TTAB - Trademark Trial and Appeal Board - *1 HENRY I. SIEGEL CO. v. M & R INTERNATIONAL MFG. CO. INC. Cancellation No. 14,253 July 28, 1987

Trademark Trial and Appeal Board

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





Cancellation No. 14,253

July 28, 1987

Hearing: November 18, 1986


Albert Robin and Robin, Becker & Daley for Henry I. Siegel Co.



Law Offices of Richard Morganstern for M & R International Mfg. Co. Inc.



Before Rice, Rooney and Cissel






Opinion by Rice






 A petition has been filed by Henry I. Siegel Co. to cancel a registration of the mark 'L.A. CHIC' issued to M & R International Mfg. Co. Inc. for ladies' blouses, tops and shirts; children's blouses, skirts and skirt sets. [FN1] The registration includes a disclaimer of the letters 'L.A.' apart from the mark as shown.



 The petition for cancellation is based upon petitioner's assertions of prior use and registration of the mark 'CHIC' for womens' clothing, namely, jeans, [FN2] coupled with an allegation of likelihood of confusion. Petitioner also asserts that it has extended its use of its mark 'CHIC' to other items of women's clothing, including tops.



 Respondent, in its response to the petition for cancellation, denies the salient allegations contained therein; asserts affirmatively that petitioner's registered mark is a 'weak' mark entitled to but a limited scope of protection; and counterclaims for cancellation of petitioner's registration on the asserted ground that the registered mark, when applied to the goods of the petitioner, is merely descriptive of them. [FN3] Petitioner, in its answer to the counterclaim, denies the allegation of mere descriptiveness.



 The record consists of the pleadings; the file of respondent's involved registration; the file of petitioner's pleaded registration, which is the subject of respondent's counterclaim; a large number of materials made of record by respondent by notice of reliance, including a status and title copy of another registration (and of its file history) issued to petitioner, [FN4] copies of third-party registrations, copies of pages from various publications of general circulation, petitioner's responses to certain of respondent's interrogatories and to respondent's request for admission No. 7, [FN5] etc.; and testimony in behalf of each party (including, for petitioner, both a deposition taken during its time for testimony-in-chief, and a Trademark Rule 2.123(b) stipulation as to what a certain witness would testify to if called, offered by petitioner as its rebuttal testimony). Both parties have briefed the issues before us and were represented at the oral hearing held on the case.



 Petitioner is and, since long prior to its first use of its mark 'CHIC' has been, engaged in the business of manufacturing and marketing clothing for men, women, and children. The record shows that petitioner first used the designation 'CHIC' as a trademark for jeans on November 23, 1977, and has continuously used the mark on such goods ever since. While the mark was originally used on both men's and women's jeans, the men's jeans were discontinued during the early years. Use of the mark was extended to women's tops beginning May 30, 1980. Petitioner has also used the mark on children's clothing (since at least 1982), and on women's skirts, shorts, and capri pants. The mark is used on the goods in divers ways (but always in the manner of a mark), such as by embroidering or screenprinting it on the goods, and by applying it to labels, hang tags, and point-of-sale materials for the goods.



  *2 Petitioner's 'CHIC' products are sold in approximately 14,000 to 17,000 retail stores throughout the United States, including many of the same retail stores in which respondent's goods are sold. Indeed, petitioner's 'CHIC' sales to the five retail stores or chains which were apparently respondent's biggest customers in 1985, amounted to more than $1,000,000 each for the period November 1983 through February 1986.



 Petitioner has promoted its 'CHIC' products extensively through the use, inter alia, of rebate offers, promotional giveaways (the giveaway items have included skirts, jackets, jogging suits, workout suits, and underwear), a lottery, and through advertising on radio and television, in magazines and newspapers, and in trade publications. Petitioner's consumer advertising began at least as early as 1978. By 1981, petitioner's annual 'CHIC' promotional expenditures had grown to more than $7,000,000; they increased to nearly $20,000,000 for each of the years 1982 and 1983 then dropped back to more than $11,000,000 in 1984, for a five-year total of more than $60,000,000 (these figures do not include the cooperative advertising expenditures of retailers who carry petitioner's goods).



 Petitioner's sales of 'CHIC' women's and misses' clothing, namely, tops and bottoms, which account for the bulk of petitioner's 'CHIC' sales, have been quite substantial, having grown steadily from more than $92,000,000 in 1980 to approximately $183,000,000 in 1983, and then decreased to in excess of $136,000,000 in 1984. While petitioner's earlier annual 'CHIC' sales figures are not readily available, the record (including the interrogatory answers relied on by respondent) does indicate that from November 27, 1977 through March 30, 1979, petitioner shipped 1,527,298 pairs of jeans (with a total wholesale value of a least ten times that much) bearing the mark 'Chic by h.i.s.' (with the mark 'CHIC' being presented in such a manner as to create a commercial impression separate and distinct from the designation 'by h.i.s.').



 Further, an examination of the various hang tags and labels made of record by petitioner reveals that petitioner has used the mark 'CHIC' (almost always presented in special form) in combination with other terminology, such as 'chic by h.i.s.', 'chic for Women', 'chic for Petites', 'chic for Toddlers', 'Ms. chic', 'Maternity chic', 'Sunset Blues by chic', 'USA Chic', 'chic by h.i.s. MADE IN USA', 'SUPER SLIMS by chic MADE IN USA', 'chic Control', and 'chic Sport'.



 Finally, petitioner's record shows that on May 1, 1985, petitioner and a third party, Heralcorp Industries, entered into an agreement in settlement of a civil action filed by petitioner against Heralcorp, whereby Heralcorp agreed to cease using the mark 'CHIC PETITE' for clothing and to abandon its then-pending application to register the same.



 Respondent, a corporation located in Los Angeles, California, is engaged in the business of manufacturing and marketing ladies' and children's clothing (not including jeans). Respondent first used the mark 'L.A. CHIC' in connection with ladies' blouses on March 16, 1978. In January of 1980, respondent expanded its use of the mark to children's blouses. By the time of its testimony period, the goods sold under the mark included skirts, coordinate groups (including pants), tops, blouses, and shirts for ladies and children.



  *3 Respondent's president, Mr. Maya, testified that when respondent adopted its mark, it had no knowledge of petitioner or of petitioner's claim to rights in 'CHIC' as a mark. With respect to the derivation of the mark, Mr. Maya testified (at page 5 of his deposition) as follows:

   It was sort of a family thing between my partner and myself, our wives. We thought of L.A. describing the geographical area which we are in, Los Angeles, and 'chic' used as an adjective, describing the type of clothes we were going to manufacture . . .. We thought of the California market becoming an important part of the clothing industry, so again, we are mentioning the word 'L.A.' and 'chic', meaning pretty or liked or elegant.



 Respondent sells its 'L.A. CHIC' clothes to chain retail stores, such as K-Mart and Target, throughout the United States. It gives its customers an advertising allowance which they use for promoting respondent's goods essentially through inserts in newspapers and through advertising circulars. Respondent's wholesale sales of 'L.A. CHIC' clothing have grown from nearly $500,000 in 1978 to more than $3,000,000 in 1981 to slightly less than $5,000,000 in 1984 to nearly $8,400,000 for the first ten months of 1985. [FN6]



 Respondent's evidentiary record contains a large number of exhibits offered in support of both respondent's counterclaim that 'CHIC' is merely descriptive as applied to petitioner's goods, and respondent's affirmative assertion that 'CHIC' is a 'weak' mark entitled to but a limited scope of protection. The most pertinent pieces of evidence offered by respondent are described below.



 First, there are a number of dictionary definitions of the word 'chic.' For example, in the Webster's Deluxe Unabridged Dictionary (Second Edition), the adjective 'chic' is defined as 'stylish and original; effective in style; elegant; clever and fashionable' and the noun 'chic' is defined as 'elegance and originality in attire; cleverness of style: said especially of women or their clothes.' Similarly, in The Random House Dictionary of the English Language (1979), the adjective 'chic' is defined as 'attractive and fashionable in style; stylish: a chic hat' (emphasis in original), while the noun 'chic' is defined as 'style and elegance, esp. in dress: Paris clothes have such chic' (emphasis in original) and as 'stylishness; modishness; fashionableness: She admired the chic of the first-nighters' (emphasis in original).



 In the same vein, respondent has made of record portions of a large number of magazine and newspaper articles wherein the term 'chic' is used in its ordinary dictionary sense. Examples of these uses include, inter alia, 'High-attitude jackets, in pieced together, faded, recycled denim, colorful shirts, and over-sized sweaters are inspired by the endearingly rakish clothes French rockers rehearse and rock in, love and live in. They're chic.' (from the April 1986 Mademoiselle); 'The New Chic of Chiffon' (title of an article in the May 6, 1984 New York Times Magazine); 'Making peace with chic--how clothes soothe the savage breast, seduce the soul, and charm the senses' (emphasis in original) (title of an article in the August 1984 Vogue); from the April 1983 Mademoiselle, articles entitled 'Chic Cheeks How to Use Blush Like a Pro' and 'Chic on the Cheap: A Riches-to-Rags Story', the latter of which pertains to clothing and contains the sentences '. . . the Torn T-shirt Look. This look is terrific news for those of us who are struggling to keep chic on a shoestring', and 'Particularly chic: a gold safety pin holding up a torn strap of a '50s push-up bra . . .'; '. . . I was certain she could explain why French women are more chic than others.' (from the August 1982 Cosmopolitan); 'What a Feeling.' Chic Dresses are Turning Maniac for That Sexy, Torn-Up Flashdance Look' (title of an article in the August 8, 1982 People); 'Simple and Chic . . . May Be the Spark of New York Designers' Spring Collections' (title of an article in the October 25, 1985 Los Angeles Times); 'Marc Bohan launched the Paris fall couture season Monday with his naughty, smart-chic collection for Dior.' (from the July 23, 1985 Women's Wear Daily); 'The Triumph of Executive Chic--The dress-for-success blues give way to the assured elegance of the executive suite as women of the corporation use the language of clothes . . .' (from the November 1985 Working Woman); and 'Running-Shoe Chic' (title of an article in the December 27, 1976 New York Magazine).



  *4 Next, respondent has relied upon copies of a number of third-party registrations, the most relevant of which include 'SLICK 'N CHIC' for panty girdles (expired in 1977), 'CHIC' for fabrics by the yard or bolt of cotton and/or synthetic fibers (expired in 1983), 'CHICATIQUE' for women's and girls' dresses, coats, hats, and underwear (issued in 1967 and not yet expired), 'CHIC'S 'N TEENS' for female children's and misses' clothing (issued in 1970 and subsisting), 'TRIC-O-CHIC' for foundation garments, lingerie, sleepwear, and loungewear (issued to Maidenform, Inc. in 1970 and subsisting), 'CRO-CHIC' for foundation garments and lingerie (issued to Maidenform, Inc. in 1972 and subsisting), 'BABY CHIC' and chicken design for infants' and children's clothing (issued in 1975 and thereafter cancelled as the result of a cancellation proceeding by a third party), 'LEDERCHIC' and ram design ('LEDER' disclaimed) for skirts, lingerie, jackets, dresses, etc. (issued in 1977 and cancelled under Section 8), 'CHICCA' and dog design ('CHICCA' is said in the registration to be an Italian pet name used to call children) for ladies' and men's clothing (issued in 1979 and cancelled under Section 8), 'SHEIK JEANS' ('JEANS' disclaimed) for men's and women's jeans (issued in 1981), 'CHIC FILLE' (translated in the registration as 'stylish girl') for children's apparel, including jeans (issued in 1981 and subsisting), 'SHEEPCHIC' and sheep design for dresses, shirts, skirts, pants, etc., made in whole or in part of wool (issued in 1982 and subsisting), 'EXTRA CHIC WOMAN' for skirts and dresses (issued in 1983 and subsisting), 'BODY CHIC' for ladies' lingerie (issued to Lady Ester Lingerie Corp. in 1983 and subsisting), 'LA CHIC' and design of ballet slippers for dancewear, namely, leotards, tee shirts, and jackets (issued in 1984 and subsisting), 'KID CHIC' ('KID' disclaimed) for infants' and toddlers' jeans (issued to Elkay Industries, Inc. in 1985 and subsisting), and 'L'ENFANT CHIC' ('L'ENFANT,' meaning 'infant,' disclaimed) for children's dresses and infants' dressing gowns (issued to A.R.H., Ltd. in 1985 and subsisting). The record also includes a good number of registrations of marks containing the term 'CHIC' for shoes and for hosiery, as well as registrations of such marks for buttons, zippers, nail polish, cosmetics, and wigs.



 Respondent's record further includes a copy of the file history of petitioner's recently issued registration (namely, Registration No. 1,349,508, issued July 16, 1985) for the mark 'CHIC' for women's clothing, namely, tops comprised of blouses, woven and knitted sleeved and sleeveless shirts, sweatshirts and jackets. The file shows that registration was initially refused under Section 2(e)(1) of the Trademark Act of 1946 on the ground that the mark 'CHIC', as applied to the goods in question, was merely descriptive of them, it being asserted by the Examining Attorney that the mark 'merely describes applicant's goods as 'currently fashionable' and is a laudatory term.' However, the Examining Attorney indicated that registration would be allowed under Section 2(f) based on petitioner's ownership of its earlier registration of 'CHIC' for women's jeans, if petitioner wished to claim distinctiveness. In its response, petitioner maintained that the mark 'CHIC', as applied to women's tops, was not merely descriptive of them, but added the following:

    *5 However, since the Trademark Attorney has indicated that registration will be allowed based on applicant's ownership of Registration No. 1,135,189, if applicant wishes to claim distinctiveness, and since applicant desires to obtain a registration at the earliest possible date, applicant claims distinctiveness based upon its ownership of Registration No. 1,135,189.



 Petitioner's registration of 'CHIC' for women's tops thereafter issued on the Principal Register under the provisions of Section 2(f) based upon petitioner's ownership of its earlier registration of the mark for women's jeans. [FN7]



 Finally, there is evidence indicating that neither party is aware of any instances of actual confusion resulting from the contemporaneous use of the marks here involved in connection with the respective goods of the parties. [FN8]



 We turn first to respondent's counterclaim to cancel petitioner's registration of the mark 'CHIC' for women's jeans on the ground that the mark, when applied to such goods, is merely descriptive of them within the meaning of Section 2(e)(1). It is well settled that a term is merely descriptive if, as applied to the goods or services in question, it describes an ingredient, quality, characteristic, function, feature, composition, purpose, attribute, use, etc. of such goods or services. See: In re Abcor Development Corp., 616 F.2d 525, 200 UPSQ 215 (CCPA 1978); In re American Screen Process Equipment Co., 175 USPQ 561 (TTAB 1972); In re Universal Water Systems, Inc., 209 USPQ 165 (TTAB 1980); and cases cited therein.



 The question of whether a particular term is merely descriptive must be determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which the mark is used, and the significance that the mark is likely to have, because of the manner in which it is used, to the average purchaser as he encounters goods bearing the mark in the marketplace. See: In re Abcor Development Corp., supra; In re Nibco Inc., 195 USPQ 180 (TTAB 1977); and cases cited therein.



 In the present case, it is clear, from the dictionary definitions and other evidence of record, that the term 'CHIC' has a descriptive significance (i.e., stylish, elegant) as applied to clothing. On the other hand, 'CHIC', when used in connection with women's jeans, can also be regarded as a misspelling, and a phonetic equivalent, of the word 'chick' [which is defined in Webster's New World Dictionary (1986) as 'a chicken', 'any young bird,' 'a child: term of endearment,' and 'a young woman'], a significance which is demonstrated by several of the third-party registrations made of record by respondent. Under the circumstances, we believe that the term 'CHIC', as applied to petitioner's women's jeans, projects a double meaning, i.e., a double entendre, and hence is not (and was not at the time of its first use) merely descriptive within the contemplation of Section 2(e)(1). See, for example: In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968), and In re National Tea Co., 144 USPQ 286 (TTAB 1965). Indeed, it could well be that this is the reason why, in petitioner's application to register the mark for women's jeans, registration was never refused under Section 2(e)(1).



  *6 Aside therefrom, we are of the opinion that the evidence adduced by the petitioner is quite sufficient to show that the mark 'CHIC' has become distinctive of petitioner's goods in commerce, that is, has come to be regarded by the public as an indication of the origin of such goods in a single source. Distinctiveness, or secondary meaning, may be proved either through direct evidence, such as purchaser testimony or consumer surveys, or through circumstantial evidence, including the manner and length of use of the mark, the nature and extent of the advertising and promotion thereunder, the resulting magnitude of sales made under the mark, etc. See, for example: J. Thomas McCarthy, Trademarks and Unfair Competition (Second Edition 1984), at § 15:10. In the present case, the circumstantial evidence relating to the manner and extent of petitioner's use of 'CHIC' in connection with the advertising and sale of its goods is of such nature that we have no doubt that 'CHIC' does, in fact, serve as a trademark for petitioner's goods.



 Accordingly, we conclude that respondent's counterclaim to cancel petitioner's registration of the mark 'CHIC' for women's jeans on the ground of mere descriptiveness is not well taken.



 We turn then to the merits of petitioner's petition to cancel respondent's registration of the mark 'L.A. CHIC' under Section 2(d). Petitioner's priority of use of its mark 'CHIC' for women's jeans is clearly established by the record, including not only petitioner's testimony, with exhibits, but also its first registration (the filing date of which, namely, December 5, 1977, is several months prior to the March 16, 1978 date of first use proved by respondent). [FN9] Respondent's argument that petitioner must prove 'priority of secondary meaning' (that is, that petitioner's mark 'CHIC' had acquired secondary meaning as applied to its goods prior to respondent's first use of its mark) in order to establish its prior rights herein is not persuasive. We have held above that petitioner's mark is not and was not, at the time of its first use, merely descriptive, as applied to petitioner's goods, within the meaning of Section 2(e)(1). Moreover, while the doctrine of 'priority of secondary meaning' has been applied to priority determinations in civil actions for trademark infringement involving the right to use (see: 'McCarthy, supra, at § 16:12), it has never been applied to priority determinations in proceedings before the Board involving the right to register, nor do we see any reason in law or in equity why it should be be. Cf. Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981) (where the court held, in essence, that an opposer who opposes registration under Section 2(d) based upon his use of a descriptive term must prove, inter alia, that he has proprietary rights in that term, but made no mention of any requirement for proof of 'priority of secondary meaning' such as respondent urges here).



  *7 This brings us to the issue of likelihood of confusion. The goods recited in respondent's registration of the mark 'L.A. CHIC' are 'ladies' blouses, tops and shirts; children's blouses, skirts and skirt sets,' while the goods on which petitioner has shown prior use of its mark 'CHIC' are women's jeans. These goods of the parties are sold in many of the same stores to the same classes of purchasers and might well be purchased during the course of a single shopping trip for conjoint use as a coordinated outfit. It is obvious that these goods are very closely related in nature. Indeed, as indicated above, the record shows that subsequent to respondent's first use of its mark, petitioner expanded its use of its mark 'CHIC' from women's jeans to women's tops and skirts, inter alia, [FN10] and that respondent itself has expanded its use of its mark 'L.A. CHIC' to ladies' coordinate groups (including pants, albeit not jeans).



 Comparing the marks of the parties, respondent's mark "L.A. CHIC" contains the whole of petitioner's mark with the geographically descriptive designation 'L.A.' added thereto. It is a general rule that the addition of a trade name or house mark or descriptive matter to one of two otherwise confusingly similar marks will not serve to avoid a likelihood of confusion between them. However, an exception to the general rule is often found when, inter alia, the matter shared by the two marks is merely descriptive or commonly used or registered. See: In re S.D. Fabrics, Inc., 223 UPSQ 54 (TTAB 1984), and In re Hunke & Jochheim, 185 USPQ 188 (TTAB 1975).



 In determining the issue of likelihood of confusion in cases involving added matter; careful consideration must be given to the overall commercial impressions created by the marks in their entireties. See: New England Fish Co. v. Hervin Co., 511 F.2d 562, 184 USPQ 817 (CCPA 1975). Further, the issue of likelihood of confusion must be determined not just on the basis of a comparison of the marks, but by weighing all of the relevant facts of record. As we stated in Interstate Brands Corp. v. Celestial Seasonings, Inc., 196 USPQ 321, 324 (TTAB 1977), affirmed, 576 F.2d 926, 198 USPQ 151 (CCPA 1978):

   . . ., trademark law must necessarily be flexible responding to particular circumstances disclosed by particular fact situations thereby making a hard and fast rule in these cases anathema to its concept and application. That is, this is contrary to the principle of trademark law that each case must be decided on the basis of all relevant facts which include the marks and the goods as well as the marketing environment in which a purchaser normally encounters them and the experience generated as a result of their use in the marketplace providing such use has been of sufficient length and depth to make an impact in the market.



  *8 In the present case, the record clearly shows that the term 'CHIC' is commonly used as a descriptive term in connection with clothing, and that it has been included in a good number of marks registered for goods in the clothing field. [FN11] Those factors, together with the lack of evidence of actual confusion despite contemporaneous use by the parties on a significant scale (including sales through some of the same retail stores) for several years, weigh in respondent's favor.



 At the same time, the term 'CHIC' may also be regarded as a misspelling and phonetic equivalent of the word 'chick,' and as indicated above, we believe that it projects a double entendre, and hence is not merely descriptive, when used as a mark for petitioner's goods. Moreover, the evidence offered by petitioner shows that petitioner has, through its long and extensive use and promotion of 'CHIC' in the manner of a mark, established considerable good will in the mark, so that it now serves a well-known indication of origin for petitioner's goods. This is a factor which weighs heavily in petitioner's favor. See: Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 699, 223 USPQ 1281 (CAFC 1984), and Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (CAFC 1983). Other factors in petitioner's favor include the close relationship between the goods of the parties, the identity of purchasers and trade channels, the fact that petitioner has used its mark 'CHIC' together with a variety of other terms, and the fact that petitioner has taken steps to enforce its rights in its mark in prior instances [i.e., the civil action against the user of 'CHIC PETITE', settled as described above; and Henry I. Siegel Co., Inc. v. A & F Originals, Inc., 225 USPQ 626 (TTAB 1985), wherein petitioner's opposition to an application to register 'HIDE & CHIC' for women's clothing made of leather or suede, namely, jackets, coats, skirts, vests, and women's pants, was sustained].



 This is a close case. However, having carefully considered the marks of the parties, as wholes, in light of the evidence adduced herein, we are of the opinion that the mark 'L.A. CHIC' does not so differ from the mark 'CHIC' as to preclude likelihood of confusion. Rather, we believe that purchasers familiar with petitioner's mark 'CHIC' are likely to assume, upon encountering ladies' blouses, tops, etc. bearing the mark 'L.A. CHIC', that the mark 'L.A. CHIC' is simply a variation of petitioner's mark 'CHIC' used to designate a particular line of clothing made by petitioner, namely, a line of clothing made by petitioner in Los Angeles, California, or being of the style prevalent there. Accordingly, we conclude that there is likelihood of confusion.



 The lack of evidence of actual confusion, although one factor (and a significant one under the facts in this case) to be considered, does not persuade us of a different result, since we believe that this factor and the other factors in respondent's favor are simply outweighed by the factors in petitioner's favor. In this regard, we note that evidence of actual confusion is notoriously difficult to come by, that the fact that there is no evidence of actual confusion does not mean that such confusion has not occurred, and that the test under Section 2(d) of the statute is likelihood of confusion, not actual confusion.



  *9 Finally, it should be noted that we do not hold here (nor does petitioner ask that we hold) that petitioner is entitled to prevent others from using the term 'CHIC' descriptively, or to preclude the registration of any and all marks containing the work 'CHIC' for goods in the clothing field. Rather, we hold only that petitioner is entitled to preclude the registration of those marks which, like respondent's mark 'L.A. CHIC', in their entireties so resemble petitioner's mark 'CHIC' as to be likely, when applied to the goods of their owners, to cause confusion, mistake, or deception.



 Decision: The petition for cancellation is granted; the counterclaim for cancellation is dismissed; and respondent's Registration No.  1,271,884 will be cancelled in due course.



J. E. Rice



L. E. Rooney



R. F. Cissel



Members, Trademark Trial and Appeal Board



FN1. Reg. No. 1,271,884, issued March 25, 1984, based on an application filed December 30, 1981 with a claimed date of first use of May 27, 1978.



FN2. Reg. No. 1,135,189, issued May 13, 1980, based on an application filed December 5, 1977 with a claimed date of first use of November 23, 1977; affidavit Section 8 accepted.



FN3. Respondent also pleaded the affirmative defenses of laches, estoppel, and acquiescence, but did not pursue these issues. Accordingly, we deem those defenses to have been waived.



FN4. Registration No. 1,349,508, issued under the provisions of Section 2(f) of the Trademark Act of 1946 on July 16, 1985, based on an application filed December 5, 1983. The registration is for the mark 'CHIC' for women's clothing, namely, tops comprised of blouses, woven and knitted sleeved and sleeveless shirts, sweatshirts and jackets.



FN5. It should be noted, in this regard, that Trademark Rule 2.120(j)(7) provides in part that when an answer to an interrogatory has been made of record in accordance with the requirements of paragraph (j)(3) of the rule (as were petitioner's answers to respondent's interrogatories in this case), the interrogatory answer may be referred to by any party for any purpose permitted by the Federal Rules of Evidence.



FN6. Although the sales figures made of record during the direct examination of respondent's president, Mr. Maya, were characterized at the time of their introduction as being wholesale sales figures for garments sold under the mark 'L.A. CHIC', Mr. Maya testified on cross-examination that for the past one and one-half or two years, respondent had used the mark 'LADY CHIC' for extra-size garments and the mark 'MS. CHIC' for misses' garments, and that about five percent of respondent's sales were of products bearing one of those two marks. Inasmuch as Mr. Maya's testimony was taken on March 24, 1986, we have made an appropriate adjustment in the 'L.A. CHIC' sales figures specified above for the years 1984 and 1985.



FN7. It is not clear whether petitioner's earlier registration was issued under the provisions of Section 2(f). Registration was not refused in that case on the ground that the mark 'CHIC' was merely descriptive as applied to women's jeans. Rather, because the specimens submitted with the application were jean pockets with the mark embroidered thereon, registration was refused on the asserted ground that the mark appeared to be in the nature of an ornamental design and, as such, did not serve as a trademark. Petitioner responded thereto by referring to the refusal as 'surprising in view of the widespread practice of positioning trademarks for jeans . . . on a pocket or pocket seam.' Nevertheless, in order to confirm that 'CHIC' was in fact a trademark, petitioner submitted a sample of a size ticket and of a hang tag bearing the mark. The Examining Attorney, in turn, noted what he termed the 'substitute or additional specimens' and indicated that if petitioner submitted a verification to the effect that such specimens were of a kind in use in interstate commerce at least as early as the filing date of the application, the refusal to register would be withdrawn; and that if applicant submitted a verification only as to use of such specimens in interstate commerce after the filing date, the application would be afforded consideration under Section 2(f) upon a showing of distinctiveness. Well prior to the issuance of that Office action, and as a supplement to its submission of the size ticket and hang tag, petitioner had submitted an affidavit (dated April 4, 1979) stating that the size tickets and hang tags had been used in interstate commerce since a time shortly after the filing date of the application, and that petitioner had sold approximately 1,527,000 pairs of 'CHIC' jeans (having a value of approximately $17,000,000), all of which bore the size tickets and hang tags. Apparently, this supplemental response was mislaid in the Office and had not been associated with the application file at the time of the Examining Attorney's action relating to verification. Petitioner responded to that action by submitting a photocopy of its supplemental response and affidavit. The Examining Attorney thereafter approved the application for publication, without indicating whether it was being allowed under Section 2(f). We note, in this regard, that petitioner never actually claimed distinctiveness (it being petitioner's position that the refusal to register on the ground of ornamentation was not in accordance with case law) and that the registration file jacket is not marked '2(f)', nor does the registration certificate bear that designation.



FN8. Respondent has also made of record copies of pages from a large number of telephone directories containing listings of business names which include the term 'CHIC', as well as copies of pages of certain trade directory listings containing the term. These directory listings are of very limited probative value. That is, while they are competent to show that third parties hold themselves out as doing business under a particular name, they cannot serve to establish that the listed names are actually in use, or that the public is familiar with them. See, for example, Hecon Corp. v. Magnetic Video Corp., 199 USPQ 502 (TTAB 1978), and Cities Service Co. v. WMF of America, Inc., 199 USPQ 493 (TTAB 1978). The same is true of listings of corporations (having the term 'CHIC' in their names) shown by the records of the states of California and New York to be 'active' corporations in the sense that they have paid their annual corporation franchise taxes.



FN9. Although the issue of priority of use does not arise in an opposition proceeding where the opposer relies upon a registration of its pleaded mark and there is no counterclaim to cancel the registration [see: King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1216, 182 USPQ 108 (CCPA 1974)], the Board has held that the same is not true in a cancellation proceeding [see: American Standard Inc. V. AQM Corp., 208 USPQ 841 (TTAB 1980)]. However, a petitioner relying on a registration of its pleaded mark is, of course, entitled to rely upon the filing date of the application which matured into its registration as evidence of its use of its mark.



FN10. We believe that this was a natural expansion in view of the nature of the goods in question. But, however that may be, even if we restricted our consideration of petitioner's goods solely to its women's jeans, our determination of the issue of likelihood of confusion in this case would be the same, because of the close relationship between women's jeans and ladies' blouses, tops, etc.



FN11. The third-party registrations, although not evidence that the marks shown therein are in use or that the public is familiar with them, are competent to show that others in the field have adopted and registered marks containing the term 'CHIC', and that as used in many of them, the term projects its dictionary meaning of 'stylish, elegant.' See: Plus Products v. Sterling Food Co., Inc., 188 USPQ 586 (TTAB 1975).


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