Surf Line Hawaii, Ltd.v.Robert Charles White

Trademark Trial and Appeal Board

Mar 2, 2005

No. 91152639 (T.T.A.B. Mar. 2, 2005)

Hearing: Mailed: March 2, 2005
December 9, 2004 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Surf Line Hawaii, Ltd.
v.
Robert Charles White
_____

Opposition No. 91152639
to application Serial No. 76244120
filed on April 20, 2001
_____

Anthony L. Fletcher and Irene Hudson of Fish & Richardson
P.C. for Surf Line Hawaii, Ltd.

Todd Stockwell of Stockwell & Associates for Robert Charles
White.
______

Before Hohein, Hairston and Walters, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Robert Charles White has filed an application to
register the mark TOE JAMS for “clothing, namely, socks,
shoes, shirts, pants, underwear and ties.”1

1 Application Serial No. 76244120, filed on April 20, 2001, which
is based on an allegation of a bona fide intention to use the
mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91152639
2
Surf Line Hawaii, Ltd. has opposed registration of
applicant’s mark. In its notice of opposition, opposer
alleges that prior to the filing date of applicant’s
application, opposer has continuously used the marks JAMS
and JAMS WORLD for brooches, sports bags, clothing, and
retail store services; and that applicant’s mark TOE JAMS
for applicant’s identified goods so resembles opposer’s JAMS
and JAMS WORLD marks as to be likely to cause confusion.
Opposer has pleaded ownership of the following
registrations:
(1) Registration No. 920, 266 issued September 14, 1971
(renewed) for the mark JAMS for “men’s swimming
trunks.”
(2) Registration No. 1,537,352 issued May 2, 1989
(Section 8 affidavit accepted; Section 15 affidavit
received) for the mark JAMS for “watches and costume
jewelry, namely, brooches; sports bags, namely, back
packs, hip packs, handbags, wallets and key holders;
wearing apparel, namely, shirts, shorts, sport
coats, T-shirts, sweatshirts, sweatpants, jerseys,
and tank tops; candy and chewing gum.”
(3) Registration No. 1,497,797 issued July 26, 1988
(Section 8 affidavit accepted; Section 15 affidavit
received) for the mark JAMS for “men’s, women’s and
Opposition No. 91152639
3
children’s pants, shirts, walking shorts, swimming
trunks, underwear, hats, belts and scarves.”
(4) Registration No. 1,766,979 issued April 20, 1993
(Section 8 affidavit accepted; Section 15 affidavit
received) for the mark JAMS WORLD for “retail
clothing store services.”
(5) Registration No. 1,888,564 issued April 11, 1995
(Section 8 affidavit accepted; Section 15 affidavit
received) for the mark JAMS WORLD for “men’s,
women’s and children’s casual wear, namely pants,
shirts, walking shorts, swimming shorts, sports
shorts, running shorts, jackets, blazers, vests,
shirts, sweatshirts, T-shirts, hats, ties, belts,
dresses, blouses, slacks, pantsuits, jumpsuits,
sports jackets, warm-up suits and workout wear,
namely running suits.”
As an additional ground for opposition, opposer alleges that
applicant lacked a bona fide intent to use the applied-for
mark at the time of filing the application.
Applicant, in his answer, has denied the essential
allegations of the notice of opposition.
The record consists of the pleadings; the file of the
involved application; the declaration (with exhibits) of
opposer’s president, David Y. Rochlen, Jr.; the declaration
of applicant, Robert Charles White; and the cross-
Opposition No. 91152639
4
examination testimony deposition (with exhibits) of Mr.
White taken by opposer.2
Briefs have been filed and an oral hearing was held
before the Board.
The record shows that in the early 1960’s opposer’s
president David Y. Rochlen opened a small surf shop in
Honolulu. Mr. Rochlen noticed that there was no colorful
clothing suitable for surfers and he introduced long, bright
colored, baggy print shorts under the mark JAMS. The first
pair of JAMS shorts was sold in Hawaii in 1964. The shorts
were highly successful and distribution of JAMS shorts was
expanded to the mainland United States. Because of the
success of the shorts, they were the subject of a “Fashion”
page in Life magazine. Opposer has grown from a small surf
shop to a business that today employs 102 persons, operates
its own factory and warehouse and sells clothing
internationally. The JAMS brand has expanded to include a
full line of active and leisure wear and items such as
backpacks and sunglasses. The JAMS brand enjoyed a surge in
popularity in the mid-1980’s with wholesale sales totaling
in excess of $35 million. In 1987 opposer introduced a line
of men’s, women’s and children’s casual wear clothing under

2 The parties stipulated to the submission of testimony by
affidavit or declaration.
Opposition No. 91152639
5
the mark JAMS WORLD. In September 1991 opposer opened a
JAMS WORLD retail store in Santa Monica, California.
Currently, more than 500 retailers throughout the U.S. carry
JAMS and JAMS WORLD clothing.
Since 1964 opposer has spent more than $6,000,000
advertising and promoting its clothing and sales have
totaled more than $200,000,000.
Applicant Robert Charles White is the owner of Charles
White’s Chevrolet, Cadillac, Inc., a car dealership in
Martinsville, Virginia. According to Mr. White, he is
“interested in developing, marketing, and selling various
clothing products using different marks as an additional
business and source of income.” (Declaration, ¶3). He also
stated that he continues to have a bona fide intent to use
the mark but postponed use when this opposition was filed.
Opposer introduced copies of its pleaded registrations
for JAMS and JAMS WORLD as exhibits to Mr. Rochlen’s
declaration. Mr. Rochlen attested to the status and
ownership of the registrations as respectively being
subsisting and owned by opposer. Thus, priority is not in
issue in this case. Kings Candy Co. v. Eunice Kings’s
Kitchen, Inc., 446 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Moreover, the evidence shows that opposer has used its JAMS
and JAMS WORLD marks on clothing, sports bags, and retail
Opposition No. 91152639
6
store services since prior to the filing date of applicant’s
intent-to-use application.
This brings us to the issue of likelihood of confusion.
Our determination under Section 2(d) is based on an analysis
of all of the facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In any likelihood of confusion analysis,
however, two key considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods and/or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
In the present case, there is no question that
opposer’s goods and services are identical in part (shirts,
pants, ties and underwear) and otherwise closely related to
the goods on which applicant intends to use his mark. The
parties’ respective clothing is or will be sold in the same
channels of trade, such as department stores, clothing
stores and mass merchandisers. Also, opposer’s clothing and
retail clothing store services and applicant’s clothing is
or will be sold to the identical class of purchasers,
namely, the general public. Thus, if the parties’
respective goods and services are offered under identical or
substantially similar marks, confusion is likely to result.
Opposition No. 91152639
7
We turn, therefore, to a consideration of the marks.
We must keep in mind the well-established principle that
“when 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).
We find that when considered in their entireties,
applicant’s mark TOE JAMS is highly similar to each of the
opposer’s marks JAMS and JAMS WORLD in sound, appearance,
connotation and commercial impression. The JAMS portion of
applicant’s mark is identical to the entirety of opposer’s
JAMS mark and we view the addition of TOE in applicant’s
mark to be insufficient to distinguish the two marks when
applied to identical and closely related goods. Further,
because applicant’s mark TOE JAMS and opposer’s mark JAMS
WORLD both share the word JAMS, there are consequent
similarities in sound, appearance, connotation and
commercial impression. Again, we view the differences in
these marks to be insufficient to distinguish them when
applied to identical and closely related goods and services.
Consumers may well believe, due to the similarity in
the commercial impression formed by opposer’s and
applicant’s marks, that TOE JAMS clothing is a new line of
clothing from the owner of JAMS and JAMS WORLD clothing and
Opposition No. 91152639
8
retail clothing stores. This is especially the case in
light of the arbitrary nature of the respective marks as
applied to clothing and retail clothing store services.
In finding that applicant’s mark is similar to each of
opposer’s marks, we have kept in mind the normal fallibility
of human memory over time and the fact that purchasers
retain a general rather than a specific impression of
trademarks encountered in the marketplace. We find this to
be the case especially in situations where, as here, the
involved products and services are purchased by the general
public who cannot be presumed to be particularly
knowledgeable or sophisticated purchasers. In addition,
some of opposer’s and applicant’s clothing items can be
relatively inexpensive and purchased on impulse rather than
after careful deliberation.
We conclude that consumers familiar with opposer’s
clothing and retail clothing store services offered under
the marks JAMS and JAMS WORLD would be likely to believe,
upon encountering applicant’s mark TOE JAMS for clothing,
that the respective clothing and retail clothing store
services originate with or are somehow associated with or
sponsored by the same entity.
In view of our finding of likelihood of confusion, we
need not reach opposer’s claim that applicant lacked a bona
Opposition No. 91152639
9
fide intent to use the applied-for mark at the time of
filing the application.
Decision: The opposition is sustained on the ground of
likelihood of confusion.