RP Creations Ltd.

Trademark Trial and Appeal Board

Sep 10, 2007

No. 76656180 (T.T.A.B. Sep. 10, 2007)

Mailed:
September 10, 20007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re RP Creations Ltd.
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Serial No. 76656180
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Myron Amer, P.C. for RP Creations Ltd.

Ira Goodsaid, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney)
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Before Seeherman, Zervas and Kuhlke, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

RP Creations Ltd. has appealed from the final refusal
of the Trademark Examining Attorney to register NATALIE in
standard character format as a trademark for “accessories
for women, namely, barrettes, buttons, embroidery, hair
clips, hat pins and ornamental novelty pins” in Class 26.1

1 Application Serial No. 76656180, filed March 7, 2006, based on
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b) (intent-to-
use).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76656180
2
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, if used for its identified goods, so
resembles the mark NATALIE & ME, previously registered in
the stylized form shown below for “clothing, namely,
women’s pants, skirts, tops, t-shirts, blouses, shorts,
knit tops, dresses and jackets,”2 that it is likely to cause
confusion or mistake or to deceive.

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, 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

2 Registration No. 3020769, issued November 29, 2005.
Ser No. 76656180
3
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We turn first to a consideration of the goods. The
Examining Attorney has made of record third-party
registrations which include some of the goods identified in
applicant’s application and some of the goods listed in the
cited registration. See Registration No. 1993895 for
GRIFFITH GRAY for, inter alia, buttons for clothing and for
women’s clothing, namely dresses, skirts and jackets;
Registration No. 2062351 for RAMPAGE for, inter alia, hair
accessories, namely hair clips and hair bands and for
women’s tops, shirts, t-shirts, shorts and dresses;
Registration No. 2879970 for ARDEN B for, inter alia, hair
ornaments, namely, clips, holders, sticks, and for women’s
clothing, namely, tops, shirts, shorts, pants, skirts and
jackets; Registration No. 2308468 for GUESS? for, inter
alia, buttons for clothing and for women’s clothing,
namely, tank tops, shirts, t-shirts, knit tops, skirts,
pants, shorts, jackets, and dresses; and Registration No.
3130927 for NOLLIE for, inter alia, barrettes and hair
clips and for women’s clothing, namely, skirts, tank tops,
t-shirts, polo shirts, shorts, outer jackets, knit tops,
shirts, dresses and pants. Third-party registrations which
individually cover a number of different items and which
Ser No. 76656180
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are based on use in commerce serve to suggest that the
listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Applicant argues that the goods are not “marketed in a
way that they would be encountered in a situation that
would create the incorrect assumption that they originate
from the same source.” Brief, p. 3. Specifically,
applicant asserts that applicant’s and the registrant’s
goods “would not be commingled but would be displayed
separately and differently, the clothing vertically on
hangers and the ‘barrettes, etc.’ in horizontal counter
trays.” Brief, p. 2 (emphasis in original).
We agree that women’s clothing and the hair items,
buttons, ornamental pins and embroidery are not likely to
be sold or displayed next to each other in a store.
However, they may be sold within a department store and are
goods that might be used together, e.g., one might purchase
hair ornaments such as barrettes or hair clips as
accessories to be used with a particular item of clothing,
or one might purchase buttons or embroidery to decorate
clothing. Because of this, applicant’s identified goods
and those listed in the cited registration must be
considered related. See In re Melville Corp., 18 USPQ2d
Ser No. 76656180
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1386 (TTAB 1991), in which women’s shoes and items of
women’s clothing were found to be complementary and
therefore related goods even though they are sold in
different departments because such items are frequently
purchased in a single shopping expedition with the
intention of wearing them together. It is well established
that the goods or services of an applicant and the
registrant need not be similar or 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 or services 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 originate
from the same producer. See In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Further, applicant’s and the registrant’s goods may be
sold to the same classes of purchasers, which would include
the public at large. Such purchasers are not particularly
sophisticated or knowledgeable about these items.
Moreover, applicant’s identified goods would include
inexpensive items that may be purchased on impulse, or
without great care or deliberation. In saying this, we
note the declaration of applicant’s president that
Ser No. 76656180
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applicant has “personal direct relationships with retail
store buyers.” However, applicant’s goods, as identified,
are not limited to sales to professional buyers, and
therefore we must assume that they can be sold in all
channels of trade appropriate for such goods, which include
retail stores where they would be encountered by and bought
by ordinary purchasers. See Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987) (the question of likelihood of
confusion must be determined based on an analysis of the
mark as applied to the goods and/or services recited in
applicant’s application vis-à-vis the goods and/or services
recited in an opposer’s registration, rather than what the
evidence shows the goods and/or services to be). See also,
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Applicant’s
president’s declaration actually confirms that its goods
are, in fact, resold to the general public. The du Pont
factors of the relatedness of the goods, the channels of
trade and the conditions of purchase favor a finding of
likelihood of confusion.
This brings us to a consideration of the marks.
Applicant’s mark is NATALIE; the cited mark is NATALIE &
ME. Although the latter mark is depicted in stylized
lettering, this stylization is not sufficient to
Ser No. 76656180
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distinguish the marks because applicant’s mark has been
applied for in standard character format. Therefore, if
this mark were to be registered, applicant could use the
mark in a similar font to that of the registered mark. In
any event, the stylized format of the cited mark is a
rather ordinary font that is not particularly distinctive.
Applicant’s mark also differs from the cited mark in
that applicant’s mark consists of only the name NATALIE,
while the registered mark is NATALIE & ME. However, the
presence/absence of “& ME” in the marks does not change the
appearance or pronunciation of the word NATALIE, nor does
it change the connotation of NATALIE as a woman’s name.
NATALIE per se, of course, indicates a single person, while
NATALIE & ME connotes that person as well as another
(perhaps the purchaser/wearer of the clothing). However,
the slight difference in appearance, pronunciation and
connotation of the marks caused by the presence/absence of
“& ME” is not sufficient to distinguish the marks.
Consumers are likely to view the marks as variations of
each other, but with both identifying goods emanating from
a single source, with NATALIE per se indicating the
company’s accessories line while NATALIE & ME is seen as
the same company’s mark for its clothing line. In saying
this, we also note that there is no evidence of third-party
Ser No. 76656180
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use of “NATALIE” marks, thus indicating that the cited mark
is a strong mark and the registration is entitled to a
broad scope of protection. In sum, the marks convey the
same commercial impression.
We have considered the declaration of applicant’s
president, Natalie Ross, that she personally performs all
business functions for applicant, including selling
applicant’s goods directly to retail store customers who
then sell the items to the public, and that these retail
store buyers would distinguish the marks NATALIE and
NATALIE & ME because, in the case of applicant’s business,
there is no one other than the president, whose name is
Natalie. As a result, according to the declaration, they
would not understand “& ME as a reference to applicant.
Even if we accept that Ms. Ross “personally performs all
business functions for the applicant”3 and that professional
retail buyers would not view NATALIE & ME as referring to
applicant, the ultimate purchasers of the goods, i.e., the
public at large, would not know Ms. Ross personally or be
aware that she is the person behind applicant who “performs
all business functions for the applicant.” Rather, we must
assume that these consumers would know only the trademark,
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and for the reasons stated above, they are likely to view
the trademarks NATALIE and NATALIE & ME, if used on related
goods, as identifying goods emanating from a single source.
Finally, in reaching our conclusion that applicant’s
mark is likely to cause confusion with the cited mark, we
are guided by the well-established principle that, to the
extent there is any doubt on the issue of likelihood of
confusion, such doubt must be resolved in favor of the
registrant and prior user. In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918,
179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration is affirmed.

3 Ms. Ross’s statement seems to be contradicted by the fact that
the application was signed by applicant’s vice president, Jed
Forman.