Prescott Valley Hockey Club, LLC

Trademark Trial and Appeal Board

Mar 10, 2009

No. 78772103 (T.T.A.B. Mar. 10, 2009)

Mailed: March 10, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Prescott Valley Hockey Club, LLC.
________

Serial No. 78772103
Filed: December 13, 2005
_______

Jill J. Chalmers of Holme Roberts & Owen LLP for Prescott
Valley Hockey Club, LLC.

Andrea R. Hack, Trademark Examining Attorney, Law Office
108, Andrew Lawrence, Managing Attorney.
_______

Before Walters, Cataldo, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant seeks registration of ARIZONA SUNDOGS (in
standard characters) for
Boxer shorts; Caps; Gloves; Hats; Jackets;
Jerseys; Polo shirts; Shirts; Shorts; Socks;
Sweat pants; Sweat shirts; Sweaters; T-shirts
solely for sale to and use by, and distribution
to, aficionados of Applicant's entertainment
services in the nature of hockey games, and all
related to Applicant's entertainment services in
the nature of hockey games

in International Class 25.1

THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78772103
2
Registration has been finally refused pursuant to
Trademark Act § 2(d), 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the marks set out below
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).
Reg. No. Mark Goods Issue Date
2788120 SUNDOG Clothing, namely T-shirts and casual wear,
namely, shirts, trousers and shorts
Dec. 2, 2003
24678682 SUNDOG Hand-dyed T-shirts July 10, 2001
16864913 Hand-Dyed T-shirts May 12, 1992

We affirm.
I. Evidentiary Matter
Attached to applicant’s appeal brief were nine pages
of new evidence. The examining attorney objected to this
evidence in her brief as untimely. Ex. Att. Br. at 18.
“The record in the application should be complete prior to
the filing of an appeal.” Trademark Rule 2.142(d). Once
the appeal is filed, new evidence may only be submitted
upon a request for remand, and then only upon a showing of
good cause therefor. Id., see TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (TBMP) § 1207.02 (2d ed. rev. 2004).

1 Based on the allegation of a bona fide intention to use the
mark in commerce. “ARIZONA” disclaimed.
2 Post registration filing under Trademark Act § 8 accepted.
3 Post registration filings under Trademark Act §§ 8, 9, and 15,
accepted, granted, and acknowledged.
Serial No. 78772103
3
Accordingly, the examining attorney’s objection is
sustained. E.g., In re Wada, 48 USPQ2d 1689, 1689 n.2
(TTAB 1998), aff’d, 194 F.3d 1297, 52 USPQ2d 1539 (Fed.
Cir. 1999)(evidence submitted with reply brief not
considered). We have not considered this evidence or the
parts of applicant’s brief discussing it.4
II. 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 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

4 We further agree with the examining attorney that even if
timely, this evidence would not be considered, because it
represents an effort to impermissibly limit the scope of the
cited registrations.

Serial No. 78772103
4
[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
A. The Similarity Or Dissimilarity And Nature Of The
Goods.

Applicant’s goods are partially identical to the goods
set out in the cited registrations, and otherwise closely
related. The prior registrations identify “T-shirts,”
“shirts,” and “shorts,” ‘120 Registration, and “Hand-dyed
T-shirts,” ‘868 & ‘491 Registrations. “Hand-dyed T-shirts”
are a particular kind of “T-shirt” or “shirt,” and are thus
included in applicant’s more broadly described goods. The
remaining item in the ‘210 Registration, “trousers,” is
clearly related to the casual wear set out in the pending
application.
This factor supports the finding of a likelihood of
confusion.
B. Potential Purchasers.

We recognize that applicant has inserted a limitation
in its identification of goods:
Boxer shorts; Caps; Gloves; Hats; Jackets;
Jerseys; Polo shirts; Shirts; Shorts; Socks;
Sweat pants; Sweat shirts; Sweaters; T-shirts
Serial No. 78772103
5
solely for sale to and use by, and distribution
to, aficionados of Applicant's entertainment
services in the nature of hockey games, and all
related to Applicant's entertainment services in
the nature of hockey games.

The underlined wording was added by amendment
submitted with applicant’s request for reconsideration.
Applicant argues that this amendment is significant in
limiting the channels of trade and customers to whom
applicant’s goods are sold, eliminating any possibility of
confusion. App. Br. at 11-14.
The examining attorney disagrees, arguing (1) that the
limiting language applies only to “T-shirts,” Ex. Att. Br.
at 16, and (2) that confusion is still likely because
applicant’s limitation does nothing to limit the
registrant’s goods, Id. at 17. We agree on both counts.
1. Limitation Applies to T-Shirts

With respect to the examining attorney’s first point,
we note that a semicolon (“;”) is used to separate major
clauses in a sentence, often clauses which themselves
contain commas. See, e.g., RANDOM HOUSE DICTIONARY (unabridged
2009)(online edition dictionary.com); Webster’s Secretarial
Handbook 259 (2d ed. 1983).5

5 The Board may take judicial notice of dictionary definitions
and other standard reference works, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
Serial No. 78772103
6
Because the clause “T-shirts solely for sale to and
use by, and distribution to,...” is separated from the
other enumerated items in the identification by a
semicolon, we find that applicant’s limiting language
refers only to its immediate antecedent, “T-shirts,” and
not to any of applicant’s other enumerated goods. While we
realize that this might possibly not be the result
applicant intended,6 we must nevertheless give the
identification of goods its most natural reading.
2. Overlap in Potential Purchasers
We also agree with the examining attorney that –
whether or not all of applicants’ goods are limited – the
registrant’s goods are not restricted in any way.7 Thus, we
must construe the registrant’s customers to include all
usual purchasers of the registrant’s identified clothing

dictionaries that exist in printed format or have regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
6 We note that applicant did not file a reply brief responding to
this or any other argument in the examining attorney’s brief.
7 Based on the untimely evidence attached to its brief, applicant
argues that the registrant’s goods are sold only at live concerts
by jam bands. Again, this evidence is not in the record, and in
any event could not be used to limit the scope of the cited
registration. Octocom Syst. Inc. v. Houston Computers Svcs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of an
applicant's mark must be decided on the basis of the
identification of goods set forth in the application regardless
of what the record may reveal as to the particular nature of an
applicant's goods, the particular channels of trade or the class
of purchasers to which sales of the goods are directed.”)

Serial No. 78772103
7
items. Because “aficionados of applicant’s entertainment
services in the nature of hockey games” presumably wear
clothing, we must consider them to be potential purchasers
of the cited registrant’s goods, as well as those of
applicant.
Applicant’s restriction does not eliminate potential
confusion because even with the restriction, there remains
a significant overlap in the goods of applicant and the
cited registrant as well as consumers thereof. This factor
supports the examining attorney’s refusal of registration.
C. The Similarity Or Dissimilarity of the Marks in
Their Entireties as to Appearance, Sound,
Connotation and Commercial Impression.

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 registrations
and are otherwise closely related.
Serial No. 78772103
8
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. 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 Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
Applicant’s mark is ARIZONA SUNDOGS, while the marks
in the cited registrations are SUNDOG and SUNDOG and
design. Although applicant’s mark includes the term
“ARIZONA,” we find that as used in applicant’s mark, this
term is weak. We note that applicant complied with the
examining attorney’s requirement to disclaim this
“geographically descriptive wording.”8 Disclaimed matter is

8 In the same response to the examining attorney’s disclaimer
requirement, applicant argued that the term “ARIZONA” in its mark
“is not used to reference a specific geographic location or to
indicate that the goods originate from Arizona.” Response to
Office Action at 5 (Dec. 12, 2006). Applicant appears to have
abandoned this position on appeal, and with good reason: It is
obvious from the record that both applicant and its professional
hockey team, the ARIZONA SUNDOGS, are based in Prescott Valley,
Arizona. We have no doubt that the relevant consumers would
Serial No. 78772103
9
not removed from the mark, and we consider the marks in
their entireties, including descriptive matter.
Nonetheless, descriptive terms serve little or no source-
indicating function. For this reason, we conclude that
“SUNDOG” is clearly the dominant portion of applicant’s
mark. This term is virtually identical9 to the mark in two
of the cited registrations, and to the dominant part of the
third.10 Applicant’s addition of “ARIZONA” to the
registered marks does little to distinguish its mark from
them.
Nonetheless, applicant argues that the impression of
its mark differs from that of the registrant because the
significance of applicant’s mark is tied to its
professional hockey team. But again, we must point out
that the registrant’s customers must be construed to
include applicant’s hockey fans – and in any event

recognize the term “ARIZONA” in applicant’s mark as the home of
applicant’s team and immediately recognize the geographic
significance of that term as used on applicant’s clothing.
9 Applicant’s mark uses the plural “SUNDOGS,” while the mark in
the cited registrations comprises the singular term “SUNDOG.”
This difference is immaterial. Wilson v. Delauney, 245 F.2d 877,
114 USPQ 339, 341 (CCPA 1957); In re Pix of America, Inc.,
225 USPQ 691, 692 (TTAB 1985).
10 The mark in the ‘491 Registration is SUNDOG and design. It has
been held that the literal portion of a mark typically dominates
inasmuch it is the words by which consumers will call for the
goods and services. E.g., In re Appetito Provisions Co. Inc.
3 USPQ2d 1553, 1554 (TTAB 1987). That is especially true where –
as in this case – the design (here, a dog inside a sun) simply
reinforces the literal element.
Serial No. 78772103
10
registrant’s goods are clearly not limited to sales in
connection with live concerts by jam bands, as applicant
incorrectly presumes. There is thus nothing in the marks
in the application or registrations which prevents them
from conveying the same commercial impression.
We conclude that the marks are highly similar in
sound, appearance, connotation and commercial impression, a
factor which strongly supports the examining attorney’s
refusal.
D. The Similarity or Dissimilarity of Established,
Likely-to-Continue Trade Channels.

Applicant argues that the
Trade channels utilized by Applicant and the
[registrant] for their respective goods are markedly
different. Applicant’s ARIZONA SUNDOG mark is used in
connection with casual clothing items purchased and
worn by aficionados of Applciant’s professional hockey
team and entertainment event services. Applciant’s
clothing items are worn by persons with knowledge of,
and direct involvement with, Applicant’s professional
hockey team and hockey games. Further, Applicant’s
clothing items may only be purchased or distributed
through Applicant’s website or at Applicant’s events,
a trade channel controlled by Applicant and the
Central Hockey League to which the owner of the
Registered Marks has no access.

App. Br. at 11-12 (internal citation omitted).
Again, we disagree. As the examining attorney points
out, Ex. Att. Br. at 19-21, neither the application nor the
cited registrations include any restrictions on the trade
channels for the respective goods, i.e., the types of
Serial No. 78772103
11
retail outlets through which they will be made available to
the public. We must therefore construe the channels of
trade to include all such means of distribution that are
normally used for the types of clothing identified. Kangol
Ltd. v. KangaROOS U.S.A. Inc., 974 F2d 161, 23 USPQ2d 1945,
1946 (Fed. Cir. 1992); 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.”). Thus construed, we find that applicant’s
goods and those of the registrant include goods may be sold
in the same channels of trade.
This factor further supports the examining attorney’s
refusal to register.
E. Sophistication of Purchasers
Finally, applicant argues that confusion is not likely
because its customers are “conscientious and sophisticated
and exercise extra care with regard to purchasing such
goods and unquestionably know the source of such goods.”
App. Br. at 13, citing In re N.A.D., Inc., 754 F.2d 996,
224 USPQ 969, 971 (Fed. Cir. 1985), In re Shipp, 4 USPQ2d
1174, 1176 (TTAB 1987).
Applicant’s cases are inapposite. Applicant’s goods
and those of the registrant are ordinary clothing items,
Serial No. 78772103
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purchased by ordinary consumers (even if some of them are
dedicated hockey fans). There is no indication in this
record that the goods are unusually expensive, or that the
consumers are experts in the field of clothing. Unlike the
very expensive and highly technical equipment purchased by
professionals in In re N.A.D. (anesthesia equipment), and
In re Shipp (professional dry cleaning machines), the goods
at issue here are ordinary, everyday clothing items
purchased by ordinary consumers. There is no reason to
assume that such purchasers will be unusually vigilant in
these transactions.
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
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.