Wanted Shoes Inc.

Trademark Trial and Appeal Board

Sep 29, 1998

No. 74675265 (T.T.A.B. Sep. 29, 1998)

Paper No. 17
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 29,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Wanted Shoes Inc.
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Serial No. 74/675,265
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Ezra Sutton of Ezra Sutton, P.A. for Wanted Shoes Inc.
Catherine K. Krebs, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Quinn, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Wanted Shoes Inc. has filed an application to register
the mark "WANTED" for "footwear."1
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, when applied to its goods, so resembles the
mark "WANTED," which is registered for "foundation garments,

1 Ser. No. 74/675,265, filed on May 16, 1995, which alleges dates of
first use of April 28, 1989.
Ser. No. 74/675,265
2
particularly brassieres,"2 as to be likely to cause confusion,
mistake or deception.
Applicant has appealed. Briefs have been filed,3 but
an oral hearing was not requested. We affirm the refusal to
register.

2 Reg. No. 718,982, issued on July 25, 1961, which sets forth dates of
first use of November 22, 1960; renewed.
3 Applicant, with its brief, has attached "as Exhibit A ... a list of
18 registered trademarks which include the word WANTED" and has
enclosed "as Exhibit B [a list of] 4 registered trademarks which
include [the word] WANTED in [International] Class 25." Although each
of such lists includes the mark of the cited registration, applicant
asserts that such evidence "is indicative of the degree of dilution"
of the term "WANTED," especially in the "clothing field," since none
of the third-party registrations is allegedly for footwear. We
observe, however, that none of the listed third-party marks includes
the goods and/or services for which the marks are registered.
The Examining Attorney, in her brief, has properly objected to
consideration of such evidence, correctly noting that the submission
thereof is untimely under Trademark Rule 2.142(d). Moreover, it
should also be pointed out that mere listings of third-party
registrations are insufficient to make such registrations of record
inasmuch as the Board does not take judicial notice of registrations
which have been issued by the Patent and Trademark Office. The proper
procedure for making information concerning third-party registrations
of record, instead, is to timely submit either copies of the actual
registrations or the electronic equivalents thereof, i.e., printouts
of the registrations which have been taken from the Patent and
Trademark Office’s own computerized database. See, e.g., In re
Consolidated Cigar Corp., 35 USPQ2d 1290, 1292 (TTAB 1995) at n. 3; In
re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) at n. 3 and In
re Melville Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991) at n. 2. In
any event, even if the third-party registrations sought to be relied
upon by applicant were properly of record, so that we would
additionally have an indication of the goods and/or services for which
those marks are registered, it is pointed out that third-party
registrations are entitled to little weight in evaluating whether
there is a likelihood of confusion. This is because such
registrations are not evidence that the marks shown therein are in use
or that the purchasing public has become familiar with marks
containing the term "WANTED" and is able to distinguish them based on
differences in the marks as a whole. See, e.g., AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973)
and In re Hub Distributing, Inc., 218 USPQ 284, 285-86 (TTAB 1983).
Accordingly, even if we were to consider the lists of third-party
registrations attached to applicant’s brief, the probative value
thereof is so limited that it would not change the result in this
case.
Ser. No. 74/675,265
3
Inasmuch as the respective marks are identical in all
respects, the issue of likelihood of confusion is essentially
dependent upon whether applicant’s and registrant’s goods are
sufficiently related in a commercial or other meaningful sense.
Applicant argues, without any evidentiary support, that the
refusal to register is improper, contending that:
[F]ootwear and brassieres are sold in
different stores and in different departments
of a store. Moreover, when a woman purchases
a brassiere, there is no reason to associate
it with footwear. Further, companies which
sell brassieres do not normally sell
footwear. In fact, the registrant,
Maidenform, [Inc.,] has been in business for
many years and has never expanded into
footwear, and no one would expect them to.
Therefore, if a consumer sees the WANTED
trademark on footwear, the consumer would not
associate the footwear product with
Maidenform. Applicant has been using the
mark since 1989, and applicant is not aware
of any confusion, and there has been no
objection from Maidenform. Long use without
confusion is strong evidence of no likelihood
of confusion.
We agree with the Examining Attorney, however, that
contemporaneous use of the identical mark "WANTED" in connection
with "footwear" and "brassieres" is likely to cause confusion as
to the source or sponsorship of such goods. As the Examining
Attorney points out in her brief, applicant’s goods are broadly
identified as "footwear," a designation which plainly encompasses
such items of women’s wearing apparel as "house slippers and
bedroom slippers [and] which are companions to intimate apparel
[e.g., brassieres,] in both marketing and consumer use." In
fact, the Examining Attorney correctly notes, not only have
footwear and women’s clothing been found to be closely related
Ser. No. 74/675,265
4
for purposes of a likelihood of confusion determination, In re
Melville, Corp., supra at 1388, but the very goods at issue
herein, namely, brassieres and footwear for women, have also been
held to be closely related goods by a predecessor of our
principal reviewing court. General Shoe Corp. v. Hollywood-
Maxwell Co., 277 F.2d 169, 125 USPQ 443, 444 (CCPA 1960)
[contemporaneous use of the mark "INGENUE" on brassieres and
women’s shoes is likely to cause confusion inasmuch as such goods
have "much in common" in that both are articles of women’s
apparel, they are sold to the same class of purchasers and such
goods are commonly sold through the same channels of trade; also,
contention that purchasing public is aware that manufacturers of
shoes do not ordinarily make other items of apparel and vice
versa cannot be accepted as fact].
Moreover, in support of her position that women’s
footwear is closely related to brassieres, the Examining Attorney
has made of record pages from issues of the J.Crew and Talbots
catalogs which set forth, in each instance, both brassieres and
women’s shoes to demonstrate that such goods "are marketed
together to the same consumers in the same channels of trade."
The Examining Attorney has also furnished copies of 22 use-based
third-party registrations for marks which, in each case, are
registered among other things for "brassieres" or "bras," on the
one hand, and "footwear" or various types of footwear, including
"shoes," "slippers," "boots," "sneakers," "sandals" and/or
"athletic shoes," on the other. Although such registrations are
not evidence that the different marks shown therein are in use or
Ser. No. 74/675,265
5
that the public is familiar with them, they nevertheless have
some probative value to the extent that they serve to suggest
that the goods listed therein are of a kind which may emanate
from a single source. See, e.g., In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6.
In view of the above authority and evidence, and since
as noted previously, applicant’s "footwear" encompass all types
of goods, including footwear for women, we concur with the
Examining Attorney that "footwear" and "brassieres" are closely
related wearing apparel which would be sold through at least some
of the same channels of trade, such as women’s clothing outlets,
the women’s fashions’ sections of department stores and mass
merchandisers, and mail-order sellers of women’s apparel, to the
identical class of purchasers, namely, women. When such closely
related goods are sold under the identical, arbitrary mark
"WANTED," confusion as to the origin or affiliation thereof is
likely to occur.
Our conclusion in this regard is not diminished or
otherwise altered by applicant’s unsupported assertion that it
has not encountered any incidents of actual confusion between its
mark and registrant’s mark, nor received any objection from
registrant, during a period of approximately nine years in which
applicant has allegedly used its mark. While we agree with
applicant that the absence of any instances of actual confusion
over a significant period of time is a factor indicative of no
likelihood of confusion, it is a meaningful factor only where the
Ser. No. 74/675,265
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record demonstrates appreciable and continuous use by the
applicant of its mark in the same markets as those served by
registrant under its mark. See, e.g., Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). It is not a
mitigating factor where, as here, the record is devoid of
information concerning the nature and extent of the marketing
activities of applicant and registrant under their respective
marks during the asserted period of contemporaneous use.
In the present case, we not only have no details as to
the level of sales, advertising expenditures and marketing areas
served by applicant, but we have no indication as to what
registrant’s experience has been, other than applicant’s
contention that it has received no objection from registrant.
Compare In re General Motors Corp., 23 USPQ2d 1465, 1470-71 (TTAB
1992). A mere contention, however, plainly does not rise to the
level of a detailed, written consent agreement, as between
applicant and registrant to the use and registration of
applicant’s mark, of the type found in In re Four Seasons Hotels
Ltd., 987 F.2d 1565, 26 USPQ2d 1071, 1072-74 (Fed. Cir. 1993), to
be entitled to controlling weight in a likelihood of confusion
determination.
We accordingly agree with the Examining Attorney that
purchasers and potential customers, familiar or acquainted with
registrant’s "WANTED" mark for brassieres, would be likely to
believe, upon encountering applicant’s identical "WANTED" mark
for footwear, that such closely related items of wearing apparel
Ser. No. 74/675,265
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emanate from, or are sponsored by or affiliated with, the same
source. See General Shoe Corp. v. Hollywood-Maxwell Co., supra.
Decision: The refusal under Section 2(d) is affirmed.
T. J. Quinn
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal Board