Rawlings Sporting Goods Company, Inc.

Trademark Trial and Appeal Board

Jan 18, 2007

No. 78483560 (T.T.A.B. Jan. 18, 2007)

Mailed:
18 January 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rawlings Sporting Goods Company, Inc.
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Serial No. 78483560
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Penny R. Slicer of Stinson Morrison Hecker LLP for Rawlings
Sporting Goods Company, Inc.

George M. Lorenzo, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Grendel, Drost, and Cataldo, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 14, 2004, applicant, Rawlings Sporting
Goods Company, Inc., applied, under the intent to use
provisions of Section 1(b) of the Trademark Act (15 U.S.C.
§ 1051(b)), to register the mark PLASMA (standard character
mark) on the Principal Register for “sporting goods,
namely, baseball bats” in Class 28. Serial No. 78483560.
The examining attorney has refused to register applicant’s
mark under Section 2(d) of the Trademark Act (15 U.S.C.
§ 1052(d)) because of a prior registration (No. 2,090,128)
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78483560
2
for the mark BLACK PLASMA (in typed or standard character
form) for “golf clubs” in Class 28.1 When the examining
attorney finally refused registration, this appeal
followed.
In likelihood of confusion cases, we consider the
facts in light of the factors set out by our principal
reviewing Court in In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). More
specifically, the Court’s predecessor explained that “[t]he
fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We begin by considering the similarities and
dissimilarities of the marks. This factor “requires
examination of ‘the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression.’” Palm Bay Imports

1 Issued August 19, 1997; affidavits under Sections 8 & 15
accepted or acknowledged.
Ser No. 78483560
3
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting
du Pont, 177 USPQ at 567). Here, applicant’s mark consists
of a single word PLASMA, without any stylization or design.
The examining attorney has cited a registration for the
mark BLACK PLASMA, also without stylization or design.
Therefore, both marks contain the identical word “Plasma”
and registrant’s mark also includes the word “Black.”
There is no evidence that the word “Plasma” has any meaning
in the field of golf clubs or baseball bats so that it
appears to be an arbitrary term.
The additional word, “Black,” in the registered mark,
the examining attorney argues, “is at the very least
suggestive, if not descriptive, of the color of the
registrant’s sporting goods, and would have little
significance as an indication of a particular source of the
sporting goods.” Brief at 4. In response, applicant
maintains that the “term ‘black’ has many meanings and
connotations beyond mere color.” Reply Brief at 2.2 While
we have considered applicant’s dictionary definitions, it

2 We take judicial notice of applicant’s submitted dictionary
definitions for the term “black.” University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
However, we will not consider the Internet printouts untimely
submitted with applicant’s reply brief. The record should be
complete prior to appeal. 37 CFR § 2.142(d).
Ser No. 78483560
4
is not clear why the term “black” would not be a reference
to the color “black” as opposed to definitions such as
“thoroughly sinister or evil,” “very sad” or “marked by
occurrence of disaster.”
We must, of course, compare the marks in their
entireties, but “there is nothing improper in stating that,
for rational reasons, more or less weight has been given to
a particular feature of the mark, provided [that] the
ultimate conclusion rests on consideration of the marks in
their entireties.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this case,
the term PLASMA is the only feature of applicant’s mark and
we agree with the examining attorney that it is the
dominant feature of registrant’s mark. Not only is it an
arbitrary term but the other term in the cited registration
is simply the term “black.” Consumers are not likely to
distinguish the marks based on this term that can be used
to describe a feature of the goods. While the presence of
the term “black” is a difference, it not does not
significantly change the arbitrary meaning or commercial
impression of the marks. For example, the difference in
meaning or commercial impression between PLASMA and PLASMA
that is modified by the term BLACK for marks on these
sporting goods would not be apparent to many purchasers.
Ser No. 78483560
5
Again, while the additional word “BLACK” would create
differences between the pronunciation and appearance of the
marks, the identical common, arbitrary portions of the
marks would reinforce their similarities.
We have considered applicant’s argument that “it is
the first word, not the second word, that is more likely to
be the dominant portion” citing the Palm Bay case.
However, the Palm Bay case does not stand for the
proposition that the first word is always the dominant
term. Indeed, in that case, the Federal Circuit went on to
explain that: “The presence of this strong distinctive
term as the first word in both parties’ marks renders the
marks similar, especially in light of the largely laudatory
(and hence non-source identifying) significance of the word
ROYALE.” 73 USPQ2d at 1692. That is not the case here
where registrant’s second term is the strong distinctive
term and registrant’s initial term “Black” is the more
common and less distinctive term.
Both applicant’s and registrant’s marks emphasize the
word “Plasma.”3 Consumers are likely to assume that

3 Applicant has submitted copies of two registrations for the
marks PLASMA EDGE for skis (No. 1,972,365) and PLASMA AIR SYSTEMS
for regulators for use with air guns used in paint ball (No.
2,980,048). These marks and goods are significantly different
and they certainly do not establish that the cited mark is weak
or that there is no confusion in this case. Plus Products v.
Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983) (“[T]hird
Ser No. 78483560
6
registrant has chosen to avoid the use of the color “black”
in certain circumstances such as where it would not be
accurate. Overall, we hold that the marks are similar in
sound, appearance, meaning, and commercial impression.
Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194
USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer
design likely to be confused with CONCEPT for hair care
products).
Therefore, the next question is whether the goods are
similar. Applicant acknowledges that “large sporting goods
stores sell a variety of sporting equipment.” Brief at 6.
In addition, applicant itself “offers a variety of sporting
equipment under the mark RAWLINGS.” Brief at 5. More to
the point in this case, the examining attorney has included
several registrations that show that golf clubs and
baseball bats have been registered by the same entity under
a common mark. See, e.g., Registration No. 1,966,420
(MIZUNO); 2,278,787 (COLLEGIATE PACIFIC); 2,683,960
(FOGDOG); 2,914,722 (MICKEY MANTLE); 2,716,054 (ISOGRID);
2,519,910 (DRAGON GOLF LTD. and design); 2,848,335
(design); 2,931,500 (GOOOZE); and 2,940,741 (EDUSPORTZ).
These registrations are at least some evidence that golf

party registrations relied on by applicant cannot justify the
registration of another confusingly similar mark”).
Ser No. 78483560
7
clubs and baseball bats would be sold by the same entity
under a common mark. See In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-party
registrations “are not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may have some probative value
to the extent that they may serve to suggest that such
goods or services are the type which may emanate from a
single source”). See also In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1786 (TTAB 1993). Furthermore, the
examining attorney has included websites from Wilson and
Mizuno that show the same entity using a common mark in
association with golf clubs and baseball bats.
Applicant argues that the “public would not recognize
Appellant’s mark PLASMA or the cited mark BLACK PLASMA as a
mark for multiple types of sporting equipment like they
would WILSON or MIZUNO.” Brief at 5-6. We have no reason
to find that consumers would only assume that registrant’s
mark would be used solely on golf clubs. Applicant is
itself the source of a variety of sporting goods. Indeed,
the evidence suggests that the same mark is registered for
both golf clubs and baseball bats. Consumers who play golf
and baseball could easily encounter these goods in the same
stores. Therefore, we conclude that the baseball bats are
Ser No. 78483560
8
related to golf clubs. Shen Mfg. Co. v. Ritz Hotel Ltd.,
393 F.3d 1238, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004)
(citing Recot, Inc. v. Becton, 54 USPQ2d at 1898) (“[G]oods
that are neither used together nor related to one another
in kind may still ‘be related in the mind of the consuming
public as to the origin of the goods. It is this sense of
relatedness that matters in the likelihood of confusion
analysis’”).
Applicant also argues that “purchasers of golf clubs
and baseball bats are also relatively sophisticated as to
the purchase of these items.” Brief at 7. There is no
evidence that supports a finding that purchasers of golf
and baseball equipment are necessarily sophisticated or
careful purchasers. Indeed, it appears that these items,
like many consumer items, would be purchased by all types
of purchasers from novice or first time purchasers to
highly sophisticated purchasers. Thus, the sophistication
of the purchasers would not be a factor that would make
confusion unlikely. Furthermore, we note that “even
careful purchasers are not immune from source confusion.”
In re Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB
1999).
In this case, applicant is seeking to register its
PLASMA mark for baseball bats while registrant’s mark BLACK
Ser No. 78483560
9
PLASMA is for golf clubs. The marks are very similar, the
goods are related, and the purchasers would overlap.
Furthermore, there is no evidence that would limit these
purchasers to sophisticated or careful purchasers. Under
such circumstances, we hold that confusion would be likely.
We add that to the extent we have doubts, we resolve them,
as we must, in favor of the prior registrant and against
the newcomer. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988) and In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729, 729-30 (CCPA 1973).
Decision: The examining attorney’s refusal to
register applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.