Brown Shoe Company, Inc. v. Molly D. Robbins

THIS OPINION IS A

PRECEDENT OF THE

T.T.A.B.

Mailed: May 13, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_______

Brown Shoe Company, Inc.

v.

Molly D. Robbins

_______

Opposition No. 91176273

to application Serial No. 78375027

filed on February 26, 2004

_______

Christopher C. Larkin of Seyfarth Shaw LLP for the Brown

Shoe Company, Inc.

Austin G. Bosarge of Turning Point Law, Inc. for Molly D.

Robbins.

_______

Before Seeherman, Kuhlke and Taylor, Administrative

Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Molly D. Robbins, an individual, seeks

registration of the mark PALOMITA, in standard character

form, for goods identified in the application as “shirts,

pants, shoes and hats” in International Class 25.1

1

Serial No. 78375027, filed February 26, 2004, alleging a bona

fide intention to use the mark in commerce under Section 1(b) of

the Trademark Act, 15 U.S.C. §1051(b).

Opposition No. 91176273

Opposer, the Brown Shoe Company, Inc., has opposed

registration of applicant’s mark on the ground that, as

applied to applicant’s goods, the mark so resembles

opposer’s previously used and registered PALOMA and PALOMA

and design marks, for various clothing and footwear such

that “customers and the relevant trade would likely be

confused as to the source, sponsorship, or affiliation of

such goods.” 15 U.S.C. §1052(d). In addition, opposer

asserts a claim of fraudulent misuse of the federal

registration symbol.

Applicant has filed an answer by which she has denied

the salient allegations.2

The evidence of record consists of the pleadings herein

and the file of the opposed application. In addition,

opposer submitted the following material under a notice of

reliance: certified copies of opposer’s pleaded

registrations, which show that the registrations are

subsisting and owned by opposer; and applicant’s responses

to certain of opposer’s interrogatories and requests for

admission. Opposer did not take any testimony. Applicant

did not take any testimony or file a notice of reliance.

Both parties filed briefs.

2

Applicant’s counterclaim to cancel opposer’s pleaded

registrations was dismissed on October 10, 2008 for failure to

prosecute. Applicant’s “affirmative defenses” are

merely amplifications of her denial of opposer’s claims.

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Opposition No. 91176273

PRIORITY AND LIKELIHOOD OF CONFUSION

The pleaded registrations made of record, which are in

full force and effect and are owned by opposer, are

summarized as follows:

Registration No. 2993403 for the mark PALOMA (in

typed form) for “clothing, namely, belts, shirts,

blouses, pants, dresses, skirts, shorts, jackets,

coats, undergarments, footwear, hosiery and

headwear” in International Class 25, filed April

2, 2002 and issued on September 6, 2005, with the

following translation statement, “The foreign

wording in the mark translates into English as

dove”; and

Registration No. 3100693 for the mark

for “shoes” in International Class 25, filed June

23, 2005 and issued on June 6, 2006, with the

following translation statement, “The foreign

wording in the mark translates into English as

dove.”

Because opposer has made the pleaded registrations

summarized above properly of record, opposer has established

its standing to oppose registration of applicant’s mark and

its priority is not in issue. See King Candy Co., Inc. v.

Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108

(CCPA 1974).

Our likelihood of confusion determination under Section

2(d) is based on an analysis of all of the probative facts

in evidence that are relevant to the factors set forth in In

re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ

563 (CCPA 1973). See also, In re Majestic Distilling Co.,

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Opposition No. 91176273

Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Two

key considerations are the similarities between the marks

and the similarities between the goods. See Federated

Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192

USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants

Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).

In considering the factors, we have limited our

determination of likelihood of confusion to the most

relevant registration, Registration No. 2993403 for the mark

PALOMA (in typed form) for “clothing, namely, belts, shirts,

blouses, pants, dresses, skirts, shorts, jackets, coats,

undergarments, footwear, hosiery and headwear.”

With regard to the goods, the “shirts and pants”

identified in opposer’s Registration No. 2993403 are

identical to applicant’s identified “shirts and pants” and

the “footwear and headwear” identified in the registration.

2993403 encompass applicant’s identified “shoes and hats.”

Considering the channels of trade and classes of

purchasers, because the goods are, in part, legally

identical and otherwise closely related and because there

are no limitations in either the registration or the subject

application, we must presume that applicant’s and opposer’s

goods will be sold in the same channels of trade and will be

bought by the same classes of purchasers. See Hewlett-

Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d

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Opposition No. 91176273

1001 (Fed. Cir. 2002); Canadian Imperial Bank v. Wells Fargo

Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In

re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).3

In view of the above, the du Pont factors of the

similarity of the goods, the channels of trade and classes

of purchasers favor a finding of likelihood of confusion.

With regard to the conditions of sale, these goods

include general clothing items that would not be purchased

with a great deal of care or require purchaser

sophistication, which increases the likelihood of confusion.

See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d

1894, 1899 (Fed. Cir. 2000) (“When products are relatively

low-priced and subject to impulse buying, the risk of

likelihood of confusion is increased because purchasers of

such products are held to a lesser standard of purchasing

care”) (citations omitted). Thus, this factor also favors

opposer.

We now turn to consider the similarity or dissimilarity

of the marks when compared in their entireties in terms of

appearance, sound, connotation and commercial impression.

We make this determination in accordance with the following

3

Applicant’s argument that opposer presented no evidence of

actual usage of the goods or of the actual channels of trade is

misplaced. As noted above, where the goods are identical, as the

record establishes and applicant acknowledges (App. Br. p. 7), we

must presume overlapping trade channels and classes of

purchasers.

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Opposition No. 91176273

principles. The test, under this du Pont factor, is not

whether the marks can be distinguished when subjected to a

side-by-side comparison, but rather whether the marks are

sufficiently similar in terms of their overall commercial

impressions that confusion as to the source of the goods

offered under the respective marks is likely to result.

Moreover, where the goods are identical “the degree of

similarity [between the marks] necessary to support a

conclusion of likely confusion declines.” Century 21 Real

Estate Corp. v. Century Life of America, 970 F.2d 874, 877,

23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied, 506

U.S. 1034 (1992).

In comparing the marks PALOMA and PALOMITA within the

above-noted legal parameters, we find the points of

similarity outweigh the dissimilarities. ESSO Standard Oil

Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161, 163 (D.C.

Cir. 1956). The marks are very similar in sound and

appearance, differing only in the ending by the addition of

the letters “IT” in applicant’s mark. As opposer notes, it

is the first portion of a mark that is more likely to make

an impression on potential purchasers and here the beginning

and core elements of the words are the same. See Hercules

Inc. v. National Starch & Chemical Corp., 223 USPQ 1244,

1246 (TTAB 1984) (“considering the marks NATROL and NATROSOL

in their entireties, the clearly dominant aspect of both

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Opposition No. 91176273

marks is that the first four letters and the final two are

the same”). See also Palm Bay Imports, Inc. v. Veuve

Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73

USPQ2d 1689 (Fed. Cir. 2005); Presto Products Inc. v. Nice-

Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).

Both parties apply the doctrine of foreign equivalents

in comparing the connotation and commercial impression of

the respective marks. Applicant argues that the doctrine

should not apply in this case, but in the alternative,

applicant argues that the words have different meanings in

Spanish and this difference in connotation is sufficient to

avoid confusion. Opposer takes objection to applicant’s

translation and argues that under the doctrine of foreign

equivalents these words have similar meanings.

The evidence of record establishes that PALOMA is a

Spanish word with the English translation of “dove,” and

PALOMITA is the diminutive of the word PALOMA in the Spanish

language, meaning “little dove.” See App. Responses to Opp.

Requests for Admissions Nos. 79, 80, 82, 84-85. Applicant

asserts that PALOMITA has additional meanings in Spanish,

namely, “checkmark” and “popcorn.” During prosecution

applicant provided the translation of PALOMITA as

“checkmark.” However, while the application is of record,

the allegations in the application are not facts and must be

proven during trial. Although applicant did not take any

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Opposition No. 91176273

testimony or file notices of reliance, applicant’s request

that we take judicial notice of the following translation is

granted:4

Palomita sustantivo femenino (Mex fam) (marca)

check (AmWE), tick (BrE);

Palomitas sustantivo femenino plural: tb ~s de

maiz popcorn.

Pocket Oxford Spanish Dictionary (Oxford University Press

2005).

The doctrine of foreign equivalents is normally applied

where one mark is in a foreign language, and the other mark

is in English. In general, the Board does not apply the

doctrine of foreign equivalents in cases where both marks

are non-English words from two different languages. See

Safeway Stores Inc. v. Bel Canto Fancy Foods Ltd., 5 USPQ2d

1980, 1982 (TTAB 1987) (French expression “bel air” v.

Italian expression “bel aria”). But see Miguel Torres S.A.

v. Casa Vinicola Gerardo Cesari S.R.L., 49 USPQ2d 2018,

2020-2021 (TTAB 1998), vacated on other grounds, 230 F.3d

1372 (Fed. Cir. 1999). We do not think the circumstances

present in this case warrant application of the doctrine.

Here, where both marks are Spanish words we must consider

the connotation of the marks to both non-Spanish-speaking

consumers and to Spanish-speaking consumers.

4

University of Notre Dame du Lac v. J.C. Gourmet Food Imports

Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505

(Fed. Cir. 1983).

8

Opposition No. 91176273

In English the words have no meaning and therefore,

although non-Spanish-speaking consumers would not understand

the words, because of the similarity in appearance and

pronunciation the marks likely would be perceived as having

similar meanings.5 Applicant herself has stated that, “a

purchaser in the United States, who is unlikely familiar

with the translations of Opposer’s and Applicant’s marks,

will view the marks as having the same meaning.” App. Br.

p. 7. Thus, a substantial portion of the purchasing public

would not understand the possible differences in meaning

asserted by applicant. Therefore, even if we were to accept

the translation applicant proposes, this is not sufficient

to distinguish the marks with respect to non-Spanish

speakers.

As for Spanish-speaking consumers, even if they were to

understand the multiple meanings of PALOMITA, it is clear

that one meaning of the term is “little dove,” and there is

nothing inherent in the goods that would lead a consumer to

the “checkmark” or “popcorn” meanings over the “little dove”

connotation. Applicant’s argument that she displays her

mark with a “checkmark” serving as the “I” in PALOMITA is

unavailing inasmuch as we must make our determination based

5

Opposer argues that even non-Spanish speakers would recognize

the suffix “ITA” in applicant’s mark as merely indicating a

diminutive form of the word PALOMA; however, there is no evidence

of record to support this argument.

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Opposition No. 91176273

on the marks as depicted in the application and

registration. In this case, applicant has applied for a

standard character mark without a checkmark design, and the

registrant’s mark is in typed form; therefore, our analysis

may not be limited to any particular manner of display. In

re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB

1988) (rights reside in the word and not in any particular

form of the mark); and Sunnen Products Co. v. Sunex

International Inc., 1 USPQ2d 1744, 1747 (TTAB 1987)

(applicant seeks registration without special form or

design, therefore Board must evaluate marks on premise that

it may be displayed in any form or style of lettering).

We find that the marks overall are substantially

similar in appearance, pronunciation, meaning and commercial

impression, and that the similarities outweigh the minor

difference in the endings. We conclude that this factor

favors opposer.

Finally, applicant’s argument that there is no evidence

of actual confusion despite “opposer’s allegations that

applicant has been using the mark in connection with the

promotion or sale of goods” is not persuasive. First, there

is nothing in the record upon which to make findings of the

extent of concurrent use and the opportunity for confusion

to occur. Second, the test is likelihood of confusion and

the absence of evidence of actual confusion alone is not

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Opposition No. 91176273

particularly probative. Weiss Ass. Inc. v. HRL Ass. Inc.,

902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir.

1990).

Thus, we conclude that the evidence of record as it

pertains to the relevant du Pont factors supports a

determination of likelihood of confusion as between

applicant’s PALOMITA mark and opposer’s PALOMA mark, such

that registration of applicant’s mark is barred under

Trademark Act Section 2(d). As noted above, applicant has

not submitted any evidence or taken any testimony to rebut

opposer’s showing.

We now turn to opposer’s second claim of fraudulent

misuse of the registration symbol. We begin by noting that

“it has been the practice of the Office to accept

explanations that demonstrate that such use was inadvertent

or without any intent to deceive or mislead and that there

has been an effort to discontinue the offending use.”

Knorr-Nahrmittel Aktiengesellschaft v. Havland

International, Inc., 206 USPQ 827, 833 (TTAB 1980) citing

S.C. Johnson & Son, Inc. v. Gold Seal Co., 90 USPQ 373

(Comm’r 1951). Mistake or inadvertence generally overcomes

a claim of fraudulent misuse. See J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition, §19:146 (4th

ed. updated 2009).

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Opposition No. 91176273

Opposer contends that applicant’s admissions that “she

knew that her ‘PALOMITA’ mark was not registered in the

United States when she created, approved, and made each of

these misuses of the symbol and that such uses signified

that the ‘PALOMITA’ mark was registered in the United

States” are sufficient for a finding of fraudulent misuse.

Opposer argues that “Applicant did not take any

testimony or make any other evidence of record, so there is

no evidence of record, beyond Applicant’s unsworn statements

in her discovery responses, of the existence of any Mexican

registration, no evidence of record that any such

registration covers the goods identified in the opposed

application, and no evidence of record that Mexican law

permits the use of the ® symbol.” Opp. Br. p. 14.

To prove its claim, opposer submitted and relied on

applicant’s responses to interrogatories and requests for

admission which include the following:

Interrogatory No. 4: State in detail what

Applicant understood regarding the proper and

improper use of the Registration Symbol next to a

trademark when Applicant first used the

Registration Symbol next to Applicant’s Mark,

explain how and when Applicant came to have that

understanding, and state whether Applicant’s

understanding has ever changed and, if so how it

has changed.

Response: Applicant understood that the

Registration Symbol next to a trademark could be

used when such trademark is registered.

Applicant’s Mark is a registered trademark in

Mexico and Applicant understood she could properly

use the Registration Symbol next to Applicant’s

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Opposition No. 91176273

Mark because of such registration. Applicant was

made aware of the possible improper use of the

Registration Symbol upon Opposer’s amended Notice

of Opposition. Counsel for Applicant advised

Applicant to consider removing the Registration

Symbol until this Opposition was resolved, even

though use of the Registration symbol may be

entirely proper.

Request No. 11: Applicant approved the use of the

Registration Symbol in the circular design shown

in Exhibit 1.

Response: Applicant admits Request No. 11, in

that Applicant’s Mark is a registered trademark in

Mexico entitling Applicant to use the Circle R

Registration Symbol next to Applicant’s Mark.

Applicant denies the request to the extent it

makes the unwarranted inference that Applicant

intended to misrepresent Applicant’s mark as being

registered in the United States.

Request No. 13: When the circular design shown in

Exhibit I was approved by Applicant, Applicant

knew that the use of the Registration Symbol next

to a trademark in the United States signifies that

the trademark is registered in the United States.

Response: Applicant admits Request No. 13 in that

Applicant’s Mark is a registered trademark in

Mexico entitling Applicant to use the Circle R

Registration Symbol next to Applicant’s Mark;

Applicant denies the request to the extent it

makes the unwarranted inference that Applicant

intended to misrepresent Applicant’s mark as being

registered in the United States.

Opp. NOR III and IV.

Opposer relies heavily on Copelands’ Enterprises Inc.

v. CNV Inc., 20 USPQ2d 1295 (Fed. Cir. 1991). However, in

that case the defendant had notified plaintiff that the mark

was federally registered when it was only the subject of a

pending application. In addition, defendant did not respond

to a letter from plaintiff pointing out the improper usage

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Opposition No. 91176273

and demanding cessation of such activities and continued

improper use of the registration symbol. Most importantly,

that decision was on summary judgment and the Federal

Circuit in remanding the case stated that “the factual

question of intent is particularly unsuited to disposition

on summary judgment” and that “the sequence of events here

raises serious questions as to [defendant’s] purpose and

intent in using the registration notice, and more

importantly, continuing to use it after being specifically

notified of the impropriety of such use.” Id. at 1299.

Here, applicant, based on her admissions, believed her

use to be proper inasmuch as she had registered the mark in

Mexico. Applicant may rely on her discovery responses,

inasmuch as opposer has placed these responses into the

record under notice of reliance and relied on them in

support of its case. Trademark Rule 2.120(j)(7). Moreover,

the only “specific notification” was the amended notice of

opposition and applicant ceased use of the symbol after

receipt of the amended complaint.

Opposer also relies on Section 906.01 of the Trademark

Manual of Examining Procedure (TMEP) (5th ed. 2007). This

section provides that, “When a foreign applicant’s use of

the symbol on the specimens is based on a registration in a

foreign country, the use is appropriate.” While this same

section does not list Mexico as one of the countries that

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Opposition No. 91176273

uses this symbol, we find this is insufficient to prove that

Mexico does not use this symbol; there is nothing in the

record to indicate that the TMEP section contains an

exhaustive list or that it accurately reflects Mexican law

at the time applicant used the registration symbol.

Further, even if Mexico does not provide for the use of this

symbol, there is no proof that applicant knew this and

intended to deceive by using the symbol. In addition, there

is no proof that applicant distributed hang tags with this

symbol in the United States and applicant’s use on a website

that can be accessed from anywhere in the world, including

Mexico, does not by itself amount to fraudulent misuse.

The circumstances in the case before us are more akin

to those presented in The Du-Dad Lure Co. v. Creme Lure Co.,

143 USPQ 358 (TTAB 1964), where a mistaken belief that state

registration of a trademark entitled use of the registration

symbol did not constitute fraud or misrepresentation, and

Shatel Corp. v. Mao Ta Lumber and Yacht Corp., 697 F.2d 1352

(11TH Cir. 1983), where belief that foreign registrations

entitled use of a registration symbol in a magazine that

would be distributed in countries where the mark was

registered did not constitute a fraudulent

misrepresentation. More importantly, upon learning of the

possible misuse through opposer’s addition of the fraud

claim, applicant ceased using the symbol. Based on this

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Opposition No. 91176273

record, opposer did not prove its claim of fraudulent

misuse.

Decision: The opposition is sustained as to opposer’s

claim of priority and likelihood of confusion under Section

2(d) of the Trademark Act and dismissed as to the claim of

fraudulent misuse.

16