Warnaco, Inc.

Trademark Trial and Appeal Board

Aug 4, 1998

No. 74501471 (T.T.A.B. Aug. 4, 1998)

Paper No. 24
RFC
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB AUG 4, 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 Warnaco, Inc.
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Serial No. 74/501,471
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Karen Ash of Amster, Rothstein & Ebenstein for Warnaco, Inc.
Diane Melnick, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
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Before Cissel, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On March 18, 1994, Applicant filed an application to
register the mark “OLGA SCOOP” on the Principal Register for
“women’s intimate apparel, namely panties,” in Class 25.
The identification-of-goods clause was subsequently amended
to state the goods simply as “women’s panties,” and
applicant claimed ownership of a number of prior
registrations of marks consisting of or including the name
“OLGA.” The basis for the application was applicant’s claim
of use of the mark on these goods since September of 1965.
Ser No. 74/501471
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This application is now before us on appeal from the
Examining Attorney’s refusal to register under Section 2(d)
of the Lanham Act on the ground that applicant’s mark, as
applied to women’s panties, so resembles the mark “SCOOP,”
which is registered1 on the Principal Register for
“clothing, namely tops, shirts, T-shirts, sweatshirts,
dresses, skirts, pants, shorts, skeggings, leggings,
sweatpants, jackets, cardigans, leotards, unitards, tights,
bodysuits, short sets, tank sets, [and] beach cover-ups,”
that confusion is likely.
Based on careful consideration of the record before us
and the relevant legal principles and precedents, we hold
that the refusal to register is proper. Confusion is likely
because the marks are similar and the goods are commercially
related.
Women’s panties are related to several of the clothing
items specified in the cited registration, particularly
leggings, leotards, unitards, tights, t-shirts and
bodysuits, all of which are knit products for wear with or
without additional clothing over them. As the Examining
Attorney points out, the goods of applicant and registrant
do not need to be identical or even directly competitive in
order for confusion to be found likely. All that is
necessary is for the goods to be related in some manner, or

1 Reg. No. 1.964,866, issued to Spectravest, Inc., a California
Ser No. 74/501471
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for the conditions surrounding their marketing to be such
that they could be encountered by the same purchasers under
circumstances that could give rise to the mistaken belief
that they emanate from a single source. In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65
(TTAB 1985).
This record includes evidence that the goods are
related. The Examining Attorney made of record a sample of
more than a dozen registrations, (from a total of more than
six hundred registered marks), wherein the goods listed
include both ordinary clothing and intimate apparel. This
establishes a reasonable basis for reaching the conclusion
that the use of similar marks on both women’s panties and
the clothing items listed in the cited registration is
likely to lead consumers to believe, mistakenly, that a
single source is responsible for all such products. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Additionally, the Examining Attorney made of record
copies of articles retrieved from the Nexis database.
These articles demonstrate that the goods set forth in the
registration are sold in the same departments in stores as
women’s panties are. These items are purchased by
ordinary consumers, who normally retain general impressions

corporation, on April 2, 1996.
Ser No. 74/501471
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of marks, rather than specific details of them. Ordinarily,
these people do not get the chance to compare the marks on a
side-by-side basis, so if the general commercial impressions
the marks create are similar, then confusion is likely to
occur.
Turning then to the marks themselves, we note the
obvious, that applicant has simply taken the registered
mark, in its entirety, and added to it applicant’s house
mark, “OLGA.” The Examining Attorney concedes that the
house mark is well known in the field, but does not agree
with applicant’s argument that “SCOOP” is diluted and
descriptive, and therefore weak in trademark significance,
such that the addition of the house mark is sufficient to
allow purchasers to distinguish between the two marks.
To begin with, applicant has not established that the
common element in both marks, the word “scoop,” is weak.
There is only one registration in the clothing class for the
word, and that one is the one cited here as a bar to
registration.
In the past, there were apparently other registered
marks which included the term, but now there is only the one
cited here. Applicant argues that two applications to
register the word “scoop” are pending, but applicant admits
that the goods there are hair products, on one hand, and
sunglasses and sports goggles, on the other.
Ser No. 74/501471
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Notwithstanding applicant’s assertion to the contrary, this
record does not include “ample evidence that the[se] goods
are related to clothing.” Even if there were several
registrations and pending applications to register the term,
the registrations and applications themselves would not
establish weakness, in that they would not constitute
evidence of use, and therefore could not show that the
consuming public has become so familiar with marks using the
term “scoop” that other elements are looked to in order to
distinguish among such marks.
Further, there is no evidence that the term is merely
descriptive of the goods in either the application or the
cited registration. Given the ordinary meaning of the word,
we can conclude that the term has a certain suggestiveness
in connection with women’s lingerie and clothing, but this
record does not establish anything more than that.
Applicant’s arguments that “scoop” is weak because it is
diluted and descriptive are simply unsupported.
Applicant’s principal argument in favor of registration
appears to be that the addition of its house mark to the
registered mark eliminates the likelihood of confusion. As
pointed out by the Examining Attorney, however, there is a
substantial body of case law to the contrary. Citing In re
Dennison Manufacturing Co., 220 USPQ 1015 (TTAB 1983), for
the proposition that adding a house mark or trade name to a
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mark may actually increase the likelihood of confusion,
rather than reduce it, she argues that by adding its house
mark to the previously registered mark, applicant has
appropriated the registered mark under the umbrella of the
house mark, resulting in the likelihood that consumers will
incorrectly assume that applicant is responsible for the
goods sold under the registered mark.
Applicant cited a number of cases for the proposition
that combining one’s own house mark with the mark of another
does not necessarily lead to confusion, but the Examining
Attorney readily distinguished each such case. Most
involved goods which were not as closely related as the
goods in the case at hand. Others dealt with terms which
were found to be either descriptive or weak from widespread
use in a particular field.
We agree with the Examining Attorney that there is no
per se rule that mandates either finding confusion to be
likely or finding that there is no likelihood of confusion
where a house mark has been added to a registered mark.
Rather, the specific facts of each case must be evaluated in
order to determine the effect of combining the two elements.
When we do this in the instant case, we find that
confusion is likely because the goods listed in the
registration have been shown to be closely related to those
identified in the application, and the two marks are still
Ser No. 74/501471
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similar, even after applicant’s house mark has been placed
in front of the registered mark. We can see no reason why a
typical purchaser of women’s apparel would not think that
leotards sold under the mark “OLGA SCOOP” emanate from the
same source as women’s panties bearing the “SCOOP” mark.
Accordingly, the refusal to register under Section 2(d)
of the Lanham Act is affirmed.
R. F. Cissel
G. D. Hohein
C. E. Walters
Administrative Trademark Judges
Trademark Trial & Appeal Board
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