Swat.Fame, Inc.

Trademark Trial and Appeal Board

Jul 29, 2008

No. 78753730 (T.T.A.B. Jul. 29, 2008)

Mailed:
July 29, 2008
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Swat.Fame, Inc.
________

Serial No. 78753730
_______

William A. Finkelstein of Dreier Stein & Kahan for
Swat.Fame, Inc.

Katherine Stoides, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Hohein, Bucher and Bergsman, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Swat.Fame, Inc. seeks registration on the Principal
Register of the mark BU FROM MALIBU (in standard character
format) for goods identified in the application, as amended,
as follows:
“clothing, namely, jeans, pants, slacks, trousers,
gauchos, capris, bottoms, shorts, Bermuda shorts,
coveralls, overalls, skirts, miniskirts, dresses,
jumpsuits, tops, blouses, halter tops, tank tops,
cardigans, jerseys, t-shirts, shirts, knit shirts, polo
shirts, sweaters, turtlenecks, vests, sweatshirts,
sweatpants, boxer shorts, underwear, socks, suits,
sport coats, blazers, coats, jackets, raincoats,
overcoats, and headwear” in International Class 25.1

1 Application Serial No. 78753730 was filed on November 14,
2005 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. No claim is made to the exclusive
right to use the word “Malibu” apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78753730
- 2 -
This case is now before the board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has found that applicant’s mark, if used in
connection with the identified goods, so resembles the
following mark:

registered in connection with “clothing, namely t-shirts,
shorts, sweatshirts, sweaters,” also in International Class
25,2 as to be likely to cause confusion, to cause mistake or
to deceive.

2 Registration No. 1558080 issued to Baylor University on
September 26, 1989; Section 8 affidavit (six-year) accepted and
Section 15 affidavit acknowledged.

Serial No. 78753730
- 3 -
The Trademark Examining Attorney and applicant have
filed briefs in the case. We affirm the refusal to
register.
In arguing for registrability, applicant contends that
the Trademark Examining Attorney’s position is riddled with
errors based on her improperly dissecting applicant’s mark
and discounting the word, Malibu; that the cited collegiate
athletic mark, owned by Baylor University for items of
casual, college clothing, is by its very nature, targeted to
a limited group of consumers; that the marks are quite
dissimilar in appearance, sound and meaning, and evoke
significantly different commercial impressions in
prospective purchasers; that applicant’s goods and the prior
registrant’s goods travel in different channels of trade, to
knowledgeable and discerning prospective purchasers; and
that the cited mark is very weak because of the existence of
a plethora of marks with similar components, thus
restricting the cited mark to a narrow scope of protection.
By contrast, the Trademark Examining Attorney argues
that a likelihood of confusion exists because these are
confusingly similar marks that will be used on goods that
are, in part, identical and otherwise are closely-related,
and that presumably, these goods will move in the same
channels of trade.
Serial No. 78753730
- 4 -
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on this issue. See 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 this case, applicant and the Trademark
Examining Attorney have focused exclusively on the two key
considerations in any likelihood of confusion analysis,
namely, the similarities between the marks and the
relationship between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The Goods
We turn first to a consideration of the goods
identified in the application and the cited registration.
As seen above, the goods in the cited registration are
identified as “clothing, namely t-shirts, shorts,
sweatshirts, sweaters.” Applicant’s identification of goods
Serial No. 78753730
- 5 -
likewise includes shorts, t-shirts, sweaters and
sweatshirts. On its face, this reflects a clear overlap in
the identified goods. In order to affirm a refusal, it is
only necessary that we find likelihood of confusion with
respect to at least one item in each class of applicant’s
goods. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)
[“[L]ikelihood of confusion must be found if the public,
being familiar with [opposer’s] use of MONOPOLY for board
games and seeing the mark on any item that comes within the
description of goods set forth by appellant in its
application ….”].
Nonetheless, applicant argues that its goods are quite
different, and hence easily distinguishable, from those
offered by registrant. Applicant contends that it “designs
and produces high-end, unique, fashion-oriented clothing”
while registrant’s goods are not-so-fashionable t-shirts,
shorts, sweatshirts and sweaters targeted to college
students. Indeed, the pages of applicant’s website
introduced into the record show trendy, designer clothing
marketed through high-end department stores. Applicant
would have us conclude that the competitive distance between
its goods and registrant’s goods is significant enough to
lessen the likelihood of confusion. McGregor-Doniger Inc.
Serial No. 78753730
- 6 -
v. Drizzle Inc., 599 F.2d 1126 (2d Cir. 1979) [DRIZZLE for
fashionable women's coats held not to be confusingly similar
to DRIZZLER for men's golf jackets].
However, we must consider the cited registrant’s goods
as they are described in the registration, and we cannot
read limitations into the items of clothing listed therein.
See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1987). Merely because the registrant
is Baylor University, we are not permitted to presume that
this merchandise will be low-end, casual apparel sold to
college students in Waco, Texas. Thus, with regard to this
critical du Pont factor, we find that the goods are in part
identical, favoring a finding of likelihood of confusion
herein.
Channels of Trade and Conditions of Sale
Moreover, inasmuch as there are no limitations as to
the channels of trade or class of purchasers in the
registration, it is presumed that the registration
encompasses all goods of the type described, that they move
in all channels of trade normal for those goods, and that
they are available to all classes of purchasers for the
Serial No. 78753730
- 7 -
described goods. See In re Linkvest S.A., 24 USPQ2d 1716
(TTAB 1992). Likewise, even in the event we should find
ourselves persuaded by the apparent contrasts that applicant
ascribes to the real-world conditions of sale, such is
irrelevant in applying the du Pont factors as applied by our
primary reviewing Court. Applicant argues that both
applicant’s and registrant’s respective customers are
discerning and knowledgeable about these contrasting goods,
and will know immediately which goods are being offered by
applicant and which by Baylor University:
“ … A customer of Baylor merchandise has very
specific and targeted expectation of what he
or she wants and where to buy it. It is
inconceivable that any such customer would be
confused upon encountering Applicant’s
merchandise sold under the BU FROM MALIBU
mark in a department store. Girls in their
teens looking for trendy, high-end sportswear
who happen to be at a store near the Baylor
campus are simply not going to believe that a
‘BU’ sweatshirt in dark green and gold with
an interlocking B and U is a ‘BU FROM MALIBU’
product, nor is it what they want to
purchase. Likewise, a Baylor alumna seeing
expensive sportswear for her teenage daughter
in an upscale mall in Dallas simply is not
going to confuse it with that Baylor
sweatshirt she wore on campus twenty years
earlier.”

Applicant’s brief at 14.
However, we are bound to presume that t-shirts and
sweatshirts are inexpensive items purchased without a great
deal of care, rather than assuming that the relevant
Serial No. 78753730
- 8 -
customers are knowledgeable and discerning purchasers who
would exercise care and deliberation. Furthermore,
applicant’s own website, screen prints of which were made
part of the record by applicant, show that applicant’s jeans
are targeted to “the younger college girl” who, among other
things, is looking for “affordability.”3
Accordingly, the related du Pont factors focused on
trade channels and conditions of sale also support a
likelihood of confusion determination.
The Marks
We turn now to the du Pont factor focusing on 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). We also bear in mind that “[w]hen
marks would appear on virtually identical goods or services,
the degree of similarity [of the marks] 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, 1701 (Fed. Cir. 1992), cert. denied,
506 U.S. 1034 (1994).

3 Applicant’s reply of July 20, 2007, at 48
<< http://www.bu-malibu.com >>
Serial No. 78753730
- 9 -
Certainly, no trademark owner can guarantee that the
public will pronounce its mark perfectly. Frances Denney,
Inc. v. ViVe Parfums Ltd., 190 USPQ 302 (TTAB 1976) [ViVe and
fleur de lis design for perfume products are likely to cause
confusion with VIVA cosmetic products]; Nina Ricci S.A.R.L.
v. Haymaker Sports, Inc., 134 USPQ 26 (TTAB 1962)
[applicant’s RICCI OF HAYMAKER is confusingly similar to
opposer’s NINA RICCI and RICCI]; In re Electrons, Inc.,
144 USPQ 442 (TTAB 1964) [applicant’s Di-El-Trol is confusingly
similar to registrant’s DIALTRON]; In re Energy
Telecommunications & Electrical Association,
222 USPQ 350 (TTAB 1983) [INTELECT likely to be
confused with the ENTELEC design shown at right:
As to overall sound, depending upon how applicant’s
mark is pronounced, it will entail six or seven syllables,
compared with registrant’s two spoken letters. This
dissimilarity cannot be denied. On the other hand, we are
not persuaded by applicant’s argument that registrant’s mark
will be sounded out as two letters, B-U, while applicant’s
will be pronounced “Boo.” While applicant contends that
“Boo” is a common slang reference to Malibu, drawn from the
final syllable of the city of Malibu and rhyming therewith,
applicant failed to substantiate this assertion of a known
slang reference (e.g., by putting in a affidavit to that
Serial No. 78753730
- 10 -
effect in the record, along with supporting examples of such
usage in the popular media).
In any event, the analysis is not whether the marks can
be distinguished when compared side-by-side. Rather, we
must determine whether the marks are sufficiently similar
that there is a likelihood of confusion as to source and, in
making this determination, we must consider the recollection
of the average purchaser who normally retains a general,
rather than specific, impression of trademarks. Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). As
indicated above, in this case, the average purchasers are
all purchasers of clothing, including “the younger college
girl” who is looking for “affordability.” Further, while it
is correct that we must view the mark in its entirety,
Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23
USPQ2d 1945 (Fed. Cir. 1992), it is also well settled that
“there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of the mark, provided [that] the ultimate conclusion
rests on consideration of the marks in their entireties.
Indeed, this type of analysis appears to be unavoidable.”
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 750-
51 (Fed. Cir. 1985).
Serial No. 78753730
- 11 -
As to appearance, inasmuch as applicant seeks
registration of its mark in a standard character format,
presumably this would be broad enough to encompass the
interlocking, collegiate-style lettering used by registrant.
Although applicant argues that students, fans and alumni of
Baylor University seeking out its licensed collegiate
merchandise will have a well-defined expectation of such
goods, we certainly cannot presume from this registration
that registrant’s mark (not lined for color herein) will
always be shown, for example, using school colors of “dark
green and gold,” as suggested by applicant.
As to connotation, applicant argues that among the
Valley girls who recognize the shorthand, BU, its composite
mark “evokes an image of California, sun, surf, relaxation,
and celebrities.” By contrast, applicant points out that
registrant’s two-letter mark will readily be understood as
the initials of a Texas university, and therefore will
convey an image of that institution to the mind of
prospective consumers.
While one who reviews the federal trademark register
knows that the cited BU stylized mark is owned by Baylor
University, we cannot be sure that prospective consumers
will immediately understand that registrant’s BU mark
identifies Baylor University (as opposed to Brandeis,
Serial No. 78753730
- 12 -
Boston, Butler, Bucknell, Bradley or Brown Universities, for
that matter). Hence, as to connotation, we have to assume
in both cases that consumers may well see the letters BU as
an arbitrary source-indicator for items of apparel.
As to commercial impression, as was noted by the
Trademark Examining Attorney, the letters B-U dominate the
marks of both applicant and registrant, inasmuch as (1)
applicant has disclaimed the word “Malibu”;4 (2) consumers
are predisposed to focus more on the first word, prefix or
syllable of a trademark; and (3) applicant’s actual use
clearly establishes that
the letters B-U dominate
the mark in size and
location.5
Consequently, we find that applicant’s mark is quite
similar in connotation and commercial impression when
compared with registrant’s cited mark, such that it
outweighs any dissimilarity in sound and appearance between

4 While the Trademark Examining Attorney cannot ignore a
disclaimed portion of a mark and must view marks in their
entireties, one feature of a mark may be more significant in
creating a commercial impression. Tektronix, Inc. v. Daktronics,
Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976); In re El Torito
Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable
Bancorporation, 229 USPQ 709 (TTAB 1986). Disclaimed matter is
typically less significant or less dominant.

5 << http://www.bu-malibu.com >>

Serial No. 78753730
- 13 -
applicant’s mark and registrant’s mark. Thus, with regard
to this critical du Pont factor, we find that the marks are
similar, favoring a finding of a likelihood of confusion.
The number and nature of similar marks
We turn next to the number and nature of similar marks
registered for similar goods. Applicant takes the position
that the cited prior registrant’s mark is weak and entitled
to a narrow scope of protection.
Applicant has placed into the record nine third-party
registrations having some variation on the combined letters
B and U, and their phonetic equivalents registered in
connection with items of apparel -- all of which issued
subsequent to the registration of the cited mark:
2BU for “vests, jackets, tank tops, T-
shirts, sweatshirts” in International
Class 25;6

6 Registration No. 1711858 issued on September 1, 1992;
renewed.

Serial No. 78753730
- 14 -

for “clothing; namely, pants, tops,
hats, socks sweaters, shorts pants” in
International Class 25;7

for “children’s wearing apparel and
accessories, namely, anoraks, baby
bunting, bathing suits, beachwear and
cover-ups, headwear, cloth bibs,
blazers, underwear, blouses, bodysuits,
booties, boots, sweaters, cloth diapers,
coats, creepers, dresses, jeans,
dusters, footwear, jackets, jumpers,
kilts, hosiery, knickers, leggings,
leotards, lingerie, pants, pinafores,
playsuits, polo shirts, ponchos, vests,
robes, rompers, scarves, shorts, skirts,
slacks, slippers, snowsuits, stockings,
suits, suspenders, t-shirts, tank tops,
tights and tunics” in International
Class 25;8

7 Registration No. 1809837 issued on December 7, 1993;
renewed.

8 Registration No. 2232058 issued on March 16, 1999; Section 8
affidavit (six-year) accepted and Section 15 affidavit
acknowledged.
Serial No. 78753730
- 15 -

for “clothing, namely shirts, pants,
shorts, and headwear” in International
Class 25;9
BU JIN for “clothing, namely skirts, jackets,
vests, trousers, pants, belts, shirts,
coats, sportswear, sweatshirts” in
International Class 25;10
BU SELF for “clothing, namely t-shirts, caps and
sweatshirts” in International Class 25;11
U-KAN-B-U for “clothing, namely, shirts, tops,
sweaters, shorts, pants, vests, jackets,
neckwear, robes, pajamas, underwear,
socks, belts, and headwear” in
International Class 25;12
DA BU for “clothing, namely, T shirts,
sweatshirts, jackets, jerseys, shorts,
caps, hats” in International Class 25;13
and

9 Registration No. 2293583 issued on November 16, 1999 for BU-
YA BROTHERS UNITING YOUNG ACHIEVERS and design; Section 8
affidavit (six-year) accepted.

10 Registration No. 2310307 issued on January 25, 2000; Section
8 affidavit (six-year) accepted. The English translation of BU
JIN is “a person of the warrior spirit.”

11 Registration No. 2600111 issued on July 30, 2002.

12 Registration No. 2724298 issued on June 10, 2003.

13 Registration No. 3004456 issued to joint owners living in
Malibu, CA, on October 4, 2005.

Serial No. 78753730
- 16 -

for “swim wear” in International Class
25.14

According to applicant, this represents a “crowded”
trademark field – that this coexistence means that the
United States Patent and Trademark Office has clearly taken
the position that a plurality of parties can coexist with
very similar marks for quite similar items of apparel
without causing a likelihood of confusion. Applicant argues
that this demonstrates the relative weakness of a mark and
the consequent limited scope of protection to be afforded
such marks. American Steel Foundries v. Robertson, 269 U.S.
372, 46 S.Ct. 160, 70 L.Ed. 317 (1926) [the ubiquity of the
word “Simplex” in marks has forced the public to find other
ways to distinguish among marks using that word]; Western
Publishing Co. v. Rose Art Industries, Inc., 15 USPQ2d 1545
(2d Cir. 1990); General Mills Inc. v. Kellogg Co., 3 USPQ2d
1442 (8th Cir. 1987); Sun Banks of Florida Inc. v. Sun

14 Registration No. 3337207 issued to Joseph F. Hawkins III on
November 13, 2007 (the “Hawkins Mark”).
Serial No. 78753730
- 17 -
Federal Savings & Loan Ass'n, 211 USPQ 844 (5th Cir. 1981);
In re The Lucky Co., 209 USPQ 422 (TTAB 1980).
While third party registrations are not evidence of use
of the marks shown therein, they may be considered as
tending to show that a registered mark may be a “weak” mark,
thus resulting in narrowing an opposer’s rights therein. On
the other hand, the majority of these third-party marks have
different connotations from registrant’s mark, such as the
fact that the initialism B-U often has the meaning of “Be
You” (e.g., 2BU, BU SELF, U-KAN-B-U), or the initialism itself
suggests another meaning in the context of the composite
marks (e.g., BASIC UTILITIES, BROTHERS UNITING)
Applicant makes special mention of the
“Hawkins mark,” which application for swimwear was
passed to publication without citation. Applicant

argues that it is “inconsistent, illogical and inequitable”
for the Trademark Examining Attorney to refuse the involved
mark based on an alleged likelihood of confusion with the
cited mark, when, for example, the United States Patent and
Trademark Office allowed the Hawkins mark to register in
connection with apparel in Class 25.
To the extent that the Hawkins mark is close to the
cited mark, we note that prior decisions and actions of
other Trademark Examining Attorneys in registering different
Serial No. 78753730
- 18 -
marks are without 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. AMF Inc. v. American Leisure
Products, Inc., 177 USPQ 268, 269 (CCPA 1973); In re
International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); In re
Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994); In re National
Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re
Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978).
All things considered, we find this to be a neutral
factor in our determination of likelihood of confusion.
While applicant has repeatedly referred to the
fact that the cited mark is Baylor University’s
collegiate logo (e.g., when discussing du Pont
factors such as similarity of the mark, relatedness
of the goods, trade channels and level of care in
purchasing), we find that this connection is definitely not
determinative of the outcome herein.
Conclusion
In summary, we find that applicant’s goods are in part
identical to registrant’s goods, the goods are presumed to
move in the same channels of trade to the same classes of
ordinary consumers, that the marks are confusingly similar,
Serial No. 78753730
- 19 -
especially as to connotation and commercial impression, and
finally, that the cited mark is not weak.
Decision: The refusal to register this mark under
Section 2(d) of the Lanham Act is hereby affirmed.