TTAB - Trademark Trial and Appeal Board - *1 E.I. DU PONT DE NEMOURS AND COMPANY v. SUNLYRA INTERNATIONAL, INC. June 15, 1995 Hearing: November 15, 1994

Trademark Trial and Appeal Board

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





June 15, 1995

Hearing: November 15, 1994



 Opposition No. 89,559 to application Serial No. 74/201,263 filed on September 6, 1991



Before Rice, Hanak and Hohein



Administrative Trademark Judges



Opinion by Hanak



Administrative Trademark Judge



 Sunlyra International, Inc. (applicant) seeks registration of LYRA in typed capital letters for "children's clothing, namely, pants, tops, overalls, coats, jackets, shirts, skirts, blouses, t-shirts, dresses, headwear, neckwear, socks and leotards." The application was filed on September 6, 1991 with a claimed first use date of November 1981, and a claimed first use date in commerce of December 1988.



 E.I. du Pont de Nemours and Company (opposer) filed a notice of opposition alleging that in 1958 and 1959 it first used and registered the mark LYCRA for synthetic fibers; that continuously over the years, opposer has extensively advertised and promoted its LYCRA mark not only for synthetic fibers, but also for end use products containing LYCRA synthetic fibers including a wide array of apparel items; that applicant's mark LYRA is similar in sound and appearance to opposer's mark LYCRA; and that applicant's use of LYRA on children's clothing is likely "to cause confusion or mistake or to deceive purchasers as to the content of applicant's goods or the source of origin of those goods." (Notice of Opposition paragraph 8).



 Applicant filed an answer which, among other things, denied that the contemporaneous use of the marks LYCRA and LYRA is likely to cause confusion. Applicant's answer also set forth certain affirmative defenses. However, in its brief, applicant withdrew its affirmative defenses. (Applicant's brief page 37, footnote 20).



 Both parties filed briefs. A hearing was held before this Board on November 15, 1994 at which counsel for opposer and applicant were present.



 The record in this case consists of, in part, the depositions (with exhibits) of Charles Vernon Peers, opposer's marketing strategy manager for LYCRA, and Jack Lee (a.k.a. William Lee and K.H. Lee), applicant's president. In addition, opposer has properly made of record certified status and title copies of its Registration No. 673,321 for LYCRA in typed capital letters for "synthetic fibers and filaments for generalized use in the industrial arts" and its Registration No. 673,601 for LYCRA in typed capital letters for "yarns and threads of synthetic fibers." Both registrations issued on February 3, 1959.



 In any likelihood of confusion analysis, two key considerations are the similarity of the marks and the similarity of the goods. Considering first the marks, we find that applicant's mark LYRA is extremely similar to opposer's marks LYCRA in terms of both visual appearance and pronunciation. While arguing that the two marks are different in both respects, applicant acknowledges that the difference in visual appearance is "seemingly small" (applicant's brief page 16) and the difference in pronunciation (sound) is "seemingly slight" (applicant's brief page 14). Indeed, in terms of visual appearance, the two marks are as similar as possible without being identical. Persons familiar with opposer's LYCRA mark would, upon encountering applicant's mark LYRA, be apt in many instances to fail to notice the absence of the middle letter "C." This is especially true given the fact that, as shown by the exhibits of record, marks for synthetic fibers and apparel are often depicted on tags attached to the garments in very small lettering.



  *2 As for the similarity of the marks in terms of pronunciation, applicant argues that "LYCRA and LYRA are readily distinguishable in sound because of the hard 'C' in the middle of LYCRA. This 'C' cannot be elided." (Applicant's brief page 15). To cut to the quick, even when "properly" pronounced, the two marks are, at a minimum, similar in sound. Moreover, it must be remembered that "there is no correct pronunciation of a trademark." In re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227 (CCPA 1969). Imperfectly pronounced, the two marks can be extremely similar in terms of sound.



 Finally, turning to a consideration of the connotations of the marks, applicant argues that "even if the sound and appearance [of two marks] are very close," nevertheless "the marks are readily distinguishable by the public ... where one mark is a known English word and the other is coined or otherwise unintelligible." (Applicant's brief page 10). Continuing, applicant notes that "it is undisputed that LYCRA is a coined, fanciful term.... By contrast, LYRA is a familiar English word that refers to a famous constellation that contains the first-magnitude star Vega." (Applicant's brief page 12). Among other cases, applicant cites In re General Electric Co., 304 F.2d 688, 134 USPQ 190 (CCPA 1962) and National Distillers Corp. v. William Grant & Sons, Inc., 505 F.2d 719, 184 USPQ 34, 35 (CCPA 1974) for the proposition "that the familiar [term] is readily distinguishable from the unfamiliar [term]." However, applicant has failed to present evidence showing that this legal principle is applicable to the facts of this case. Based upon the record before it, the court in General Electric found that the mark VULCAN is "a name well-known to the American people," and thus would be differentiated from the "arbitrary and coined word" VULKENE. 134 USPQ at 192. Likewise, in National Distillers, the court found that the mark DUET "is a very common word in the English language which has the connotation of two of something," and thus would be distinguished from the word DUVET. 184 USPQ at 35.



 In the present case, applicant has presented no evidence showing that "Lyra" would be known beyond a small segment of the American public. To be perfectly clear, applicant has made of record excerpts from dictionaries, encyclopedias and other works showing that "Lyra" is a northern constellation between Hercules and Cygnus containing the star Vega. However, such listings by themselves do not show that the term is known to more than a very small segment of the American population. Obviously, many words listed in dictionaries, encyclopedias and other works are not known to the general American public. If all words and terms found in dictionaries and other reference works were generally known to the American public, the need for such dictionaries and reference works would be exceedingly small. The predecessor to our principal reviewing court has observed that the mere appearance of a term in a dictionary or other reference work does not establish that the term is known to an appreciable number of Americans. For example, in National Distillers, the court observed that while the word "duvet ... is to be found in Webster's Third New International Dictionary ... we think practically no Americans other than experts in fungus cultures would be aware of this ... [unfamiliar] English word." 184 USPQ at 35. See also Lever Bros. Co. v. Babson Bros. Co., 197 F.2d 531, 194 USPQ 161, 164 (CCPA 1952).



  *3 We are also aware that Mr. Lee testified on behalf of applicant as to the meaning of the term "Lyra." However, Mr. Lee, who described himself as being "ethnically Chinese," merely testified that "this constellation [Lyra] for the Chinese people's culture, we feel that brings us luck and most people they know this constellation." (Lee dep. pages 5-6). Mr. Lee further testified that "we have a lot of customer from in Chinese, for Chinese people. They are very easy to order from us because the Lyra for them, the trademark Lyra is easy to memorize ..." (Lee dep. page 23). Mr. Lee never testified that to most Americans who are not "ethnically Chinese," the term "Lyra" is a known word.



 In summation, we find that the marks LYCRA and LYRA are extremely similar in terms of appearance and pronunciation, and to most Americans, the two words would be viewed either as arbitrary terms or as indicating a brand of spandex emanating from opposer. In any event, it must be remembered that in order for a likelihood of confusion to exist, two marks need not be similar in all three respects, namely, visual appearance, pronunciation and connotation. In appropriate cases, a mark will be refused registration "if the similarity in either form, spelling or sound alone is likely to cause confusion." Krim-Ko Corp. v. Coca-Cola Co. 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968). See also Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1566, 218 USPQ 390, 395 (Fed.Cir.1983). It is our belief that the two marks are so similar in terms of visual appearance and pronunciation, that if they are used on related goods, there is a likelihood of confusion even amongst that small segment of the American population that is familiar with the word "Lyra."



 Turning to a consideration of the goods of the parties, we note at the outset that if the marks are extremely similar, "it is only necessary that there be a viable relationship between the goods or services in order to support a holding of likelihood of confusion." In re Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). See also 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition, Section 23.03[2] at page 23-40 (3d ed. 1992). ("Thus, the greater the similarity in the marks, the lesser the similarity required in the goods or services of the parties to support a finding of likely confusion."). Applicant has acknowledged that children's clothing and opposer's spandex (synthetic fibers) are "related." (Applicant's brief page 1). However, applicant argues that there is no likelihood of confusion because its LYRA children's clothing and opposer's LYCRA brand of spandex "are two steps removed from competition" in that opposer "sells [LYCRA] fiber to fabric mills, which knit it into other fibers to produce a fabric. The mills sell the fabric to manufacturers of clothing. The manufacturers, in turn, sell their clothing in retail shops under their own brand names." (Applicant's brief page 1).



  *4 Applicant's recitation of the facts is correct. However, as applicant goes on to note, LYCRA hang tags are "attached to clothing that bears the clothing manufacturer's own trademark." (Applicant's brief page 1).



 In other words, opposer's LYCRA mark is not exposed merely to fabric mill operators and clothing manufacturers. Rather, opposer has actively promoted its LYCRA brand spandex to the ultimate purchasers of clothing, including children's clothing. While it is true that when opposer's LYCRA mark appears on finished clothing (including children's clothing) it does so in connection with the brand name of the clothing, and while it is also true that opposer's LYCRA mark does not serve as a mark for the clothing but rather for the spandex contained in the clothing, nevertheless, it is clear, as applicant acknowledges, that opposer's LYCRA mark appears on finished articles of clothing (specifically including children's clothing). Indeed, opposer's LYCRA mark often appears on the finished clothing in a rather prominent fashion as exemplified, for example, by opposer's exhibits 14 and 15.



 Moreover, opposer has through its own advertising and through cooperative advertising with clothing manufacturers promoted its LYCRA brand of spandex to the ultimate purchasers of clothing, including children's clothing. Such advertisements have appeared in publications such as Vogue, Cosmopolitan and Elle, as well as in general circulation newspapers. Moreover, opposer's advertising and promotion of its LYCRA brand spandex to the ultimate consumers commenced long before 1984 or 1985, the time that Mr. Lee testified that applicant first began use of its LYRA mark on children's clothing in the United States. (Lee dep. page 8). [FN1] For example, as early as 1959 opposer ran a large advertisement in Women's Wear Daily announcing the introduction of its LYCRA brand spandex and pointing out that LYCRA brand spandex would be nationally advertised in leading magazines throughout 1960. (Peers dep. page 31, opposer's exhibit 28).



 Over the years, sales of LYCRA brand spandex have been extremely large. Mr. Peers testified that in the ten-year period preceding 1993, opposer "sold well over a billion dollars worth of LYCRA." (Peers dep. page 27). Furthermore, Mr. Peers went on to testify that such massive sales of LYCRA brand spandex "would translate to more than $10 billion a year in the sale of garments that contain the LYCRA fiber." (Peers dep. page 27).



 In sum, we fully concur with applicant's admission that its LYRA children's clothing and LYCRA brand spandex are "related" goods. Furthermore, we also find that long before applicant's first use of LYRA, ultimate consumers had been exposed to opposer's mark LYCRA on finished articles of clothing as a trademark identifying a fabric in the clothing. Moreover, the two marks are so similar that should applicant's mark LYRA appear on children's clothing, a significant number of consumers would mistakenly believe that the clothing contains LYCRA brand spandex, or that the clothing is otherwise in some way associated with or approved by opposer. Hence, the opposition is sustained on the ground that the contemporaneous use of the two marks on the respective goods of the parties is likely to cause confusion, mistake or deception.



  *5 One final matter remains. While not pled in the notice of opposition, opposer has argued in its brief that "the application should be treated as void ab initio with respect to [socks and leotards]." (Opposer's brief page 16). On direct examination, applicant's counsel asked Mr. Lee which goods had been sold under the LYRA mark during the two years preceding January 21, 1994 (the date of Mr. Lee's deposition). When asked about socks and leotards, Mr. Lee responded "no." (Lee deposition page 28). On cross-examination, Mr. Lee was asked the following: "Were there ever any socks or leotards sold under the LYRA trademarks?" He responded "no." (Lee deposition page 59).



 We find that the issue of the nonuse of the LYRA mark on certain goods was raised by applicant itself during the course of Mr. Lee's deposition. Hence, while the issue of nonuse was not pled, we find that it was tried by the consent of the parties. In this regard, we note that applicant does not argue otherwise. See footnote 20, page 37 of applicant's brief. Moreover, the testimony of Mr. Lee clearly establishes that with regard to socks and leotards, there was never any use of the LYRA mark, and hence with regard to these two goods, the application was indeed void ab initio. Accordingly, if we are reversed on appeal on the issue of likelihood of confusion, the words "socks and leotards" will nevertheless be stricken from applicant's description of goods.



 Decision: The opposition is sustained.



J.E. Rice



E.W. Hanak



G.D. Hohein



Administrative Trademark Judges, Trademark Trial and Appeal Board



FN1. Of course, opposer's priority in the mark LYCRA for synthetic fiber has been established by the proper introduction into evidence of its aforementioned two registrations for this mark. See King Candy Co. v. Eunice King's Candy Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Moreover, we note that while in its application applicant claimed that it first used its LYRA mark in November 1981 for children's clothing, Mr. Lee later testified that such use was not in connection with children's clothing. (Lee dep. page 47). Indeed, applicant's earliest use of LYRA in connection with children's clothing occurred, according to Mr. Lee, in 1984 or 1985, although Mr. Lee conceded that applicant's first documented use of the mark in connection with children's clothing was not until 1988. (Lee dep. pages 8 and 14).


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