Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE SCHOENEMAN ENTERPRISES, INC.
Serial No. 74/126,146
December 14, 1993
Patricia A. De Meyere of Shea & Gould for applicant
Trademark Examining Attorney
Law Office 9
(Sidney I. Moskowitz, Managing Attorney)
Before Simms, Seeherman & Quinn
Administrative Trademark Judges
Opinion by Quinn
An application has been filed by Schoeneman Enterprises, Inc. to register the mark DONCASTER for "men's coats, vests and trousers." [FN1]
The Trademark Examining Attorney has refused registration under Section 2(d) of the Act on the ground that applicant's mark, when applied to applicant's goods, so resembles six previously registered marks, all owned by the same entity, as to be likely to cause confusion. These marks are as follows: the mark shown below
for "ladies' and misses' dresses, ladies' and misses' skirts, ladies' and misses' blouses, ladies' and misses' jackets, ladies' and misses' slacks, ladies' and misses' shorts, ladies' and misses' playsuits, ladies' and misses' culottes, ladies' and misses' bandeaux, and ladies' and misses' belts for outer wear"; [FN2] the mark shown below
for "ladies' and misses' dresses, skirts, blouses, sweaters, pants, slacks, shorts, jackets, coats, raincoats, playsuits, culottes, halters, belts, sashes and scarves"; [FN3] the mark DONCASTER for "ladies' and misses' suits, dresses, skirts, blouses, jackets, slacks, shorts, playsuits, culottes, bandeaux, and belts for outer wear"; [FN4] for "ladies' and misses' sweaters"; [FN5] for "ladies' coats"; [FN6] and the mark DONCASTER SPORT for "ladies' dresses, skirts, blouses, sweaters, pants, slacks, shorts, jackets, coats, raincoats, playsuits, culottes, halters, belts, sashes, and scarves." [FN7] When the refusal was made final, applicant appealed.
Applicant, in urging reversal of the refusal to register, briefly argues that use of the same mark on women's clothing and men's clothing does not necessarily establish a likelihood of confusion in view of differences in the goods. Applicant's principal argument is based on applicant's past ownership of two expired registrations and more than sixty years of contemporaneous use, and over fifty years of contemporaneous registration, of applicant's mark and registrant's marks, without any instances of actual confusion. Applicant contends that the Examining Attorney, in refusing registration in the face of the coexistence of the involved marks for many years, ignored the realities of the marketplace.
The Examining Attorney contends that women's and men's clothing is related such that, when sold under identical marks, confusion is likely to occur among purchasers. In support of the refusal, the Examining Attorney submitted excerpts from catalogs featuring both women's and men's clothing, as well as third-party registrations to show that women's and men's clothing may emanate from the same source under the same mark.
With respect to the marks, applicant does not dispute that they are confusingly similar. In point of fact, applicant's mark is identical to three of registrant's cited marks. Regarding registrant's other three marks, suffice it to say that the additional features in these marks are not sufficient to distinguish the marks from applicant's mark. These three marks are dominated by the term DONCASTER which is identical to applicant's mark DONCASTER.
Insofar as the goods are concerned, we acknowledge at the outset that there is no per se rule governing likelihood of confusion in cases involving goods of the type now before us. See: In re Sydel Lingerie Co., Inc., 197 USPQ 629, 630 (TTAB 1977). Nonetheless, as pointed out by the Examining Attorney, in numerous cases a likelihood of confusion has been found between similar marks when they were used for women's and men's clothing items. See, e.g.: Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc. 286 F.2d 623, 128 USPQ 549 (CCPA 1961); Izod, Ltd. v. Zip Hosiery Co., 405 F.2d 575, 160 USPQ 202 (CCPA 1969); Kaufman Knitting Co. v. Oberman Mfg. Co. 125 USPQ 196 (TTAB 1960); Alba Hosiery Mills, Inc. v. Carmi-Ainsbrooke Corp., 130 USPQ 354 (TTAB 1961); and Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964). In the absence of restrictions on channels of trade in the identifications of goods, we must assume that the goods travel in all of the normal trade channels for such goods. As a result, the women's and men's clothing items are likely to be encountered in many of the same stores, albeit perhaps in different areas of the same stores. Moreover, as demonstrated by the catalogs submitted by the Examining Attorney, men's and women's clothing can be marketed in the same manner by the same entity. Finally, although the ultimate users of applicant's clothing may be different from registrant's, it is not unusual for women to purchase men's clothing for their families or as gifts for friends, or for men to purchase women's clothing. See: In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398 (TTAB 1982); and In re Cook United, Inc., 185 USPQ 444 (TTAB 1975). Thus, applicant's and registrant's goods can be bought in the same stores by the same class of purchasers.
*2 The Examining Attorney also has submitted, as noted above, third-party registrations for marks covering both men's and women's clothing. Although some of the marks might be in the nature of house or designer name marks, others are not. In any event, the registrations show that it is not uncommon for businesses to adopt and register the same marks for both women's and men's clothing.
We find little merit in applicant's attempt to distinguish women's clothing from men's clothing for purposes of the likelihood of confusion analysis. The cases relied upon by applicant where no likelihood of confusion was found when the marks were applied to women's and men's clothing are distinguishable from the situation in the present case. In those cases, there were either differences in the marks or differences in the commercial impressions engendered by the marks. That simply is not the case here which involves, at least in part, identical marks, with each mark conveying, whether applied to women's or men's clothing, the identical commercial impression.
In view of the above, under usual circumstances, we would conclude that consumers familiar with registrant's women's clothing sold under its DONCASTER marks would be likely to believe, upon encountering applicant's mark DONCASTER for men's clothing, that the clothing items originated with or were somehow associated with or sponsored by the same entity.
There are unusual circumstances in the present case, however, which must be considered in our analysis. We are required to balance the aforementioned similarities in marks and goods against the apparent understanding between applicant and registrant, borne out by the evidence of contemporaneous registration of applicant's mark with registrant's marks for over half a century. See: In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). That is to say, in the present case the similarities in marks and goods must be weighed against other relevant du Pont factors, namely "the length of time during and conditions under which there has been concurrent use without evidence of actual confusion"; "the market interface between applicant and the owner of a prior mark"; and "any other established fact probative of the effect of use." Id. at 567.
As noted above, the principal argument advanced by applicant is that applicant and registrant have an "understanding" and have consented to each other's use, and that there have been no instances of actual confusion despite many years of contemporaneous use and registration of the marks. In support of its argument applicant has submitted copies of its now-expired registration for the mark shown below
for "men's, youths', and boys' outer garments, namely, coats, vests, trousers, knickerbockers, overcoats, mackinaws, jackets, and overalls; children's and youths' rompers, and children's and misses' bloomers," [FN8] and its now-expired registration for the mark shown below
*3 for "coats, vests, trousers, knickerbockers, top coats and overcoats for men, youths and boys." [FN9] Applicant alleges that the latter registration, No. 523,323, lapsed just prior to the filing of the present application due to a clerical error in applicant's renewal papers (brief, p. 2), and that the present application is intended to substitute for the expired registration. Applicant states the following (brief, pp. 3-4):
For more than sixty years, Applicant and Registrant have been using the DONCASTER mark concurrently for their respective products. Applicant and Registrant are fully aware of their respective uses and have consented to each other's use of DONCASTER. Their conduct reflects an understanding as to their respective markets and the absence of confusion in those respective markets concerning their respective marks. This understanding, while not formalized in a written agreement, has been further reflected in written communications between the parties. Applicant and Registrant have taken steps to avoid any likelihood of confusion by limiting their respective uses of the mark. To Applicant's knowledge, in the sixty years of concurrent use there has been no confusion with regard to their respective uses of the mark DONCASTER on men's and women's clothing.
For over fifty years the respective owners of the marks had co-existing trademark registrations for the mark DONCASTER. In that fifty year period, on seven different occasions, the Patent and Trademark Office permitted new registrations to issue to Applicant and Registrant for the mark DONCASTER for their respective products. Registrant's Reg. No. 359,995 was issued while Applicant's prior Reg. No. 215,712 was on the Trademark Register, Applicant's Reg. No. 523,323 was issued while Registrant's Reg. No. 359,995 was on the Trademark Register, and each of Registrant's remaining registrations were issued while Applicant's prior Reg. No. 523,323 was on the Trademark Register.
Applicant further alleges that it is not a newcomer to the field. Rather, according to applicant, it is the senior user and applicant contends that "[h] ad the Trademark Office raised its objections earlier, Applicant as senior user would have been in a better position to protect its prior rights to the mark," recognizing that registrant's registrations are now more than five years old and, therefore, not subject to cancellation on the grounds of priority and likelihood of confusion. (brief, p. 11) Applicant takes the position that there is no likelihood of confusion here and also states that "[t]he parties have relied upon the Trademark Office's action with respect to these marks and have conducted their respective businesses accordingly." (brief, p. 10). In any event, applicant argues that "as senior user, [it] would not likely consent to Registrant's use for sixty years if Applicant believed it was likely to be damaged by Registrant's use of the mark." (brief, p. 14). Applicant essentially concludes that the refusal to register, given the parties' mutual understanding, is contrary to the commercial realties, and that even if registration were denied to applicant, applicant will continue to use its mark.
*4 We recognize, at the outset, that the Federal Circuit has emphasized that substantial weight is to be accorded to consent agreements inasmuch as, in the Court's words, "[the parties] are in a much better position to know the real life situation than bureaucrats or judges...." Bongrain Int'l (Am.) Corp. v. Delice De France, Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1778 (Fed.Cir.1987). See also: In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed.Cir.1985); Amalgamated Bank v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed.Cir.1988); and In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed.Cir.1993).
The complicating factor in the present case, however, is that although applicant asserts that it and registrant have consented to each other's uses, and refers to an "understanding" which is "reflected in written communications" between applicant and registrant, applicant has submitted neither an agreement nor the written communications. What we do have of record are the statements of applicant's counsel who, as applicant's representative in the application, speaks on applicant's behalf. As noted above, counsel makes the following pertinent statements: that applicant and registrant contemporaneously have used their marks for over sixty years; that applicant and registrant owned registrations which coexisted on the register for over fifty years; that despite the many years of contemporaneous use and registration, there have been no instances of actual confusion; that applicant and registrant are fully aware of their respective uses and have consented to each other's use; that their conduct reflects an understanding as to their respective markets and the absence of confusion; that this understanding, although not formalized in a written agreement, has been reflected in communications between applicant and registrant; and that they have taken steps to avoid any likelihood of confusion by limiting their respective uses of their marks.
At first blush, it would be easy to dismiss counsel's statements, finding that the statements lack any real probative value because they are not supported by either an affidavit of someone from applicant having personal knowledge of the facts or a written agreement or consent executed by applicant and registrant. However, despite the lack of an affidavit and/or agreement, the present case includes some other evidence which tends to verify these statements made on applicant's behalf. More specifically, the registration history involving applicant's and registrant's marks adds credibility to counsel's statements regarding the coexistence of the involved marks. This evidence shows the coexistence of registrations for the DONCASTER marks covering men's clothing, on the one hand, and women's clothing, on the other, with no objection from the other registrant. This continuing course of "live and let live" conduct, spanning a period of over fifty years, is evidence to support applicant's statements, made by counsel, regarding an unwritten understanding between applicant and registrant and the absence of any actual confusion. This evidence tips the scales in applicant's favor. [FN10]
*5 Our decision here rests very heavily on this evidence of decades of contemporaneous registration without objection. This evidence adds credibility to applicant's attorney's unverified statements regarding an understanding between applicant and registrant. We presume that counsel's statements are true, and, we hasten to add, there is no reason to believe that they are not. See: In re Four Seasons Hotels Ltd., supra at 1074 ["in response to the Board's statement that '[s]uffice it to say that the record is devoid of any evidence to support counsel's bald assertion of no actual confusion', we point out that neither is there evidence to the contrary."]. Rule 10.18(a) provides that counsel's signature to the papers containing these statements constitutes a certificate that to the best of counsel's knowledge, information and belief, there is good ground to support these papers. If the statements ultimately were shown to be false, there is the potential for serious consequences. Rule 10.18(b) provides that any practitioner knowingly violating the rule's provisions is subject to disciplinary action. Under Rule 10.23(c), for example, actionable misconduct includes giving false information to the Office. More significant for applicant, however, is that a registration obtained, at least in part, on the basis of counsel's material statements in this case might possibly, if the statements later were shown to be false in that applicant knew or should have known of the falsity, subject the registration to cancellation at any time on the ground of fraud. [FN11]
The present case differs from others, in that it is not just a case of prior years of contemporaneous registration where the applicant is attempting to re-register the mark from an expired registration. Cf. In re National Retail Hardware Association, 219 USPQ 851 (TTAB 1983); and In re Alfonso Eng Perez, 31 USPQ2d 1075 (TTAB 1991). We point out that in the present case there is more, namely an understanding between applicant and registrant, the existence of which is supported by the evidence of half a century of contemporaneous registration without controversy between the owners.
We are confronted here by statements made by an attorney speaking on applicant's behalf regarding the market interface between applicant and registrant, statements which we have examined in the context of the evidence of record, namely a most unusual fifty-year registration history. When we consider the statements in the context of the entire record, the statements gain credibility and, accordingly, we are reluctant to disregard them totally, as our dissenting colleague does, in deciding this case. Rather, given the registration history, and inasmuch as there is nothing of record which contradicts the statements, we have found the statements to be credible and worthy of our consideration.
*6 We note that applicant owned a registration at the time of issuance of each of registrant's six registrations and was assertedly the prior user of the DONCASTER mark. Given applicant's ownership of a registration and the similarities in the marks and goods at issue, applicant was in a position to prevent the registration of each of registrant's marks when they were published for opposition. The fact that the registrations nevertheless issued is evidence to support statements made on applicant's behalf that applicant and registrant have an understanding about the coexistence of their marks. The dissent goes on at some length about the lack of a consent agreement here, thereby distinguishing this case from those involving such an agreement, and the dissent argues that there are no other facts of record, only counsel's unverified representations, to show that confusion is unlikely. That simply is not the case. We reiterate that the unusual registration history here presents facts which, when coupled with statements made by an attorney speaking for applicant, warrant a reversal of the refusal to register.
With respect to the Office's position in the past of allowing registration of both applicant's and registrant's marks, the dissent refers to a "different marketing environment in the late 1940s when applicant most recently sought registration" and suggests that "circumstances" change over time. We would point out, however, that the Office considered likelihood of confusion between the very same marks involved in this appeal on four occasions since then, the first time being in 1959, and most recently only six years ago when registrant's Registration No. 1,431,260 was issued in 1987, despite applicant's then-existing Registration No. 523,323 which it seeks to re-register here.
In view of the very unusual circumstances found in the present case, we think it appropriate to allow the mark to be published for opposition. At that point, registrant, from whom we have not heard, will have an opportunity, if it has differing views, to make those views known.
Decision: The refusal to register is reversed.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/126, 146, filed December 24, 1990, alleging dates of first use of 1920.
FN2. Registration No. 369,995, issued September 6, 1938; second renewal. The word "Doncester" is disclaimed apart from the mark. The registration indicates that "[t]he drawing is lined for the color blue, but applicant is not restricted to use of this color."
FN3. Registration No. 1,431,260, issued March 3, 1987; Section 8 affidavit accepted.
FN4. Registration No. 688,018, issued November 10, 1959; renewed.
FN5. Registration No. 690,982, issued January 5, 1960; renewed.
FN7. Registration No. 1,251,731, issued September 20, 1983; combined Sections 8 and 15 affidavit filed. The word "Sport" is disclaimed apart from the mark.
FN8. Registration No. 215,712, issued July 20, 1926; expired.
FN9. Registration No. 523,323, issued April 4, 1950 under Section 2(f); renewed in 1970, now expired.
FN10. We would be remiss if we did not point out that the better practice here, because it would have been more persuasive, would have been for applicant to submit an affidavit or declaration supporting the factual statements or, better yet, a written agreement between applicant and registrant. At the very least, applicant easily could have submitted copies of the written correspondence between applicant and registrant which allegedly evidences their understanding. It would appear that none of these filings would have unduly burdened applicant. Rather, the timely submission of such evidence might have avoided this appeal. Nonetheless, although we share the Examining Attorney's concerns regarding the lack of documentary evidence to support applicant's assertions, what evidence is of record is enough to permit publication of the mark for opposition.
FN11. This case is not the first occasion for the Board to assume that an attorney's unverified statement made on behalf of an applicant is true. See, e.g.; In re Manco Inc., 24 USPQ2d 1938, 1941 at n. 8 (TTAB 1992) [although counsel's statements regarding use of packaging and brochures are unsupported, "[n]evertheless, and inasmuch as the Examining Attorney has not challenged the representations by applicant's attorney, we will assume for purposes of these appeals that applicant has used, and continues to use...."].
*7 Rany L. Simms
Administrative Trademark Judge
I agree with the Examining Attorney that confusion is likely. In the face of a strong case for likelihood of confusion, I believe that applicant, on this record, has simply failed to show that that conclusion is in error.
The registrant owns marks which are identical to the mark applicant here seeks to register. Moreover as the majority observes, the respective goods are closely related (women's jackets, slacks, pants and coats versus men's coats, vests and trousers). These goods, as described, are likely to be sold in the same clothing and department stores. Moreover, the Examining Attorney has submitted evidence that there are numerous clothing companies that manufacture both men's and women's clothing and apply one trademark to both. Nor does applicant seriously dispute the evidence regarding the similarity of men's and women's clothing.
In the face of recent reversals by our reviewing court, the majority is understandably timid when it comes to consideration of cases involving consent agreements. However, it should be emphasized that this is not a case involving a consent agreement. Nor is this a case where there are other facts of record which would persuade us that confusion is unlikely. The cases applicant and the majority have relied upon involved agreements either restricting fields of use of the marks involved or otherwise demonstrating a lack of likelihood of confusion as a result of steps taken to avoid confusion.
The fundamental problem with applicant's case is of course, that none of applicant's arguments and allegations of fact is supported by affidavits or declarations of an officer or other authorized person of applicant. We merely have statements of counsel that applicant has used its mark for more than 60 years without any instances of actual confusion. Applicant's attorney merely represents that applicant and registrant have over the years reached some sort of informal "understanding" (which even the majority labels an "apparent understanding") allowing the coexistence of their marks. Reference is also made to certain unspecified correspondence. The majority also mentions counsel's statement that applicant and registrant have assertedly taken certain unspecified steps to avoid any confusion. What we have, therefore, is an attorney attempting to make of record certain facts when there is no indication in the record that this attorney is personally knowledgeable of those facts. It is not sufficient to cite our rules concerning representations by counsel (which are intended to cover the grounds set forth in attorneys' papers) and caution applicant that any misrepresentations may aloud its registration [FN1]. Without having any documentation to which counsel refers, we cannot assess the accuracy of those statements. Mere arguments unsubstantiated by evidence of record "are suspect at best." Martahus v. Vidco Duplication Services, Inc., --- F.2d ----, 27 USPQ2d 1845, 1849 (Fed.Cir.1993). Any facts tending to demonstrate that there has been and will be no likelihood of confusion should be supported by the affidavit of an officer or other employee of applicant who has personal knowledge concerning the circumstances of this case. In the face of a strong case for likelihood of confusion involving identical marks for closely related items of apparel, we should demand more than counsel's statements to "tip the scales" in favor of registrability. No harm is done in requiring support for the critical statements counsel has made, such as an affidavit from applicant or some tangible evidence of the reputed "understanding" between applicant and the registrant. Despite its protestations to the contrary, the majority is accepting counsel's statements as a substitute for evidence of "concurrent use without evidence of actual confusion." In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (emphasis added).
*8 In a case where an applicant's attorney submitted an affidavit attesting to the fact that his client's mark had acquired secondary meaning. In re Gray Inc., 3 USPQ2d 1559 (TTAB 1937)), the Board gave several reasons for the rejection of this affidavit:
The second is that the position of counsel in soliciting the Office to issue the registration based on acquired secondary meaning means that counsel's statement that the requisite secondary meaning has been acquired is subject to an incredible amount of bias. Finally, to avoid the predicament of a lawyer's having to testify and then having to argue the credibility and effect of his own testimony, both the Code of Professional Responsibility (Rule 5.102) and our own rules, 37 CFR § 1063 (1986), require an attorney to withdraw as counsel in a case if he learns that he ought to be called as a witness or sign an affidavit to be filed in the case. As counsel here has not withdrawn, it would be improper for us to give any weight to his affidavit on the ultimate issue.
The circumstances of the case before us are markedly different from those of prior cases where registration was permitted. For example, in The Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed.Cir.1988), concurrent use registration was permitted in light of an agreement between the parties that recited that each party had done business for many years (approximately 60) under their names, that each had been aware of the other's use of its name and that neither knew of any instances of confusion. Likewise, in Bongrain International Corp. v. Delite de France Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed.Cir.1907) not only were there some differences in the marks of the parties but also both parties had entered into a written agreement noting that the concurrent respective uses of their marks on bakery items and cheeses would not cause confusion in the marketplace. See also In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed.Cir.1993) and In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed.Cir.1985) (involving somewhat different marks, sophisticated purchasers and a consent to use and register) and In re E.I. DuPont de Nemours & Co., supra.
Moreover, the cases applicant's attorney has relied upon permitting registration where there were long periods of concurrent use without apparent instances of actual confusion were cases where those facts were demonstrated by evidence from knowledgeable officers or employees of the applicants and/or registrants involved. See In re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992) (affidavits), In re Palm Beach Incorporated, 225 USPQ 785 (TTAB 1988) (letters of consent and an affidavit) and In re American Management Association, 218 USPQ 477 (TTAB 1983) (a consent agreement evidencing attempts to avoid confusion, and restrictions concerning marketing and advertising). Even in In re Perez, 21 USPQ2d 1075 (TTAB 1991), cited in the majority opinion, there was an affidavit submitted by the applicant himself attesting to his longstanding use of the mark without any instances of actual confusion. [FN2]
*9 While it is true that applicant was at one time the owner of a registration. That registration has since been cancelled. This Board has held that cancelled registrations are essentially irrelevant in situations similar to the one before us. In re Perez, supra, and In re National Retail and Hardware Association, 219 USPQ 851, 854 (TTAB 1983). Whatever benefits a federal registration confers are lost when that registration is cancelled. For example, a registration provides constructive notice during the existence of the registration but a cancelled registration provides constructive notice or nothing. Action Temporary Services, Inc. v. Labor Force, Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed.Cir.1989) and Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 173 USPQ 46, 47 (CCPA 1973). Other than applicant's 1950 registration, applicant owned another registration which, according to counsel, expired almost 50 years ago. Needless to say, counsel has not furnished the Board with copies of any of the registration files. Moreover, there may have been a different marketing environment in the late 1940s when applicant most recently sought registration (the 1950 registration). In that period of time, there may have been substantially different channels of trade for men's and women's clothing. Circumstances change and the conclusion of the Examining Attorney at that time that there was no likelihood of confusion can be accorded little significance. The cases are legion where the Board has refused to permit a registration merely because an applicant had a pre-existing one. Without fail, we have either indicated that we are not bound by the prior examining attorney's decision or that the propriety of that registration is not before us. The majority is deviating from this precedent. The point to be made here is that registration history should not be determinative of the question of likelihood of confusion. We should evaluate this issue on the basis of the tangible evidence bearing on the issue of whether confusion may not be likely because of the steps being taken to avoid it. Of course, registration history is not such direct tangible evidence. Moreover, it is hard to believe that the majority would give any weight to an Examining Attorney's decision, in 1987, to allow another registration to registrant. Examining Attorneys are not prone to refuse registration to an applicant seeking to register another mark for woman's clothing when that applicant claims ownership of five registrations (one over 50 years old at the time) for similar marks for women's clothing, on the basis of a single registration for men's clothing.
Finally, a decision refusing registration herein because of the lack of evidentiary support will be of little prejudice to applicant. Applicant would be free to refile with appropriate support for the conclusion that confusion is unlikely as a result of various arrangements that applicant and registrant may have undertaken to avoid confusion. In sum, we should not permit registration of what even the majority concedes is an otherwise confusingly similar mark to already registered marks merely on the basis of representations of counsel. The record is simply barren of probative evidence in favor of registration. Some evidence, in the nature of that submitted in previous cases, should be required. The Board's decision here blurs the distinction between fact and argument and leaves examining attorneys in an apparently unsupportable position when they next require support (consent agreements, affidavits, etc.) for an applicant's position that confusion is unlikely.
FN1. Moreover, an attorney's unauthorized statements may not necessarily be attributed to his client. A serious question could be raised whether a resulting registration would be cancelled on the basis of fraud committed by the registrant.
FN2. That case is also pertinent because, like the one before us, it involved a situation where the applicant had failed to renew an existing registration. As the Board stated there:
Applicant goes on to argue that his registration was issued at that time over the registration now cited. Applicant argues that the absence of any actual confusion, as shown by Mr. Perez's declaration, despite almost fifty years of contemporaneous use and forty years of contemporaneous registration, tips the scales decidedly in applicant's favor.
While we confess that applicant's showing in this regard may raise an eyebrow, the absence of actual confusion is but one factor in our analysis which, in cases before us, is outweighed by the other factors bearing on likelihood in confusion. In any event, the issue before us is not ?? of actual confusion, but only the likelihood of confusion. As to the years of contemporaneous registration, we are of course, not bound by an examining attorney's prior determination, as to registrability. (Emphasis added.)
In re Perez, 21 USPQ2d at ??