Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1053018
`
`Filing date:
`
`05/04/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`88290320
`
`M & M Footwear Inc.
`
`Applied for Mark
`
`NAVATEX
`
`Correspondence
`Address
`
`MARK C COMTOIS
`DUANE MORRIS LLP
`505 9TH STREET NW, SUITE 1000
`WASHINGTON, DC 20004-2166
`UNITED STATES
`mccomtois@duanemorris.com, mckillian@duanemorris.com, ipdocket-
`ing@duanemorris.com, jmlyle@duanemorris.com, JMLyle@duanemorris.com
`202-776-5240
`
`Submission
`
`Attachments
`
`Filer's Name
`
`Filer's email
`
`Appeal Brief
`
`Appeal Brief for Applicant.pdf(336228 bytes )
`
`Meghan C. Killian
`
`mccomtois@duanemorris.com, mckillian@duanemorris.com, ipdocket-
`ing@duanemorris.com
`
`Signature
`
`Date
`
`/Meghan C. Killian/
`
`05/04/2020
`
`

`

`Attorney Docket No. T0983-00012
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Examining Attorney: Harini Ganesh
`
`Law Office 122
`
`In re Application of
`M & M FOOTWEAR INC
`
`Mark: NAVATEX
`
`Serial No.: 88/290,320
`
`Filed: February 5, 2019
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
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`APPEAL BRIEF FOR APPLICANT M&M FOOTWEAR INC.
`
`DM2\12558620.2.doc
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION.........................................................................................................5
`
`DESCRIPTION OF THE RECORD ..............................................................................5
`
`III.
`
`THE REFUSAL TO REGISTER SHOULD BE REVERSED .........................................7
`
`A.
`
`B.
`
`C.
`
`Standard for Likelihood of Confusion ................................................................ 7
`
`The Cited Mark is Weak Because the Register Is Replete with NAV-Formative
`Marks ............................................................................................................. 7
`
`The Marks Are Dissimilar in Appearance, Sound, Connotation and Commercial
`Impression .......................................................................................................14
`
`1.
`
`2.
`
`Applicant’s Mark and the Cited Mark Are Phonetically and
`Visually Different. ................................................................................ 15
`
`The Marks Are Dissimilar In Meaning and Convey Different
`Commercial Impressions. ...................................................................... 16
`
`D.
`
`Applicant’s Mark and the Cited Mark Are Used In Connection With Dissimilar
`Goods ............................................................................................................17
`
`IV.
`
`CONCLUSION........................................................................................................... 18
`
`DM2\12558620.2.doc
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`2
`
`

`

`Fe de ral Case s
`
`TABLE OF AUTHORITIES
`
`Air Products, Inc. v. Marquette Mfg. Co.
`133 USPQ 192 (C.C.P.A. 1962) ........................................................................................ 14
`
`Crown Radio Corp. v. Soundscriber Corp
`184 USPQ 221 (C.C.P.A 1974) ......................................................................................... 15
`
`In re E.I. du Pont de Nemours & Co.
`177 USPQ 563 (C.C.P.A 1973) ..................................................................................... 7, 15
`
`Federated Foods, Inc. v. Fort Howard Paper Co.
`192 USPQ 24 (C.C.P.A 1976) .............................................................................................7
`
`Franklin Mint Corp. v. Master Mfg. Co.
`212 USPQ 233 (C.C.P.A. 1981) ........................................................................................ 14
`
`General Electric Company Limited v. Jenaer Glaswerk Shott & Gen
`144 USPQ 427 (C.C.P.A 1965) ......................................................................................... 15
`
`Kramer Trenton Co. v. Walcutt
`161 USPQ 228 (C.C.P.A. 1969) ........................................................................................ 14
`
`Massey Junior Coll., Inc. v. Fashion Inst. of Tech.
`181 USPQ 272 (C.C.P.A. 1974) ........................................................................................ 14
`
`Palm Bay Imps Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772
`73 USPQ2d 1689 (Fed. Cir. 2005) ..................................................................................... 14
`
`Republic Steel Corp. v. M.P.H. Mfg. Corp.
`136 USPQ 447 (C.C.P.A. 1963) ........................................................................................ 16
`
`Smith v. Tobacco By-Products & Chemical Corp.
`113 USPQ 339 (C.C.P.A. 1957) ........................................................................................ 16
`
`Shen Mfg. Co. v. Ritz Hotel Ltd.
`73 USPQ.2d 1350 (Fed. Cir. 2004) ................................................................................ 7, 17
`
`Standard Brands Inc. v. Eastern Shore Canning Co.
`80 USPQ 318 (4th Cir. 1949), cert. denied, 337 U.S. 925 (1949) ........................................ 15
`
`Administrative Case s
`
`In re British Bulldog, Ltd.
`224 USPQ 854 (TTAB 1984) ............................................................................................ 18
`
`DM2\12558620.2.doc
`
`3
`
`

`

`In re Finetex Int’l (USA), Inc.
`1997 TTAB LEXIS 431 (TTAB 1997) ........................................................................ 14, 16
`
`Hyde Park Footwear Company, Inc. v. Hampshire-Designers, Inc.
`197 USPQ 639 (TTAB 1977) ............................................................................................ 18
`
`Plus Products v. Star-Kist Foods, Inc.
`220 USPQ 541 (TTAB 1983) ..............................................................................................7
`
`Quartz Radiation Corp. v. Comm/Scope Co.
` 1 USPQ.2d 1668 (TTAB 1986) ........................................................................................ 17
`
`In re Sears, Roebuck and Co.
`2 USPQ.2d 1312 (TTAB 1987) ......................................................................................... 18
`
`In re Sydel Lingerie Co.
`197 USPQ 629 (TTAB 1977) ............................................................................................ 18
`
`Fe de ral Statute s
`
`15 U.S.C. §1052(d)............................................................................................................... 5, 7
`
`15 U.S.C. §1051(b)...................................................................................................................5
`
`15 U.S.C. §1126(e) ...................................................................................................................5
`
`Manuals
`
`TMEP § 1207.01 ......................................................................................................................7
`
`TMEP § 1207.01(a)(i) ............................................................................................................ 17
`
`TMEP § 1207.01(b) ................................................................................................................ 14
`
`TMEP § 1207.01(b)(iii) ............................................................................................................7
`
`TMEP § 1207.01(b)(v) ........................................................................................................... 16
`
`TMEP § 1207.01(d)(iii) .......................................................................................................... 13
`
`Tre atise s
`
`McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition, § 23:48
`(5th ed.)..............................................................................................................................7
`
`DM2\12558620.2.doc
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`4
`
`

`

`APPEAL BRIEF FOR APPLICANT M&M FOOTWEAR INC.
`
`I.
`
`INTRODUCTION
`
`Applicant M&M Footwear Inc. (“Applicant”) appeals the Examining Attorney’s refusal to
`
`register NAVATEX in U.S. Application Serial No. 88/290,320 in connection with “Boots;
`
`Footwear; Waterproof boots,” in International Class 25 (“Applicant’s Mark”). The Examining
`
`Attorney’s refusal to register Applicant’s Mark under Section 2(d) of the Trademark Act of 1946,
`
`15 U.S.C. §1052(d), is improper because no likelihood of confusion exists with U.S. Registration
`
`No. 5,224,534 for the NAVTECH mark in connection with “Blazers; Jackets; Pants; Shorts;
`
`Sweaters; Swim trunks; Vests,” in International Class 25 (“Cited Mark”), owned by Nautica
`
`Apparel, Inc. (“Cited Registrant”).
`
`II.
`
`DESCRIPTION OF THE RECORD
`
`On February 5, 2019, Applicant filed U.S. Application Serial No. 88/290,320 under
`
`Trademark Act Section 1(b) and 44(e) for the NAVATEX trademark in connection with “Boots;
`
`Footwear; Waterproof boots,” in International Class 25.
`
`On April 17, 2019, the Examining Attorney issued a non-final office action refusing
`
`registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d) because of an alleged
`
`likelihood of confusion with U.S. Registration No. 5224534 for the NAVTECH trademark in
`
`connection with “Blazers; Jackets; Pants; Shorts; Sweaters; Swim trunks; Vests,” in International
`
`Class 25. The Examining Attorney asserted that the “factors [that] are the most relevant
`
`are: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels
`
`of the goods.” The Examining Attorney further asserted that “Slight differences in the sound of
`
`similar marks will not avoid a likelihood of confusion. (citation omitted) The Applied for Mark
`
`and The Registered Mark both begin with “NAV” and end with “TEX” or “TECH” which sound
`
`similar. This weighs heavily in favor of finding The Applied for Mark confusingly similar to The
`
`Registered Mark.” Additionally, the Examining Attorney asserted that Applicant’s goods and
`
`Registrant’s goods were related in a manner that would give rise to a likelihood of confusion. The
`
`DM2\12558620.2.doc
`
`5
`
`

`

`Examining Attorney attached “third-party marks registered for use in connection with the same or
`
`similar goods as those of both Applicant and Registrant” and argued “[t]his evidence shows that
`
`the goods listed therein, namely, Registrant’s blazers, shorts, jackets, pants, vests, sweaters, and
`
`swim trunks, and Applicant’s footwear and boots, are of a kind that may emanate from a single
`
`source under a single mark.”
`
`Applicant responded to the office action on July 9, 2019. Applicant provided arguments
`
`and evidence as to the difference in the appearance of Applicant’s Mark and the Cited Mark,
`
`including providing printouts of Cited Registrant’s website showing that the Cited Mark is used in
`
`conjunction with Cited Registrant’s ‘Nautica” mark. Furthermore, Applicant provided further
`
`evidence that Applicant only provides footwear, which is distinct from the premium clothing items
`
`that are provided by Cited Registrant. Applicant also provided Google Search Engine results for
`
`Applicant’s Mark and the Cited Mark. The results showed that when one mark was searched, this
`
`common search engine failed to return results for the other mark, suggesting that the marks are not
`
`confusing in their spelling.
`
`On July 18, 2019, the Examining Attorney issued a Final Office Action that maintained the
`
`refusal on the same grounds.
`
`Applicant
`
`responded
`
`to the Final Office Action by filing both a Request for
`
`Reconsideration and Notice of Appeal on January 17, 2020. See 1 TTABVUE; 4 TTABVUE.
`
`Applicant provided evidence and argument that NAV-formative marks are weak due to wide
`
`spread third-party use and, therefore, only provide a narrow scope of protection. As such,
`
`consumers are accustomed to differentiating between NAV-formative marks-- especially when the
`
`marks as a whole are dissimilar in sight, sound, and meaning and used in connection with disparate
`
`goods as is the case here. See 4 TTABVUE.
`
`The Board acknowledged, instituted, and suspended the appeal on the same day, remanding
`
`the Application
`
`to the Examining Attorney
`
`to consider
`
`the Applicant’s Request for
`
`Reconsideration. See 2 TTABVUE.
`
`
`DM2\12558620.2.doc
`
`6
`
`

`

`On February 18, 2020, the Examining Attorney responded to Applicant’s Request for
`
`Reconsideration, denying Applicant’s request. See 5 TTABVUE.
`
`III. THE REFUSAL TO REGISTER SHOULD BE REVERSED
`
`A.
`
`Standard for Like lihood of Confusion
`
`Likelihood of confusion between two marks is determined by a review of all of the relevant
`
`factors under the du Pont test. In re E.I. du Pont de Nemours & Co. (”du Pont”), 177 USPQ 563
`
`(CCPA 1973) (emphasis provided). The issue of likelihood of confusion typically revolves around
`
`the similarity or dissimilarity of the marks, and the relatedness of the goods or services. Federated
`
`Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24 (C.C.P.A 1976)(“The fundamental inquiry
`
`mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of
`
`the goods and differences in the marks.”). However, “there is no mechanical test for determining
`
`likelihood of confusion.” TMEP §1207.01 (citing du Pont, 177 USPQ at 567). Applicant
`
`respectfully submits that, when these factors are considered, consumers are not likely to mistakenly
`
`believe that Applicant’s goods emanate from the Registrant, or vice versa. Applicant’s Mark
`
`should therefore be allowed to proceed to publication on the Principal Register.
`
`B.
`
`The Cite d Mark is We ak Be cause the Re gister Is Replete with NAV-
`Formative Marks
`
`Applicant’s Mark and the Cited Mark are not likely to be confused because the NAV-
`
`formative is common and, therefore, weak and only entitled to a narrow scope of protection. When
`
`common elements of conflicting marks are “weak,” because the terms are in common use by many
`
`sellers in the market, then any likelihood of confusion is reduced. McCarthy, J. Thomas, McCarthy
`
`on Trademarks and Unfair Competition, § 23:48 (5th ed.). Even if two marks contain common
`
`elements, they are not likely to be confused if "the matter common to the marks is not likely to be
`
`perceived by purchasers as distinguishing sources because it is merely descriptive or diluted."
`
`TMEP § 1207.0l(b)(iii); see, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 393 F.3d 1238, 73 USPQ.2d
`
`1350 (Fed. Cir. 2004); see Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB
`
`1983) (considering evidence of third party registrations for PLUS-formative marks competent and
`
`
`DM2\12558620.2.doc
`
`7
`
`

`

`admissible to show the PTO registered numerous marks over the years containing term PLUS in
`
`vitamin field and concluding that "'PLUS' falls into the category of weak marks entitled to
`
`protection as against the substantially identical designation and/or to the subsequent use thereof
`
`on substantially similar goods").
`
`Applicant has submitted evidence that the Trademark Register consists of numerous active
`
`third-party registrations for NAV-formative marks in International Class 25 for which there are
`
`numerous different owners. See 4 TTABVUE Ex. A. For example, see the following marks:
`
`REGISTRATION/
`APPLICATION
`NO.
`
`MARK
`
`GOODS
`
`6,032,1921
`
`N NAVISIMA and De sign
`
`5833661
`
`NAVONTIE and De sign
`
`BANDANAS; BELTS MADE OF
`LEATHER; BOW TIES; FASHION
`HATS; HATS; HOODIES;
`NECKTIES; SOCKS; SOCKS AND
`STOCKINGS; SUSPENDER
`BELTS; SUSPENDER BELTS FOR
`MEN; SUSPENDER BELTS FOR
`WOMEN; SUSPENDERS;
`SUSPENDERS; T-SHIRTS; ANKLE
`SOCKS; ANKLETS; ANTI-
`PERSPIRANT SOCKS; BOAT
`SOCKS; GRAPHIC T-SHIRTS;
`MEN'S SOCKS; MEN'S DRESS
`SOCKS; NON-SLIP SOCKS;
`SLIPPER SOCKS; SOCK
`SUSPENDERS; STOCKING
`SUSPENDERS; THERMAL
`SOCKS; TOE SOCKS; TROUSER
`SOCKS; WATER SOCKS;
`WOOLLEN SOCKS; YOGA
`SOCKS
`
`BEACHWEAR; BOLO TIES; BOW
`TIES; CRAVATS; KNEE-HIGH
`STOCKINGS; LOUNGEWEAR;
`SHOULDER SCARVES;
`
`1 Applicant’s Request for Reconsideration includes the TSDR for U.S. Application Serial No. 88/402,957
`published for opposition on January 28, 2020. See 4 TTABVUE 14. On April 14, 2020, after Applicant filed its
`Request for Reconsideration, U.S. Application Serial No. 88/402,957 was registered on the Principal Register.
`
`DM2\12558620.2.doc
`
`8
`
`

`

`REGISTRATION/
`APPLICATION
`NO.
`
`MARK
`
`GOODS
`
`SLEEPING GARMENTS;
`STOCKINGS; TIES AS
`CLOTHING; WOMEN'S
`ATHLETIC TOPS WITH BUILT-IN
`BRAS; YOGA PANTS
`
`ATHLETIC APPAREL, NAMELY,
`SHIRTS, PANTS, JACKETS,
`FOOTWEAR, HATS AND CAPS,
`ATHLETIC UNIFORMS;
`BATHROBES; BIKINIS; BOOTS;
`CHILDREN'S AND INFANT'S
`APPAREL, NAMELY, JUMPERS,
`OVERALL SLEEPWEAR,
`PAJAMAS, ROMPERS AND ONE-
`PIECE GARMENTS; COATS;
`DRESSES; FLIP FLOPS; GLOVES;
`HATS; HEELS; JACKETS; JEANS;
`LEATHER SHOES; LINGERIE;
`LOAFERS; PAJAMAS; PANTS;
`RAINCOATS; ROBES; SANDALS;
`SCARVES; SHOES; SLIPPERS;
`SPORTS SHOES; SUITS;
`SWIMWEAR; T-SHIRTS; WINTER
`COATS; SWEAT SUITS
`
`WATERPROOF JACKETS AND
`PANTS
`
`ATHLETIC APPAREL, NAMELY,
`SHIRTS, PANTS, JACKETS,
`FOOTWEAR, HATS AND CAPS,
`ATHLETIC UNIFORMS; BABIES'
`PANTS; BATHING CAPS;
`BATHING SUITS; BATHING
`TRUNKS; BERETS; CLOTHING
`LAYETTES; CYCLING SHORTS;
`FISHING VESTS; FOOTBALL
`SHOES; GIRDLES; GLOVES;
`GOLF PANTS, SHIRTS AND
`SKIRTS; GOLF SHORTS; GYM
`PANTS; GYM SHORTS; GYM
`SUITS; GYMNASTIC SHOES;
`HUNTING PANTS; HUNTING
`VESTS; JACKETS; JOGGING
`
`5649158
`
`NAVOKU
`
`5880821
`
`NAVIS MARINE
`
`5535845
`
`NAVISKIN and De sign
`
`DM2\12558620.2.doc
`
`9
`
`

`

`REGISTRATION/
`APPLICATION
`NO.
`
`MARK
`
`GOODS
`
`PANTS; LEG-WARMERS;
`LEGGINGS; MITTENS;
`NECKTIES; OVERALLS; POLO
`SHIRTS; PULLOVERS; RUNNING
`SUITS; SCARVES; SHAWLS;
`SHIRTS; SKI BOOTS; SKI
`GLOVES; SMOCKS; SOCKS;
`SPORTS BRAS; SPORTS
`JERSEYS; SPORTS SHOES;
`SPORTS SINGLETS; SPORTS
`VESTS; STOCKINGS; SURF
`WEAR; SUSPENDERS;
`SWEATERS; SWIM WEAR; TEE-
`SHIRTS; TIGHTS; TROUSERS;
`UNDERPANTS; UNDERWEAR;
`WET SUITS FOR WATER-
`SKIING; WIND-RESISTANT
`VESTS; WIND RESISTANT
`JACKETS; WIND SHIRTS;
`WINDBREAKERS; WOMEN'S
`TOPS, NAMELY, CAMIS;
`WOMEN'S UNDERWEAR; YOGA
`PANTS
`
`BABIES' PANTS; BATHING
`CAPS; BATHING TRUNKS;
`BERETS; FISHING VESTS;
`FOOTBALL SHOES; GIRDLES;
`GLOVES; GYMNASTIC SHOES;
`JACKETS; LEG-WARMERS;
`LEGGINGS; MITTENS;
`NECKTIES; OVERALLS;
`PULLOVERS; SCARVES;
`SHAWLS; SHIRTS; SKI BOOTS;
`SKI GLOVES; SMOCKS; SOCKS;
`SPORTS JERSEYS; SPORTS
`SHOES; SPORTS SINGLETS;
`STOCKINGS; SUSPENDERS;
`SWEATERS; TIGHTS;
`TROUSERS; UNDERPANTS;
`UNDERWEAR; WET SUITS FOR
`WATER-SKIING; CLOTHING
`LAYETTES
`
`5535111
`
`NAVISKIN
`
`
`DM2\12558620.2.doc
`
`10
`
`

`

`REGISTRATION/
`APPLICATION
`NO.
`
`MARK
`
`GOODS
`
`5542126
`
`5364308
`
`NAV
`
`NAVANTE
`
`5472034
`
`NAVIANO
`
`87409343 (Notice
`of Allowance)
`
`NAVIQ
`
`5066555
`
`NAVARRO and De sign
`
`
`DM2\12558620.2.doc
`
`11
`
`T-SHIRTS; SWEATSHIRTS; HATS
`
`APRONS; BANDANAS;
`BATHROBES; BELTS; BIKINIS;
`BLOUSES; BOXER SHORTS;
`BRAS; CAMISOLES; CAPRI
`PANTS; CHILDREN'S AND
`INFANT'S APPAREL, NAMELY,
`JUMPERS, OVERALL
`SLEEPWEAR, PAJAMAS,
`ROMPERS AND ONE-PIECE
`GARMENTS; DRESSES;
`FOOTWEAR; GLOVES; GOLF
`SHIRTS; HATS; HEADBANDS;
`HOODED PULLOVERS;
`JACKETS; JEANS; LEGGINGS;
`NIGHTGOWNS; OVERALLS;
`PAJAMAS; PANTS; POLO
`SHIRTS; PONCHOS;
`PULLOVERS; RAIN COATS;
`SCARVES; SHORTS; SWEATERS;
`SWEATPANTS; SWEATSHIRTS;
`T-SHIRTS; TANK-TOPS; TIES AS
`CLOTHING; TIGHTS; TROUSERS;
`TURTLE NECK SHIRTS;
`UNDERWEAR; UNIFORMS;
`VESTS
`
`CLOTHING, NAMELY, VEILS;
`CLOTHING, NAMELY, DRESSES,
`INCLUDING WEDDING DRESSES
`
`MEN'S, WOMEN'S AND
`CHILDREN'S CLOTHING AND
`INFANT WEAR, NAMELY,
`SHIRTS, SHORTS, BEACHWEAR
`AND FLIP FLOPS
`
`CLOTHING, NAMELY, T-SHIRTS,
`SHIRTS, JUMPERS, TROUSERS,
`SKIRTS, BATHING SUITS,
`JEANS, JACKETS, UNDERWEAR,
`SWEAT BANDS, HATS,
`TRAINING SUITS,
`SWEATSHIRTS, GLOVES, TIGHT
`
`

`

`REGISTRATION/
`APPLICATION
`NO.
`
`MARK
`
`GOODS
`
`4987830
`
`NAVIO
`
`PANTS, SPORTS BRAS, NECK
`WARMERS BEING SCARVES
`AND EAR WARMERS
`
`CLOTHING, NAMELY, TIES AND
`HATS
`
`NAVSS and De sign
`
`SHIRTS; SHOES; SHORTS
`
`NAVALO
`
`FOOTWEAR
`
`NAVS and De sign
`
`HATS; JACKETS; POLO SHIRTS;
`T-SHIRTS
`
`ATHLETIC PANTS; BATHING
`SUITS; BELTS; BLOUSES; BODY
`SUITS; BOTTOMS; COATS FOR
`MEN AND WOMEN; COLLARED
`SHIRTS; DRESS SHIRTS;
`DRESSES; FOOTWEAR FOR MEN
`AND WOMEN; HATS; JACKETS;
`KNIT SHIRTS; LEOTARDS AND
`TIGHTS FOR WOMEN, MEN AND
`CHILDREN OF NYLON, COTTON
`OR OTHER TEXTILE FIBERS;
`MEN'S SUITS, WOMEN'S SUITS;
`PANTS; SHIRTS; SKIRT SUITS;
`SKIRTS; SKIRTS AND DRESSES;
`SOCKS AND STOCKINGS;
`SWEAT PANTS; T-SHIRTS; TANK
`TOPS; TOPS; UNDERWEAR;
`WOMEN'S CLOTHING, NAMELY,
`SHIRTS, DRESSES, SKIRTS,
`BLOUSES; YOGA PANTS
`
`SHIRTS, T-SHIRTS,
`SWEATSHIRTS, HATS, JACKETS
`
`SHIRTS, T-SHIRTS,
`SWEATSHIRTS, HATS, JACKETS
`
`BASEBALL CAPS, COLLARED
`SHIRTS, GOLF SHIRTS, HATS,
`JACKETS, POLO SHIRTS,
`SPORTS SHIRTS, SWEATSHIRTS
`AND TEE SHIRTS
`
`5009017
`
`4942343
`
`4576018
`
`4560251
`
`NAVEN
`
`4558242
`
`NAVITAT
`
`4578294
`
`NAVITAT and De sign
`
`4427688
`
`NAVISTAR
`
`
`DM2\12558620.2.doc
`
`12
`
`

`

`REGISTRATION/
`APPLICATION
`NO.
`
`MARK
`
`GOODS
`
`4247982
`
`NAVABI
`
`3933854
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`NAVIGO
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`CLOTHING, NAMELY, SHIRTS,
`BLOUSES, TOPS, PULLOVERS,
`VESTS, DRESSES, SKIRTS,
`PANTS, SHORTS, JACKETS,
`COATS [, BELTS, GLOVES,
`FOOTWEAR, HEADGEAR,
`NAMELY, HATS AND CAPS ]
`
`[CLOTHING, NAMELY,
`TROUSERS, VESTS, SHIRTS, T-
`SHIRTS, HATS, CAPS, WIND
`VESTS
`
`The Examining Attorney disregarded this evidence stating that “Third-party registrations
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`are entitled to little weight on the issue of confusing similarity.” See 5 TTABVUE. However, as
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`previously explained, “active third-party registrations may be relevant to show that a mark or a
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`portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other
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`elements to distinguish the source of the goods or services.” TMEP § 1207.01(d)(iii).
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`Based on the amount of registered third-party NAV-formative marks in International Class
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`25owned by different trademark owners , the Trademark Office has already determined that NAV-
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`formative marks are commonly used in the industry for the same and/or highly similar goods.
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`Thus, by extension, the evidence confirms that consumers are accustomed to distinguis h ing
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`between NAV-formative marks by looking to other elements and that the Cited Mark is entitled to
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`a very limited scope of protection. It was therefore erroneous for the Examining Attorney to
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`disregard Applicant’s evidence in its likelihood of confusion analysis. Considering the existence
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`of and the Trademark Office’s treatment of the foregoing registrations, along with the Cited Mark’s
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`co-existence on the register with those marks, Applicant’s Mark should be similarly registerable.
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`C.
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`The Marks Are Dissimilar in Appe arance , Sound, Connotation and
`Comme rcial Impre ssion
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`In addition to the foregoing, there is no similarity in the sight, sound, and meaning of the
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`respective marks. See Palm Bay Imps Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
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`396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) (“the legal test for similarity [i]s whether the
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`marks ‘when compared in their entireties in terms of appearance, sound and connotation, are
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`similar or dissimilar in their overall commercial impressions.’”); TMEP § 1207.01(b).
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`The only similarity between the Cited Mark and Applicant’s Mark is that they all share a
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`NAV-formative, which as explained above, is a strongly diluted term in general and specifically
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`in International Class 25. This basis of similarity between marks is invalid as a mark must be
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`considered in its entirety and must not have its elements separated and considered in detail. It is a
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`violation of the anti-dissection rule to focus on a feature of a mark and decide whether confusion
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`is likely solely upon that feature, ignoring all other elements of the mark. See Massey Junior Coll.,
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`Inc. v. Fashion Inst. of Tech., 181 USPQ 272, 275 (C.C.P.A. 1974) (“That marks must be
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`considered in their entireties in determining whether there is a likelihood of confusion or mistake
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`is a basic rule in comparison of marks.”); Franklin Mint Corp. v. Master Mfg. Co., 212 USPQ 233,
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`235 (C.C.P.A. 1981) (“It is axiomatic that a mark should not be considered piecemeal, rather it
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`must be considered as a whole in determining likelihood of confusion”); See e.g., Kramer Trenton
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`Co. v. Walcutt, 161 USPQ 228 (C.C.P.A. 1969) (finding that there was no likelihood of confusion
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`when the principal similarity between the marks WINTERIZER and WINTERSTAT for
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`refrigeration systems was the prefix WINTER); Air Products, Inc. v. Marquette Mfg. Co., 133
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`USPQ 192 (C.C.P.A. 1962) (holding that there was no likelihood of confusion when the principal
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`similarity between the marks REDI-SET and REDI-ARC was the common use of the prefix
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`REDI).
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`Moreover, even a single letter difference between marks is sufficient to provide different
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`pronunciations and different connotations of each respective mark. See In re Finetex Int'l (USA),
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`Inc., 1997 TTAB LEXIS 431 (TTAB 1997) (Board reversing the examining attorney, FINETEX
`
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`not confusingly similar to FINTEX). Mere assumptions that two marks could possibly be
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`pronounced in the same manner is not substantial evidence of a likelihood of consumer confusion,
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`particularly where there is strong evidence that the marks impart a different commercial meaning.
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`Crown Radio Corp. v. Soundscriber Corp., 184 USPQ 221, 222 (CCPA 1974) (“As we stated in
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`General Electric Company Limited v. Jenaer Glaswerk Shott & Gen, 144 USPQ 427 (1965),
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`confusing similarity cannot be predicated on auditory response alone and one must consider the
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`impression on the mind where stimuli of the auditory nerve are registered”); Standard Brands Inc.
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`v. Eastern Shore Canning Co., 80 USPQ 318 (4th Cir. 1949), cert. denied, 337 U.S. 925 (1949)
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`(V-8 and VA not confusingly similar, “the phonetic similarity of the two marks cannot prevail,
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`even if it is supposed … that the defendant’s goods are asked for as VA rather than as Virginia
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`tomato juice or lima beans”).
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`1.
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`Applicant’s Mark and the Cite d Mark Are Phone tically and Visually
`Diffe re nt.
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`The differences between Applicant’s Mark and the Cited Mark are significant and warrant
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`a reversal of the Examining Attorney’s refusal. The Examining Attorney argues that the marks are
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`similar in sight and sound because “the terms NAVA and NAV and TEX and TECH are similar to
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`each other.” See 5 TTABVUE. However, as stated above, the Examining Attorney must consider
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`the marks “in their entireties” in considering whether the marks appear the same, sound the same,
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`and/or convey the same commercial impressions in determining a likelihood of confusion. du
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`Pont, 177 USPQ 563.
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`By dissecting each respective mark, the Examining Attorney has disregarded the other
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`dissimilar elements of the mark as a whole. As explained above, because consumers are
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`accustomed to seeing NAV-formative mark, greater weight will be provided to the dissimilar
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`portions of the mark. When reviewed in their entirety the marks are visually different, with
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`Applicant’s Mark including the additional letters “a” and “x” and omitting the letters “c” and “h.”
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`Applicant also has previously submitted evidence that when each respective mark is entered into
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`the common search engine Google, the results do not include references to the other mark. See
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`July 8, 2019 Response to Office Action, Ex. 5. While not dispositive, it is probative that a search
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`engine designed to make associations between similar words does not return combined results for
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`allegedly confusingly similar marks.
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`Additionally, Applicant’s Mark differs significantly in sound from the Cited Mark. The
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`Cited NAVTECH Mark is two syllables “nav-tech” and ends in a hard “k” sound. In comparison,
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`Applicant’s NAVATEX Mark is three syllables and the pronunciation includes either a short or
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`long “a” sound in the middle and with a “ks” sound at the end. The Examining Attorney
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`disregarded the clear phonetic differences between the marks. Instead, the Examining Attorney
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`conclusively asserted “the marks in question could clearly be pronounced the same.” See 5
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`TTABVUE. This assertion is unsupported when the marks at issue include different and additional
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`letters that would preclude a similar pronunciation.
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`In In re Finetex Int'l (USA), Inc., the Board found that while there was only a single letter
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`difference between the FINETEX and FINTEX mark, the single letter was “likely to lead to
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`different pronunciations and different connotations of the respective marks.” 1997 TTAB
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`LEXIS *4. Similarly, here, the additional “a” in the NAVATEX mark is likely
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`to lead
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`to a different pronunciation from the NAVTECH mark.
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`2.
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`The Marks Are Dissimilar In Me aning and Conve y Diffe re nt
`Comme rcial Impre ssions.
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`Moreover, there tends to be no likelihood of confusion where compared marks suggest
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`something different to consumers. See Smith v. Tobacco By-Products & Chemical Corp., 113
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`USPQ 339 (C.C.P.A. 1957) ; see also Republic Steel Corp. v. M.P.H. Mfg. Corp., 136 USPQ 447
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`(C.C.P.A. 1963) (different connotation of TRUSS-SKIN vs. TRUSCON for metal building parts).
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`Here, confusion is unlikely because the marks at issue convey different meanings and
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`evoke completely dissimilar commercial impressions. See TMEP § 1207.01(b)(v) (“[t]he meaning
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`or connotation of a mark must be determined in relation to the named goods”). Cited Mark’s suffix
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`“-tech” provides a connotation distinct from that of Applicant’s Mark. “Tech” is a common
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`abbreviation for the word “technology”. See 4 TTABVUE Ex. B. As such, Cited Registrant’s
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`NAVTECH mark implies that Registrant’s clothing items have a technical benefit or are comprised
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`of technologically advanced material or structure. This is further evidenced by Cited Registrant’s
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`own website that promotes the “innovative
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`fabrics” and “NAVTECH PERFORMANCE
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`FEATURES”
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`including
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`“ACTIVE STRETCH”, “MOISTURE WICKING”, “WATER
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`REPELLENT” and “REFLECTIVE LINING”. See 4 TTABVUE Ex. C. Registrant even focuses
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`on the “TECH” portion of the Cited Mark on its website by placing “TECH” in a different font
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`and color, compared to the “NAV” portion of the mark. Id.
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`In stark contrast, the suffix “-atex” or “-tex” of Applicant’s NAVATEX Mark, as well as
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`Applicant’s Mark as a whole, has no discernable meaning.
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`Accordingly, the different connotations between NAVTECH as clothing with advanced
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`technology and NAVATEX as a made up word would be perceived and appreciated by the relevant
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`consumers, and the overall distinctive commercial impressions between the marks are sufficient
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`to avoid a likelihood of confusion.
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`D.
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`Applicant’s Mark and the Cite d Mark Are Use d In Conne ction With
`Dissimilar Goods
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`Applicant's Mark is not likely to be confused with the Cited Mark because the marks cover
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`different goods that are competitively distanced. Applicant's Mark covers specific types of boots
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`and footwear, which are not related to the blazers, jackets, pants, shorts, sweaters, swim trunks,
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`and vests covered by the Cited Mark. If the various goods in question are not related, confusion is
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`not likely. TMEP § 1207.0l(a)(i); see Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238,
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`1244 (Fed. Cir. 2004) (RITZ for cooking classes and RITZ for kitchen textiles held not confusingly
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`similar because the goods and services are not related); Quartz Radiation Corp. v. Comm/Scope
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`Co., 1 USPQ.2d 1668, 1669-70 (TTAB 1986) (QR for coaxial cable held not confusingly similar
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`to QR for various products ( e.g., lamps, tubes) related to the photocopying field).
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`Here, the Applicant's Mark specifically covers sturdy and practical waterproof, cold
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`weather boots and footwear. See July 9, 2019 Response to Office Action, Ex. 3. In contrast, the
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`registration for the Cited Mark does not include footwear, let alone specific types of cold weather
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`boots. Id., Ex. 4. Rather, Registrant provides dressy, premium clothing items, such as blazers,
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`vests, and jackets. Id.
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`The sole fact that the goods covered by the two marks relate in some manner to items that
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`are worn is insufficient to create a likelihood of confusion. See Hyde Park Footwear Company,
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`Inc. v. Hampshire-Designers, Inc., 197 USPQ 639 (TTAB 1977) (mark covering pant tops and
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`body shirts not likely to be confused with mark covering boots and shoes of rubber and canvas);
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`In re Sears, Roebuck and Co., 2 USPQ.2d 1312 (TTAB 1987) (no likelihood of confusion between
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`CROSS-OVER for brassieres and CROSSOVER for ladies' sportswear); In re British Bulldog,
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`Ltd., 224 USPQ 854 (TTAB 1984)(no likelihood of confusion between PLAYERS for shoes and
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`PLAYERS for men's underwear); and In re Syd