Transformation Wear LLC

Trademark Trial and Appeal Board

Aug 9, 2012

No. 85085379 (T.T.A.B. Aug. 9, 2012)

Mailed: 8/9/2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Transformation Wear LLC
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Serial No. 85085379
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Suanne M. Ansari for Transformation Wear LLC.

Kapil K. Bhanot, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
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Before Quinn, Zervas and Kuhlke,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Transformation Wear LLC filed, on July 15, 2010, an
application to register the mark shown below

(WEAR disclaimed) for “clothing to promote an awareness of the
power of words to communicate energy, namely, caps, short-
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser. No. 85085379

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sleeved or long-sleeved t-shirts, sports shirts, sweat shirts,
and tank tops” (in International Class 25).1
The 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, when applied to applicant’s goods, so
resembles the previously registered mark TRANSFORMATION (in
standard characters) for “clothing, namely, lingerie, frocks,
jackets, hosiery, skirts, blouses, uniforms, suspenders; boots
and shoes; hats” (in International Class 25)2 as to be likely to
cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Although applicant concedes that the marks are similar in
sound and appearance (Brief, p. 1), it contends that the
differences in meaning and commercial impression are so
significant that confusion is unlikely to occur between the
marks. Applicant also contends that the goods are different and
are directed to distinct classes of purchasers. In this
connection, one of applicant’s principal arguments is that it
sells to consumers who share a similar philosophy of inner-

1 Application Serial No. 85085379 alleging first use anywhere and first use in
commerce on July 5, 2010. The application includes a description of the mark
as follows: “The mark consists of a stylized ‘T’ figure of a human with arms
stretched upward, with a round detached solid circle centered above the
outstretched arms, and with three parallel half circles swirling around the
torso of the figure. Below the design is the wording TRANSFORMATION WEAR.”
2 Registration No. 2028461, issued January 7, 1997; renewed.
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spirit renewal and awareness and who promote a deeper awareness
of the power of words, while registrant caters to transvestites,
cross dressers, transsexuals and transgenders. Thus, applicant
states, the relevant consumers will exercise a high degree of
care in their purchasing decisions and will know with whom they
are dealing; according to applicant, registrant’s potential
consumer “is a special class of consumer who seeks out highly
specialized goods for their needs.” (Brief, p. 3). In support
of its arguments, applicant submitted third-party registrations
of TRANSFORMATION marks, as well as excerpts of its website and
registrant’s website.
The examining attorney maintains that the marks and goods
are similar. Further, the examining attorney is not persuaded
by applicant’s attempt to limit registrant’s goods and
purchasers. In support of the refusal the examining attorney
submitted dictionary definitions,3 third-party registrations, and
excerpts of third-party websites.
Our determination of the issue of likelihood of confusion
is based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two

3 Pursuant to the examining attorney’s request in the brief, we take judicial
notice of the definitions. See In re Total Quality Group Inc., 51 USPQ2d
1474, 1476 (TTAB 1999).
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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).
We first direct our attention to the du Pont factor of the
similarity/dissimilarity between the marks. We must compare the
marks in their entireties as to appearance, sound, connotation
and commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1960 (Fed. Cir. 2005), quoting In re E. I. du Pont
de Nemours & Co., 177 USPQ at 567. The test, under the first du
Pont factor, 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 impression that confusion as to the source of the
goods 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).
It is well 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 commercial
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impression created by the mark. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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.”).
Where both words and a design comprise the mark (as in
applicant’s mark), then the words are normally accorded greater
weight because the words are 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”); In re Appetito Provisions Co., 3 USPQ2d 1553,
1554 (TTAB 1987); and Kabushiki Kaisha Hattori Tokeiten v.
Scuotto, 228 USPQ 461, 462 (TTAB 1985). See also Giant Food,
Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983). In applicant’s mark, the literal portion of
the mark, namely TRANSFORMATION WEAR, is the dominant portion,
and is accorded greater weight over the design feature when
comparing this mark to the cited mark. We say this recognizing,
of course, the prominent size of the design feature of
applicant’s mark. Further, with respect to the word portion of
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applicant’s mark, we give less weight to the highly descriptive
or generic word WEAR that has been properly disclaimed. In re
Chatam Int’l. Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed.
Cir. 2004); and In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009).
Insofar as the literal portion of applicant’s mark is concerned,
applicant has adopted the entirety of registrant’s mark and
merely added a highly descriptive or generic term to it. This
fact situation generally does not overcome a similarity between
the marks. See, e.g., In re Toshiba Med. Sys. Corp., 91 USPQ2d
1266 (TTAB 2009).
Accordingly, the dominant portion, TRANSFORMATION WEAR, of
applicant’s mark is virtually identical to registrant’s mark
TRANSFORMATION in sound, appearance and meaning. Applicant
contends that its mark has the meaning of achieving a change in
one’s inner spiritual awareness, whereas the meaning of
registrant’s mark is to achieve a physical change in appearance.
(Brief, p. 6).4 Although potential customers may appreciate this
nuanced distinction in meaning if they were to encounter the
marks on the actual goods, any slight difference in connotation
is easily outweighed by the overall similarities between the
marks. We further note that the identification of goods in the
registration is not limited to a particular purpose or customer
base. Therefore, the connotation of registrant’s mark conveyed

4 The word “transformation” is defined as “an act, process, or instance of
transforming or being transformed.” (www.merriam-webster.com).
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in the context of registrant’s identified goods would include
the connotation engendered by applicant’s mark.
In focusing on the dominant portions of the marks, we
recognize, of course, that the marks ultimately must be compared
in their entireties, including the prominent design feature in
applicant’s mark. When this comparison is made, we find that
the marks are similar in sound, appearance and meaning. Because
of the similarities between the marks, the marks engender
similar overall commercial impressions. The similarity between
the marks weighs in favor of a finding of likelihood of
confusion.
Applicant argues that the word “transformation” is not a
distinctive word in the clothing field as “people do often wear
clothes to change the way they feel or look or as an expression
of one’s personality.” (Brief, p. 6). In this connection,
applicant submitted copies of three third-party registrations of
marks covering clothing: KOSAMA COMPLETE BODY TRANSFORMATION;
INFORMATION FOR TRANSFORMATION, SILVER GIRL ENTERPRISES; and
TUNER TRANSFORMATION. The evidence falls far short, however, of
establishing that the cited registration’s scope of protection
does not extend to applicant’s mark. With respect to the third-
party registrations, “[t]he existence of [third-party]
registrations is not evidence of what happens in the market
place or that consumers are familiar with them nor should the
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existence on the register of confusingly similar marks aid an
applicant to register another likely to cause confusion, mistake
or to deceive.” AMF Inc. v. American Leisure Products, Inc.,
474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); and In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). Moreover,
in the present case, none of the three registered marks is as
close to registrant’s mark as is applicant’s mark. This factor
is neutral.
We next turn to consider the second du Pont factor
regarding the similarity/dissimilarity between the goods. It is
well settled that the goods of the parties need not be identical
or competitive, or even offered through the same channels of
trade, to support a holding of likelihood of confusion. It is
sufficient that the respective goods of the parties are related
in some manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they would
or could be encountered by the same persons under circumstances
that could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same source.
See Hilson Research, Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993); and In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The
issue, of course, is not whether purchasers would confuse the
goods, but rather whether there is a likelihood of confusion as
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to the source of the goods. In re Rexel Inc., 223 USPQ 830
(TTAB 1984). In this connection, it should also be noted that
there is no per se rule governing likelihood of confusion cases
involving all types of wearing apparel. See In re British
Bulldog, Ltd., 224 USPQ 854 (TTAB 1984). However, in numerous
cases in the past, many different types of apparel have been
found to be related products which are sold in the same trade
channels to the same classes of purchasers, including to
ordinary consumers, and that confusion is likely to result if
the goods were to be sold under similar marks.5
Applicant’s caps and registrant’s hats are certainly
closely related headwear items; the remaining items in the
respective identifications of goods likewise are related.
The examining attorney submitted, in an attempt to show
that the goods are related, several use-based third-party
registrations showing that the same entity has registered the
same mark for the types of goods involved in this appeal.
“Third-party registrations which cover a number of differing
goods and/or services, and which are based on use in commerce,

5 See, e.g., Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 128
USPQ 549 (CCPA 1961) [women’s boots related to men’s and boys’ underwear];
Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992)
[underwear related to neckties]; In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991) [women’s pants, blouses, shorts and jackets related to women’s shoes];
In re Pix of America, Inc. 225 USPQ 691 (TTAB 1985) [women’s shoes related to
outer shirts]; In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) [hosiery
related to trousers]; In re Cook United, Inc., 185 USPQ 444 (TTAB 1975)
[men’s suits, coats, and trousers related to women’s pantyhose and hosiery];
and Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964)
[brassieres and girdles related to slacks for men and young men].
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although not evidence that the marks shown therein are in use on
a commercial scale or that the public is familiar with them, may
nevertheless have some probative value to the extent that they
may serve to suggest that such goods or services are of a type
which may emanate from a single source.” In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864
F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
Likewise, it is not surprising that both types of clothing
items are sold by the same online retailers. This is especially
true in some of the examples relied upon by the examining
attorney showing that entities offer a wide variety of clothing
items under the same mark.
We make our comparison of the goods, including between the
respective channels of trade and classes of purchasers, based on
the goods as they are identified in the application and the
cited registration. In re Giovanni Food Co., 97 USPQ2d 1990,
1991 (TTAB 2011). If the cited registration describes the goods
broadly, and there is no limitation as to their nature, type,
channels of trade, or class of purchasers, it is presumed that
the registration encompasses all goods of the type described,
that they move in all normal channels of trade, and that they
are available to all classes of purchasers. See, e.g., In re
Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 1990) (“We have no
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authority to read any restrictions or limitations into the
registrant’s description of goods.”). Accordingly, if the cited
registration has a broad identification of goods, an applicant
does not necessarily avoid a likelihood of confusion merely by
more narrowly identifying its related goods, as in the present
case where applicant’s identification specifies that the
clothing promotes an awareness of the power of words to
communicate energy.
In the present case, neither applicant’s nor registrant’s
goods are restricted to any specific trade channel or class of
purchaser. Accordingly, the goods are expected to move through
all normal trade channels; these trade channels would include
retail clothing stores and online retail websites. Further, we
must presume that the goods are available to all classes of
purchasers, including those wanting to increase the awareness of
the power of words to communicate energy. See, e.g., In re Diet
Center, Inc., 4 USPQ2d 1975 (TTAB 1987) (noting that, although
applicant had limited its identification to indicate that its
goods were sold only through franchised outlets offering weight-
reduction services, the cited registration’s identification
contained no limitations as to trade channels or classes of
customers and thus it must be presumed that registrant’s goods
travel through all the ordinary channels of trade).
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Applicant’s argument regarding registrant’s specific goods
and function, that is, that registrant’s clothing is directed to
transvestites, transsexuals, cross dressers and transgenders,
must fail because an applicant may not restrict the scope of
goods in an otherwise unrestricted registration by extrinsic
evidence (in this case, registrant’s website). See In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
The close relationship between the goods, and the presumed
similarity in trade channels and purchasers are factors that
weigh heavily in favor of a finding of a likelihood of
confusion.
Applicant’s claim that its customers and those of
registrant are sophisticated is not supported by any evidence.
Even assuming that consumers of applicant’s and registrant’s
goods are sophisticated when it comes to buying a specific type
or style of clothing, it is settled that even sophisticated
purchasers are not immune from source confusion, especially in
cases such as the instant one involving similar marks and
related goods. See In re Research Trading Corp., 793 F.2d 1276,
230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical
Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ
110, 112 (CCPA 1970) (“Human memories even of discriminating
purchasers...are not infallible.”). See also In re Decombe, 9
USPQ2d 1812 (TTAB 1988). We find that the similarities between
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the marks and the goods sold thereunder outweigh any
sophisticated purchasing decision. See HRL Associates, Inc. v.
Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks
outweigh sophisticated purchasers, careful purchasing decision,
and expensive goods). Thus, this factor is neutral.
We have carefully considered all of the evidence made of
record pertaining to the issue of likelihood of confusion, as
well as all of the arguments related thereto, including any
evidence and arguments not specifically discussed in this
opinion. We conclude that consumers familiar with registrant’s
“clothing, namely, lingerie, frocks, jackets, hosiery, skirts,
blouses, uniforms, suspenders; boots and shoes; hats” rendered
under the mark TRANSFORMATION would be likely to mistakenly
believe, upon encountering applicant’s similar mark
TRANSFORMATION WEAR and design for “clothing to promote an
awareness of the power of words to communicate energy, namely,
caps, short-sleeved or long-sleeved t-shirts, sports shirts,
sweat shirts, and tank tops,” that the goods originated from or
are associated with or sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
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registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.