In Re Jacques Bernier, Inc, 883 F.2d 1026 (Fed. Cir. 1989)

DECISION

Jacques Bernier, Inc. appeals the decision of the Trademark Trial and Appeal Board, refusing registration of LEATHER AND TWEED on the Principal Register as a trademark for cologne for men. We affirm.

OPINION

Registration of LEATHER AND TWEED for cologne for men was refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion in view of three registrations of the mark TWEED for perfumes and toiletries.

Bernier states that there is a difference in appearance and sound, as well as in meaning and in commercial impression, and that the Board placed too much significance on its belief that TWEED is a well known mark. The Commissioner argues, inter alia, that TWEED is a strong mark, and cites The Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419 (CCPA 1977) for the holding that when a composite mark (CALIFORNIA CONCEPT) incorporates an entire arbitrary mark of another (CONCEPT), for closely related goods used in hair treatment, the addition of a suggestive or descriptive term is generally insufficient to avoid likelihood of confusion as to source. "Although we are not free from doubt ... it is a fundamental principle that doubt must be resolved against the newcomer." Id. at 1023, 194 USPQ at 422. See also Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (source of BENGAL LANCER for mixers likely to be confused with source of BENGAL for gin, since goods are sold to same class of purchasers and used together); In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 559 (CCPA 1972) (WEST POINT PEPPERELL and design for woven and non-woven fabrics not registrable in view of registered mark WEST POINT for woolen piece goods; "The issue under Sec. 2(d) is not whether people will confuse the marks but whether the marks will confuse people" ... as to their origin.)

We have reviewed the arguments on both sides, and conclude that the Board correctly refused registration.