Tamba Hali

Trademark Trial and Appeal Board

Aug 4, 2017

No. 86725532 (T.T.A.B. Aug. 4, 2017)

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB

Mailed: August 4, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re Hali
________

Serial Nos. 86725523; 86725532; 86726617; 86726627
_______

Rebecca Wempe of Stevens & Brand LLP
for Tamba Hali.

Christine Martin, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
_______

Before Quinn, Taylor, and Bergsman,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Tamba Hali (“Applicant”) filed four applications to register on the Principal
Register the following marks: TAMBA HALI (in standard characters) for “jewelry” in
International Class 14,1 and “hats; shirts; shoes; sweaters” in International Class 25;2
and the mark shown below

1 Application Serial No. 86726617, filed August 17, 2015 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on an allegation of a bona fide intention to use the mark in
commerce. The application includes the following statement: “The name(s), portrait(s), and/or
signature(s) shown in the mark identifies Tamba Hali, whose consent(s) to register is made
of record.”

2 Application Serial No. 86725523, filed August 14, 2015 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on an allegation of a bona fide intention to use the mark in
Serial Nos. 86725523; 86725532; 86726617; 86726627

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for “jewelry” in International Class 14,3 and “hats; shirts; shoes; sweaters” in
International Class 25.4
The Trademark Examining Attorney refused registration in each application
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that each
of Applicant’s marks, when applied to Applicant’s goods, so resembles three
previously registered marks, all owned by the same person (Saa Tamba Ginlack), as
to be likely to cause confusion. The cited registrations are as follows: TAMBA (in
standard characters) for “clothing, namely, shorts, hats, jeans, pants, dress shirts,

commerce. The application includes the following statement: “The name(s), portrait(s), and/or
signature(s) shown in the mark identifies Tamba Hali, whose consent(s) to register is made
of record.”

3 Application Serial No. 86726627, filed August 17, 2015 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on an allegation of a bona fide intention to use the mark in
commerce. The application includes the following statements: “The mark consists of the
letters TH appearing above the wording TAMBA HALI with the H being formed by the
negative space of an incomplete T. Color is not claimed as a feature of the mark. The name(s),
portrait(s), and/or signature(s) shown in the mark identifies Tamba Hali, whose consent(s)
to register is made of record.”

4 Application Serial No. 86725532, filed August 14, 2015 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on an allegation of a bona fide intention to use the mark in
commerce. The application includes the following statements: “The mark consists of the
letters TH appearing above the wording TAMBA HALI with the H being formed by the
negative space of an incomplete T. Color is not claimed as a feature of the mark. The name(s),
portrait(s), and/or signature(s) shown in the mark identifies Tamba Hali, whose consent(s)
to register is made of record.”
Serial Nos. 86725523; 86725532; 86726617; 86726627

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shirts, footwear” in International Class 25,5 and “retail store services and online retail
store services featuring clothing, surf gear and surfing accessories” in International
Class 35;6 and the mark shown below

for “clothing, namely, shorts, hats, jeans, pants, dress shirts, shirts, footwear” in
International Class 25, “surfboards, surf fins, surf paddles” in International Class 28,
and “retail store services and online retail store services featuring clothing, surf gear
and surfing accessories” in International Class 35.7
When the refusal to register was made final, Applicant requested reconsideration.
After the Examining Attorney denied the request for reconsideration, Applicant
appealed. The appeal is fully briefed.8
The Board, in an order dated March 8, 2017, consolidated the appeals pursuant
to the Examining Attorney’s request. The appeals involve common issues of law and

5 Registration No. 4006054, issued August 2, 2011; Section 8 declaration accepted.

6 Registration No. 4364127, issued July 9, 2013.

7 Registration No. 4358206, issued June 25, 2013. The following statements appear in the
registration: “The mark consists of stylized wording of the word ‘TAMBA.’ Color is not
claimed as a feature of the mark.”

8 Applicant accompanied its appeal brief with exhibits not previously made of record, namely
portions of three third-party websites. The Examining Attorney objected to the evidence as
untimely. Trademark Rule 2.142(d) provides that the record in an application should be
complete prior to appeal. In view of the untimely submission of the exhibits with Applicant’s
brief, the exhibits are not part of the appeal record, and they have not been considered in
making our decision. In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767 (TTAB 2016); TBMP
§ 1203.02(e) (June 2017). See TBMP § 1207.01.
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fact, and comprise the same evidentiary records. Accordingly, we issue this single
opinion in the four appeals, making distinctions when appropriate.
Applicant points out that he is a “well known” football player (linebacker) for the
Kansas City Chiefs of the National Football League (NFL). 4 TTABVUE 5. Applicant
argues that HALI is the dominant portion of his marks because it is Applicant’s
surname, and this dominance is enhanced when, as here, the surname is that of a
well-known or famous athlete. With respect to his special form mark, Applicant
contends that the stylized letters TH are prominent and serve to further distinguish
the marks. In addition, according to Applicant, USPTO practice reveals that
registration of a person’s full name (given name plus surname) is often allowed over
an existing mark consisting of only a person’s given name. Moreover, Applicant
asserts that HALI, which is a surname, is “the driving force of the commercial
impression” of the marks.” 4 TTABVUE 9. In this connection, Applicant contends that
“athletes are most often referred to, and more importantly, remembered by their last
names (e.g., Ali, Jordan, Manning). Moreover, it is an athlete’s surname that is most
often printed on the back of their sports jersey, further affirming the predominant
significance of a surname.” Id. Applicant also argues that his goods and Registrant’s
goods and services are marketed in different ways to different customers; more
specifically, that Registrant’s goods and services are targeted to consumers interested
in surfing, and that Registrant’s goods are primarily sold in Registrant’s surf shops,
while Applicant’s goods are not. In support of his arguments, Applicant submitted
portions of Registrant’s website, third-party registrations, excerpts of third-party
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websites, a Google search summary, and copies of certain unpublished final decisions
of the Board.
The Examining Attorney maintains that TAMBA, being the first literal portion
of each of Applicant’s marks, is the dominant portion. In this connection, the
Examining Attorney contends that consumers are accustomed to referring to athletes
by their given name. Further, the Examining Attorney argues, the addition of HALI,
and in the case of the special form mark, the added stylized letters TH, are
insufficient, individually and collectively, to distinguish Applicant’s marks from
Registrant’s marks. The Examining Attorney concludes that because the commercial
impression of each of the marks is that of a person whose given name is “Tamba,” it
is likely that consumers would believe that the marks identify the same individual,
with Applicant’s marks merely being the full name of the individual. The Examining
Attorney also asserts that the goods are identical in part (clothing), and the goods /or
services otherwise are related. In support of the refusal, the Examining Attorney
introduced third-party registrations, and portions of third-party websites.
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. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, 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).
Each case must be decided on its own facts and any one du Pont factor may play a
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dominant role in the determination of likelihood of confusion. Champagne Louis
Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460-61 (Fed.
Cir. 1998).
Of the three cited registrations, we focus our attention on Registration No.
4006054 for the mark TAMBA, in standard characters, for “clothing, namely, shorts,
hats, jeans, pants, dress shirts, shirts, footwear.” We do this because out of the cited
registrations, this one is most likely to support a finding of likelihood of confusion.
That is, if confusion is likely between this cited registration and any of the applied-
for marks, there is no need for us to consider the likelihood of confusion with
Registrant’s other marks, while if there is no likelihood of confusion between this
cited registration and any of Applicant's marks, then there would be no likelihood of
confusion with the other two cited registrations. See, e.g., In re Max Capital Group
Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
At the outset of our consideration of the issue of likelihood of confusion, we first
turn to a procedural matter. Applicant, in each of its applications, makes a belated
request in its reply brief: “In the event that a limitation to Applicant’s identification
― e.g., inclusion of the following language: ‘all of the foregoing not related to surfing’
― would obviate the likelihood of confusion, then Applicant respectfully requests the
Board to allow Applicant to file such amendment.” 10 TTABVUE 11. Applicant
essentially is requesting a remand to consider the proposed amendment to the
identifications of goods.
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A request for remand to consider an amendment will be granted upon a showing
of good cause and remand is a matter of discretion with the Board. Whether good
cause will be found will depend, in part, on the stage of the appeal at the time the
amendment is filed, including the reason given for the delay. The proposed
amendment could not have been filed any later in this appeal and, in any event, no
reason for the delay was given. Good cause not being shown, the proposed amendment
will not be considered.9 See In re Thomas White Int’l Ltd., 106 USPQ2d 1158, 1160
n.2 (TTAB 2013); see generally TBMP §1205.01.
Application Serial Nos. 86726523 and 86726617
Applicant seeks to register the mark TAMBA HALI in standard characters for
“jewelry” in Class 14, and “hats, shirts, shoes and sweaters” in Class 25.
The Similarity of the Goods, Trade Channels and Purchasers
We initially compare the goods under the second du Pont factor. Regarding the
relatedness of the goods, the goods do not have to be identical or even competitive for
confusion to be likely. “[L]ikelihood of confusion can be found ‘if the respective goods
are related in some manner and/or if the circumstances surrounding their marketing
are such that they could give rise to the mistaken belief that they emanate from the
same source.’” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d

9 Even if the amendment had been timely filed and entered, it would not compel a different
result in this appeal. This is due to the fact that the identification of goods in Registration
No. 4006054 does not include any limitations.
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1715, 1724 (TTAB 2007)). “The goods need only be sufficiently related that consumers
would be likely to assume, upon encountering the goods under similar marks, that
the goods originate from, are sponsored or authorized by, or are otherwise connected
to the same source.” In re Davia, 110 USPQ2d 1810, 1815 (TTAB 2014) (citing Coach
Servs., Inc.). The issue here, of course, is not whether purchasers would confuse the
goods, but rather whether there is a likelihood of confusion as to the source of these
goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc.,
223 USPQ 830 (TTAB 1984).
We must look to the goods as identified in each application and the goods in the
cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Houston
Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re
Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Accordingly, we compare
Applicant’s “jewelry” and “hats, shirts, shoes and sweaters” to Registrant’s “clothing,
namely, shorts, hats, jeans, pants, dress shirts, shirts, footwear.” Where, as here,
there are no limitations in the identification of goods in either the applications or the
cited registration, we must presume that the identified goods encompass all goods of
the nature and type described therein. See, e.g., Levi Strauss & Co. v. Abercrombie &
Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); Mini
Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1471 (TTAB 2016); In re
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Elbaum, 211 USPQ 639, 640 (TTAB 1981).10 A likelihood of confusion may be found
with respect to a particular class based on any item within the identification of goods
for that class. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Group, 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981).
With respect to Applicant’s Class 25 goods, the clothing items are in part
identical, and otherwise are closely related to Registrant’s clothing. The application
and cited registration overlap to the extent that both list “hats and shirts,” and
Registrant’s “footwear” encompasses Applicant’s “shoes.”
Because the clothing items are identical in part, they are presumed to move in
the same trade channels (e.g., clothing stores) to the same classes of purchasers (e.g.,
ordinary consumers). See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and
classes of consumers, the Board was entitled to rely on this legal presumption in
determining likelihood of confusion). See also In re Yawata Iron & Steel Co., 403 F.2d

10 Applicant argues that Registrant’s clothing is surfing-focused, and that it is sold in surf
shops and marketed to surfers. In this regard, Applicant points to Registrant’s website, as
well as Registrant’s recitation of retail store services featuring, inter alia, surf gear and
surfing accessories. This argument is misplaced inasmuch as Registrant’s identification of
goods in Class 25 is not restricted in any fashion. In re Midwest Gaming & Entertainment
LLC, 106 USPQ2d 1163, 1166-67 (TTAB 2013); In re Thor Tech Inc., 90 USPQ2d 1634, 1637-
38 (TTAB 2009) (a broadly worded identification of goods/services in a cited registration is
not read in pari materia with, or limited by, other wording in the identification). Moreover,
Registrant’s identification of goods may not be restricted on the basis of extrinsic evidence of
actual use. In re C.H. Hanson Co., 116 USPQ2d 1351, 1354 (TTAB 2015); In re Hughes
Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015). Further, and in any event, this
distinction would not be persuasive of a different result in this appeal. See Kangol Ltd. v.
KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed. Cir. 1992) (“[R]egardless
of whether or not golf shirts having collars are treated as being specifically different from
athletic shirts, the goods are likely to be sold in department stores or specialty shops in close
proximity to each other.”).
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752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the
channels of trade and classes of purchasers are considered to be the same); American
Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101
USPQ2d 1022, 1028 (TTAB 2011); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994).
With respect to Applicant’s “jewelry” in Class 14, we find these goods to be related
to Registrant’s clothing items. Applicant’s applications, which list both types of goods
under the same mark, buttress this finding. Further, the Examining Attorney
introduced numerous third-party, use-based registrations showing that the same
entity has registered a single mark identifying both jewelry and clothing items. See,
e.g., the following registrations: Reg. No. 4665642 for a man’s face design; Reg. No.
4703347 for BLING A GOGO and design; Reg. No. 4719869 for ROSE &
REMINGTON; Reg. No. 4760980 for THE GYPSY SPUR; Reg. No. 4782700 for
GAUDY ME; Reg. No. 4816480 for a hammer and pick, etc. design; and Reg. No.
4973895 for THE VEGGIE REPUBLIC. As a general proposition, although use-
based third-party registrations alone are not evidence that the marks shown therein
are in use or that the public is familiar with them, they nonetheless may have
probative value to the extent they may serve to suggest that the goods are of a kind
that emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d
1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470
n.6 (TTAB 1988).
Serial Nos. 86725523; 86725532; 86726617; 86726627

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The Examining Attorney submitted additional evidence to show that jewelry and
clothing are related, complementary goods. Specifically, the Examining Attorney
made of record third-party websites showing that it is not uncommon for the types of
Applicant’s and Registrant’s goods to be sold together in the same retail outlet or
website under the same mark or sold by entities manufacturing both sets of goods.
These websites include the following: ; ;
; and .
As shown by the record summarized above, jewelry and clothing are offered
through the same trade channels. In addition, because the identifications in the
application and cited registration have no restrictions on channels of trade, we must
presume that the goods travel in all trade channels normal for such goods, which the
record shows includes both brick-and-mortar stores, and online retail stores featuring
women’s fashions. Further, the same classes of purchasers, including ordinary
consumers, would buy these goods.
The identity of the clothing items, and the relatedness of jewelry and clothing, as
well as the identity of trade channels and purchasers, including ordinary consumers,
are factors that weigh in favor of a finding of likelihood of confusion.
The Conditions of Sale
As to conditions of sale, there is no indication in the identifications of goods as to
the price point of either Applicant’s jewelry and clothing, or Registrant’s clothing.
Thus, the goods are presumed to include such goods that are relatively inexpensive.
“When products are relatively low-priced and subject to impulse buying, the risk of
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likelihood of confusion is increased because purchasers of such products are held to a
lesser standard of purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1899 (Fed. Cir. 2000); Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984). Thus, the du
Pont factor of the conditions of sale weighs in favor of a finding of a likelihood of
confusion.
The Similarity of the Marks
We next turn to consider this du Pont factor, and compare Applicant’s mark
TAMBA HALI to Registrant’s mark TAMBA, both in standard characters. The marks
must be considered in their entireties as to appearance, sound, connotation and
commercial impression. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du
Pont, 177 USPQ at 567). “The proper test is not a side-by-side comparison of the
marks, but instead ‘whether the marks are sufficiently similar in terms of their
commercial impression’ such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs., Inc., 101 USPQ2d at 1721
(citation omitted). The marks “‘must be considered … in light of the fallibility of
memory ….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir.
2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565
F.2d 683, 196 USPQ 1 (CCPA 1977)). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB
Serial Nos. 86725523; 86725532; 86726617; 86726627

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2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Since the
goods are clothing and jewelry without any restrictions or limitations as to price or
trade channels, the average purchaser is an ordinary consumer.
At least insofar as the likelihood of confusion in Class 25 is concerned, we
reiterate that the goods are identical. Thus, the degree of similarity between the
marks necessary to find likelihood of confusion declines. Bridgestone Americas Tire
Operations LLC v. Federal Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir.
2012); Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722; Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1992).
As to appearance and sound, Applicant’s mark TAMBA HALI begins with the
entirety of Registrant’s mark TAMBA. Thus, to the extent that the marks share the
common portion TAMBA, they are similar in sound and appearance. Applicant and
the Examining Attorney disagree on whether TAMBA or HALI is the dominant
portion of Applicant’s mark; in this connection, there is a discussion about whether
athletes are better known by their given names or by their surnames. Applicant
contends that they are better known by their surnames, citing their use on the back
of uniforms, and giving as examples (Michael) “Jordan,” (Peyton) “Manning,” and
(Muhammad) “Ali”; thus, Applicant urges, HALI is the dominant portion of his mark.
The Examining Attorney counters by contending given names are often used, citing
to five Internet articles about famous athletes known simply by their given name.
(June 9, 2016 Office Action). The examples include “Tiger” (Woods), “Lebron” (James),
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“Shaq” (O’Neal), “Lance” (Armstrong), “Kobe” (Bryant), and “Arnie” (Palmer). Thus,
the Examining Attorney contends, TAMBA is the dominant portion.11
As indicated in well-established case law, purchasers in general are inclined to
focus on the first word or portion in a trademark; in Applicant’s mark, TAMBA is the
first portion and is identical to the entirety of Registrant’s mark. Palm Bay Imps.,
Inc., 73 USPQ2d at 1692; Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“[I]t is often the first part of a mark which is likely to be impressed
upon the mind of a purchaser and remembered.”). Thus, we find that purchasers,
upon encountering Applicant’s mark, are more likely to remember TAMBA than they
are HALI. In any event, whether TAMBA or HALI is considered to be the dominant
portion, Applicant’s mark TAMBA HALI must be considered in its entirety to
Registrant’s mark TAMBA. See Jack Wolfskin Ausrustung Fur Draussen GmbH &
Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134
(Fed. Cir. 2015). When the marks are compared in their entireties, they are similar
in sound and appearance.
As to meaning, there is evidence in the record showing that Applicant is a NFL
player. (May 31, 2016 Response to Office Action). What is unknown, however, is the
degree of notoriety of Mr. Hali among consumers; that is, although Applicant claims
that he is “well known,” the Google search summary does not establish this purported

11 Applicant also refers to Registrant’s website indicating that “Tamba” means “the second
born son” and that Registrant has met “many people with the same name from a lot of
different cultures.” (May 31, 2016 Response to Office Action). Suffice it to say that American
consumers are not likely to be aware of this foreign meaning of “Tamba.”
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fact (even though most of the results refer to Applicant). See In re Bayer AG, 488 F.3d
960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Search engine results—which provide
little context to discern how a term is actually used on the webpage that can be
accessed through the search result link—may be insufficient to determine the nature
of the use of a term or the relevance of the search results to registration
considerations. Web-based information that includes greater context for the use of a
term, such as a complete webpage that is accessible as a link within the search engine
results, will have greater probative value in determining how a term will be
perceived.” (citations omitted)). Thus, we are uncertain whether consumers are aware
of Applicant, or that consumers would be aware “Tamba” is a given name and “Hali”
is a surname; in this regard, there is no evidence to show that TAMBA is a common
given name or that HALI is a common surname in the United States, although it is
more than likely that they are not. However, to the extent that consumers are aware
of such facts, both marks convey the meaning of someone’s name. Indeed, consumers
viewing Registrant's mark TAMBA may see it as an abbreviated form of Applicant's
mark TAMBA HALI. See, e.g., Big M. Inc. v. United States Shoe Corp., 228 USPQ
614, 616 (TTAB 1985) (“[W]e cannot ignore the propensity of consumers to often
shorten trademarks and, in the present case, this would be accomplished by dropping
the ‘T.H.’ [in T.H. MANDY] in referring to registrant's stores”)
The similarities between TAMBA HALI and TAMBA outweigh the
dissimilarities, thus engendering marks that convey similar overall commercial
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impressions. The du Pont factor involving the similarity of the marks weighs in favor
of a finding of likelihood of confusion.
Applicant submitted copies of third-party registrations, owned by different
registrants, showing the coexistence of marks comprising, on the one hand, a given
name and, on the other hand, the same given name plus a surname. (October 21, 2016
Request for Reconsideration). The following are examples of the ten sets of
registrations of marks for clothing: MELISSA and MELISSA LAUREN (Reg. Nos.
2526595 and 4365449, respectively); STEVEN and STEVEN CRAIG (Reg. Nos.
2856436 and 4871522, respectively); and HUGO and HUGO HIRSCH (Reg. Nos.
2361234 and 3919049, respectively). On the basis of this evidence, Applicant asserts:
In fact, one can expect that the only time where a
registered mark, which connotes a first name, would be a
proper basis for a Section 2(d) refusal is where that mark
has achieved fame in association with a specific individual.
E.g., “MADONNA” or “BEYONCE.” Since there has been
no showing of any evidence that “TAMBA” is a famous
name of one universally-known individual, this mark
should not be a proper basis to bar registration of a mark
that consists of “TAMBA” and a surname—especially when
that surname is either famous or well-known and carries a
significantly different commercial impression, as would be
the case of the entire mark, “TAMBA HALI.”
4 TTABVUE 12-13.

Applicant’s evidence of these third-party registrations does not warrant a
reversal of the refusal. There may be a myriad of reasons explaining the coexistence
of these third-party registrations, such as inherent weakness or the weakness of the
shared name, which limits the scope of protection of the prior registration. The
Examining Attorney points out that, as shown by his search of the Office’s Trademark
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Electronic Search System (TESS) database, Applicant’s marks and Registrant’s
marks are the only ones containing the term TAMBA for goods belonging in Classes
14 or 25. (November 10, 2016 Office Action). The Examining Attorney goes on to
contrast this situation regarding TAMBA with some of the given names appearing in
Applicant’s third-party registration evidence. (December 13, 2016 Office Action). In
this regard, the Examining Attorney highlights the existence of numerous other
third-party registrations of marks containing STEVEN and MELISSA, among the
other names appearing in Applicant’s examples, in the clothing field. This leads to
his conclusion that some of “the first names featured in the registrations identified
by Applicant are dilute[d] and widely used, and thus afforded a more limited scope of
protection.” 9 TTABVUE 9. Given that the TESS results reveal that the marks
involved herein are the only ones with TAMBA as a portion thereof, we find that the
present case is distinguishable from the examples relied upon by Applicant.
Moreover, and in any event, “each case must be decided on its own facts and the
differences are often subtle ones.” In re St. Helena Hosp., 113 USPQ2d at 1087.
Further, we are not bound by the allowance of prior registrations, even if they have
some characteristics that may present a similar likelihood of confusion situation
when the application is compared to the cited registration in the present case. See In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Conclusion
We have considered all of the evidence made of record pertaining to the likelihood
of confusion issue, as well as all of the arguments related thereto, including any
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evidence or arguments not specifically discussed in this opinion. Because the marks
are similar, the goods are related in Class 14 and identical in Class 25, the channels
of trade are identical in Classes 14 and 25, the classes of consumers are identical in
both classes, and the goods in both classes are subject to impulse purchase, we find
that confusion is likely between the marks.
We conclude that consumers familiar with Registrant’s clothing sold under the
mark TAMBA in standard characters are likely to mistakenly believe, upon
encountering Applicant’s mark TAMBA HALI in standard characters for jewelry and
clothing, that the goods originate from or are associated with or sponsored by the
same entity. Accordingly, the refusals to register in Application Serial Nos. 86726523
and 86726617 are affirmed.
Application Serial Nos. 86725532 and 86726627
Applicant seeks to register the special form mark for “jewelry” in Class 14,
and “hats, shirts, shoes and sweaters” in Class 25.
The Similarity of the Goods, Trade Channels, Purchasers; Conditions of Sale
The identifications of goods in these applications are identical to the ones
discussed above. Thus, the discussion regarding the similarity of the goods, trade
channels, classes of purchasers, as well as the conditions of sale, applies to these
applications as well. Accordingly, we incorporate by reference that discussion in our
consideration of the likelihood of confusion between Registrant’s standard character
mark TAMBA and Applicant’s special form mark TH TAMBA HALI. Further, the
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same legal precepts apply here as above when comparing the marks; in particular,
we reiterate that when the goods are identical, the degree of similarity between the
marks necessary to find a likelihood of confusion declines, and that consumers’
memories are fallible, with them retaining a general rather than a specific impression
of trademarks.
The Similarity of the Marks
We now turn to compare Applicant’s special form mark to Registrant’s standard
character mark TAMBA. With respect to Applicant’s mark, because the similarity or
dissimilarity of the marks is determined based on the marks in their entireties, our
analysis cannot be predicated on dissecting the marks into their various components;
that is, the decision must be based on the entire marks, not just part of the marks. In
re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also
Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA
1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal;
rather, it must be considered as a whole in determining likelihood of confusion.”). On
the other hand, although marks must be considered in their entireties, it is settled
that one feature of a mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in determining the mark’s
commercial impression. In re National Data Corp., 224 USPQ at 751 (“There is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed, this type of analysis appears
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to be unavoidable.”). In general, when wording and a design comprise the mark, as in
the case of Applicant’s special form mark, then the wording is normally accorded
greater weight because the wording is likely to make an impression upon purchasers,
would be remembered by them, and would be used by them to request the goods. CBS,
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite
mark comprising a design and words, the verbal portion of the mark is the one most
likely to indicate the origin of the goods to which it is affixed”); Joel Gott Wines LLC
v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430-31 (TTAB 2013); In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). See also Giant Food, Inc. v.
Nation’s Food Serv., Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). In
Applicant’s mark, the TAMBA HALI portion dominates over the TH letter design
portion. Insofar as these terms are concerned, purchasers are likely to focus on the
first term, TAMBA, which is identical to the entirety of Registrant’s mark.
Nevertheless, the marks must be considered in their entireties, including the letter
design feature of Applicant’s mark, in determining the likelihood of confusion.
Even when the TH design portion of Applicant’s special form mark TH TAMBA
HALI is taken into account, Applicant’s mark is similar to Registrant’s standard
character mark in appearance and sound due to the shared TAMBA portion. As to
meaning, as discussed above, the marks include the given name “Tamba.” Based on
these similarities, we find that the marks engender similar overall commercial
impressions, that is, of someone’s name. The letters TH clearly are the initials of
Applicant’s full name. Just as in the case with Applicant’s standard character mark,
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consumers may view Registrant’s mark TAMBA as a shortened form of Applicant's
special form mark TH TAMBA HALI. The du Pont factor involving the similarity of
the marks weighs in favor of a finding of likelihood of confusion.
In reaching our decision, we again considered Applicant’s third-party registration
evidence discussed above showing the coexistence of marks comprising, on the one
hand, a given name and, on the other hand, a given name plus a surname, as well as
the Examining Attorney’s response thereto.
Conclusion
Indeed, we have considered all of the evidence made of record pertaining to the
likelihood of confusion issue, as well as all of the arguments related thereto, including
any evidence or arguments not specifically discussed in this opinion. Because the
marks are similar, the goods are related in Class 14 and identical in Class 25, the
channels of trade are identical in Classes 14 and 25, the classes of consumers are
identical in both classes, and the goods in both classes are subject to impulse
purchase, we find that confusion is likely between the marks.
We conclude that consumers familiar with Registrant’s clothing sold under the
mark TAMBA in standard characters are likely to mistakenly believe, upon
encountering Applicant’s mark TH TAMBA HALI and design for jewelry and
clothing, that the goods originate from or are associated with or sponsored by the
same entity. Accordingly, the refusals to register in Application Serial Nos. 86725532
and 86726627 are affirmed.

Serial Nos. 86725523; 86725532; 86726617; 86726627

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Decision:
The refusal to register in each application is affirmed.