Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE THE UNITED STATES SHOE CORPORATION
Serial No. 518,649
October 6, 1988
Hearing: September 7, 1988
David H. Semmes and Warren E. Olsen for applicant.
Paul E. Fahrenkopf
Trademark Managing Attorney
Law Office 5
Before Simms, Krugman and Quinn
Opinion by Simms
The United States Shoe Corporation, an Ohio corporation, has applied to register the mark shown below for leather cowboy boots sold to authorized retail distributors. [FN1]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
The Examining Attorney has refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on the basis of four registrations held by J. Chisholm & Co., Inc., a Colorado corporation, for the marks shown below. Each mark is separately registered for men's and women's shirts, hats, pants and jackets and for retail western, outdoor and leisure clothing store services. [FN2]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
The Examining Attorney contends that applicant's and registrant's marks are virtually identical, that applicant's boots are closely related to the western-style goods and services of the registrant, and that the consent agreement between applicant and registrant, solely relied on by applicant in support of registration, does not preclude the likelihood of confusion but rather specifically permits applicant's J. CHISHOLM boots to be sold in registrant's stores along with registrant's J. CHISHOLM clothing.
To show the commercial relatedness of applicant's boots to registrant's western-style clothing and services, the Examining Attorney has submitted evidence, such as copies of pages from a number of Yellow Pages telephone directories, showing advertisements of various stores that sell both boots and western clothing. This evidence is sufficient to persuade us that a shopper for western apparel is accustomed to seeing boots sold in those stores and will mistakenly assume that boots bearing the name of the apparel sold therein emanate from the same source or that boots bearing the name of the store are the house brand of that store. See In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) and In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984) and cases cited therein.
Because we agree with the Examining Attorney that, in the absence of an appropriate agreement, confusion is likely when the respective marks are used on leather cowboy boots and on western-style clothing and related retail store services, the central question before us in this appeal is the effect of the "Agreement Consenting to Concurrent Trademark Use" executed by applicant and registrant on September 30, 1985 in settlement of an opposition proceeding involving these parties.
In this agreement, after applicant and registrant recite their ownership of their respective marks, applications and registrations thereof and that registrant operates three retail stores in the state of Colorado, applicant and registrant
*2 each recognize that the component term J. CHISHOLM has a historical connotation of Jesse Chisholm, a famous and now deceased American explorer, and is diluted by non-abandoned, prior trademark uses in commerce, by third parties, wherein "Chisholm" is a component term ... (Paragraph 6)
Applicant and registrant agree that continued use of their marks for their respective products and services is not likely to cause confusion or deception of purchasers.
9. U.S. SHOE and J. CHISHOLM & CO. mutually agree that their past and current respective uses of trademarks comprising J. CHISHOLM has [sic] not created a likelihood of confusion, primarily in view of dissimilarities between J. CHISHOLM and Script Design and J. CHISHOLM and Label Design, which respectively dominate in each party's advertising, and the fact that footwear does not compete with men's and women's shirts, hats, pants and jackets.
Each party to the agreement consents to the use and registration by the other of forms of the marks shown in Exhibits A and B attached to the agreement. Exhibit B shows the stylized form of registrant's mark shown above in addition to the mark in block letters. [FN3] For its part, registrant consents to the use and registration by applicant of the marks J. CHISHOLM and JESSE CHISHOLM as well as the block letter rendition of J. CHISHOLM for footwear, applicant expressly agreeing not to extend the use of its mark to products other than footwear. In paragraph 11, registrant further agrees that it will not extend use of any of its trademarks to products other than men's and women's shirts, hats, pants and jackets. Registrant also agrees not to sell or otherwise service any footwear bearing a trademark comprising J. CHISHOLM "unless that footwear is a genuine product of U.S. SHOE." Finally, paragraph 12 of the agreement provides:
12. U.S. SHOE and J. CHISHOLM & CO. mutually agree that nothing herein shall preclude J. CHISHOLM & CO. from dealing in any footwear manufactured by U.S. SHOE, its affiliates, successors, assigns, licensees or sublicensees, including footwear having a J. CHISHOLM trademark. However, J. CHISHOLM & CO. must qualify to purchase such footwear for resale from a legitimate source in the ordinary course of business. J. CHISHOLM & CO. agrees, upon customer inquiry, to remind any purchaser or prospective purchaser that the manufacturer of J. CHISHOLM footwear and J. CHISHOLM & CO. are not related companies, partners or agents of the other and that the good will associated with J. CHISHOLM footwear is different and distinct from the goodwill associated with J. CHISHOLM & CO. arising out of its own private labeling of men's and women's shirts, hats, pants and jackets or arising out of its services in retail western, outdoor and leisure clothing. U.S. SHOE and J. CHISHOLM & CO. further mutually agree that nothing herein shall preclude J. CHISHOLM & CO. from selling footwear of any other manufacturer, provided no trademark comprising J. CHISHOLM is involved.
*3 It is clear that a determination of likelihood of confusion must be based upon all of the evidence including the existence of a consent agreement. In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973). However, consents are but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion. In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969, 971 (Fed.Cir.1985). While we have carefully considered the agreement, we agree with the Examining Attorney that confusion is likely and that registration to applicant should be refused. Our reasons follow.
Applicant and registrant believe that confusion is unlikely "primarily in view of dissimilarities between [the marks] ... and the fact that footwear does not compete with men's and women's shirts, hats, pants and jackets." (Paragraph 9) Moreover, the parties to the agreement point to the alleged "dilution" of the mark J. CHISHOLM by third-party users. In this regard, it is clear from this record (Exhibit 5 attached to applicant's response of September 25, 1986) and counsel's argument at the oral hearing, that the parties had in mind the use by Stetson of the name CHISHOLM as the "Style" of a certain western-style hat. Contrary to applicant's argument, brief, 2, the record does not support the assertion that the mark J. CHISHOLM is "widely diluted from use on 'western' items." Counsel acknowledged at the oral hearing that the use by Stetson was the only third-party use on apparel to his knowledge. Nor is there any support for allocating to the cited registrations a narrower scope of protection due to "the inherent descriptive qualities" of the marks at issue, as applicant argues. Applicant's brief, 3. The weakness of the registered mark is not demonstrated by a single third-party use, nor does the registered mark have any descriptive connotation with respect to registrant's western-style clothing or related store services.
While it is true that the respective marks in their stylized forms are not identical, the agreement makes clear that each signatory has consented to the use and registration by the other of the mark in block letters. Accordingly, each party to the agreement is free to use and register the mark without the different stylizations. (Indeed, two of the cited registrations are for the mark in block letters.) Even in the respective stylizations, the literal portions would be pronounced identically. We agree with the Examining Attorney that the verbal portion of the respective marks rather than the particular designs thereof predominates and is likely to be impressed upon the memories of purchasers.
Moreover, while it is true that registrant's western-style clothing does not compete with applicant's cowboy boots in the sense that a potential purchaser of a western shirt or hat is not likely to purchase a boot instead, competition between goods is not a prerequisite for finding likelihood of confusion. Rather, the relevant question is whether purchasers of applicant's J. CHISHOLM leather cowboy boots sold in retail stores are likely to believe that those products are produced by or are otherwise sponsored or endorsed by registrant's J. CHISHOLM retail stores or emanate from the same source as registrant's J. CHISHOLM western-style clothing.
*4 There are other factors which lead us to believe that confusion has not been avoided by the agreement. As the Examining Attorney has pointed out, the agreement places a duty only on registrant to dispel confusion upon customer inquiry. Applicant is not required to explain the non-affiliation of registrant should confusion arise. Applicant makes no undertaking whatsoever to avoid likelihood of confusion. [FN4] Rather, the only step that will be taken pursuant to the agreement to avoid confusion is by registrant, and that is only if a customer of registrant makes inquiry concerning the source of applicant's boots.
Finally, and contrary to applicant's argument, it is not a "false statement" (applicant's reply brief, 3) that the agreement permits registrant to sell applicant's boots in its stores. This is contemplated by the agreement, as noted above. The agreement thus provides for the existence of a marketing environment where western boots and related western-style clothing originating from different sources are sold in the same stores under essentially identical marks. [FN5] Therefore, while applicant has not entered into a marketing arrangement with registrant to sell its boots in registrant's stores, it is possible that registrant may become one of applicant's "authorized retail distributors" of its boots. Under such circumstances, applicant's J. CHISHOLM boots will be sold in the very same stores as registrant's J. CHISHOLM items of clothing. We think it unlikely that the average consumer encountering applicant's J. CHISHOLM boots in registrant's stores will inquire as to the origin of the boots. He will simply assume common source or sponsorship. In such a situation, confusion is inevitable.
Nevertheless, applicant argues, brief, 8, that the channels of trade are dissimilar:
US SHOE sells its leather cowboy boots only to authorized retail distributors, and the evidence of record shows that US SHOE is quite able to manage how its goods are promoted, as by cooperative advertising with specialty footwear stores. Hence, the channels of trade are dissimilar ...
In this regard, what the Court of Appeals for the Federal Circuit stated in In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292, 1295 (1987) is noteworthy:
That conclusory statement does not prove that the trade channels are, in fact, dissimilar and likely to continue. Evidence must be submitted which shows what are the established trade channels, together with some statement of users' intentions. In the absence of evidence with respect to the specific channels of trade of Mastic [applicant] and Flintkote [registrant], it is reasonable to conclude that they are the same as those generally used in the trade. Here, the only evidence with respect to trade channels is that submitted by the examiner showing that the trade channels for the types of products are the same, and that evidence stands uncontradicted. Contrary to Mastic's view, the consent itself is not evidence that the channels are different. The statement in the consent that the parties considered the "dissimilarity" in their trade channels is as vacuous as the statement that they considered the "dissimilarity" of their respective marks which are, in fact, identical, even to the extent of having the same phonetic spelling. [Emphasis in original.]
*5 See also In re Permagrain Products, Inc., 223 USPQ 147 (TTAB 1984).
This Court also noted:
....the duPont case does not make it a "given" that experienced businessmen, in all cases, make an agreement countenancing each other's concurrent use of the same or similar marks only in recognition of no likelihood of confusion of the public. One must look at all of the surrounding circumstances, as in duPont, to determine if the consent reflects the reality of no likelihood of confusion in the marketplace, or if the parties struck a bargain that may be beneficial to their own interests, regardless of confusion to the public. For example, the parties may prefer the simplicity of a consent to the encumbrances of a valid trademark license. However, if the goods of the parties are likely to be attributed to the same source because of the use of the same or a similar mark, a license (not merely a consent) is necessary to cure the conflict.
In re Mastic Inc., supra, at 1292. Because the parties' belief of no likelihood of confusion is premised upon alleged differences in the marks and in commercially related goods, we do not believe that the agreement reflects the reality of no likelihood of confusion. Rather, the western-style goods of the parties are likely to be attributed to the same source.
While the Court of Appeals for the Federal Circuit has in recent years been called upon to evaluate the effect of consent agreements in a number of different cases, those cases can be distinguished. In re N.A.D. Inc., supra, involved a situation in which the marks were not identical (NARKOMED v. NARCO and NARCO MEDICAL SERVICES), where applicant's technical apparatus was complex and expensive and purchasers were sophisticated and likely to know the source of the goods. In Bongrain International (American) Corp. v. Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775 (1987), the cumulative differences in the marks and the goods led the Court to its determination. Moreover, the Court there stated that there was no evidence other than the marks to support the conclusion of likelihood of confusion, which is not the case here. In The Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (1988), involving a concurrent use proceeding, the agreement indicated that there had been no instances of actual confusion for over 60 years. Also, the Court emphasized the nature of the banking business and the sophistication of bank customers who know with whom they are dealing. Compare also In re Palm Beach Inc., 225 USPQ 785 (TTAB 1985), wherein the Board emphasized that the goods of the applicant and registrant had been sold contemporaneously for more than 45 years without any evidence of actual confusion.
We have considered applicant's other arguments in support of registration, including the fact that applicant is a manufacturer and registrant is a retailer. However, we do not believe that this factor is persuasive in finding that there is no likelihood of confusion. The critical question is whether purchasers and potential purchasers encountering the respective marks and goods in the marketplace are likely to believe that the products emanate from the same source. The fact that registrant's apparel is made by a third party under a private label agreement rather than by registrant itself is immaterial, as is the fact, not reflected in its registrations, that registrant does not sell its clothing wholesale or outside of its Colorado stores. Applicant here is not seeking a geographically restricted registration.
*6 Finally, there is no evidence, either in the agreement or otherwise, to support applicant's argument that the purchasers of the respective goods are "sophisticated."
In view of the substantial identity between the marks and given the relationship between the goods and services of the parties, and the fact that applicant's goods may be sold in the same stores as registrant's clothing, we believe that the agreement fails to eliminate the likelihood of confusion. The agreement is simply not one designed to avoid confusion, it does not make confusion less likely. There is nothing in the agreement which rebuts the conclusion of the Examining Attorney that western boots and western-style clothing will be perceived by purchasers as related products. When sold under marks as similar as those involved herein, confusion is likely. See In re Curtice-Burns, Inc., 231 USPQ 990 (TTAB 1986) and In re Pix of America, supra.
Decision: The refusal of registration is affirmed.
Members, Trademark Trial and Appeal Board
FN1. Serial No. 518,649, filed January 22, 1985, claiming use since January 29, 1983. This application was amended to one seeking registration on the Supplemental Register on September 25, 1986, after the Examining Attorney refused registration on the ground that the mark was barred from registration on the Principal Register under Section 2(e)(3)), 15 U.S.C. 1052(e)(3), because it is primarily merely a surname.
FN2. Registration No. 1,280,234, issued May 29, 1984; Registration No. 1,336,181, issued May 14, 1985; Registration No. 1,359,909, issued September 10, 1985; and Registration No. 1,385,268, issued March 4, 1986.
FN3. In paragraph 10 of the agreement, applicant's consent to use and registration by registrant "contemplates no substantial variation of the mark, from the current forms shown in Exhibit B." (Emphasis added.)
FN4. Applicant argues that, as the manufacturer of boots, it is in a position to decide whether or not to sell to registrant. This argument seems to imply that applicant will refrain from selling its goods to registrant if confusion is likely. However, applicant indicates in its reply brief, 3, that the purpose of the provisions in paragraph 12 of the agreement was to ensure that the registrant not acquire applicant's boots from a gray market source. When asked at the oral hearing whether applicant would sell its boots to registrant if registrant was willing to enter into a customary cooperative advertising and marketing arrangement with applicant, counsel indicated that applicant would do so. Apparently, registrant has not yet sought to sell applicant's boots.
FN5. Indeed, in arguing against the earlier surname refusal because of applicant's belief that the mark J. CHISHOLM would be perceived as being identified with a specific individual, applicant states:
The circumstance of applicant's J. CHISHOLM and Design boots being sold within a store offering a prior Registrant's services also is testimony to the value of an historical focus upon a specific person, from the heritage of the American West.
Applicant's response, filed January 21, 1986, 3.