Design Resources, Inc.

Trademark Trial and Appeal Board

Mar 15, 2007

No. 78478872re (T.T.A.B. Mar. 15, 2007)

Mailed:
March 15, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Design Resources, Inc.
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Serial No. 78478872
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Glenn K. Robbins II of Spencer Fane Britt & Browne LLP for
Design Resources, Inc.

Jacqueline A. Lavine, Trademark Examining Attorney, Law
Office 101 (Ronald R. Sussman, Managing Attorney).
_______

Before Seeherman, Cataldo and Taylor, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

On March 12, 2007, Design Resources, Inc. filed a
request for reconsideration of the Board’s February 12,
2007 decision affirming the refusal of registration of its
applied-for mark, DRI-DUCK and design, for “clothing,
namely, coats, jackets, parkas, shirts, pants, overalls,
vests, sweaters, gloves, mittens, scarves, and headwear,”
on the ground that it is likely to cause confusion with the
THIS DISPOSITION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78478872
2
mark DRIDUX for “outerwear jackets, outerwear pants,
outerwear suits, hats and mitts all for sports and/or
recreation.” On February 13, 2007, applicant filed a
request for suspension, asking that proceedings in the
appeal be suspended pending a determination of whether the
cited registration will be cancelled for failure to file a
Section 8 affidavit.
Turning first to the request for suspension, applicant
cites the TTAB Manuel of Procedure as providing for the
suspension of an exparte appeal upon request by the
applicant supported by a showing of good cause. Applicant
points to the third example of good cause given in Section
1213 as applicable to the present situation, namely, that a
registration cited as a reference under Section 2(d) is
due, or will soon be due, for a Section 8 affidavit. What
applicant fails to note in its request is that Section 1213
specifically states that the suspension procedure is
available prior to the issuance of the Board’s decision.
Although applicant now asserts that “a substantial judicial
economy can be realized if further appeal can be deferred,”
applicant’s concern about judicial economy rings hollow in
view of the fact that applicant did not attempt to have the
Ser No. 78478872
3
proceeding suspended prior to receiving an adverse decision
by the Board.1
It is also noted that the cited registration issued on
September 4, 2001, so that, with the grace period provided
by Section 8 of the Trademark Act, a Section 8 affidavit
need not be filed until March 4, 2008, almost a year from
the present date. Moreover, it will be another three
months after that date until the Office can take action to
cancel the registration.
In view of applicant’s delay in filing its request for
suspension until after the Board’s decision issued, and the
substantial delay that would ensue at this point until it
can be determined whether the cited registration will be
cancelled, applicant’s request for suspension is denied.
Turning next to the request for reconsideration,
applicant asserts as the basis for its request that the
Board failed to address two cases from the Court of Customs
and Patent Appeals that applicant cited in its brief. The
Board is aware of no case law that requires it to discuss

1 We also note that applicant filed its request for
reconsideration one day prior to filing its request for
suspension. If applicant was interested in judicial economy, it
seems curious that applicant would have filed a request for
reconsideration if it was planning to file a request for
suspension. To the extent that applicant, by its filing of a
request for reconsideration, is attempting to create work for the
Board to support its argument for judicial economy, such a tactic
is frowned upon, and is not persuasive.
Ser No. 78478872
4
every case cited in an applicant’s brief, and sees no error
in its decision in that respect. However, to the extent
that applicant is asserting that the Board erred in not
following the principles set forth in the cases, we will
address that argument.
Applicant cited the two cases at issue, In re General
Electric Co., 304 F.2d 688, 134 USPQ 190 (CCPA 1962) and
National Distillers and Chemical Corp. v. William Grant &
Sons, Inc., 505 F.2d 1719, 184 USPQ 34 (CCPA 1974) for the
proposition that “the comparison of a well-known word to a
coined mark [is] a point of great significance in the
determination of likelihood of confusion.” Appeal brief,
p. 3. Applicant also pointed out that “notably, the Court
in both cases discounted the suggestion that the marks
might be pronounced similarly.” Id.
In General Electric, the Court found no likelihood of
confusion between VULKENE for electrical wires and cables
and VULCAN in stylized form for electrical building wires.
There are several factual differences between that case and
the present situation. First, in General Electric the
Court made a point of noting that the people buying and
using those goods of applicant and registrant for which
there was overlap would be “those who do the electrical
wiring of buildings, for the most part licensed
Ser No. 78478872
5
electricians and electrical contractors. We believe that
such persons would buy their electrical supplies with a
reasonable amount of care and with considerable
professional know-how as to what they are buying.” 134
USPQ2d at 192.
In contrast, the purchasers of applicant’s and the
registrant’s goods are the general public, and at least
some of the goods may be purchased on impulse. See pp. 4-5
of our February 12 decision:
The purchasers for the identified goods
of applicant and the registrant are the
general public. They must be
considered to be ordinary purchasers.
Although we note that the goods
identified in the registration are all
for use in “sports and/or recreation,”
many sports and recreational activities
may be undertaken without specialized
clothing and be engaged in by users
having varying degrees of experience,
including newcomers to the
sport/activity. Thus, we cannot
consider the purchasers of either
applicant’s or the registrant’s goods
to have any particular sophistication
about the products. Further, some of
applicant’s goods, such as gloves and
mittens and headwear, may be purchased
on impulse, or without exercising great
care. Thus, this du Pont factor favors
a finding of likelihood of confusion.

The Court also noted that, although VULKENE was a
coined word, purchasers would quickly recognize it as a
combination of one syllable from the common word
Ser No. 78478872
6
“vulcanize,” a word “introduced into the vocabulary of
every child at an early age,” and a syllable consisting of
“a common ending on the names of many now well-known
chemical compounds in everyday use, such as kerosene,
neoprene, and, of recent date, polyethylene.” General
Electric, supra at 192. This situation contrasts with the
one before us in this appeal: the only connotations of the
registrant’s mark DRIDUX would be, because of the likely
pronunciation and the similarities in appearance of the
individual syllables, the word DRY and the word DUCKS.
Thus, as opposed to VULKENE, where the Court found the
individual syllables to suggest other connotations, the
individual syllables in DRIDUX reinforce the similarities
with applicant’s mark.
The Court also addressed the argument of the
similarity of pronunciation of the respective marks:
We do not believe building wire is the
sort of merchandise likely to be
advertised on radio or television,
which media devote their advertising
time mostly to attempting to influence
the mass consumer market which they
reach, rather than the kind of
professional industrial buyers who are
interested in building wire. As to
telephone orders, we do not think an
electrician phoning the knowledgeable
order clerk in an electrical supply
house would be likely to get the wrong
product, if that is what the solicitor
had in mind.
Ser No. 78478872
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In the present case, of course, the goods are indeed
consumer goods which may well be advertised on radio, such
that similarity in sound plays an important role.
Moreover, as opposed to the General Electric case, the
marks at issue herein can be pronounced identically.
In the second case cited by applicant, National
Distillers, the Court found that DUET for prepared
alcoholic cocktails was not likely to cause confusion with
DUVET for liqueur and French brandy. As applicant has
pointed out, the Court stated that its basic reason for
believing that confusion would not be likely to result from
concurrent use of DUET and DUVET was that “the familiar is
readily distinguishable from the unfamiliar.” 184 USPQ at
35.2 However, the Court also stated that the sound and
meaning of the marks “are substantially different.” In the
present case, for the reasons explained at length at pages
6 through 9 of our opinion, the marks have the same
connotation and can be pronounced the same.
Thus, we find the present situation to be
distinguishable from the cases cited by applicant.

2 This opinion issued in 1974. Presumably the term “duvet” did
not have a readily recognized meaning at that time as a bed
covering. The dictionary definition quoted by the Court in its
opinion was only “a downy growth characteristic of some fungus
cultures.”
Ser No. 78478872
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The request for reconsideration is denied.