TSI Brands, Inc.

Trademark Trial and Appeal Board

Sep 20, 2005

No. 78243978 (T.T.A.B. Sep. 20, 2005)

Mailed:
September 20, 2005
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re TSI Brands, Inc.
________

Serial No. 78243978
_______

Michael R. Clogan of Strasburger & Price, LLP for TSI
Brands, Inc.

Richard F. White, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Hohein, Bucher and Zervas, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
TSI Brands, Inc. seeks registration on the Principal
Register of the mark DEEP DYE (standard character drawing)
for goods recited in the application, as amended, as
follows:
“clothing, namely shirts and slacks;
menswear apparel items, namely, shirts and
slacks” in International Class 25.1

1 Application Serial No. 78243978 was filed on April 28,
2003 based upon applicant’s allegation of first use anywhere and
first use in commerce at least as early as January 15, 1996.
Applicant has amended the application, claiming acquired
distinctiveness for the involved mark under Section 2(f) of the
Trademark Act, 15 U.S.C. §1052(f).
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78243978
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This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register the mark based upon Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d). The Trademark Examining Attorney
has found that applicant’s mark, when used in connection
with the identified goods, so resembles the mark DEEP DYE
SELECT (standard character drawing), which is registered
for goods identified as “fibers for use in manufacturing
fabrics, clothing and home furnishings” in International
Class 24,2 as to be likely to cause confusion, to cause
mistake or to deceive.
The Trademark Examining Attorney and applicant have
fully briefed the case. Applicant did not request an oral
hearing before the Board.
We affirm the refusal to register.
In arguing for registrability, applicant contends
that the marks are not confusingly similar because the
words “Deep Dye” are highly descriptive as applied to
registrant’s goods and, hence, are correctly disclaimed.
As a result, applicant argues that it is registrant’s
addition of the word “Select” that provides the composite

2 Reg. No. 2296878 issued to Courtaulds Fibers Inc. on
November 30, 1999, and was later assigned to Acordis Cellulosic
Fibers Inc., the current owner. The words “Deep Dye” are
disclaimed apart from the mark as shown.
Serial No. 78243978
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mark with trademark significance and hence would be the
dominant element, creating a totally different commercial
impression from applicant’s mark. In fact, as contrasted
with registrant’s disclaimer of the words “Deep Dye,”
applicant claims that the record shows that it has created
a significant level of acquired distinctiveness through
its extensive use and promotion of its DEEP DYE mark.
Applicant also contends that the marks are used in
different channels of trade inasmuch as manufacturers of
fibers for use in fabrics sell bulk products to finished
goods manufacturers, like clothing manufacturers, with no
overlap of customers herein. Applicant points to the
extensive promotion and use of its mark without any
reported instances of actual confusion.
By contrast, the Trademark Examining Attorney argues
that the commercial impression created by applicant’s DEEP
DYE mark is highly similar to DEEP DYE SELECT, the
registered mark, inasmuch as the words DEEP DYE comprise
applicant’s total mark and the dominant portion of
registrant’s mark. As to the goods, the Trademark
Examining Attorney argues that applicant’s identified
goods are substantially related to the registrant’s goods
because registrant’s identified goods, textile fibers, are
Serial No. 78243978
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used in the manufacture of clothing, the type of goods
marketed by the applicant.
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that
are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations
are the similarities between the marks and the
relationship of the goods. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. Due to the consuming public’s
fallibility of memory, the emphasis is on the likely
recollection of the average customer, who normally retains
a general commercial impression rather than a specific
impression of trademarks or service marks. Spoons
Restaurants, Inc. v. Morrison, Inc., 23 USPQ2d 1735 (TTAB
1991), aff’d. No. 92-1086 (Fed. Cir. June 5, 1992); and In
re Steury Corp., 189 USPQ 353 (TTAB 1975). On this
du Pont factor, the Trademark Examining Attorney argues as
follows:
Serial No. 78243978
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The dominant feature of the registered mark
DEEP DYE SELECT is the wording, DEEP DYE.
This is because the term SELECT serves only
to slightly modify the wording DEEP DYE. It
appears highly unlikely that consumers
calling for the registrant’s goods will
reference the term SELECT at the exclusion
of the wording DEEP DYE.

To the contrary, applicant argues, as follows, that
its mark is easily distinguished from the cited mark:
Focusing on the words “deep dye” in the
previous registration is itself error, as
there is no dominant part of a phrase mark
which is registered (or sought to be
registered) in block letters. See In re
Hearst Corp., 982 F.2d 493 [25 USPQ2d 1238]
(Fed. Cir. 1992). In any event, however,
the Examining Attorney noted that the words
“deep dye” are highly descriptive.
Accepting arguendo that they are, then it
can only be the addition and inclusion of
the word “Select” that gives them trademark
significance at all to the previous
registrant, and even then that significance
can only be very weak.

It is of great importance that as TSI
Brands has shown, its extensive use and
promotion of DEEP DYE have caused the DEEP
DYE mark to achieve secondary meaning,
while the previous registrant disclaimed
any source-identifying distinctiveness of
that portion of its mark apart from its
mark as shown. It is not the mere fact of
the previous registrant’s disclaimer that
is compelling, but rather its substance:
the previous registrant disclaimed that
that those words in and of themselves were
or would be source-indicative of its goods.
The Applicant’s mark has become
distinctive. The previous registrant’s
never tried.

Applicant’s appeal brief, p. 3, emphasis in original.
Serial No. 78243978
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We have fully considered applicant’s arguments, and
concur that, because registrant’s mark contains the word
“Select,” the marks at issue are somewhat different as to
sound and appearance. However, the more prominent, first
two words of registrant’s mark do comprise the whole of
applicant’s mark. Even though the words “Deep Dye” appear
to be descriptive of registrant’s goods, and are therefore
disclaimed apart from registrant’s composite mark as a
whole, we find it unlikely that a highly suggestive term
like “Select” – especially appearing as the last word in
this three-word term – can be said to be the dominant
portion of registrant’s mark. When compared in their
entireties, we find that the respective marks are quite
similar as to both connotation and commercial impression
in light of the prominence of the common term, “Deep Dye.”
Hence, we find that these two marks are sufficiently
similar that if they were contemporaneously used on
related goods, confusion as to the source or sponsorship
of such goods would be likely.
Accordingly, we turn next to the du Pont factor
focusing on the relatedness of the goods as described in
the application and the cited registration. The Trademark
Examining Attorney argues that these goods are related by
their very own terms, i.e., registrant’s textile fibers
Serial No. 78243978
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are used to manufacture clothing. Although the record
contains no direct evidence from written publications,
LEXIS/NEXIS computerized databases, the Internet, or the
like, about the trade channels of these respective goods
in the actual commercial marketplace, the Trademark
Examining Attorney points to three third-party
registrations of record where the same mark is used on
“fibers” and on items of “clothing.” Those registrations
are:
REGISTRATION NO. 2522979 OPTIMER (standard character drawing)
for “yarn, textile, and synthetic fibers …” and “clothing …”
REGISTRATION NO. 1861843 HIGH PERFORMANCE ERMENEGILDO ZEGNA
(standard character drawing)
for “fabric; namely, wool and other natural fibers for use in
tailoring clothes and the clothing industry …” and
“clothing; namely, suits, sport jackets, pants and
overcoats …”
REGISTRATION NO. 1849912 PRIMALOFT (standard character drawing)
for “artificial textile fibers, down, stuffing, padding and
filling materials …” and “thermally insulated clothing;
namely, gloves, thermal underwear, jackets, tops, trousers,
hats, and coats.”

Although they are not evidence that the marks shown
therein are in use on a commercial scale or that the
public is familiar with them, they do have probative value
to the extent that they may serve to suggest that such
goods are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993).
Serial No. 78243978
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The Trademark Examining Attorney also points to
earlier cases of the Board in which similar marks for
fibers were found to support a likelihood of confusion
with finished clothing products (see e.g., E. I. du Pont
de Nemours & Co. v. Sunlyra International Inc., 35 USPQ2d
1787 (TTAB 1995) [applicant’s LYRA brand children’s
clothing related to opposer’s LYCRA brand spandex synthetic
fibers]). The Board found in that case that the fibers
were advertised to the ultimate consumers of the involved
children’s clothing. Given that there are no trade
channel restrictions in the instant registrant’s
identification of goods, it is possible that registrant
similarly advertises its fibers to members of the general
public.
While the evidence demonstrating a relationship of
these goods, or pointing towards an overlap in the trade
channels herein, is quite limited, we agree with the
Trademark Examining Attorney that the consumer familiar
with finished goods having a label or hang tag that
containes the wording, “Made with DEEP DYE SELECT fibers,”
who later comes across applicant’s DEEP DYE shirts or
slacks, would think that there is a commonality of source
between these goods.
Serial No. 78243978
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As to the du Pont factor focusing on the length of
time during and conditions under which there has been
contemporaneous use without evidence of actual confusion,
while applicant may not have encountered any instances of
actual confusion despite claims of extensive promotion and
use of its mark, these claims are without evidentiary
significance given applicant’s claims about the very
limited extent, or even alleged discontinuation, of
registrant’s use of the cited mark. However, applicant
has not filed a petition to cancel this registration,
which at this time is still subsisting on the register.
In conclusion, we find that the marks are quite
similar as to connotation and overall commercial
impression, that these goods are related, and that under
the circumstances of this case, an alleged absence of
actual confusion is not probative of a contrary result on
the question of likelihood of confusion.
Decision: The refusal to register this mark based
upon Section 2(d) of the Lanham Act is hereby affirmed.