Reebok International Ltd.

Trademark Trial and Appeal Board

Feb 27, 2009

No. 78578110 (T.T.A.B. Feb. 27, 2009)

Mailed:
February 27, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Reebok International Ltd.
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Serial No. 78578110
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Angelo Notaro and John Zacaria of Notaro & Michalos P.C.
for Reebok International Ltd.

Patty Evanko, Trademark Examining Attorney, Law Office 117
(Loretta C. Beck, Managing Attorney).
_______

Before Seeherman, Rogers and Bergsman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Reebok International Ltd. has appealed from the final
refusal of the Trademark Examining Attorney to register
WALK-DRY, in standard character form, as a trademark for
goods ultimately identified as “footwear.”1 Registration
has been refused pursuant to Section 2(d) of the Trademark

1 Application Serial No. 78578110, filed March 2, 2005. The
application was initially based on an asserted intent to use the
mark in commerce; applicant subsequently filed an amendment to
allege use asserting first use and first use in commerce on May
31, 2004. At that time applicant deleted items of apparel and
headwear from its identification of goods.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78578110
2
Act, 15 U.S.C. §1052(d), on the ground that applicant’s
mark so resembles the following marks, registered by the
same registrant for, inter alia, footwear,2 that when used
on applicant’s identified goods it is likely to cause
confusion or mistake or to deceive:
Mark Registration No.

3093428, issued May 16, 2006
3109476, issued June 27, 2006
3109477, issued June 27, 2006

We will focus our comments on the issue of likelihood
of confusion with respect to Registration No. 3093428 for

2 The registrations recite, in the identifications of goods,
“clothing, namely pants, shirts, coats, jackets, skirts, dresses;
footwear, headgear, namely, caps and hats” in Class 25;
“chemicals for use in industry and science; chemicals used for
impregnating leather; tanning agents for use in the manufacture
of leather; leather finishing products, namely, fat liquors,
polymers, emulsifiers and waterproofing chemical compositions” in
Class 1; and “leather and imitation leather bags; tanned leather;
unworked and semi-worked leather; animal hides, skins, trunks and
traveling cases made of leather” in Class 18.

Ser No. 78578110
3
DRYWALK and design, since that is the closest mark to
applicant’s.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The goods identified in applicant’s application,
“footwear,” are included in the cited registration, and
therefore the application and registration involve legally
identical goods. Further, because the goods are identical,
they must be deemed to be sold in the same channels of
trade and to the same classes of consumers. These du Pont
factors favor a finding of likelihood of confusion.
This brings us to a consideration of the marks,
keeping in mind that when marks would appear on legally
Ser No. 78578110
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identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). Applicant’s mark is WALK-DRY, while the cited mark
is DRYWALK with the design of a shoe. Although applicant
contends that the design in the cited mark is a significant
visual feature, we do not agree. The shoe design is the
equivalent of the generic term shoe; in a mark for
footwear, it merely indicates to consumers what the goods
are. Therefore, although the design encompasses the words,
and is therefore physically larger, its commercial impact
is similar to a background “carrier” in the mark. It is
the words DRYWALK that have source-indicating significance,
and is the part of the mark that consumers will remember
and by which they will refer to or call for the goods. See
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987)
(if a mark comprises both a word and a design, then the
word is normally accorded greater weight because it would
be used by purchasers to request the goods or services.)
Applicant’s mark also contains a hyphen, while the
registered mark does not. However, the presence or absence
of this punctuation mark is not a distinguishing feature.
On the contrary, the hyphen in applicant’s mark serves to
Ser No. 78578110
5
make clear that the mark is composed of the two words WALK
and DRY, while the manner in which the registered mark is
depicted, with DRY in outline form and WALK in solid
lettering, has the same effect. Applicant has also pointed
out that its mark does not appear in any special typeface,
but again this does not distinguish it from the cited mark.
Because applicant seeks to register its mark in standard
character format, if it were to obtain a registration it
could depict its mark in the same lower case lettering
and/or in solid and outline form as the registrant’s mark.
The most significant difference between the marks is
that the word elements are reversed: WALKDRY versus
DRYWALK. Applicant has cited a number of cases in which a
reversal of elements in the marks has resulted in a finding
of no likelihood of confusion, while the Examining Attorney
has referenced similar situations in which a likelihood of
confusion has been found. We will not burden this opinion
by discussing all of the cases cited by applicant, but note
that In re Best Products Co. Inc., 231 USPQ 988 (TTAB
1986), involved goods on the one hand and services on the
other, rather than identical goods as is the case here.
Indeed, the Board specifically relied on the fact that
goods and services are different in saying that “no
reasonable person would mistakenly find a product in the
Ser No. 78578110
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course of looking for a service; neither is the reverse
possible.” Id. at 989. The Board also pointed out that
when marks comprise “reverse combinations of the same
elements, the primary concern is that ordinary prospective
purchasers, not being infallible in their ability to recall
trade designations, may transpose the elements in their
minds and, as a result, mistakenly purchase the wrong
products or engage the wrong services.” Id. That decision
also cited several cases which involved marks with reversed
elements in which likelihood of confusion was found: Bank
of America National Trust and Savings Association v.
American National Bank of St. Joseph, 201 USPQ 842, 845
(TTAB 1978) [BANKAMERICA v. AMERIBANC, both for banking
services.] and In re General Tire & Rubber Co., 213 USPQ
870, 871 (TTAB 1982) [SPRINT STEEL RADIAL v. RADIAL SPRINT,
both for tires.]
In the present case, we find that the marks convey the
same connotation and commercial impression, and that the
reversal of the word elements is not sufficient to
distinguish them. Applicant argues that “WALK-DRY evokes
the idea of walking without worries of becoming wet” and
that the mark “conveys a direct personal message to the
consumer to take certain action,” while the cited mark does
“not suggest any kind of activity” and does not “convey a
Ser No. 78578110
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‘take action’ message.” Brief, p. 13. However, we find
that both marks suggest that one using the shoes will avoid
getting their feet wet, and therefore the marks have the
same connotation and commercial impression. We also are
not persuaded by applicant’s argument, citing the
dictionary meanings of the individual elements, that the
dictionary meanings of “dry walk” are a “dry sidewalk” or
“dry ground.” Although these meanings might apply if the
goods were sidewalks, we must consider the meaning of the
marks as used with footwear.3
Thus, although the marks have certain differences,
when we compare them in their entireties we find that on
the whole they are similar in appearance, sound,
connotation and commercial impression, and that the
reversal of the elements in the marks, and the shoe design
in the registrant’s mark, are not sufficient to distinguish
them when used on identical goods. This du Pont factor
favors a finding of likelihood of confusion.

3 Applicant is aware that the connotation of the mark is
dependent on the goods with which it is used. Applicant itself
has cited, at pages 16 and 17 of its brief, several cases in
which the identical mark was found to have different connotations
in view of the respective goods. See, for example, In re Sydel
Lingerie Company, Inc., 197 USPQ 629 (TTAB 1977), in which CROSS-
OVER as applied to brassieres was found suggestive of their
construction, while CROSSOVER for ladies’ sportswear was found
either arbitrary or suggestive of clothing which crosses over the
line between informal and more formal wear.
Ser No. 78578110
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Applicant has submitted evidence of use and
advertising of its mark since 2004 and argues that, despite
such use, there is no evidence of actual confusion. As a
general rule, in an ex parte proceeding “[t]he lack of
evidence of actual confusion carries little weight.” In re
Majestic Distilling Co., 65 USPQ2d at 1205. That rule has
particular applicability in the present circumstances. The
cited registration was obtained by a German company, based
on Section 66(a) of the Trademark Act, rather than use.
Thus, we have no evidence that registrant has even used its
mark in the United States, and cannot conclude that there
has been an opportunity for confusion to occur.
Neither applicant nor the Examining Attorney have
discussed any other du Pont factors, nor have they
submitted any evidence on them. To the extent that any
other factors are applicable, we have treated them as
neutral.
In conclusion, we find that applicant’s mark as used
on footwear is likely to cause confusion with the cited
registration for DRYWALK and design. In view of this
finding we need not discuss the issue of likelihood of
confusion with respect to the other cited registrations:
the DRYWALK and design registration is sufficient to bar
the registration of applicant’s mark and if, on appeal, we
Ser No. 78578110
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were reversed on this finding of likelihood of confusion,
because the marks in the other cited registrations have
additional distinguishing elements, there would be no
likelihood of confusion with respect to them either.
Decision: The refusal of registration is affirmed.