Skechers U.S.A., Inc. II

Trademark Trial and Appeal BoardSep 10, 2012

No. 85129566 (T.T.A.B. Sep. 10, 2012)

Mailed: September 10, 2012 United States Patent and Trademark Office Trademark Trial and Appeal Board ________ In re Skechers U.S.A., Inc. II ________ Serial No. 85129566 _______ Marshall A. Lerner of Kleinberg & Lerner LLP for Skechers U.S.A., Inc. II. Geoffrey Fosdick, Trademark Examining Attorney, Law Office 111 (Robert Lo- renzo, Managing Attorney). _______ Before Bucher, Holtzman and Wellington, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Skechers U.S.A., Inc. II seeks registration on the Principal Register of the mark RESISTANCE (in standard character format) for goods identified in the application, as amended, as follows: apparel, namely, tops, shirts, blouses, t-shirts, sweat shirts, sports jerseys, sweaters, bottoms, trousers, pants, sweat pants, shorts, jackets, coats, overcoats, pullovers, jumpers, dresses, skirts, beachwear, swimsuits, under- wear, lingerie, headwear, hats, caps, beanies, visors, ties, socks, belts, gloves, scarves and wristbands, in Interna- tional Class 25 1 The Trademark Examining Attorney issued a final refusal to register this designation based upon Section 2(d) of the Trademark Act, 15 U.S.C. 1 Application Serial No. 85129566 was filed on September 14, 2010, based upon ap- plicant’s allegation of a bona fide intention to use the mark in commerce. This Opinion is NOT a Precedent of the TTAB Serial No. 85129566 - 2 - § 1052(d). The Trademark Examining Attorney has taken the position that applicant’s mark, when used in connection with the identified goods, so re- sembles the following mark: registered for goods identified as “exercise apparel, namely hats, shirts, jackets, vests, sweatpants, sweatshirts, shorts, sport bras, socks” also in International Class 25,2 as to be likely to cause confusion, to cause mistake or to deceive. After the Trademark Examining Attorney made the refusal final, appli- cant appealed to this Board. Applicant and the Trademark Examining Attor- ney have fully briefed the issues in this appeal. We affirm the refusal to reg- ister. I. Arguments of applicant and the Trademark Examining Attorney In urging registrability, applicant contends that the marks are dissimilar as to meaning and commercial impression, that applicant and registrant have a very different emphasis in their approach to the market, that their respec- tive goods move through different channels of trade, and that the respective consumers are fairly sophisticated. By contrast, the Trademark Examining Attorney argues that the marks are similar, that the goods are legally identical and hence, we must presume 2 Registration No. 3109970 issued on June 27, 2006. Serial No. 85129566 - 3 - that the channels of trade and the customers will be the same, and that appli- cant’s argument about the sophistication of consumers has no probative value in our determination herein. II. Likelihood of Confusion We turn then to a consideration of the issue of likelihood of confusion. Our determination of likelihood of confusion is based upon our analysis of all of the probative facts in evidence that are relevant to the factors bearing on this issue. See 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); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of confusion analysis, however, two key, although not exclusive, considerations are the similarities between the marks and the relationship between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). A. The goods Applicant lists its goods as “apparel, namely, tops, shirts, blouses, t- shirts, sweat shirts, sports jerseys, sweaters, bottoms, trousers, pants, sweat pants, shorts, jackets, coats, overcoats, pullovers, jumpers, dresses, skirts, beachwear, swimsuits, underwear, lingerie, headwear, hats, caps, beanies, vi- sors, ties, socks, belts, gloves, scarves and wristbands.” Registrant’s goods are listed as “exercise apparel, namely hats, shirts, jackets, vests, sweatpants, Serial No. 85129566 - 4 - sweatshirts, shorts, sport bras, socks.” Hence, applicant enumerates substan- tially all of registrant’s items of apparel. This means the goods are legally identical, and we must presume they will move through all the same channels of trade to the same classes of ordinary consumers. On the other hand, we cannot presume that the potential consumers of these goods will be sophisti- cated, knowledgeable or careful in their purchasing decisions. B. The similarity of the marks As noted by the Trademark Examining Attorney, if the goods of the re- spective parties are identical, as is the case herein, the degree of similarity be- tween the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); and In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). Citing to our black-letter law, the Trademark Examining Attorney ar- gues that applicant’s mark, RESISTANCE, is identical to the dominant por- tion of the registrant’s mark, inasmuch as “Resistance” is the first word in registrant’s composite mark, the term “Wear” is merely descriptive in rela- tion to items of apparel, and that generally, word portions are the dominant features of composite marks (because consumers will call for the goods in the marketplace by that portion of the mark). We agree with each of these con- tentions of the Trademark Examining Attorney, although our ultimate con- clusion does rest upon a consideration of the marks in their entireties. In Serial No. 85129566 - 5 - short, we find that these respective marks are similar in sound, appearance and meaning, and that they create the same overall commercial impressions. C. Conclusion In conclusion, we find that applicant’s mark, when used in connection with the identified goods, so resembles the cited mark as to be likely to cause confusion, to cause mistake or to deceive under Section 2(d) of the Lanham Act. Decision: The refusal of the Trademark Examining Attorney to register this mark is hereby affirmed.