Ridmark Corp.

Trademark Trial and Appeal Board

Apr 3, 2001

No. 75591493 (T.T.A.B. Apr. 3, 2001)

04/03/01 Paper No. 10
RLS/CV
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ridmark Corporation
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Serial No. 75/591,493
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Kathryn Grant Belleau of St. Onge Steward Johnston & Reens
LLC for Ridmark Corporation.
Kimberly B. Perry, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______
Before Simms, Cissel and Rogers, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Ridmark Corporation (applicant), a Delaware
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark RIDDELL
for interactive video game programs.1 The Examining
Attorney has refused registration under Section 2(e)(4) of
1 Application Serial No. 75/591,493, filed November 17, 1998,
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce, under Section 1(b) of the Act, 15 USC
§1051(b). Applicant subsequently claimed ownership of four
registrations covering this mark.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/591,493
2
the Act, 15 USC §1052(e)(4), on the basis that applicant’s
mark is primarily merely a surname.
Applicant and the Examining Attorney have submitted
briefs, but no oral hearing was requested.
We affirm.
It is the Examining Attorney’s position that the
primary significance of applicant’s mark is that of a
surname. The Examining Attorney has made of record over
eight pages of surname listings from Phonedisc Powerfinder
USA One 1998 (4th edition), a nationwide computerized
database of names and phone numbers, showing 556
individuals with this surname.
It is applicant’s position, however, that its
ownership of the registrations covering the mark RIDDELL
and LIL’ RIDDELL for goods in the same class2 is sufficient
evidence to show that the previously created
distinctiveness of this surname would be transferred to the
mark if it were used in connection with the goods in this
application. In support of applicant’s claim of use of the
mark for “related goods” for more than 30 years and claim
2 The registrations of RIDDELL cover the following Class 28
goods: protective helmets, headband suspensions, face guards,
neck protectors, chin straps, shoulder pads, chest pads, thigh
pads, protective padding, sideline marking equipment for football
games, bowling shoes, football shoes, baseball and track shoes.
The LIL’ RIDDELL registration covers miniature football helmets.
Ser. No. 75/591,493
3
that such use “inures to the benefit” of the current
application, applicant has submitted a declaration
of its chief executive officer stating that the “continuous
and exclusive” use of the mark RIDDELL for toys and
athletic equipment for over thirty years demonstrates that
the mark has became distinctive of those goods and, due to
the relatedness of those goods to the goods in this
application (video game programs), that distinctiveness
applies to these goods. Applicant also states that the
video games have a sports theme and that they are “video
rendition[s] evidencing use of goods covered by previous
registrations.” Brief, p. 3. Because applicant’s previous
use has been for sporting goods in the same class,
applicant urges that the refusal be reversed.
In response to applicant’s claim of acquired
distinctiveness, it is the Examining Attorney’s position
that applicant’s registrations do not cover the same or
related goods. See Trademark Rule 2.41(b) and TMEP
§1212.04(c).3 The Examining Attorney, noting that
3 Trademark Rule 2.41(b) provides:
b) In appropriate cases, ownership of one or more prior
registrations on the Principal Register or under the
Act of 1905 of the same mark may be accepted as prima
facie evidence of distinctiveness…
TMEP §1212.04(c) provides, in part:
Ser. No. 75/591,493
4
applicant’s prior registrations cover such goods as
helmets, face guards, neck protectors, shoulders pads,
sideline marking equipment, and athletic shoes, argues that
none of applicant’s registrations covers the same or
sufficiently similar goods.4 The Examining Attorney
contends that applicant’s protective headgear and other
equipment are different in nature and function from video
game programs, which are for entertainment. Also, the
Examining Attorney argues that there is no evidence that
all of these goods would be sold in the same channels of
trade to the same class of purchasers. With respect to
classification, the Examining Attorney maintains that
classification is not dispositive because classification is
an administrative matter within an agency’s discretion, and
that the fact that these goods are in the same class does
not mean that they are sufficiently related products.
Whether a mark is primarily merely a surname depends
upon the term’s primary significance to the purchasing
public. In re Harris-Intertype Corp. 518 F.2d 69, 186 USPQ
The examining attorney should determine whether the
goods or services named in the application are
sufficiently similar to the goods or services named in
the prior registration or registrations.
4 Electronic versions of these registrations were submitted for
the first time with applicant’s appeal brief. However, because
the Examining Attorney has treated these registrations as of
record, we have too. See Trademark Rule 2.142(d).
Ser. No. 75/591,493
5
238, 239-40 (CCPA 1975). The burden is upon the Examining
Attorney to present evidence sufficient to make out a prima
facie showing that a particular mark is primarily merely a
surname. In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d
1939, 1940 (TTAB 1993).
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that a prima facie case of the primary
significance of the name RIDDELL has been established.
Indeed, applicant does not argue to the contrary. Rather,
it is applicant’s position, as noted above, that the
distinctiveness its mark has acquired for other goods will,
when used for the goods in this application, be transferred
to these goods. While we agree with applicant that some of
these registrations cover the substantially identical mark
(shown in stylized form), we also agree with the Examining
Attorney that applicant’s video game programs cannot be
considered sufficiently similar to such goods as football
helmets, face guards, shoulder pads, etc. so as to permit
registration of this same mark on the basis of applicant’s
claim of ownership of the prior registrations. Although in
the same class, these goods are simply unrelated in purpose
and function to applicant’s video games. See Bausch & Lomb
Inc. v. Leupold & Stevens Inc., 6 USPQ2d 1475 (TTAB
Ser. No. 75/591,493
6
1988)(applicant’s reliance on the distinctiveness of its
mark for rifle scopes and handgun scopes not sufficient to
establish distinctiveness for binoculars and spotting
scopes). Cf. In re Best Products Co., Inc., 231 USPQ 998
(TTAB 1986)(mail order and catalogue showroom services and
retail jewelry store services held sufficiently related).
Decision: The refusal of registration is affirmed.