Sela Products, LLC

Trademark Trial and Appeal Board

Mar 26, 2013

No. 77629624 (T.T.A.B. Mar. 26, 2013)

Mailed:
March 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sela Products, LLC
________

Serial No. 77629624
_______

Ryan L. Lobato of McAfee & Taft for Sela Products, LLC.

Daniel Capshaw, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Seeherman, Zervas and Shaw, Administrative Trademark
Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Sela Products, LLC has applied to register the mark
FORZA, in standard characters, for goods ultimately
identified as:
Metal mounting brackets for speakers, metal wall
and ceiling television/display mounts, metal
satellite mounting brackets/bases (Class 6); and

Custom audio/video installation and accessory
items, namely, speakers, speaker enclosures,
speaker systems, cable connectors and adapters,
audio interconnect and adapter cables, video
interconnect and adapter cables, speaker wire,
coaxial cable, communication cable, optical
cable, computer cable, signal splitters, light
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser. No. 77629624
2
dimmers and home automation control modules,
audio/video/home automation touch pads and
panels, signal grounding devices, coaxial cable
clips, satellite multi-switches, remote controls
for audio/video and home automation devices,
television antennas, coaxial cable boots, audio
video selectors, audio video distribution
devices, audio video multi-zone controllers,
modular wall jacks and wall switch plates,
volume, controls, speaker switchers, infrared
controls, infrared receivers and emitters,
infrared repeaters and extenders (Class 9).1

In the initial application applicant offered the following
translation statement:
The foreign wording in the mark translates into
English as force.

Registration has been refused on the ground that
applicant’s mark so resembles the following registered
marks, owned by two different entities, that if it is used
in connection with applicant’s identified goods, it is
likely to cause confusion or mistake or to deceive.2
Registration No. 3503756, issued September 23,
2008, for FORZA POWER TECHNOLOGIES in standard
characters for “automatic voltage regulators,

1 Application Serial No. 77629624, filed December 9, 2008, based
on Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b)
(intent-to-use).
2 The examining attorney had also refused registration on the
basis of likelihood of confusion with Registration No. 1195600
for FORCE for loudspeakers, and applicant and the examining
attorney addressed this refusal in their briefs. The
registration was due for renewal at the point that the appeal was
ready for decision; therefore, in accordance with Board policy,
proceedings in the appeal were suspended until it could be
determined whether the registration would be renewed. See TBMP
§ 1213 (3d ed.rev. 2012). The registration has expired, and it
therefore no longer forms a basis for refusal of applicant’s
application.
Ser. No. 77629624
3
uninterruptible power supplies, surge protectors,
rechargeable batteries, and battery chargers, all
for home and office use only.” The words POWER
TECHNOLOGIES are disclaimed. The registration
includes the translation statement: The foreign
wording in the mark translates into English as
FORCE.

Registration No. 3790307, issued May 18, 2010,
for FORZA MILAN! and design, shown below, for a
variety of goods and services in five classes,
including optical cables, electric cables and
apparatus for recording, transmission or
reproduction of sound or images.3 The
registration includes the statements, “The
English translation of ‘FORZA’ in the mark is
GO!” and “The colors red, black, orange and white
is/are claimed as a feature of the mark.” The
registration also includes a disclaimer of 1899
and MILAN.

Procedural Matters
Before we consider the substantive issues in this
appeal, there are some procedural points that we must
address. In its appeal brief, applicant asserts that
certain statements were made by the owner of Registration

3 The registration includes goods and services in Classes 9, 16,
24, 25 and 41. Because the examining attorney has highlighted
the goods we have listed above, we see no need to recite all of
the goods and services in the registration; clearly such items as
cash registers, trading cards, textile napkins and soccer shorts
and services such as soccer camps are not relevant to the
likelihood of confusion ground.
Ser. No. 77629624
4
No. 3503756 for FORZA POWER TECHNOLOGIES during the
prosecution of its underlying application. The examining
attorney has objected to these statements because the
registration file was never made of record. In its reply
brief applicant has made several arguments about why these
statements should be considered. Applicant analogizes this
situation to that of an opposition, and refers to the rule
that the file of an application that is the subject of a
Board inter partes proceeding is of record without any
action by the parties. See Trademark Rule 2.122(b).
Applicant contends, “The Examining Attorney functions as a
quasi-opposer and has introduced registration 3103903 [sic]
as being confusingly similar.4 An opposer would not be
permitted to avoid damaging material in the application
file because the application had not been made of record.”
Thus, we construe the instant applicant’s argument as
contending (1) that if the owner of the FORZA POWER
TECHNOLOGIES mark were an opposer relying on that
registration, then that registration would be considered of

4 As a point of clarification, applicant has misspoken in
stating that the examining attorney has introduced Registration
No. 3103903 as being confusingly similar. That registration had
been cited against the application that ultimately issued as
Registration No. 3503756 for FORZA POWER TECHNOLOGIES, and the
statements that applicant wishes to rely on were made by the
FORZA POWER TECHNOLOGIES applicant in attempting to overcome the
citation of Registration No. 3103903.

Ser. No. 77629624
5
record in the opposition, and (2) the examining attorney in
this case, having cited that registration against
applicant, must be considered the equivalent of an opposer,
and the cited registration therefore must be considered to
be of record for purposes of the instant appeal.
We are not persuaded by applicant’s arguments. First,
there is no equivalent rule for ex parte proceedings that
makes the file of a cited registration of record; and there
are numerous cases in which the Board has refused to take
judicial notice of records residing in the Patent and
Trademark Office. In re Jonathan Drew, Inc., 97 USPQ2d
1640, 1644 n. 11 (TTAB 2011). Second, an ex parte appeal
is not analogous to an opposition, for many reasons which
we need not detail here. However, if we were to consider
the examining attorney “as a quasi-opposer,” we point out
that the file of an opposer’s pleaded registration is not
automatically part of the opposition record, but must be
made of record. See Trademark Rule 2.122(d), which sets
forth the procedures by which a registration of the opposer
in an opposition may be made of record. Thus, applicant’s
analogy fails and applicant’s comment that TBMP § 704.03(a)
“admits the application files raised by opposing parties
before the Board”, reply brief, p. 3, is incorrect.
Ser. No. 77629624
6
Applicant also points to the provision in the TBMP
stating that “the Board generally takes a somewhat more
permissive stance with respect to the introduction and
evaluation of evidence in an ex parte proceeding than it
does in an inter partes proceeding.” TBMP § 1208. The
next sentence explains, “That is, in an ex parte proceeding
the Board tolerates some relaxation of the technical
requirements for evidence and focuses instead on the spirit
and essence of the rules of evidence.” In other words, the
Board does not, in ex parte appeals, strictly apply the
Federal Rules of Evidence, as it does in inter partes
proceedings. However, regardless of the fact that Fed. R.
Evid. 201(c)(2) requires that the party desiring a tribunal
to take judicial notice supply the material to the
tribunal, it is simply common sense to do so; an applicant
cannot simply contend that certain statements were made in
material that has not been provided, and expect the Board
to consider the contention established.
This same reasoning applies to applicant’s argument
that “it would be unfair to allow the Examining Attorney to
assert that a registration is highly relevant while
simultaneously refusing to consider statements made by the
owner of the cited registration.” Reply brief, p. 3. We
see no unfairness to applicant. Applicant could have
Ser. No. 77629624
7
submitted the file of the cited registration, and the Board
would have considered it. However, applicant did not do
so, and we see no unfairness in refusing to consider
alleged “evidence” that was not made of record.
In addition, even if the statements applicant asserts
were made by the owner of the cited registration were
considered, it would not change our decision herein.
Applicant relies on the statements the then-applicant for
FORZA POWER TECHNOLOGIES made in trying to overcome a
citation of FORZA for “hydrogen fuel cell power generator.”
Such statements cannot be viewed as binding judicial
admissions, since a decision maker may not consider a
party’s opinion relating to the ultimate legal conclusion
of likelihood of confusion (particularly in another case)
as a binding admission of a fact. See Interstate Brands
Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ
151, 154 (CCPA 1978) (“that a party earlier indicated a
contrary opinion respecting the conclusion in a similar
proceeding involving similar marks and goods is a fact, and
that fact may be received in evidence as merely
illuminative of shade and tone in the total picture
confronting the decision maker.”). The owner of
Registration No. 3503756 for FORZA POWER TECHNOLOGIES made
its statements in the context of the citation of FORZA for
Ser. No. 77629624
8
a hydrogen fuel cell power generator, goods which are very
different from those at issue herein, and therefore its
statements cannot be treated as indicating its position
with respect to applicant’s mark and goods in this appeal.
There is a second procedural point that we must
address before considering the merits of the appeal. With
its appeal brief applicant has attached approximately fifty
pages of exhibits. The Board frowns on an applicant or,
for that matter, an examining attorney, attaching such a
large number of exhibits to a brief. The application file
is before the Board when it decides an appeal, and there is
no need to resubmit materials that are already in the file.
See In re SL&E Training Stable Inc., 88 USPQ2d 1216, 1220
n. 9 (TTAB 2008) (“When considering a case for final
disposition, the entire record is readily available to the
panel. Therefore, attaching exhibits that are already of
record only adds to the bulk of the file.”) It is of far
more utility to the Board for the applicant and examining
attorney to provide citations directly to the record and,
when there are a large number of attachments to an Office
action or response, to the specific page number where the
attachment may be found.
Turning from applicant’s brief to the examining
attorney’s, we note that in the Office’s TTABVUE database
Ser. No. 77629624
9
the brief filed by the examining attorney has thirty pages.
Trademark Rule 2.142(b)(2) provides that, without prior
leave of the Board, an appeal brief may not exceed twenty-
five pages in length. We have confirmed that the brief
that was prepared by the examining attorney complied with
this page limitation, but when the brief created in a word
processing application was uploaded into the TTABVUE
database and rendered into an image-based document, the
pagination was changed.5 Accordingly, we have considered
the brief as complying with the page limits for an appeal
brief.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003).
We will consider the issue of likelihood of confusion
with respect to each cited registration in turn.

5 This issue occurs only with the uploading of examining
attorney briefs. Papers filed by applicants, or by parties in
inter partes proceedings, whether in paper form or through the
Board’s ESTTA electronic filing system, appear in TTABVUE the
same way that they look when they are submitted.
Ser. No. 77629624
10
Registration No. 3503756 for FORZA POWER TECHNOLOGIES
It is a well-established principle that, “in
articulating reasons for reaching a conclusion on the issue
of likelihood 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 a 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, we
find that FORZA is the dominant part of the registrant’s
mark. The words POWER TECHNOLOGIES, which have been
disclaimed, are descriptive because the goods involve power
technologies, that is, technical components that are used
in the provision of power to electrical devices.
Accordingly, consumers will look to FORZA as the source-
identifying part of the mark. As a result, when the marks
are considered in their entireties, they are similar in
appearance, pronunciation, connotation and commercial
impression.
In reaching this conclusion, we have considered all of
applicant’s arguments to the contrary, whether or not we
repeat them here. To address two, applicant points out
that applicant’s mark is one word and has two syllables,
while the registrant’s mark has three words and eight
Ser. No. 77629624
11
syllables. Applicant also asserts that the “meaning and
connotation” of the marks differ because the registrant’s
mark “conveys a technology-related connotation” and
applicant’s mark does not. Brief, pp. 11 and 12. We agree
that the marks have a different number of words and
syllables because, in addition to the word FORZA that is
common to both marks, the registrant’s mark includes POWER
TECHNOLOGIES, and we accept that consumers will understand
the words POWER TECHNOLOGIES as applicant contends.
However, these distinctions between the marks that
applicant points out do not serve to distinguish them. The
term FORZA is still recognizable as a separate word in the
registrant’s mark; the additional words in the mark do not
take away from the dominant presence of FORZA as the first
word in the mark and the element with source-identifying
significance. Further, although consumers may note the
additional words POWER TECHNOLOGIES in the registrant’s
mark, they are likely to view the marks FORZA and FORZA
POWER TECHNOLOGIES as variations of a single party’s marks,
and consider that the words POWER TECHNOLOGIES were
included in that particular mark to describe the goods with
which that mark is used.
Turning next to the goods, “it is not necessary that
the goods or services be identical or even competitive in
Ser. No. 77629624
12
nature in order to support a finding of likelihood of
confusion, it being sufficient that the goods or services
are related in some manner and/or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
circumstances that would give rise, because of the marks
employed thereon, to the mistaken belief that they
originate from or are in some way associated with the same
producer.” In re Home Builders Association of Greenville,
18 USPQ2d 1313, 1317 (TTAB 1990).
The examining attorney has focused on the similarity
of applicant’s cables, wires and other audio/video
accessories with the “surge protectors” in the cited
registration, and we will therefore do the same. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of
confusion must be found if there is likely to be confusion
with respect to any item that comes within the
identification of goods in the application).
The examining attorney has submitted pages from the
registrant’s website showing that registrant offers surge
protectors specifically advertised for home theater, stereo
equipment, audio/video equipment such as TVs, DVD players
Ser. No. 77629624
13
and sound systems, entertainment systems, coaxial antenna
and satellite.
The examining attorney also submitted pages from a
large number of third-party websites advertising both surge
protectors and the types of audio and video accessories
identified in applicant’s application. Further, many of
these websites highlight that the surge protectors are for
use with audio and video equipment:
The Monster website, www.monstercable.com,
features the “Monster FlatScreen PowerProtect
200,” a surge protector for flatscreen
televisions and coaxial cable connection (“2 AC
outlets for AC surge protection and 1 pair
coaxial connections for cable TV/satellite
TV/HDTA surge protection”) and the “Audio/Video
Power Center AV800 with Surge Protection,”
advertised to protect “audio video components”,
www.monstercable.com.6 pp. 8, 12. This same
website also features various connectors for
audio and video equipment, e.g., coaxial video
for connections for over-the-air television and
digital cable and satellite broadcast, p. 15;
speaker cable, p. 16; F-pin connectors for video
cable, p. 18; as well as speaker switches p. 22;
splitters for CATV signals, p. 24; cables for
connections to HDTV or AV receivers, p. 24. All
of these goods are offered under the trademark
MONSTER.

The Belkin website, www.belkin.com, features
surge protectors as well as connectors for video
and audio p. 37, audio video cables, digital
optical audio cables, audio splitters, p. 39 and
digital coaxial audio cable, p. 42. These goods
are offered under the trademark BELKIN.

6 The page numbers indicated in all of the websites refer to the
pages of attachments to the January 31, 2011 Office action.
Ser. No. 77629624
14
The Rocketfish website,
www.rocketfishproducts.com, shows surge
protectors as well as, e.g., in-wall cable,
digital coaxial audio cable, p. 69 and speaker
cable banana plugs, p. 73. In addition, it
features various wall mounts for flat-panel
televisions. p. 65. These items are featured in
a “Home Theater” section of products, and one of
the surge protectors is captioned “7-Outlet Home
Theater Surge Protector.” p. 67.

The Leviton website, www.leviton.com, shows surge
protectors, p. 76, and various audio/video cables
and accessories, including coax cable clips,
p. 78, speaker wire, p. 82, audio/video
connectors, p. 84, and speakers for music and
home theater. p. 89.

The website for Manhattan Products,
www.manhattan-products.com, features a MANHATTAN
surge strip that is advertised as being for,
inter alia, media/entertainment centers. p. 107
This same website also features MANHATTAN
audio/video cable, p. 104, speakers, p. 105 and
video splitters. p. 102.

The JDI Technologies website,
www.goldxproducts.com, shows surge protectors,
audio cable with connector, digital coaxial audio
cable, p. 114, and video cable, p. 116, all
offered under the GoldX mark.

The Tripp-Lite website, www.tripplite.com, shows
surge suppressors specifically advertised for use
with audio/video components, including
entertainment centers. The site also features
audio/video switches and splitters, p. 126,
cables and adapters. p. 124.

Further supporting the above evidence that surge
protectors, audio and video cables and other audio and
video accessories may be sold under a single mark are
third-party registrations showing that a single mark has
Ser. No. 77629624
15
been adopted for such goods. See, for example,
Registration No. 3330797 for, inter alia, audio speakers,
custom speakers, audio speaker signal cables and surge
protectors; Registration No. 3221328 for, inter alia,
speaker systems, audio and video cables, loudspeakers and
surge protectors; and Reg. 3301972 for, inter alia, surge
protectors, audio and video electrical cables, coaxial
cables, electrical connectors. Third-party registrations
which individually cover a number of different items and
which are based on use in commerce serve to suggest that
the listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).
The evidence of record shows that goods such as cable
connectors and adapters, and coaxial cable, i.e., goods of
the type identified in Class 9 of applicant’s application,
and surge protectors, are offered by the same companies,
under a single mark, and are advertised as being used
together. We find that the du Pont factor of the
similarity of the Class 9 goods and the registrant’s goods
favors a finding of likelihood of confusion.
As for the similarity of applicant’s goods in Class 6
(metal mounting brackets for speakers, metal wall and
ceiling television/display mounts, metal satellite mounting
Ser. No. 77629624
16
brackets/bases) and the registrant’s surge protectors, the
examining attorney has made of record two third-party
registrations: Registration No. 3095378 for, inter alia,
mounting brackets for loudspeakers and surge protectors;
and Reg. 3301972 for, inter alia, home and home theater
products and accessories, namely speaker mounting devices,
and surge protectors.7 In addition, the following websites
show both mounts for televisions and speakers and surge
protectors: Rocketfish (cited above), which offers wall
mounts or brackets and surge protectors under the mark
ROCKETFISH; Dynex, www.dynexproducts.com, which offers
surge protectors, including those for home theaters,
p. 148, and speaker wall mounts, p. 150, under the mark
DYNEX; and Leviton (cited above) which shows surge
protectors and speakers with mounting brackets.
The foregoing evidence is not as substantial as that
showing the relatedness of applicant’s Class 9 goods to the
registrant’s identified surge protectors. However, the
evidence also shows the complementary nature of the goods,
with surge protectors being marketed specifically for audio
and television and home theater equipment, and wall mounts
and brackets being used for the same purpose, such that a

7 This registration was also cited above to show relatedness
between surge protectors and speaker systems, audio and video
cables, and loudspeakers.
Ser. No. 77629624
17
purchaser can encounter both types of goods in the course
of purchasing a television, audio or home theater system.
Accordingly, the combination of the website evidence which
shows that a single mark is used for the goods, and the
third-party registration evidence showing that two other
companies have adopted a single mark for such goods, as
well as the complementary nature of the goods, is
sufficient to show that the goods are related.
Applicant has not argued that the goods are not
related, but has argued that the channels of trade/classes
of consumers are different. Noting that the registrant’s
goods are limited to “for home and office use only,” and
that applicant’s goods in Class 9 are described as “custom
audio/video installation and accessory items,” applicant
argues that the general public would be the purchasers of
the registrant’s goods, while applicant’s goods would be
“sold to professional custom installation specialists and
commercial contractors--not private consumers--for use in
creating and installing interactive communication
infrastructure automating processes such as light control,
security, networking, and audio/video systems within a
building.” Brief, pp. 13-14, emphasis in original.
First, applicant’s goods are not restricted to sales
to custom installation specialists and commercial
Ser. No. 77629624
18
contractors, nor are they limited to use in the
communication infrastructure that applicant describes.
Although applicant’s identification recites that the goods
are custom installation items, this does not mean that a
do-it-yourselfer could not purchase the items to install
speakers or a home theater system. However, even if we
were to accept applicant’s position that its goods would be
sold only to custom installation specialists and commercial
contractors, commercial contractors must still be
considered purchasers of surge protectors such as those
identified in the registration. Although the registrant’s
goods are identified as being “for office and home use
only,” that does not mean that the direct purchasers of the
goods would be limited to homeowners and office workers.
Contractors could certainly do work on homes and offices,
and as part of installing the custom installation items
identified in applicant’s application, could purchase surge
protectors for use with such goods. To the extent
applicant may be suggesting that, because contractors would
not be the “home users” of the goods they install, they are
not purchasers of surge protectors “for home and office use
only,” we reject that argument.
Further, applicant’s goods in Class 6 have no
limitation as to “custom installation” items, and items
Ser. No. 77629624
19
such as wall mounts and brackets could be purchased by
homeowners as well as contractors; both classes of
purchasers are also purchasers of surge protectors.
Thus, we must treat the channels of trade for
applicant’s goods in Classes 6 and 7, and the channels of
trade for the registrant’s goods, as legally the same.
We acknowledge that, as far as contractors are
concerned, they must be considered to be more sophisticated
about their industry and goods than the general public.
However, in view of the evidence that companies sell the
goods identified in both classes of applicant’s
application, and surge protectors, under the same mark,
their knowledge of the industry would reinforce their
belief that the goods emanate from the same source if they
were sold under confusingly similar marks. And, for the
reasons discussed above, the marks are confusingly similar.
Although we accept that contractors will note the
additional words POWER TECHNOLOGIES in the registrant’s
mark, the presence of the words in the registrant’s mark,
or the absence of the words in applicant’s mark, do not
distinguish the marks. Rather, as we have said, the
purchasers will regard the additional words, when used for
surge protectors, as having been added to describe those
particular goods.
Ser. No. 77629624
20
The next du Pont factor that applicant has addressed
is that of the scope of protection to be accorded the
registered mark. Applicant has submitted a number of
third-party registrations in order to show that the
registered mark is weak. However, there are only two
registrations for FORZA marks, and they are for different
goods from those at issue herein. Registration No. 3103903
is for FORZA for hydrogen fuel cell power generators, and
Registration No. 3828301 is for FM FORZA MOTORSPORT for
video game accessories. As for the other third-party
registrations, they are for marks containing the words
FORCE or FORTE and, as applicant argued in connection with
the now-moot citation of Registration No. 1195600 for
FORCE, these words cannot be considered direct equivalents
of FORZA. Although in determining the strength of the mark
third-party registrations can be used in the same manner as
dictionary definitions, to show that a term has a
significance in a particular industry, we cannot conclude,
on the basis of the two FORZA registrations, that FORZA has
a particular significance for the registrant’s goods.
Thus, we find that the scope of protection to which the
cited registration is entitled extends to prevent the
registration of FORZA for the goods at issue herein.
Ser. No. 77629624
21
Neither applicant nor the examining attorney have
discussed any other du Pont factors and, to the extent that
any are relevant, we treat them as neutral.
For the reasons discussed above, we find that
applicant’s mark for at least some of the goods identified
in each class of its application is likely to cause
confusion with Registration No. 3503756 for FORZA POWER
TECHNOLOGIES, and affirm the refusal of registration.
Registration No. 3790307 for FORZA MILAN! and design
For ease of reference, this is the cited mark:

The examining attorney contends that FORZA is the most
distinctive and dominant portion of the mark, that ACM is
very small in relation to the word FORZA, that MILAN! will
be understood to be the geographic location of the company
that makes the goods and/or the place that the goods are
made, and that, in any case, this word, as well as 1899,
are disclaimed. Further, the examining attorney asserts
that the design element does not distinguish the marks
because, “when a mark consists of a word portion and a
design portion, the word portion is more likely to be
Ser. No. 77629624
22
impressed upon a purchaser’s memory and to be used in
calling for the goods and/or services; therefore, the word
portion is normally accorded greater weight in determining
whether marks are confusingly similar.” Brief, unnumbered
page 8. Applicant, on the other hand, has explained that
the cited mark contains the crest of the Italian soccer
team Associazione Calcio Milan, which is known as “ACM” for
short. Applicant has explained that this team has won
numerous international soccer titles, and has won more
world soccer titles than any other club in the world. The
registration contains a translation statement for FORZA as
meaning “Go!,” so the meaning of the entire phrase would be
in the nature of a cheer, “Go Milan!” Based on the
information of record, we have no doubt that those who are
familiar with world soccer would recognize this mark as
connoting the Italian soccer club, and would readily
distinguish it from applicant’s mark FORZA.
We also find that the marks are distinguishable even
for those who are unaware of the soccer meaning of the
registered mark. The word MILAN appears in the largest
letters in the mark and is followed by an exclamation
point; although the examining attorney states that
consumers would regard MILAN as the geographic location of
the FORZA company (giving the analogy of MARC NEW YORK or
Ser. No. 77629624
23
LOUIS VUITTON PARIS), brief, p. 8, this is not the manner
in which a geographic location of a company is normally
shown in a mark. Thus, we do not consider FORZA to be the
dominant part of the mark; rather, consumers will see it as
part of the phrase FORZA MILAN! For those who know
Italian, this phrase, with the exclamation point, will be
understood as “Go Milan!” and therefore this mark and FORZA
by itself have different connotations and commercial
impressions. As for those who are not soccer aficionados
or do not know Italian, the phrase FORZA MILAN!, with the
imperative connotation of the exclamation point, will still
be recognized as different from FORZA. Further, although
in general words dominate over designs, in the registrant’s
mark the design element is large and noticeable, and it
also includes literal elements. Accordingly, when the
marks are compared in their entireties, we find that the
differences in appearance and commercial impression (and
connotation for those who are aware of the soccer team or
know Italian) of the marks outweigh any similarities due to
the presence in both marks of the word FORZA.
Because we find that the dissimilarity of the marks in
their entireties makes it unlikely for confusion to result
from applicant’s use of its mark, we need not discuss the
other du Pont factors. See Kellogg Co. v. Pack’em
Ser. No. 77629624
24
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed.
Cir. 1991) (a single du Pont factor, the dissimilarity of
the marks, may be dispositive).
Decision
The refusal on the basis of Registration No. 3503756
is affirmed; the refusal on the basis of Registration No.
3790307 is reversed.