Trustee of the Sabrina Kay Revocable Trust

Trademark Trial and Appeal Board

Feb 3, 2014

No. 77015236 (T.T.A.B. Feb. 3, 2014)

Mailed: February 3, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Trustee of the Sabrina Kay Revocable Trust
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Serial No. 77015236
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Catherine A. Shultz of Kinney & Lange PA, for Trustee of the
Sabrina Kay Revocable Trust.

Kathryn E. Coward, Trademark Examining Attorney, Law Office 115
(John Lincoski, Managing Attorney).
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Before Bucher, Cataldo, and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Trustee of the Sabrina Kay Revocable Trust (“applicant”)
filed an application to register the mark LA DESIGNS A FASHION
UMBRELLA COMPANY, and design,1 as shown below, for goods
identified as “Aprons; ascots; babies' pants; bandanas and
neckerchiefs; bath robes; bath sandals; bath slippers; bathing
caps; bathing suits and bathing trunks; beach shoes; belts;
money belts; berets; cloth bibs; ski bibs, bib overalls; boas;

1 Serial No. 77015236, filed October 5, 2006, pursuant to Section 1(b)
of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent
to use the mark in commerce, and disclaiming the exclusive right to
use the terms “LA DESIGNS” “FASHION” and “COMPANY” apart from the mark
as shown.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77015236
2
bodices; boots; boots for sports; boots for skiing; braces and
suspenders for clothing; brassieres; breeches; camisoles; caps;
caps for shower; chasubles; chemisettes; clothing, namely,
shirts, jeans, jackets, blazers, woven shirts, t-shirts, knit
shirts, pants, shorts, sweatshirts, overalls, blouses, skirts,
dresses, vests, sweaters, coats; sportswear, namely, tennis and
golf dresses, bathing suits, beach and swimming cover-ups,
ponchos, tank tops, warm-up suits, jogging suits and sweat
suits, sports jackets and skirts, cyclists' jerseys; collars for
clothing; corselets; corsets as underclothing; detachable
collars; underpants; dressing gowns; ear muffs; esparto shoes or
sandals; fishing vests; football boots; football shoes; muffs
for shoes; footwear; frocks; fur stoles; galoshes; ankle
garters; garter belts; girdles; gloves; galoshes; dressing
gowns; gymnastic shoes; half-boots; hats; headbands,” in
International Class 25:

The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark
Serial No. 77015236
3
so resembles the registered mark L.A. DESIGN, and design,2 as
shown below, for “wallets,” in International Class 18, and
“belts” in International Class 25, that when used on or in
connection with applicant’s identified goods, it is likely to
cause confusion or mistake or to deceive:

Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs. For the reasons discussed herein, the Board affirms the
refusal to register under Section 2(d).
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
likelihood of confusion. In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

2 Registration No. 4096684, issued February 7, 2012, claiming priority
to Canadian Application No. 1182158, filed on June 20, 2003.

Serial No. 77015236
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1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in
the marks”).
The Goods and Channels of Trade

The cited registration identifies solely “wallets” and
“belts,” while the application includes the latter, identifying
“belts” generally and “garter belts” more specifically.
Accordingly, the goods overlap and are legally identical. To
show that the other goods in the application are related to
those in the cited registration, the examining attorney has
submitted evidence of third-party registrations containing both
goods in the application and either belts or wallets. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
The examining attorney has also submitted evidence of third-
party websites that sell or offer for sale both, such as
www.eddiebauer.com, www.brooksbrothers.com, and www.jcpenney.com.
Because the goods described in the application and the
cited registration are legally identical, we must presume that
the channels of trade and classes of purchasers are the same.
See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of the
parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade”); In
Serial No. 77015236
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re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be presumed
to travel in the same channels of trade, and be sold to the same
class of purchasers”). Additionally, there is nothing in the
recital of goods in either the cited registration or the
application that limits either registrant’s or applicant’s
channels of trade. See In re Linkvest S.A., 24 USPQ2d 1716,
1716 (TTAB 1992) (because there are no limitations as to
channels of trade or classes of purchasers in either the
application or the cited registration, it is presumed that the
registration and the application move in all channels of trade
normal for those services, and that the services are available
to all classes of purchasers for the listed services). In other
words, despite applicant’s argument as to the nature of the
actual belts or clothing sold, there is nothing that prevents
applicant’s “belts” and other clothes from being sold in the
same stores and to the same classes of consumers that purchase
registrant’s “belts” as well (and vice-versa). Accordingly, we
find that these du Pont factors weigh heavily in favor of
finding a likelihood of consumer confusion.
The Marks
Preliminarily, we note that the more similar the goods at
issue, the less similar the marks need to be for the Board to
find a likelihood of confusion. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992). We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
Serial No. 77015236
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entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005).
In comparing the marks, we are mindful that 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
impression so that confusion as to the source of the goods
and/or services offered under the respective marks is likely to
result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5,
1992). The proper focus is on the recollection of the average
customer, who retains a general rather than specific impression
of the marks. Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975).
The mark in the cited registration contains the literal
term “L.A. DESIGN” inside a circle and rectangle respectively.
Applicant’s mark begins with the same terms “LA DESIGNS” without
periods for LA, and adding a plural for design. Applicant’s
mark further includes the literal element “A FASHION UMBRELLA
COMPANY,” along with a design illustrating what appears to be a
fanciful image of an umbrella.
We note applicant’s argument that the first term in its
mark may be interpreted as a single word rather than the letters
Serial No. 77015236
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“L.A.” However, we find it more likely that given the fame of
Los Angeles as a fashion and design mecca, consumers will
perceive and pronounce it as the separate letters “L.A.” widely
understood as an abbreviation for the city of angels. We also
note applicant’s argument that its mark contains more verbiage
than does the mark in the cited registration. However, while
considering the marks as a whole, we find that consumers are
most likely to focus on the beginning terms “LA DESIGN” as the
first and dominant terms in the mark. See In re National Data
Corp., 224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here 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.”). In this regard, we also note
that, while both marks have design elements, neither
significantly changes the commercial impression of the mark, and
consumers are likely to call for, or refer to, the goods by
their name. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012), citing CBS Inc. v. Morrow, 708 F.2d 1579,
1581-82 (Fed. Cir. 1983); In re Dakin’s Miniatures Inc.,
59 UPSQ2d 1593, 1596 (TTAB 2001); In re Appetito Provisions Co.,
Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). Viewed in its entirety,
the mark in the cited registration gives the commercial
impression and connotation of a design company of the Los
Angeles sort, selling belts and wallets of cool urban taste.
Similarly, applicant’s mark gives quite the same commercial
Serial No. 77015236
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impression and connotation of a design company of the Los
Angeles sort, selling, among other clothing items, belts.
On balance, we find that, viewing the marks in their
entireties, the similarities in commercial impression outweigh
the dissimiliarities in appearance and pronunciation.
Accordingly, we find this du Pont factor to also weigh in favor
of finding a likelihood of consumer confusion.
Balancing the Factors
In summary, we have carefully considered all of the
evidence and arguments of record relevant to the pertinent
du Pont likelihood of confusion factors. As our precedent
dictates, we resolve doubt in favor of the prior registrant.
See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988). We conclude that with legally-identical
goods travelling in the same channels of trade, and similar
marks with similar connotations, there is a likelihood of
confusion between applicant’s mark LA DESIGNS A FASHION UMBRELLA
COMPANY, and design, for the goods which it seeks registration
and the registered mark LA DESIGN, and design, for the legally
identical and otherwise related “belts” and “wallets.”
Decision: The refusal to register is affirmed.