The Topline Corporation

Trademark Trial and Appeal Board

Nov 15, 2005

No. 78217228 (T.T.A.B. Nov. 15, 2005)

Hearing:
July 28, 2005
Mailed: November 15, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re The Topline Corporation
___________

Serial Nos. 778217228 and 78975345
___________

William O. Ferron, Jr. of Seed Intellectual Property Law
Group for The Topline Corporation.

Stacy B. Wahlberg, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
____________

Before Seeherman, Hohein and Walters, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

On February 26, 2003, The Topline Corporation filed an
application to register the mark REPORT SEATTLE, in standard
character form, on the Principal Register based on an
allegation of a bona fide intention to use the mark in
commerce in connection with the identified goods. On
February 11, 2004, applicant filed a request to divide the
application into two applications. The parent application,
Serial No. 78217228, retained goods identified, as amended,
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial Nos. 78975345 and 78217228

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as “men’s, women’s and children’s apparel, namely, shirts,
pants, jeans, sweaters, skirts, dresses, suits, lingerie,
shorts, coats, jackets, and swimwear; fashion accessories,
namely, hosiery, belts, hats, gloves and scarves.” The
child application, Serial No. 78975345, is for the same
mark, REPORT SEATTLE, for “footwear.” Each application
includes a claim of applicant’s ownership of three
registrations.1
The Trademark Examining Attorney has issued a final
refusal to register in each application under Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s mark so resembles the previously registered mark
REPORT COLLECTION, in standard character form, for “clothing
and accessories, namely shirts, polos, T-shirts,
sweatshirts, sweaters, cardigans, wind resistant jackets,
coats, underwear, belts, socks,”2 that, if used on or in
connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive.

1 The three claimed registrations on the Principal Register are No.
2169637 for “REPORT:” for “women's shoes,” No. 2377891 for “ONE ON 1 BY
REPORT:” for “women's and children's fashion shoes sold through shoe
stores and shoe departments of department stores,” and No. 2681120 for
for “footwear.”

2 Registration No. 1957041 issued February 20, 1996, to Modextil Inc.,
in International Class 25; Section 8 & 15 affidavits accepted and
acknowledged; renewed. The registration includes a disclaimer of
COLLECTION apart from the mark as a whole.

Serial Nos. 78975345 and 78217228

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Additionally, the Examining Attorney has issued a final
refusal to register in each application under Section 6 of
the Trademark Act, 15 U.S.C. 1056, on the ground that the
term SEATTLE is geographically descriptive and must be
disclaimed because applicant is located in Bellevue,
Washington, which is a suburb of Seattle.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs and an oral hearing was
held. Because the appeals involve common questions of law
and fact, we have decided them in a single opinion. We
affirm the refusals to register.
Disclaimer Requirement
The Examining Attorney contends that the term SEATTLE
is primarily geographically descriptive because it is the
name of a place generally known to the public; that
Bellevue, Washington, the location of applicant’s principal
offices, is within the Seattle metropolitan area3; that,
applicant’s goods come from the area named in the mark and,
therefore, a goods/place association is presumed; and that
applicant’s argument that SEATTLE evokes the feeling and
aesthetic of the Pacific Northwest, rather than primarily
indicating a geographic location, is not established in the
record.

3 The Examining Attorney submitted excerpts from two sources showing
that Bellevue, Washington, is located on lake Washington opposite
Seattle; that the two cities are connected by a bridge; and that Bellvue
is a suburb of Seattle. The Columbia Gazeteer of North America, 2000.
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Applicant contends that the meaning of its entire mark
is not primarily geographic; that the significance of
SEATTLE in applicant’s mark is not geographic; that the fact
that applicant’s “principal offices are near Seattle does
not mandate a finding that a goods/place association should
be presumed” (Brief, p. 8); and that prospective consumers
will not believe that Seattle is the geographic origin of
applicant’s identified clothing.
While applicant contends that its mark as a whole is
not geographically descriptive, that is not the issue before
us. The disclaimer refusal concerns the geographic
descriptiveness of the term SEATTLE in the context of the
mark as a whole. The test is whether (i) the term in the
mark sought to be registered is the name of a place known
generally to the public, and whether (ii) the public would
make a goods/place association, that is, believe that the
goods or services for which the mark is sought to be
registered originate in that place. See, e.g., University
Book Store v. University of Wisconsin Board of Regents, 33
USPQ2d 1385, 1402 (TTAB 1994); and In re California Pizza
Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988), citing In re
Societe Generale des Eaux Minerals de Vittel S.A., 824 F.2d
957, 3 USPQ2d 1450 (Fed. Cir. 1987). See also In re JT
Tobacconists, 59 USPQ2d 1080 (TTAB 2001). If the goods do
in fact emanate from the place named in the mark, the
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goods/place association can be presumed. In re Carolina
Apparel, 48 USPQ2d 1542 (TTAB 1998).
In this case, applicant’s principal offices are in
Bellevue, Washington. Because Bellevue is a close,
connected suburb of Seattle, it is reasonable to view
Bellevue as part of the Seattle metropolitan area.
Applicant does not dispute that its goods come from this
area. There is no question that Seattle is a generally-
known geographical location and that, in view of the facts
and the relevant case law, we can presume a goods/place
association. Applicant has presented absolutely no evidence
in support of its contention that, in the context of its
mark, the term SEATTLE would have a non-geographic
significance, nor is such a conclusion evident. Therefore,
we find that the term SEATTLE in applicant’s mark, REPORT
SEATTLE, is primarily geographically descriptive and that
the Examining Attorney’s requirement for a disclaimer is
appropriate.
Likelihood of Confusion
The Examining Attorney contends that the marks are
confusingly similar because both marks contain the identical
dominant term, REPORT; that the additional term in the
registered mark, COLLECTION, is merely descriptive and has
been disclaimed and the additional term in applicant’s mark,
SEATTLE, is primarily geographically descriptive; and that
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the alleged coexistence and lack of actual confusion is not
persuasive because the record contains no evidence
pertaining to the nature and extent of use by applicant and
registrant.4 Regarding the goods, the Examining Attorney
argues that the parent application herein and the cited
registration include identical and related clothing items.
Regarding the child application, the Examining Attorney
argues that previous decisions have held that the types of
apparel in the cited registration and footwear are related;
that the purchasers and channels of trade of the respective
products are the same; and that evidence submitted by the
Examining Attorney in the form of excerpts from Internet
websites and third-party registrations supports the
conclusion that such goods “are commonly marketed in the
same channels of trade through use of a single mark” (Serial
No. 78975345 Brief, p. 6).
Applicant contends that its “REPORT marks have
coexisted with the cited Registrant’s mark in the
marketplace for over 11 years without confusion” (Serial No.
78217228 Brief, p. 3); that the marks have coexisted on the
register since 1998; that “Applicant’s coexisting REPORT
marks do not contain the distinctive term SEATTLE included
in the present application, further amplifying the lack of

4 The Examining Attorney objects to considering arguments based on
applicant’s other registrations because copies of the registrations were
not submitted. This objection is discussed infra.

Serial Nos. 78975345 and 78217228

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potential confusion between REPORT SEATTLE and REPORT
COLLECTION” (id.); and that the marks, viewed in their
entireties, are different in pronunciation and commercial
impression. Regarding its parent application, applicant
concedes that “both marks are used in association with
clothing,” but argues that “there is no per se rule that
similar marks used for clothing are likely to cause
confusion” (Serial No. 78217228 Brief, p. 6).5 Regarding
its child application, applicant contends that it has prior
use of its mark in connection with footwear as well as an
incontestable registration for a REPORT mark for footwear.6
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 likelihood of
confusion 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In considering the evidence of
record on these factors, we keep in mind that “[t]he

5 Applicant has misstated the “rule,” which is that there is no per se
rule that goods are related simply because the goods are in the same
general category, in this case, clothing. To consider whether goods are
related, we must consider the record in each case. Then, based on the
entire record and all relevant factors, we will determine whether a
likelihood of confusion exists.

6 With respect to this argument, the Examining Attorney contends that
applicant’s prior use and registration are irrelevant in this ex parte
appeal; and, moreover, that the mark and goods in applicant’s
incontestable registration are different from the mark and goods in this
application.

Serial Nos. 78975345 and 78217228

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fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976); In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein. The factors deemed
pertinent in this proceeding are discussed below.
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The 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
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, although the marks at issue must be
considered in their entireties, it is well settled that one
feature of a mark may be more significant than another, and
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it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). In this regard, we find that the
word REPORT is the dominant feature in the commercial
impression created by each of the marks at issue. It is the
first word in each mark; it would appear to be an arbitrary
term in connection with applicant’s and registrant’s goods;
and the words SEATTLE and COLLECTION in the respective marks
are descriptive and, thus, contribute relatively less to the
commercial impressions of the respective marks. In terms of
appearance, sound, connotation and overall commercial
impression, we find that the similarity between the marks
that results from the presence of the word REPORT in both
marks outweighs the points of dissimilarity between the
marks. Viewing the marks in their entireties, we find that
they are sufficiently similar that, if used to identify the
same or related goods, confusion as to source would be
likely.
Turning to consider the goods involved in this case, we
note that the question of likelihood of confusion must be
determined based on an analysis of the goods recited in
applicant’s application vis-à-vis the goods recited in the
registration, rather than what the evidence shows the goods
actually are. Canadian Imperial Bank v. Wells Fargo Bank,
Serial Nos. 78975345 and 78217228

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811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See
also, Octocom Systems, Inc. v. Houston Computer Services,
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). Further, it is a general rule that goods
or services need not be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is enough that goods or services are related in
some manner or that some circumstances surrounding their
marketing are such that they would be likely to be seen by
the same persons under circumstances which could give rise,
because of the marks used therewith, to a mistaken belief
that they originate from or are in some way associated with
the same producer or that there is an association between
the producers of the goods or services. In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited therein.
Several of the items of clothing identified in the
parent application are identical to several of the clothing
items identified in the cited registrations, i.e., men’s
shirts, sweaters, coats, jackets7 and belts. Thus, there is
no need to consider whether or to what extent the other
goods recited in the parent application are related to the
goods in the cited registration. If confusion is likely

7 Registrant’s “wind resistant jackets” are encompassed by applicant’s
“jackets.”

Serial Nos. 78975345 and 78217228

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with respect to any of the goods in a class, a refusal of
registration must be affirmed. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA
1981). Regarding the child application, the following
excerpts, submitted by the Examining Attorney, from Internet
websites show footwear marketed closely with the various
clothing items identified in the cited registration:
www.eisenbergandeisenberg.com - a website offering
men’s formalwear has a category entitled “shirts,
ties, shoes & accessories”;

www.studdeddesigns.com - a website offering
various gem-studded items has a category entitled
“shoes/T-shirts”;

www.dealcloset.com - a website with a page
entitled “Tommy Bahama Catalogue,” includes the
following text – “The DealCloset staff love Tommy
Bahama. They provide top quality casual clothing.
Our silk Hawaiian print shirts always get noticed.
The catalogue also sells regular shirts, jeans,
loose shorts, campshirts, silk/cotton blend polo
shirts, and sweatshirts. If you want to look
great wearing casual clothing this is absolutely
the brand to buy. … We recently discovered a great
source for Tommy Bahama shoes.”

The Examining Attorney also submitted copies of eleven
third-party registrations, all based on use in commerce,
that in each instance include both the men’s clothing items
identified in the cited registration and “footwear” in
connection with the same marks. Moreover, because the
parent application evidences applicant’s intent to broaden
its line of products from footwear, identified in its
existing registrations, to include clothing items,
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applicant’s own intentions are evidence that such items may
emanate from the same source and be identified by the same
mark. We find that applicant’s broadly identified
“footwear” in its child application is sufficiently related
to the men’s clothing items identified in the cited
registration that, if identified by confusingly similar
marks, confusion as to source is likely.
To the extent that both applicant’s and registrant’s
goods are identical and there are no limitations on the
channels of trade or class of purchasers, there are no
legally relevant differences in the channels of trade and
class of purchasers. Octocom Systems Inc. v. Houston
Computers Services Inc., 16 USPQ2d 1783, (Fed Cir. 1990).
See also Schieffelin & Co. v. Molson Companies Ltd., 9
USPQ2d 2069, 2073 (TTAB 1989).
Therefore, particularly in view of the substantial
similarity in the commercial impressions of applicant’s
mark, REPORT SEATTLE, and registrant’s mark, REPORT
COLLECTION, and the fact that the same and related goods,
trade channels and class of purchasers are involved in each
of the applications herein, the contemporaneous use of the
marks on the identified goods is likely to cause confusion
as to the source or sponsorship of such goods.
We are not convinced otherwise by applicant’s arguments
regarding the coexistence on the Register of its three
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subsisting registrations and the cited registration.8 The
marks contain matter not present in this application, and do
not include SEATTLE, so they are of little value to our
determination. The Board must decide these cases now before
us on their merits. In re Nett Designs, Inc., 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (“Even if some prior
registrations had some characteristics similar to Nett
Design’s application, the PTO’s allowance of such prior
registrations does not bind the Board or this Court.”). See
also, In re Owens-Corning Fiberglass Corp., 774 F.2d 1116,
227 USPQ 417 (Fed. Cir. 1985).
With regard to applicant’s assertion that it is aware
of no instances of actual confusion occurring as a result of
the alleged contemporaneous use of the marks of applicant
and registrant, we note that, not only is there no evidence
or allegation of use in either intent-to-use application or
in this proceeding, but the absence or presence of actual
confusion is of little probative value where we have little
evidence pertaining to the nature and extent of the use by
registrant. Moreover, the test under Section 2(d) is not
actual confusion but likelihood of confusion. See, In re
Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984); and In re
General Motors Corp., 23 USPQ2d 1465 (TTAB 1992).

8 In view of applicant’s claim of ownership of these registrations and
the Examining Attorney’s acceptance of this claim, the Examining
Serial Nos. 78975345 and 78217228

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Decision: The refusals under Section 6 and Section
2(d) of the Act are both affirmed in each application.

attorney’s objection to considering these registrations herein is not
well-taken.