The Timing Inc.

Trademark Trial and Appeal Board

Dec 14, 2015

No. 86170524 (T.T.A.B. Dec. 14, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: December 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Timing Inc.
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Serial No. 86170524
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Erik M. Pelton of Erik M. Pelton & Associates, PLLC for The Timing Inc.

David C. I, Trademark Examining Attorney, Law Office 114, K. Margaret Le,
Managing Attorney.
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Before Cataldo, Masiello, and Lynch, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:
The Timing Inc. (“Applicant”) seeks registration on the Principal Register of the
mark COMPOSED in standard characters for “Women's clothing, namely, shirts,
blouses, skirts, dresses, shorts, pants, sweaters, jackets,” in International Class 25.1
The Trademark Examining Attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as
used in connection with Applicant’s goods, so resembles the registered mark shown
below as to be likely to cause confusion, or to cause mistake, or to deceive.

1 Application Serial No. 86170524 was filed on January 21, 2014 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a).
Serial No. 86170524
2

The cited mark is registered for the goods set forth below:
Clothing, namely, shirts, T-shirts, cardigans, dress shirts,
pants, trousers, slacks, jeans, culottes, cargo pants,
stretch pants, denim jeans, jumpers, shorts, tops, stretch
tops, crop tops, tank tops, halter tops, blouses, skirts,
dresses, sweaters, vests, pullovers, capes, anoraks,
ponchos, jackets, reversible jackets, shell jackets, coats,
blazers, suits, turtlenecks, scarves, bandanas, belts, in
International Class 25.2
When the Examining Attorney made the refusal final, Applicant appealed to this
Board. The case is fully briefed.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
1. The goods; trade channels; classes of customers.
We will first consider the similarity or dissimilarity of the goods as identified in
the application and the cited registration. Stone Lion Capital Partners, LP v. Lion

2 Reg. No. 3771962 issued April 6, 2010.
Serial No. 86170524
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Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014);
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). Applicant’s goods are certain clothing items for women. The
clothing items listed in the registration are not limited by gender and, accordingly,
include women’s items of the type described. See Levi Strauss & Co. v. Abercrombie
& Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013). The
application and the cited registration both cover women’s “shirts, … shorts,
…blouses, skirts, dresses, sweaters, [and] jackets.” Thus, the goods at issue are
identical in part. We need not find that all of Applicant’s goods are similar to
Registrant’s goods; in the context of likelihood of confusion, it is sufficient if
relatedness is established between any item within a particular class in the
application and any item in the registration. Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v.
TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
As Applicant’s goods are identical, in part, to Registrant’s goods, we presume that
such goods of Applicant and Registrant move in the same channels of trade and are
offered to the same classes of 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 American
Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101
USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531,
Serial No. 86170524
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1532 (TTAB 1994). Accordingly, the du Pont factors relating to the similarity or
dissimilarity of the goods and the similarity or dissimilarity of their trade channels
favor a finding of likelihood of confusion.
2. The marks.
We next consider 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). “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. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation
omitted).
Applicant argues that its mark, COMPOSED, is an English word with a well-
known meaning, while the cited mark is “a coined word with no readily-apparent
English meaning, and a disjointed commercial impression.”3 Applicant points out
that the marks are spelled differently, that the cited mark includes an apostrophe
and “an accent over the second ‘o,’ …”;4 and argues that “[p]unctuation may be
incorporated into a mark in a way that the commercial impression would be

3 Applicant’s brief at 3-4, 4 TTABVUE 7-8.
4 Id. at 4, 4 TTABVUE 8.
Serial No. 86170524
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changed …”5 The Examining Attorney argues that the marks differ only by a single
letter, and that the marks are “essentially phonetic equivalents.”6
In appearance, the marks are highly similar in that they share the letters
COMPOS and D. The style of lettering in the registered mark is very common and
nondistinctive; and we bear in mind that Applicant seeks to register its mark in
standard characters, such that it would not be limited to any particular form of
display, Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir.
1983), and could be displayed in a style of lettering similar to that of the registered
mark. The two marks differ in appearance by virtue of the apostrophe and the
diacritical mark over the letter O in Registrant’s mark.
In order to better understand the sound and meaning of Registrant’s mark, we
take judicial notice of the following definition of “apostrophe”:7
The mark ’ or ' used to indicate omission of one or more
letters or figures (as in can’t for cannot, judg’d for judged,
wish’d for wished, mascara’d for mascaraed, ’76 for 1976,
to mark the possessive case of English nouns and of
certain English pronouns (as in Bill’s, Moses’, women’s
boys’, anyone’s) or the plural of letters (as in two a’s) or of
figures (as in three 7’s) and sometimes of words that are
not normally nouns (as in no if’s or but’s) …
102 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993).
The relevant portion of the above definition demonstrates that the portion of
Registrant’s mark consisting of an apostrophe followed by a D would readily be

5 Id. at 3, 4 TTABVUE 7.
6 Examining Attorney’s brief, 6 TTABVUE 6.
7 The Board may take judicial notice of dictionary definitions. Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Serial No. 86170524
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perceived as a contraction of the letters ED, forming the past tense of the word
“compose” (i.e., “composed”), just as “wish’d” and “judg’d” would be recognized as
contractions of the words “wished” and “judged.” The diacritical mark over the letter
O in Registrant’s mark reinforces this impression. The horizontal line over a vowel
is a recognized phonetic symbol; and we note that this symbol is used over the letter
O in some of the dictionary definitions of the word “composed” made of record by
Applicant.8 The same diacritical mark appears over the letter O in Webster’s
definition of “compose.” 466 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY
(1993). Accordingly, we find it highly likely that customers would perceive the cited
registered mark as having the same pronunciation and meaning as the word
“composed.”
With respect to overall commercial impression, Applicant argues (based upon
the definitions of the word “composed”) that its own mark, which is “correctly”
spelled,
conjures a formal, put-together impression that brings to
mind both a calm, self-possessed person and well-made
clothing. … Conversely, the [Registrant’s] mark gives the
impression of much less formality because of its inherent
incongruity: it may be viewed as a misspelling of the
English word “composed,” and therefore as something
that is not formed well, making it the opposite of well-
composed.9
[T]he [registered] mark’s spelling and use of punctuation
distort the English word “composed,” and therefore

8 See the pronunciations for the words “composed” and “composedly” in THE AMERICAN
HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000), submitted with
Applicant’s response of October 23, 2014 at 12.
9 Applicant’s brief at 4, 4 TTABVUE 8.
Serial No. 86170524
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appear to be the opposite of well-composed. On the other
hand, Applicant’s mark carries an air of properness and
refinedness because of its “composed” construction.10
We do not agree that Registrant’s mark would be viewed as a distortion of the
proper word “composed,” inasmuch as Webster’s dictionary indicates that the use of
the formative “ ’d ” is a recognized contraction for expressing the past tense of a
word. There is no countervailing evidence to suggest that such a use of an
apostrophe would be perceived as incongruous, improper, or a distortion.
We find the two marks to be highly similar in appearance and identical in sound
and meaning. Overall, we find that they create extremely similar commercial
impressions. Accordingly, the du Pont factor of the similarity or dissimilarity of the
marks favors a finding of likelihood of confusion.
3. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Applicant’s mark
is highly similar to the cited registered mark. Applicant’s goods are, in part,
identical to Registrant’s goods, and would travel through the same channels of trade
to the same classes of customers. We find that Applicant’s mark so resembles the
cited registered mark as to be likely to cause confusion, mistake, or deception as to
the source of Applicant’s goods.
Decision: The refusal to register is affirmed.

10 Applicant’s reply brief at 3, 7 TTABVUE 4.