175413 Canada Inc.

Trademark Trial and Appeal Board

May 18, 1999

No. 75126056 (T.T.A.B. May. 18, 1999)

Paper No. 12
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 18, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re 175413 Canada Inc.
________
Serial No. 75/126,056
_______
Walter Ames of Watson Cole Stevens Davis, P.L.L.C. for
applicant.
Angeli M. Micheli, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Cissel, Quinn and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
175413 Canada Inc. has filed an application to
register the mark RUGBY for “leather and suede articles,
namely, back packs, clothes bags, pouches, shopping bags,
small valises, valises, and school bags.”1

1 Serial No. 75/126,056, filed June 6, 1996 under Section 44(e),
based on Canadian Reg. 386,641, issued July 12, 1991.
Ser No. 75/126,056
2
Registration has been finally refused under Section
2(d) of the Trademark Act, on the ground of likelihood of
confusion with the registered mark RUGBY CLUB for luggage.2
Applicant and the Examining Attorney have filed briefs, but
no oral hearing was requested.
We first consider the du Pont factors3 most relevant
under the present circumstances, namely, the similarity or
dissimilarity of the marks, the similarity or dissimilarity
of the goods and the similarity or dissimilarity of the
channels of trade.
The Examining Attorney argues that, although the marks
must be considered in their entireties, the term RUGBY is
the dominant component of the registered mark, as well as
applicant’s mark in its entirety. Thus, the Examining
Attorney contends that similar commercial impressions are
evoked by the marks, applicant’s mark suggesting the sport
of rugby itself, and the registered mark suggesting a group
who participate in this sport.4

2 Reg. No. 1,651,491, issued July 7, 1991, Section 8 affidavit
accepted.
3 See In re du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973).
4 We find the Examining Attorney’s further argument that use of
the term “rugby,” a demanding and punishing game, on luggage
connotes that the goods are durable and able to endure punishment
to be rather tenuous.
Ser No. 75/126,056
3
Applicant, on the other hand, argues that the word
CLUB in the registered mark cannot be disregarded, that it
is not a descriptive word as used in the mark, but rather
functions to change the meaning of the mark from a sport to
a club and the degree of exclusivity connected therewith.
Applicant has made of record specimens from the
registration file showing use of the registered mark in
conjunction with the mark MEMBERS ONLY, which applicant
claims emphasizes the exclusivity connotation of the
registered mark. In its supplemental brief, applicant has
pointed to the recent decision by our chief reviewing court
in Champagne Louis Roederer S.A. v. Delicato Vineyards, 148
F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998) as being highly
similar. In that case, the court affirmed the Board’s
holding that the second word in applicant’s mark CRYSTAL
CREEK served to create a totally different commercial
impression from the one created by opposer’s mark CRISTAL.
While it is true that marks must considered in their
entireties in determining likelihood of confusion, it is
also well established that there is nothing improper in
giving more or less weight to a particular portion of a
mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985); Hilson Research Inc. v. Society
for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993).
Ser No. 75/126,056
4
In the present case, we agree with the Examining
Attorney that the word RUGBY, applicant’s entire mark, is
the dominant component of the registered mark RUGBY CLUB.
While CLUB may bring to mind a group of persons who play
the sport, still the key focus is on the particular sport,
RUGBY. Any secondary connotation of exclusivity would most
reasonably be on the basis of participation in this sport,
and not on the basis of membership in a club per se.
Furthermore, although not pointed out by the Examining
Attorney, there is another possible interpretation of the
word CLUB in the registered mark which would render its
trademark significance even less. This arises from the
fact that the mark RUGBY CLUB is being used on luggage and
“club bag” is a term used to describe a particular type of
luggage.5
We do not see the parallel which applicant has
attempted to draw with the Roederer case, supra. There the
Board found, and the court agreed, that the mark CRISTAL
evoked the image either of the clarity of the wine with
which it was being used or of the bottle in which it was

5 Inasmuch as the Board may take judicial notice of dictionary
definitions, we note the following:
club bag n. a rectanglar usu. leather traveling bag that
tapers to a purselike opening at the top and that is often
zippered. Webster’s New International Dictionary (1976).
See Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852
(TTAB 1981).
Ser No. 75/126,056
5
contained, whereas the mark CRYSTAL CREEK suggested a clear
creek or stream. The word CREEK played a major part in the
commercial impression being created.
Here, however, the word CLUB is clearly secondary in
importance and its inclusion in the mark does not detract
from the dominant significance of the word RUGBY. Even if
the word is perceived as an indication of an exclusive
group, the primary focus of this group or CLUB remains
RUGBY. Thus, we find the marks as a whole create highly
similar commercial impressions.
Turning to the goods involved, we can see little
distinction between the general category of “luggage” as
covered by the registration and the named items in
applicant’s recitation of goods. While applicant argues
that the designation “luggage” encompasses goods such as
steamer trunks and bulky suitcases which are distinct from
applicant’s goods, this is not the determinative factor.
In the first place, the designation “luggage” reasonably
would be interpreted to specifically cover at least some of
applicant’s goods, such as clothes bags, pouches and
valises. Even if this were not the case, we find that the
Examining Attorney has introduced adequate evidence, in the
form of third-party registrations, that goods such as
backpacks, school bags, clothing bags and luggage are often
Ser No. 75/126,056
6
marketed under a single mark by a particular entity. Thus,
it might well be assumed that applicant’s goods and
registrant’s luggage emanate from the same source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993);
In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB
1988).
Finally, applicant argues that the channels of trade
for the respective goods differ in that applicant’s goods
are “high fashion leather and suede articles” which would
not be sold in the same retail outlets as registrant’s
“more mundane” luggage. There are no limitations, however,
in either the registration or the application with respect
to the channels of trade, and thus it must be presumed that
the goods of both travel in all the normal channels of
trade for goods of this type. See Kangol Ltd. v. KangaROOS
U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992)
and the cases cited therein. Nor is there any limitation
as to the nature or composition of registrant’s luggage,
which would distinguish it from the leather and suede
articles of applicant. Thus, we must make our
determination on the assumption that the goods of both
would be encountered by the same potential purchasers in
the same stores.
Ser No. 75/126,056
7
On the basis of these factors, we find that because of
the similar commercial impressions created by the marks,
and the high degree of similarity of the respective goods
and of the channels of trade in which they would travel,
there is the likelihood of confusion with applicant’s use
of the mark RUGBY for its named leather and suede articles
and registrant’s use of the mark RUGBY CLUB for luggage.
We have not ignored the additional issue raised by
applicant with respect to consistency of practice within
the Office. Applicant has pointed out that its earlier-
filed application to register the mark RUGBY NORTH AMERICA
for goods very similar to those involved here was passed to
publication by a different Examining Attorney without any
citation of the registered mark RUGBY CLUB; that the mark
was not opposed by the registrant; and that the application
has now issued as a registration.
The present Examining Attorney has responded by
relying upon the long standing principle that each case
must be decided on its own merits and that the action of
another Examining Attorney with respect to a different
application is not binding here. We obviously concur with
this principle. We would also point out, however, that
there are specific reasons for a distinction to be made
between the marks involved in the two applications filed by
Ser No. 75/126,056
8
applicant. In the first application the mark was RUGBY
NORTH AMERICA; in the present application the mark is
simply RUGBY. The cited mark is RUGBY CLUB. There are
obvious differences between the two composite marks, RUGBY
NORTH AMERICA and RUGBY CLUB, in appearance and sound
alone. Even though applicant has disclaimed the geographic
term NORTH AMERICA, it remains a part of the mark as viewed
by the public and adds to the impression created thereby.
Thus, we cannot agree with applicant’s argument of
inconsistency on the part of the Office. Although we admit
that there is a certain degree of subjectivity involved in
any determination of likelihood of confusion, there is a
clear basis in this instance for a distinction to be drawn
between the two marks of applicant.
Decision: The refusal under Section 2(d) is affirmed.
R. F. Cissel
T. J. Quinn
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board