Spy Optic, Inc.

Trademark Trial and Appeal Board

Sep 8, 2000

No. 75294219 (T.T.A.B. Sep. 8, 2000)

Paper No. 9
9/8/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Spy Optic, Inc.
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Serial No. 75/294,219
_______
Kit M. Stetina of Stetina Brunda Garred & Brucker for Spy
Optic, Inc.
Henry S. Zak, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Cissel, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Spy Optic, Inc., a California corporation, has filed
an application for registration of the mark “SPY and
design” as shown below, on the Principal Register for
“wearing apparel, namely, shirts, T-shirts, shorts, pants,
sweatshirts, sweatpants, hats, visors, shoes and belts,” in
International Class 251:

1 Serial Number 75/294,219, filed on May 19, 1997, based upon
the assertion of a bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/294,219
2
The Trademark Examining Attorney issued a final
refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, “SPY and design,” when used on its goods,
so resembles the mark, “FASHION SPY!” which is registered
for “clothing, namely tops, skirts, shorts, skorts, pants,
shirts, dresses, jumpers, jackets,” as to be likely to
cause confusion, or to cause mistake, or to deceive.2
Applicant has appealed the final refusal to register.
Briefs have been filed, but applicant did not request an
oral hearing. We affirm the refusal to register.
Applicant argues that the two marks are different as
to sight, sound and connotation, and that these collective
dissimilarities weigh against finding likelihood of
confusion. Furthermore, applicant argues that the
allowance of registrant’s “FASHION SPY!” mark for clothing
over applicant’s “SPY” mark for sunglasses shows that the
United States Patent & Trademark Office has already made
the determination that there is no likelihood of confusion
between the word portions of the marks at issue herein.
By contrast, the Trademark Examining Attorney argues
that confusion is likely if these respective marks, both

2 Registration No. 1,981,264 issued on June 18, 1996. The
registration sets forth dates of first use of January 4, 1995.
Serial No. 75/294,219
3
having the arbitrary term “Spy” as their predominant
element, are applied to these identical goods.
In the course of rendering this decision, we have
followed the guidance of In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973).
This case sets forth the factors, which if relevant, should
be considered in determining likelihood of confusion. In
any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
We turn first to an examination of the goods. As
noted by the Trademark Examining Attorney, some of the
clothing items identified in the application and
registration are identical (e.g., shirts, shorts and
pants), and even though there are differences in the
listings, all these goods are very closely related items of
apparel.
Turning then to the marks, as our principal reviewing
court, the Court of Appeals for the Federal Circuit, has
pointed out, “[w]hen marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
Serial No. 75/294,219
4
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
As applied to clothing, the word “Fashion” must be
deemed to be at least highly suggestive, if not
descriptive. On the other hand, the word “Spy” is an
arbitrary designation for these items of clothing.
Accordingly, in spite of the extra word in registrant’s
mark, the single strongest source indicator therein is the
word “SPY.”
As to the similarity in overall commercial
impressions, both marks create imagery tied to the
generally understood, dictionary meaning of the word “spy.”
Hence, both “Fashion Spy” and “Spy,” as applied to items of
clothing, connote clandestine activities, watching someone
(or something) in secret.
The addition of “FASHION” in registrant’s mark is
insufficient to distinguish the two marks when applied to
identical and closely related goods. In finding that the
marks are similar, we have kept in mind the fallibility of
human memory over time and the fact that the average
consumer retains a general rather than a specific
impression of trademarks encountered in the marketplace.
Further, we note that the record is devoid of any evidence
Serial No. 75/294,219
5
of third-party uses of other “SPY” marks for goods similar
to the types of goods involved in this case.
In support of applicant’s position that the “shield”
design is a prominent part of its mark, applicant has made
of record its earlier registration for sunglasses,3 for the
mark shown below:
We accept that applicant considers this matter to be a
separate source indicator for sunglasses. However, when
this device becomes a carrier for applicant’s house mark,
“SPY,” and is applied to items of clothing, as is the case
with the composite mark herein, the “shield” design becomes
less important as a source indicator. The addition of a
background device not easily described will not obviate
confusion created by similar word marks. Rather, we agree
with the Trademark Examining Attorney that the word “SPY”
is the dominant portion of the mark and the portion that
will be relied upon by consumers in calling for the goods
in the marketplace, or in recommending the goods to others.

3 Reg. No. 2,157,268, issued on May 12, 1998, claiming dates
of first use of October 1996 on “sunglasses” in International
Class 9.
Serial No. 75/294,219
6
As a general rule, design elements of a mark are of lesser
import, because it is the word portion of a mark, rather
than any design feature, unless highly distinctive, which
is more likely to be remembered and relied upon by
customers in calling for the goods. See Ceccato v.
Manifattura Lane Gaetano Marzotto & Fugli S.p.A., 32 USPQ2d
1192 (TTAB 1994); In re Appetito Provisions Co., 3 USPQ2d
1553 (TTAB 1987).
As to applicant’s contention that it has a “family” of
SPY marks, again we agree with the Trademark Examining
Attorney’s contention to the contrary. While applicant may
own several registrations where the marks contains the word
“SPY,” there has been no showing in this record that this
limited number of registrations support a finding of a
“family of marks.”
As to applicant’s argument that the United States
Patent & Trademark Office has already made the
determination that there is no likelihood of confusion
between the word portions of the marks at issue herein, we
disagree with this conclusion. Given the cumulative
differences in the respective goods (sunglasses versus
clothing) and those differences applicant points out in the
marks, it would have been extremely difficult for a
Trademark Examining Attorney to have refused registrant’s
Serial No. 75/294,219
7
“FASHION SPY!” mark based solely on applicant’s “SPY” mark
for eyeglasses. Unfortunately from applicant’s
perspective, registrant adopted its mark for clothing items
in International Class 25 before applicant expanded to
these collateral goods.4
Decision: The refusal to register is affirmed.
R. F. Cissel
D. E. Bucher
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

4 In reviewing other possible du Pont factors, certainly if
applicant had obtained a consent agreement from the owner of the
cited registration, the Trademark Examining Attorney and this
Board would surely have been constrained to give it serious
consideration in accordance with legal practice and precedent in
this regard. However, in spite of its arguments that confusion
was most unlikely, applicant did not present the Office with such
an agreement.