Melvin Calhoun, Jr.

Trademark Trial and Appeal Board

Apr 27, 2012

No. 77946290 (T.T.A.B. Apr. 27, 2012)

Mailed:
April 27, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Melvin Calhoun, Jr.
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Serial No. 77946290
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Michael P. Martin of Fischback Perlstein Leiberman & Almond
for Melvin Calhoun, Jr.

Jaclyn Kidwell Walker, Trademark Examining Attorney, Law
Office 112 (Angela Bishop Wilson, Managing Attorney).
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Before Seeherman, Bucher and Zervas, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Melvin Calhoun, Jr. (“applicant”) filed an application
to register the standard character mark KUTT CALHOUN on the
Principal Register under Trademark Act Section 1(a), 15
U.S.C. § 1051(a), for “Bottoms; Jackets; Jerseys; Tops;
Wearable garments and clothing, namely, shirts,” claiming
first use and first use in commerce on September 26, 2008.
Applicant asserts at p. 12 of his brief that he “is a very
well[-]known recording artist signed to a successful record
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser. No. 77946290
2
label with a track record of extremely high volume of
record sales and numerous successful albums under [his]
belt”; and KUTT CALHOUN is his stage name.
Registration of applicant’s mark has been refused
under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that applicant's mark so resembles
the mark CALHOUN (in standard character form) for “sports
shirts” in International Class 25, registered on the
Supplemental Register (Registration No. 1164255), that as
used on applicant’s goods, it is likely to cause confusion
or mistake or to deceive.
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 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); and 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
Ser. No. 77946290
3
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); and In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209
(TTAB 1999).
We first consider the goods. The “sports shirts”
identified in registrant’s registration are encompassed by
the “shirts” identified in applicant’s application. Thus,
for purposes of our analysis, we consider the goods to be
in part identical. We need not make determinations
regarding the similarity or dissimilarity of any of the
other goods in the application. If there is likelihood of
confusion based on use of the marks on any of the goods in
applicant’s application and the goods in the cited
registration, the refusal of registration must be affirmed.
See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986 (CCPA 1981).
In addition, applicant’s and registrant’s
identifications of goods do not have any limitation to
particular channels of trade or classes of consumers. When
identical goods are recited in an application and
registration with no limitations as to their channels of
trade or classes of consumers, such channels of trade and
classes of consumers must be considered to be legally
Ser. No. 77946290
4
identical. In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade,
and be sold to the same class of purchasers.”).
Accordingly, we must consider applicant's and registrant’s
goods to be offered in the same channels of trade to the
same potential purchasers, and are not persuaded by
applicant’s argument that the trade channels are different
because applicant sells his clothing to fans as promotional
materials for applicant at concert venues and particular
websites, while registrant’s sport shirts are “presumably
sold in traditional retail channels.”
We next consider the similarity or dissimilarity of
the marks, comparing the marks for similarities and
dissimilarities in appearance, sound, connotation and
commercial impression. Palm Bay, 73 USPQ2d at 1692.
“[T]he test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of
their overall commercial impression so that confusion as to
the source of the goods [or services] offered under the
respective marks is likely to result.” H.D. Lee Co. v.
Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008). “[I]n
articulating reasons for reaching a conclusion on the issue
Ser. No. 77946290
5
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.” In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). Further, as is the case in
this appeal with marks appearing on identical goods, “the
degree of similarity necessary to support a conclusion of
likely confusion declines.” Century 21 Real Estate Corp.
v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992).
Applicant argues that the dominant part of the mark is
KUTT and that the common portion between the two marks, the
“well known surname CALHOUN, … is not likely to be
perceived by purchasers as a distinguishing source because
it is merely descriptive” and registered on the
Supplemental Register. Brief at 9 – 10. On the other
hand, at pp. 12 – 13 of his brief, applicant asserts that
applicant is “very well known”; that “tens of thousands of
dollars [have been] invested into promotion and advertising
of the recording artist and his stage name”; that
applicant’s “debut album landed Applicant KUTT CALHOUN at
#60 on the Billboard charts”; that “[c]onsumers who
purchase the clothing from this artist, recognize the items
Ser. No. 77946290
6
as coming from this recording artist”; and that “[w]ithin
his genre of rap, the mark is … famous among the relevant
consuming public.” Applicant concludes that as a result of
the weakness of registrant’s surname mark and the
recognition of applicant, there cannot be any likelihood of
confusion.1
If the public would associate applicant’s mark with
applicant, as applicant maintains, the association would
exacerbate, rather than obviate, the likelihood of
confusion between applicant's mark and the cited registered
mark. That is, consumers who are aware of applicant’s mark
are likely to believe, upon seeing the registrant’s mark
CALHOUN on sport shirts, that the shirts emanate from the
same source as KUTT CALHOUN shirts. See In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).
In Shell, the Court made clear that “[t]he trademark law
not only protects the consumer from likelihood of confusion
as to commercial sources and relationships, but also
protects the registrant and senior user from adverse
commercial impact due to use of a similar mark by a
newcomer,” and further described the possible impact as
“reverse confusion,” explaining:

1 Applicant’s argument is that applicant himself is famous, not
that KUTT CALHOUN is a famous trademark for clothing.
Ser. No. 77946290
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The term “reverse confusion” has been used
to describe the situation where a significantly
larger or prominent newcomer “saturates the
market” with a trademark that is confusingly
similar to that of a smaller, senior registrant
for related goods or services. The junior user
does not seek to benefit from the goodwill of the
senior user; however, the senior user may
experience diminution or even loss of its mark's
identity and goodwill due to extensive use of a
confusingly similar mark by the junior user. The
avoidance of confusion between users of disparate
size is not a new concept; however, the weighing
of the relevant factors must take into account
the confusion that may flow from extensive
promotion of a similar or identical mark by a
junior user. In considering likelihood of
confusion as to the source of services that are
not identical, or likelihood of confusion as to
whether there is a relation between the source of
the services, the extent of the registrant's and
the newcomer's activities relating to the mark
must be given weight appropriate to the
circumstances. (Citations omitted.)

Consumers who know that KUTT CALHOUN is the name of a
musician would consider CALHOUN as an abbreviated reference
to applicant when these marks are used on the same goods.
Applicant has asserted that CALHOUN is merely
descriptive, registered on the Supplemental Register, and
“not likely to be perceived by purchasers as a
distinguishing source ….” Brief at 10. We acknowledge
that CALHOUN is a surname, and assume that it was
registered on the Supplemental Register for that reason.
However, marks on the Supplemental Register may be cited as
a bar to registration of a mark under Trademark Act § 2(d).
Ser. No. 77946290
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See, e.g., In re Clorox Co., 578 F.2d 305, 198 USPQ 337
(CCPA 1978). There are no “special rules regarding the
registration of marks involving surnames in determining the
issue of likelihood of confusion” under Section 2(d). Hunt
Foods & Indus., Inc. v. Gerson Stewart Corp., 367 F.2d 431,
151 USPQ 350, 352 (CCPA 1966); see also, Wet Seal Inc. v. FD
Management Inc., 82 USPQ2d 1629, n.20 (TTAB 2007) (“The fact
that ARDEN is a surname does not automatically render the
mark weak or entitled to only a narrow scope of
protection.”). Additionally, even if a mark is “weak” or
“descriptive,” it does not mean that it is not entitled to
protection:
The description of marks as “weak” or “strong,”
and references to the “breadth of protection” to
be given a mark, have served as a convenient type
of shorthand in the literature of opinions
concerned with likelihood of confusion. ... Such
expressions, however, should not obfuscate the
basic issue. Confusion is confusion. The
likelihood thereof is to be avoided, as much
between “weak” marks as between “strong” marks, or
as between a “weak” and a “strong” mark.

King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 109 (CCPA 1974). The protection to be
accorded registrant’s mark certainly extends to prevent the
registration, for legally identical goods, of the nearly
identical mark, consisting of the identical surname and
differing only in the addition of KUTT to CALHOUN. Further,
Ser. No. 77946290
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there is no evidence of third-party use of marks containing
the name CALHOUN for similar goods. Thus, while the scope
of protection accorded to registrant’s mark may be limited,
it is not so limited as to allow the registration of
applicant’s mark.
Applicant also argues that the consumers are
sophisticated and that “purchasers of Applicant’s clothing
line will not be confused … because they will be purchasing
merchandise of a rap recording artist, usually at concert
events they will attend where they have paid good money to
see Applicant or on websites for the artist, and other
similar venues.” This argument is really one that concerns
trade channels, which we discussed above, and not purchaser
sophistication or, more accurately, the care with which the
goods will be purchased. We must assume that the goods can
be sold in all appropriate channels of trade, including in
clothing stores where the registrant’s goods are sold.
Further, applicant’s argument does not address the issue of
reverse confusion.
In this situation, where the goods are identical in
part, the trade channels and purchasers are identical, and
the marks are very similar, we find that confusion is
likely, whether it is that applicant’s mark is likely to be
confused with registrant’s mark, or reverse confusion.
Ser. No. 77946290
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Decision: The refusal to register applicant’s mark
under Trademark Act §2(d) is affirmed.