Good Sports, Inc.

Trademark Trial and Appeal BoardMar 13, 2009

No. 77168873 (T.T.A.B. Mar. 13, 2009)

Mailed: March 13, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Good Sports, Inc. ________ Serial No. 77168873 Filed: April 30, 2007 _______ Mario G. Ceste, Law Offices of Mario G. Ceste LLC for Good Sports, Inc. Karen K. Bush, Trademark Examining Attorney, Law Office 105, Thomas G. Howell, Managing Attorney. _______ Before Bucher, Walsh, and Mermelstein, Administrative Trademark Judges. Opinion by Mermelstein, Administrative Trademark Judge: Applicant seeks registration of the mark LAUGHLIN RALLY AT THE REGENCY (in standard characters) for “Clothing namely tee shirts, sweat shirts, hooded sweats, tank-tops, sleeveless shirts, hats, caps, underwear, jackets, bandanas, gloves,” in International Class 25.1 Registration has been finally refused pursuant to Trademark Act § 2(d), 15 U.S.C. § 1052(d), on the ground 1 Alleging first use as of April 16, 2005 and first use in commerce as of March 26, 2007. Applicant claims ownership of prior Registration No. 3267650 for RALLY AT THE REGENCY for “clothing namely tee shirts, sweat shirts, hooded sweats, tank- tops, sleeveless shirts, hats, caps, underwear, jackets, THIS DECISION IS NOT A PRECEDENT OF THE TTAB Serial No. 77168873 2 that applicant’s mark so resembles the marks in the six registrations set out below (all owned by the same entity) as to be likely, if used on the identified goods, to cause confusion, to cause mistake, or to deceive. Trademark Act § 2(d); 15 U.S.C. § 1052(d). We affirm. Reg. No. Mark Goods Use & Use In Commerce Issue Date 2219180 LAUGHLIN RALLY2 T-shirts, International Class 25. Apr. 16, 1996 Jan. 19, 1999 2860601 LAUGHLIN SPRING RALLY3 T-shirts, International Class 25. Organizing and conducting a motorcycle rally, International Class 41 April 2002 July 6, 2004 2916573 LAUGHLIN RALLY Jewelry; goods of precious metals their alloys and goods coated therewith, namely, buckles, badges, cigarette cases, brooches, charms, tie clips and clasps, commemorative coins, non-monetary coins, cufflinks, cups, commemorative plates, cups and mugs, figurines, goblets, medallions, medals, pins; horological and chronometric instruments, namely, watches, clocks, stopwatches, and watch bands, International Class 14. Photographs; stationery; playing cards; decals; stickers; photographic albums; paper bags; bookmarks; calendars; paper coasters; comic books; books, magazines, newsletters and brochures all in the field of motorcycles, motorcycle events and motorcycle rallies; paper flags; folders; greeting cards; maps; modeling clay; note pads; pens; pencils; post cards; fine art prints and artistic posters; stencils; and printed tickets, International Class 16. Lace trimming; embroidered patches for clothing; patches, badges, pins and buttons for clothing; belt clasps, brooches as accessories, not of precious metal and not as imitation jewelry; clothing buckles; and prize ribbons, International Class 26. April 2002 Jan. 4, 2005 bandanas, gloves,” in International Class 25, registered July 24, 2007. 2 “RALLY” disclaimed. Post-registration filings under Trademark Act §§ 8, 9, and 15, accepted, granted, and acknowledged. 3 Trademark Act § 2(f); “SPRING RALLY” disclaimed. Serial No. 77168873 3 Reg. No. Mark Goods Use & Use In Commerce Issue Date 3077260 LAUGHLIN RIVER RALLY4 Photographs; stationery; decals; stickers; photographic albums, paper bags; bookmarks; calendars, paper coasters; comic books; books, magazines, newsletters and brochures all in the field of motorcycles, motorcycle events and motorcycle rallies; paper flags; folders; greeting cards; maps, modeling clay; note pads; pens, pencils, post cards; fine art prints and artistic posters; stencils; and printed tickets, International Class 16. Wearing apparel, namely, t-shirts, sweatshirts, tank tops, woven shirts, sweaters, cardigans, vests, jackets, pants, sweatpants, shorts, skirts, dresses, blouses, coats, belts, and underwear; headgear, namely hats and caps; footwear, namely, shoes, boots, and sneakers, International Class 25. Apr. 24, 2002 Apr. 25, 2001 Apr. 4, 2006 3169041 LAUGHLIN RIVER RALLY5 Lace trimming; embroidered patches for clothing; patches, badges, pins and buttons for clothing; belt clasps, brooches as accessories, not of precious metal and not as imitation jewelry; clothing buckles; and prize ribbons, International Class 26. Entertainment and educational services, namely, organizing and conducting motorcycle rallies, International Class 41. April 2001 Nov. 7, 2006 3181259 LAUGHLIN SPRING RALLY6 Photographs; stationery; playing cards; decals; stickers; photographic albums; paper bags; bookmarks; calendars, paper coasters; comic books; books, magazines, newsletters and brochures all in the field of motorcycles, motorcycle events and motorcycle rallies; paper flags; folders; greeting cards; maps; modeling clay; note pads, pens, pencils, post cards; fine art prints and artistic posters; stencils; and printed tickets, International Class 16. Lace trimming; embroidered patches for clothing; patches, badges, pins and buttons for clothing; belts clasps, brooches as accessories, not of precious metal and not as imitation jewelry; clothing buckles; and prize ribbons, International Class 26. Apr. 24, 2002 Dec. 5, 2006 I. Applicable Law Our determination under Trademark Act § 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm 4 Trademark Act § 2(f) as to “LAUGHLIN;” “RIVER” and “RALLY” disclaimed. 5 Trademark Act § 2(f) as to “LAUGHLIN;” “RIVER” and “RALLY” disclaimed. 6 Trademark Act § 2(f). Serial No. 77168873 4 Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). II. Discussion In our likelihood of confusion analysis, we will focus primarily on the three cited registrations identifying goods in International Class 25, because the goods in those registrations are closest to those identified in the subject application. Those registrations are the ‘180 Registration (LAUGHLIN RALLY), the ‘601 Registration (LAUGHLIN SPRING RALLY), and the ‘260 Registration (LAUGHLIN RIVER RALLY). A. The Similarity Or Dissimilarity And Nature Of The Goods as Described in the Application. The application on appeal identifies “clothing namely tee-shirts, sweat shirts, hooded sweats, tank-tops, Serial No. 77168873 5 sleeveless shirts, hats, caps, underwear, jackets, bandanas, [and] gloves.” The cited registrations identify identical goods, namely, t-shirts (‘180, ‘601, and ‘260 Registrations), and tank tops, hats, and caps (‘260 Registration).7 This factor strongly supports the examining attorney’s refusal to register. B. The Similarity Or Dissimilarity of the Marks. In a likelihood of confusion analysis, we compare the marks for similarities and dissimilarities in appearance, sound, connotation and commercial impression. Palm Bay, 73 USPQ2d at 1692. We begin our comparison with the observation that “[w]hen marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). As noted above, applicant’s goods are in part identical to those identified in the cited registration and are otherwise closely related. Applicant’s mark is LAUGHLIN RALLY AT THE REGENCY, while the marks in the cited registration are LAUGHLIN RALLY 7 The ‘260 Registration also identifies several other items of clothing, all of which are closely related to applicant’s goods. Serial No. 77168873 6 (‘180 Registration), LAUGHLIN SPRING RALLY (‘601 Registration), and LAUGHLIN RIVER RALLY (‘260 Registration). It is readily apparent that applicant’s marks are highly similar to these in the cited registrations in appearance, sound, meaning, and overall impression. Applicant argues that “LAUGHLIN RALLY” is descriptive. App. Br. at 5-6. We disagree. Applicant’s argument is essentially a collateral attack on the validity of the cited registrations. “[W]e point out that this is an ex parte proceeding, and applicant is not permitted to overcome a refusal by arguing that a cited registration is merely descriptive.” In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007), citing In re Dixie Rest. Inc., 41 USPQ2d at 1534-35. While applicant argues that LAUGHLIN is descriptive of Laughlin, Nevada, we note that the registrant’s trademarks are registered on the Principal Register, one without a claim of acquired distinctiveness (and “incontestable,”) and two with claims of acquired distinctiveness as to the term LAUGHLIN. There is thus no basis to consider the term LAUGHLIN, as used in the cited marks to be anything other than a distinctive mark for the identified goods. Applicant correctly points out that the other terms in the cited registrations appear to be descriptive (“RALLY,” “SPRING RALLY,” and “RIVER RALLY” are disclaimed in the Serial No. 77168873 7 cited registrations). While descriptive terms are typically weak, and entitled to little weight in a likely of confusion analysis, they must still be considered part of the mark. In this case, we note the registrant’s consistent use of the terms LAUGHLIN and RALLY in its six registrations covering a variety of goods. These terms are, of course, identical to the same terms used in applicant’s mark, and appear to be used in the same way and carry the same meaning as they do in the cited registrations. Needless to say, we may not – and do not – ignore the phrase “AT THE REGENCY” which applicant has appended to the LAUGHLIN RALLY mark in the ‘180 Registration. Although this phrase is clearly a difference between applicant’s mark and those of the registrant, we find it subordinate to the terms LAUGHLIN RALLY for two reasons: First, as we have previously found, “it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.” Presto Prod., Inc. v. Nice-Pak Prod. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988); see also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692 (“The presence of this strong distinctive term as the first word in both parties’ marks renders the marks similar, especially in light of the Serial No. 77168873 8 largely laudatory (and hence non-source identifying) significance of ROYALE.”). Second, this phrase itself is suggestive and logically subordinate to the initial terms LAUGHLIN RALLY. Rather than carrying the impression of something wholly different, “AT THE REGENCY” appears to merely suggest where the LAUGHLIN RALLY may be found, or to suggest a particular LAUGHLIN RALLY. While applicant’s mark thus appears to be more specific than that of the ‘180 and other cited Registrations, it nonetheless lends the overall impression of referring to the same thing, i.e., the LAUGHLIN RALLY. Finally, it is clear that applicant’s mark would be pronounced very similarly to those of the cited registrant, particularly the ‘180 Registration, in which the first terms are identical. Nonetheless, applicant points out its claim of ownership of Registration No. 3267650 for RALLY AT THE REGENCY for the same goods as listed in the current application. Applicant claims that the mark in its ‘650 Registration forms the dominant portion of the mark in the this application pursuant to a “tacking” theory, or something like it. Serial No. 77168873 9 To be clear, tacking is not an issue in this case,8 and we must consider the mark before us, not the different one in applicant’s prior registration. Applicant’s addition of the term LAUGHLIN in the instant application – the main point of similarity between applicant’s mark and the cited registrant’s marks – makes applicant’s prior registration irrelevant in considering whether the examining attorney has demonstrated a likelihood of confusion vis-à-vis the registrant’s marks. Simply put, applicant’s ownership of a different registration does not entitle applicant to registration of the mark at issue here. Considered in their entireties, we find that applicant’s mark is highly similar in appearance, meaning, sound and commercial impression to the marks in the cited registrations. III. Conclusion After careful consideration of the record evidence and argument, we conclude that in light of the identical and closely related goods, and the highly similar marks at issue, use of applicant’s mark on or in connection with the 8 Tacking is a theory applicable in an inter partes case by which priority may be established by use of the mark in a different form. See generally 1 JEFFREY A. HANDELMAN, GUIDE TO TTAB PRACTICE § 13.12 (2008 & Supp.). Serial No. 77168873 10 identified goods would pose a likelihood of confusion with the marks in the cited prior registrations. Decision: The refusal to register under Trademark Act § 2(d) is accordingly affirmed.