TTAB - Trademark Trial and Appeal Board - *1 JOCKEY INTERNATIONAL, INC. v. MALLORY & CHURCH CORPORATION October 15, 1992

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)





October 15, 1992

Hearing: April 22, 1992



 Opposition No. 81,508 to application Serial No. 73/720,413 filed on April 4, 1988



Willian, Brinks, Olds, Hofer, Gilson & Lione, for Jockey International Inc.



Robert L. Raskopf and Ellen S. Schwartz of Townley & Updike, for Mallory & Church Corporation



Before Rooney, Cissel and Hanak






Opinion by Hanak






 Mallory & Church Corporation (applicant) seeks registration of ELAAN in the stylized form shown below for "neckties." The application was filed on April 4, 1988 with a claimed first use date of August 16, 1985.





 Jockey International, Inc. (opposer) filed an opposition alleging, among other things, that it first used the mark ELANCE in connection with underwear at least as early as February 25, 1977 and in connection with socks at least as early as July 25, 1989. Opposer further alleged that "applicant's trademark ELAAN (stylized) is confusingly similar to opposer's trademark ELANCE, and the registration of the mark and continued use by applicant on its goods [neckties] is likely to cause confusion as to source or origin and mislead consumers, all to opposer's damage." (Notice of Opposition, paragraph 4). [FN1]



 Applicant filed an answer to the notice of opposition in which it, among other things, denied that there was a likelihood of confusion resulting from the contemporaneous use of the marks ELAAN (stylized) and ELANCE for the respective goods of the parties, and in which it set forth the affirmative defenses of laches, acquiescence and estoppel. [FN2]



 Both parties to this proceeding submitted briefs and were present at an oral hearing held on April 22, 1992.



 The record in this proceeding is quite extensive.      It includes, among other things, the depositions of the following individuals submitted by opposer: 1) William C. Herrmann, opposer's Senior Vice President of advertising, 2) Ed Gill, opposer's Vice President of sales administration, and 3) Pat Oguss, a paralegal in the law firm representing opposer in this proceeding. Applicant submitted the depositions of the following individuals: 1) Miriam LeBeau, an employee of applicant, 2) Paul Cohen, President and one of the owners of applicant, and 3) Lawrence A. Smith, an employee of Pincus Brothers Maxwell responsible for licensing the BILL BLASS trademark for menswear. Both parties also made of record other evidence by means of notices of reliance. In this regard, opposer made of record by means of a notice of reliance a certified status copy of its Registration No. 1,584,801 for ELANCE in typed capital letters for "underwear." This registration issued on February 27, 1990 with a claimed first use date of February 25, 1977. In the registration, it is noted that "the English translation of the word 'elance' in the mark is 'slender'." [FN3]



  *2 Before turning to the merits of this proceeding, we will resolve the evidentiary objections. Each party alleges that the other party improperly attempted to enter into evidence its sales figures and advertising expenditures. In essence, opposer faults applicant for providing what opposer terms a "mass of business records" to establish applicant's sales of and advertising and promotional expenditures for ELAAN ties. (Opposer's brief page 13). On the other hand, applicant faults opposer for its failure to provide "any evidence of sales, advertising and promotional expenditures [for ELANCE underwear and socks] beyond documents containing unsubstantiated conclusory totals." (Applicant's brief page 8). In short, opposer faults applicant for providing too much, and applicant faults opposer for providing too little.



 We find that neither objection is well taken. The documents which applicant provided to opposer pursuant to Rule 33(c) of the Rules of Civil Procedure are neither massive nor hard to decipher. Indeed, applicant's counsel provided assistance to opposer's counsel as to how to read the documents provided by applicant. Moreover, opposer's counsel had full opportunity to cross examine Miriam LeBeau, applicant's employee who compiled the sales and advertising figures.



 In similar fashion, applicant's objection to the "conclusory totals" provided by opposer with regard to its sales and advertising figures is likewise not well taken. Opposer's summary sales figures for its ELANCE underwear and hosiery were introduced by Ed Gill, opposer's Vice President of sales administration. Mr. Gill testified that while the sales summaries (Exhibits 59 and 60) were prepared for this litigation, they were derived from business records maintained by opposer in the regular course of its business and that this derivation was conducted under Mr. Gill's supervision and control. William Herrmann, opposer's Senior Vice President of advertising, testified likewise with regard to opposer's summaries of its advertising and promotional expenditures for ELANCE products (Exhibits 49, 51-53). Moreover, despite being advised that the underlying sales and advertising documents from which the summaries were prepared were physically located in the very building where Mr. Herrmann's and Mr. Gill's depositions were taking place (Herrmann dep. 67; Gill dep. 23), we find no request by counsel for applicant during the course of these two depositions that he be permitted to see the actual underlying sales and advertising documents. Accordingly, opposer's summary sales and advertising documents are accepted into evidence. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 n. 4. (Fed.Cir.1983). [FN4]



 Turning to the merits of this matter, we note at the outset that there is no dispute that priority of use rests with the opposer in that opposer has made continuous use of ELANCE in connection with underwear since 1977, whereas applicant has made continuous use of ELAAN in connection with neckties since 1984. [FN5] Moreover, opposer also has a registration of ELANCE in typed capital letters for underwear, and pursuant to Section 2(d) of the Lanham Trademark Act, this registration affords opposer an additional basis on which to oppose the application to register ELAAN (stylized) for neckties. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA1974).



  *3 As for opposer's use since 1989 of ELANCE in connection with hosiery, such use is obviously subsequent to applicant's first use of ELAAN on neckties in 1984. Hence, in deciding the issue of likelihood of confusion, we will focus primarily on opposer's mark ELANCE as used in connection with underwear and on applicant's mark ELAAN (stylized) as used in connection with neckties. Opposer's later use of ELANCE in connection with hosiery will be considered only to the extent that it goes to the possible fame of opposer's mark and to the extent that it shows that consumers have been exposed to the ELANCE mark on goods besides underwear.



 Turning to a consideration of the factors involved in deciding whether confusion is likely, we will consider first the similarity of the marks. In so doing, we note again that opposer has a registration of ELANCE in typed capital letters for underwear. This means that opposer's mark is "unrestricted as to stylization," and that in deciding the issue of likelihood of confusion, we must consider opposer's mark ELANCE as it would appear in the various common forms of depiction. In re Fisher Tool Co., Inc., 224 USPQ 796, 797 (TTAB1984); 1 J. McCarthy, Trademarks and Unfair Competition, Section 19:16 at page 907 (2d ed. 1984) ("When a drawing of the applicant's mark is typed in capital letters, this means that the application is not limited to the mark depicted in any special form or lettering."). See also Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed.Cir.1983) and Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA1971). To be perfectly clear, we are not suggesting that because an application or registration depicts a word mark in typed capital letters that therefore the word mark must be considered in all possible forms no matter how extensively stylized. Rather, we are simply indicating that when a drawing in an application or registration depicts a word mark in typed capital letters, this Board--in deciding the issue of likelihood of confusion--"must consider all reasonable manners" in which the word mark could be depicted. INB National Bank v. Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB1992).



 While opposer has used the mark ELANCE primarily in lower case block letters, its registration of ELANCE in typed capital letters gives it rights to ELANCE in all normal manners of presentation, including typical lower case script form. When depicted in lower case script form, we find that ELANCE bears a clear visual resemblance to ELAAN (stylized). Thus, applicant's argument that "the marks at issue do not look ... the same ... [because] opposer's mark, far from being stylized ... clearly consists of block letters" is misplaced. (Applicant's brief page 16). Likewise, because opposer has a registration of simply ELANCE without any other words or designs, applicant's argument that we must compare its mark ELAAN (stylized) with ELANCE plus JOCKEY because "ELANCE always appears with the Jockey name" is likewise misplaced. (Applicant's brief pages 14-15). INB National Bank, 22 USPQ2d at 1588; Frances Denney v. Elizabeth Arden Sales Corp., 263 F.2d 347, 120 USPQ 480, 481 (CCPA1959); Smith v. Tobacco By-Products & Chemical Corp., 243 F.2d 188, 113 USPQ 339, 341 (CCPA1957); J. McCarthy, Trademarks and Unfair Competition, § 20:3 at page 1024 (Volume 1) and § 23:18 at page 102 (Volume 2) (2d ed. 1984).



  *4 In terms of sound or pronunciation, we likewise find that there are clear similarities in the two marks. Applicant's argument that "opposer's mark has an accent on the 'e' while applicant's mark does not" and that "the marks when pronounced correctly have clearly distinct sounds" is not persuasive. (Applicant's brief pages 16-17). Opposer's registration of ELANCE in typed capital letters has no accent mark. Moreover, it is clear that there is no one correct pronunciation of a trademark. In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA1969); In re Lamson Oil Company, 6 USPQ2d 1041, 1042 n. 3 (TTAB1987). We believe that a not insignificant number of consumers would pronounce opposer's mark as ELAN CE, and would also pronounce applicant's mark ELAAN, which applicant notes is an arbitrary word, as simply ELAN, a word which applicant states "is defined as 'vigorous spirit or enthusiasm.' " (Applicant's brief page 17). In otherwords, these consumers--in pronouncing opposer's mark ELANCE--would first pronounce applicant's mark and then add a CE sound at the end.



 Finally, in terms of connotation, we believe that most Americans would perceive both ELANCE and ELAAN as arbitrary terms, or possibly as words from a foreign language, probably French. As for those Americans who do speak French and who would in addition perceive applicant's mark as the word "elan", we find that, as applied to apparel, the connotative properties of the two terms are both positive and are not that far removed from each other. As applicant notes, the French derivation word "ELAN (with one less 'a') is defined as 'vigorous spirit or enthusiasm' ... [and] ELANCE, on the other hand, is defined in French as slender." (Applicant's brief page 17). As applied to clothing, the connotations of "vigorous" and "slender" are both quite positive and complementary. Cf. Kenner Parker Toys, Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1457 (Fed.Cir.1992) ("Particularly in the context of a child's toy, the concepts of fun and play tend to merge. In context, the prefixes PLAY and FUN seem at least as similar as TREE and VALLEY or ISLAND and VALLEY--components of the confusingly similar marks SPICE TREE and SPICE VALLEY ... and the confusingly similar marks SPICE ISLAND and SPICE VALLEY ...").



 In short, when depicted in ordinary script form, opposer's mark ELANCE is visually very similar to applicant's mark ELAAN (stylized). Moreover, many Americans would pronounce the marks in manners in which they would sound quite similar, namely, as ELAN CE and as ELAN. Finally, the connotative properties of the terms--both to to those versed in French and those who are not--only possibly supplement, and do not detract from, the similarities in visual appearance and sound.



 Turning to the consideration of the goods of the parties, we note that both underwear and neckties are ordinary items of apparel worn by men. As is well known, both underwear and neckties are sold in the same channels of trade. Indeed, the record in this case establishes that ELANCE underwear and ELAAN neckties are even sold in the same stores such as Macy's and Bloomingdales. (Gill dep. 8; Cohen dep. 10).



  *5 In addition, opposer has established that a number of different companies market under the same trademarks both neckties and underwear. These trademarks are: POLO, PERRY ELLIS, STAFFORD, SAKS FIFTH AVENUE, MARSHALL FIELD'S, BROOKS BROTHERS, NORDSTROM and JOS. A. BANK. While it is true, as pointed out by applicant's witness Lawrence Smith, that the foregoing trademarks are also either designer names or the names of stores (or their in-house brands), nevertheless, we find that this evidence tends to show that American consumers are accustomed to finding both underwear and neckties marketed under the same mark.



 Because the marks ELANCE and ELAAN are quite similar, we find that their use on clearly related goods (i.e. underwear and neckties) would, absent other factors, be likely to cause confusion. One factor that applicant argues is quite "compelling" in showing that there is no likelihood of confusion is the absence of actual confusion despite the fact that the parties have used their marks for a number of years (with substantial sales) in the same trade channels, and indeed, in certain cases, in the very same stores. While a protective order precludes us from revealing the precise extent of sales and advertising dollars associated with the respective products, suffice it to say that the sales of ELANCE products (underwear alone or underwear and hosiery) have been quite extensive, and that the sales of ELAAN neckties have been relatively substantial. In such circumstances, the absence of actual confusion "weighs against a holding of a likelihood of confusion." G.H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d 1292, 16 USPQ2d 1635, 1638 (Fed.Cir.1990). Indeed, it is this absence of actual confusion under the particular circumstances of this case which makes the question of likelihood of confusion a very close one.



 However, despite the absence of actual confusion, we nevertheless find that there is a likelihood of confusion. As previously noted, applicant's use of its mark ELAAN has been almost exclusively in script form. Likewise, opposer's use of its mark ELANCE has been almost exclusively in block letter form, primarily in lower case letters. When ELAAN is depicted in script form and when ELANCE is depicted in block letter form, there may well be no likelihood of confusion when these marks are used on clearly related but nevertheless different items of apparel (i.e. neckties and underwear). This would explain the absence of reported instances of actual confusion in this case. [FN6] However, as already noted, in this proceeding opposer enjoys the benefits of a registration of ELANCE in typed capital letters, which requires us, in deciding the issue of likelihood of confusion, to consider all ordinary and reasonable manners in which opposer's mark could be depicted, including in typical script form.



 In reaching our decision in this very close case that there is a likelihood of confusion, we wish to make it clear that in so doing, we did not attribute any fame to opposer's mark ELANCE. While the sales and advertising of underwear (and to a lesser extent, hosiery) displaying the mark ELANCE have been extensive, we find that in most instances, the ELANCE mark is overshadowed by the clearly famous mark JOCKEY, which is almost always featured on the products and in advertising in a far more prominent manner than the "secondary" mark ELANCE. In short, on this record, opposer has not met its burden of showing that its ELANCE mark (as opposed to its JOCKEY mark) is famous.



  *6 Finally, we should note that in finding that there exists a likelihood of confusion, we are obligated to resolve doubts in favor of the registrant and prior user, that is, the opposer. In re Hyper Shoppes, 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed.Cir.1988); Squirtco v. Tomy Corp., 216 USPQ at 939.



 Decision: The opposition is sustained.



R.F. Cissel



E.W. Hanak



Members, Trademark Trial and Appeal Board



FN1. Opposer also alleged that it first used "the ELANCE trademark in connection with sportswear, namely shirts, slacks and sweaters at least as early as February 5, 1976." (Notice of Opposition, paragraph 2). However, the record is clear that opposer discontinued the use of the mark ELANCE in connection with shirts, slacks and sweaters "as of approximately the end of 1977." (Herrmann dep. 79). Thus, opposer bases its opposition on its rights in the mark ELANCE "in connection with underwear and hosiery," and not in connection with other items of apparel. (Opposer's brief page 1).



FN2. In its brief, applicant never discussed the defenses of laches, acquiescence and estoppel. In any event, we find that based on the record, these defenses are not available to applicant. NCTA v. American Cinema Editors, 937 F.2d 1572, 19 USPQ2d 1424 (Fed.Cir.1991).



FN3. While opposer never amended its notice of opposition to include a reliance on its registration of ELANCE, we find that both opposer and applicant have relied upon this registration, albeit to advance different arguments. Applicant states that "despite Jockey's use of ELANCE on underwear early in 1977 it did not seek registration for same until July 6, 1989, after this opposition proceeding had begun.... It should be considered an admission of the mark's weakness that a large consumer product company such as Jockey would wait twelve years to apply for registration." (Applicant's brief page 7). Accordingly, in reaching our decision, we will treat opposer's Registration Number 1,584,801 as having been properly made of record and will consider the notice of opposition to have been implicitly amended to include reliance on this registration.



FN4. At page 8 of its brief, applicant makes the following allegations:   "Despite applicant's repeated requests, opposer has failed to provide proof of the figures constituting the [sales and advertising] totals given." However, nowhere in its brief does applicant indicate where and when these "repeated requests" were made.



FN5. In its application, applicant contended that it first used the mark ELAAN  (stylized) on August 16, 1985. However, the record in this matter convinces us that applicant began use of this mark in 1984. In any event, whether applicant's first use of ELAAN was in 1984 or 1985 is of limited consequence in this proceeding.



FN6. Moreover, it is often the case that instances of actual consumer confusion go unreported, and if they are reported to store employees, those employees may in turn not report them to their superiors, or if they do, those superiors may not report them to the manufacturers (i.e. opposer and applicant).





*7 L. E. Rooney



Member, Trademark Trial and Appeal Board



 I am in agreement with the majority with respect to the likelihood of confusion in this case. There is no question that the goods, ties and underwear, are related and would, if sold under the same or similar marks, be likely to be attributed to the same source. The fact that other companies sell such goods under the same marks is clear evidence that this is so.



 As to the marks, the fact, noted by the majority, that opposer owns a registration for the mark ELANCE in simple capital letters without any stylization, indicates that it is entitled to have us consider its mark in any of the typical forms of lettering, including lower case script. In so viewing opposer's mark, it is evident that it clearly resembles applicant's mark ELAAN in appearance.



 The sound of the marks is also similar.         That is to say, there are only a limited number of ways that these marks could be pronounced and I believe, as the majority does, that a not insignificant number of the relevant purchasing public would pronounce opposer's mark like the word "elan" followed by "ce". The latter syllable, sounding like an "s" would cause opposer's mark to sound like the plural of applicant's mark, which appears essentially to be the phonetic equivalent of "elan". While the marks may not be the same in connotation, there is enough likeness in them in appearance and sound to outweigh the differences in meaning, especially when they are applied to such closely related goods.



 Finally, while the absence of evidence of actual confusion is, of course, a factor to be considered, it is only one such factor. In this case, that there is no evidence of actual confusion may well be explained by the fact that these are relatively inexpensive goods and that, if one were to purchase applicant's or opposer's goods and realize that they were from different sources, such confusion would probably not be reported unless there was some dissatisfaction with the product. In any event, it is not opposer's burden to prove actual confusion. Likelihood of confusion is the issue here and in my opinion confusion is indeed likely.


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