Ware

Trademark Trial and Appeal Board

Jul 24, 2006

No. 78389002 (T.T.A.B. Jul. 24, 2006)

Mailed: July 24, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ware

Serial No. 78389002
_______

Delphine James, Attorney at Law, for Ishman Ware.

Mark Rademacher, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Quinn, Hairston and Cataldo, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Ishman Ware has appealed from the final refusal of the
trademark examining attorney to register DOWN IN SOUTHERN
COMFORT as a trademark for goods ultimately identified as
“men’s, women’s and children’s wearing apparel, namely,
t-shirts, head gear, foot gear, shirts, pants, dresses,
blouses, skirts, sport jackets, sport pants.”1

1 Application Serial No. 78389002, filed March 23, 2004, based on
a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78389002
2
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark so resembles the following four marks,
registrations of which are owned by the same entity for the
identified goods, that if used on applicant’s identified
goods, it is likely to cause confusion or mistake or to
deceive.
SOUTHERN COMFORT (standard character form) for
“clothing, namely, shirts, shorts, caps, scarves,
jackets, coats, sweatshirts, hats, bandanas,
sweaters, and ski gloves.” Registration No.
2,334,067 issued March 28, 2000; Section 8
affidavit accepted; Section 15 affidavit
received.

for “footwear, headgear; namely, caps, hats,
headbands, visors, bandannas; clothing; namely,
aprons, sleeve quarters, t-shirts, golf shirts,
baseball shirts, polo shirts, shirts, tops, tank
tops, sweatshirts, sweatpants, jogging suits,
pants, jackets, coats, belts, neckties, neckwear,
scarves, suspenders, braces, leather jackets.”
Registration No. 2,650,492 issued November 12,
2002. The words “ESTABLISHED 1874” appear above
Ser No. 78389002
3
SOUTHERN COMFORT and have been disclaimed apart
from the mark as shown.

for “footwear, headgear; namely, caps, hats,
headbands, visors, bandannas; clothing; namely,
aprons, sleeve quarters, t-shirts, golf shirts,
baseball shirts, polo shirts, shirts, tops, tank
tops, sweatshirts, sweatpants, jogging suits,
pants, jackets, coats, belts, neckties, neckwear,
scarves, suspenders, braces, leather jackets.”
Registration No. 2,670,044 issued December 31,
2002.

for “footwear, headgear; namely, caps, hats,
headbands, visors, bandannas; clothing; namely,
aprons, sleeve quarters, t-shirts, golf shirts,
baseball shirts, polo shirts, shirts, tops, tank
tops, sweatshirts, sweatpants, jogging suits,
pants, jackets, coats, belts, neckties, neckwear,
scarves, suspenders, braces, leather jackets.”
Registration No. 2,775,057 issued October 21,
2003. The words REG. U.S. PAT. OFF. appear
beneath SOUTHERN COMFORT.
Ser No. 78389002
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The appeal has been fully briefed, but an oral hearing
was not requested.
Initially, we sustain the examining attorney’s
objection to the evidentiary materials applicant submitted
for the first time with his brief. Those materials (which
consist of copies of purported third-party registrations
for marks which include the term SOUTHERN COMFORT and
Internet printouts wherein the term “Southern Comfort”
appear) are untimely under Trademark Rule 2.142(d), and we
have given them no consideration.2 Likewise, we have given
no consideration to the mere listing of purported third-
party registrations and applications for marks which
include the term SOUTHERN COMFORT that applicant set forth
in his response to the first Office action. As the
examining attorney correctly observed in his second and
final Office action, a mere listing of third-party
registrations and applications is not the way to make such
registrations and applications of record. See Weyerhauser
Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992); In re Hub
Distributing, Inc., 218 USPQ 284 (TTAB 1983); In re
Duofold, Inc., 184 USPQ 638 (TTAB 1974).

2 We should add that, even if this evidence had been properly
before us, the decision in this case would be the same.
Ser No. 78389002
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We turn then to the issue of likelihood of confusion.
Our determination of this issue 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. duPont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two 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). See also, In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Turning first to a consideration of the respective
goods, it is clear that applicant’s clothing items are
identical in part (e.g. shirts, pants and headgear) and are
otherwise closely related to the clothing items in
registrant’s registrations. Suffice it to say that both
applicant’s and registrant’s kinds of wearing apparel would
be sold to the same classes of purchasers, namely, the
general public, through the same trade channels such as
clothing stores, department stores, and mass merchandisers.
Applicant does not dispute this, but concentrates the
Ser No. 78389002
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arguments in his appeal brief on asserted differences in
the marks.
Applicant contends that the examining attorney has
failed to analyze the marks in their entireties. Applicant
argues as follows:
Applicant’s mark is “DOWN IN SOUTHERN COMFORT;
[and] as such the mark must be reviewed for
likelihood of confusion as a whole and should not
be broken into component parts to reach a
conclusion of confusingly similarity. Marks tend
to be perceived in their entireties and all
components thereof must be given weight. Here,
the applicant’s mark contains the term “DOWN IN”
which provides a different overall commercial
impression. As defined by the Webster
dictionary, the term “DOWN” have (sic) several
different meanings which provide different
suggestive terms to the consumer. The term,
“DOWN,” can mean the movement of position toward
a lower level or ground. Secondly, “DOWN” can
mean soft fluffy feathers or covering of soft
hairs. Thirdly, “DOWN” can mean grassy treeless
hills. Thus, if all of the components of the
applicant’s mark is [sic] taken as a whole the
public would have a different commercial meanings
[sic]. (citations omitted).
(Brief at p. 3).

Applicant also asserts that the examining attorney
failed to take into account the evidence it presented to
show that the term SOUTHERN COMFORT is weak, and as such,
registrant’s marks are entitled to only a narrow scope of
protection.
With respect to the marks, we must determine whether
applicant’s mark and registrant’s marks, when compared in
Ser No. 78389002
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their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Although the marks must be considered in their entireties,
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 impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Furthermore, 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 commercial impression that
confusion as to the source of the goods and/or services
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). Finally, “when marks
would appear on virtually identical goods or services, the
degree of similarity necessary to support a conclusion of
likely conclusion declines.” Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 864, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992).
Ser No. 78389002
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Considering, therefore, the marks at issue, we concur
with the examining attorney that when considered in their
entireties, each of the registered marks is similar to
applicant’s mark in sound, appearance, connotation and
commercial impression. Specifically, due to the shared
term SOUTHERN COMFORT, which forms the dominant element of
applicant’s mark and each of registrant’s marks (for the
reasons discussed below), the respective marks are similar
in sound, appearance, connotation and commercial
impression.
With respect to applicant’s mark DOWN IN SOUTHERN
COMFORT, this mark is dominated by the term SOUTHERN
COMFORT which is modified by the phrase DOWN IN. Thus, it
is the term SOUTHERN COMFORT that is entitled to more
weight in our likelihood of confusion analysis.
Insofar as registrant’s marks are concerned, one of
registrant’s marks is SOUTHERN COMFORT in standard
character form and another is SOUTHERN COMFORT in stylized
letters. Applicant has added the phrase DOWN IN to
SOUTHERN COMFORT. This additional phrase does not serve to
distinguish the marks in terms of sound or appearance.
Further, because applicant has applied for its mark in
standard character form, this means that a registration
would not be limited to a particular style of lettering.
Ser No. 78389002
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If a registration were to issue for applicant’s mark, the
protection to be accorded it would include stylization
similar to the registered mark SOUTHERN COMFORT in stylized
letters.
Registrant’s other two marks are SOUTHERN COMFORT –
ESTABLISHED 1874 and a design element consisting of a
plantation-style home situated along water, a steamboat,
and persons riding in a horse-drawn buggy within an oval,
and SOUTHERN COMFORT - REG. U.S. PAT. OFF. with the same
design element. Although the design element in both of the
marks is clearly noticeable, it does not serve to
distinguish these marks in sound or appearance. The design
element evokes a southern setting and thus reinforces the
term SOUTHERN COMFORT. Further, it is the term SOUTHERN
COMFORT that is the dominant portion of these marks because
it would be used by purchasers to call for registrant’s
goods. Thus, it would make a greater impression on
purchasers and it is the portion that is more likely to be
remembered. See In re Appetitio Provisions Co., 3 USPQ2d
1553 (TTAB 1987). Further, the wording “ESTABLISHED 1874”
and “REG. U.S. PAT. OFF.” in registrant’s marks is clearly
subordinate matter with no source-indicating significance.
Again, because applicant has applied for its mark in
standard character form, this means that a registration
Ser No. 78389002
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would not be limited to a particular style of lettering.
If a registration were to issue for applicant’s mark, the
protection to be accorded it would include stylization
similar to the term SOUTHERN COMFORT in registrant’s marks.
Insofar as connotation is concerned, the term SOUTHERN
COMFORT in applicant’s mark and each of the four registered
marks suggests a southern state of ease or well-being.
Contrary to applicant’s contention, the additional phrase
DOWN IN does not change this connotation. Overall, given
the noted similarities in sound, appearance and
connotation, the respective marks, when used on clothing,
engender a substantially similar commercial impression.
Consumers of clothing who are familiar with any of
registrant’s SOUTHERN COMFORT marks are likely to believe
that applicant’s DOWN IN SOUTHERN COMFORT clothing is a new
or additional line of clothing from the same source as the
line of clothing marketed under the SOUTHERN COMFORT marks.
Finally, applicant contends that marks consisting of
or containing SOUTHERN COMFORT are weak marks which are
entitled to only a limited scope of protection.
Specifically, applicant maintains that the term SOUTHERN
COMFORT, as applied to clothing, is so frequently used in
trade names and marks for such goods that no one party may
claim exclusive rights to SOUTHERN COMFORT on clothing.
Ser No. 78389002
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For the reasons discussed infra, we have given no
consideration to the evidence submitted by applicant with
his brief in support of his contention in this regard. The
evidence properly of record consists of the results of a
search of the website www.switchboard.com for businesses
with names that include “Southern Comfort;” and a copy of a
page from a Houston, Texas telephone directory listing
businesses with names that include “Southern Comfort.” As
to such evidence, the examining attorney correctly points
out the search results show “use of the term ‘Southern
Comfort’ with businesses unrelated to the apparel industry”
and the telephone directory “lists housecleaning, heating
and air conditioning, realty/mortgage and security
businesses. The two remaining business entries consist of
addresses with no indication of field of endeavor of the
businesses.” (Examining attorney’s brief, page 5.)
In short, this evidence does not demonstrate that the
term SOUTHERN COMFORT has been so frequently incorporated
into marks for clothing that the registered marks are
entitled to only a limited scope of protection.
Accordingly, we conclude that purchasers and
prospective customers, familiar with the registered marks
SOUTHERN COMFORT in standard character form, in stylized
letters and with the design element for clothing items,
Ser No. 78389002
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would be likely to believe, upon encountering the
substantially similar mark DOWN IN SOUTHERN COMFORT for
applicant’s clothing items, that such identical and
otherwise closely related clothing items emanate from or
are associated with or sponsored by the same source.
Decision: The refusal under Section 2(d) is affirmed.