S. Goldberg & Co., Inc.

Trademark Trial and Appeal Board

Sep 29, 2004

No. 75941574 (T.T.A.B. Sep. 29, 2004)

Mailed: September 29, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re S. Goldberg & Co., Inc.
Serial No. 75941574
_______
Michael E. Zall, Esq. for S. Goldberg & Co., Inc.
Jeri J. Fickes, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Hairston, Bottorff and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by S. Goldberg & Co., Inc. to
register the mark SG FOOTWEAR for the following goods, as
amended: "Footwear distributed and sold directly to department
stores, discount department stores and mass marketers."1
The trademark examining attorney has 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

1 Application Serial No. 75941574; filed March 13, 2000, alleging dates
of first use and first use in commerce in August 1995. The word
"footwear" is disclaimed.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 75941574
2
goods, so resembles the registered mark shown below for "gloves,
socks and scarves” as to be likely to cause confusion.2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.3
Here, as in any likelihood of confusion analysis, we look to
the factors set forth in In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention
to the factors most relevant to the case at hand, including the
similarity of the marks and the relatedness of the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976); and In re Azteca Restaurant Enterprises
Inc., 50 USPQ2d 1209 (TTAB 1999).
We turn first to the goods. Applicant argues that the
respective goods are not related, contending that the goods are
not used in conjunction with each other and are not purchased
together. Specifically, applicant argues that its goods are in
restricted channels of trade, and that its goods are sold to
professional buyers who are sophisticated and specialize in

2 Registration No. 1568528; issued November 28, 1989; renewed.
3 Registration was also initially refused under Section 2(d) on the
basis of an additional registration (no. 1996749). This refusal was
withdrawn by the examining attorney in her brief.
Serial No. 75941574
3
buying footwear for stores and who are therefore not likely to be
confused.
We find that shoes and socks are inherently related goods.
They are complementary, and moreover companion articles of
everyday wearing apparel which are purchased together and
obviously worn together.
Although applicant's identification of goods is restricted
to distributors and the wholesale market, registrant's
identification contains no restriction at all. Therefore, both
items can be sold in the same wholesale channels to the same
professional buyers. Moreover, both applicant's and registrant's
goods will ultimately be sold in the same retail market such as
department stores, and perhaps even in the same sections of the
stores, to the same consumer purchasers.4 There is nothing in
applicant's identification of goods or in the record to indicate
that applicant's shoes are relabeled at the wholesale level or
resold to end consumers without applicant's mark. It is clear
that these closely related apparel items, if offered under
similar marks, would naturally be perceived as emanating from the
same source.

4 Unlike the case of In re Shoe Works, Inc., 6 USPQ2d 1890 (TTAB 1988)
where applicant restricted the channels of trade for its shoes to shoe
stores, in the present case, the ultimate channels of trade for
registrant's socks and applicant's shoes are not restricted to any
particular types of stores. In any event, there is no reason to
believe that socks, as companion items to shoes, would not be sold in
shoe stores.
Serial No. 75941574
4
Thus, we turn our attention to the marks, keeping in mind
that when marks would appear on closely related goods, the degree
of similarity between the marks necessary to support a finding of
likelihood of confusion declines. Century 21 Real Estate v.
Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Applicant argues that the two marks are different in sound
and distinctly different in appearance. Applicant contends that
letter marks, unlike word marks, are incapable of being
pronounced or of conveying any inherent meaning and maintains
that the mere lettering style of registrant's should be
sufficient to distinguish two the two marks. Applicant further
argues that the word "FOOTWEAR" in its mark distinguishes one
mark from the other because the word emphasizes the differences
in the goods themselves.
While marks must be compared in their entireties, "there is
nothing improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a mark,
provided 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).
When we compare applicant's mark SG FOOTWEAR in typed form
and registrant's mark SG in stylized form in their entireties,
giving appropriate weight to the features thereof, we find that
Serial No. 75941574
5
the marks are similar and that the differences in the marks are
not sufficient to distinguish them.
It is true that the style or design of letter marks may be
sufficient to prevent a likelihood of confusion. However, in
this case, only one of the marks contains a design. Applicant's
mark is solely the typed designation "SG FOOTWEAR."
Moreover, while there is a design in registrant's mark, it
is not purely a design mark. The letters SG are still an
essential feature of registrant's mark. This is not a situation
where the stylization of registrant's mark is so extreme and
striking that when viewing the mark in its entirety, the
stylization overwhelms the underlying letters making them
virtually unrecognizable or so subordinate that they have no
source-identifying effect. In this case, the letters are a
significant component that contribute substantially to the
overall commercial impression the mark conveys. In fact, it is
the SG portion of the mark that would be used by purchasers to
call for or request registrant's goods.
The letter combination SG is identical in both marks. It
sounds the same when spoken and it has the same meaning. The
disclaimed word "footwear" in applicant's mark does not overcome
the similarity because it is a generic term having no source-
indicating effect and it contributes little or nothing to the
overall impression of the mark.
Serial No. 75941574
6
As for visual appearance, applicant's typed mark and
registrant's letter and design mark are obviously dissimilar.
However, it must be remembered that applicant seeks to register
its mark in typed drawing form. Thus, in our likelihood of
confusion analysis, we must consider all reasonable manners in
which applicant could depict its mark. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir.
1983); and INB National Bank v. Metrohost, 22 USPQ2d 1585, 1588
(TTAB 1992). We recognize that a typed drawing registration for
SG FOOTWEAR would only afford protection for all reasonable
manners of presentation, not all possible forms no matter how
extensively stylized. See Jockey International Inc. v. Mallory &
Church Corp., 25 USPQ2d 1233 (TTAB 1992). Nevertheless,
applicant could reasonably depict its mark in a style of
lettering that, while not identical, would more closely resemble
the stylization of registrant's mark. For example, if applicant
presents its mark in tall, solid block letters, with part of the
letter "S" overlapping the letter "G" the two marks would appear
visually similar.
We also note that registrant's mark is entirely arbitrary as
applied to shoes and there is no evidence of any third-party uses
of similar SG marks for similar goods. Thus, registrant's mark
is a strong mark which is entitled to a broad scope of
Serial No. 75941574
7
protection. See In re Wilson, 57 USPQ2d 1863 (TTAB 2001). In
addition, the fact that the marks comprise letters adds to
the likelihood that the marks when used on related goods will be
confused. See: Weiss Associates Inc. v. HRL Associates Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
The ultimate purchasers of applicant's and registrant's
shoes and socks are ordinary members of the general public, and
the fact that these goods are common consumer items that may be
purchased by the public with nothing more than ordinary care
increases the risk of confusion. Even sophisticated purchasers
would likely be confused when similar marks are used to identify
these closely related goods. The fact that such purchasers may
be sophisticated in their knowledge of the trade does not mean
that they are sophisticated in their knowledge of trademarks.
See Aries Systems Corp. v. World Book Inc., 23 USPQ2d 1742 (TTAB
1992).
The fact that there may have been no instances of actual
confusion between the cited mark and applicant's mark is not
particularly significant since there is no evidence in the record
from which we can determine whether there has been any meaningful
opportunity for confusion to occur. Nor do we have any
information about whether registrant has encountered any
confusion. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
Serial No. 75941574
8
1768 (TTAB 1992). Cf. In re General Motors Corp., 23 USPQ2d 1465
(TTAB 1992).
In view of the foregoing, we find that purchasers familiar
with socks sold under registrant's mark SG and design would be
likely to believe, upon encountering applicant's mark SG FOOTWEAR
for shoes, that the goods originated with or are associated with
or sponsored by the same entity.
To the extent that there is any doubt on the issue of
likelihood of confusion, it is settled that such doubt must be
resolved in favor of the prior registrant. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
Decision: The refusal to register is affirmed.