Buzz Off Insect Shield, LLC

Trademark Trial and Appeal Board

Sep 15, 2006

No. 78341612 (T.T.A.B. Sep. 15, 2006)

Mailed
September 15, 2006
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Buzz Off Insect Shield, LLC
________

Serial Nos. 78341612 and 765358571
_______

Julie L. Dalke of Latham and Watkins LLP for Buzz Off
Insect Shield, LLC in Ser. No. 78341612 and Howard A.
MacCord of MacCord Mason PLLC for Buzz Off Insect Shield,
LLC in Ser. No. 76535857.

James T. Griffin, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Hohein, Hairston and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On July 24, 2003, Buzz Off Insect Shield, LLC
(“applicant”) filed an intent-to-use application (Ser. No.
76535857) to register the mark BUZZ OFF INSECT SHIELD in
standard-character form for goods now identified as “men's

1 Buzz Off Insect Shield, LLC is the applicant in both identified
applications. Because applicant has appealed from the same
refusal by the same Examining Attorney in both applications and
counsel for applicant has presented similar evidence and
arguments in each appeal, the Board will dispose of both appeals
in a single opinion.

THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78341612 and 76535857
2
shirts, women's shirts, boys' shirts, girls' shirts,
sweatshirts; fishing shirts, fishing vests, raincoats,
hunting jackets, hunting pants, hunting vests, jackets,
coats, sweaters, vests, athletic shorts, walking shorts,
dresses, tank tops, bathing wraps, bathing suits, men's
pants, women's pants, boys' pants, girls' pants, rain
pants, coveralls, athletic socks, dress socks, hats, caps,
scarves, shoes, boots, fishing waders, gloves, footwear,
neckwear, slippers, robes, belts” in International Class 25
(“the BUZZ OFF INSECT SHIELD Application”).2
On December 16, 2003, applicant also filed an intent-
to-use application (Ser. No. 78341612) to register the mark
BUZZ OFF in standard-character form for goods now
identified as “garments, namely shirts, t-shirts, jackets,
coats, sweatshirts, pants, sweat pants, hats, caps, socks,
and bandanas treated with insect repellent” in
International Class 25 (“the BUZZ OFF Application”).
In each of the applications the Examining Attorney has
refused registration under Trademark Act Section 2(d), 15
U.S.C. § 1052(d), based on a likelihood of confusion with
the mark BUZZ-OFF BY VANDERBILT in standard-character form
for goods identified as “men's and boys' knit shirts” in

2 This application includes additional classes not at issue in
this appeal and as to which there is no refusal pending.
Ser No. 78341612 and 76535857
3
International Class 25 (Reg. No. 970833, which issued on
October 16, 1973, and which has been renewed and remains
active). The cited registration claims both a date of
first use anywhere and first use of the mark in commerce in
September of 1971.
Applicant responded to both refusals; the Examining
Attorney made the refusals final in both applications, and
applicant appealed in both applications. Applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing. We affirm the refusals in both
applications.
Section 2(d) of the Act precludes registration of an
applicant’s mark “which so resembles a mark registered in
the Patent and Trademark Office … as to be likely, when
used on or in connection with the goods of the applicant,
to cause confusion …” 15 U.S.C. § 1052(d). To determine
whether there is a likelihood of confusion, we must
consider all evidence of record bearing on the factors
delineated in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977). Here, as is
often the case, the crucial factors are the similarity of
the marks and the similarity of the goods of the applicant
and registrant. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In
Ser No. 78341612 and 76535857
4
addition to those factors, we will also address applicant’s
and the Examining Attorney’s arguments relating to other
factors.
We will consider the refusal with regard to each of
the applications separately, as appropiate.
Comparison of the Goods and Channels of Trade
To find goods related for purposes of Trademark Act
Section 2(d), the goods need not be identical. The goods
need only be related in such a way that the circumstances
surrounding their marketing would result in relevant
consumers mistakenly believing that the goods originate
from the same source. On-Line Careline Inc. v. America
Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir.
2000).
In this case the goods in the cited registration are
“men's and boys' knit shirts.” The goods in the BUZZ OFF
Application include “garments, namely shirts … treated with
insect repellent” as well as “t-shirts, jackets, coats,
sweatshirts, pants, sweat pants, hats, caps, socks, and
bandanas” also “treated with insect repellent.” The goods
in the BUZZ OFF INSECT SHIELD Application include “men's
shirts” and “boys' shirts” as well as “women's shirts,
girls' shirts, sweatshirts; fishing shirts, fishing vests,
raincoats, hunting jackets, hunting pants, hunting vests,
Ser No. 78341612 and 76535857
5
jackets, coats, sweaters, vests, athletic shorts, walking
shorts, dresses, tank tops, bathing wraps, bathing suits,
men's pants, women's pants, boys' pants, girls' pants, rain
pants, coveralls, athletic socks, dress socks, hats, caps,
scarves, shoes, boots, fishing waders, gloves, footwear,
neckwear, slippers, robes, belts.”
This breakdown demonstrates that the goods in both of
the applications at issue are, at least in part, identical
to the goods identfied in the cited registration. That is,
the “men's shirts” and “boys' shirts” identified in the
BUZZ OFF INSECT SHIELD Application logically include the
“men's and boys' knit shirts” identified in the cited
registration. Likewise, the “men's and boys' knit shirts”
identified in the cited registration logically include the
“garments, namely shirts … treated with insect repellent”
identified in the BUZZ OFF Application.
The goods, as identified in the cited registration, in
no way exclude goods treated with insect repellent. If
goods are identified broadly, we must assume that the goods
could include any goods of the general type identified. In
re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). And of
course, in this or any other proceeding we must consider
the goods as identified in the application and
registration. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
Ser No. 78341612 and 76535857
6
198, 199 (Fed. Cir. 1983); In re Melville Corp., 18 USPQ2d
1386, 1388 (TTAB 1991).
For completeness, we also acknowledge, as the
Examining Attorney contends, that many of the remaining
goods in the applications, beyond those goods which are
identical to the goods in the cited registration, are
related to the “men's and boys' knit shirts” identified in
the cited registration. The Board has often found similar
types of clothing items related to one another. See, e.g.,
Jockey Intl., Inc. v. Mallory & Church Corp., 25 USPQ2d
1233, 1236 (TTAB 1992); In re Pix of America, Inc., 225
USPQ 691, 692 (TTAB 1985) and cases cited therein.
Furthermore, even if the cited registration had
spefically excluded goods treated with insect repellent, we
would nonetheless find the goods in both applications and
the cited registration closely related. There is no
evidence that the presence or absence of this feature would
somehow distinguish the goods and preclude confusion where
it would otherwise exist.3 It is entirely reasonable to

3 In the BUZZ OFF INSECT SHIELD Application, applicant also
argues that the goods in other classes included in this
application are not related. The Examining Attorney did not
refuse registration as to any class other than Class 25.
Therefore, we need not consider whether those goods are related.
Also, the presence of certain goods in an application which are
not related to the goods in the cited registration cannot obviate
confusion which may exist as to goods in the application which
are identical or related to the goods in the cited registration.
Ser No. 78341612 and 76535857
7
expect that a party offering men’s and boys’ knit shirts
under a particular mark might also offer men’s and boys’
shirts treated with insect repellent under the same mark or
a variant of that mark.
Applicant also argues that its trade channels differ
from those of the registrant. In the BUZZ OFF Application
applicant argues that, “Goods sold under Applicant’s mark
are highly specialized insect repellent products sold
through exclsuvie retailers, such as L.L. Bean, Bass Pro
Shops, and Ex Officio.” Applicant argues that the
registrant’s products which are ordinary clothing would be
sold through different channels. Likewise, in the BUZZ OFF
INSECT SHIELD Application applicant argues, “Applicant’s
goods are sold in specialty stores and via the Internet on
websites geared towards outdoor activities and travel
(i.e., REI, Magellan’s). Men’s and boys knit shirts
typically would be sold in mass merchandisers or department
stores.”
We must also evaluate the channles of trade based on
the idenfication of goods in the applications and
registration, and in the absence of any restrictions we
must assume that the goods travel in all channels
appropiate to the types of products identified. CBS Inc.
Ser No. 78341612 and 76535857
8
v. Morrow, 218 USPQ at 199; In re Melville Corp., 18 USPQ2d
at 1388.
In the BUZZ OFF INSECT SHIELD Application applicant
has not specified in the identification of goods that the
goods are treatd with insect repellent. Accordingly, for
the purposes of that application, we need not consider
whether this feature would somehow impact the trade
channels for the goods. Therefore, in view of the fact
that the goods in the BUZZ OFF INSECT SHIELD Application
are, at least in part, identical to the goods in the cited
registration we conclude that the goods in the BUZZ OFF
INSECT SHIELD Application and the cited registration would
also travel in the same channels of trade.
The BUZZ OFF Application does specify in the
identification of goods that the goods are treated with
insect repellent. However, in spite of Applicant’s
assertions, there is no evidence that goods with this
feature would be sold in trade channels distinct from goods
of the same general type without this feature. In fact,
applicant indicates that its goods are sold through
outlets, such as L.L. Bean. We will not assume, in the
absence of evidence, that L.L. Bean, and similar outlets,
would not also sell shirts and other clothing which has not
been treated with insect repellent. Accordingly, we
Ser No. 78341612 and 76535857
9
conclude that both types of goods would be sold through
these outlets, and consequently that the channels of trade
of applicant and registrant would be overlapping.
In addition, as we noted above, we must also assume
that the goods in the cited registration could include
shirts treated with insect repellent, in the absence of an
explicit exclusion of such goods. On that basis, the goods
could also be identical and travel in the same channels of
trade.
Accordingly we conckude that the goods in both
applications and the goods in the cited registration are,
at least in part, identical and otherwise related and
travel in the same or overlapping channels of trade.
Furthermore, we note that, “the degree of similarity
[between the marks] necessary to support the conclusion of
likely confusion declines” when the goods or services are
identical. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1992).
Comparison of the Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
the marks. Palm Bay Imports Inc. v. Veuve Clicquot
Ser No. 78341612 and 76535857
10
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
Applicant’s marks are BUZZ OFF and BUZZ OFF INSECT
SHIELD. The cited mark is BUZZ-OFF BY VANDERBILT. It is
significant that all three marks begin with the distinctive
phrase “BUZZ OFF.” Presto Products, Inc. v. Nice-Pak
Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(“. . . [it
is] a matter of some importance since it is often the first
part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered.”). Here it is of
particular importance because BUZZ OFF not only is first
but it stands out in projecting the connotation and
commercial impression in all three marks. “BUZZ OFF” is an
irreverant and memorable phrase which is sure to catch and
hold one’s attnetion when used first in a mark for
clothing.
Contrary to the arugments posed by applicant “INSECT
SHIELD” does little to distinguish the BUZZ OFF INSECT
SHIELD mark from the cited BUZZ-OFF BY VANDERBILT mark.
Applicant has disclaimed “insect” and did not seriously
contest the Examining Attorney’s determination that it is
merely descriptive. While the Examining Attorney
ultimately withdrew the requirement to disclaim “shield,”
it is a highly suggestive term when used immeditely
Ser No. 78341612 and 76535857
11
following and when modified by “insect” and when applied to
goods which are treated with insect repellent.
Accordingly, we conclude that “INSECT SHIELD” contributes
relatively little to the distinctiveness of the mark and
has no significant effect on either the connotation or
commercial impression of this mark.
In concluding that “insect shield” has no significant
effect on the connotation or commercial impression in
applicant’s mark, we argree with applicant’s admonition
that we must view the marks in their entireties. At the
same time, it is entirely appropriate to accord greater
importance to the more distinctive elements in the mark,
here BUZZ OFF, than to the less distinctive elements in
determiniming whether the marks are similar. As the Court
of Appeals for the Federal Circuit observed, “. . . in
articulating reasons for reaching a conclusion on the issue
of confusion, there is nothing improper in stating that,
for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Ser No. 78341612 and 76535857
12
With respect to both of its marks applicant also
argues that the inclusion of “BY VANDERBILT” in the cited
mark distinguishes its marks from the cited mark. On the
other hand, the Examining Attorney argues that the addition
of a house mark, such as BY VANDERBILT, in the manner
evident here is “more likely to add to the likelihood of
confusion than to distinguish the marks.”
In a similar case the Board stated, “… the fact that
applicant’s mark includes the house mark “DIOR” does not
necessarily establish that confusion as to source is
unlikely herein. In cases involving the addition of a
house mark to one of two otherwise confusingly similar
marks, it has been held that such does not serve to avoid
likelihood of confusion. Rather, such condition may
actually be an aggravation of the likelihood of confusion
as opposed to an aid in distinguishing the marks so as to
avoid confusion.” In re Christian Dior, S.A., 225 USPQ
533, 534 (TTAB 1985). See also In re Dennison
Manufacturing Co., 229 USPQ 141 (TTAB 1986) and Key West
Fragrance & Cosmetic Factory, Inc. v. The Mennen Co., 216
USPQ 168 (TTAB 1982). In this case we conclude that the
inclusion of BY VANDRBILT would do nothing to obviate any
lkelihood of confusion with regard to either of applicant’s
marks.
Ser No. 78341612 and 76535857
13
In the BUZZ OFF Application, applicant argues that the
connotation of its mark will differ from registrant’s mark
because applicant’s goods are treated with insect repellent
and the goods of the registrant are not. We reject this
argument. As noted above, we cannot assume that the
registrant’s goods, which are identified broadly, would not
include items treated with insect repellent. Furthermore,
we have no evidence that the primary connotation,
suggesting that someone or something go away, would vary
signficantly depending on whether the goods are treated
with insect repellent or not.
Also in the BUZZ OFF Application, applicant argues
that the presence of the hyphen between BUZZ and OFF in the
cited mark distinguishes the marks. We reject this
argument. This argument presupposes a side—by-side
comparison of the marks which is not the proper test.
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975).
In conclusion, while there are differences in
appearance and sound between each of applicnt’s marks and
the cited mark, we conclude that the position and
importance, and consequent dominance of BUZZ OFF in all
three marks overrides any differences due to the strong
Ser No. 78341612 and 76535857
14
similarity in both connotation and commercial impression
BUZZ OFF projects in all three marks.
Accordingly, we conclude that both BUZZ OFF and BUZZ
OFF INSECT SHIELD are similar to BUZZ-OFF BY VANDERBILT.4
Purchaser Sophistication
In both applications applicant argues that its goods
are directed to sophisticated purchasers who will not be
confused. In the BUZZ OFF INSECT SHIELD Application,
applicant argues, “Consumers of garments treated with
insect repellent, such as Applicant’s, are sophisticated
and discriminating and are not subject to impulse buying.
Applicant’s treated clothing falls in a higher average
price range than typical men’s and boys’ knit shirts, as
established by the declaration of Haynes G. Griffith. Many
of Applicant’s treated clothing items retail for between
$42 and $84 per item, while knit shirts typically sell for
much less.” In the BUZZ OFF Application applicant
indicates that, “Applicant’s treated clothing items retail
for upwards of $100.00 per item.” Applicant states

4 In the BUZZ OFF Application brief applicant has both cited
and discussed a number of cases which originated in the
district courts. These cases involve infringement and
similar claims where the focus is on the actual use of
marks. These cases are of limited relevance here due to
our focus in this proceeding on the particulars of the
applications and registration, not actual use. In re
Bercut-Vandervoort & Co., 229 USPQ 763, 765 (TTAB 1986).
Ser No. 78341612 and 76535857
15
further, “A decision to purchase Applicant’s garments is
only made after careful consideration and research
regarding the insect repellent protection afforded by
Applicant’s garments. Moreover, advertising of Applicant’s
goods is directed specifically to individuals having a need
for such garments and clearly identifies the Applicant so
that potential customers can contact Applicant or its
highly respected authorized retailers.”5 The Examining
Attorney disagrees, arguing that the difference in price
between the goods of applicant and registrant has not been
established and that even sophisticated purchasers are
subject to confusion.
We agree with the Examining Attorney. First, while we
have some information about the potential price range for
applicant’s goods, we have no evidence regarding the price
range of the registrant’s goods. Indeed, registrant’s
goods, as identified in the application, could include
goods treated with insect repellant and retail for the same
price as the goods of applicant. And even if we assume
that registrant’s goods do not include goods treated with

5 We reject applicant’s implied argument here that steps it
takes in its advertising or otherwise will avoid confusion.
We cannot consider such extrinsic matter. Cf. Vornado,
Inc. v. Breuer Electric Mfg. Co., 390 F.2d 724, 156 USPQ
340, 342 (CCPA 1968).

Ser No. 78341612 and 76535857
16
insect repellent, nonetheless the price range may still be
comparable to the price range for applicant’s goods.
Furthermore, the price range applicant indicates for
its goods is not so extreme that we can assume based on
price that consumers will exercise maximum care. Based on
the prices indicated, we can assume that the items would
not be in the category of a check-out-counter impulse
purchase. However, nor can we assume that all purchasers
would exercise a high degree of care. It is most
reasonable to assume that purchasers would exercise
ordinary or moderate care in such a purchase.
Also, while applicant suggests that its goods are
targeted to specialized clientele interested in outdoor
activities and travel, we cannot conclude on that
information that potential purchasers are highly
sophisticated. Indeed, a large percentage of the general
public may have an interest in outdoor activities and
travel. Finally, as the Examining Attorney noted, even
sophisticated purchasers are not immune from trademark
confusion. In re Pellerin Milnor Corp., 221 USPQ 558, 560
(TTAB 1983). Accordingly, we conclude that the evidence in
these applications bearing on the sophistication of the
potential purchasers fails to indicate a diminished
likelihood of confusion.
Ser No. 78341612 and 76535857
17
Other Arguments
In both applications, applicant points out that other
marks, which applicant argues are somehow comparable to the
marks at issue here, coexist on the register. For example,
in the BUZZ OFF INSECT SHIELD Application, applicant argues
that ALIVE BY VANDERBILT and MAN ALIVE coexist, and
therefore, that applicant’s marks should be permitted to
coexist with the cited registration. Each case is unique.
Ultimately we must decide each case on its own merits, and
not based on actions taken on prior applications involving
different facts. In re Nett Designs, Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001). We find applicant’s
arguments regarding actions taken on prior applications
unpersuasive.
In conclusion, after considering all of the evidence
of record bearing on the du Pont factors, we conclude that
there is a likelihood of confusion between both marks of
applicant, BUZZ OFF and BUZZ OFF INSECT SHIELD, and the
BUZZ-OFF BY VANDERBILT mark in the cited registration. We
conclude so principally because the marks are similar,
because the goods are, at least in part, identical or
otherwise related and because the channels of trade for the
goods are overlapping.
Ser No. 78341612 and 76535857
18
Decision: The refusal to register BUZZ OFF (Ser. No.
78341612) under Section 2(d) is affirmed. The refusal to
register BUZZ OFF INSECT SHIELD (Ser. No. 76535857) under
Section 2(d) is affirmed as to International Class 25.
However, because the Examining Attorney did not refuse
registration with respect to the goods in International
Classes 12, 18, 20, 22, 24, 27 and 28 in the BUZZ OFF
INSECT SHIELD Application (Ser. No. 76535857), after this
appeal is terminated the application will go forward to
publication for the goods in those classes.