David Livingston

Trademark Trial and Appeal Board

Aug 31, 1999

No. 75055484 (T.T.A.B. Aug. 31, 1999)

Paper No. 15
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 31, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re David Livingston
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Serial No. 75/055,484
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Bruce E. O’Connor and Faye L. Mattson of Christensen O’Connor
Johnson & Kindness for David Livingston.
Allison S. Berman, Trademark Examining Attorney, Law Office 104
(Sidney I. Moskowitz, Managing Attorney).
_______
Before Hohein, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
David Livingston has filed an application to register
the mark "TRUE TRAC" for "watercraft, namely, inboard and
outboard motorized boats and single-rider or two-rider
recreational jet boats".1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that

1 Ser. No. 75/055,484, filed on February 9, 1996, which alleges a bona
fide intention to use the mark in commerce.
Ser. No. 75/055,484
2
applicant’s mark, when applied to his goods, so resembles the
mark "TRAC 14" and design, which is registered, as shown below,
for "catamarans,""2 as to be likely to cause confusion, mistake
or deception.3
Applicant has appealed. Briefs have been filed,4 but
an oral hearing was not requested. We affirm the refusal to
register.

2 Reg. No. 1,211,469, issued on October 5, 1982, which sets forth dates
of first use of August 28, 1980; affidavit §8 accepted and affidavit
§15 filed. As stated in the registration, "[t]he design portion of
the mark comprises a fanciful representation of the numeral '14'."
Such numeral is disclaimed.
3 Although registration was also finally refused on the basis of Reg.
No. 1,590,760, which issued--with a claim of ownership of Reg. No.
1,211,469--on April 10, 1990 for the mark "TRAC" for, inter alia,
"sailboats, specifically of the catamaran type, and structural and
component parts therefor," it is noted that such registration had
already been cancelled pursuant to the provisions of Section 8 of the
Trademark Act, 15 U.S.C. §1058, and thus it will not be given further
consideration.
4 Applicant, with his initial brief, submitted "a preliminary trademark
search" report listing information, retrieved from the "TRADEMARKSCAN"
commercial database, concerning ten "registrations for marks ... for
goods associated with boating that incorporate the word 'track' or its
phonetic equivalents 'trac' or 'track.'" The Examining Attorney, in
her brief, has properly objected to consideration of such evidence as
untimely under Trademark Rule 2.142(d). Moreover, it should be
pointed out that a mere listing of information concerning third-party
registrations is insufficient to make such registrations of record.
See, e.g., In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). The
proper procedure, instead, is to submit either copies of the actual
registrations or the electronic equivalents thereof, i.e., printouts
of the registrations which have been taken from the Patent and
Trademark Office's own computerized database. See, e.g., In re
Consolidated Cigar Corp., 35 USPQ2d 1290, 1292 (TTAB 1995) at n. 3; In
re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) at n. 3 and In
re Melville Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991) at n. 2. In
any event, we hasten to add that even if such evidence properly formed
part of the record, it would make no difference in the disposition of
this appeal inasmuch as seven of the ten registrations are owned by
Ser. No. 75/055,484
3
Turning first to consideration of the respective goods
and the conditions of their sale, applicant asserts that
"motorboats and sailboats are completely separate and distinct
segments of the boating industry." Applicant further contends
that "[w]atercraft, whether it be Appellant’s boats and jet skis
or registrants’ [sic] catamarans, are relatively expensive[,]
costing anywhere from $1,000 and up," and that such goods "are
discretionary purchases which are not frequently replaced." In
view thereof, applicant maintains that the average purchasers of
the respective goods are discriminating purchasers and that they
"will exercise such care in the purchase of a boat, a jet ski or
a catamaran, so as to virtually eliminate the possibility of
confusion as to the origin of the goods".
The Examining Attorney, on the other hand, has made of
record, in support of her position that applicant’s inboard and
outboard motorized boats and recreational jet boats are closely
to registrant’s catamarans,5 over a dozen use-based third-party

the same party, thereby dispelling applicant’s argument that numerous
third-parties have adopted and registered marks containing the terms
"TRACKER," "TRAC" or "TRAK," and none of the third-party marks is as
similar overall to the cited "TRAC 14" mark as is applicant’s "TRUE
TRAC" mark.
5 We judicially notice, in this regard, that a "catamaran" is typically
a type of twin-hulled sailboat. For instance, Webster’s New World
College Dictionary (1997) at 220 defines such term in relevant part as
"1 a narrow log raft or float propelled by sails or paddles 2 a boat,
specif. a racing sailboat, with two parallel hulls, built in the style
of such a float," while The Random House Dictionary of the English
Language (2d ed. 1987) at 325 lists such term in pertinent part as "1.
a vessel, usually propelled by sail, formed of two hulls or floats
held side by side by a frame above them." It is settled that the
Board may properly take judicial notice of dictionary definitions.
See, e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203
F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of Notre Dame du
Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/055,484
4
registrations for marks which, in each instance, are registered
not only for various kinds of motorized boats, such as power
boats, motor boats, speed boats, pleasure boats or yachts, but
also for sailboats or catamaran hull type boats. Although such
registrations are not evidence that the different marks shown
therein are in use or that the public is familiar with them, they
nevertheless have some probative value to the extent that they
serve to suggest that the goods listed therein are of a kind
which may emanate from a single source. See, e.g., In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at
n. 6.
In view thereof, and since it is obvious that sailors
of catamarans or other sailboats may also be owners and/or
operators of motorized boats, having for instance learned their
early seamanship skills while piloting the former, we concur with
the Examining Attorney that applicant’s various watercraft and
registrant’s catamarans are closely related goods which would be
sold through the same channels of trade to the identical classes
of purchasers. Moreover, while such goods would typically not be
inexpensive and thus would rarely be subject to impulse purchase,
the fact that many boat owners may arguably be knowledgeable and
discriminating consumers when it comes to buying a catamaran or a
motorized boat or recreational jet boat does not mean that they
necessarily are highly sophisticated or otherwise knowledgeable
in the field of trademarks or that they are immune from confusion
as to source or sponsorship. See, e.g., Wincharger Corp. v.
Ser. No. 75/055,484
5
Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962); In re
Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988); and In re Pellerin
Milnor Corp., 221 USPQ 558, 560 (TTAB 1983). Instead, confusion
as to source or sponsorship would be likely to occur if such
closely related goods were to be sold under the same or
substantially similar marks.
Turning, therefore, to consideration of the marks at
issue, applicant asserts in particular that "the addition of the
term ’true’ to the term ’trac’ differentiates the sound and
appearance of the resulting mark TRUE TRAC from the previously
registered ... [mark] TRAC 14 ... so as to prevent consumer
confusion." Applicant also contends that, in view of the "most
pertinent definition" of the word "track," which an accompanying
copy of a portion of The American Heritage College Dictionary (3d
ed. 1997) lists at 1432 as meaning "an intended or proper
course,"6 the cited "TRAC 14" and design mark is highly
suggestive because:
One of the primary goals of sailing is to set
a course and stay on that course. Although
marks containing the word "track," or its
phonetic equivalent "trac," may not be
actually descriptive of a particular course
for sailing, they are highly suggestive.
....
Inasmuch as "a highly suggestive mark is entitled to narrow
protection," applicant insists that, "[g]iven the highly
suggestive nature of the mark TRAC, Appellant’s mark TRUE TRAC,

6 Since, as noted previously, the Board may properly take judicial
notice of dictionary definitions, we have considered such evidence
even though it is untimely under Trademark Rule 2.142(d) inasmuch as
it was not submitted until applicant filed his reply brief.
Ser. No. 75/055,484
6
like registrant’s mark TRAC 14 [and design,] is sufficiently
different in sight, sound, and meaning so as to prevent confusion
between the marks.
Finally, applicant urges that, just as the presence of
the term "girl" in the mark "VARGA GIRL" for calendars was held
adequate, in In re Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238,
1239 (Fed. Cir. 1992), to avoid a likelihood of confusion with
the mark "VARGAS" for calendars, "the term ’true’ is an important
feature of the [applicant’s] mark and should be given fair weight
when analyzing the [respective] marks in their entirety." Thus,
when considered in their entireties, applicant maintains that the
commercial impression of its "TRUE TRAC" mark is not so similar
to that of registrant’s "TRAC 14" and design mark that confusion
is likely.
We agree with the Examining Attorney, however, that the
respective marks are substantially similar in sound, appearance,
connotation and commercial impression. As the Examining Attorney
points out, in articulating reasons for reaching a conclusion on
the issue of likelihood 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 [that] the
ultimate conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.3d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, "that a particular
feature is descriptive ... with respect to the involved goods or

Ser. No. 75/055,484
7
services is one commonly accepted rationale for giving less
weight to a portion of a mark ...." 224 USPQ at 751.
Here, as the Examining Attorney observes, the term "14"
in registrant’s "TRAC 14" and design mark has been disclaimed
and, whether such term is regarded as being merely descriptive of
the length of registrant’s catamarans or is simply a model or
grade designation, it is the term "TRAC" which constitutes the
primary, source-distinguishing feature of the mark. Such term is
also the principal source-indicative element of applicant’s "TRUE
TRAC" mark, given the fact that the word "true," we judicially
notice, means among other things "real; genuine; authentic".7
Thus, to prospective purchasers of watercraft who are familiar
with or have otherwise encountered the "TRAC 14" and design mark
in connection with registrant’s catamarans, it would be
reasonable to believe that the mark "TRUE TRAC," when used in
connection with applicant’s inboard and outboard motorized boats
and/or single-rider or two-rider recreational jet boats,
designates additions to or new lines of boats from the same
source.
Plainly, the term "TRAC" in each of the marks at issue
looks and sounds the same and, even assuming that, when used in
connection with boats, such term has a suggestive significance as
indicating an intended or proper course of navigation, the
connotation thereof is still substantially the same in each mark.

7 See, e.g., Webster’s New World College Dictionary (1997) at 1435 and
The Random House Dictionary of the English Language (2d ed. 1987) at
2029.
Ser. No. 75/055,484
8
Overall, the marks "TRUE TRAC" and "TRAC 14" and design, while
distinguishable on a side-by-side basis,8 nevertheless project
such a substantially similar commercial impression that
prospective consumers are likely to perceive applicant’s mark as
simply a variant of registrant’s mark.
In consequence thereof, consumers familiar with
registrant’s mark "TRAC 14" and design mark for "catamarans"
would be likely to believe, upon encountering applicant’s
substantially similar mark "TRUE TRAC" for "watercraft, namely,
inboard and outboard motorized boats and single-rider or two-
rider recreational jet boats," that such closely related goods
emanate from, or are otherwise sponsored by or affiliated with,
the same source. Actual and prospective customers, as previously
indicated, would be especially likely to view applicant’s "TRUE
TRAC" boats as a new or additional product line from the producer
of the catamarans marketed under registrant’s "TRAC 14" and
design mark.
Decision: The refusal under Section 2(d) is affirmed.
G. D. Hohein

8 A side-by-side comparison, however, is not the proper test to be used
in determining the issue of likelihood of confusion since it is not
the ordinary way that consumers will be exposed to the marks. Rather,
it is the similarity of the general overall commercial impression
engendered by the marks which must determine, due to the fallibility
of memory and the consequent lack of perfect recall, whether confusion
as to source or sponsorship is likely. The proper emphasis is thus on
the recollection of the average purchaser, who normally retains a
general rather that a specific impression of trademarks or service
marks. See, e.g., In re United Service Distributors, Inc., 229 USPQ
237, 239 (TTAB 1986); and In re Solar Energy Corp., 217 USPQ 743, 745
(TTAB 1983).
Ser. No. 75/055,484
9
D. E. Bucher
C. M. Bottorff
Administrative Trademark Judges,
Trademark Trial and Appeal Board