This Opinion is not a
`Precedent of the TTAB
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`Mailed: November 16, 2015
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Trademark Trial and Appeal Board
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`In re My Other Bag Inc.
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`Serial No. 85521133
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`Brian J. Philpott and Gregory Z. Boger of Koppel Patrick Heybl & Philpott
`for My Other Bag Inc.
`Kathleen Lorenzo, Trademark Examining Attorney, Law Office 109,
`Michael Kazazian, Managing Attorney.
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`Before Lykos, Greenbaum and Adlin,
`Administrative Trademark Judges.
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`Opinion by Lykos, Administrative Trademark Judge:
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`On January 20, 2012, My Other Bag Inc. (“Applicant”) filed an application to
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`register on the Principal Register the mark My Other Bag… in standard
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`characters for “tote bags” in International Class 18.1
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`The Trademark Examining Attorney refused registration of Applicant’s mark
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`under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
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`that Applicant’s mark so resembles the registered mark THE OTHER BAG BY
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`1 Application Serial No. 85521133, filed under Section 1(a) of the Trademark Act, 15 U.S.C.
`§ 1051(a), alleging November 1, 2011 as the date of first use anywhere and November 28,
`2011 as the date of first use in commerce. The application includes a disclaimer of the word
`“Bag” apart from the mark as shown.
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`Serial No. 85521133
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`ALDO also in standard characters for “[h]andbags, carry-all bags, clutch bags,
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`cosmetic bags sold empty, messenger bags, shoe bags for travel, sports bags” in
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`International Class 18,2 that, when used on or in connection with Applicant’s
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`identified goods, it is likely to cause confusion or mistake or to deceive.
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`When the refusal was made final, Applicant appealed and requested
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`reconsideration, based primarily on its amendment of the identification of goods to
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`“parodic canvas tote bags screen-printed with an artist’s cartoonish rendering of a
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`well-known designer handbag.” The Trademark Examining Attorney accepted the
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`amendment but maintained the refusal to register and denied the Request for
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`Reconsideration. Thereafter, the appeal was resumed and is now fully briefed.
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`For the reasons set forth below, we affirm the Section 2(d) refusal.
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`Parody “Defense”
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`At the outset we address Applicant’s parody “defense” arguments and the
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`significance, if any, of “parody”-based limitations to an identification of goods.
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`Applicant argues that its mark is not confusingly similar to the registered mark
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`because it is meant to be a “tongue-in-cheek statement on behalf of the owner that
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`while this eco-conscious, reusable tote bag I’m carrying may not have cost me a
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`fortune, ‘My Other Bag …’ may have.” Applicant’s Brief, p. 5; 8 TTABVUE 6.
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`Applicant also points to the amended identification of goods which specifically
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`states that the tote bags bear a design consisting of a cartoonish rendering of a well-
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`2 Registration No. 4363077, issued on July 9, 2013 on the Principal Register pursuant to
`Section 44(e) based on a Canadian registration. The registration includes a disclaimer of
`the word “BAG” apart from the mark as shown.
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`Serial No. 85521133
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`known designer handbag, which, as Applicant contends, constitutes a parody of the
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`“ubiquitous” bumper sticker joke “My other car…is a Jaguar.” Id.
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`Applicant’s mere assertions regarding the “ubiquitous” nature of the bumper
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`sticker joke “My other car is …” are not supported by any evidence of consumer
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`recognition of this phrase. The fact that a mark is intended to be a parody is not, by
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`itself, sufficient to overcome a likelihood of confusion refusal. See J. Thomas
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`McCarthy, McCarthy on Trademarks and Unfair Competition, § 31.153 (4th ed.
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`2010). Parody is a potential defense only if the involved marks otherwise would not
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`be found confusingly similar, and as explained below, this is not the case here. See
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`Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1592 (TTAB 2008)
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`(“In finding that the marks are not similar, we have given no weight to applicant’s
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`argument that his mark is a parody. Parody is not a defense if the marks would
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`otherwise be considered confusingly similar.”). We further note the guidance
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`provided in Research in Motion Ltd. v. Defining Presence Marketing Group Inc., 102
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`USPQ2d 1187, 1191-92 (TTAB 2012):
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`Applicants assert that they should prevail on the question of likelihood of
`confusion inasmuch as their mark is a parody of opposer’s mark. In some
`reported infringement cases from the federal courts, a successful parody
`seems to make confusion less likely. See Hormel Foods Corp. v. Jim
`Henson Productions Inc., 73 F.3d 497, 37 USPQ2d 1516, 1519-22 (2d Cir.
`1996) [Henson's use of “Spa’am” on merchandise for its “Muppet” movie is
`not likely to cause confusion with Hormel's SPAM mark for luncheon
`meat]. Furthermore, when federal courts are dealing with questions of
`alleged infringement, the protective penumbra of free speech may well
`support the premise that members of the public have a right to use words
`in the English language to interest and amuse other persons. However,
`when this Board is asked the narrower question of applicants’ right to
`registration under Section 2(d) of the Lanham Act, the First Amendment
`claim is not as strong as with issues of restraint on use. The center of
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`Serial No. 85521133
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`balance changes even further when the risk of confusion of source,
`affiliation, approval, or endorsement by the source of the known
`expression outweighs the newcomer’s claim to the right to adopt and
`register a humorous moniker. Especially if we should find under the du
`Pont factors that the respective goods and services are not readily
`distinguishable, that they might be targeted to the same consumers
`through overlapping trade channels, and in the event that prospective
`purchasers of applicants’ goods and services might well believe that both
`parties’ goods and services come from the same source, then the likelihood
`of confusion will usually trump any First Amendment concerns.
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`(emphasis added). Nothing in the record points to why Applicant’s so-called parody
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`should trump likelihood of confusion as to the source of the goods.
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`In addition, Applicant’s attempt to limit the nature of its goods is futile. We
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`cannot conclude based on the amended identification that consumers are less likely
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`to be confused as to source. Cf. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1410
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`(TTAB 2015) (“The language ‘associated with William Adams, professionally known
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`as ‘will.i.am’’ is precatory language, and not binding on consumers when they
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`encounter Applicant’s mark.”).
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`For all of the aforementioned reasons, Applicant’s arguments that its applied-for
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`mark constitutes a parody or that the goods themselves embody the concept of
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`parody are unavailing.
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`Likelihood of Confusion Analysis
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`We base our determination under Section 2(d) on an analysis of all of the
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`probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
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`de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
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`also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
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`(Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
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`Serial No. 85521133
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`considerations are the similarities between the marks and the similarities between
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`the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir.
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`2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
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`(CCPA 1976).
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`The Marks
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`We commence with the first du Pont likelihood of confusion factor which involves
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`an analysis of the similarity or dissimilarity of the marks in their entireties as to
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`appearance, sound, connotation and commercial impression. See Palm Bay Imports,
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`Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
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`USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of
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`the marks, but instead ‘whether the marks are sufficiently similar in terms of their
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`commercial impression’ such that persons who encounter the marks would be likely
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`to assume a connection between the parties.” Coach Servs., Inc. v. Triumph
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`Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting
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`Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905
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`(TTAB 2007)). The focus is on the recollection of the average purchaser, who
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`normally retains a general rather than a specific impression of trademarks. In re
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`Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190
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`USPQ 106 (TTAB 1975). Our analysis cannot be predicated on dissection of the
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`involved marks. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
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`1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Rather, we are obliged to consider
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`the marks in their entireties. Id. See also Franklin Mint Corp. v. Master Mfg. Co.,
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`Serial No. 85521133
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`667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark
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`should not be dissected and considered piecemeal; rather, it must be considered as a
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`whole in determining likelihood of confusion.”).
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`Applicant argues that because the marks begin with different words, “MY” and
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`“THE,” and because Registrant’s mark includes the wording “BY ALDO,” the
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`appearance, sound, connotation and commercial impression of the marks are very
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`different. Applicant contends that the last portion of the cited mark, “BY ALDO,” is
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`the dominant feature, because it is an explicit designation of source, leaving the
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`most impactful impression to the consumer reading or hearing the mark.
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`Applicant’s arguments are unconvincing. With regard to the registered mark, we
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`note the well-established principle that in reaching a conclusion on the issue of
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`likelihood of confusion, there is nothing improper in stating that, for rational
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`reasons, more or less weight has been given to a particular feature of a mark,
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`provided the ultimate conclusion rests on a consideration of the marks in their
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`entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
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`1985). See also Stone Lion, 110 USPQ2d at 1161. Applying this principle, we find
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`the initial phrase “THE OTHER BAG” to be the dominant feature of Registrant’s
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`mark. The remaining wording “BY ALDO” is more likely to be perceived by
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`consumers as a tag line or house mark, and as such, fails to obviate the likelihood of
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`confusion. See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007)
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`(finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior,
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`S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and
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`Serial No. 85521133
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`CACHET confusingly similar); In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB
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`2007) (holding CORAZON BY CHICA with design, and CORAZON with design,
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`both for jewelry, likely to cause confusion, noting that, “to many consumers,
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`applicant’s mark for the identical word ‘Corazon’ followed by the phrase ‘BY CHICA’
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`will simply be viewed as the identification of the previously anonymous source of
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`the goods sold under the mark CORAZON”). Furthermore, the first part of a mark
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`is often dominant, as it is here given the likely perception of BY ALDO. Presto
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`Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). See
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`also Palm Bay, 73 USPQ2d at 1692.
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`While the possessive determiner “MY” in Applicant’s mark and the definite
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`article “THE” in Registrant’s mark may sound different and have different
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`meanings, their significance is minimized by the subsequent, identical and more
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`distinctive phrase “OTHER BAG,” notwithstanding Applicant’s and Registrant’s
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`disclaimers of the word “bag.” Both marks imply that their respective bags are
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`distinct from a previously known bag, as if to say – “not this one, but that one.”
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`Thus, although Applicant’s and Registrant’s marks may have some recognizable
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`differences in sight and sound, there are also similarities in connotation, and,
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`ultimately, overall commercial impression. The first du Pont factor therefore weighs
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`in favor of finding a likelihood of confusion.
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`The Goods
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`The next step in our analysis is a comparison of the goods identified in
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`Applicant’s application vis-à-vis the goods identified in the cited registration, the
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`Serial No. 85521133
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`second du Pont factor. See Stone Lion, 110 USPQ2d at 1161; Octocom Systems, Inc.
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`v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
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`1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
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`USPQ2d 1001 (Fed. Cir. 2002). Both Applicant’s and Registrant’s goods are highly
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`similar in nature, if not identical, and Applicant does not contend otherwise. In
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`addition, the Examining Attorney has made of record numerous third-party, used-
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`based registrations identifying both one or more of Registrant’s enumerated items
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`“[h]andbags, carry-all bags, clutch bags, cosmetic bags sold empty, messenger bags,
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`shoe bags for travel, sports bags,” and “tote bags,” which by definition may
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`encompass Applicant’s more narrowly identified “parodic canvas tote bags screen-
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`printed with an artist’s cartoonish rendering of a well-known designer handbag.”
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`See Office Action dated December 27, 2013 (Reg. Nos. 4147166, 4179954, 4218431,
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`4144011, 4429661, 4452293, 4417445, 4425101, and 4454305). As a general
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`proposition, although third-party registrations alone are not evidence that the
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`marks shown therein are in use or that the public is familiar with them, they
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`nonetheless may have probative value to the extent they are based on use in
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`commerce and may serve to suggest that the goods are of a kind that emanate from
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`a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB
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`2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and
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`In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
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`Further, Registrant’s goods are unrestricted and therefore we must assume that
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`these related items could also include “parodic” designs similar to those displayed
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`Serial No. 85521133
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`on Applicant’s goods. The Examining Attorney also provided evidence from the Kate
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`Spade online retail site offering for sale tote bags with whimsical designs as well as
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`clutch bags. See Denial of Request for Reconsideration dated March 23, 2015
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`(excerpts obtained from www.katespade.com). This evidence further suggests that
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`prospective consumers may be accustomed to simultaneously encountering these
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`items in the marketplace under the same mark.
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`In view of the evidence of record, we find that the goods identified in the
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`application and registration are related. As such, the second du Pont factor also
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`weighs in favor of finding a likelihood of confusion.
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`Conclusion
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`After considering all of the evidence properly of record and arguments pertaining
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`to the du Pont likelihood of confusion factors, both the first and second du Pont
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`factors discussed above favor a finding of likelihood of confusion. To the extent that
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`there are any other relevant du Pont factors, we treat them as neutral. We therefore
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`find that there is a likelihood of confusion between Applicant’s mark My Other
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`Bag … for “parodic canvas tote bags screen-printed with an artist’s cartoonish
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`rendering of a well-known designer handbag” and Registrant’s mark THE OTHER
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`BAG BY ALDO for “[h]andbags, carry-all bags, clutch bags, cosmetic bags sold
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`empty, messenger bags, shoe bags for travel, sports bags.”
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`Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.
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