PRL USA Holdings, Inc.

Trademark Trial and Appeal Board

Mar 21, 2011

No. 77634450 (T.T.A.B. Mar. 21, 2011)

Mailed: 3/21/11

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re PRL USA Holdings, Inc.
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Serial No. 77634450
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G. Roxanne Elings of Greenberg Traurig for PRL USA
Holdings, Inc.

Alec Powers, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Kuhlke and Ritchie, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

PRL USA Holdings, Inc. filed, on December 16, 2008, an
intent-to-use application to register the mark RALPH LAUREN
STIRRUP COLLECTION (“COLLECTION” disclaimed) in standard
characters for “horological and chronometric instruments
and parts thereof” in International Class 14.
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, so resembles the previously
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser No. 77634450
2
registered mark STIRRUP in typed letters for “jewelry” in
International Class 141 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.2
Applicant contends that the term “stirrup” is highly
suggestive, and that the cited mark is entitled to only a
narrow scope of protection when used in connection with
“equestrian styled” jewelry. Applicant argues that the
examining attorney has improperly dissected the mark, by
focusing on the STIRRUP portion, while at the same time
ignoring the additional wording in applicant’s mark, namely
RALPH LAUREN and COLLECTION. According to applicant, the
addition of applicant’s famous RALPH LAUREN house mark,
already registered for numerous luxury items, including
watches, to the highly suggestive term “STIRRUP,” ensures

1 Registration No. 2817509, issued February 24, 2004; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
2 The examining attorney submitted, for the first time with his
appeal brief, copies of documents from the file history of
applicant’s companion application Serial No. 77634444 (now
abandoned) to register the mark STIRRUP for “horological and
chronometric instruments and parts thereof.” Applicant, in its
reply brief, objected to the untimely submission. The documents
comprise third-party registrations, as well as some of
applicant’s prior registrations, suggesting that jewelry and
watches may emanate from the same source. See, e.g., In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Clearly
this type of evidence could have and should have been submitted
at the earlier stage of examination of the application. To do so
at the briefing stage is untimely, and applicant’s objection is
sustained. The evidence has not been considered in reaching our
decision.
Ser No. 77634450
3
that there is no likelihood of confusion between the marks.
To establish that the term “stirrup” has a highly
suggestive meaning in the jewelry field, applicant
submitted evidence of third-party uses of the term in
connection with a variety of jewelry items. Applicant also
submitted evidence to show that both registrant’s and
applicant’s goods are “equestrian styled.” Applicant goes
on to argue, however, that the goods are specifically
different. Applicant claims that its watches are highly
sophisticated, and are sold to wealthy consumers through
authorized distributors such as Nordstrom’s, Saks, Macy’s
and Neiman Marcus. Registrant’s goods, on the other hand,
are custom-made decorative jewelry items sold via
registrant’s website. Although applicant concedes that
watches may fall under the general category of “jewelry,”
it is highly unlikely that consumers will believe that
decorative jewelry and sophisticated timepieces emanate
from the same source. Applicant points out that its
watches range in price from $9,000 to $70,000, and that
this cost, coupled with the sophistication of purchasers,
ensures against the likelihood of confusion in the market
place.
The examining attorney maintains that the marks are
similar and that the goods are closely related. The marks
Ser No. 77634450
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share the common element “STIRRUP,” and, thus, the
examining attorney argues, the overall commercial
impressions of the marks are similar. In this regard, the
examining attorney contends that the addition of the RALPH
LAUREN house mark in applicant’s mark adds to the
likelihood of confusion with registrant’s mark, rather than
acting to distinguish the marks. As to the goods, the
examining asserts that watches and jewelry have similar
uses, and that they are marketed through the same trade
channels. To the extent that the record shows that the
cited mark is weak, the examining attorney contends that
even weak marks are still entitled to protection against
the registration by a subsequent user of a similar mark for
related goods.
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
Ser No. 77634450
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and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first turn to consider the goods. It is not
necessary that the respective goods be competitive, or even
that they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient that
the respective goods are related in some manner, and/or
that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originated from the same
producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991). The question of likelihood of confusion is
determined based on the identification of goods in the
application vis-à-vis the goods as set forth in the cited
registration. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); and In re Jump
Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). The issue
is not whether consumers would confuse the goods
themselves, but rather whether they would be confused as to
the source of the goods.
In view thereof, we compare applicant’s “horological
and chronometric instruments and parts thereof” with
Ser No. 77634450
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registrant’s “jewelry.” We recognize that watches may be
worn as jewelry, and that jewelry and watches may move
through the same trade channels (e.g., jewelry stores).
Applicant submitted (for a purpose not related to this du
Pont factor) copies of its Registration No. 3764868 of the
mark RALPH LAUREN listing “watches” and “jewelry watches”
in the identification of goods; further, applicant’s
Registration No. 1835393 of RALPH LAUREN covers “jewelry.”
Thus, in point of fact, applicant has registered the same
mark for both types of goods involved herein. Although we
have not considered the examining attorney’s evidence
relating to this du Pont factor (see footnote 2, supra),
applicant’s own prior registrations support the same
suggestion, namely that watches and jewelry may emanate
from the same source. See In re Albert Trostel, supra.
The goods are presumed to be sold in the same trade
channels to the same classes of purchasers, including
ordinary consumers.
We accordingly find that the similarity between the
goods weighs in favor of a finding of likelihood of
confusion. We have reached our finding on this factor
without giving any probative value to the evidence and
applicant’s arguments based thereon regarding the expensive
nature of its watches and the sophistication of the
Ser No. 77634450
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purchasers thereof, as opposed to the relatively
inexpensive cost of registrant’s “decorative” jewelry.
Suffice it to say, neither applicant’s nor registrant’s
identification of goods includes any restrictions in these
regards; accordingly, the points regarding price and
sophisticated purchasers are irrelevant to our analysis.
Insofar as the marks are concerned, the marks must be
considered 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 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).
We must compare applicant’s mark RALPH LAUREN STIRRUP
COLLECTION with registrant’s mark STIRRUP. It is a general
Ser No. 77634450
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rule that likelihood of confusion is not avoided between
otherwise confusingly similar marks merely by adding or
deleting a house mark. See, e.g., In re Chica, 84 USPQ2d
1845 (TTAB 2007). See generally TMEP §1207.01(b)(iii) (7th
ed. 2010). Exceptions to the general rule regarding
additions or deletions to marks may arise if: 1) the marks
in their entireties convey significantly different
commercial impressions; or 2) the matter common to the
marks is not likely to be perceived by purchasers as
distinguishing source because it is merely descriptive or
diluted. See, e.g., Shen Manufacturing CO. v. Ritz Hotel
Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (RITZ
and THE RITZ KIDS create different commercial impressions);
Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d
1645 (TTAB 2010) (CAPITAL CITY BANK held not likely to be
confused with CITIBANK); and In re S.D. Fabrics, Inc., 223
USPQ 54 (TTAB 1984) (DESIGNERS/FABRIC (stylized) for retail
fabric store services held not likely to be confused with
DAN RIVER DESIGNER FABRICS and design for textile fabrics).
We view the present case as an exception, specifically
the second exception identified above, to the general rule.
Our reason is based on the rampant use of the term
“stirrup” in connection with a certain type of jewelry.
Ser No. 77634450
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The common element to the marks is “STIRRUP.” The
term “stirrup” is defined as “a loop, ring, or other
contrivance of metal, wood, leather, etc. suspended from
the saddle of a horse to support the rider’s foot.”
(Random House Dictionary (2011)).3
Applicant introduced excerpts of numerous third-party
websites showing the listings for sale of a wide variety of
jewelry items consistently described as “Stirrup Jewelry”;
in each case, the item is in the shape of an equestrian
stirrup. The jewelry items include earrings, pendants,
necklaces, bracelets, rings and charms. Examples of some
items are shown below.

3 Dictionary definitions are proper subject matter for judicial
notice. University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).
Ser No. 77634450
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Applicant’s watches are “equestrian inspired” and are sold
in a similar stirrup shape (with saddle leather used for
the strap for one of the editions) as shown below.

Registrant’s rings, one of the jewelry items offered
under the cited mark, are sold in a stirrup shape as shown
below.

Based on the record, we find that the term common to
the marks, “STIRRUP,” is less likely to be perceived by
purchasers as a distinctive term serving to distinguish
source because it is diluted in the jewelry field. Thus,
the addition of applicant’s house mark, RALPH LAUREN, in
applicant’s mark is sufficient to distinguish its mark from
the cited mark. Because of the widespread use of “stirrup”
in the jewelry field, we see the likelihood of confusion
refusal as amounting to only a speculative, theoretical
possibility. Language by our primary reviewing court is
Ser No. 77634450
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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.