4162 Doerr Road, Inc.

Trademark Trial and Appeal Board

May 12, 2014

No. 85627251 (T.T.A.B. May. 12, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: 5/12/2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re 4162 Doerr Road, Inc.
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Serial No. 85627251
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Kimberly A. Berger of Miller, Canfield, Paddock and Stone for
4162 Doerr Road, Inc.

Brin Anderson Desai, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).1
_______

Before Quinn, Wolfson and Gorowitz,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
On May 16, 2012, 4162 Doerr Road, Inc., doing business as
Marshall Distributing, Inc., filed an application under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a), to register the
mark SOLO (in standard characters) for “snowmobile, motorcycle
and ATV clothing, namely, gloves, pants, shirts, boots and
socks” in International Class 25. The application alleges first
use anywhere and first use in commerce on April 30, 2008.

1 The above-named examining attorney did not enter an appearance in the
application until the filing of the appeal brief.
Serial No. 85627251

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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 for applicant’s goods,
so resembles two previously registered marks as to be likely to
cause confusion. The marks are owned by unrelated entities.
The registered marks are the mark shown below

for “clothing, namely, jeans, pants, t-shirts, blouses, shorts,
jackets, sweaters, coats, socks, undergarments, and hats” in
International Class 25;2 and the mark shown below

for “footwear” in International Class 25.3
When the refusals were made final, applicant appealed and
requested reconsideration. The request for reconsideration was
denied, and applicant and the examining attorney filed briefs.
Applicant concedes that its mark and the registered marks
“are nearly identical.” (Brief, p. 3). Although applicant
further acknowledges that the goods “fall within the same broad

2 Registration No. 2927554, issued February 22, 2005; Sections 8 and 15
affidavits accepted and acknowledged.
3 Registration No. 3579672, issued February 24, 2009. The registration
includes the following statements: “The mark consists of the word
‘SOLO’ in stylized block lettering outlined by a single line border
with ovals within the ‘O’ letters. Color is not claimed as a feature
of the mark.”
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category of clothing,” it goes on to contend that the goods are
specifically different and travel in different trade channels,
and that its goods are bought by sophisticated purchasers.
Applicant also asserts that the cited marks are part of a
crowded field of similar marks in the clothing field, and that
there are no known instances of actual confusion. Lastly,
applicant states that the cited marks are not famous. In
support of its position, applicant submitted copies of six
third-party registrations.
The examining attorney maintains that applicant’s mark and
each of the registered marks are virtually identical. Further,
the examining attorney contends that applicant’s “sport”
clothing goods and registrants’ clothing and footwear are
related and move through similar trade channels. In this
connection the examining attorney introduced several third-party
registrations and excerpts of third-party websites to show that
goods of the types involved herein may be produced and sold by
the same entity under the same mark, and that these types of
goods move through the same trade channels to the same classes
of purchasers. The examining attorney likewise is not persuaded
by applicant’s other arguments.
Our determination of the issue of likelihood of confusion
is based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In re E.
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I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two
key considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976).
We first direct our attention to the du Pont factor of the
similarity/dissimilarity between the marks. Applicant concedes,
as indicated earlier, that its mark is “nearly identical” to
each of the registered marks. Indeed, the marks are identical
in sound and meaning (with the term “solo” having no particular
connotation other than its ordinary meaning). As to appearance,
each of the registered marks is stylized, but only minimally so,
especially in the case of Registration No. 2927554. Applicant’s
mark is in standard characters, thus applicant is entitled to
all depictions of its standard character mark regardless of the
font style, size, and/or color. See In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1909-10 (Fed. Cir. 2012); Citigroup
Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1259 (Fed. Cir. 2011). As to the mark shown in
Registration No. 3579672, the stylized design of the letters
does not form a separate commercial impression apart from the
literal portion that is identical to the applied-for mark.
Accordingly, the marks must be considered to be very similar in
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appearance. In view of the identity in sound and meaning, and
the similarity in appearance, the marks engender essentially
identical overall commercial impressions.
The near identity between applicant’s mark and each of the
registered marks, as conceded by applicant, weighs heavily in
favor of a finding of a likelihood of confusion.
We next turn our focus to the second du Pont factor
involving the similarity/dissimilarity between the goods. We
make our determination regarding the similarities between the
goods, channels of trade and classes of purchasers based on the
goods as they are identified in the application and
registration, respectively. Octocom Systems Inc. v. Houston
Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990); and In re Giovanni Food Co., 97 USPQ2d 1990,
1991 (TTAB 2011). Applicant’s identification of goods reads
“snowmobile, motorcycle and ATV clothing, namely, gloves, pants,
shirts, boots and socks.” One registrant’s identification reads
“clothing, namely, jeans, pants, t-shirts, blouses, shorts,
jackets, sweaters, coats, socks, undergarments, and hats,” and
the other registrant’s identification is for “footwear.”
It is not necessary that the respective goods be identical
or competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It is
sufficient that the respective goods are related in some manner,
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and/or that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that could,
because of the similarity of the marks, give rise to the
mistaken belief that they originated from the same producer. In
re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). As found above,
the marks are nearly identical. “[T]he greater degree of
similarity between the applicant’s mark and the cited registered
mark, the lesser the degree of similarity between the
applicant’s goods or services and the registrant’s goods or
services that is required to support a finding of likelihood of
confusion.” Time Warner Entertainment Co. L.P. v. Jones, 65
USPQ2d 1650, 1661 (TTAB 2002). 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. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
The examining attorney introduced several use-based third-
party registrations showing that the same entity has registered
the same mark for both motorsport clothing and/or motorsport
footwear on the one hand, and casual clothing and/or casual
footwear on the other. (Exhibits to Office action, Oct. 11,
2013). A representative sample follows:
• Reg. No. 2776637 for the mark HMK for
“clothing; namely shirts, pants,
sweaters, sweatshirts, jackets, vests,
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socks, hats, gloves, and mittens; and
shoes and boots; namely snowmobile
boots, winter boots, and shoes”;
• Reg. No. 2930812 for the mark KRICKETS
for “dresses, jackets, pants, slacks,
snowmobile suits, winter boots, shoes,
sandals”;
• Reg. No. 3301343 for the mark RR and
design for “outerwear, namely, parkas,
jackets, vests, overcoats and
snowmobile suits; clothing, namely,
coveralls, overalls, shop coats, vests,
pants, shirts and boots”;
• Reg. No. 4159897 for the mark
SABERTOOTH for “boots; boots for
motorcycling; denim jackets; denims;
gloves; golf shirts; hats; hooded sweat
shirts; leather hats; leather jackets;
leather pants; leather shirts; leather
vests; lingerie; long-sleeved shirts;
motorcycle gloves; motorcycle jackets;
polo shirts; rain jackets; shirts;
short-sleeved shirts; sports caps and
hats; sweat pants; sweat shirts; t-
shirts; tee shirts; vests; waterproof
jackets and pants; work shoes and
boots”; and
• Reg. No. 4184265 for the mark DS DANIEL
SMART and design for “gloves; heavy
jackets; jackets; leather jackets;
leather vests; motorcycle gloves;
motorcycle jackets; scarfs; shirts;
sleeved or sleeveless jackets; t-
shirts; vests.”
“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
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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 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864
F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
The evidence of record includes excerpts of third-party
websites showing that certain manufacturers produce both
motorsport clothing and/or motorsport footwear, and casual
clothing and/or casual footwear under a common mark. The
examples include Harley Davidson, Thor, Polaris, Speed and
Strength, O’Neal, Fox Racing, Alpine Stars, Icon, Answer Racing
and Ski-doo. (Exhibits to Office actions, Sep. 7, 2012 and Mar.
23, 2013).
In view of the above, we find that applicant’s goods are
related to the goods of each registrant. The evidence also
shows that the goods travel in similar trade channels (e.g.,
online retailers) to the same classes of ordinary purchasers.
These factors involving the similarity between applicant’s goods
and each registrant’s goods weigh in favor of finding a
likelihood of confusion.
In addition to the key du Pont factors discussed above,
there are additional factors to consider in this case.
Applicant has submitted six third-party registrations for marks
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that include the term “SOLO,” all for clothing. The marks are
as follows: SOLOS KORET (Reg. No. 2042095); KORET SOLOS (Reg.
No. 2925465); SOLO NOVE (Reg. No. 3423837); SOLO THE CAT (Reg.
No. 3848218); SOLO MODA (MODA disclaimed) (Reg. No. 4307130);
and LOBO SOLO (Reg. No. 4358788).
Although we have considered applicant’s evidence of the
third-party registrations, it is of limited probative value to
support applicant’s position because “[t]he existence of [third-
party] registrations is not evidence of what happens in the
marketplace or that consumers are familiar with them nor should
the existence on the register of confusingly similar marks aid
an applicant to register another likely to cause confusion,
mistake or to deceive.” AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). In any
event, none of these registrations is as close in sound,
appearance, meaning and commercial impression to each of the
cited registered marks as is applicant’s applied-for mark. We
find this factor to be neutral.
Applicant contends that purchasers of its goods are
sophisticated when it comes to buying applicant’s clothing.
There is nothing in the respective identifications of goods that
warrants a finding that consumers of either applicant’s or
registrants’ goods would make a careful purchasing decision.
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There are no price restrictions in the identifications, and we
must assume that the respective goods include relatively
inexpensive items. However, even assuming that applicant’s
and/or either registrant’s goods may involve a careful purchase,
it is settled that even sophisticated purchasers are not immune
from source confusion, especially in cases such as the instant
one involving very similar marks and legally identical goods.
See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA
1970) (“Human memories even of discriminating purchasers...are
not infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB
1988). We find that the near identity between the marks and the
similarity between the goods sold thereunder outweigh any
presumed sophisticated purchasing decision. See HRL Associates,
Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989),
aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and
marks outweigh sophisticated purchasers, careful purchasing
decision, and expensive goods). In view thereof, we find this
factor to be neutral.
Applicant states, through its counsel, that it is unaware
of any actual confusion with the cited marks despite five years
of contemporaneous use. Applicant’s assertion, in this ex parte
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proceeding, is entitled to little weight. See In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed.
Cir. 2003) (“uncorroborated statements of no known instances of
actual confusion are of little evidentiary value”). See also In
re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA
1973) (stating that testimony of applicant’s corporate
president’s unawareness of instances of actual confusion was not
conclusive that actual confusion did not exist or that there was
no likelihood of confusion); In re Binion, 93 USPQ2d 1531, 1536
(TTAB 2009); In re 1st USA Realty Professionals Inc., 84 USPQ2d
1581, 1588 (TTAB 2007); In re Kangaroos U.S.A., 223 USPQ 1025,
1026-27 (TTAB 1984). In any event, the record is devoid of
evidence relating to the extent of use of applicant’s and
registrants’ marks and, thus, whether there have been meaningful
opportunities for instances of actual confusion to have occurred
in the marketplace. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). Accordingly,
the du Pont factor of the length of time during and conditions
under which there has been contemporaneous use of the marks
without evidence of actual confusion is considered neutral.
Applicant also makes the argument that the cited marks are
not famous. We simply reiterate what the Board has stated in
the past on this point: “It appears that applicant contends
that the absence of evidence of fame of the registrant’s mark
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should be treated as a factor in applicant’s favor. Because
this is an ex parte proceeding, we would not expect the
examining attorney to submit evidence of fame of the cited mark.
This du Pont factor, as is normally the case in ex parte
proceedings, must be treated as neutral.” In re Thomas, 79
USPQ2d 1021, 1027 n.11 (TTAB 2006). See TMEP § 1207.01(d)(ix)
(April 2014).
We have carefully considered all of the evidence made of
record pertaining to the issue of likelihood of confusion, as
well as all of the arguments related thereto, including any
evidence and arguments not specifically discussed in this
opinion. We conclude that purchasers familiar with registrant’s
“clothing, namely, jeans, pants, t-shirts, blouses, shorts,
jackets, sweaters, coats, socks, undergarments, and hats” sold
under the mark SOLO (stylized), or registrant’s “footwear” sold
under the mark SOLO (stylized), would be likely to mistakenly
believe, upon encountering applicant’s mark SOLO for
“snowmobile, motorcycle and ATV clothing, namely, gloves, pants,
shirts, boots and socks,” that the goods originated from or are
associated with or sponsored by the same entity.
Decision: The refusals to register are affirmed.