Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE PEEBLES INC.
Serial No. 74/073,163
May 28, 1992
Kimberly S. Lebar of McGuire, Woods, Battle & Boothe for applicant
Lizabeth A. Martin
Trademark Examining Attorney
Law Office 15
(Paul E. Fahrenkopf, Managing Attorney)
Before Rice, Rooney and Quinn
Opinion by Rooney
An application was filed to register the mark MOUNTAINHIGH [FN1] for clothing, namely, coats sold in applicant's store. Use since August 1, 1990 has been alleged. [FN2] Registration has been finally refused under Section 2(d) in view of a registration for the mark MOUNAIN HIGH for retail outlet services for camping and mountain climbing equipment. [FN3] Applicant has appealed.
The Examining Attorney's position is essentially that the marks are identical in sound, meaning and commercial impression; that clothing, particularly outerwear such as coats, can be obtained through retail outlets for camping and mountain climbing gear; that the "equipment" sold under registrant's mark includes clothing as shown both by the definition of equipment quoted by the Examining Attorney (i.e., "wearing apparel" and an "outfit", such as "a camper's outfit consisting of high boots, poncho, sleeping bag, and cooking utensils") [FN4] and by the submitted copies of advertisements for camping and mountain climbing equipment; that, as broadly identified, applicant's coats would include outerwear appropriate for camping or climbing; that there is no evidence to establish that purchasers of the parties' goods are necessarily sophisticated or knowledgeable; and that the use of the identical mark on applicant's goods and registrant's services is likely to cause confusion, mistake or deception.
Turning first to the goods and services of the parties, we note that, in resisting the refusal to register, applicant has argued that its goods and registrant's services are totally different and in no way competitive so that, even marks which are visually and phonetically similar are unlikely to be confused. Basically, it is applicant's contention that its goods and registrant's services are unlikely to come to the attention of the same kinds of purchasers which sufficiently diminishes any likelihood of confusion.
As to the purchasers, applicant maintains that consumers in the market for camping and mountain climbing equipment, which are very expensive and often quite technical, are very likely to be sophisticated, discriminating and knowledgeable. In the same way, it is argued, consumers looking for an expensive and frequently used item, such as a coat, are likely to exercise great care before making a purchase and it is very unlikely that such purchasers will assume that applicant's private label coats are manufactured by or affiliated with outlet stores specializing in camping and mountain climbing equipment. Finally, applicant argues that "no reasonable person would mistakenly find a product in the course of looking for a service" (citing In re Best Products, Inc., 231 USPQ 988 (TTAB 1986).
*2 The basic question at issue here is whether purchasers or ultimate consumers who encounter both applicant's goods and registrant's services would be likely, because of the marks used by each, to assume a common source, association or sponsorship. In our opinion, they would.
First of all, we note that the goods and/or services do not have to be the same or even competitive in order to support a finding of likelihood of confusion. It is quite enough if the goods and/or services with which the marks are used are related in some manner such that they would be seen by the same individuals under circumstances which would cause them to believe, albeit mistakenly, that they emanate from the same source. See General Mills Fun Group, Inc. v. Tuxedo Monopoly Inc., 204 USPQ 396 (TTAB 1979), aff'd 648 F.2d 1335, 209 USPQ 986 (CCPA 1981) and cases cited therein.
The evidence submitted by the Examining Attorney shows that, along with tents, boots, lanterns, sleeping bags, backpacks, etc., stores or outlets for this type of equipment also sell coats or jackets suitable for these activities. Applicant's identification of goods is limited only to the extent that it recites that its coats are sold only in applicant's stores. We can therefore assume that applicant sells all types of coats, including the type of coats which would be worn by campers and mountain climbers.
The same person may purchase MOUNTAIN HIGH equipment from registrant's outlet and later purchase a MOUNTAIN HIGH coat from applicant's store, or vice versa. In either case, it is likely that it would be assumed that there was a common source for both or an association between the sources of each because of the identity of the marks and the fact that coats are among the articles that may be purchased in registrant's outlet. Thus, there is an overlap in potential purchasers of applicant's goods and registrant's services.
As we have said before there is no question that store services and the goods which may be sold in that store are related goods and services for the purpose of determining likelihood of confusion. See In re Best Products Co., Inc., 231 USPQ 988 (TTAB 988). However, the mere fact that an applicant's goods are of a type sold in a registrant's outlet is, in itself, insufficient to support a holding of likelihood of confusion if the marks are dissimilar. In this case, the marks are identical. They look and sound alike and have the same commercial impression.
While we believe, for the reasons given above, that the goods and services involved herein are sufficiently related to support the holding of likelihood of confusion, we note, in addition, that the degree of similarity in the goods or services of the parties need not be as great in proceedings such as this where the marks are essentially identical, as contrasted to those situations in which there may be arguable differences between the marks. See Warnaco Inc. v. Adventure Knits Inc., 210 USPQ 307 (TTAB 1981).
*3 Although conceding that the marks are both visually and phonetically identical, applicant has argued that they do not communicate the same or even similar commercial impressions. It is contended that MOUNTAIN HIGH, as applied to coats, is an arbitrary or fanciful mark which conveys little if anything about the goods in connection with which it is used and that, at best, it may connote a warm garment suitable for use at high altitudes. On the other hand, argues applicant, as the name of a mountain climbing equipment store, MOUNTAIN HIGH is suggestive, if not descriptive, of the goods sold at the store. Applicant asserts finally that, at its most arbitrary, registrant's mark may impart the euphoric feeling encountered by some climbing enthusiasts, and that marks with such different commercial impressions are unlikely to be confused.
Obviously we do not agree with applicant as to the identity of the marks. Applicant has argued that the marks have totally different commercial impressions. In our view the marks create identical impressions. They consist of the identical combination of the same two words. The impression one gets from applicant's mark is of a garment suitable to be worn in the cold or, as applicant says, at high altitudes (where one can expect to be cold). The latter suggestion is enhanced by the depiction of mountains on applicant's specimen label. Those same suggestions are apparent in registrant's mark and are fostered by the knowledge that registrant offers equipment for camping and mountain climbing. [FN5] Thus, the marks are identical visually and phonetically and are very similar in connotation.
Applicant has cited a number of cases wherein no likelihood of confusion was found to exist despite the fact that the marks were the same or very similar and were being used on related goods and/or services. However, it goes without saying that each case is dependent on its own peculiar facts. For instance, in Chase Brass & Copper Co., Incorporated v. Special Springs, Inc., 199 USPQ 243 (TTAB 1978), the Board found no likelihood of confusion from use of the mark BLUE DOT on springs for automotive distributors and on brass rod because applicant's distributor springs were a finished product while the opposer's brass rod was a semi-finished product which would require machining and/or other processing and would lose its trademark and the identity conveyed thereby by the time it reached a finished state. In addition, it was noted that the opposer in that case had the burden to submit evidence to show that the marks, as used on these products, would be encountered by the same persons in an environment where a likelihood of confusion could occur and opposer had failed to meet that burden. In the case of In re Sentry Drug Centers, Inc., 177 USPQ 208 (TTAB 1973), wherein the application for SENTRY DRUG CENTERS (Drug Centers disclaimed), for retail drug stores services was refused registration in view of the registration for the mark SENTRY for an oral antiseptic mouthwash and for vitamins-dietary supplement, the Board reversed the Examining Attorney on the basis of the lack of distinctiveness of the term SENTRY, as shown by third-party registrations, and on a comparison of the marks in their entireties as well as the differences between the goods and the services. The decision in the case of In re Best Products Co., Inc. supra, hinged, not only on the differences between goods versus services but on the fact that the transposition of the words BEST JEWELRY and JEWELERS' BEST created separate commercial impressions. It is obvious that the fact that another mark has been allowed has little bearing on the question of likelihood of confusion in a totally unrelated case unless it can be shown that both cases involve similar facts.
*4 While applicant argues that we are dealing with sophisticated purchasers in this case, there is no reason to suppose that it takes a great deal of expertise to buy camping or mountain climbing equipment unless one is embarking on a major expedition. There are many campers and mountain climbers who are interested only in recreation and will not be attempting to scale Mt. Everest. These potential purchasers comprise a cross section of the average purchasing public. Nor do we believe that those who purchase applicant's coats are any more sophisticated than this average cross section. Although applicant speaks of expensive coats, there is nothing in this record which requires us to consider only the purchase of expensive coats. In the absence of a restriction in the identification of goods, we assume that MOUNTAIN HIGH coats include all price ranges as well as all types of coats. Even if there were a degree of expertise required in the selection of applicant's coats or in choosing an equipment outlet, there is no reason to assume that such expertise would carry over into the field of trademarks. Moreover, a discriminating purchaser is as susceptible to confusing the source of similar services and products marketed under similar marks as any other purchaser would be. See In re Inspection Technology, Inc., 223 USPQ 46 (TTAB 1984).
In view of the foregoing, the refusal to register is affirmed.
Members, Trademark Trial and Appeal Board
FN1. It is noted that the drawing was amended on January 2, 1991 to conform to the specimens of record which show the mark as MOUNTAINHIGH rather than MOUNTAIN HIGH.
FN2. The application was filed under Section 1(b) of the Statute, as amended, but, prior to its examination for registration, it was amended to recite a date of first use and a date of first in commerce.
FN3. Reg. No. 1,065,479 issued May 10, 1977. Section 8 affidavit accepted, Section 15 affidavit filed.
FN4. See Webster's Third New International Dictionary, 1986.
FN5. Applicant's suggestion that registrant's mark is descriptive may not be considered inasmuch as that allegation comprises an attack on the validity of registrant's registration which is not permitted in an ex parte appeal proceeding. See: In re Calgon Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971); and In re White Swan Ltd., 8 USPQ2d 1534 (TTAB 1988).