Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE J.M. ORIGINALS, INC.
Serial No. 530,739
October 20, 1987
Hearing: September 16, 1987
Lerner, David, Littenberg, Krumholz & Mentlik for applicant
Richard B. Gordon
Trademark Examining Attorney
Law Office V
(Paul E. Fahrenkopf, Managing Attorney)
Before Rice, Rooney and Hanak
Applicant has applied to register the mark JM ORIGINALS in block letters for "infants', children's, and adults' apparel--namely, blouses, shirts, sweaters, pants, slacks, jogging suits, and hosiery." [FN1] At the request of the Examining Attorney, the applicant disclaimed "the exclusive right to use 'ORIGINALS' apart from the mark as shown."
Registration was refused under Section 2(d) of the Lanham Trademark Act on grounds that the applicant's mark, as applied to applicant's goods, so resembles the mark JM COLLECTABLES previously registered in block letters for "knitwear--namely, sport shirts" [FN2] as to be likely to cause confusion, mistake or deception.
Applicant and the Examining Attorney filed briefs and attended a hearing held on September 16, 1987.
At least some of applicant's goods (i.e. shirts) are identical to the goods of the cited registration (knitwear--namely, sport shirts). In giving "full sweep" to applicant's description of goods, we must conclude that applicant's shirts include shirts of all kinds, including knitted sport shirts. Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 902, 177 USPQ 76, 77 (CCPA 1973).
Hence, the only issue is whether JM ORIGINALS is so similar to JM COLLECTABLES as to be likely to cause confusion, mistake or deception when applied to those same goods. A finding of likelihood of confusion need not necessarily be premised on a finding that prospective purchasers would not be able to distinguish the two marks when used on identical or closely related goods. Even if prospective purchasers could distinguish the two marks, a finding of likelihood of confusion may nevertheless be premised on a finding that these prospective consumers would erroneously believe, because of the similarities in the marks, that goods bearing the two marks emanate from the same, albeit perhaps anonymous, source. Moreover, in determining the issue of likelihood of confusion, "it is necessary to note at the outset that, where as here, the goods of the parties are similar in kind and/or closely related ... the degree of similarity of the marks under which these products are sold need not be as great as in the case of diverse or different goods." ECI Division of E-Systems v. Enviromental Communications, 207 USPQ 443, 449 (TTAB 1980).
Obviously, both marks have the same first component, namely, JM. In the apparel industry, the words "originals" and "collectables" are by no means uncommon. Indeed, applicant has conceded the common, descriptive nature of the word "originals" as applied to apparel by disclaiming it. See Quaker State Oil Refining Corporation v. Quaker Oil Corporation, 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972), aff'g. 161 USPQ 547 (TTAB 1969).
"In particular, Appellant's mark, JM ORIGINALS, clearly refers to something new or something that has never existed before. In comparison, the registered mark, JM COLLECTABLES, obviously gives the impression to a prospective purchaser of something that is not new or unique but, rather, a class of goods having very little intrinsic value."
This Board is at a loss as to how applicant has come to the conclusion that JM COLLECTABLES describes "a class of goods having very little intrinsic value." Webster's Third New International Dictionary (1976) defines "collectables" as something "suitable for collection." Something of "very little intrinsic value", i.e. items of purely sentimental value, may well be suitable for collection. On the other hand, original works of art, manuscripts and apparel are also widely regarded as collectables.
In any event, this Board will accept applicant's position that JM ORIGINALS and JM COLLECTABLES convey different connotations, although not nearly as different as applicant suggests. In this regard, it may be that prospective purchasers of sport shirts and other items of apparel will distinguish goods bearing the mark JM ORIGINALS from goods bearing the mark JM COLLECTABLES. However, in our view, these same consumers would be likely to erroneously assume that goods bearing either of these marks emanate from the same, albeit perhaps anonymous, source; that is, that the two marks simply identify two different lines of clothing from the same source.
Finally, applicant has noted that there are on the register four other marks containing the designation "JM" for various items of apparel and argues that therefore said marks "should be afforded a narrow, restricted scope when determining the likelihood of confusion issue." (Applicant's brief page 9). There is a basic flaw in applicant's reasoning. As noted in the cases cited by applicant at page 8 of its brief, "the third party registrations relied upon by applicant cannot justify the registration of another confusingly similar mark." Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). Said third party registrations are of use only if they tend to demonstrate that a mark of a portion thereof is suggestive or descriptive of certain goods and hence is entitled to a narrow scope of protection. Used in this proper, limited manner, "third party registrations are similar to dictionaries showing how language is generally used." 1 McCarthy, Trademarks and Unfair Competition, § 11:26 at p. 516 (2d ed. 1984). Obviously, the designation JM is an arbitrary one. Applicant does not contend that the third party registrations containing JM demonstrate that JM is suggestive or descriptive of apparel. Moreover, said third party registrations are not evidence as to the extent of use of JM (if it is used at all) in the apparel field. Hence, said registrations do not prove that consumers are accustomed to seeing various apparel marks containing JM and therefore are careful in distinguishing them. For this reason alone, applicant's reliance on the four third party registrations containing JM is misplaced. Moreover, there are three other reasons why said reliance is misplaced.
*3 First, two of the four registrations cited by applicant (Registration Nos. 124,004 and 1,294,579) are owned by the same entity.
Second, with the exception of the two registrations owned by the same entity, none of the four registrations is for the exact items of apparel as is the case with JM ORIGINALS and JM COLLECTABLES where both the application and registration cover "shirts." [It is conceded that the registration for J.M. II (Registration No. 1,340,890) covers, in part, goods (women's ... coordinated outfits, namely, pants and tops) which are very similar to the goods (knitwear--namely, sport shirts) which are covered by the registration for JM COLLECTABLES. While "tops" are not necessarily the same as "sport shirts," it is conceded that they at least serve the same general function.]
Third, assuming for the sake of argument that the Patent and Trademark Office erred in allowing the registration of J.M. II despite the preexisting registration of JM COLLECTABLES, such prior decisions of Examining Attorneys "are not binding upon the agency or the Board. Each case must be decided on its own merits." In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984) and cases cited therein.
J. E. Rice
L. E. Rooney
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 530,739 filed April 5, 1985 claiming first use in June 1978.
FN2. Registration No. 1,311,161 issued December 25, 1984 to Cal Cru Company, Inc., Granite Quarry, North Carolina. This registration alleges a date of first use of April 5, 1977.