Republic Clothing Corporation

Trademark Trial and Appeal Board

May 16, 2013

No. 85450953 (T.T.A.B. May. 16, 2013)

Mailed:
May 16, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Republic Clothing Corporation
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Serial No. 85450953
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Andrew B. Katz and Lisa Peller London of Belles Katz LLC
for Republic Clothing Corporation.

Fred Carl III, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
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Before Zervas, Lykos and Richie, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Republic Clothing Corporation (“applicant”) filed an
application to register the standard character mark SNOW BY
REPUBLIC on the Principal Register for “bottoms; jackets;
pants; shorts; sweaters; tops; women's clothing, namely,
shirts, dresses, skirts, blouses” in International Class 25
under Trademark Act Section 1(b), 15 U.S.C. § 1051(b).
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser. No. 85450953
2
The assigned examining attorney refused registration
of applicant’s mark under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that applicant's
mark when used on applicant’s goods so resembles the
registered stylized mark (Registration No.
3502002) for goods including “clothing, namely, pants,
shirts, underwear, sweaters, jackets, sun visors” as to be
likely to cause confusion or mistake or to deceive. A
translation statement provides that the mark translates
into English as “snow.”
Applicant appealed the refusal and briefs have been
filed. We reverse the refusal to register.
Our determination under Trademark Act § 2(d) is based
on an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Ser. No. 85450953
3
In considering the marks, we turn first to the
strength of the term SNOW for articles of clothing. The
record includes the following used-based third-party
registrations (all owned by different entities) for marks
containing SNOW (or SNO) for clothing on the Principal
Register:1
CIRCE SNOW (Registration No. 3806748) for “winter ski
and snowboard wear, namely, gloves, winter headwear,
jackets and pants”;

SNO BLOCKER (Registration No. 3298782) for “gloves”;

EAT SNOW (Registration No. 3132057) for goods
including “pants, jackets, sweatshirts and hats”;

SNOW JOE (Registration No. 3163228) for goods
including “gloves, hats, shirts, sweatshirts and jackets”
(SNOW disclaimed);

SNOW MONSTERS (Registration No. 2954184) for goods
including “sweatshirts and hats”;

SNO PRO (Registration No. 1770179) for “jackets, pants
and hats”;

PURE SNOW and design (Registration No. 1739969 for
goods including “pants, jackets and hats;” and

SNO RIDER (Registration No. 1639810) for gloves.

The record also includes Registration No. 3155379 for
the mark “SnowSkirts” for “waterproof clothing and apparel

1 Applicant also submitted pending applications for marks
incorporating the term “SNOW” which we have not considered.
Pending applications have “no probative value other than as
evidence that the application was filed.” Edwards Lifesciences
Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1403 n.4 (TTAB 2010),
citing In re Phillips Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4
(TTAB 2002).
Ser. No. 85450953
4
for outdoor activities, namely, skirts” on the Supplemental
Register.
Although the third-party registrations are not
evidence of actual use of the marks, the third-party
registrations demonstrate that the addition of various
terms to SNOW and/or variations in the spelling of “snow”
has been sufficient for the Office to view the registered
marks as being sufficiently different from one another such
as not to cause confusion. See In re Hartz Hotel Services
Inc., 102 USPQ2d 1150, 1154 (TTAB 2012) (“It is clear from
the third-party registrations that the addition of a
geographic location to the word GRAND HOTEL has been
sufficient for the Patent and Trademark Office to view
these marks as being sufficiently different from the cited
registrant's mark, and from each other, such as not to
cause confusion.”). See also, J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition § 11:90 (4th ed. 2012)
(“[Third-party] registrations … show that the PTO, by
registering several marks with such a common segment,
recognizes that portions of such composite marks other than
the common segment are sufficient to distinguish the marks
as a whole and to make confusion unlikely.”). The co-
existence of these registrations suggests too that the
owners of the earlier registrations do not have a problem
Ser. No. 85450953
5
with the later registration of other marks including the
term “snow” for articles of clothing. Further, the
Supplemental Register registration and the registrations
with the term “snow” disclaimed suggest that the Office has
considered “snow” for articles of clothing as merely
descriptive and therefore entitled to a lesser scope of
protection.
With this in mind, we compare applicant’s mark with
the cited mark. SNOW, in applicant’s mark, is followed by
the wording BY REPUBLIC. Applicant (whose name is Republic
Clothing Corporation) maintains that REPUBLIC is its house
mark; and “the addition of Applicant’s distinctive house
mark to the highly suggestive and commonly registered word
SNOW, clearly distinguishes the two marks, such that there
is no likelihood of confusion between them.” Brief at 6.
Indeed, the commercial impression of applicant’s mark
is that of a product mark followed by a house mark. See In
re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB
1986)(“[t]he words ‘by sassafras' [in SPARKS BY SASSAFRAS]
indicate to prospective purchasers that ‘sassafras' is the
name of the entity which is the source of the ‘SPARKS'
brand clothing.”). The examining attorney’s evidence
submitted with his Office actions suggest that in the
clothing field, owners of marks have registered marks which
Ser. No. 85450953
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identify a product mark, followed by the name of the
designer or house that is the source of the goods.
Although the examining attorney does not directly label
REPUBLIC as a house mark, we agree with applicant that in
this particular case, the term REPUBLIC as used in
applicant’s mark appears to function as a house mark.
The Board has frequently determined that additional
distinctive elements, such as house marks, may avoid likely
confusion where the matter common to the marks is so
suggestive or weak that any source-indicating value it has
is overwhelmed by the addition of an arbitrary, distinctive
element. See, e.g., Rocket Trademarks Pty Ltd. v Phard
S.p.A., 98 USPQ2d 1066 (TTAB 2011)(ZU ELEMENTS (stylized)
not confusingly similar to ELEMENTS in connection with
identical clothing goods due, in part, to suggestiveness of
term “elements”); and Knight Textile Corp. v. Jones
Investment Co., 75 USPQ 1313 (TTAB 2005) (the mark
ESSENTIALS found so highly suggestive that the addition of
house mark NORTON MCNAUGHTON sufficed to distinguish the
marks). Here, the record shows that the tern SNOW when
used in connection with clothing is highly suggestive
and/or weak. This certainly is the case for winter
clothing suited for use in cold weather (e.g., jackets and
pants), snow, or winter sports such as skiing. As used in
Ser. No. 85450953
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applicant’s SNOW BY REPUBLIC mark for its goods, the term
SNOW will not likely be perceived by purchasers as
distinguishing source. That is, consumers encountering
this mark will focus on the BY REPUBLIC element and
relegate the wording SNOW as highly suggestive of articles
of clothing which are suitable for winter. In view
thereof, and because registrant’s mark is different than
applicant’s mark in appearance due to the umlaut above the
letter “O” and the lack of the letter “W” in snow, we find
in the case of applicant's SNOW BY REPUBLIC mark, the
dissimilarities outweigh the similarities.
We find that the du Pont factor regarding the
dissimilarity of the marks outweighs the other du Pont
factors that would favor a finding of likelihood of
confusion, namely, the identical nature of the goods, trade
channels and purchasers. See Kellogg Co. v. Pack-Em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed.
Cir. 1991) (“We know of no reason why, in a particular case,
a single du Pont factor may not be dispositive. … ‘each [of
the thirteen elements] may from case to case play a dominant
role.’”). Accordingly, we find that applicant's mark SNOW
BY REPUBLIC for bottoms; jackets; pants; shorts; sweaters;
tops; women's clothing, namely, shirts, dresses, skirts,
Ser. No. 85450953
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blouses” is not likely to cause confusion with the mark of
the cited registration.
Decision: The refusal to register applicant’s mark
under Section 2(d) of the Trademark Act is reversed.