Savane Int’l. Corp.

Trademark Trial and Appeal Board

May 10, 2002

No. 75497959 (T.T.A.B. May. 10, 2002)

5/10/02
Hearing: Mailed: 09 May 2002
06 MAR 2002 Paper No. 18
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Savane International Corp.1
________

Serial No. 75/497,959
_______

Edward M. Prince of Alston & Bird LLP for Savane
International Corp.

Catherine K. Krebs, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______

Before Hanak, Hairston and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On June 8, 1998, Savane International Corp (applicant)
filed an application2 to register the following mark on the
Principal Register for goods ultimately identified as
“slacks, jeans, shorts, shirts, skirts, socks, knit tops,

1 The application was originally filed in the name of Farah
Incorporated who subsequently changed its name to Savane
International Corporation. See Reel 1874, Frame 0558.
2 Serial No. 75/497,959. The application contained an allegation
of applicant’s bona fide intent to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75/497,959

2
knit bottoms, dresses, jackets, vests, belts and hats sold
through department stores and discount stores” in
International Class 25:

The Examining Attorney3 ultimately refused to register
the mark because the examining attorney held that there is
a likelihood of confusion between applicant’s mark for its
goods and the marks shown below for, inter alia, “clothing,
namely, shirts, T-shirts, sweatshirts, baseball caps, socks
and jackets” in International Class 25.
4 5

3 The present examining attorney was not the original examining
attorney in this case.
4 Registration No. 2,142,729, issued March 10, 1998.
5 Registration No. 2,142,730, issued March 10, 1998.
Ser No. 75/497,959

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Both marks are owned by the same entity and the
identification of goods is the same for both registrations.
After the Examining Attorney made the refusal final,
this appeal followed. Both applicant and the examining
attorney filed briefs. An oral hearing was held on March
6, 2002.
The Examining Attorney determined that when the marks
are compared in their entireties, there is a likelihood of
confusion. The examining attorney held that the cited
registrations and applicant’s mark “can all be vocalized as
‘one eighty.’” Brief at 4. She noted that the background
designs of the applicant’s mark and Registration No.
2,142,729 were simple geometric shapes and “of diminished
trademark significance.” Id. As to the goods, the
examining attorney considered the fact that the applicant
limited its goods to those sold through department stores
and discount stores,” but she pointed out that registrant’s
identification of goods is not limited to any specific
channels of trade. Therefore, the examining attorney
determined that the goods are otherwise identical (shirts,
socks, and jackets) or closely related, and that there is a
likelihood of confusion.
Applicant, on the other hand, “contends that the marks
are essentially visual marks which, when viewed in their
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entireties, are distinctly different.” Reply Br. at 2-3.
In addition, applicant argues that the Office has
registered three other marks that contain the designation
180 and therefore, the registered “mark is entitled to a
narrow scope of protection.” Brief at 10. Applicant also
argues that because the entity that owns the cited
registrations is apparently a religious organization the
trade channels would not be similar.
We affirm the refusal to register under Section 2(d).
Determining whether there is a likelihood of confusion
requires consideration of the factors set forth in In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973). See also Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
In considering the evidence of record on these
factors, we must keep in mind that “[t]he fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
The first factor we consider is whether the goods are
related. In this case, the goods are, at least in part,
identical (shirts, socks, and jackets). Even applicant
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admits that “the goods cover shirts, therefore, for purpose
of this appeal it is assumed that the goods are identical.”
Brief at 9. Therefore, we must consider that both
applicant and registrant use the marks on the identical
goods, i.e., shirts, jackets, and socks. See Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods”). See also Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed”); In re Dixie Restaurants, 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997)(quotation
marks omitted) (“Indeed, the second DuPont factor expressly
mandates consideration of the similarity or dissimilarity
of the services as described in an application or
registration”).
Ser No. 75/497,959

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Therefore, we must presume that the goods move through
all normal channels of trade for such products. Applicant
argues that we “cannot ignore the other information
provided by the registration certificate. First, the
[registrant] is Willie George Ministries, Inc. Applicant
knows of no ministry engaged in the manufacture and sale of
clothing through department stores and discount stores.”
Appeal Brief at 9. First, to the extent that applicant’s
brief contains argument about the marketing of clothing
items by religious groups, it is simply argument of counsel
and it is unsupported by the record. Therefore, we will
not consider this “evidence.” Second, if we are being
asked to read limitations into the identification of goods
based on assumptions drawn from the name of the registrant,
we decline to do so. We are constrained to consider the
issue of likelihood of confusion based on the goods
identified in the application and registration. See
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983) (“There is no specific limitation here,
and nothing in the inherent nature of Squitco’s mark or
goods that restricts the usage of SQUIRT for balloons to
promotion of soft drinks. The board, thus, improperly read
limitations into the registration”). Similarly, nothing in
registrant’s marks or identification of goods prohibits the
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sale of registrant’s goods in department or discount
stores. While applicant has limited its channels of trade,
the registrant’s identification of goods is not limited.
If applicant believes that the identification of goods
should be limited, it may file a petition to cancel in
which it may seek to “modify the … registration by limiting
the goods or services specified therein.” 15 U.S.C. §
1068. Therefore, we find that applicant’s and registrant’s
goods are, in part, identical, and we can presume that
these identical goods pass through channels of trade that
are also at least overlapping to the extent that they
involve department and discount stores and that they would
be encountered by the same potential purchasers.
Next, we consider whether the marks are similar in
sound, appearance, meaning or commercial impression. du
Pont, 177 USPQ at 567. Both marks contain words or
numerals that could be considered to be the expression “one
eighty.” Applicant uses the number “180,” while
registrant’s marks contain the word “oneighty” (‘729) and
the word “oneighty” with the numerals 1, 8, and 0 (‘730).
Even applicant admits that “[I]f the marks were deciphered
correctly, they could be pronounced as ‘180.’” Response
dated August 28, 2000, p. 3. While applicant uses numerals
and registrant uses a phonetic equivalent of the same
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numerals with a slight misspelling, this fact does not
result in any significant differences in the parts of the
marks that can be spoken. In re Research and Trading
Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986)
(“There is little room to debate the similarity between
ROPELOCK and ROPELOK in appearance”). Here, the registered
marks are likely to be verbalized as “one eighty” and
therefore the spoken portion of the marks would be
pronounced identically. The only differences between the
marks consist of their designs. Applicant’s mark contains
a circle design with a degree symbol while registrant’s
marks contain an oval design (‘729) or stylized numbers
(‘730). The differences in the design elements do not
overcome the other similarities of the marks. We
acknowledge that the marks are not identical although that,
of course, does not end the likelihood of confusion
analysis. It is well settled that it is improper to
dissect a mark. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993). However, more or less
weight may be given to a particular feature of a mark for
rational reasons. In re National Data Corporation, 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
When we compare marks, “[s]ide-by-side comparison is
not the test. The focus must be on the ‘general
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recollection’ reasonably produced by appellant’s mark and a
comparison of appellee’s mark therewith.” Johann Maria
Farina Gegenuber Dem Julichs-Platz v. Chesebrough-Pond,
Inc., 470 F.2d 1385, 176 USPQ 199, 200 (CCPA 1972)
(citation omitted). The fact that applicant’s mark is
depicted in numerals and registrant’s marks contain a
telescoped word that stand for the same numerals is not
significant. In a similar case, the Board held that the
mark for the words “THIRTY, FORTY, FIFTY” for cold cream
was confusingly similar to the registered mark for the
numerals “60 40 20” for conditioning skin cleanser.
Richardson-Vicks Inc. v. Franklin Mint Corp., 216 USPQ 989
(TTAB 1982). The Board found that “the fallibility of the
human memory over a period of time” supported the
conclusion that confusion was likely. Id. at 992. See
also Clorox Company v. State Chemical Mfg. Co., 197 USPQ
840, 844 (TTAB 1977) (“[T]aking into account, as we must,
the fallibility of the human memory over a period of time,
we conclude that applicant’s mark “FORMULA 999’ so
resembles opposer’s mark ‘FORMULA 409’ as to be likely” to
cause confusion). Here, we take into consideration the
facts that applicant’s mark is composed of numerals, a
degree-like symbol, and a circular design. On the other
hand, both registered marks contain the telescoped word
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equivalent of the applicant’s 180 numerals. One mark
contains an oval design, while the other registration
contains stylized characters that appear to be the numbers
1, 8, and 0. However, these differences are not sufficient
to distinguish the marks. In appropriate cases, a finding
of similarity as to any one factor (sight, sound or
meaning) alone may be sufficient to support a holding that
the marks are confusingly similar.” In re White Swan Ltd.,
8 USPQ2d 1534, 1535 (TTAB 1988). Here, the marks would be
pronounced similarly and would have the same meaning, i.e.
180. “While the appearance of the designs is not
identical, we cannot agree that the marks are simply visual
marks. They have a spoken component to them that would be
used when referring to the goods sold under the marks.
In a similar case, the Federal Circuit has held that
there was a likelihood of confusion even where the
applicant disclaimed the only wording in the mark, the
designs were different, and the services of the parties
were not the same. Shell Oil, 26 USPQ2d at 1691 (“RIGHT-A-
WAY and design for service station oil and lubrication
services confusingly similar to RIGHT-A-WAY and different
design for distributorship services in the field of
automobile parts). Here, applicant’s and registrant’s
marks contain the same numerical expression and the designs
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do not significantly distinguish the marks. Therefore, we
find that the marks are similar. Also, the goods in this
case are, in part, identical. As a result, we conclude
that when these similar marks are used on identical goods,
there is a likelihood of confusion.
Reinforcing our conclusion that there is a likelihood
of confusion is the fact that several of the goods here are
identical. Because the marks would be used on identical
clothing items, there is a greater likelihood that when
similar marks are eventually used in this situation,
confusion would be likely. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992) (“When marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines”).
Applicant makes much of the fact that other
registrations exist or had existed for clothing items
containing the expression “180.”6 The weight given to
third-party registrations in likelihood of confusion
determinations is minimal. “[T]hird party registrations
are entitled to little weight in resolving a particular

6 Applicant’s argument concerning registrations for the number
“360” are even less relevant to the issue in this case.
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issue of likelihood of confusion because they are
insufficient, per se, to establish that the marks shown
therein are in use or that the purchasing public is aware
of them, nor can their existence aid an applicant in its
attempt to register a similar mark for like or related
goods if confusion is likely to occur.” Clorox Co., 197
USPQ at 844. See also In re Hub Distributing, Inc., 218
USPQ 284, 285 (TTAB 1983) (“[A]bsent evidence of actual use
of the marks subject of the third-party registrations, they
are entitled to little weight on the question of likelihood
of confusion”). Even if the Office may have registered
marks that could be considered confusingly similar with the
cited registration hardly supports the registration of
another confusingly similar mark. In this particular case,
one of the marks to which applicant refers (Reg. No.
2,145,497) was cancelled voluntarily shortly after
registration. The other two registrations, No. 1,897,011
for the mark 180° ABOVE and a globe and hand design and No.
2,018,327 for the mark 180° FROM ANYWHERE, contain
significant other elements not present in applicant’s mark.
Furthermore, even a weak mark is entitled to protection
when marks as similar as applicant’s and registrant’s are
used on the identical goods.
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Finally, even if we had doubts about the issue of
likelihood of confusion, we must resolve them against
applicant.
If there be doubt on the issue of likelihood of
confusion, the familiar rule in trademark cases, which
this court has consistently applied since its creation
in 1929, is that it must be resolved against the
newcomer or in favor of the prior user or registrant.
The rule is usually applied in inter partes cases but
it applies equally to ex parte rejections.

In re Pneumatiques, Caoutchouc Manufacture et Platitudes
Kleber-Colombes, 487 F.2d 918, 179 USPQ 729, 729 (CCPA
1973). See also Dixie Restaurants, 41 USPQ at 1535 (“Dixie
argues alternatively that the PTO should pass the mark to
publication and allow the registrant to oppose the
applicant's mark, if it chooses. But it is the duty of the
PTO and this court to determine whether there is a
likelihood of confusion between two marks”).
Decision: The Examining Attorney’s refusal to
register applicant’s mark on the ground that it is likely
to cause confusion with the cited registrations under
Section 2(d) of the Trademark Act is affirmed.