In re INC International Co., 101315 USTTAB, 85753740

Docket Nº85753740
Opinion JudgeQUINN, ADMINISTRATIVE TRADEMARK JUDGE
Party NameIn re INC International Company
AttorneyMatthew H. Swyers of The Trademark Company PLLC, for INC International Company. Miroslav Novakovic, Trademark Examining Attorney, Law Office 108, Andrew Lawrence, Managing Attorney.
Judge PanelBefore Quinn, Zervas and Kuczma, Administrative Trademark Judges.
Case DateOctober 13, 2015
CourtUnited States Patent and Trademark Office

In re INC International Company

No. 85753740

United States Patent and Trademark Office, Trademark Trial and Appeal Board

October 13, 2015

This Opinion is Not a Precedent of the TTAB

Matthew H. Swyers of The Trademark Company PLLC, for INC International Company.

Miroslav Novakovic, Trademark Examining Attorney, Law Office 108, Andrew Lawrence, Managing Attorney.

Before Quinn, Zervas and Kuczma, Administrative Trademark Judges.

OPINION

QUINN, ADMINISTRATIVE TRADEMARK JUDGE

INC International Company ("Applicant") filed an apphcation to register on the Principal Register the mark shown below [ Image Omitted ] for "athletic shirts; sport coats" in International Class 25. 1

The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant's mark, when used in connection with Applicant's goods, so resembles the previously registered mark shown below [ Image Omitted ] for "caps; hats; jogging suits; pants; polo shirts; shoes; sweatpants; T-shirts" in International Class 25, 2 as to be likely to cause confusion.

When the refusal was made final, Applicant appealed. Applicant and the Examining Attorney submitted briefs. We affirm the refusal.

Applicant, although acknowledging the presence of a common literal element in the marks, argues that the marks are different. Applicant asserts that the term "baller(s)" is so widely used that purchasers will look to other elements in the marks to distinguish them. Applicant also asserts that the goods are different.3 Applicant states that it is unaware of any instances of actual confusion between the marks. In support of its arguments, Applicant submitted dictionary definitions, an excerpt from Registrant's Facebook page, copies of third-party registrations, and an excerpt of a third-party website.

The Examining Attorney maintains that the marks are similar, and that the goods are highly related and travel through the same trade channels to the same consumers. In support of the refusal, the Examining Attorney submitted dictionary definitions, copies of third-party registrations, and excerpts of third-party websites, Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973). "In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods." In re SL&E Training Stable, Inc., 88 U.S.P.Q.2d 1216, 1217 (TTAB 2008). See also Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 U.S.P.Q. 24, 29 (CCPA 1976) ("The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.").

The Goods

We initially turn to consider the second du Pont factor concerning the goods. When analyzing the similarity of the goods, "it is not necessary that the products of the parties be similar or even competitive to support a finding of likelihood of confusion." Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 U.S.P.Q.2d 1713, 1722 (Fed. Cir. 2012), citing 7-Eleven Inc. v. Wechsler, 83 U.S.P.Q.2d 1715, 1724 (TTAB 2007). Instead, likelihood of confusion can be found "if the respective products are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source." Id. The issue here, of course, is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of these goods. L'Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 U.S.P.Q. 830 (TTAB 1984). Contrary to the gist of Applicant's argument on this factor, in making our determination regarding the relatedness of the goods, we must look to the goods as identified in the application and the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 U.S.P.Q.2d 1157, 1162 (Fed. Cir. 2014), quoting Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 16 U.S.P.Q.2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 U.S.P.Q.2d 1990, 1991 (TTAB 2011). Likelihood of confusion must be found if there is likely to be confusion with respect to any item in a class that comes within the identification of goods in the application and cited registration. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 U.S.P.Q. 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 U.S.P.Q.2d 1393, 1398 (TTAB 2007).

Accordingly, we compare Applicant's "athletic shirts; sport coats" to Registrant's "caps; hats; jogging suits; pants; polo shirts; shoes; sweatpants; T-shirts." Applicant states in its appeal brief that "[t]here is potential for some overlap between the categories of 'athletic shirts' as claimed by the Applicant and the 'polo shirts, … t-shirts' claimed by the Registrant." (12 TTABVUE 13). Applicant goes on to argue, however, that consideration of extrinsic evidence reveals differences between the goods; Applicant relies on Registrant's Facebook page, contending that Registrant's goods bear the names and logos of college and professional basketball teams whereas Applicant's goods are not basketball related or otherwise related to any sports teams.

Applicant's argument is futile. An applicant may not restrict the scope of the goods covered in its application or in the cited registration by argument or extrinsic evidence. In re Midwest Gaming & Entertainment LLC, 106 U.S.P.Q.2d 1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86 U.S.P.Q.2d 1645, 1647 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 U.S.P.Q.2d 763, 764 (TTAB 1986). Thus, any specific differences between the actual natures of the goods are irrelevant in our analysis. The identification of goods in the cited registration does not include the limitation highlighted by Applicant; and Applicant's identification is broadly worded so, for example, Applicant's "athletic shirts" are construed to encompass all types of athletic shirts, including those bearing the names of college and professional basketball teams. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 U.S.P.Q. 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 U.S.P.Q. 139 (CCPA 1958); In re Linkvest S.A., 24 U.S.P.Q.2d 1716 (TTAB 1992) (goods in an identification without limitations or restrictions is presumed to encompass all goods of the type identified).

In point of fact, the Examining Attorney submitted evidence to show that the goods are similar. Of record are numerous use-based third-party registrations showing that in each instance a single entity has registered the same mark for both types of goods involved in this appeal. The examples include the following: Registration No. 4462501 for the mark BTMKR for "caps, T-shirts and sport coats"; Registration No. 4110963 for the mark Q-WEAR for "sweatpants and sport coats"; Registration No. 4065534 for the mark SOCIAL STATUS and design for "T-shirts, polo shirts and sport coats"; Registration No. 4062969 for the mark COMMON METHOD for "T-shirts, sweatpants and sport coats" Registration No. 4055246 for the mark SKRIBBLE (stylized) for "jogging suits, sweat pants and sport coats"; and Registration No. 4034626 for the mark CB (stylized) for "footwear, sport coats, sweatpants, T-shirts." "Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may nevertheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source." In re Mucky Duck Mustard Co., 6 U.S.P.Q.2d 1467, 1470 n.6 (TTAB 1988), aff'd, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 U.S.P.Q.2d 1783, 1785-86 (TTAB 1993).

The Examining Attorney also relied upon the websites of third parties showing that clothing items of the type involved herein are related in terms of function or purpose. (See, e.g., zappos.com, wearenergy.com, bluedevils.org).

Accordingly, the evidentiary record establishes that the goods are similar, and this factor weighs in favor of finding a likelihood of confusion. Trade Channels, Purchasers and Conditions of Sale

As to trade channels, Applicant's argument that its goods are sold through a single website hosted by a third party (unequal.com), while Registrant markets its goods through its Facebook page, is irrelevant. Likewise, Applicant's statement that its goods "are sold primarily to people who appreciate the look of the clothing and the sentiment of the mark, which signals self-confidence and success, " whereas Registrant's goods "are sold primarily to people seeking to announce and display their support for a specific basketball team, " is irrelevant. (Brief, p. 14, 12 TTABVUE 15). These arguments are irrelevant because the identifications of goods do not include any of the limitations relied upon by Applicant in attempting to distinguish the goods. When the identification of goods does not include any limitation as to the trade channels or class of purchasers for the listed goods, it is presumed that the goods move in all normal channels of trade, and that they are available to all classes of purchasers. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107 U.S.P.Q.2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech, Inc., 90 U.S.P.Q.2d 1634, 1638 (TTAB 2009) ("We have no authority to read any restrictions or limitations into the registrant's...

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT