Zinck’s in Berlin, Inc.

Trademark Trial and Appeal Board

Aug 24, 2012

No. 85289164 (T.T.A.B. Aug. 24, 2012)

Mailed:
August 24, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Zinck’s in Berlin, Inc.
________

Serial No. 85289164
_______

Andrew P. Lycans of Critchfield, Critchfield & Johnston Ltd, for
Zinck’s in Berlin, Inc.

Jeffrey J. Look, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Holtzman, Ritchie, and Shaw, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Zinck’s in Berlin, Inc. (“applicant”) filed an application
to register the mark GRAYHOUND SPORTS and design, as shown
below, for goods identified as “caps, hats, jackets, pants,
shirts, shorts,”1 in International Class 25:

1 Serial No. 85289164, filed April 7, 2011, pursuant to Section 1(b) of
the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to
use the mark in commerce, and disclaiming the exclusive right to use
the term “SPORTS” apart from the mark as shown. The application
contains the following Description of Mark: The mark consists of the
word GRAYHOUND gradually rising from the lower left to the upper right
in a curvilinear fashion. The word SPORTS appears below the “UND” in
GRAYHOUND. A curvilinear line begins above the “D” in GRAYHOUND, and
flows in such a way as to suggest a dog’s head, hips and rear leg. A
line coming off the hips suggests a flowing tail. Another line, which
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85289164
2

The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark
so resembles the registered mark GREYHOUND, in typed drawing
form, for “hats, caps, and shoes,” 2 in International Class 25,
that when used on or in connection with applicant’s identified
goods, it is likely to cause confusion or mistake or to deceive.
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs, and applicant filed a reply brief. For the reasons
discussed herein, the Board affirms the refusal to register.
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d

starts under the ”O” in GRAYHOUND and flows towards the “D” suggests a
front leg.
2 Registration No. 1380527, issued January 28, 1986. Sections 8 and 15
accepted and acknowledged. Renewed.
Serial No. 85289164
3
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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.”).
The Goods and Channels of Trade

Both the application and the cited registration identify
“caps,” and “hats.” As such, the goods are overlapping and
legally identically. To further show the relatedness of the
other goods, the examining attorney included some web evidence
as well as a number of third-party registrations. Third-party
websites submitted by the examining attorney show that shoes, as
identified in the cited registration, are offered for sale under
the same mark as shirts and shorts, as identified in the
application (www.reebok.com and www.landsend.com). The
examining attorney also submitted a number of third-party
registrations that identify both “shoes” or footwear” on the one
hand, as well as “pants,” “shorts,” “jackets,” or “shirts” on
the other. See for example Registration No. 4016998 (pants,
hats, and caps and footwear); Registration No. 4011294 (jackets,
pants, shorts, and hats, caps, and footwear); Registration No.
4017036 (jackets, pants, shirts and shoes); Registration No.
Serial No. 85289164
4
4014941 (shirts, pants, jackets, hats, caps, and footwear);
Registration No. 4011597 (shirts, pants, jackets, hats, caps,
and footwear); and Registration No. 4011878 (shirts, pants,
hats, and athletic shoes). Evidence of use-based, third-party
registrations serves to suggest that the goods are of a type
which may emanate from a single source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Accordingly, we
find the goods to be in-part identical and otherwise related.
Because the goods described in the application and the
cited registration are in-part identical, we must presume that
the channels of trade and classes of purchasers are the same.
See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of the
parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade.”); In
re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be presumed
to travel in the same channels of trade, and be sold to the same
class of purchasers.”). Additionally, there is nothing in the
recital of goods in either the cited registration or the
application that limits either registrant’s or applicant’s
channels of trade. See In re Linkvest S.A., 24 USPQ2d 1716,
1716 (TTAB 1992) (because there are no limitations as to
channels of trade or classes of purchasers in either the
application or the cited registration, it is presumed that the
Serial No. 85289164
5
registration and the application move in all channels of trade
normal for those services, and that the services are available
to all classes of purchasers for the listed services). In other
words, there is nothing that prevents the applicant’s “caps” and
“hats” from being sold in the same stores and to the same
classes of consumers that purchase registrant’s “caps” and
“hats” as well.
In this regard, we note that both applicant and the
examining attorney spent a good part of their briefs arguing a
moot point. That is, there was a good deal of unnecessary
discussion by both as to who owns the cited registration and how
that may affect the outcome of this case (or not). In fact, the
owner of the cited registration, and its current use of the
goods identified in the cited registration is not relevant to
this proceeding. It is axiomatic, and firmly ground in our
precedent that we are bound by the terms of the existing
registration, including the identification of goods as they are
listed in the cited registration, and not how they may be used.
Octocom Systems Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of goods
set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to which
the sales of goods are directed.” [citations omitted]).
Serial No. 85289164
6
Applicant cannot challenge registrant’s rights, as granted by
that registration, via this ex parte proceeding.
Accordingly, we find that these du Pont factors weigh
heavily in favor of finding a likelihood of confusion.
The Marks
Preliminarily, we note that the more similar the goods at
issue, the less similar the marks need to be for the Board to
find a likelihood of confusion. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992). We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005).
In comparing the marks, we are mindful that the test is not
whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the goods
and/or services offered under the respective marks is likely to
result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5,
1992). The proper focus is on the recollection of the average
customer, who retains a general rather than specific impression
of the marks. Winnebago Industries, Inc. v. Oliver & Winston,
Serial No. 85289164
7
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975).
The mark in the cited registration consists solely of the
word “GREYHOUND,” in typed drawing form. We take judicial
notice of a dictionary definition of word “greyhound” as
follows3:

Greyhound: any of a breed of tall slender graceful
smooth-coated dogs characterized by swiftness and keen
sight and used for coursing game and racing.4

We find the term “greyhound” to be arbitrary or at worst
suggestive for the clothing items identified in the cited
registration.5
Applicant’s mark includes the words “GRAYHOUND SPORTS,”
accompanied by a design which, by applicant’s admission in its
mark description, is suggestive of a dog.
We take judicial notice of the following definitions of the
word “grayhound”:

Grayhound: variant of greyhound.6

Grayhound: Greyhound.7

3 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff’d 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
4 Merriam Webster Online (2012).
5 Applicant argues the mark is not arbitrary but suggestive because it
suggests “the purchaser is active and able to run very fast.” (appl’s
reply brief at unnumbered 4 of 16).

6 Wordsmyth English Dictionary Thesaurus (2001).
7 Infoplease (Random House 1997).
Serial No. 85289164
8
Accordingly, we find that the two words which forms the
first word in applicant's mark and the entirety of the mark in
the cited registration both sound the same and differ by only
one vowel in the middle. We also find that they are synonymous
in meaning. Applicant warns us against placing too much
emphasis on the similarity of these terms, arguing: “Thus, any
decision which ignores the word ‘sports’ because it is not the
‘dominant’ element of the mark is improper.” (Appl’s brief at
unnumbered 5 of 7). In fact, while the term “grayhound” in
applicant’s mark, and accompanying dog design are arbitrary or
at worst suggestive for the applied-for clothing goods, the word
“sports” will be perceived by consumers as describing the likely
athletic nature of the goods sought. It is for this very reason
that we find the word term “grayhound” to be the dominant term
in applicant’s mark. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 750 (Fed. Cir. 1985) (descriptive or disclaimed
matter is generally considered a less dominant portion of a
mark). Meanwhile, the design serves to emphasize the term
“Grayhound,” which is the word that will be used to call for or
refer to the goods. CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82
(Fed. Cir. 1983); In re Dakin’s Miniatures Inc., 59 UPSQ2d 1593,
1596 (TTAB 2001); In re Appetito Provisions Co., Inc., 3 USPQ2d
1553, 1554 (TTAB 1987).
We further note that as a typed drawing, the GREYHOUND mark
in the cited registration might be displayed in any of a number
of different ways, including one resembling the stylized form of
GRAYHOUND in applicant’s mark. See Citigroup Inc. v. Capital
Serial No. 85289164
9
City Bank Group Inc., 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (“If
the registrant ... obtains a standard character mark without
claim to ‘any particular font style, size or color,’ the
registrant is entitled to depictions of the standard character
mark regardless of font, style, size, or color.”)
Accordingly, we find that the marks look and sound alike
and create very similar commercial impressions. In so finding,
we consider the marks in their entireties, and we find the
similarities of the marks to outweigh their differences. Thus,
this du Pont factor too, weighs in favor of finding a likelihood
of confusion.
Conclusion
In summary, we have carefully considered all of the
evidence and arguments of record relevant to the pertinent du
Pont likelihood of confusion factors. We conclude that with
legally identical goods travelling in the same channels of
trade, and similar marks with similar connotations and
commercial impressions, there is a likelihood of confusion
between applicant’s applied-for mark GRAYHOUND SPORTS and
design, for “caps, hats, jackets, pants, shirts, shorts,” and
the registered mark GREYHOUND for “hats, caps, and shoes.”
Decision: The refusal to register is affirmed.