monfredo vincent j

Trademark Trial and Appeal Board

Feb 26, 2014

No. 85307627 (T.T.A.B. Feb. 26, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 26, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re monfredo vincent j
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Serial No. 85307627
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Luke Brean of Breanlaw, LLC for monfredo vincent j.1

Ronald L. Fairbanks, Trademark Examining Attorney, Law Office 117 (Brett J.
Golden, Managing Attorney).
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Before Bergsman, Lykos, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On April 28, 2011, applicant applied to register the mark AMERICA
SECOND TO NONE (in standard characters) for, in pertinent part, “Baseball caps
and hats; Sweatshirts; T-shirts” in International Class 25.2 In his Request for
Reconsideration filed April 22, 2013, applicant disclaimed the exclusive right to use
AMERICA apart from the mark as shown.

1 The appeal brief refers to applicant as Monfredo J. Vincent.
2 Application Serial No. 85307627, filed pursuant to Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b) (intent to use). The application also identified “Bumper stickers” in International
Class 16 and “Coffee cups, tea cups and mugs” in International Class 21.
Serial No. 85307627
2

The examining attorney has issued a final refusal to register applicant’s
mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d). Specifically,
registration has been refused on the ground that applicant’s mark, as applied to the
goods identified in the application, so resembles the mark SECOND II NONE,
previously registered in standard characters on the Principal Register for “Baseball
caps; caps; shirts; sweat shirts” in International Class 25,3 as to be likely to cause
confusion, to cause mistake, or to deceive.
Applicant has appealed the final refusal. After careful consideration of the
evidence of record and the arguments of counsel, we affirm the refusal to register.
Record
The examining attorney made of record printouts of the cited registration and
dictionary definitions of “America” and “II,” the latter including an adjective “being
one more than one,” with synonyms “2” and “two.”4
Applicant submitted information concerning five third-party applications
incorporating the term AMERICA; fifteen registrations and one application
comprising or consisting of the phrase SIMPLY THE BEST; and one third-party
registration and one application comprising or consisting of SECOND TO NONE, as
follows:
• BUSINESS SERVICES, SECOND TO NONE for “Information,
advisory and consultancy services relating to business and
management or business administration, including such services on
line or via the internet” in International Class 35 (Registration
No. 3322179); and

3 Registration No. 3773474, issued April 6, 2010.
4 August 9, 2011 Office action at 7-10 (from thefreedictionary.com).
Serial No. 85307627
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• SECOND TO NONE for “promotion of trade and tourism in Chicago”
in International Class 35 (Application Serial No. 85361140).5
Applicant did not make any of the underlying registrations of record.
The examining attorney did not object to applicant’s summaries of
information concerning third-party registrations in the December 14, 2012 final
Office action. The examining attorney’s failure to advise applicant during
examination that such summaries are insufficient to make the listed registrations
of record constituted a waiver of any objection to consideration of the summaries.
In re City of Houston, 101 USPQ2d 1534, 1536 (TTAB 2012), aff’d, 731 F.3d 1326,
108 USPQ2d 1226 (Fed. Cir. 2013); Trademark Trial and Appeal Board Manual of
Procedure (TBMP) §§ 1207.03, 1208.02 (3d ed. rev. 2 June 2013). Therefore, we will
consider the information concerning third-party registrations “for whatever limited
probative value such evidence may have.” In re Broyhill Furniture Indus. Inc., 60
USPQ2d 1511, 1513 n.3 (TTAB 2001).6 Pending applications, however, are evidence
only that they were filed on a certain date. Nike Inc. v. WNBA Enters. LLC, 85
USPQ2d 1187, 1193 n.8, 1201 (TTAB 2007).
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of

5 September 19, 2011 response to Office action at 3-14.
6 We note that the mere submission of a list of registrations does not make the listed
registrations of record and the Board does not consider any information regarding those
registrations other than that provided in the lists. In re Jump Designs LLC, 80 USPQ2d
1370, 1372 (TTAB 2006); In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006); TBMP
§ 1208.02.
Serial No. 85307627
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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 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. 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.”). We discuss each of the du Pont factors as to
which applicant or the examining attorney submitted argument or evidence. To the
extent that any other du Pont factors for which no evidence was presented may
nonetheless be applicable, we treat them as neutral.
A. Similarity of the Goods and Channels of Trade
We first address the similarity of the goods and channels of trade, the second
and third du Pont factors, respectively.
Applicant’s Class 25 goods are “Baseball caps and hats; Sweatshirts; T-
shirts.” The goods recited in the cited registration are “Baseball caps; caps; shirts;
sweat shirts.” We find that applicant’s goods overlap with registrant’s goods. The
goods of both include identical baseball caps and sweatshirts. Applicant’s T-shirts
are a subset of the broader “shirts” identified in the cited registration. Finally,
registrant’s “caps” are a subset of applicant’s “hats.”
Because there are no limitations as to channels of trade or classes of
purchasers in the description of goods in the cited registration, we presume that
registrant’s goods move in all normal channels of trade and are available to all
Serial No. 85307627
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potential classes of ordinary consumers. See Citigroup Inc. v. Capital City Bank
Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump
Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). Moreover, because the baseball caps, shirts, and sweatshirts
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
American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101
USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal
presumption in determining likelihood of confusion).
In our likelihood of confusion analysis, these findings under the second and
third du Pont factors strongly support a conclusion that confusion is likely.
B. Similarity of the Marks
We turn next to the du Pont likelihood of confusion factor focusing on “‘the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation, and commercial impression.’” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-
side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter
the marks would be likely to assume a connection between the parties.” Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012) (citation omitted).
Serial No. 85307627
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Because the similarity or dissimilarity of the marks is determined on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, 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 Nat’l Data, 224 USPQ at 751.
We also keep in mind that when, as here, marks would appear on goods that
are identical in part, “the degree of similarity necessary to support a conclusion of
likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85
USPQ2d 1104, 1108 (TTAB 2007). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424,
1430 (TTAB 2013).
The cited registered mark is SECOND II NONE, while applicant’s mark is
AMERICA SECOND TO NONE, with AMERICA disclaimed.
Serial No. 85307627
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Applicant directed the entirety of his appeal brief to the first du Pont factor,
arguing that the marks differ in sight, sound, and commercial impression, and that
there is no prohibition against marks sharing a common term. Applicant
emphasizes the addition of the initial term AMERICA to his mark, and
distinguishes his use of TO from II in the cited registration.
We do not find that the use of the phonetic equivalents II and TO serves to
significantly distinguish the marks, particularly with respect to sound and overall
commercial impression. The presence in applicant’s mark of the term AMERICA,
however, presents a closer question.
On the one hand, AMERICA is disclaimed from applicant’s mark and may be
geographically descriptive in association with his goods, given that applicant is an
individual from New York. It is well-settled that disclaimed, descriptive matter
may have less significance in likelihood of confusion determinations. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive
component of a mark may be given little weight in reaching a conclusion on the
likelihood of confusion.’”) (quoting In re Nat’l Data, 224 USPQ at 752); In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
“less significant in creating the mark’s commercial impression”). On the other
hand, AMERICA is the first word in applicant’s mark, increasing its prominence
and lessening its similarity to the cited registered mark. See, e.g., Century 21 Real
Serial No. 85307627
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Estate Corp., 23 USPQ2d at 1700 (stating that consumers will first notice the
identical lead word on encountering the marks); Presto Prods. Inc. v. Nice-Pak
Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (stating that “it is often the first
part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered”). We also agree with applicant that the overall commercial
impression of his mark AMERICA SECOND TO NONE conveys a patriotic message
that is absent from the cited registered mark SECOND II NONE.
Nonetheless, we are mindful that the respective goods are identical in part,
lessening the degree of similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp., 23 USPQ2d at 1700. Registrant’s
mark, moreover, essentially incorporates applicant’s mark in its entirety, merely
adding one word to the phrase SECOND II NONE and replacing II with the
phonetically identical TO. While we agree with applicant that “[t]here is no explicit
rule that likelihood of confusion automatically applies where a junior user’s mark
contains in part the whole of another mark,”7 the fact that the cited registered mark
is subsumed by applicant’s mark increases the similarity between the two. See, e.g.,
In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010)
(applicant’s mark ML is similar to registrant’s mark ML MARK LEES); In re
Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (VANTAGE TITAN
confusingly similar to TITAN for medical diagnostic apparatus); In re El Torito
Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO COMBOS

7 Appeal Brief at 5 TTABVUE 4.
Serial No. 85307627
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confusingly similar to MACHO for restaurant entrees); In re U.S. Shoe Corp., 229
USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for women’s clothing stores and
women’s clothing likely to cause confusion with CREST CAREER IMAGES for
uniforms including items of women’s clothing); In re Riddle, 225 USPQ 630, 632
(TTAB 1985) (RICHARD PETTY’S ACCU TUNE for automotive service centers
confusingly similar to ACCU-TUNE for automotive testing equipment).
Applicant makes no reference in his appeal brief to the evidence he submitted
during prosecution. We note, however, that the information applicant provided
regarding the third-party registration for BUSINESS SERVICES, SECOND TO
NONE is of limited probative value because that registration covers business
services, not clothing. In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009)
(finding third-party registrations to be of limited probative value because the goods
identified in the registrations appear to be in fields which are far removed from the
goods at issue). See also Key Chems., Inc. v. Kelite Chems. Corp., 464 F.2d 1040, 175
USPQ 99, 101 (CCPA 1972) (“Nor is our conclusion altered by the presence in the
record of about 40 third-party registrations which embody the word ‘KEY’. The
great majority of those registered marks are for goods unrelated to those in issue,
and there is no evidence that they are in continued use. We, therefore, can give
them but little weight in the circumstances present here.”).
For all of the reasons discussed above, we find applicant’s mark AMERICA
SECOND TO NONE to be similar in sight, sound, connotation, and overall
Serial No. 85307627
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commercial impression to the cited mark SECOND II NONE. Therefore, the first
du Pont factor supports a conclusion that confusion is likely.
Conclusion
We have considered all of the evidence of record as it pertains to the relevant
du Pont factors. To the extent that any other du Pont factors for which no evidence
was presented by applicant or the examining attorney may nonetheless be
applicable, we treat them as neutral. In view of our findings that the marks are
similar and the goods are in part identical and move in the same channels of trade
and to the same customers, we find that applicant’s mark is likely to cause
confusion with the mark in cited Registration No. 3773474 when used in association
with applicant’s goods. To the extent we have any doubts, we must resolve them
against applicant as the newcomer and in favor of the registrant. Nike Inc., 85
USPQ2d at 1202; Hard Rock Café Int’l (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1514
(TTAB 2000).
Decision: We affirm the examining attorney’s refusal to register applicant’s
mark under Section 2(d) of the Trademark Act.