Tritex Corp.

Trademark Trial and Appeal Board

Jan 14, 2002

No. 75024851 (T.T.A.B. Jan. 14, 2002)

1/14/02 Paper No. 17
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tritex Corporation
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Serial No. 75/024,851
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Martin P. Hoffman of Hoffman, Wasson & Gitler, PC for
Tritex Corporation.

Lesley LaMothe, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Seeherman, Quinn and Chapman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
On November 28, 1995 Tritex Corporation (a California
corporation) filed an application to register the mark
CONTOUR for “ladies’ clothing, namely, corsets, girdles,
body-shapers, and waist-liners” in International Class 25.
The application is based on applicant’s claimed first use
date of December 31, 1975 and first use in commerce date of
March 1980.
The Examining Attorney initially refused registration
on two bases – (i) under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1), on the ground that applicant’s
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/024851
2
mark is merely descriptive of the identified goods; and
(ii) under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when applied
to its identified goods, so resembles the registered mark,
CONTOURS, for “women’s clothing, namely, panties,”1 as to be
likely to cause confusion, mistake or deception.
In response thereto, applicant argued against both
refusals to register, and offered an amendment to change
the preamble of the identification of goods from “ladies’
clothing, namely,...” to “foundation garments for women,
namely,....” The Examining Attorney accepted the amendment
to the identification of goods, withdrew the refusal to
register under Section 2(e)(1) of the Trademark Act, and
made the refusal to register under Section 2(d) final.
Following the denial of a request for reconsideration,
applicant then offered an amended identification of goods
to “foundation garments for women, namely, body shapers,”
and an amendment to the method-of-use clause to state that
“the goods are sold, via mail order, in response to
advertisements placed in Spanish language publications.”
The Examining Attorney accepted the amendment to the
identification of goods, noted that the amendment to the

1 Registration No. 1,772,450, issued May 18, 1993, Section 8
affidavit accepted, Section 15 acknowledged.
Ser. No. 75/024851
3
method-of-use clause does not limit the identified goods
and therefore does not effectively limit or narrow
applicant’s trade channels, and maintained the final
refusal to register under Section 2(d).
Applicant appealed. Briefs have been filed2, 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 Pont3 factors which are applicable to
this case.
Turning first to the marks, we find that they are
virtually identical in sound, appearance, connotation and
commercial impression. The fact that the registered mark
has a final “S,” while applicant’s mark has no final “S,”
does not distinguish the marks. Consumers are not likely
to notice the presence or absence of the letter “S” when
viewing the marks individually. And, under actual market
conditions, consumers often do not have the luxury to make

2 In applicant’s brief on appeal, applicant offered another
amendment to the identification of goods to “foundation garments
for women, namely, body shapers sold via mail order.” The proper
procedure to offer an amendment at this stage would have been a
request for remand. In the Examining Attorney’s brief, she made
no reference to the proposed amendment. Thus, the Board cannot
treat the amendment as having been consented to by the Examining
Attorney. We point out that the amendment would not overcome the
Section 2(d) refusal as there is no limitation in the cited
registration relating to trade channels.
3 See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
Ser. No. 75/024851
4
a side-by-side comparison between marks, and instead must
rely on hazy past recollections. See Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573
(CCPA 1973); and Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d (Fed. Cir., June
5, 1992).
Both registrant’s mark CONTOURS and applicant’s mark
CONTOUR connote the same idea of a shapely figure,
especially in relationship to the involved goods.
With respect to the goods, it is not clear that there
is a significant difference between these goods,
particularly if panties are made of a “shaping” or
“control” type of material. In any event, it is well
settled that goods need not be identical or even
competitive to support a finding of likelihood of
confusion. It is sufficient that the respective goods of
the parties are related in some manner, or that the
circumstances surrounding their marketing 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
emanate from or are associated with the same source. See
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 596 (TTAB
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5
1978); and In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB
1992).
In support of her position as to the relatedness of
the respective goods, the Examining Attorney has made of
record copies of pages from catalogs (e.g., Chic and
Victoria’s Secret) showing that the same companies sell a
variety of undergarments such as panties and bras, as well
as bodysuits and bustiers. The Examining Attorney also
submitted copies of third-party registrations which issued
on the basis of use in commerce,4 to demonstrate the
relationship between applicant’s goods (body shapers) and
registrant’s goods (panties), by showing that a single
entity has adopted a single mark for intimate apparel
similar to the goods at issue (e.g., undergarments and
bodysuits).
Third-party registrations, of course, 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

4 As to any of the third-party registrations which were not based
on use in commerce, we did not consider these in reaching our
decision.
Ser. No. 75/024851
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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).
Applicant’s own specimens of record show a model
wearing a bra, panties and a body shaper.
Based on the record before us, we readily conclude
that applicant’s goods are closely related to registrant’s
goods.
Regarding the respective trade channels and
purchasers, both identifications of goods specifically
refer to women’s clothing, applicant’s being body shapers
and registrant’s being panties. While applicant attempted
at the briefing stage to limit its identification of goods
to those “sold via mail order,” there is no limitation as
to trade channels in registrant’s identification of goods.
See Octocom Systems Inc. v. Houston Computer Services Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). Thus, the
cited registrant’s goods would include all normal methods
of sale, including mail order. Applicant’s argument that
“it relies primarily upon mail order sales to a Spanish-
speaking population within the Untied States (and within
adjacent countries)” (brief, p. 2) is unavailing because
applicant’s identification of goods is not limited to the
Ser. No. 75/024851
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Spanish-speaking population of the United States. In fact,
applicant’s specimen is printed in both English and
Spanish. See In re Smith and Mehaffey, 31 USPQ2d 1531
(TTAB 1994); and In re Elbaum, 211 USPQ 639 (TTAB 1981).
Decision: The refusal to register under Section 2(d)
is affirmed.