Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE MELVILLE CORPORATION
Serial No. 736,814
February 1, 1991
Hearing: January 22, 1991
Joseph D. Garon for applicant
Robert C. Clark, Jr.
Trademark Examining Attorney
Law Office 5
Before Rice, Rooney, and Seeherman
Opinion by Rooney
An application was filed to register the mark ESSENTIALS (as shown below) for women's shoes. Use since May 3, 1988 was alleged.
Registration has been finally refused under Section 2(d) in view of a registration for the mark ESSENTIALS for women's clothing, namely, pants, blouses, shorts and jackets for women. [FN1] We affirm.
Applicant has argued that there are a number of marks on the register having the term ESSENTIAL or ESSENTIALS as a portion thereof; that, the allowance of these third-party registrations is an indication that the term ESSENTIALS is a weak mark and that this weakness is further illustrated by the fact that, as applied to clothing, ESSENTIALS has a highly suggestive meaning of "items of clothing that are necessary or essential to one's wardrobe, and which are the basic part of each person's attire." In view of this weakness, applicant argues, the mark should not be allowed more than a restricted scope of protection. It is applicant's position that because the goods are sufficiently different, the marks may be used by the respective parties without any likelihood of confusion. Not only are the goods different, argues applicant, the channels of trade differ significantly because applicant's goods are sold only in applicant's shoe stores and this difference, it is asserted, renders confusion even more unlikely.
With respect to the marks, applicant has submitted a copy of the specimen filed with registrant's application presumably to show that, as used, the mark is superimposed over a design feature. However, applicant is reminded that registrant chose to register only the word mark. In view thereof, and since registrant may also use the mark without the design, it is only the word mark which we consider here in relation to applicant's mark. These marks are identical words. While applicant's mark is in script form and registrant's is in block letters, that is the only difference between them and that is not a significant difference in view of the fact that purchasers are unlikely to remember this simple distinction. Rather, it is the word itself which will more likely be recalled. Moreover, the display of a word mark may be changed at any time at the whim of its owner; rights in such a mark reside in the term itself rather than in any particular form thereof. See Cities Service Co. v. WMF of America, Inc., 199 USPQ 493 (TTAB 1978).
Turning to the goods, it has often been said that goods or services need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is enough that goods or services are related in some manner or that circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could 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 producer or that there is an association between the producers of each parties' goods or services. Kraft, Inc. v. Country Club Food Industries, Inc., 230 USPQ 549 (TTAB 1986); Oxford Pendaflex Corporation v. Anixter Brothers, Inc., 201 USPQ 851 (TTAB 1978) and Monsanto Company v. Enviro-Chem Corporation, 199 USPQ 590 (TTAB 1978).
*2 In this case we have women's shoes, on the one hand, and women's pants, blouses, shorts and jackets, on the other. Despite applicant's argument to the contrary, we believe that these goods are related. A woman's ensemble, which may consist of a coordinated set of pants, a blouse and a jacket, is incomplete without a pair of shoes which match or contrast therewith. Such goods are frequently purchased in a single shopping expedition. When shopping for shoes, a purchaser is usually looking for a shoe style or color to wear with a particular outfit. The items sold by applicant and registrant are considered to be complementary goods. They may be found in the same stores, albeit in different departments. We are convinced that this is a sufficient relationship between the goods to support a holding of likelihood of confusion where both sets of goods are sold under the same mark.
With reference to the channels of trade, applicant's argument that its goods are sold only in its own retail stores is not persuasive in view of the fact that the identification of goods in the application reads: women's shoes. There is no restriction therein as to the channels of trade in which the goods are sold. The Board is constrained to consider the question of likelihood of confusion on the basis of the goods identified in the application or registration at issue. See In re Elbaum, 211 USPQ 639 (TTAB 1981). Therefore, while we acknowledge the declaration of applicant's president outlining the distribution of its shoes, we must consider applicant's goods as if they were being sold in all of the normal channels of trade to all of the normal purchasers for such goods. See Canadian Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.Cir.1987); Toys R Us, Inc. v. Lamps R Us, 219 USPQ 340 (TTAB 1983); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed.Cir.1983); Re/Max of America Inc. v. Realty Mart, Inc., 207 USPQ 960 (TTAB 1980).
There is no evidence to suggest that purchasers of these goods are any more sophisticated than purchasers of any other retail goods. Rather, the purchasers are considered to be ordinary average consumers.
With respect to the listed third-party registrations, we have on numerous occasions stated the position that such registrations are of little probative value in determining likelihood of confusion in the absence of evidence to establish their use in the marketplace. But, it is also true that they may be considered to demonstrate the meaning of a word which comprises the mark, or a portion thereof, to show that there is a well-known and commonly understood meaning of that word and that the mark has been chosen to convey that meaning. See Red Carpet Corporation v. Johnstown American Enterprises Inc., 7 USPQ2d 1404 (TTAB 1988) and Dubonnet Wine Corporation v. Schneider, 218 USPQ 331 (TTAB 1983). The conclusion to be drawn in such a case is that there is an inherent weakness in a mark comprised in whole or in part of the word in question and that, therefore, the question of likelihood of confusion is colored by that weakness to the extent that only slight differences in the marks may be sufficient to distinguish one from the other.
*3 The registrations listed by applicant [FN2] are for a variety of goods. Registrations for goods unrelated to the clothing field are irrelevant to our discussion. See Sheller-Globe Corporation v. Scott Paper Company, 204 USPQ 329 (TTAB 1979). Of the seven listings for marks related to clothing, only one is for the mark ESSENTIALS without some other feature to aid in distinguishing it from other similar marks. In addition, several of those listed are for clothing goods which are distinguishable from those at issue here. We do not believe these registrations are of any great value to applicant in seeking to prove that confusion is unlikely between its mark and registrant's.
As to the meaning of the word ESSENTIALS, we find it to be no more than suggestive. [FN3] We have said in the past that where two marks have a portion in common which is suggestive the remaining portions may be enough to distinguish them as a whole from one another. However, in this case, there are no other portions. The marks consist entirely of the suggestive element with no additional features. We see no reason to conclude that because a mark in its entirety relates a suggestion regarding the goods, the orbit of protection it should be afforded is so seriously diminished that another party may be allowed to register the same mark for related goods. That is simply not so. A suggestive mark is only one step removed from those marks labelled arbitrary and while there are varying degrees of suggestiveness ranging from a hint of a suggestion to so highly suggestive as to border on descriptiveness, in our opinion, the mark in question here is safely in the lower range of the scale and is entitled to serve as a bar to the registration of applicant's mark.
Both applicant and the Examining Attorney have made reference to numerous prior cases in their arguments. However, prior decisions are dependent on their own fact situations, most of which differ to some extent from the facts in this case.
In view of the foregoing, we find that there is a likelihood of confusion between the marks of these parties as used on their respective goods. Accordingly, the refusal to register is affirmed.
J. E. Rice
L. E. Rooney
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN2. Merely listing registrations is insufficient to make such registrations of record. It is required that copies of third-party registrations be submitted to make them part of the record. See In re Duofold, Inc., 184 USPQ 638 (TTAB 1974). However, where the Examining Attorney has referred to the listed registrations as if they had been properly submitted, we consider them to have been stipulated into the record.
FN3. The fact that a third party has conceded in its application to register that it believes the term to be weak, as applicant argues, has absolutely no bearing on our determination of this case.