Shalom International, Inc.

Trademark Trial and Appeal Board

Aug 29, 2008

No. 76666376 (T.T.A.B. Aug. 29, 2008)

Mailed:
Aug. 29, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Shalom International, Inc.
________

Serial No. 76666376
_______

Joseph Sutton of Ezra Sutton, P.A. for Shalom
International, Inc.

Benji Paradewelai, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Grendel, Cataldo and Bergsman, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Shalom International, Inc., applicant herein, seeks
registration on the Principal Register of the mark FAB
FRIENDS (in standard character form) for goods identified
in the application as “hair accessories, namely, hair
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 76666376
2
clips, pony tail holders, barrettes, and head bands,” in
Class 26.1
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as applied to the goods
identified in the application, so resembles the mark FAB
FRIENDS, previously registered (in standard character form)
for Class 16 goods identified in the registration as

printed materials, namely, stickers, sticker
albums and books, notebooks, folders, binders,
organizers for stationery and personal
organizers, stationery-type portfolios, writing
pads, memo pads, stationery, pencils, pencil
cases, pencil sharpeners, pens, markers, coloring
books, diaries, greeting cards, arts and crafts
painting and drawing kits, and paper party goods,
namely hats, invitations, napkins, tablecloths,
streamers, confetti, and paper noisemakers,

as to be likely to cause confusion, to cause mistake, or to
deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d).
After careful consideration of the evidence of record
and the arguments of counsel, we affirm the refusal to
register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in

1 Serial No. 76666376, filed on September 21, 2006. The
application is based on use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a). January 2002 is alleged in the
Ser. No. 76666376
3
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
The first du Pont factor requires us to determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and commercial impression. Palm Bay Imports, Inc., supra.
Here, applicant’s mark FAB FRIENDS is identical to the
cited registered mark FAB FRIENDS in terms of appearance,
sound, connotation and commercial impression. Accordingly,
we find that the first du Pont factor weighs in favor of a
finding of likelihood of confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods as identified in
the application and in the cited registration. It is
settled that it is not necessary that the goods be

application to be the date of first use of the mark anywhere and
the date of first use of the mark in commerce.
Ser. No. 76666376
4
identical or even competitive in order to find that the
goods are related for purposes of our likelihood of
confusion analysis. That is, the issue is not whether
consumers would confuse the goods themselves, but rather
whether they would be confused as to the source of the
goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). It
is sufficient that the goods be related in some manner, or
that the circumstances surrounding their use be such, that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source or that
there is an association or connection between the sources
of the respective goods. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991);
and In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978). Finally, in cases such as this where
the applicant’s mark is identical to the cited registered
mark, there need be only a viable relationship between the
respective goods in order to find that a likelihood of
confusion exists. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687 (Fed. Cir. 1993); In re Opus One Inc., 60
Ser. No. 76666376
5
USPQ2d 1812 (TTAB 2001); and In re Concordia International
Forwarding Corp., 222 USPQ 355 (TTAB 1983).
The Trademark Examining Attorney has made of record
two use-based third-party registrations which include in
their identifications of goods both hair accessories like
those identified in applicant’s application and stationery
and party items like those identified in the cited
registration. Although such registrations are not evidence
that the marks shown therein are in use or that the public
is familiar with them, they nonetheless have probative
value to the extent that they serve to suggest that the
goods listed therein are of a kind which may emanate from a
single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).2
In response to the Trademark Examining Attorney’s
third-party registration evidence, applicant has submitted
printouts of three listings of third-party registrations
obtained from www.trademark.com. These lists identify the
third-party registrations only by number, status and mark.
According to applicant, the lists show that there are

2 The third third-party registration submitted by the Trademark
Examining Attorney is a Section 44 registration which is not
based on use in commerce, and which therefore is not probative
under Trostel and Mucky Duck.

Ser. No. 76666376
6
18,223 third-party registrations in Class 16 for goods like
those identified in the cited registration, 792 third-party
registrations in Class 26 for goods like applicant’s, and
104 third-party registrations which cover goods in both
Class 16 and Class 26. Applicant argues that this evidence
proves that out of the total of 19,015 third-party
registrations for goods in Class 16 and in Class 26, only
104, or less than one percent, include in their
identifications goods in both Class 16 and Class 26.
We sustain the Trademark Examining Attorney’s
objection to this purported third-party registration
evidence submitted by applicant. Third-party registrations
may not be made of record by submitting merely a list of
them from commercial search services. In re Dos Padres
Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998); In re Broadway
Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB 1996).3
Additional evidence in the record shows that hair
accessories like applicant’s and stationery and party items
like registrant’s are types of goods which may emanate from

3 Additionally, applicant’s novel argument based on the alleged
total numbers and percentages of registrations in the respective
classes is completely unpersuasive and unsupported by any
authority. Thus, even if the third-party registrations had been
properly made of record, we find that they would have had little
or no probative value. Moreover, if in fact there are 104 third-
party registrations covering pertinent goods in both Class 16 and
Class 26, such evidence would weigh heavily in favor of a finding
of likelihood of confusion under Trostel and Mucky Duck.
Ser. No. 76666376
7
or be associated with a single source. The website
www.cartoonfans.club.com shows that hair accessories and
stationery items both are types of collateral goods which
are sold in connection with Disney and Nickelodeon cartoon
characters like Winnie the Pooh and Dora the Explorer. The
website www.hairboutique.com offers for sale a “Diva Club”
product consisting of a “Mini Journal Notebook with Lip
Gloss, Glitter and Hair Clip.” The website
www.hairutopia.com informs purchasers that “We are a
leading manufacturer and have the world’s largest
selections of fashion accessories, hair accessories,
personal care, bath and body, cosmetics, novelties, jewelry
and stationery.”
Based on this evidence, we find that applicant’s hair
accessory products and registrant’s stationery and party
supply products are related, for purposes of the second du
Pont factor. As noted above, because applicant’s mark is
identical to the cited registered mark, there need be only
a viable relationship between the respective goods in order
to find that a likelihood of confusion exists. See In re
Shell Oil Co., supra; In re Opus One Inc., supra. We find
that the evidence of record suffices to establish the
requisite viable relationship between the respective goods
Ser. No. 76666376
8
in this case. The second du Pont factor weighs in favor of
a finding of likelihood of confusion.
The third du Pont factor requires us to consider the
similarity or dissimilarity of the trade channels in which
applicant’s and registrant’s respective goods are marketed.
The Trademark Examining Attorney has submitted printouts
from nine third-party websites from which a purchaser may
purchase both hair accessories and stationery and party
products. These are: www.claires.com; www.limitedtoo.com;
www.sanrio.com; www.hairboutique.com; www.hairutopia.com;
www.thefrogstore.com; www.partyamerica.com;
www.cartoonfans.club.com; and
www.discountpartysupply.makesparties.com. Applicant argues
that its type of goods and the registrant’s type of goods
are offered for sale on different pages of the websites and
that the websites therefore are like large department
stores in which many different types of goods are sold in
different departments without causing a likelihood of
confusion. We find, however, that the fact that the
respective goods might appear on different pages of the
website is not dispositive; the respective goods are only a
mouse click away from each other. Moreover, as the
Trademark Examining Attorney persuasively argues, these
websites are not like large department stores, but rather
Ser. No. 76666376
9
are largely the websites of smaller, boutique retailers
marketing specifically to young girls and teenagers.
Based on this evidence, we find that applicant’s type
of goods and registrant’s type of goods are or would be
marketed in similar and overlapping trade channels. The
third du Pont factor accordingly weighs in favor of a
finding of likelihood of confusion.
Under the fourth du Pont factor, we consider evidence
pertaining to the conditions under which applicant’s and
registrant’s respective goods are purchased. The record
shows that these goods are inexpensive products purchased
by ordinary purchasers, including children. They would not
necessarily be purchased with a significant degree of care
or sophistication. We find that the fourth du Pont factor
weighs in favor of a finding of likelihood of confusion.
Considering all of the evidence of record as it
pertains to the relevant du Pont factors, we conclude that
applicant’s use of the mark FAB FRIENDS on hair accessories
and registrant’s use of the identical mark on stationery
and party items is likely to result in confusion as to
source, sponsorship or affiliation. To the extent that any
doubts might exist as to the correctness of this
conclusion, we resolve such doubts against applicant. See
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed.
Ser. No. 76666376
10
Cir. 1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc., supra.
Decision: The refusal to register is affirmed.