KAST, Inc.

Trademark Trial and Appeal Board

Jun 20, 2002

No. 75579579 (T.T.A.B. Jun. 20, 2002)

6/20/02 Paper No. 10
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re KAST, Inc.
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Serial No. 75/579,579
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Erik W. Ibele of Neider & Boucher, S.C. for KAST, Inc.

Scott M. Oslick, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______

Before Hohein, Walters and Wendel, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

KAST, Inc. has filed an application to register the
mark "KARATE AMERICA" and design, as reproduced below,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/579,579
2
for the services of "karate instruction, and the organization
and conduction of karate competitions and demonstrations."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant's mark, when used in connection with its
services, so resembles the mark "KARATE AMERICA, WHERE EVERY
FAMILY IS SPECIAL" and design, as illustrated below,
which is registered for the services of "karate instruction,"2 as
to be likely to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a

1 Ser. No. 75/579,579, filed on October 30, 1999, which alleges a date
of first use anywhere and in commerce of September 1992. The words
"KARATE AMERICA" are disclaimed.

2 Reg. No. 2,105,391, issued on October 14, 1997, which sets forth a
date of first use anywhere and first use in commerce of August 1,
1996. The words "KARATE AMERICA" are disclaimed.
Ser. No. 75/579,579
3
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973). However, as
indicated in Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in any likelihood of
confusion analysis, two key considerations are the similarity of
the goods and/or services and the similarity of the marks.3 Here,
inasmuch as applicant's services are identical ("karate
instruction) in part and are otherwise closely related ("the
organization and conduction of karate competitions and
demonstrations") to registrant's services ("karate
instruction"),4 the focus of our inquiry is on the similarities
and dissimilarities in the respective marks when considered in
their entireties. However, as pointed out in Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994),
["[w]hen marks would appear on virtually identical ... services,

3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and/or services] and
differences in the marks."

4 Applicant, we note, does not take issue with the Examining Attorney's
contention in his brief that "because karate students commonly
participate in demonstrations and competitions arranged by the karate
studios at which they receive such instruction, the Applicant's
services of organizing and conducting karate competitions and
demonstrations are ... highly related to the Registrant's services of
providing karate instruction."

Ser. No. 75/579,579
4
the degree of similarity [of the marks] necessary to support a
conclusion of likely confusion declines."]
Applicant argues that confusion is not likely because,
when considered in their entireties, the respective marks are
sufficiently different, particularly in terms of appearance:
The applicant's mark comprises an
equilateral triangle enclosing a 5-pointed
star which in turn encloses three human
figures in martial arts dress. Underneath
the design are the words "KARATE AMERICA."
The registered mark comprises a stylized ...
United States Flag over a stylized depiction
of a black-belt. Over the black-belt appear
the words "KARATE AMERICA," and underneath
the belt the phrase "WHERE EVERY FAMILY IS
SPECIAL." The words "KARATE AMERICA"
constitute the sole similarity between the
marks. The wording "KARATE AMERICA"
constitutes the largest physical element in
the registered mark.

Although the applicant's mark also uses
the wording "KARATE AMERICA," the wording is
not the largest, or central feature of the
mark. The stylized triangle, star and
human figure design is larger in area than
the space occupied by the wording, and
constitutes an element of at least equal, if
not greater visual significance. The
triangular configuration of the applicant's
mark also distinguishes it from the
rectilinear orientation of the registered
mark. The applicant therefore maintains
that its mark is clearly distinguishable
from the registered mark, and that this ...
reduces the likelihood of confusion.

While we agree with applicant that the marks at issue
are distinguishable on the basis of a side-by-side comparison,
such is not the proper test to be used in determining the issue
Ser. No. 75/579,579
5
of likelihood of confusion inasmuch as it is not the ordinary
way that customers will be exposed to the marks. Instead, 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 concomitant lack of perfect
recall, whether confusion as to source or sponsorship is likely.
The proper emphasis is accordingly on the recollection of the
average purchaser, who normally retains a general rather than a
specific impression of marks. See, e.g., Grandpa Pidgeon's of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574
(CCPA 1973); Envirotech Corp. v. Solaron Corp., 211 USPQ 724,
733 (TTAB 1981); and Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975).
We concur, in view thereof, with the Examining
Attorney that, notwithstanding the disclaimer in both of the
respective marks of the words "KARATE AMERICA," such words,
rather than the design elements, constitute the dominant and
distinguishing feature thereof, when the respective marks are
considered in their entireties, inasmuch as they are the feature
which would be utilized by customers and potential consumers
when calling for or referring to applicant's and registrant's
services. See, e.g., In re Appetito Provisions Co. Inc., 3
USPQ2d 1553, 1554 (TTAB 1987) [where a mark consists of both a
word portion and a design portion, it is generally the word
Ser. No. 75/579,579
6
portion which is more likely to be impressed upon a consumer's
memory and to be used in calling for and/or asking about the
goods and/or services]. Plainly, in both marks, the words
"KARATE AMERICA," due to their prominent display, function as
the name under which applicant and registrant provide their
services to the purchasing public5 and the other design elements
merely play off of and are subordinate to such name in each
mark.
Specifically, the star in applicant's mark, which is
so positioned as to create a portion of a stylized letter "A,"
and the American flag design in registrant's mark, all serve to
underscore that the name under which applicant and registrant
provide their karate instruction services is "KARATE AMERICA."
Similarly, the figures in martial arts dress in applicant's mark
and the black belt in registrant's mark are design elements
which simply reflect various apparel involved in karate
instruction and thus are essentially without source indicative
significance. Overall, and given both the fact that, as
applicant admits, "the wording 'KARATE AMERICA' constitutes the
largest physical element in the registered mark" and the fact
that it forms a significant part of applicant's mark, we find

5 As the Examining Attorney tellingly observes in his brief, "it would
be difficult to imagine potential users utilizing any other element of
the [Applicant's or the] Registrant's mark when calling for the ...
services."

Ser. No. 75/579,579
7
that the marks at issue are substantially similar in sound,
appearance, connotation and commercial impression. Moreover,
while registrant's mark, unlike applicant's mark, contains the
slogan "WHERE EVERY FAMILY IS SPECIAL," we agree with the
Examining Attorney that such is insufficient to distinguish the
respective marks because, as pointed out in his brief:
[W]hen the size and display of this wording
is compared to the size and display of the
wording KARATE AMERICA, it is clear that the
wording WHERE EVERY FAMILY IS SPECIAL is not
a dominant portion of the Registrant's mark.
Nor is this phrase likely to be considered
the name under which the Registrant provides
its services. Rather, this wording is
likely to be perceived as a "tag line" used
by the Registrant to describe its business
philosophy.

Accordingly, we conclude that customers and potential
consumers, who are familiar or acquainted with registrant's
"KARATE AMERICA WHERE EVERY FAMILY IS SPECIAL" and design mark
for its karate instruction services, would be likely to believe,
upon encountering applicant's substantially similar "KARATE
AMERICA" and design mark for its karate instruction services and
its services of organizing and conducting karate competitions
and demonstrations and articles of clothing, that such identical
in part and otherwise closely related services emanate from, or
are sponsored by or associated with, the same source.
Decision: The refusal under Section 2(d) is affirmed.