Style Monarchy, Ltd.

Trademark Trial and Appeal Board

Jun 26, 2013

No. 85329284 (T.T.A.B. Jun. 26, 2013)

Mailed: June 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Style Monarchy, Ltd.
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Serial No. 85329284
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Dana B. Robinson of Techlaw LLP for Style Monarchy, Ltd.
Maureen Dall Lott, Trademark Examining Attorney, Law Office 117 (Brett J.
Golden, Managing Attorney).
_______

Before Cataldo, Taylor and Lykos, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:

On May 24, 2011, Style Monarchy, Ltd. (“applicant”) filed an application to
register the mark, as amended, STYLEMONARCHY in standard character form for
“uniforms” in International Class 25.1
The Trademark Examining Attorney refused registration of applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground

1 Application Serial No. 85329284, filed pursuant to Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).

This Opinion is Not a
Precedent of the TTAB
Serial No. 85329284
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that applicant’s mark so resembles the registered marks MONARCHY2 in standard
character form for “clothing, namely, shirts, [blazers,] jackets, hooded jackets, t-
shirts, shorts, dresses, leather belts, hats, [sweaters,] thermal undershirts, [slacks,]
denimwear, namely, pants and jeans” in International Class 25 and the stylized M
MONARCHY mark displayed below3

for “clothing, namely, shirts, blazers, jackets, hooded-jackets, t-shirts, shorts,
dresses, leather belts, hats, sweaters, thermal undershirts, slacks, denimwear,
namely, pants and jeans” in International Class 25, both owned by the same entity,
(ABG HMX LLC) that when used on or in connection with applicant’s identified
goods, it is likely to cause confusion or mistake or to deceive.
Following a request for reconsideration which was denied, applicant has
appealed the examining attorney’s final refusal to register the application. The case
is fully briefed. For the reasons explained below, we affirm the refusal to register.

2 Registration No. 3131717, registered on August 22, 2006, alleging December 20, 2004 as
the date of first use anywhere and January 19, 2005 as the date of first use in commerce;
Sections 8 and 15 affidavits acknowledged and accepted.

3 Registration No. 3338650, registered November 20, 2007, alleging December 20, 2004 as
the date of first use anywhere and January 19, 2005 as the date of first use in commerce.
Color is not claimed as a feature of the mark.
Serial No. 85329284
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We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”).
See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (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 and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors and the other relevant du Pont
factors are discussed below.
I. The Goods and Channels of Trade
First we consider the similarities or dissimilarities of the goods. In doing so, we
keep in mind that the test is not whether consumers would be likely to confuse the
goods but rather would be likely to be confused as to their source. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1,
3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
Applicant maintains that because it is providing only “spa uniforms” sold to spa
professionals as opposed to “pedestrian clothes such as jeans and t-shirts,” the goods
are distinct and the consumer markets are so disparate as to make confusion
unlikely. Applicant’s Brief, unnumbered p. 6. Applicant also cites to prior decisions
where the Board found no likelihood of confusion involving clothing items, as well
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as pointing to the principle that all clothing products cannot be said to be per se
related.
Applicant’s arguments are unpersuasive. As identified, applicant’s and
registrant’s goods are legally identical. This is because registrant’s articles of
clothing identified without any limitation as to the type of clothing necessarily
encompass applicant’s more narrowly defined type of clothing -- “uniforms.” Indeed,
this case is similar to In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) where the
Board determined that the applied-for mark CAREER IMAGE in stylized form for
“women's clothing, namely - dresses, blouses, pants, pantyhose, suits, jackets,
skirts, shoes and sweaters” was likely to cause confusion with the registered
stylized mark CREST CAREER IMAGES for ““uniforms - namely, tops, blazers,
skirts, pants, dresses, jumpsuits, culottes, hats, scarves, ties, vests and aprons.”
The Board, in reaching its decision, held that “[t]he goods must, for our purposes, be
considered to be identical…and the services are closely related to the goods.
Applicant sells women's clothing and renders a retail women's clothing store
services under its mark. Registrant also sells clothing under its mark. Specifically it
sells uniforms, including skirts, dresses, culottes and other items of women's
clothing. There can be no debate that applicant's broad identification of its goods
encompasses registrant's goods. … Uniforms are clearly clothing.” Id. at 708.
Notwithstanding our determination that applicant’s and registrant’s goods are
legally identical, the examining attorney has submitted into the record numerous
copies of use-based, third-party registrations identifying both “uniforms,” as
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identified in the application and clothing items as cited in the registrations. See e.g.,
Registration No. 3819400 (clothing including footwear, belts, dresses, gloves,
jackets, nightwear, and uniforms); Registration No. 3587140 (clothing including
shirts, shorts, pants, blouses, coats, jackets, sweatshirts, and uniforms);
Registration No. 3939088 (clothing including shirts, cardigans, cargo pants, blazers,
halter tops, bustiers, brassieres, loungewear, robes, and uniforms); Registration No.
4013767 (clothing such as t-shirts, a variety of athletic apparel, waterproof jackets
and athletic uniforms). Copies of use-based, third-party registrations may serve to
suggest that the goods are of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
The examining attorney also submitted Internet evidence showing numerous
third parties offering for sale both “uniforms” and various items of clothing. This is
further evidence that consumers expect to assume that such items emanate from a
common source. Note the following examples:
New Life provides clothing including footwear and spa clothing.
www.newlifesystems.com (October 30, 2012 denial of request for reconsideration,
pp. 7-10);

Noel Asmar Uniforms provides clothing including spa-related uniforms, women’s
fitness t-shirts and jackets. www.noelasmaruniforms.com (October 30, 2012
denial of request for reconsideration, pp. 11-17);

Unitex Uniforms provides clothing including spa-related uniforms and corporate
apparel. www.unitexuniforms.com (October 30, 2012 denial of request for
reconsideration, pp. 18-21);

Santa Rosa Uniform & Career Apparel, Inc. provides clothing including spa-
related uniforms and corporate apparel. www.sruniforms.com (October 30, 2012
denial of request for reconsideration, pp. 28-32);

Serial No. 85329284
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WearForm provides clothing including uniforms, executive apparel, infant and
toddler clothing, and sports apparel. www.wearform.com (April 9, 2012 final
Office action, pp. 7- 27);

Galls provides a variety of apparel including bike apparel, headwear, exercise
apparel, and uniforms for safety-related personnel. www.galls.com. (April 9,
2012 final Office action, pp. 49-55);

Hall Closet Uniforms & Apparel provides uniforms including school uniforms
and provides apparel including sweatshirts. www.hallclosetuniforms.com (April
9, 2012 final Office action, pp. 97-103); and

Reebok provides team sports uniforms and sports apparel. www.reebokteam.com
(April 9, 2012 final Office action, pp. 104-115).

In addition, because the identifications of the involved application and
registrations are unrestricted as to trade channels, we must presume that both
parties’ goods travel in the same ordinary trade and distribution channels and will
be marketed to the same potential consumers. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ
139 (CCPA 1958). Consequently, applicant’s argument that its uniforms are sold
only in a niche market to spa professionals necessarily fails. As we have often
stated, we are bound by the respective recitations as stated in the involved
application and registration(s). Id. Thus, the highly related, if not identical, nature
of the goods and channels of trade weigh heavily in favor of finding a likelihood of
confusion.
II. The Marks
We turn now to the first du Pont factor. At the outset we note that because the
goods are legally identical (or if not at a minimum highly related), the degree of
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similarity between the marks that is necessary to support a finding of likely
confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
With this in mind, we now turn to the first du Pont likelihood of confusion factor
regarding the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). “[T]he test 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 so
that confusion as to the source of the goods offered under the respective marks is
likely to result.” H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB
2008). The focus is on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of trademarks. In re Jack B.
Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Applicant argues that when the marks are compared in their entireties, they are
different and not likely to be confused. Applicant contends the examining attorney
is improperly dissecting the mark by according more weight to the term
MONARCHY, and that the addition of the term “style” to applicant’s mark creates a
“whole new appearance and meaning.” Applicant’s Brief, unnumbered p. 3. More
specifically, applicant contends that its applied-for mark "STYLEMONARCHY" has
Serial No. 85329284
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the commercial impression of having a monopoly on style or “the despotic ruler of
the spa industry” whereas registrant’s "MONARCHY" marks create the impression
of a “royalty brand of apparel.” Applicant's Brief, unnumbered p. 4.
Applicant’s arguments are unconvincing. Applicant’s and registrant’s marks all
share the common term MONARCHY which appears as either the sole term or
prominently in each of the marks. We acknowledge the obvious differences in
wording, stylization, and design elements in the marks. Nonetheless, it is more
likely that prospective consumers will overlook these distinctions and instead
confuse the marks as identifying the same clothing items from the same source,
given that they either contain or consist solely of the word MONARCHY. It is well
established that the mere addition of a term to a registered mark generally does not
obviate the similarity between the marks nor does it overcome a likelihood of
confusion under Trademark Act Section 2(d). See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR
GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188
USPQ 105 (CCPA 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v.
Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967) (THE LILLY and LILLI
ANN); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009) (TITAN and
VANTAGE TITAN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988)
(MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB
1985) (CONFIRM and CONFIRMCELLS); In re Riddle, 225 USPQ 630 (TTAB 1985)
(ACCUTUNE and RICHARD PETTY’S ACCU TUNE). In addition, the term
Serial No. 85329284
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applicant added to its mark, STYLE, is at best highly suggestive when used in
connection with clothing. See definitions of “style” as “the fashion of the moment,
especially of dress, vogue” from educationyahoo.com (September 9, 2011 Office
Action) and “fashion” as “popular or latest style of clothing” from
www.oxforddictionaries.com (September 9, 2011 Office action).
Moreover, the design elements in registrant’s M MONARCHY mark when
compared with those of applicant’s mark do not obviate the similarity between the
marks. When a mark consists of a word portion and a design portion, the word
portion is more likely to be impressed upon a purchaser’s memory and to be used in
calling for the goods and/or services; therefore, the word portion is normally
accorded greater weight in determining whether marks are confusingly similar. In
re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also CBS Inc.
v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983); In re
Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011).
Lastly, we note that because applicant applied to register its mark and
registrant’s word mark is registered in standard format, applicant’s mark may be
used in any stylized display or color scheme, including one that is identical to any
lettering style used by registrant. See Trademark Rule 2.52(a). That is to say,
registrant has the right to use its word mark MONARCHY in the same stylized
font, size and shades of color as applicant may use in the future.
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We therefore find that applicant’s marks and registrant’s marks are similar in
appearance, sound, connotation and commercial impression. This first du Pont
factor also weighs in favor of finding a likelihood of confusion.
III. Scope of Protection
Applicant also argues that there is no likelihood of confusion, because marks
containing the term “MONARCHY” are diluted or weak in connection with clothing
goods. In support of its argument, applicant refers to a recently published mark for
clothing goods, which includes the term “MONARCHY.” Applicant’s Brief,
unnumbered p. 11.
We are not persuaded. Applicant has not provided or made of record any
application or registration records for other marks containing the term
“MONARCHY.” To make registrations of record, copies of the registrations or the
complete electronic equivalent (i.e., complete printouts taken from any of the
USPTO’s automated systems (X-Search, TESS, TSDR, or TRAM)) must be
submitted. In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002); In re
Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998); In re Broadway
Chicken Inc., 38 USPQ2d 1559, 1561 n.6 (TTAB 1996); In re Smith & Mehaffey, 31
USPQ2d 1531, 1532 n.3 (TTAB 1994). Therefore, we are unable to make a finding
that marks containing the term MONARCHY are diluted or weak in connection
with clothing.
Even if applicant had properly made of record the one recently published
mark that it refers to, decisions and actions of other trademark examining
Serial No. 85329284
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attorneys in registering different marks have little evidentiary value and are not
binding upon the Office. Each case is decided on its own facts, and each mark
stands on its own merits. See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403,
1406, 177 USPQ 268, 269 (CCPA 1973); In re Int’l Taste, Inc., 53 USPQ2d 1604,
1606 (TTAB 2000); In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994).4
To the extent that there are any other relevant du Pont factors, we treat them as
neutral.
After considering all of the evidence of record and argument pertaining to the du
Pont likelihood of confusion factors, we find that because the marks are similar, the
goods are legally identical, and the channels of trade and consumers are presumed
to overlap, there is a likelihood of confusion between applicant’s mark and the
registered marks when used in connection with the identified goods. In that regard,
we observe that, "[w]hen marks would appear on virtually identical... [goods], the
degree of similarity [of the marks] necessary to support a conclusion of likely
confusion declines." See Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994).
See also ECI Division of E-Systems, Inc. v. Environmental Communications Inc.,
207 USPQ 443, 449 (TTAB 1980). To the extent there is any doubt, we resolve it, as

4 Applicant in its reply brief refers for the first time to 4 third-party registrations as
evidence that the term MONARCHY is weak when used in connection with clothing.
Insofar as applicant failed to make the third-party registrations properly of record, we have
given them no consideration. That being said, even if we were to consider the registrations,
the marks contained therein are too few and too dissimilar to alter our determination (for
example, the mark MANCHESTER MONARCHS).

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we must, in registrant’s favor. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988).5
DECISION: The refusal to register is affirmed.

5 Applicant argues that the owner of the cited registration for the mark MONARCHY has
abandoned its trademark due to nonuse, and request suspension of the involved application
pending registrant’s filing of a Section 8 affidavit. We deny applicant’s request to suspend.
A trademark registration on the Principal Register is prima facie evidence of the validity of
the registration and the registrant’s exclusive right to use the mark in commerce in
connection with the specified goods and/or services. See 15 U.S.C. §1057(b). Applicant’s
assertion amounts to a collateral attack on the MONARCHY registration, and is irrelevant
for an ex parte matter. See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-
35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992).