Red Bull GmbH

Trademark Trial and Appeal Board

Feb 17, 2005

No. 75694928 (T.T.A.B. Feb. 17, 2005)

Mailed: February 17, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Red Bull GmbH
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Serial No. 75694928
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Martin R. Greenstein, Esq. of TechMark for Red Bull GmbH.

Suellen Hickey, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
______

Before Hanak, Chapman and Drost, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:

On April 30, 1999, Red Bull GmbH (a limited liability
company of Austria) filed an application to register on the
Principal Register the mark ENERGY WEAR for goods amended
to read “footwear; clothing, namely shirts, pants, t-
shirts, sweat shirts and sweatpants, shorts, blouses,
skirts, jumpers, socks, hats, caps; riding apparel, namely,
riding jackets and pants; outerwear, namely jackets and
coats; activewear, namely shorts, shirts, hats, caps and
visors; bandannas, neckerchiefs, coats, jackets, sweaters,
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75694928
2
sleepwear; resort wear, namely, shorts, shirts, t-shirts
and pants; belts and suspenders” in International Class 25.
The application is based on applicant’s assertion of a bona
fide intention to use the mark in commerce. Pursuant to a
requirement of the Examining Attorney, applicant disclaimed
the term “wear.”
The Examining Attorney originally refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), in view of four prior registered marks issued to
three different entities -- (1) the mark shown below

for “men’s and women’s clothing, namely, t-shirts, polo
shirts, sweatshirts, sweatpants and shorts” in
International Class 25,1 (2) the mark shown below

for “men’s sportswear, namely, shirts and pants” in
International Class 252 and “clothing, namely tops and

1 Registration No. 1515449, issued on the Principal Register on
December 6, 1988 to Jeri-Jo Knitwear, Inc.; Section 8 affidavit
accepted, Section 15 affidavit acknowledged. The registration
includes a statement that “The English translation of the word
‘energie’ in the mark is ‘energy.’”
2 Registration No. 1140446, issued on the Principal Register on
December 14, 1980 to Garan, Incorporated, assigned to Garan
Ser. No. 75694928
3
bottoms” in International Class 25,3 and (3) ENERGY BOOTS
for “foot coverings, namely, boots” in International Class
25.4
In response to the first Office action, applicant,
inter alia, argued that there would be no likelihood of
confusion between applicant’s mark and the marks in each of
the cited registrations. In support of applicant’s
argument it referred to a typed listing of six
registrations that include the term “ENERGY” or a phonetic
equivalent thereof in the marks and all being for clothing
or footwear in International Class 25, and all issued to
different owners. (Registration No. 1447677 for the mark
EXTRA ENERGY for sweaters; Registration No. 2015919 for the
mark ENERGY FIT for footwear; Registration No. 2130892 for
the mark ENERGY CUSHION (“cushion” disclaimed) for shoes;
Registration No. 2235984 for the mark ENERGY HEEL (“heel”
disclaimed) for women’s dress and casual shoes;
Registration No. 2187563 for the mark ENERGY SPINE for,
inter alia, “footwear, namely, shoes and boots for skis and

Services Corp.; Section 8 affidavit accepted, Section 15
affidavit acknowledged, renewed.
3 Registration No. 2016069, issued on the Principal Register on
November 12, 1996 to Garan Services Corp.; Section 8 affidavit
accepted, Section 15 affidavit acknowledged.
4 Registration No. 1178265, issued on the Principal Register on
November 17, 1981 to Air Baby, Incorporated. The term “boots” is
disclaimed. This registration was canceled under Section 9 of
the Trademark Act, 15 U.S.C. §1059.
Ser. No. 75694928
4
snowboards; Registration No. 1412443 for the mark N-R-GEE
for insoles for shoes.)
In the second and Final Office action, the Examining
Attorney, inter alia, withdrew the refusal to register
based on the cancelled registration, and made final the
refusal based on the remaining three cited registrations.
The Examining Attorney did not object to the listing of
third-party registrations and did not advise applicant that
a typed list is generally not adequate to make third-party
registrations of record. See In re Duofold, Inc., 184 USPQ
638 (TTAB 1974). Moreover, the Examining Attorney
discussed applicant’s argument regarding the many
registrations in International Class 25, thereby treating
them as of record. (Final Office action, p. 2.)
Therefore, the Examining Attorney stipulated applicant’s
typed list of third-party registrations into the record,
and we have considered them in our decision herein. See
TBMP §1208.02 (2d ed. rev. 2004), and cases cited therein.
Applicant appealed the final refusal to register.
Briefs have been filed,5 but applicant did not request an
oral hearing.

5 Applicant’s motions to extend its time to file a reply brief
(filed October 26, 2004 and November 22, 2004) are both granted,
and applicant’s reply brief is noted.
Ser. No. 75694928
5
Our determination of likelihood of confusion is based
on an analysis of all of the facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities of
the marks and the similarities of the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also,
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We turn first to a consideration of applicant’s goods
vis-a-vis those of the cited registrants. The identified
goods of applicant and those of the cited registrants
include identical items (e.g., t-shirts, shirts, pants,
sweatpants, shorts) and they are otherwise related clothing
items (e.g., tops, bottoms). Thus, applicant’s goods vis-
a-vis each of the cited registrants’ respective goods are
identical or closely related. Applicant does not argue
otherwise.
Because the goods are in part identical, and because
there are no limitations in the identifications of goods,
Ser. No. 75694928
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we find no differences in the channels of trade or classes
of purchasers. We must presume, given the identifications,
that the goods will travel in the same channels of trade,
and will be purchased by the same classes of purchasers.
See Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
Turning to a consideration of the marks, it is well
settled that marks must be considered in their entireties,
not dissected or split into component parts and each part
compared with other parts. This is so because it is the
entire mark which is perceived by the purchasing public,
and therefore, it is the entire mark that must be compared
to any other mark. It is the impression created by the
involved marks, each considered as a whole, that is
important. See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974
F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); and Franklin
Mint Corporation v. Master Manufacturing Company, 667 F.2d
1005, 212 USPQ 233 (CCPA 1981). See also, 3 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§23:41 (4th ed. 2001).
Because the two cited marks (in three registrations)
and applicant’s mark would all be pronounced as “energy,”
we find that the marks are similar in sound. However, as
Ser. No. 75694928
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to appearance and commercial impressions we find that the
marks are not similar. The word portion of the cited marks
are each phonetic mis-spellings of the word “energy,” and
these mis-spelling give some measure of separateness to
each mark. Also, each of the cited marks has stylized
lettering and/or a design feature, whereas applicant’s mark
is the two typed words ENERGY WEAR. We are aware that
because applicant’s mark is presented in typed form, the
application is not limited to the mark depicted in any
special form or lettering. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-1848 (Fed. Cir.
2000); and Phillips Petroleum Co. v. C.J. Webb, Inc., 442
F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). However, we need
not consider applicant’s mark in all possible stylization
forms, but rather in all reasonable manners in which the
words could be depicted. See Jockey International Inc. v.
Mallory & Church Corp., 25 USPQ2d 1233, 1235 (TTAB 1992),
and cases and authorities cited therein. Moreover, we note
that while applicant’s typed presentation covers all
reasonable stylized letterings, it does not cover design
features such as that in the two cited ENER-G marks.
The Examining Attorney argues that the word “wear” is
weak when considered in relation to clothing, and applicant
agrees. (Applicant’s brief, p. 5.) Further, applicant
Ser. No. 75694928
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contends that the term “energy” (and the phonetic
equivalents thereof) are also weak in the field of clothing
and footwear as shown by the co-existence of the cited
registrations and the third-party registrations. (Brief,
pp. 4-5.)6
Third-party registrations are not evidence of
commercial use of the marks shown therein, or what happens
in the marketplace, or that consumers are familiar with the
third-party marks. See Olde Tyme Foods Inc., v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992); and
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d unpub’d, Appeal No. 92-1086 (Fed. Cir.
June 5, 1992). However, third-party registrations are
competent to show that others in a particular industry have
registered marks incorporating a particular term, and that
such registrations containing a term common in that trade
have been registered because the remaining portions of the
marks are sufficient to distinguish the marks as a whole
from one another. See Henry Siegel Co. v. M & R
International Manufacturing Co., 4 USPQ2d 1154 (TTAB 1987);

6 Applicant argues that du Pont factor number 6 (the number and
nature of similar marks in use on similar goods must be
considered. (See e.g., reply brief, p. 4.) The Examining
Attorney argues that the cited registrants have been using their
marks for 10 to over 20 years. (Brief, p. 6.) There is no
evidence in this record of any use of any mark by any of the
cited registrants and/or by any of the third-party registrants.
Ser. No. 75694928
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In re Hamilton Bank, 222 USPQ 174 (TTAB 1984); and BAF
Industries v. Pro-Specialties, Incorporated, 206 USPQ 166
(TTAB 1980). See also, 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §§11:89 and 11:90 (4th
ed. 2001).
Here, applicant has made of record six third-party
registered marks, all of which include the word “energy” in
some form of spelling or phonetic spelling of the word, and
all are for the same or related goods as those of applicant
and the two owners of the three cited registrations. In
addition, the Examining Attorney made the four cited
registrations of record herein, even though only three of
those registrations are still cited as bars to registration
of applicant’s mark. Thus, it appears that the term
“energy” is hardly a unique term for use in connection with
clothing and footwear.7
When considered in their entireties, we find
applicant’s mark is not similar in appearance or overall

7 Applicant also argues that this same Examining Attorney allowed
for publication applicant’s related application Serial No.
75694926 for the mark RED BULL ENERGY WEAR and design showing a
circle and two fighting bulls (“wear” disclaimed) for various
clothing items; and that the application issued as Registration
No. 2594767 on July 16, 2002. Inasmuch as the mark in
applicant’s related application is different from the typed word
mark ENERGY WEAR, we did not rely on this argument in reaching
our decision herein.
Ser. No. 75694928
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commercial impression to either of the cited registrants’
marks.
Based on the record before us in this ex parte case,
we find that confusion is not likely.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is reversed.