Spy Optic, Inc.

Trademark Trial and Appeal Board

Aug 28, 2003

No. 76254679 (T.T.A.B. Aug. 28, 2003)

Mailed:
August 28, 2003
Paper No. 11
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Spy Optic, Inc.
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Serial No. 76/254,679
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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).
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Before Cissel, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Spy Optic, Inc., seeks registration on the Principal
Register for the mark shown below:
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76/254,679
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for “wearing apparel, namely, T-shirts, shirts, shorts, pants,
sweatshirts, sweatpants, hats, visors, shoes, sandals and
belts,” in International Class 251.
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 “SPY and
design” mark, 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 a finding of likelihood of
confusion. Applicant also argues that its items of wearing
apparel are different from those listed by registrant, as its
goods are associated with extreme sporting events. As such,
1 Application Serial Number 76/254,679, filed on May 9, 2001,
based upon an allegation of use in commerce since at least as early
as December 1997.
2 Registration No. 1,981,264 issued on the Principal Register on
June 18, 1996, Section 8 affidavit has been accepted.
Serial No. 76/254,679
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applicant contends that they move in different channels of
trade. 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
and 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 when these respective marks, both having
the arbitrary term “Spy” as their predominant element, are
applied to the identified goods, which are in part identical.
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 evidence is of
record, must be considered in determining likelihood of
confusion. In any likelihood of confusion analysis, two key
factors 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). Yet applicant has
Serial No. 76/254,679
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enclosed copies of webpages demonstrating that its goods are
associated with “extreme sporting events such as surfing, dirt
bike riding, snow boarding, motor cross (sic), free skiing,
skating and the like.” (applicant’s appeal brief, p. 19;
response to Office Action dated February 20, 2002, Exhibits A
– C). While these webpages clearly do reveal a focus on such
sports, there is no such limitation in the identification of
goods in the application. Hence, we must consider some of
these listed goods to be legally identical, and the others to
be closely related. Moreover, based upon the application and
the cited registration, we must also presume that the goods of
registrant and of applicant will move in the same channels of
trade to the same classes of ordinary consumers.
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 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. On the other hand, the word
“spy” is an arbitrary designation for these items of clothing.
Serial No. 76/254,679
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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 connotation, both marks create
imagery tied to the generally understood, dictionary meaning
of the word “spy.” Hence, in spite of applicant’s arguments
to the contrary, both “Fashion Spy” and “Spy,” as applied to
items of clothing, connote clandestine activities, such as
watching someone (or something) in secret.
The word “fashion” at the beginning of registrant’s mark
and the exclamation point at its ending are insufficient to
distinguish the two marks when they are applied to identical
and closely related goods. Similarly, the presence of
applicant’s shield design does create a somewhat different
appearance, but we find that this too is insufficient to
distinguish the two marks as to overall commercial
impressions.
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 of third-party uses of other “SPY” marks for
goods similar to the types of goods involved in this case.
Serial No. 76/254,679
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In support of applicant’s position that the “shield”
design is a prominent part of its mark, applicant has pointed
to its earlier registration for sunglasses, for the mark shown
below:
3
We accept that applicant considers this matter to be a
separate source indicator for its sunglasses. However, when
this device becomes a carrier for applicant’s SPY mark (in the
instant case, the interior area of the cross is darkened with
the words presented as contrasting white letters against a
black background), and is applied to items of clothing, the
“shield” design per se becomes less important as a source
indicator. Generally, 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
3 Reg. No. 2,157,268, issued on the Principal Register on May 12,
1998, claiming dates of first use of October 1996 on “sunglasses” in
International Class 9.
Serial No. 76/254,679
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calling for the goods in the marketplace, or in recommending
the goods to others. 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).
As to applicant’s argument that the United States Patent
and 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), when combined
with the various differences applicant points out in the
respective marks, it would have been extremely difficult for a
Trademark Examining Attorney to have refused registrant’s
FASHION SPY! mark for clothing based solely upon applicant’s
SPY mark for sunglasses. Unfortunately (from applicant’s
perspective), registrant adopted its mark for clothing items
in International Class 25 before applicant expanded to these
“collateral” goods.
Decision: The refusal to register is affirmed.