[W]e are convinced that there is no
reasonable likelihood of confusion. In this
regard, we note that while the respective
marks of applicant and registrant are
substantially similar and their goods are
closely related (facts which, taken alone,
serve as an indication that confusion may be
likely), still, pants and knitted socks are
specifically different items of clothing
which are normally displayed in different
sections of the stores in which they are
sold. Added to the specific differences in
the goods are certain other, very persuasive,
evidentiary factors, namely, the more than
forty-five years of contemporaneous use of
the respective marks ... without any known
instances of confusion, the belief of
applicant and two successive owners of the
cited registration that there is no
likelihood of confusion by reason of the
continued use of the marks, and the
willingness of both of the successive owners
of the cited registration to consent to
applicant's use and registration of its mark
"ADLER" and design for pants.

In re Palm Beach Inc., supra at 787-88. By stark contrast, this
appeal involves none of the "certain other, very persuasive,
evidentiary factors" which were present in the Palm Beach case
and which led the Board to "conclude that there is no real
likelihood of confusion." Id. at 788. Likewise, a critical
factor in the Sears case, which is missing herein, was the
presence of a consent agreement with supporting affidavits. As
the Board, in finding no likelihood of confusion, carefully
pointed out therein (emphasis added; footnote omitted):
[T]he agreement here was originally executed
well prior to the filing of applicant's
involved application, in order to settle a
Ser. No. 76051090
10
potential opposition by applicant against the
application which thereafter matured into
registrant's registration. The consent
agreement contains, inter alia, not only
consent to use provisions, but also the
parties' expressed belief that there is no
likelihood of confusion because of the
differences in their respective goods, and
(in the amended agreement) provisions
specifically barring each party from using
its mark on the type of goods sold under the
other party's mark. The agreement is
supported by recent affidavits attesting, on
behalf of each party, to an absence of
knowledge of instances of actual confusion
despite continuous, contemporaneous use of
the respective marks of the parties since
registrant's first use in April of 1982.
.... In short, ... this agreement ... is
entitled to consideration as a factor to be
taken into account in our determination of
the issue of likelihood of confusion.

In re Sears, Roebuck & Co., supra at 1314.
In addition, the Sears case, like the British Bulldog
and Sydel Lingerie cases cited by applicant, are distinguishable
for the reason that each of such cases featured marks which, when
used in connection with the respective goods involved therein,
projected significantly different meanings and hence engendered
sufficiently different overall commercial impressions so as to
preclude a likelihood of confusion. Specifically, as observed by
the Board in Sears (emphasis added):
The second additional factor to be
considered is the different meanings which
the involved marks project when they are
applied to the differing goods of the
applicant and registrant. We agree with
applicant that its mark "CROSS-OVER", when
applied to brassieres, is suggestive of the
construction of the brassieres. Registrant's
mark "CROSSOVER", on the other hand, conveys
no such meaning when applied to ladies'
sportswear, namely, tops, shorts, and pants.
Rather, it appears to us that registrant's
Ser. No. 76051090
11
mark is likely to be perceived by purchasers
either as an entirely arbitrary designation,
or as being suggestive of sportswear which
"crosses over" the line between informal and
more formal wear (i.e., is appropriate for
either use), or the line between two seasons.
As a result of their different meanings when
applied to the goods of applicant and
registrant, the two marks create different
commercial impressions, notwithstanding the
fact that they are legally identical in sound
and appearance.

In connection with the foregoing, we
note that in other close cases of this
nature, ... such factor has played an
important role in this Board's conclusion of
no likelihood of confusion. See, for
example: ... In re Sydel Lingerie Co., Inc.,
197 USPQ 629 (TTAB 1977) ("BOTTOMS UP" for
ladies' and children's underwear versus
"BOTTOMS UP" for men's suits, coats, and
trousers--marks found to project different
meanings as applied to the respective goods);
and In re British Bulldog, Ltd., 224 USPQ 854
(TTAB 1984) ("PLAYERS" for men's underwear
versus "PLAYERS" for shoes--marks found to
project different meanings as applied to the
respective goods). ....

Id. at 1314-15.
Similarly, as specifically stated by the Board in Sydel
Lingerie:
Thus, if "BOTTOMS UP" can be deemed to have
any suggestive connotation as applied to
men's suits, coats and trousers, it will be
in association with the drinking phrase,
"drink up!" .... This is hardly the
connotation that "BOTTOMS UP" would generate
as applied to ladies' and children's
underwear.

In re Sydel Lingerie Co., Inc., supra at 630. The Board likewise
opined in British Bulldog that:
[W]e agree with applicant's argument, quoted
below, to the effect that the mark "PLAYERS"
has somewhat different connotations when
applied to ... different goods, namely:
Ser. No. 76051090
12

"PLAYERS" for shoes implies a fit,
style, color, and durability adapted to
outdoor activities. "PLAYERS" for men's
underwear implies something else,
primarily indoors in nature.

In re British Bulldog, Ltd., supra at 856. In sharp contrast,
the marks at issue herein are virtually identical in connotation
and overall commercial impression. Clearly, the mark "JAKE'S"
for items of apparel would be perceived by consumers to be
essentially the same in both meaning and commercial impression as
the mark "JAKE & CO." or the mark "JAKE JR." when applied to
articles of clothing and such is the case irrespective of the
fact that applicant's goods are items of outerwear while
registrant's goods, with the exception of neckties and items of
hosiery, are items of underwear. Consumers would therefore be
likely to regard applicant's mark "JAKE'S" as simply a shortened
or informal form of registrant's "JAKE & CO." and "JAKE JR."
marks. In view thereof, and inasmuch as such marks, when
considered in their entireties, are also substantially similar in
sound and appearance due to the presence therein of the arbitrary
term "JAKE," in either its possessive or singular form, confusion
as to the origin or affiliation of applicant's and registrant's
products is likely from contemporaneous use of such marks.
Applicant appears to argue, nonetheless, that the
respective marks are not likely to cause confusion because the
differences in appearance and sound between the marks at issue
outweigh their virtually identical connotations and overall
commercial impressions. In this regard, applicant asserts that:
Ser. No. 76051090
13
One of the reasons why there is no
likelihood of confusion derives from the
visual differences between the respective
marks. .... In particular, the Cited Marks
comprise the term "JAKE" coupled with the
wording "& CO." or "JR." On the other hand,
the Applicant's Mark consists of the word
"JAKE" immediately followed by an apostrophe
and the letter "S," and the terms "& CO." and
"JR." are nowhere to be found. In view of
the number of similar [third-party] marks,
even slight differences between the marks
become more significant. Accordingly, the
Applicant respectfully submits that the
differences between the respective marks are
sufficient to distinguish the marks as a
whole from one another.

Not only are the respective marks
visually different, they are also
phonetically different. The additional
elements "& CO." and "JR." in the Cited Marks
are spoken as "AND COMPANY" and "JUNIOR,"
respectively. The additional wording
lengthens the Cited Marks significantly and
adds multiple syllables, in contrast to the
Applicant's monosyllabic mark "JAKE'S." The
Applicant respectfully submits that the
phonetic differences between the mark
"JAKE'S" and the mark "JAKE AND COMPANY" or
the mark "JAKE JUNIOR" are sufficient to
avoid a likelihood of confusion.

We disagree. Instead, as the Examining Attorney
accurately observes, applicant's mark, which is the possessive
form of the term "JAKE," is essentially identical to the dominant
and distinguishing portion of each of the registrant's cited
marks, namely, the term "JAKE." As she properly points out,
while the marks at issue must be considered in their entireties,
including any descriptive or other disclaimed matter therein, our
principal reviewing court has indicated 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
Ser. No. 76051090
14
particular feature of a mark, provided [that] the ultimate
conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, according to the court,
"that a particular feature is descriptive [or otherwise lacking
in distinctiveness] ... with respect to the involved goods ... is
one commonly accepted rationale for giving less weight to a
portion of a mark ...." Id.
Here, she correctly notes, "[t]he additional terms '&
CO.' and 'JR.' in the registered marks are disclaimed ..., and
disclaimed matter is typically less significant ... when
comparing marks" due to its descriptiveness, as in the case of
the term "JR.," or the lack of inherent distinctiveness, as with
the phrase "& CO." Given "the shared, nearly identical, dominant
portion, 'JAKE,'" in each of registrant's marks, we concur that,
overall, applicant's mark "JAKE'S" is substantially similar to
registrant's marks "JAKE & CO." and "JAKE JR."
In addition, the Examining Attorney persuasively
observes that:
Moreover, [as a general proposition,]
small changes in words (e.g. hyphenation or
spacing changes, pluralization, phonetic
substitution) are insufficient alone to
distinguish marks. .... Thus, the mere
addition of the apostrophe and the letter "S"
to the end of applicant's mark does not alter
the similarity of the commercial impression
... [to that of each of registrant's] marks,
nor does it change the meaning of the
applicant's mark. It merely serves to
convert the proper name "JAKE" into its
possessive form, "JAKE'S."

Ser. No. 76051090
15
Applicant, in fact, concedes in its brief that, as quoted
previously, the inclusion of an apostrophe followed by the letter
"S" in its "JAKE'S" mark and the presence of the terms "& CO."
and "JR." after the term "JAKE" in registrant's "JAKE & CO." and
"JAKE JR." marks--and which are the sole differences between the
marks at issue--are but "slight differences." In view thereof,
and since, as the Examining Attorney also correctly points out,
"the test of likelihood of confusion is not whether the marks can
be distinguished when subjected to a side-by-side comparison" but
rather "whether the marks create the same overall impression," we
agree with the Examining Attorney that, when allowance is made
for the often less than perfect recollection by consumers of
marks which they encounter in the marketplace, "a consumer is
likely to remember all the marks as having a common element,
JAKE." See, e.g., Grandpa Pidgeon's of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973);
Envirotech Corp. v. Solaron Corp., 211 USPQ 724, 733 (TTAB 1981);
and Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975). Applicant's mark and registrant's marks, when viewed in
their entireties, are therefore substantially similar in sound
and appearance. Such similarities, when coupled with our earlier
finding that the respective marks are virtually identical in
connotation and overall commercial impression, thus favor a
conclusion that confusion is likely to occur from contemporaneous
use thereof.
Applicant further argues, however, that while conceding
in its brief that "the respective marks do share the wording
Ser. No. 76051090
16
'JAKE,' the term 'JAKE' is hardly a unique term in connection
with clothing items." As support for its contention, applicant
asserts that the record reveals that:
Indeed, numerous sellers in the market
use the term "JAKE," [thus] evidencing its
inability to, alone, cause confusion. As
evidenced in Exhibit A to the Request for
Reconsideration ..., a Google search for the
term "JAKE" in connection with clothing
yielded 623,000 hits. Thus, numerous sellers
in the market frequently use the term "JAKE,"
making the term ineffective to single-
handedly cause confusion. In addition, the
Applicant advised the Examining Attorney of
267 marks shown in the U.S. Patent and
Trademark Office records to contain the text
"JAKE," fifty-three of which were identified
with [clothing] goods in International Class
25. (See Exhibits B-D to the Request for
Reconsideration ....)

Referring, in particular, to registrations for the mark "JAKE
O'S" for ladies' warm-up and fitness apparel and the mark "LAZY
JAKE'S" for clothing items, including underwear, and noting that
such registrations co-exist with the cited registrations herein,
applicant maintains that:
By registering several marks with the
common element "JAKE," the Patent and
Trademark Office recognizes that the common
element is insufficient to make confusion
likely. That is, the consuming public
understands and appreciates that marks
comprising "JAKE" emanate from multiple
different sources rather than from any single
source (e.g., the owner of the Cited Marks).
As such, the consuming public has learned to
distinguish among the various entities using
the wording "JAKE." Furthermore, the greater
the number of similar marks, the less is the
likelihood of confusion. Given the large
number of similar marks in the field of
clothing, it is implausible that the
consuming public would confuse the
Applicant's Mark with the Cited Marks. The
Applicant's Mark, therefore, is not likely to
Ser. No. 76051090
17
cause confusion merely because it shares the
term "JAKE" in common with the Cited Marks.

We concur with the Examining Attorney, however, that
the third-party uses and registrations do not serve to preclude a
finding of likelihood of confusion. While, in particular, we
disagree with the Examining Attorney's assertion that "the
applicant's Google search lacks probative value" because "only
uses of the term 'JAKE' in actual registered marks, used on or in
connection with clothing, are relevant to this matter" (italics
in original), such search is lacking in probative value because
applicant actually made of record only a summary of the results
of just the first ten hits which were located. Although, to be
sure, this is not to suggest that results of the "about 623,000"
hits for the search "jake clothing" should have been provided,
clearly there is no way to tell whether the first ten results
comprise a representative sample of third-party uses of the term
"JAKE" in connection with clothing nor, perhaps even more
importantly, there is no way to determine the extent and duration
of the uses shown, which in several instances are in any event
ambiguous. It consequently cannot be said from such evidence
that purchasers of clothing are familiar with many third-party
uses of marks which include the term "JAKE" or variants thereof,
such as "JAKE'S," and have learned to distinguish those marks on
the basis of additional matter used therein.
With respect to the third-party registrations relied
upon by applicant, the Examining Attorney notes that, of the 53
such registrations, "there are actually only 13 live
registrations using the term JAKE in connection with Class 25
Ser. No. 76051090
18
goods, and of those 13 marks, 4 are the registrations cited
against the applicant and the remaining 9 contain additional
elements which create a distinct commercial impression from one
another, from the 4 cited registrations, and from the applicant's
mark." She also observes that, "[u]nlike the cited registrations
which use the term JAKE with generic and disclaimed terms, the
other 9 live registrations using the term JAKE in connection with
Class 25 goods contain additional elements which are either
arbitrary or suggestive at best." In view thereof, the Examining
Attorney persuasively contends that:
The crux of the applicant's arguments
refuting the 2(d) refusal rests on the
mistaken presumption that there are a "large
number" of marks using JAKE in connection
with Class 25 goods, thereby minimizing the
consuming public's likelihood of confusion as
to source. In reality, there are only 13
registered marks, 4 of which are being cited
against the applicant (and which are all
owned by the same entity), and the other 9 of
which are readily distinguishable from all
other marks using the term JAKE in connection
with Class 25 goods, including the
applicant's own proposed mark.

We note, in addition, that none of the marks in the third-party
registrations relied upon by applicant (and which are live or
active) is as similar overall to either applicant's mark "JAKE'S"
or to the cited registrant's marks "JAKE & CO." and "JAKE JR." as
applicant's mark is to the cited registrant's marks.
Furthermore, and in any event, it is well established
that third-party registrations, by themselves, are entitled to
little weight on the issue of likelihood of confusion. See,
e.g., In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); and
In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
Ser. No. 76051090
19
Such registrations are not evidence of what happens in the
marketplace or that the consuming public is familiar with the use
of those marks and has learned to distinguish between them. See,
e.g., Smith Brothers Manufacturing Co. v. Stone Manufacturing
Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973); In re Hub Distributing, Inc., supra at 285-86; and
National Aeronautics & Space Administration v. Record Chemical
Co. Inc., 185 USPQ 563, 567 (TTAB 1975). Consequently, the co-
existence of the cited registrations with the third-party
registrations made of record and relied upon by applicant does
not justify registration of a confusing similar mark by
applicant. See, e.g., AMF Inc. v. American Leisure Products,
Inc., supra.
Accordingly, we conclude that customers and prospective
consumers who are familiar or otherwise acquainted with
registrant's "JAKE & CO." mark for its various items of
underwear, socks and hosiery and/or its "JAKE JR." mark for those
same goods and neckties, would be likely to believe, upon
encountering applicant's "JAKE'S" mark for its various items of
outer clothing, that such commercially related articles of
clothing emanate from, or are otherwise sponsored by or
affiliated with, the same source. In particular, even if
consumers were to notice the slight differences between the
respective marks, they would be likely to think that applicant's
"JAKE'S" apparel is but another line of clothing from the same
Ser. No. 76051090
20
producer that markets "JAKE & CO." underwear, socks and hosiery
and/or "JAKE JR." underwear, socks, hosiery and neckties.
Decision: The refusal under Section 2(d) is affirmed.