Tiffany & Broadway, Inc.

Trademark Trial and Appeal Board

Nov 16, 1998

No. 74670640 (T.T.A.B. Nov. 16, 1998)

Paper No. 14
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 16, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Tiffany & Broadway, Inc.
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Serial No. 74/670,640
_______
Michael W. Smolar, president of Tiffany & Broadway, Inc.
for Tiffany & Broadway, Inc.1
Julie Clinton Quinn, Trademark Examining Attorney, Law
Office 109 (Deborah Cohn, Managing Attorney)
_______
Before Quinn, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Tiffany & Broadway, Inc. has filed an intent-to-use
application to register the mark TIFFANY for “ladies’ dress
shoes.”2

1 Applicant was represented by outside counsel throughout this
case until after the filing of applicant’s reply brief. At that
time applicant filed a “power of attorney and revocation of prior
powers” requesting that all correspondence now be sent to Michael
W. Smolar, president, at applicant’s address.
Ser. No. 74/670640
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, if applied to its identified
goods, would so resemble the following registered marks,
all owned by the same entity, as to be likely to cause
confusion, mistake or deception:
3 and 4
for “combs, and belts for supporting wearing-apparel”;
TIFFANY & CO. for “retail store services specializing in
the sale of: jewelry; watches and clocks; stationery;
chinaware; figurines; silver flatware, coffee services,
bowls, trays, picture frames, and boxes; desk accessories;
bar accessories; clothing accessories; baby gifts; smoker’s
accessories; crystal glasses, bowls, vases, jars,
candlesticks, boxes, buckets, and baskets; precious and
semi-precious stones; dies for engraving, stamping, or
embossing stationery; flexible stainless measuring tapes;

2 Ser. No. 74/670,640, filed May 8, 1995. The application is
based on applicant’s bona fide intention to use the mark in
commerce.
3 Reg. No. 136,218, issued October 26, 1920, republished under
Trademark Act of 1946, third renewal.
Ser. No. 74/670640
3
thermometers; barometers; medals and medallions; metal
plates from which book plates are stricken off; non-
electric lamps; candelabra; playing cards; sewing kits;
ironstone dinnerware; earthenware boxes and baskets; and
ashtrays”5; and TIFFANY & CO. for “clothing, namely, men’s
ties.”6
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested. We affirm the refusal to register. In reaching
this conclusion, we have considered all of the relevant du
Pont7 factors.
Turning first to a consideration of the respective
marks, applicant does not dispute that the involved marks
are similar “in sound, appearance, meaning and
connotation.” (Applicant’s brief, p. 4). It is clear that
the involved marks are essentially identical.
Turning to a consideration of the respective goods and
services, applicant essentially contends that when its
specific goods, “ladies’ dress shoes,” are compared to

4 Reg. No. 136,219, issued October 26, 1920, republished under
Trademark Act of 1946, third renewal.
5 Reg. No. 1,251,356, issued September 13, 1983, Section 8
affidavit accepted, Section 15 affidavit received.
6 Reg. No. 1,723,904, issued October 13, 1992, Section 8
affidavit accepted, Section 15 affidavit received. Registrant
disclaimed the terms “& Co.”.
7 See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973).
Ser. No. 74/670640
4
men’s ties, to belts, and to retail store services,
specializing in the sale of, inter alia, clothing
accessories, there will be no confusion as to source of the
goods and services. Specifically, applicant asserts that
as to “men’s ties” and “belts for supporting wearing-
apparel”, neither applicant nor the registrant sell
sufficient amounts of clothing that the purchasing public
would relate either parties’ marks with clothing; that
retail store services (even those selling clothing
accessories) are not related to ladies’ dress shoes,
especially because the registrant does not sell shoes; and
that there is no complimentary or conjoint use of
applicant’s “ladies’ dress shoes” with any of the cited
goods or services. Applicant also contends that registrant
owns a registration in which the identification of goods
lists, inter alia, “clothing accessories, namely, money
clips, cufflinks, key holders, collar clips, collar pins,
collar stays; tiebars; tie tacks; tie slides; belt buckles
and studs,”8 thereby establishing that shoes are not a
clothing accessory.

8 Reg. No. 1,283,306, issued June 26, 1984, Section 8 affidavit
accepted, Section 15 affidavit acknowledged. The Examining
Attorney objected to applicant’s reference to this registration
as untimely filed with the appeal brief, and that it was not a
proper copy of the registration. The Examining Attorney’s
objection is not well taken because on June 24, 1996, applicant
Ser. No. 74/670640
5
In support of her position as to the relatedness of
the respective goods and services, the Examining Attorney
has made of record copies of pages from four catalogs
showing that belts are “purchased to go with shoes”
(Examining Attorney’s final Office action dated September
4, 1996, p. 3). In addition, the Examining Attorney
submitted several third-party registrations, each of which
issued on the basis of use in commerce, to demonstrate the
close relationship between shoes and belts, and between
shoes and ties, by showing that a single entity has adopted
a single mark for both shoes and belts, and for both men’s
ties and women’s shoes.
Third-party registrations, however, are not evidence
of commercial use of the marks shown therein, or that the
public is familiar with them. Nevertheless, third-party
registrations which individually cover a number of
different items and which are based on use in commerce have
some probative value to the extent they suggest that the
listed goods emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467, footnote 6 (TTAB 1988).

submitted a copy of Reg. No. 1,283,306 as part of applicant’s
response to the Examining Attorney’s second Office action.
Ser. No. 74/670640
6
Moreover, it is well settled that goods need not be
identical or even competitive to support a finding of
likelihood of confusion; it being sufficient that the goods
are related in some manner or that the circumstances
surrounding their marketing are such that they would likely
be encountered by the same persons under circumstances that
could give rise to the mistaken belief that they emanate
from or are associated with the same source. See Monsanto
Co. v. Enviro-Chem Corp., 199 USPQ 590, 596 (TTAB 1978);
and In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992).
Based on the record before us, we readily conclude
that applicant’s goods, “ladies’ dress shoes,” are closely
related to the cited registrant’s “men’s ties” and “belts
for supporting wearing-apparel”, as well as its retail
store services specializing in the sale of clothing
accessories, which we deem to include belts.
Regarding the respective trade channels and
purchasers, applicant argues that its goods are purchased
by women who will be the users of the shoes (Applicant’s
brief, pp. 7 and 18); and that men’s ties and ladies’ dress
shoes “are sold in different smaller-sized clothing stores
and are sold in different locations in larger-sized
clothing stores and in department stores” (Applicant’s
brief, pp. 5 and 18). Both of these arguments are
Ser. No. 74/670640
7
unsupported by any evidence. Even if the items were sold
in different boutique-type stores, or in different areas of
large department stores, the record shows that shoes and
belts are often coordinated, and thus, may be purchased
together in a single shopping excursion. Therefore, the
parties’ respective goods could be offered and sold to the
same class of purchasers in the same stores.9
Finally, turning to the fame of the cited marks,
applicant concedes that the marks, TIFFANY and TIFFANY &
CO., are “well-known”, but contends that this fame is
limited to the areas of “crystal, jewelry, luxury and gift
items” (Applicant’s brief, p. 6); and specifically, that
the cited registrant is not famous as a manufacturer or
seller of clothing. The Examining Attorney submitted
evidence in the nature of numerous Lexis/Nexis excerpts
referring to the “famous” and/or “world famous” Tiffany &
Co. to establish that the cited marks are famous, and
entitled to a broad scope of protection.10

9 Applicant noted in its brief (page 14) the prices of certain of
the cited registrant’s goods. The Examining Attorney objected to
applicant’s evidence of the prices of certain goods sold by the
registrant on the basis that the evidence was untimely, having
been introduced for the first time in applicant’s brief. The
Examining Attorney’s objection is well taken, and we have not
considered this evidence. Even if we had considered the
evidence, we would not reach a different result in this case.
10 The Examining Attorney also cited the following three cases
wherein the fame of the mark TIFFANY was judicially recognized in
the circumstances of those cases: Tiffany & Co. v. Classic Motor
Ser. No. 74/670640
8
The Court of Appeals for the Federal Circuit addressed
the issue of fame in the case of Kenner Parker Toys Inc. v.
Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992), stating as follows:
Achieving fame for a mark in the marketplace
where countless symbols clamor for public attention
often requires a very distinct mark, enormous
advertising investments, and a product of lasting
value. After earning fame, a mark benefits not only
its owner, but the consumers who rely on the symbols
to identify the source of a desired product. Both the
mark’s fame and the consumer’s trust in that symbol,
however, are subject to exploitation by free riders.”
Even if we limit the registrant’s fame to those areas
for which applicant concedes such fame (jewelry, crystal,
luxury and gift items), women knowing of the fame of
TIFFANY, upon seeing TIFFANY on ladies’ dress shoes, may
well assume some connection or association with the cited
registrant.
Any doubt on the question of likelihood of confusion
must be resolved against the newcomer as the newcomer has
the opportunity of avoiding confusion, and is obligated to

Carriages Inc., 10 USPQ2d 1835 (TTAB 1989) (wherein CLASSIC
TIFFANY - in stylized lettering - for automobiles was found
confusingly similar to TIFFANY and TIFFANY & CO. for jewelry,
household items, glassware, lamps, and many other products);
Tiffany and Company v. National Gypsum Company, 459 F.2d 527, 173
USPQ 793 (CCPA 1972) (wherein the Court reversed the Board’s
dismissal of the opposition against the mark TIFFANY for wood-
fiber, low density ceiling tile and ceiling grid panels); and
Tiffany & Co. v. Tiffany Tile Corporation, 345 F.2d 214, 145 USPQ
483 (CCPA 1965) (wherein the Court reversed the Board’s dismissal
Ser. No. 74/670640
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do so. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988); and Hilson Research Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423, at
1440 (TTAB 1993).
Applicant cited several cases during the ex-parte
prosecution and appeal of this case. We have carefully
considered those cases. In particular, we will address the
case of In re British Bulldog, Ltd., 224 USPQ 854 (TTAB
1984), which is distinguishable from the case now before
the Board. In the British Bulldog case the involved mark,
PLAYERS, had different connotations for shoes (connoting
outdoor activities) and men’s underwear (connoting indoor
activities); and there was no argument regarding any fame
of the cited mark.
Based on the identity of the marks, the relationship
of the parties’ respective goods and services, the identity
of the trade channels, and the fame of the cited
registrant’s marks, we find that there is a likelihood that
the purchasing public would be confused if applicant were
to use TIFFANY as a mark for ladies’ dress shoes.
Decision: The refusal under Section 2(d) is affirmed.

of the opposition against the mark TIFFANY TILE for ceramic
tile).
Ser. No. 74/670640
10
T. J. Quinn
G. D. Hohein
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board