Juan Pedro Quesada Samper and Gloria Pina Morales

Trademark Trial and Appeal Board

Sep 20, 2006

No. 78387617 (T.T.A.B. Sep. 20, 2006)

Mailed:
September 20, 2006
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Juan Pedro Quesada Samper and Gloria Pina Morales
________

Serial No. 78387617
_______

Charles P. LaPolla of Ostrolenk, Faber, Gerb & Soffen, LLP
for Juan Pedro Quesada Samper and Gloria Pina Morales.

Dominick J. Salemi, Trademark Examining Attorney, Law
Office 106 (Mary Sparrow, Managing Attorney).
_______

Before Hairston, Walsh and Cataldo, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

On March 19, 2004, Juan Pedro Quesada Samper and
Gloria Pina Morales (Applicants)1 filed an application to
register the mark EXCITE CAT in standard-character form on
the Principal Register for goods identified as “boats” in
International Class 12. Applicants filed both based on
their bona fide intention to use the mark in commerce under

1 The individuals named appear to be joint applicants although
the application does not specify so and the Examining Attorney
did not request clarification.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78387617
2
Trademark Act Section 1(b), 15 U.S.C. § 1051(b), and based
on their ownership of a foreign registration for the mark
under Trademark Act Section 44(e), 15 U.S.C. § 1126(e).
Applicants have disclaimed “CAT.”
The Examining Attorney has refused registration under
the Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based
on a likelihood of confusion with the mark in Reg. No.
2844275, shown below, for goods identified as “boats” in
International Class 12.

The registration issued on May 25, 2004; it claims both
first use anywhere and first use of the mark in commerce on
May 25, 2002.
Applicants responded to the refusal; the Examining
Attorney made the refusal final; and Applicants filed this
appeal. Applicants and the Examining Attorney have filed
briefs; Applicants did not request an oral hearing. We
affirm.
Ser No. 78387617
3

THE LIKELIHOOD OF CONFUSION REFUSAL
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 . . .” Id. The opinion in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1977) sets forth the factors we may
consider in determining likelihood of confusion. Here, as
is often the case, the crucial factors are the similarity
of the marks and the similarity of the goods of the
Applicants and registrant. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”). Below we will discuss all factors as to
which Applicants or the Examining Attorney argued or
presented evidence.
Comparison of the Goods
Applicants have not said a word regarding the goods.
In point of fact, the goods of Applicants and the goods in
the cited registration are absolutely identical. Both the
Ser No. 78387617
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application and the registration identify the goods simply
as “boats.” Of course, in comparing the goods, we must
consider the goods as identified in the application and
registration. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 199 (Fed. Cir. 1983); In re Melville Corp., 18 USPQ2d
1386, 1388 (TTAB 1991). In addition, if the goods are
identical, as is the case here, we must also assume that
the channels of goods of Applicants and registrant are
likewise identical.
Accordingly, we conclude that the goods and the
channels of trade for the goods of Applicants and
registrant are identical. Furthermore, we note that, “the
degree of similarity [between the marks] necessary to
support the conclusion of likely confusion declines” when
the goods 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
To determine whether the marks are confusingly
similar, we must consider the appearance, sound,
connotation and commercial impression of each mark. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005).
Ser No. 78387617
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Applicants first argue that the Examining Attorney
failed to give sufficient consideration to the disclaimed
term “CAT” in determining whether the marks are similar.
Applicants argue more broadly that the Examining Attorney
improperly dissected the marks rather than considering them
in their entireties. Applicants state:
Taken in its entirety, Applicant’s mark EXCITE CAT has
a completely different pronunciation, commercial
impression and appearance than the cited registration
for XCITE and Design. Applicant’s mark is a
combination of two full words, separately pronounced.
The cited registration, however, consists of a single
word fragment expressed in a highly distinctive design
style in which the “X” is capitalized as the term
“cite” remains in lower case while being underlined.
As such the cited mark could also have different
connotations. For example, the emphasis on the letter
“X” may lead some purchasers, particularly men, to
believe that the boat they are purchasing will create
some form of sexual prowess for the owner. Others
could perceive the term “CITE” in the cited mark as
having the connotation of “SIGHT” thereby making the
mark into the equivalent of “X Sight.”

The Examining Attorney, on the other hand, argues that
“CAT” is a generic term, and as such, nondistinctive and
less important in evaluating the commercial impression of
Applicants’ mark.
In evaluating the similarity of the marks, we first
take note of the significance of “cat” in this context.
With his brief, the Examining Attorney had provided a
definition from an on-line dictionary indicating that in
the “nautical” context “cat” means “catamaran.” We decline
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to rely on that definition but instead take judicial notice
of the definition of “cat” from Merriam-Webster’s
Collegiate Dictionary (11th ed. 2003) which defines “cat” as
“4a : CATBOAT b : CATAMARAN.” For completeness, the same
dictionary defines “catamaran” as “a vessel (as a sailboat)
with twin hulls and usu. a deck or superstructure
connecting the hulls.”2 Accordingly, we conclude that “cat”
is, in fact, a generic name for a type of boat. We reject
Applicants’ assertion that the public would not recognize
“cat” as a generic term. The relevant public here are
potential purchasers of boats. We believe they would
recognize this generic term when applied to a boat.
In viewing the marks in their entireties, we conclude
that the marks are similar in appearance, sound, and most
conspicuously in connotation and commercial impression.
In concluding so, we view the marks in the entireties,
but we recognize that the generic term “cat” is less
significant than the dominant literal element “EXCITE” in
Applicants’ mark. Similarly we conclude that the literal

2 We take judicial notice of this dictionary definition.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983). The Board will not take judicial
notice of materials from dictionaries which are only available
on-line. In re Total Quality Group Inc., 51 USPQ2d 1474, 1476
(TTAB 1999).

Ser No. 78387617
7
element “XCITE” is dominant and of greater importance than
the design elements in the registered mark. We also
conclude that the dominant literal element in the marks,
“EXCITE” and “XCITE” are phonetic equivalents.
Applicants have argued at length that we should accord
greater importance to “cat” in their own mark and to the
design elements in the registered mark. However, it is
entirely appropriate to accord greater importance to the
more distinctive elements in the marks than to the less
distinctive elements in determining 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).
Generic terms and design elements, such as those at
issue here, are generally of less importance in determining
whether marks are similar. See In re Dixie Restaurants,
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997)
Ser No. 78387617
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Also, while Applicants contrast their mark with the
display of the registered mark, we note that Applicants’
mark is displayed in standard-character form. When a mark
is displayed in standard-character form we must consider
all reasonable manners in which the mark could be depicted.
See Jockey Intl., Inc. v. Mallory & Church Corp., 25 USPQ2d
1233, 1236 (TTAB 1992) and cases cited therein. In this
case, among the potential displays Applicants might adopt
is one which includes a stylized “X” similar to the display
in the registered mark.
Furthermore, Applicants emphasize the distinction
between the marks based on the registered mark beginning
with “X” and its own mark consisting of the single word
“excite.” Applicants refer to “EXCITE” in their mark as a
“word” and “XCITE” in the registered mark as a “fragment.”
This characterization obscures the inescapable fact (1)
that XCITE is the phonetic equivalent of, and otherwise
equivalent to, EXCITE and (2) that both are the dominant
elements in the respective marks. In emphasizing the
distinctions between these elements, Applicants effectively
ask that we employ a side-by-side comparison. Such a
comparison is not consistent with the way marks are
encountered in the marketplace. Rather, “. . . the
emphasis must be on the average purchaser, who normally
Ser No. 78387617
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retains a general rather than a specific impression of
trademarks.” Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975) and cases cited therein.
Also, Applicants’ arguments that the cited mark will
convey a connotation or commercial impression suggesting
“sexual prowess” or “sight” are imaginative, but not
supported by evidence. We have no reason to believe that
the connotations of “EXCITE” and “XCITE,” as applied to
boats in both instances, will vary significantly.
Accordingly, we have considered the appearance, sound,
connotation and commercial impressions of the marks in
their entireties and conclude that the marks are similar.
In re Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994).
Strength of the Registered Mark
Applicant also argues that the registered mark is
“weak” and, as such, should be accorded a narrow scope of
protection. This argument apparently addresses du Pont
factor (8) - ”The number and nature of similar marks in use
on similar goods.” In re E. I. du Pont de Nemours & Co.,
177 USPQ at 567. To support this argument Applicants refer
to third-party applications and registrations for marks
which include EXCITE in some form. The Examining Attorney
argues that, “third-party registrations, by themselves, are
Ser No. 78387617
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entitled to little weight on the question of likelihood of
confusion.” (Citations omitted.)
As applicant indicates, in appropriate cases, the
Board has considered whether third-party registrations
“. . . indicate that the word, feature or design is more
suggestive than arbitrary in a particular field, and,
therefore, such a registration for goods or services in the
same or related field should be given a more restricted
scope of protection.” (Citations omitted.) On the other
hand, the Court of Appeals for the Federal Circuit recently
has urged caution in relying on third-party registrations
for this purpose noting that registration alone does not
establish that a term is weak and that the probative value
of third-party trademarks depends entirely upon their
usage. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 73 USPQ2d at 1693.
We first note that Applicants have referred to certain
information related to numerous registrations and
applications, but Applicants have not provided copies of
the full records in most cases. Applicants provided
listings of approximately 300 applications and
registrations from Trademark.com, a commercial service, for
marks which include either “EXCITE” or “XCITE.” Applicants
Ser No. 78387617
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have provided copies of only six full records from
Trademark.com and USPTO electronic files.
Generally, mere listings of registrations are not
sufficient to make registrations of record. In re Dos
Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998).
Furthermore, the Board does not take judicial notice of
registrations.3 In re JT Tobacconists, 59 USPQ2d 1080, 1081
n.2 (TTAB 2001). However, in this case the Examining
Attorney did not advise Applicants that the records were
not in proper form, and consequently, the Board will
consider the listings of record. In re Broyhill Furniture
Industries Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001).
Ultimately, the listings have little or no probative value
because they indicate only the mark, the class of goods
and, what appears to be the status of the record.
Furthermore, many of the records, in the listing and
among the full records, relate to pending applications.
Third-party applications, even when copies have been
furnished, have no probative value other than as evidence
that the applications were filed. In re Phillips-Van
Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002). Also,

3 To make registrations properly of record, the Board requires
the submission of copies of the USPTO paper records or copies
directly from the electronic records of the USPTO. In re Volvo
Cars of North America Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1999);
In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974).
Ser No. 78387617
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many of the records, in listings and full records, relate
to registrations which have expired or been cancelled.
Here too, such records have no probative value as to the
strength of EXCITE, even when in proper form. Cf. Action
Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563,
10 USPQ2d 1307, 1309 (Fed. Cir. 1989)(cancelled
registration held not to constitute notice of anything).
Applicants have submitted only one full record for an
active registration for a mark which includes EXCITE in
some form, specifically, Reg. No. 1873759 for the mark WE
ARE DRIVING EXCITEMENT for “motor vehicles, namely,
automobiles, engines therefor and parts therefor.”4
On the basis of all evidence of record relating to
this factor, we conclude that Applicants have failed to
demonstrate that “EXCITE” or “XCITE” is weak when used as a
mark or component of a mark for boats.
Purchaser Sophistication
Applicants also argue that the purchasers for the
goods are sophisticated and that therefore confusion is

4 Applicants also provided information regarding another
registration which appears to be active, but no full record, with
its brief, namely, Reg. No. 2371231 for the mark EXCITE for
“transportation aids for handicapped persons namely electrically
powered wheeled chairs and structural parts therfor.” This
information adds to the information provided in the listing
furnished during prosecution. We have also considered this
information because the Examining Attorney discussed the records
generally and did not object to any evidence.
Ser No. 78387617
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less likely. Applicants state, “Applicant’s goods and the
goods in the cited registration are described as ‘boats’,
which are generally considered to be expensive, luxury
goods for which purchasers are likely to exercise careful
scrutiny before purchasing.” The Examining Attorney
disagrees and states that such purchasers are not immune
from trademark confusion.
We agree with the Examining Attorney. We assume, as
Applicants argue, that the goods of both Applicants and
registrant are relatively expensive, and that the goods
would be purchased with a significant degree of care.
However, the purchasers themselves may not be
sophisticated. That is, we assume that a boat, like an
automobile, may be purchased by members of the general
public who possess varying degrees of sophistication.
Furthermore, 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
this application bearing on the sophistication of the
potential purchasers fails to indicate a diminished
likelihood of confusion.
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Resolving Doubt
In their brief Applicants argue erroneously that, in a
likelihood-of-confusion case such as this, any doubt must
be resolved in favor of Applicants citing cases, such as,
In re Merrill Lynch Pierce Fenner & Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1144 (Fed. Cir. 1987). Merrill Lynch
and the other cases cited by Applicants address
distinctiveness, not likelihood of confusion. In fact, in
likelihood-of-confusion cases the opposite rule applies.
That is, any doubt must be resolved in favor of the prior
registrant. See, e.g., In re Hyper Shoppes (Ohio), Inc.,
837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). Accordingly,
if we had any doubt in this case, and we do not, we would
resolve it in favor of the prior registrant.
CONCLUSION
After considering all of Applicants’ arguments and
evidence bearing on the du Pont factors, we conclude that
there is a likelihood of confusion between Applicants’ mark
and the cited registered mark principally because the goods
of Applicants and registrant and the channels of trade for
those goods are identical, and because the marks are
similar.
Decision: The refusal to register Applicants’ mark
under Section 2(d) of the Act is affirmed.