White Palace, Inc.

Trademark Trial and Appeal Board

Aug 7, 2006

No. 76601030 (T.T.A.B. Aug. 7, 2006)

Mailed:
August 7, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re White Palace, Inc.
________

Serial No. 76601030
_______

Thomas I. Rozsa of Rozsa Law Group LC for White Palace,
Inc.

Brian Pino, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Bucher, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark 5TH ELEMENT (in standard character form) for
goods identified in the application as:

Men’s and boy’s wearing apparel, namely, t-
shirts, sweatshirts, tank tops, woven shirts,
sweaters, cardigans, vests, jackets, pants,
sweatpants, jeans, shorts, hats, caps, coats,
scarves, neckerchiefs, neck bands, wrist bands,
head bands, gloves, belts, pajamas, shoes, socks,
underwear, swim wear, and trunks; and women’s and
girl’s wearing apparel, namely, t-shirts,
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76601030
2
sweatshirts, tank tops, woven shirts, sweaters,
cardigans, vests, jackets, pants, sweatpants,
jeans, shorts, hats, caps, coats, belts, scarves,
neckerchiefs, neck bands, wrist bands, head
bands, gloves, pajamas, shoes, socks, underwear,
foundations, pantyhose, teddies, bras, skirts,
dresses, blouses, swim wear, and bikinis.1

At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as applied to the identified
goods, so resembles the mark 3RD ELEMENT, previously
registered on the Principal Register (in standard character
form) for goods identified in the registration as
“waterproof, windproof, water-shedding, moisture-
transmitting, and breathable clothing, namely, shirts,
pullovers, salopettes, balaclavas, caps, jackets, vests,
gaiters, and trousers, all of the foregoing being used for
outdoor activities such as walking, climbing, and skiing;
and belts, footwear, caps, and hats.”2
Applicant and the Trademark Examining Attorney have
filed main appeal briefs. No reply brief was filed, and no
oral hearing was requested. We affirm the refusal to
register.

1 Serial No. 76601030, filed on July 6, 2004. The application is
based on applicant’s asserted bona fide intention to use the mark
in commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b).

2 Registration No. 2807733, issued on January 27, 2004.

Ser. No. 76601030
3
Initially, we sustain the Trademark Examining
Attorney’s objection to the evidence (purporting to show
third-party applications and registrations of ELEMENT marks
for clothing), submitted by applicant for the first time
with its appeal brief. This evidence clearly is untimely,
and we have given it no consideration. See Trademark Rule
2.142(d), 37 C.F.R. §2.142(d). In any event, as the
Trademark Examining Attorney advised applicant in his final
Office action, printouts from the databases of commercial
search firms are not acceptable as evidence of third-party
registrations. See In re Dos Padres, Inc., 49 USPQ2d 1860,
1861 n.2 (TTAB 1998); In re Broadway Chicken Inc., 38
USPQ2d 1559, 1560 n.6 (TTAB 1996); In re Smith & Mehaffey,
31 USPQ2d 1531, 1532 n.2 (TTAB 1994); and TBMP §1208.02 (2d
ed. rev. 2004). The evidence attached to applicant’s
appeal brief therefore is faulty for this additional
reason, as is the commercial search report evidence
submitted by applicant with its response to the first
Office action. We have given this evidence no
consideration.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
Ser. No. 76601030
4
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We turn first to the second du Pont factor, i.e., the
similarity or dissimilarity of the goods as identified in
applicant’s application and in the cited registration,
respectively. It is settled that it is not necessary that
the respective goods be identical or even competitive in
order to support a finding of likelihood of confusion.
That is, the issue is not whether consumers would confuse
the goods themselves, but rather whether they would be
confused as to the source of the goods. It is sufficient
that the goods be related in some manner, or that the
circumstances surrounding their use be such that they would
be likely to be encountered by the same persons in
situations that would give rise, because of the marks used
thereon, to a mistaken belief that they originate from or
are in some way associated with the same source or that
there is an association or connection between the sources
of the respective goods. See In re Martin’s Famous Pastry
Ser. No. 76601030
5
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991);
and In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978).
We find that certain of applicant’s goods, i.e.,
“belts,” “caps” and “hats,” are identical to the “belts,”
“caps” and “hats” listed after the semicolon in the cited
registration’s identification of goods. We further find
that the “shirts,” “caps”, “jackets,” and “trousers”
described in the cited registration as being “waterproof,
windproof, water-shedding, moisture transmitting, and
breathable” and as being “used for outdoor activities such
as walking, climbing, and skiing,” are encompassed by and
legally identical to many of the items broadly described as
“wearing apparel” in applicant’s identification of goods,
i.e., to the various types of “shirts,” the “jeans” and
“pants,” the “jackets,” and the “caps.” Applicant’s goods
as identified in the application are not limited as to
their composition, purpose or function, and they therefore
must be presumed to include the more specialized type of
clothing identified in the registration. Certainly, many
of the apparel items identified in applicant’s application
could be “used for outdoor activities such as walking,
Ser. No. 76601030
6
climbing, and skiing,” and they therefore are similar to
and complementary to registrant’s goods to that extent.
We conclude that applicant’s goods are similar rather
than dissimilar to registrant’s goods, and indeed that they
are legally identical in many particulars. The second
du Pont factor weighs in favor of a finding of likelihood
of confusion.
Under the third du Pont factor (similarity or
dissimilarity of trade channels), we find that applicant’s
goods as identified in the application would be marketed in
the same trade channels and to the same classes of
purchasers as registrant’s goods. This certainly is so as
to the goods which are identical, but is also true with
respect to the non-identical goods. Registrant’s outdoor-
sports clothing items would not be sold solely in
specialized sporting goods or outdoors stores; skiwear and
walking/hiking clothes also would be available in
department stores, for example. Also, nothing would
preclude applicant’s more generalized clothing items from
being marketed in the specialized sporting goods or
outdoors stores in which registrant’s goods also might
appear. The third du Pont factor weighs in favor of a
finding of likelihood of confusion.
Ser. No. 76601030
7
Under the fourth du Pont factor (conditions of
purchase), we find that both applicant’s goods and
registrant’s goods are products which would be purchased by
ordinary consumers without necessarily a great deal of care
or sophistication. Many of the goods are inexpensive
items. The fourth du Pont factor weighs in favor of a
finding of likelihood of confusion.
We turn finally to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
applicant’s mark and the cited registered mark when viewed
in their entireties in terms of appearance, sound,
connotation and overall commercial impression. The test,
under the first du Pont factor, 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
that confusion as to the source of the goods 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). Furthermore, in cases such as this,
where the applicant’s goods are identical (in part) to the
goods of the cited registration, the degree of similarity
Ser. No. 76601030
8
between the marks which is required to support a finding of
likelihood of confusion is less than it would be if the
goods were not identical. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992).
5TH ELEMENT and 3RD ELEMENT are not identical.
However, viewing the marks in their entireties in terms of
appearance, sound, connotation and overall commercial
impression, we find that they are highly similar. Both
marks consist entirely of an ordinal number followed by the
word ELEMENT. The overall similarity between the marks
which results from this identical and arbitrary
construction, i.e., an ordinal number followed by ELEMENT,
far outweighs any dissimilarity resulting from the
difference in the ordinal numbers themselves. Especially
as applied to the identical and/or highly related goods at
issue here, we find that applicant’s mark and the cited
registered mark are sufficiently similar to result in a
likelihood of confusion. The first du Pont factor
accordingly weighs in favor of a finding of likelihood of
confusion.
Viewing all of the evidence of record as it pertains
to the relevant du Pont factors, we conclude that a
likelihood of confusion exists. To the extent that any
Ser. No. 76601030
9
doubts might exist as to the correctness of this
conclusion, we resolve such doubts against applicant. See
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed.
Cir. 1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc., supra.

Decision: The refusal to register is affirmed.