Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE JACQUES BERNIER, INC.
Serial No. 503,796
January 30, 1987
Hearing: September 18, 1986
Marshall A. Burmeister, Foster York and Francois N. Palmatier for Jacques Bernier, Inc.
Trademark Examining Attorney
Law Office V
(Paul Fahrenkopf, Managing Attorney)
Before Allen, Simms and Cissel
Jacques Bernier, Inc., d.b.a. Parfums Gianelli, a New York corporation, has appealed from the refusal of the Trademark Examining Attorney to register the mark SPORTS CLUB for men's cologne [FN1] under Section 2(d) of the Act, 15 U.S.C. § 1052(d), because of Registration No. 817,840, issued November 1, 1966 (Section 8 affidavit filed) for the mark INTERNATIONAL SPORTS CLUB for men's clothing, namely, sweaters, shirts, jackets, socks, shoes, swimsuits and hats.
The Examining Attorney contends that the marks of registrant and applicant differ only in that the registrant's mark includes the word INTERNATIONAL which, according to the Examining Attorney, is frequently used in trademarks and does not create a particularly significant or unique impression. Arguing that purchasers of applicant's SPORTS CLUB cologne may have only a general recollection of the registered mark used in conjunction with clothing, the Examining Attorney contends (brief, 3) that both marks conjure up the impression of a 'financially comfortable, 'life in the fast lane,' recreationally minded group.' With respect to the goods, the Examining Attorney maintains that men's cologne and clothing for men are commercially related such that purchasers encountering applicant's cologne under the mark SPORTS CLUB would assume some connection or association with registrant's INTERNATIONAL SPORTS CLUB items of wearing apparel.
Applicant, on the other hand, maintains that the marks have different meanings, applicant's mark conjuring up the image of a rugged outdoorsman or one who engages in outdoor sports, such as hunting, while the registrant's mark may suggest international sporting events such as the Olympics. Applicant also argues that the differences in the goods are sufficient to preclude likelihood of confusion.
While the Examining Attorney's position is not an unreasonable one, it is our view that, on this limited record, confusion cannot be said to be likely. First, while confusion has been held to be likely in a number of cases cited by the Examining Attorney involving cosmetic or toiletry products on the one hand and various items of clothing on the other, there is of course no per se rule that there is a likelihood of confusion when the same or similar mark is applied to these respective goods. Each case must be resolved on its own facts. However, it is noted that, in general, those cases in which confusion was held likely involved marks which were found to be well known [Gant of New Haven, Inc. v. Chez Boye Parfums International, Inc., 149 USPQ 806 (MD Fla. 1966) (GANT); All England Lawn Tennis Club v. Creations Aromatiques, 220 USPQ 1069 (TTAB 1983) (WIMBLEDON); Faberge, Inc. v. Madison Shirt Corp., 192 USPQ 223 (TTAB 1976) (BRUT) and In re Arthur Holland, Inc., 192 USPQ 494 (TTAB 1976) (LEVI'S, where applicant's counsel conceded that the purpose of the adoption of the mark was 'to take a free ride on the shirttails' of the well-known LEVI'S mark owned by the prior registrant)]; or involved identical marks [In re Barbizon International, Inc., 217 USPQ 735 (TTAB 1983) (BARBIZON) and In re Cosmetically Yours, Inc., 171 USPQ 563 (TTAB 1971) (DATE MATES), and cases cited therein]. Here, the respective marks are not identical in sound or appearance and may have different commercial impressions. We conclude that, on this record, the cumulative differences between the marks and the goods make confusion unlikely.
*2 Decision: The refusal to register is reversed.
D. B. Allen
R. L. Simms
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Serial No. 503,796, filed October 15, 1984, claiming use since September 12, 1983.