Seattle Pacific Industries, Inc.v.Brieland Professional Graphics, Ltd.

Trademark Trial and Appeal Board

Apr 30, 1999

No. 91086368 (T.T.A.B. Apr. 30, 1999)

Hearing: Paper No. 43
March 31, 1998 XXX/JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 30,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Seattle Pacific Industries, Inc.
v.
Brieland Professional Graphics, Ltd.
_____
Opposition No. 86,368
to application Serial No. 74/110,275
filed on October 29, 1990
_____
Paul T. Meiklejohn and Jane A. Hellmann of Seed and Berry
for Seattle Pacific Industries, Inc.
Gregory J. Nelson and Joseph H. Roediger of Nelson &
Roediger for Brieland Professional Graphics, Ltd.
______
Before Cissel, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Brieland Professional
Graphics, Ltd. to register the mark DRY HEAT for “imprinted
sportswear, namely shirts, tank tops, sweatshirts, t-shirts
and caps.”1

1 Application Serial No. 74/110,275, filed October 29, 1990,
alleging a bona fide intention to use the mark in commerce.
Opposition No. 86,368
2
Registration has been opposed by Seattle Pacific
Industries, Inc. under Section 2(d) of the Trademark Act on
the ground that applicant’s mark, if applied to applicant’s
goods, would so resemble opposer’s previously used and
registered mark HEET for “men’s, women’s and children’s
clothing and sportswear garments, namely jeans, blouses,
shirts, jackets, slacks, pants, tee-shirts [and] sweaters”,2
and opposer’s previously used and registered mark shown
below
for “men’s, women’s and children’s clothing and sportswear
garments, namely, shirts, slacks, pants, blouses, jackets,
tee-shirts, sweaters, jeans, and hats”3 as to be likely to
cause confusion.
Applicant, in its answer, denied the salient
allegations of likelihood of confusion.
The record consists of the pleadings; the file of the
involved application; trial testimony, with related

2 Registration No. 1,363,481, issued October 1, 1985; Section 8
affidavit filed.
3 Registration No. 1,369,129, issued November 5, 1985; Section 8
affidavit filed.
Opposition No. 86,368
3
exhibits, taken by each party;4 and certified copies of
opposer’s pleaded registrations introduced by way of
opposer’s notice of reliance.5 Both opposer and applicant
filed briefs on the case and an oral hearing was held.
Opposer, according to the testimony of Mr. Ritchey, has
been engaged in the manufacture, distribution, marketing and
selling of men’s, women’s and children’s clothing, including
sportswear, since August 1984. Opposer’s marks have been
promoted in a wide range of media, and opposer has policed
its marks through the filing of a variety of actions against
the owners of other marks. While a protective order
precludes us from disclosing the extent of sales and
advertising expenditures under the mark, suffice it to say
that opposer has enjoyed considerable success and that the
mark has been extensively promoted. Mr. Richey testified
that opposer’s mark is arbitrary, and is intended to reflect
an active, fun lifestyle and attitude.
Applicant took the testimony of Michael Helland, its
president and chief executive officer. According to Mr.
Helland, applicant is a t-shirt manufacturer and wholesaler.
Applicant’s shirts bear a variety of silk screened graphic

4 Opposer’s testimony of its president, Stephen R. Ritchey, was
submitted in the form of a declaration pursuant to the parties’
stipulation under Trademark Rule 2.123(b).
5 Opposer apprised the Board that one of its registrations had
been amended, and a copy of the amended registration was
submitted to the Board.
Opposition No. 86,368
4
designs, with themes ranging from southwest to tropical.
One of the themes is the BUT IT’S A DRY HEAT series, based
on the humorous phrase “but it’s a dry heat,” popular in
Arizona and throughout the southwest.6 The gist of the
phrase is that the summers in that region are extremely hot,
but the lack of humidity makes the high temperatures more
tolerable. The shirts bear graphic designs showing skeleton
figures engaged in a variety of activities (e.g.,swimming,
golfing, surfing) in a desert landscape. The shirts are
marketed primarily as souvenirs, and are sold through gift
shops and t-shirt shops. Mr. Helland testified that
applicant probably would not use DRY HEAT standing alone;
Mr. Helland did indicate, however, that DRY HEAT is used by
applicant as a shorthand way of referring to its “but it’s a
dry heat” designation.
In view of opposer’s ownership of valid and subsisting
registrations for its pleaded marks, there is no issue with
respect to opposer’s priority. King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).

6 Applicant, on August 3, 1998, filed a request that the Board
take judicial notice of applicant’s Registration No. 2,163,837,
issued June 9, 1998, for the mark ...BUT IT’S A DRY HEAT for
clothing items. Opposer has objected to the request.
The Board does not take judicial notice of registrations issued
by the Office. Beech Aircraft Corp. v. Lightning Aircraft Co., 1
USPQ2d 1290 (TTAB 1986). See also: TBMP § 712.01.
Accordingly, the request is denied. We hasten to add, however,
Opposition No. 86,368
5
Our determination under Section 2(d) is based on an
analysis of all of the probative factors in evidence that
are relevant to the factors bearing on the likelihood of
confusion issue. In re E. I du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods.
We turn first to the goods at issue, keeping in mind
that the registrability of applicant’s mark must be
evaluated on the basis of the identification of goods set
forth in the involved application and the registration of
record, regardless of what the record may reveal about the
particular nature of the respective goods. Canadian
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987). In the
present case, when the goods are compared under such
constraints, they are, at least in part, legally identical.
Both parties sell t-shirts, shirts and caps (hats).
Further, the remainder of the goods are all closely related
clothing products. In this case, neither opposer’s
registrations nor applicant’s application contains any
limitations as to the types of stores where the clothing may
be sold. The parties’ goods are presumed to be sold in the

that even if the registration were considered, this evidence
Opposition No. 86,368
6
same channels of trade to the same classes of purchasers.
In addition, the record shows that the parties’ goods are
relatively inexpensive, suggesting that they are purchased
with nothing more than ordinary care.
We next turn to compare the parties’ marks, HEET and
DRY HEAT. Given the identity, at least in part, between the
parties’ goods, we note, at the outset, that when marks are
applied to identical goods, “the degree of similarity
[between the marks] 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, 1700
(Fed. Cir. 1992).
We find that the marks, when considered in their
entireties, are similar in sound (HEET and HEAT being
phonetic equivalents) and appearance. In comparing the
marks, it is important to note that applicant’s mark sought
to be registered is DRY HEAT in typed letters, not the
entire phrase that is depicted on its clothing items. We
agree with opposer that the humorous meaning conveyed by the
designation “...but it’s a dry heat” essentially is lost
when only the words “dry heat” are used. The similarities
in sound and appearance outweigh whatever difference there
is in connotation between the marks. Simply put, the marks
HEET and DRY HEAT convey sufficiently similar overall

would not persuade us to reach a different result in this case.
Opposition No. 86,368
7
commercial impressions that, if applied to identical or
substantially similar goods, confusion would be likely to
occur in the marketplace. In finding likelihood of
confusion, we have kept in mind the normal fallibility of
human memory over time and the fact that consumers retain a
general rather than a specific impression of trademarks
encountered in the marketplace. Spoons Restaurants, Inc. v.
Morrison, Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d, No. 92-
1086 (Fed. Cir. June 5, 1992).
Opposer contends that its mark is “strong.” Indeed,
opposer has enjoyed success with the goods sold under the
mark HEET, and opposer has undertaken significant
promotional activities. The record also shows that opposer
has policed its mark. Further, the mark HEET would appear
to be arbitrary and the record is devoid of evidence of any
third-party uses or registrations of similar marks in the
clothing field. Although we are willing to accept opposer’s
claim that its mark is strong in the field, we do not
accord, however, the status of “famous mark” to the mark
HEET based on the record presently before us. Cf. Kenner
Parker Toys v. Rose Art Industries, 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992).
To the extent that any of applicant’s contentions raise
a doubt on the issue of likelihood of confusion, such doubt
must be resolved in favor of the prior user and registrant.
Opposition No. 86,368
8
In re Martin’s Famous Pastry Shoppe Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984).
We conclude that consumers familiar with opposer’s
clothing items sold under its mark HEET would be likely to
believe, upon encountering applicant’s mark DRY HEAT for its
clothing items, that the goods originated with or were
somehow associated with or sponsored by the same entity.
Decision: The opposition is sustained and registration
to applicant is refused.
R. F. Cissel
T. J. Quinn
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board