Sofrane

Trademark Trial and Appeal Board

Jun 9, 2010

No. 77384952 (T.T.A.B. Jun. 9, 2010)

Hearing: 4/6/10 Mailed: 6/9/10

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Sofrane
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Serial No. 77384952
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Donald L. Dennison of Dennison, Schultz & MacDonald for
Sofrane.

Barney L. Charlon, Trademark Examining Attorney, Law Office
104 (Michael W. Baird, Managing Attorney).
_______

Before Quinn, Hairston and Kuhlke, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Sofrane filed, on January 31, 2008, an intent-to-use
application to register the mark RENDEZ-VOUS BY PAUL & JOE
SISTER for
clothing, excluding ladies’ foundation
garments, namely trousers, pants,
jogging suits, shorts, skirts, dresses,
tops, shirts, sweatshirts, tee shirts,
slipovers, waist-coats, jumpers,
jackets, vests, cardigans, striped
suits, raincoats, suits, ties, scarves,
shawls, stockings, socks, gloves, swim
suits, pajamas, nightgowns; footwear,
namely, shoes, moccasins, tennis shoes,
thongs, leather shoes and boots; and
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser No. 77384952
2
headwear, namely hats and caps (in
International Class 25).1

The trademark examining attorney refused registration
under Section 2(d), 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used in connection with applicant’s
goods, so resembles the previously registered mark
RENDEZVOUS for “foundation garments” (in International
Class 25)2 as to be likely to cause confusion.
When the refusal to register was made final, applicant
appealed. Applicant and the examining attorney filed
briefs,3 and both appeared at an oral hearing.
Applicant asserts that it has deleted from its
identification of goods all reference to underwear
articles, going so far as to include a specific exclusion
of “ladies’ foundation garments,” the goods listed in the
cited registration. Thus, applicant argues, the respective
goods have a “competitive distance,” that is, the goods are
very different types of clothing, having different uses and
being sold in different sections of department stores.

1 Applicant claims ownership of Registration Nos. 2289813 and
2881967, both for the mark PAUL & JOE, the first covering
clothing items and the second covering cosmetics and personal
hygiene products. The application also includes a statement that
“‘Paul & Joe Sister’ does not identify any living individuals.”
2 Registration No. 1833907, issued May 3, 1994; renewed.
3 The examining attorney’s request for the Board to take judicial
notice of the dictionary definition of “foundation(s)” is
granted.
Ser No. 77384952
3
Applicant also points to its incorporation of its “house
mark” in the mark sought to be registered.
The examining attorney maintains that the marks are
similar, with the additional wording in applicant’s mark
insufficient to distinguish the marks. The examining
attorney further contends that the goods are similar,
relying on several third-party registrations listing both
foundation garments and other types of clothing.
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,
however, two key considerations are the similarities
between the marks and the similarities between the goods.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first turn to consider the marks. We must compare
the marks in their entireties as to appearance, sound,
connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
Ser No. 77384952
4
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
test, under the first du Pont factor, is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression
that confusion as to the source of the goods offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
In light of the above, we compare applicant’s mark
RENDEZ-VOUS BY PAUL & JOE SISTER to registrant’s
RENDEZVOUS. The first portion of applicant’s mark is
essentially identical to the entirety of registrant’s mark.
The hyphen in applicant’s RENDEZ-VOUS portion does not
serve to distinguish this portion from registrant’s mark.
See Goodyear Tire & Rubber Co. v. Dayco Corp., 201 USPQ
485, 488 n.1 (TTAB 1978) (FAST-FINDER with hyphen is in
legal contemplation substantially identical to FASTFINDER
without hyphen); and Charrette Corp. v. Bowater
Communication Papers Inc., 13 USPQ2d 2040, 2042 (TTAB 1989)
(PRO-PRINT is similar to PROPRINT). Moreover, purchasers
in general are inclined to focus on the first word or
Ser No. 77384952
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portion in a trademark. Presto Products, Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
often the first part of a mark which is likely to be
impressed upon the mind of a purchaser and remembered”).
See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 73 USPQ2d at 1692.
Further, it is a general rule that likelihood of
confusion is not avoided between otherwise confusingly
similar marks merely by adding or deleting a house mark.
Thus, given the near identity between the first portion of
applicant’s mark and the entirety of registrant’s mark,
confusion is likely notwithstanding any differences between
the marks. In re Chica, 84 USPQ2d 1845 (TTAB 2007)
(likelihood of confusion between CORAZON and CORAZON BY
CHICA for jewelry); and In re Apparel Ventures, Inc., 229
USPQ 225 (TTAB 1986) (SPARKS BY SASSAFRAS (stylized) for
clothing held likely to be confused with SPARKS (stylized)
for footwear). There is no exception to the general rule
in the present case because the marks in their entireties
do not convey different commercial impressions, and the
common matter in the marks is neither merely descriptive
nor diluted. See generally TMEP §1207.01(b)(iii) (6th ed.,
rev. 2, 2010).
Ser No. 77384952
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Accordingly, the similarity between the marks in
appearance, sound, meaning and commercial impression weighs
in favor of a finding of likelihood of confusion.
We next turn to consider the goods. With respect to
this second du Pont factor, it is not necessary that the
respective goods be competitive, or even that they move in
the same channels of trade to support a holding of
likelihood of confusion. 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. It is sufficient that the respective goods are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods 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
originated from the same producer. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991). Likelihood of confusion may be
found based on any item that comes within the
identification of goods in the involved application or
registration. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In
considering this du Pont factor, we acknowledge that there
is no per se rule governing likelihood of confusion in
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cases involving clothing items. In re British Bulldog,
Ltd., 224 USPQ 854 (TTAB 1984).
As shown by the dictionary definition of record,
“foundation(s)” are undergarments that include, among
others, a one-piece bra and girdle, and a bustier, a one-
piece bra and waist cincher. Fairchild’s Dictionary of
Fashion (2d ed. 1998). The record includes evidence that
foundation garments, as well as other clothing items (e.g.,
skirts, dresses and jumpers), often emanate from the same
source under the same mark. In connection with this du
Pont factor, the examining attorney introduced several
third-party use-based registrations showing that the same
entities have registered a single mark for underwear, as
well as for clothing items identical to some of the ones
listed in the involved application. “Third-party
registrations which cover a number of differing goods
and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in
use on a commercial scale or that the public is familiar
with them, may nevertheless have some probative value to
the extent that they may serve to suggest that such goods
or services are of a type which may emanate from a single
source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470
n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See
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also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
86 (TTAB 1993). In passing, we also note that applicant’s
original identification of goods, in connection with which
applicant alleged a bona fide intent to use the mark,
included “underwear.” Because of the relatedness between
clothing and foundation garments, applicant’s strategy of
deleting “underwear” and adding the terminology “excluding
ladies’ foundation garments” in its identification of goods
falls short of sufficiently distinguishing the goods for
purposes of the likelihood of confusion analysis.
Insofar as the trade channels and classes of
purchasers are concerned, we note that there are no trade
channel limitations in either applicant’s or registrant’s
identification of goods. Accordingly, we must presume that
the goods, as identified, are marketed in all normal trade
channels for such goods and to all normal classes of
purchasers for such goods. In re Elbaum, 211 USPQ 639
(TTAB 1981). Thus, given the similarity between foundation
garments and clothing, we presume that the goods move in
the same or similar trade channels (e.g., clothing stores,
boutiques, department stores, and the like). Further,
given the absence of any limitations as to purchasers, we
presume that the goods are bought by the same classes of
consumers, including ordinary ones. Inasmuch as the
Ser No. 77384952
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identifications do not include any limitations as to cost,
we must also presume that the goods include relatively
inexpensive items that would be subject to impulse purchase
made by ordinary consumers with nothing more than ordinary
care.
The above du Pont factors relating to the similarities
of the goods, trade channels, purchasers and conditions of
sale all weigh in favor of finding a likelihood of
confusion. See Cambridge Rubber Co. v. Cluett, Peabody &
Co., Inc., 286 F.2d 623, 128 USPQ 549, 550 (CCPA 1961)
(likelihood of confusion between identical marks for “men’s
and boys’ underwear” and “women’s boots”); Jockey
International Inc. v. Mallory & Church Corp., 25 USPQ2d
1233 (TTAB 1992) (underwear and neckties); In re Lar Mor
International, Inc., 221 USPQ 180, 181 (TTAB 1983)
(“Women’s undergarments and women’s outerwear such as
sweaters, shirts, and skirts, we believe, are sufficiently
related so that if they were sold under confusingly similar
marks, there would be a likelihood of confusion.”); David
Crystal, Inc. v. Glamorise Foundations, Inc., 189 USPQ 740,
741 (TTAB 1976) (“various articles of wearing apparel are
generally purchased in the same retail outlets by the same
class of purchasers and often during the course of the same
shopping excursion...Brassieres sold in packages are goods
Ser No. 77384952
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that one may expect to find in the same retail outlets, or
in closely associated retail departments in variety or
department stores, that would sell opposer’s goods,
particularly ladies’ suits, skirts, blouses and dresses,
for which applicant’s goods are complementary items.
Accordingly, we take applicant’s goods to be closely
related to opposer’s goods.”); and Esquire Sportswear Mfg.
Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) (brassieres
and girdles related to slacks for men).
We conclude that consumers familiar with registrant’s
foundation garments sold under the mark RENDEZVOUS would be
likely to mistakenly believe, upon encountering applicant’s
mark RENDEZ-VOUS BY PAUL & JOE SISTER for women’s clothing
items, that these goods originated with or are somehow
associated with or sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. 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., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.