Richard Starkey aka Ringo Starr

Trademark Trial and Appeal Board

Jan 27, 2009

No. 78821116 (T.T.A.B. Jan. 27, 2009)

Mailed:
Jan. 27, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Richard Starkey aka Ringo Starr
________

Serial No. 78821116
_______

Stephen J. Strauss of Fulwider Patton LLP for Richard
Starkey aka Ringo Starr.

Jeffrey S. DeFord, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Seeherman, Grendel and Wellington, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark RINGO (in standard character form) for Class 25
goods identified in the application as:
clothing, namely sweatshirts and sweatpants,
shorts, tops, t-shirts, sport shirts, shirts,
wind resistant jackets, jackets, belts and socks;
headgear, namely, headbands, hats, caps and
beanies; and footwear, all depicting the name and
image of a famous entertainer.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78821116
2
The application was filed on February 22, 2006, and is
based on applicant’s assertion of a bona fide intention to
use the mark in commerce under Trademark Act Section 1(b),
15 U.S.C. §1051(b).
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that the
mark, as applied to the goods identified in the
application, so resembles the mark RINGO, previously
registered on the Principal Register (in standard character
form) for Class 25 goods identified in the registration as
“men’s, women’s, and children’s clothing; namely, shirts,
blouses, pants, shorts, hosiery, jackets, and underwear,”1
as to be likely to cause confusion, to cause mistake, or to
deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Applicant has appealed the final refusal.
For the reasons discussed below, we affirm the refusal
to register.
Initially, we sustain the Trademark Examining
Attorney’s objection to the evidence (pertaining to
applicant’s fame) which applicant submitted for the first
time with his brief. That evidence is untimely and shall

1 Registration No. 1889314, issued on April 11, 1995. Renewed.

Ser. No. 78821116
3
be given no consideration. Trademark Rule 2.142(d), 37
C.F.R. §2.142(d).
However, we grant applicant’s request (to which the
Trademark Examining Attorney has stated that he has no
objection) that we take judicial notice that applicant is a
famous entertainer who performs under the stage name “Ringo
Starr.”
The Section 2(d) likelihood of confusion issue before
us in this case is whether consumers encountering
applicant’s and registrant’s goods in the marketplace are
likely to be confused, based on the marks appearing on the
respective goods, as to whether a source relationship
exists between the respective goods. Our likelihood of
confusion determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion issue
(the du Pont factors). See In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Restaurants Inc.,
105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Ser. No. 78821116
4
We turn first to the second du Pont factor, which
requires us to determine the similarity or dissimilarity of
the goods identified in applicant’s application and the
goods identified in the cited registration. We find that
applicant’s goods identified as shirts, shorts and jackets
are legally identical to the shirts, shorts and jackets
identified in the cited registration, and that the
remaining clothing items identified in applicant’s
application are closely related to the goods identified in
the cited registration.
We acknowledge that applicant’s identification of
goods expressly provides that applicant’s clothing items
will be limited to clothing “depicting the name and image
of a famous entertainer.”2 However, the clothing items as
set forth in the cited registration are identified broadly
and are not limited or restricted in any way. Registrant’s
goods as identified therefore must be presumed to include
any and all types of the identified goods. In re Elbaum,
211 USPQ 639 (TTAB 1981). This would include clothing

2 We note that on its face, applicant’s identification of goods
does not specifically identify applicant as the “famous
entertainer” whose name and image are depicted on the clothing.
As identified, the clothing could depict the name and image of
any “famous entertainer.” We keep this fact in mind for the
remainder of this opinion, even in those instances in which we
make reference to applicant’s arguments and contentions in which
applicant states that it is applicant’s name and image that are
depicted on applicant’s goods.
Ser. No. 78821116
5
items more specifically identified as “depicting the name
and image of a famous entertainer.”3
In short, because the goods identified in the cited
registration encompass the goods identified in applicant’s
application, the respective goods are legally identical as
to shirts, shorts and jackets, and are closely related as
to the other clothing items. For these reasons, we find
that the second du Pont factor (similarity of the goods)
weighs in favor of a finding of likelihood of confusion.
The third du Pont factor requires us to determine the
similarity or dissimilarity of the trade channels in which

3 Even if we were to assume, as applicant argues, that
registrant’s clothing, unlike applicant’s clothing, would not be
“adorned” with the name and image of a famous entertainer, and
that applicant’s “adorned” clothing is an inherently and
qualitatively different type of clothing than registrant’s
“unadorned” clothing, such that registrant’s “unadorned” clothing
does not encompass and thus is not legally identical to
applicant’s “adorned” clothing, we still would find that
applicant’s and registrant’s goods are similar and related for
purposes of the second du Pont factor. It is settled that the
respective goods need not be identical; they need only be
sufficiently related that source confusion is likely to result if
the goods were to be marketed under similar marks. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); and In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978). Additionally, in cases such as this where
the applicant’s mark is identical to the cited registered mark
(see infra), there need be only a viable relationship between the
respective goods in order to find that a likelihood of confusion
exists. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687
(Fed. Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812 (TTAB
2001); and In re Concordia International Forwarding Corp., 222
USPQ 355 (TTAB 1983). Such a relationship between the goods
exists in this case.

Ser. No. 78821116
6
the respective goods are or would be marketed. Neither
applicant’s identification of goods nor the identification
of goods in the cited registration includes any limitations
or restrictions as to trade channels. The identified goods
therefore must be presumed to be marketed in all normal
trade channels for such goods. In re Elbaum, supra.
Because applicant’s shirts, shorts and jackets are legally
identical to the shirts, shorts and jackets identified in
the cited registration (as discussed above), we find that
the trade channels for those goods likewise are legally
identical. In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB
1994). We further find that the other clothing items
identified in the application and registration,
respectively, are goods which would be marketed in the same
or similar trade channels.
As to trade channels, applicant argues that
“[a]lthough not specifically limited in Applicant’s
application, the express limitation of Applicant’s proposed
RINGO clothing to those items bearing Applicant’s famous
likeness causes the goods, de facto, to travel in different
channels of trade. Such goods would only be sold in places
where rock music fans congregate and purchase special (not
ordinary) clothing.” (Applicant’s brief at p. 8, footnote
3.) We are not persuaded. Applicant has presented no
Ser. No. 78821116
7
evidence to support his mere contention that clothing items
“depicting the name and image of a famous entertainer” are
or would be sold “only in places where rock music fans
congregate.” Moreover, even if applicant’s goods were
deemed to be sold “only in places where rock music fans
congregate,” the identification of goods in the cited
registration contains no trade channel limitations or
restrictions, and the registrant’s clothing items must be
presumed to move in all normal trade channels for such
goods. There is no evidence in the record to support a
finding that the normal trade channels for such clothing
items do not include “places where rock music fans
congregate.”
For these reasons, we find that the third du Pont
factor (similarity of trade channels) weighs in favor of a
finding of likelihood of confusion.
The fourth du Pont factor requires us to consider the
conditions under which the identified goods are or would be
purchased. We find that the clothing items identified in
the application and in the registration are or can be
inexpensive goods which are or could be purchased on
impulse or without a great deal of care by ordinary
consumers. This would include clothing items “depicting
Ser. No. 78821116
8
the name and image of a famous entertainer”; there is no
evidence in the record to the contrary.
Applicant argues that the purchasers of his goods are
dedicated and therefore knowledgeable fans of applicant and
his music (“Ringo-philes”) who wish to collect or own
merchandise (including clothing) “commemorating Applicant,
his music career and concert tours.” However, we cannot
conclude on this record that “Ringo-philes” would be the
only purchasers of the goods at issue here, and that the
potential purchasers of the goods would not include
ordinary consumers.
For these reasons, we find that the fourth du Pont
factor weighs in favor of a finding of likelihood of
confusion.
We turn next to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. Palm Bay Imports, Inc., supra. In this case,
the mark applicant seeks to register is RINGO, in standard
character form. The cited registered mark also is RINGO,
in standard character form.
We find that the marks obviously are identical in
terms of appearance and sound. We also find that they are
Ser. No. 78821116
9
similar if not identical in terms of connotation and
overall commercial impression, because both of the
respective RINGO marks, not just applicant’s, would be
understood to identify and refer to applicant, the famous
entertainer Ringo Starr. Applicant has not suggested any
other connotation and commercial impression that
registrant’s RINGO mark would have.
For these reasons, we find that the marks are similar
and indeed identical in terms of appearance, sound,
connotation and overall commercial impression. The first
du Pont factor weighs in favor of a finding of likelihood
of confusion.
Applicant argues that his fame and renown must be
taken into account in our likelihood of confusion analysis.
He contends that, due to his fame, purchasers will
automatically understand, prior to purchasing applicant’s
goods, that RINGO refers to applicant and that applicant,
not registrant, is the source of applicant’s goods.
This argument is unavailing. The fifth du Pont
likelihood of confusion factor requires us to consider
evidence of “the fame of the prior mark.” In this case, it
is registrant, not applicant, that must be deemed to be the
owner of the “prior mark” as used on the goods for which
applicant seeks to register his mark, i.e., clothing.
Ser. No. 78821116
10
Applicant’s fame as an entertainer does not entitle him to
register RINGO for goods which are the same as or similar
to the goods already covered in registrant’s prior
registration. Applicant’s fame therefore is not a factor
in our likelihood of confusion analysis in this case.4
Considering all of the evidence of record as it
pertains to the relevant du Pont factors, we conclude that
a likelihood of confusion exists in this case. Applicant’s
mark is identical to the cited registered mark.

4 Even if we were to consider applicant’s fame in this case,
and were to agree with applicant’s contention that, due to his
fame as an entertainer, purchasers will automatically understand,
prior to purchasing applicant’s goods, that RINGO refers to
applicant and that applicant, not registrant, is the source of
applicant’s goods, we still would conclude that a likelihood of
source confusion exists. That is, even if, due to applicant’s
fame, purchasers would not mistakenly assume upon encountering
applicant’s clothing that registrant is the source of applicant’s
clothing, the converse is not necessarily true. Applicant’s fame
is likely to lead purchasers to mistakenly assume, upon
encountering registrant’s clothing bearing the RINGO mark, that
applicant is the source of those goods or that registrant’s use
of the RINGO mark necessarily is pursuant to license or other
authorization by applicant. This too is source confusion, which
precludes registration of applicant’s mark under Section 2(d).
See In re General Motors Corp., 196 USPQ 574 (TTAB 1977); Cf.
American Hygienic Laboratories Inc. v. Tiffany & Co., 12 USPQ2d
1979 (TTAB 1989).
Also with respect to applicant’s fame, applicant, citing
The B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d
727, 6 USPQ2d 1719 (Fed. Cir. 1988), argues that his fame and
renown mitigate any likelihood of confusion. However, the
Federal Circuit in subsequent cases has expressly limited B.V.D.
to its facts, and has made it clear that the fame of a mark can
never weigh against a finding of likelihood of confusion. See In
re Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir.
2000); Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963
F.2d 1992, 22 USPQ2d 1453 (Fed. Cir. 2000); see also Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002). We see
Ser. No. 78821116
11
Applicant’s goods as identified in the application are
encompassed by, and thus legally identical to, the goods
identified in the cited registration. Applicant’s goods
must be deemed to move in the same trade channels as those
in which registrant’s goods move. The goods are
inexpensive clothing items which could be purchased by
ordinary consumers.
These facts suffice to establish that a likelihood of
confusion exists. To the extent that any doubts might
exist as to the correctness of our conclusion, we resolve
such doubts against applicant. See In re Shell Oil Co.,
supra; In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc., supra.

Decision: The refusal to register is affirmed.

no reason not to apply this principle even where it is the later
user’s mark that allegedly is famous.