Colorado Avalanche, LLC

Trademark Trial and Appeal Board

Jan 5, 2001

No. 74692389 (T.T.A.B. Jan. 5, 2001)

1/5/01
Paper No. 18
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Colorado Avalanche, LLC
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Serial No. 74/692,389
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Anita K. Andrade and Mary J. Sotis of NHL Enterprises, L.P.
for Colorado Avalanche, LLC.
Kim Saito, Trademark Examining Attorney, Law Office 109
(Ronald Sussman, Managing Attorney).
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Before Cissel, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On August 22, 1995, applicant1 filed the above-
referenced application to register the mark “AVALANCHE” on
the Principal Register for goods which were subsequently
identified by amendment as “clothing commemorative of and
intended to show support for a professional hockey team,
namely, shirts, jerseys, sweaters, jackets, sweatshirts,
1 This application was originally filed by Comsat Video
Enterprises, Inc, but the amendment to allege use was filed by
Colorado Avalanche, LLC, and appropriate documents attesting to
the assignment were subsequently filed and recorded.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 74/692,389
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t-shirts, footwear, pants, sweatpants, warm-up suits,
wristbands, headbands, shorts, caps, pants, socks,
nightshirts, scarves, mittens and cloth bibs,” in Class 25.
The application was based on applicant’s assertion that it
possessed a bona fide intent to use the mark on these goods
in commerce.
Registration was refused under Section 2(d) of the
Lanham Act on the ground that if applicant’s mark were used
in connection with the goods listed in the application, it
would so resemble the mark “AVALANCH,” which is registered2
for “clothing, including outerwear; namely, jackets and
coats, and sportswear, namely; pants, skirts, shorts,
vests, dresses, shirts, suits and blouses,” in Class 25,
that confusion that would be likely. Another subsisting
registration was originally also cited as a bar to
registration, but that refusal was subsequently withdrawn.
When the refusal to register based on the registered
mark “AVALANCHE” was made final, applicant concurrently
filed a Notice of Appeal and an amendment to allege use as
of August 15, 1995. Shortly thereafter, applicant filed
its brief on appeal, but did not request an oral hearing
2 Reg. No. 1,717,128 was issued to G-III Apparel Group, Ltd., a
Delaware corporation, on September 15, 1992. Combined affidavit
under Sections 8 and 15 of the Act accepted and acknowledged.
Ser No. 74/692,389
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before the Board. The Examining Attorney accepted the
amendment to allege use and then submitted her appeal brief
to the Board. Applicant did not file a reply brief.
At the outset, we note that we have not considered the
additional evidence submitted with applicant’s brief on
appeal, the third-party registrations listed in applicant’s
arguments, or the unpublished decisions referred to in
applicant’s appeal brief.
The additional evidence was properly objected to by
the Examining Attorney as being untimely under Trademark
Rule 2.142(d). The record in an application should be
complete prior to the filing of a notice of appeal.
Applicant’s alternative argument that action on the
application should have been suspended and the application
should have been remanded to the Examining Attorney for
consideration of the additional evidence is not well taken
because applicant offered no explanation as to why this
evidence could not have been timely made of record.
Indeed, from a casual perusal of these materials, it
appears that they could have been made available for timely
submission during the examination of the application before
the Examining Attorney prior to the appeal.
With regard to the list of third-party registrations,
as the Examining Attorney noted earlier in the prosecution
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of this application, the Board does not take judicial
notice of registrations on the Principal Register, and a
submission of a list of such registrations is insufficient
to make them of record. Proper copies are required. In re
Duofold Inc., 184 USPQ 638 (TTAB 1974).
Lastly, applicant’s references to unpublished
decisions is plainly inappropriate. Opinions which are not
designated for publication are not citable as precedent.
General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270
(TTAB 1982).
Turning, then, to the merits of the issue on appeal,
based on careful consideration of the written record and
arguments, and in view of the statute and legal precedent
on this issue, we hold that the refusal to register is
appropriate because confusion is likely.
The test for likelihood of confusion is well settled.
Our primary reviewing court enumerated the factors to be
considered in resolving this issue in In re E.I. duPont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Chief among these factors are the similarity of the marks
and the commercial relationship between the goods which are
identified by the marks.
In the instant case, confusion is likely because the
marks are identical and goods are in part identical, in
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that both the registration and the application list
“jackets,” “shorts” and “shirts.” All of the products
listed in the application and the registration are ordinary
items of apparel. The “jackets,” “shorts” and“shirts” in
the cited registration are not limited to particular types
of shirts, as discussed below, so we must assume that they
include jackets, shorts and shirts of the type specified in
the application.
Applicant makes and number of unpersuasive arguments
in support of its contention that confusion is not likely.
Its main point revolves around the fact that applicant’s
primary business is operating a professional hockey team.
Applicant argues that purchasers of the clothing items
bearing the mark it seeks to register here purchase these
products in order to show affiliation with and support for
applicant’s hockey team. As the Examining Attorney points
out, however, the mark here sought to be registered makes
no reference, either with words or designs, to applicant’s
hockey activities. We therefore have no basis upon which
to adopt applicant’s argument that the mark is used only in
conjunction with and in reference to its hockey team, and
therefore that the reference to hockey serves to
distinguish applicant’s mark from the cited registered
mark.
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We must determine whether confusion is likely based
upon consideration of the goods as they are identified in
the application and the cited registration, respectively,
without limitations or restrictions which are not reflected
therein. Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ 340
(TTAB 1983). Although the mark sought to be registered
makes no reference to applicant’s hockey team, applicant
has referred to its hockey activities in the
identification-of-goods clause and in arguments throughout
the prosecution this application, but the cited
registration does not reflect any such limitation.
Accordingly, we must interpret the unrestricted way in
which the registration identifies the clothing items listed
therein as including all types of such items of apparel,
i.e., as including jackets, shorts and shirts which are
intended to show support for athletic teams, just as
applicant’s jackets, shorts and shirts are.
In a similar sense, we cannot adopt applicant’s
argument that confusion is not likely because applicant and
registrant do not share the same channels of trade. As the
Examining Attorney points out, applicant’s arguments and
extrinsic evidence about the nature of registrant’s goods
are not persuasive because the registration is not limited
or restricted in any way on its face. The unrestricted way
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the goods in the registration are identified must be
interpreted to include all normal channels of trade for the
goods listed therein, including the places where clothing
items bearing the marks of sports teams are sold. In any
event, the Examining Attorney has made of record
advertisements from several retailers illustrating that
clothing bearing sports team names and marks is sold
alongside other clothing items which make no reference to
particular teams.
Applicant’s argument that confusion is not likely
because applicant is not aware of any incidents of actual
confusion is also not well taken. Evidence of actual
confusion is notoriously difficult to come by, and it is
not necessary in order to establish that confusion is
likely. Weiss Associates Inc. v. HRL Associates Inc., 902
F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
In summary, confusion is likely in this case because
the mark applicant seeks to register is identical to the
registered mark, and the goods listed in the application
are in part encompassed within the goods identified in the
registration. Even if we had any doubt as to this
conclusion, such doubt would necessarily be resolved in
favor of the registrant and against the applicant, who, as
the newcomer, had a duty to select a mark which would not
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be likely to cause confusion with the mark already in use
and registered. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 6 USPQ2d 1025 (Fed. Cir. 1988). Accordingly, the
refusal to register under Section 2(d) the Lanham Act is
affirmed.
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