American Sporting Goods Corp.

Trademark Trial and Appeal Board

Aug 21, 2002

No. 75905719 (T.T.A.B. Aug. 21, 2002)

Paper No. 9
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re American Sporting Goods Corporation
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Serial No. 75/905,719
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Michael A. Painter of Isaacman Kaufman & Painter for
American Sporting Goods Corporation.
Radhika P. Raju, Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney).
_______
Before Hairston, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
American Sporting Goods Corporation sought to register
the following composite mark:
on the Principal Register for “clothing, namely,
skateboarding T-shirts, sweatshirts, fleece sweatshirts and
jackets, sweatpants, pants, water resistant and waterproof
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Serial No. 75/905,719
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pants, gloves, jackets, insulated pants and jackets, button-
up and button-down pants and shirts, baseball caps,
headbands, and footwear,”1 in International Class 25.
This case is now before the Board on appeal from the
final refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has held that applicant’s mark, as used in
connection with skateboarding clothing, so resembles the
trademark shown below:
registered for “men's and women's sportswear, men's and
women's casual wear or club wear, men's and women's street
wear, namely, t-shirts, sweatshirts, sweaters, shirts,
jackets, hats, caps, scarves, trousers, pants, jeans,
shorts, skirts, dresses; accessories for trousers or shorts,
namely, belts, excluding footwear,” in International Class
1 Application Serial No. 75/905,719 was filed on January 28,
2000, based upon applicant’s allegation of a bona fide intention
to use the mark in interstate commerce.
Serial No. 75/905,719
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25,2 as to be likely to cause confusion, to cause mistake or
to deceive.
Responsive to the refusal to register, applicant
argues: that the word “Nice” is weak in the clothing field;
that when properly considered in their entireties, these two
composite marks are not confusingly similar; and, that there
is no overlap between registrant’s general clothing items
and applicant’s specialized skateboarding clothing.
On the other hand, the Trademark Examining Attorney
argues: that applicant’s mark is highly similar to
registrant’s mark; that the goods are identical, in part,
and otherwise closely related; and that the correct
presumption is that both registrant’s and applicant’s goods
will move in the same channels of trade.
Both applicant and the Trademark Examining Attorney
have fully briefed the case. However, applicant did not
request an oral hearing before the Board.
We affirm the refusal to register.
In the course of rendering this decision, we have
followed the guidance of In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973).
This case sets forth each factor that should be considered,
2 Reg. No. 2,235,605, issued on March 30, 1999.
Serial No. 75/905,719
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if relevant information is of record, in determining
likelihood of confusion.
Turning first to the similarities/dissimilarities in
the marks, we note the argument in favor of similarity made
by the Trademark Examining Attorney, as follows:
…[A]pplicant’s proposed mark and the
registered mark create the same commercial
impression since the dominant portion of both
marks is the word NICE and since both marks
have a similar arrangement of design and
lettering.
(Examining Attorney’s appeal brief, unnumbered p. 5).
We agree with the Trademark Examining Attorney that the
shared term NICE is the dominant feature of both marks, that
the term, when used without other words, appears to have the
same suggestive connotation for both applicant’s and
registrant’s clothing items, and nothing that applicant has
submitted for the record demonstrates otherwise.3 As to the
sound of the two marks, the word “Nice” is how consumers
would call for the goods of registrant and of applicant.
Consumers would likely not attempt to articulate the large
3 The printouts of the search results for registered marks in
the clothing field containing the word “nice” were submitted along
with applicant’s appeal brief, and hence were untimely. The
record must be complete prior to the time of the appeal. See, 37
CFR 2.142(d); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994). The Trademark Examining Attorney correctly objected to
this tardy submission of third-party registrations, and we have
not considered them in reaching our decision. However, we hasten
to add that even if we had considered them, it would not have
changed our decision herein.
Serial No. 75/905,719
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letter “N” in applicant’s mark or the star designs in
registrant’s mark. Finally, as noted by the Trademark
Examining Attorney, in spite of obvious visual differences
in the two composites, both have design features in the top
portion of the mark with the word NICE immediately beneath
the respective design components.
Accordingly, when comparing these two marks by applying
the traditional sight/sound/meaning trilogy, we find that
both marks create similar overall commercial impressions.
Turning next to the relationship of the goods,
applicant and the Trademark Examining Attorney have reached
quite different conclusions on this factor as well.
Applicant argues that there is neither overlap nor any
relationship between clothing for general purposes and
clothing used for skateboarding:
The amended list of Appellant’s goods have no
legal relationship to those identified in the
‘605 registration. In determining likelihood
of confusion, goods will be deemed to be
identical only if there is an overlap in the
goods recited in the Certificate of
Registration and the application. It is
submitted there is no overlap in the goods
identified in the application, as amended,
and the cited registration…
… Where the goods, users and channels of
trade employed to sell the respective goods
are totally divergent, there is no
relationship between the goods sufficient to
refuse registration… .
Serial No. 75/905,719
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(Applicant’s appeal brief, pp. 7, 8).
By contrast, the Trademark Examining Attorney argues
that the cited registration lists clothing items broadly and
without limitation as to nature, type, channels of trade or
classes of purchasers.
Despite the fact that applicant has amended its listing
of clothing items (presumably intending to limit all the
listed goods to “skateboarding” items), this clarification
contains no restrictions as to channels of trade. Moreover,
judging from the pictures of skateboarding pants,
skateboarding shirts and skateboarding caps displayed on Web
pages reproduced from a variety of third-parties’ Web sites,
these “specialized” items of clothing for skateboarders do
not differ from pants, shirts and caps intended for teens
and young adults involved generally in outdoor activities.
The obvious similarity among all of these skateboarding
items is the prominent display of the brand names targeted
to skateboarders. On the other hand, as to material
construction, basic design, etc., these items of clothing,
seem from this record, to be identical to general activewear
intended for non-skating teens and young adults. Finally,
even if applicant is deemed to market skateboarding clothing
exclusively, and registrant is considered to market general
clothing not suitable for skateboarding, the same consumers
Serial No. 75/905,719
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may be exposed to the marks in circumstances that may well
lead them to conclude that variations of the same mark are
being used for related clothing lines intended for slightly
different uses.
As noted by the Trademark Examining Attorney, there are
no limitations on channels of trade in the registration or
in this application. Presumably, then, both applicant’s and
registrant’s goods would be sold in skateboard shops,
sporting goods stores, and even general department stores
that market clothing items such as t-shirts, sweatshirts,
jackets and pants to skateboarders and to others.
Accordingly, we find that the goods are identical in part,
and that the balance of the goods are closely related, and
that the clothing items of registrant and of applicant will
move in the same channels of trade to the same class of
consumers.
Applicant points out that it already owns Registration
No. 2,360,5094 for another special form mark, as shown below:
4 The assignment branch of the USPTO has recorded at reel 2070,
Frame 0044 an assignment of this registration from the original
registrant, Niceprod, Ltd., a New York corporation, to
American/Niceprod, Inc., a Delaware corporation. However, while
the latter seems to share the same address as applicant,
American/Niceprod, Inc., appears to be a separate corporate entity
from American Sporting Goods Corp. – the applicant herein.
Nonetheless, for the sake of argument, we accept applicant’s claim
of ownership.
Serial No. 75/905,719
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This mark is registered for and, according to applicant, is
used in conjunction with an array of clothing items, shoes
and accessories. In addition to the fact that the
registration file for that mark is not before us, it is
obvious that this is an entirely different mark.5 Each case
before this Board must stand on the unique facts of its own
record. Accordingly, this prior registration is not
persuasive of a contrary result.
Finally, to the extent that there remains any doubt on
the issue of likelihood of confusion, it is well established
that such doubt must be resolved against the newcomer and in
favor of the prior user and registrant. See In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal to register is affirmed.
5 We also note that inasmuch as this registration reflects a
disclaimer of the words “Nice skate shoes,” its existence on the
federal trademark register is hardly a compelling factor in favor
of registration herein. The disclaimer may well have influenced
the Trademark Examining Attorney’s decision to allow registration
of this mark, despite the prior registration of the mark now cited
against applicant.