Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SEARS, ROEBUCK AND CO.
Serial No. 502,919
February 27, 1987
Hearing: October 15, 1986
Catherine Simmons-Gill, Mary E. Wotek and Lonathan D. Hurse; and Nims, Howes, Collison & Isner for applicant
Robert Clark
Trademark Examining Attorney
Law Office 5
(Paul Fahrenkopf, Managing Attorney)
Before Sams, Rice and Rooney
Members
Member
An application has been filed by Sears, Roebuck and Co. to register the mark 'CROSS-OVER' for bras, use since 1971 being asserted. [FN1]
Registration has been refused under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. 1052(d), on the ground that applicant's mark, as applied to its goods, so resembles the mark 'CROSSOVER', previously registered to another for ladies' sportswear, namely, tops, shorts, and pants, [FN2] as to be likely to cause confusion, mistake, or deception.
In support of its right to registration, applicant has submitted a copy of a consent agreement and two affidavits. In the consent agreement (characterized in its first paragraph as an 'agreement . . . whereby each party shall be permitted to use and register' its trademark for certain merchandise), the parties agree that applicant has used the mark 'CROSS-OVER' in connection with women's undergarments since 1971; that registrant has used the mark 'CROSSOVER' in connection with ladies' sportswear, namely, tops, shorts, and pants since April 13, 1982; and that the parties believe there is no likelihood of confusion with regard to the source or origin of their respective goods 'since said goods are not related and have different intended customer uses.' The agreement further provides that applicant may continue to use the mark 'CROSS-OVER' in connection with women's lingerie and undergarments, but will not use either 'CROSS-OVER' or 'CROSSOVER' in connection with the goods recited in registrant's registration; that registrant may continue to use the mark 'CROSSOVER' in connection with the goods recited in its registration, but will not use either mark in connection with women's lingerie and undergarments; and that should it become necessary, each party will provide the other with written consent to register the other's mark in accordance with the terms specified in the agreement. [FN3]
As to the two affidavits, there is one by a representative of applicant and one by a representative of registrant. Each official (a 'Buyer of Brassieres-- Women's Intimate Apparel and Hosiery Department' for applicant, and a corporate secretary for registrant) attests to his/her company's use of its mark in connection with its respective goods since a particular date (1971 for applicant, and April 1982 for registrant), and then states, in effect, that he/she is not aware of any instances of actual confusion arising from applicant's use of the mark 'CROSS-OVER' for women's sportswear, including tops, shorts, and pants.
Turning first to the goods, applicant's brassieres and registrant's ladies' sportswear, namely, tops, shorts, and pants, are clearly related in that they are all clothing items that may be sold through the same outlets to the same classes of purchasers, and may well be purchased during the same shopping trip, quite possibly to be worn together. [FN4]
*2 Moreover, applicant's mark 'CROSS-OVER' and registrant's mark 'CROSSOVER' are identical in sound, and are also identical in appearance but for the inclusion in applicant's mark of a hyphen, which, for purposes herein, is of no legal significance. Cf. Harvey Hubbell, Inc. v. Red Rope Industries, Inc., 191 USPQ 119 (TTAB 1976).
The relationship of the goods and the similarity of the marks in this case are factors which, if considered in and of themselves, without regard to any other relevant factors revealed by the record, would be indicative of a finding of likelihood of confusion. However, each case must be determined on the basis of all of the relevant facts and circumstances presented therein. As we stated in Harry Fischer Corp. v. Keneth Knits, Inc., 207 USPQ 1019 (TTAB 1980), at pages 1024-1025:
There is no question but that all types of men's and women's apparel are related and that there have been decisions by various tribunals holding that the marketing of different items of wearing apparel, even intended for the different sexes, under the same or similar marks, is likely to cause confusion in trade. See: In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) and the cases cited therein. This has been predicated on common trade channels; common purchasers; and, in the case of certain garments for men, the known fact that women purchase apparel for their husbands and male children. This, however, cannot be stated as a matter of law disregarding the competitive distance between different items of apparel considered in light of the particular facts disclosed in each case concerning the conditions and circumstances surrounding the sale of the goods in the normal outlets for the garments, the possible differences in the likely impact of the marks upon purchasers and prospective purchasers, and the track record of the market interplay between the parties over a measurable period of time in light of common purchasers and trade channels.
In the instant case, although applicant's brassieres and registrant's ladies' sportswear, namely, tops, shorts, and pants, are undeniably related goods, nevertheless there is a competitive distance between them. [FN5] That is, they are different types of clothing, having different uses, and are normally sold in different sections of department stores. This competitive distance must be considered in light of two additional factors which are present in this case. The first additional factor is the consent agreement, with supporting affidavits. It is true, as noted by the Examining Attorney, that the consent agreement here differs from the consent agreement which was found persuasive in the case of In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). However, an agreement, or letter of consent, need not necessarily have provisions similar to those in the agreement in the duPont case in order to play a significant role in the determination of a particular issue of likelihood of confusion. See: In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (CAFC 1985), and In re Palm Beach Inc., 225 USPQ 785 (TTAB 1985). As indicated in footnote (3) above, the agreement here was originally executed well prior to the filing of applicant's involved application, in order to settle a potential opposition by applicant against the application which thereafter matured into registrant's registration. The consent agreement contains, inter alia, not only consent to use provisions but also the parties' expressed belief that there is no likelihood of confusion because of the differences in their respective goods, and (in the amended agreement) provisions specifically barring each party from using its mark on the type of goods sole under the other party's mark. The agreement is supported by recent affidavits attesting, on behalf of each party, to an absence of knowledge of instances of actual confusion despite continuous, contemporaneous use of the respective marks of the parties since registrant's first use in April of 1982. It appears to us that here, as in the N.A.D. case, the parties have 'thought out their commercial interests with care.' In short, while this agreement is not like the agreement in the duPont case, it is not a mere 'naked' consent, and we believe that it is entitled to consideration as a factor to be taken into account in our determination of the issue of likelihood of confusion. [FN6]
*3 The second additional factor to be considered is the different meanings which the involved marks project when they are applied to the differing goods of applicant and registrant. We agree with applicant that its mark 'CROSS-OVER', when applied to brassieres, is suggestive of the construction of the brassieres. Registrant's mark 'CROSSOVER', on the other hand, conveys no such meaning when applied to ladies' sportswear, namely, tops, shorts, and pants. Rather, it appears to us that registrant's mark is likely to be perceived by purchasers either as an entirely arbitrary designation, or as being suggestive of sportswear which 'crosses over' the line between informal and more formal wear (i.e., is appropriate for either use), or the line between two seasons. As a result of their different meanings when applied to the goods of applicant and registrant, the two marks create different commercial impressions, notwithstanding the fact that they are legally identical in sound and appearance.
In connection with the foregoing, we note that in other close cases of this nature, where either one of the two additional factors described above (i.e., a consent agreement having probative value, or marks which, while perhaps even identical in appearance, nevertheless project different meanings as applied to the respective goods involved) has been present, such factor has played an important role in this Board's conclusion of no likelihood of confusion. See, for example: In re Palm Beach Inc., supra ('ALDER' for pants versus 'ADLER' for knitted socks--two letters of consent, of probative value, submitted); In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) ('BOTTOMS UP' for ladies' and children's underwear versus 'BOTTOMS UP' for men's suits, coats, and trousers--marks found to project different meanings as applied to the respective goods); and In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) ('PLAYERS' for men's underwear versus 'PLAYERS' for shoes--marks found to project different meanings as applied to the respective goods). Here, both factors are present.
Having considered all of the factors in this case, we conclude that there is no likelihood of confusion.
Decision: The refusal to register is reversed.
J. D. Sams
J. E. Rice
L. E. Rooney
Members, Trademark Trial and Appeal Board
FN1. Serial No. 502,919, filed October 9, 1984.
FN2. Reg. No. 1,262,476, issued December 27, 1983.
FN3. The record shows that the consent agreement was originally executed in 1983, in order to settle a potential opposition by the applicant here to the application which thereafter matured into registrant's cited registration. Because the Examining Attorney in this case found fault with the original agreement (which did not specifically provide that neither party would use its mark in connection with the goods of the other), the parties executed a new agreement in December of 1985 (but made effective, nunc pro tunc, as of December 9, 1983) containing the provisions described above.
FN4. In this regard, we note that it is common knowledge that some brassieres are designed specifically for use during exercise or sports activites.
FN5. In an Office action mailed April 16, 1986, the Examining Attorney stated that 'it is common for producers of sportswear to sell undergarments and sell them under the same mark.' However, the Examining Attorney offered no evidence in support of this assertion and it's not a matter of which we can take judicial notice. That is, even if the statement is true (and we do not know whether it is or not), it is certainly not a matter of common knowledge.
FN6. The Examining Attorney, citing the agreement provision that 'should it become necessary, both Sears and Tultex shall provide each other with written consent enabling each party to register' its mark, argues that no actual letter of consent has been furnished by registrant. We believe that no separate letter of consent is necessary, because registrant's consent to the registration sought by applicant herein is evidenced by the agreement itself, including the preamble thereof, which specifically states that the purpose of the agreement is to set forth 'mutually satisfactory conditions whereby each party shall be permitted to use and register' its mark for its goods.