
    286 F. 2d 615; 128 USPQ 542
    Robert Hall Clothes, Inc. v. Mart Lindsay Studds
    (No. 6620)
    United States Court of Customs and Patent Appeals,
    February 6, 1961
    
      J ohn P. McCann for appellant.
    
      Fisher, Christen & Ooodson, Arnold, B. Christen (John J. Byrne of counsel) for appellee.
    [Oral argument December 6, 1960, by Mr. McGann and Mr. Byrne]
    Before Worley, Chief Judge, and Rich, Martin, and Smith, Associate Judges, and Judge William H. Kirkpatrick 
    
    
      
       united States Senior District Judge for the Eastern District of Pennsylvania, designated to participate in place of Judge O’Connell, pursuant to provisions of Section 294(d), Title 28, united States Code.
    
   Martin, Judge,

delivered the opinion of the court:

The Trademark Trial and Appeal Board has dismissed, 122 USPQ 347, an opposition to the registration of “ROSE HALL” for use on women’s, children’s, and men’s wearing apparel and accessories. Mary Lindsay 'Stndds is the applicant. The opposer, Robert Hall Clothes, Inc., has appealed to this court.

The notice of opposition alleges likelihood of damage to the opposer because of the confusing similarity between “ROSE HALL” and opposer’s registered trademarks “ROBERT HALL” and “ROBERTA HALL,” both applied to articles of wearing apparel.

“ROSE HALL” is the name of an old Virginia manor house which appellee restored and uses as her place of business for retailing-women’s and children’s wearing apparel and accessories. “ROSE HALL” is used in appellee’s advertising and on her merchandise labels and packages.

The opposer, appellant here, a subsidiary of United Merchants and Manufaturers, Inc., operates a chain of more than two hundred and fifty retail clothing stores for men, women, and children throughout most of the United States, including areas of Virginia near appellee’s place of business. Appellant’s marks are used to identify both its stores and the merchandise sold therein.

There is no dispute that appellant is the prior user of its marks. The board found the goods of the parties to be identical and stated:

* * * the only question to be determined is whether or not “ROSE HALL’' so resembles “ROBERT HALL” and/or “ROBERTA HALL” as to be likely to cause purchasers to assume that wearing apparel marketed thereunder emanate [sic] from a single source.

The board answered this question by stating that the differences between “ROSE HALL” and appellant’s marks “ROBERT HALL” and “ROBERTA HALL” are sufficient to obviate any likelihood of confusion, mistake, or deception of purchasers. In reaching this answer, the board stated:

The primary resemblance between applicant’s mark and opposer’s marks lies in the term “HALL”. There can be no doubt that by opposer’s extensive use and promotion, the notation “ROBERT HALL” has become well known and is identified in the public mind as an indication of origin of the wearing apparel sold in opposer’s establishments, but there is nothing in the record which would tend to indicate that either opposer or its merchandise is known and identfied by the term “HALL” alone.
Insofar as applicant’s mark may be considered to be the name of an individual, “HALL” is a common surname, and people are accustomed to distinguish between persons having such surnames by their baptismal names. Hence, the purchasing public would be likely to rely upon the marks here involved in their entireties in identifying and distingushing the products sold thereunder; * * *

In a footnote to its opinion, tbe board also stated:

it appears that applicant uses the mark “ROSE HALL” only in connection with articles of wearing apparel for women and children. Accordingly, if applicant ultimately prevails herein, the Examiner of Trademarks should reexamine the application in the light thereof.

During the discovery period of these proceedings, appellant submitted interrogatories to appellee and on the basis of the answers thereto apparently argued before the board that registration of “ROSE HALL” should be denied because it is geographically descriptive, is not used as a trademark, and is not used in interstate commerce. The notice of opposition was not amended to include these points and the board did not discuss them in its opinion. Appellant continues to rely heavily on these additional reasons for denial of registration of “ROSE HALL.” Appellee, on the other hand, urges that these reasons relate to ex parte procedures which were not pleaded, which appellant has no standing to challenge, and on which the board properly did not rule.

With regard to the issue of confusing similarity, appellant urges that the marks at issue look alike and sound alike, and are used on identical goods, advertised and sold in the same channels of trade in the same area and to the same consumers. Therefore, urges appellant, confusion is virtually inevitable.

Appellee, on the other hand, urges the importance of its operation of a smart elegant women’s dress shop dedicated to the sale of of “high fashion” clothing as compared with the mass production, volume sales, low prices, and low overhead emphasized by appellant in its advertising as a reason that the marks at issue are not likely to confuse the customers particularly with regard to any secondary meaning attached to appellant’s marks by reason of the tremendous promotion of them.

We are of opinion that there is no likelihood of confusion in trade by the concurrent use of “ROBERT HALL” and “ROSE ELALL” on the respective goods of the parties. The word, “HALL,” common to these marks, has little distinctiveness. This conclusion is supported by the many third-party registrations for wearing apparel introduced in evidence wherein “ELALL” is only a part of the trademark. “ELALL” gains trademark significance here when used together with the prefixes such as “ROBERT” or “ROSE.” Considering these marks in their entireties, they have different appearances, spelling, meaning, and they do not sound alike.

As to the other grounds for its appeal, namely that “ROSE ELALL” is geographically descriptive, is not used as a trademark, and is not used in interstate commerce, we do not believe appellant, as a matter of right, can raise these issues at this time since it failed to include them as grounds for these opposition proceedings in the original notice of opposition and-we find no amendment in the record which includes them. Revere Paint Company v. 20th Century Chemical Company, 32 CCPA 1096, 150 F. 2d 135, 66 USPQ 65, and L. J. Mueller Furnace Co. v. United Conditioning Corp., 42 CCPA 932, 222 F. 2d 755, 160 USPQ 112. The decision of the Trademark Trial and Appeal Board is affirmed.  