Wolf

Trademark Trial and Appeal Board

Aug 11, 2006

No. 76590632 (T.T.A.B. Aug. 11, 2006)

Mailed:
August 11, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Wolf
________

Serial No. 76590632
_______

Elliott N. Kramsky for Dane Wolf.

Matthew Pappas, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Hairston and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On May 3, 2004, Dane Wolf filed an application to
register on the Principal Register the mark PURSE PAL (in
standard character form) for goods ultimately identified as
“portable, battery operated multipurpose utility light
having a plastic case for personal uses including
attachment to and illumination of the interior of a purse”
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser No. 76590632
2
in International Class 11.1 Applicant has disclaimed the
word PURSE.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the previously registered mark PURSEPAL (in typed or
standard character form) for “[p]urse-holder, namely, a
metal hook used to hold a purse or a handbag to a table” in
International Class 6.2
Applicant has appealed the final refusal. Both
applicant and the examining attorney have filed briefs.
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act 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. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Co., 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.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544

1 Application Serial No. 76590632, claims a bona fide intent to
use the mark in commerce under Trademark Act 1(b), 15 U.S.C.
§ 1051(b).

2 Registration No. 2644323, issued October 29, 2002.
Ser No. 76590632
3
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).
The marks involved in this appeal are essentially
identical, differing only by the addition of a space
between the words PURSE and PAL in applicant's mark. The
presence or absence of a space between identical words does
not significantly change the appearance of the marks.
Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52,
54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed.
Cir. 1984) (“There is no question that the marks of the
parties [STOCKPOT and STOCK POT] are confusingly similar.
The word marks are phonetically identical and visually
almost identical.”); In re Best Western Family Steak House,
Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little
doubt that the marks [BEEFMASTER and BEEF MASTER] are
practically identical.”). Applicant has conceded that the
“mark of the Applicant is undeniably phonetically-identical
to that of the cited registration”; and has stated that the
first du Pont factor “is therefore admittedly satisfied.”
Brief at p. 3. Thus, we find that the first du Pont factor
involving the similarities of the marks weighs heavily
against applicant.
Ser No. 76590632
4
Applicant argues that “the phonetic identity of the
marks at issue is mitigated by the fact that each is weak.
The first portion of the composite word mark ‘PURSE’ is
clearly descriptive with regard to the goods of each
party.” Applicant cites to a definition of “pal” in
Merriam Webster’s Collegiate Dictionary (10th Ed.) as “one
that accompanies another; also one that keeps company with
another,” which definition is not in the record.3 According
to applicant, “the composite word mark suggests goods that
are utilized in connection or combination with a purse.”
In support of his argument, applicant relies on a
three-page listing of registrations and applications, both
subsisting and cancelled, for marks including the term PAL
(but not including the term PURSE), which were submitted
with his response to the first Office action. Because the
examining attorney has not advised applicant that the
listing is insufficient to make the registrations of
record, the examining attorney is deemed to have stipulated
the registrations into the record. The Board, however,
does not consider more than the information provided by

3 We take judicial notice of the definition of “pal” in Webster’s
Third New International Dictionary of the English Language
Unabridged (1993), i.e., partner: as a: ACCOMPLICE[,] b. a close
friend or boon companion.” The Board may take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 76590632
5
applicant. Because the listing of registrations provided
by applicant does not include the goods or services which
are the subject of each registration, the listing of
registrations has very limited probative value. See TBMP
§ 1208.02 (2d ed. rev. 2004) and cases cited therein. As
for the applications, they have no probative value because
applications are only evidence that an applicant has filed
for registration of a mark. In re Phillips-Van Heusen
Corp., 63 USPQ2d 1047 (TTAB 2002).
Applicant, in support of his argument that
registrant’s mark is weak, also cites to (a) Registration
No. 2113832 for WILDKIN PURSE PALS and design, which Office
records show was cancelled on August 21, 2004; (b)
cancelled Registration No. 1547029 for PURSE PALS and
design; (c) application Serial No. 78416977 (stylized) for
PURSE PALS; and (d) abandoned application Serial No.
74034834 for PURSE PALS.4 We do not further consider the
cancelled registrations - cancelled registrations are not
evidence of anything except that they issued. Also, we do

4 Applicant first referred to these registrations and
applications in his May 24, 3005 response, and has not submitted
a copy of the USPTO paper or electronic record. The examining
attorney has not objected to the fact that applicant has not
submitted evidence of the existence of these registrations and
applications. Accordingly, we consider the registrations and
applications to have been stipulated into the record. See TBMP §
1208.04 (2d ed. rev. 2004).

Ser No. 76590632
6
not further consider the applications because, as explained
in the preceding paragraph, they have no probative value.
Applicant also submitted an email received from “eBay
Member: leosasha@aol.com” stating “I saw this on eBay and
thought you might be interested.” The email includes a
“product advertisement that appeared on web site ebay.com
on June 8, 2005” and bears the caption “NWT Curious George
Pursepal & Wastebasket.” Evidently, the product being
advertised is a stuffed animal which has a “small zipper
opening at top (on his back) [and can] hold 2-3 small toys.
Velcro on hands. Has brown strap handles.” Inasmuch as
the item depicted in this email is a stuffed animal in the
form of a monkey, in the nature of a toy for a small child,
and is not identified as a purse of any kind, it is of
extremely limited probative value.
Because there is little, if any, evidence in support
of applicant's contention that “the marks at issue … [are]
weak,” we accord registrant’s mark the normal scope of
protection otherwise afforded to registered marks. Also,
even if the mark is weak, we note too, as did the examining
attorney, that weak marks are entitled to protection
against registration by a subsequent applicant of the same
or similar mark for the same or closely related goods or
services. King Candy Co. v. Eunice King's Kitchen, Inc.,
Ser No. 76590632
7
496 F.2d 1400, 182 USPQ 108 (CCPA 1974); In re Colonial
Stores, 216 USPQ 793 (TTAB 1982).
We next consider the similarities and dissimilarities
between applicant’s and registrant’s goods.5 Applicant
maintains that the goods of the registration are
“inherently entirely unrelated to those of the Applicant …
absent a common vague relationship to use in conjunction
with a purse.” Brief at p. 6. We disagree. Applicant's
lights and registrant’s hooks are both novelty-type items
which may be used at the same time in connection with the
same purse. They may be purchased at the same locations in
the same retail stores, and, of course, in view applicant's
evidence of record, on the Internet. Further, they are
both low cost items which are subject to purchase on
impulse.6 Also, it is well established that in cases where
the marks are nearly identical, the relationship between
the goods on which the parties use their marks need not be
as great or as close as in the situation where the marks

5 Applicant's arguments that the goods “are both functionally and
physically entirely dissimilar”; and that “the two products
require different manufacturing processes, expertise and
materials (plastic case v. metal hook) and that such diverse
capabilities are uncharacteristic of the small producers that
inhabit the realm of novelties,” are not persuasive.

6 The printout from www.Shopintuition.com submitted by applicant
with his May 24, 2005 response shows that applicant's light may
be purchased for $20.00 and the printout from www.ebay.com shows
that registrant’s hook may be purchased for $29.99.
Ser No. 76590632
8
are identical or strikingly similar. See Amcor, Inc. v.
Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981). See also
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689
(Fed. Cir. 1993) (“[E]ven when goods or services are not
competitive or intrinsically related, the use of identical
marks can lead to an assumption that there is a common
source.”).7 We therefore find the goods are similar.
In view of the foregoing, we find that applicant's
mark PURSE PAL for “portable, battery operated multipurpose
utility light having a plastic case for personal uses
including attachment to and illumination of the interior of
a purse” is likely to cause source confusion among
purchasers with the nearly identical registered mark
PURSEPAL for “purse-holder, namely, a metal hook used to
hold a purse or a handbag to a table.”
Decision: The refusal to register under Section 2(d)
is affirmed.

7 The examining attorney, with his final Office action, submitted
printouts from three websites, showing “that applicant's and
registrant’s goods are the type of goods often sold together by
the same company and encountered by the same classes of
purchasers.” Final Office action at p. 2. For example, key
chains, mirrors and compacts are depicted on the same web page in
www.thingsremembered.com; wallets, sunglasses, key chains and
cosmetic accessories are depicted on the same web page in
www.branders.com; and zipper pulls, flashlights and key chains
are depicted on the same web page in www.rightsleeve.com. None
of the webpages that the examining attorney relies upon depict
lights or hooks. Hence, the probative value of the examining
attorney’s evidence is extremely limited.