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THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE TTAB Paper No* 17 RFC Mailed May 22 2003 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board In re Jose y Carlos Romano Hnos SA. Serial No* 75/787 161 John R* Crossan of Chapman and Cutler for Jose y Carlos Romano Hnos SA. Henry Zak Trademark Examining Attorney Law Office 108 David Shallant Managing Attorney. Before Simms Cissel and Holtzman Administrative Trademark Judges. Opinion by Cissel Administrative Trademark...

SIMS delivered the opinion of the Commission. EVANS delivered the opinion of the court. Before HIGGINBOTHAM, Chief Judge, EVANS, and TABLE and REHNQUIST, Circuit Judges. Opinion by: HIGGINBOTHAM, Circuit Judge. I This action arises out of the trademark registrations of three products bearing the name Jose Carlos Romano Enos, SA. To preserve the right to a reasonable measure of confusion with the goods of Jose Antonio and Carlos Enos, respectively, this action was instituted by the Trademark Trial and Appeal Board, pursuant to sections 3(a) and 2 of the Latham Act (15 1111(a) and 2), to determine if the Latham Act protects a mark that carries the name Jose Carlos Enos, SA. II The registration of the mark Jose Carlos Romano Enos, SA is governed by part 2 of the Federal Register, Part 2—Registrations and Transfers of Latham Act marks. That part of the rule provides that, on or after November 1, 1974, a mark may be registered if it, when considered in context: (1) carries in connection with its use the distinctive name of a person who carries on an enterprise which carries on the type of business for which the mark is used; and (2) is not likely to cause consumers to believe, directly or indirectly, that an enterprise of such person has been disaffiliated in whole or in part or is not carrying on, or is not currently carrying on, an undertaking that would be a business similar to, or the principal business of the person carrying on the enterprise. 15 1111(a)(2). A The mark Jose Carlos Romano Enos, SA bears the name and marks of Jose Antonio and Carlos Enos, respectively, and is of a generic type. Jose Antonio and Carlos Enos have each registered trademark registrations for the mark, which are registered in their respective names with the Trademark Bureau. The record in connection with the proceedings demonstrates that in the mid-1970's, Jose Antonio began selling a “Jose Carlos” (from the Spanish for “Jose”) line of children's pajamas. These “Jose Carlos” were sold in a variety of sizes and materials to children as young as three years old.

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