Russell-Newman, Inc.

Trademark Trial and Appeal Board

Jul 8, 1997

EX (T.T.A.B. Jul. 8, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 8, 1997
Paper No. 10
RLS/King
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Russell-Newman, Inc.
________
Serial No. 74/532,461
_______
Elisabeth A. Evert of Sidley & Austin for Russell-Newman,
Inc.
Stephen G. Leahy, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney)
_______
Before Simms, Cissel and Seehermam, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Russell-Newman, Inc. (applicant), a corporation of the
state of Texas, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark CALIFORNIA
DESIGN BY NIGHT ("CALIFORNIA DESIGN" disclaimed) for women's
and girls' apparel, namely dresses, skirts, pants, jackets,
vests, blouses, shorts, evening dresses, intimate apparel,
namely, panties, slips, bras, half-slips, camisoles,
lingerie, undergarments, sleepwear, namely, pajamas,
Ser No. 74/532,461
2
nightgowns, robes, caftans and T-shirts, stocking and
hosiery, swimwear, beachwear, coverups, exercisewear,
namely, sweatsuits, leotards, tights and leggings.1 The
Examining Attorney has refused registration under Section
2(d) of the Act, 15 USC 1052(d), on the basis of
Registration No. 1,558,940, issued October 3, 1989 (Section
8 affidavit accepted), for the mark NIGHT for clothing,
namely, blouses, skirts, sweaters, slacks, evening gowns,
jackets, scarves, hats, stockings, boots, shoes and
slippers; purses and hand bags; and jewelry. Applicant and
the Examining Attorney have submitted briefs but no oral
hearing was requested.
The Examining Attorney argues that the respective marks
are so similar that, as applied to the respective goods,
confusion is likely. The Examining Attorney notes that
applicant’s goods and registrant’s goods both include
jackets, skirts, blouses and stockings, and that other items
listed in applicant’s application are closely related to
registrant’s clothing. These goods will be found in the
same channels of trade, the Examining Attorney argues, such
as department and clothing stores. It is the Examining
Attorney’s position, brief, 3, 6, that:
Thus the dominant portion of the applicant’s
mark is BY NIGHT. This dominant portion is
virtually identical to the registrant’s mark. The

1 Application Serial No. 74/532,461, filed June 2, 1994, based
upon applicant’s bona fide intention to use the mark in commerce
under Section 1(b) of the Act, 15 USC 1051(b).
Ser No. 74/532,461
3
commercial impression created by both marks is
the same. A purchaser of women's clothing is likely
to mistakenly believe that the goods sold under
the mark, CALIFORNIA DESIGN BY NIGHT, are a
line of clothing, perhaps a more casual
"California style" of clothing, that come from
the same source as the goods sold under the
mark NIGHT...
...Hence, a consumer viewing the mark NIGHT
and then seeing the term CALIFORNIA DESIGN
BY NIGHT on identical and highly related goods
would mistakenly believe that those "California
design" style clothing emanated from Night, the
same source as the NIGHT Clothing.
Applicant, on the other hand, argues that its mark is
different in sight and sound from the registered mark and
that the marks in their entireties convey different
commercial impressions. In this regard, applicant argues,
brief, 6:
The Examiner's argument that consumers
may believe that the respective goods eminate
[sic] from the same design (i.e. "BY NIGHT")
is without merit, as the commercial connotation
generated by Applicant's mark is of clothing
to be worn "by night" as opposed to "by day".
Accordingly, the respective marks are entirely
dissimilar and generate completely distinctive
commercial impressions and connotations such that
no likelihood of confusion will result.
With respect to the goods, applicant argues that the goods
in its application are "specific and narrow" and that
registrant offers distinctly different goods including
shoes, hats, purses, hand bags and jewelry. Applicant also
argues that consumers of the respective goods are
“sophisticated, with a high degree of brand awareness."
(Brief, 7) Finally, referring to a listing of third-party
Ser No. 74/532,461
4
registrations, applicant argues that the cited mark is
"weak."2
Upon careful consideration of this record and the
arguments of the respective attorneys, we find that, at
least with respect to certain goods, confusion is likely.
As noted above, the Examining Attorney argues that
purchasers will perceive applicant’s mark as an indication
that its goods emanate from the same source as the entity
that offers NIGHT clothing, because applicant's mark
includes the phrase "BY NIGHT," meaning that the goods are
made by the NIGHT company. Applicant, on the other hand,
argues that the connotation of its mark is that its clothing
is to be worn "by night" as opposed to "by day." While it
is entirely possible that this may be the connotation that
one may glean from applicant’s mark as used in connection
with such goods as dresses, evening dresses, intimate
apparel, sleepwear, etc., we do not believe that this
connotation will be the one which is likely to be perceived
by purchasers when applicant’s mark is used in connection
with such items as swimwear, beachwear, coverups, etc.,

2 With respect to this listing of third-party registrations, the
Examining Attorney states that the mere listing does not make
them of record. While this may generally be true, here, in the
action following applicant’s presentation of this listing, the
Examining Attorney, while arguing that these registrations are
entitled to little weight on the question of likelihood of
confusion because they are not evidence of what happens in the
marketplace, did not object on the basis that this was merely a
listing rather than copies of those registrations until his
appeal brief. Accordingly, because the Examining Attorney did
not raise this objection until that time, we shall consider this
objection to have been waived.
Ser No. 74/532,461
5
clothing which is clearly intended to be worn during the
day. With respect to these items of clothing, therefore, it
is difficult to believe that the average purchaser would
perceive applicant’s mark in the way applicant’s attorney
contends he or she would. Rather, when applicant’s mark is
used in connection with clothing clearly intended to be worn
during the day, it is more likely that the average purchaser
will view applicant’s mark in the manner suggested by the
Examining Attorney. When so perceived, that is, that
applicant’s clothing is "California design" clothing "BY
NIGHT"--made or produced by the same entity that puts out
the NIGHT line of clothing--confusion is clearly likely.
Because applicant’s mark, used on some of the items in
applicant’s single-class application, so resembles the
registered mark used on closely related articles of clothing
as to be likely to cause confusion, we must affirm the
refusal. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981)(“[L]ikelihood of confusion must be found if the
public...seeing the mark on any item that comes within the
description of goods set forth by appellant in its
application, is likely to believe that appellee has expanded
its use of the mark, directly or under a license, for such
item.” (Emphasis in original)).3

3 It is noted that the Examining Attorney has argued that the
descriptive wording CALIFORNIA DESIGN BY "clearly has no
importance to the mark as a whole” (brief, 2). While, of
course, descriptive matter is entitled to less weight in the
likelihood-of-confusion analysis, we by no means subscribe to
Ser No. 74/532,461
6
Decision: The refusal to register is affirmed.
R. L. Simms

R. F. Cissel
E. J. Seeherman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

the belief that such words are of "no importance to the mark as
a whole."
Clearly, applicant’s mark as a whole must be compared to the
registered mark. Indeed, the Examining Attorney appears to so
consider these marks in his final refusal.
Ser No. 74/532,461
7