Smith & Hook Winery, Inc.

Trademark Trial and Appeal Board

Jun 12, 2009

No. 78910557 (T.T.A.B. Jun. 12, 2009)

Mailed:
12 June 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Smith & Hook Winery, Inc.
________

Serial Nos. 78910544 and 78910557
_______

William R. Samuels of LaRiviere, Grubman & Payne, LLP for
Smith & Hook Winery, Inc.

Christine Blomquist, Trademark Examining Attorney, Law
Office 104 (Chris Doninger, Managing Attorney).
_______

Before Drost, Zervas, and Mermelstein, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On June 16, 2006, Smith & Hook Winery, Inc.
(applicant) filed two applications to register the marks
CYCLES GLADIATOR in standard character form and with the
design shown below for goods in both applications
ultimately identified as “cycling clothing, namely,
jackets, vests, hats, shirts, shorts, socks, shoes and
rainwear, pants, gloves, leggings, and bicycle jerseys” in
Class 25.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 78910544 and 78910557
2

Serial Nos. 78910544 (design mark) and 78910557 (standard
character form). Both applications contain an allegation
of a bona fide intent to use the mark in commerce and a
disclaimer of the term “Cycles.”
The examining attorney1 has refused to register
applicant’s marks under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a registration (No.
2935556, issued March 22, 2005) for the mark GLADIATOR
(typed or standard character form) for “clothing, namely t-
shirts, sweatshirts, sweatpants, shorts, slacks and
jackets" in Class 25.2

1 The current examining attorney was not the original examining
attorney in these applications.
2 The examining attorney also cited two other registrations owned
by the registrant (McGregor II, LLC). One is for the mark
GLADIATOR (typed) for suits and sport jackets (No. 1633273).
Ser Nos. 78910544 and 78910557
3
After the examining attorney made the refusals final,
these appeals and as well as requests for reconsideration
followed. Also, on March 11, 2009, the board granted the
examining attorney’s motion to consolidate these two
appeals. Unless otherwise specified, when we refer to the
record, we will refer to Serial No. 78910544.
Before we begin the analysis of the likelihood of
confusion issue, we sustain the examining attorney’s
objection to the references in applicant’s briefs to
evidence that had not previously been made of record. 37
CFR § 2.142(d). In re Carolina Apparel, 48 USPQ2d 1542,
1542 n.2 (TTAB 1998) (“The Board does not take judicial
notice of third-party registrations, and the mere listing
of them is insufficient to make them of record”).
Regarding the issue of likelihood of confusion, the
examining attorney argues that the “term GLADIATOR is the

While the registration issued on January 29, 1991 and a renewal
application was submitted on January 24, 2000. The renewal
application was rejected on September 20, 2000, and there is no
indication that the renewal application was subsequently
accepted. The second (No. 1303786, renewed) is for the mark
for “men’s casual shirts, coats and jackets.” We do
not reach the issue of likelihood of confusion with respect to
these marks because if there is no confusion with the principal
registration, there would similarly not be confusion with these
registrations. If there is confusion, there is no need to
address the question again with these registrations that either
contains a different design element or goods that are not as
closely related as the goods in the principal registration. All
three registrations have subsequently been assigned.
Ser Nos. 78910544 and 78910557
4
dominant element of both the Registrant’s and Applicant’s
marks. The term GLADIATOR is highly distinctive and source
identifying when used in connection with the identified
goods. Additionally, it is the dominant portion of the
Applicant’s marks because CYCLES is descriptive in relation
to the Applicant’s goods, and it is the dominant portion of
the Registrant’s marks because [it] is the only term in the
marks.” Brief at unnumbered p. 6. Furthermore, the
examining attorney points out that “registrant has not
limited its goods to a particular class of clothing, and as
such, the Registrant’s goods are identified broadly.
Therefore, it is presumed that the registrations encompass
all the goods of the type described, including the ‘cycling
clothing’ in the Applicant’s more specific identification,
that they move in all normal channels of trade, and they
are available to all potential customers.” Brief at 11-12.
Applicant maintains that although “disclaimed, the
term CYCLES in Applicant’s mark is the dominant part of the
mark and must be duly considered as it carries a distinct
connotations not evident in the mark GLADIATOR standing
alone.” Reply Brief at 1. Furthermore, applicant submits
that its “goods are cycle-related clothing items, while
Registrant’s goods have totally different uses.” Reply
Brief at 3.
Ser Nos. 78910544 and 78910557
5
In cases in which the issue is likelihood of
confusion, we analyze the facts as they relate to the
relevant factors set out in In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We begin by addressing the issue of whether
applicant’s and registrant’s goods are related.
Registrant’s goods are broadly described as “t-shirts,
sweatshirts, sweatpants, shorts, slacks and jackets."
While applicant’s goods are more narrowly described as
“cycling clothing, namely, jackets, vests, hats, shirts,
shorts, socks, shoes and rainwear, pants, gloves, leggings,
and bicycle jerseys," both the applications and
registration include jackets and shorts. In addition,
applicant’s broadly identified “shirts” would include “T-
shirts” and “sweatshirts.” Also, “pants” and “slacks” are
at least in part identical.3

3 “Pants – trousers” and “slacks – men’s or women’s trousers for
informal wear.” The Random House Dictionary of the English
Ser Nos. 78910544 and 78910557
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There is no limitation in registrant’s identified
goods so we must assume that they include jackets, shorts,
and T-shirts, sweatshirts, and trousers4 for cycling. In re
Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997) (punctuation in original), quoting,
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1816 (Fed. Cir. 1987)
(“‘Likelihood of confusion must be determined based on an
analysis of the mark as applied to the … [goods or]
services recited in applicant’s application vis-à-vis the …
[goods or] services recited in [a] … registration, rather
than what the evidence shows the … [goods or] services to
be’”). See also Paula Payne Products v. Johnson Publishing
Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark
cases involving the issue of likelihood of confusion must
be decided on the basis of the respective descriptions of
goods”). Nor do we read limitations into a registration’s
identification of goods. Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 940 (Fed. Cir. 1983)(“There is no
specific limitation and nothing in the inherent nature of
Squirtco’s mark or goods that restricts the usage of SQUIRT

Language (unabridged) (2d ed. 1987). We take judicial notice of
these definitions. University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
4 See Registration No. 3295188 (“bicycle trousers”).
Ser Nos. 78910544 and 78910557
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for balloons to promotion of soft drinks. The Board, thus,
improperly read limitations into the registration”). Thus,
because registrant’s goods would include jackets, shorts,
sweatshirts, T-shirts, and trousers for cycling, we
conclude that these goods are identical in part.5
Furthermore, since the goods of applicant and
registrant overlap, we must assume that the purchasers and
channels of trade also overlap. In re Jump Designs LLC, 80
USPQ2d 1370, 1374 (TTAB 2006):
Where the goods in the application at issue and/or in
the cited registration are broadly identified as to
their nature and type, such that there is an absence
of any restrictions as to the channels of trade and no
limitation as to the classes of purchasers, it is
presumed that in scope the identification of goods
encompasses not only all the goods of the nature and
type described therein, but that the identified goods
are offered in all channels of trade which would be
normal therefor, and that they would be purchased by
all potential buyers thereof.

See also Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
2003) (“Given the in-part identical and in-part related
nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be

5 A refusal under Section 2(d) is proper if there is a likelihood
of confusion involving any of the goods set forth in the
application and the cited registration. See, e.g., Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981); and Shunk Mfg. Co. v. Tarrant Mfg.
Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA 1963).
Ser Nos. 78910544 and 78910557
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offered and sold to the same classes of purchasers through
the same channels of trade”).
To the extent that the goods are not overlapping, for
goods to be related, “it has often been said that goods or
services need not be identical or even competitive in order
to support a finding of likelihood of confusion. Rather,
it is enough that goods or services are related in some
manner or that circumstances surrounding their marketing
are such that they would be likely to be seen by the same
persons under circumstances which could give rise, because
of the marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
producer or that there is an association between the
producers of each part[y’s] goods or services.” In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). Here,
even if they are not overlapping, applicant’s jackets,
vests, hats, shirts, shorts, socks, rainwear, pants,
leggings and bicycle jerseys would be related to
registrant’s t-shirts, sweatshirts, sweatpants, shorts,
slacks and jackets. See, e.g., Registration Nos. 3295188
(shirts, t-shirts, sport shirts, knit shirts, pants,
shorts, jackets, hats, caps, vests, gloves, raincoats, rain
gear apparel, namely, rain boots, rain shoe covers, rain
suits and rain trousers, and clothing for bicycling,
Ser Nos. 78910544 and 78910557
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namely, bicycle gloves, bicycle shorts, bicycle trousers,
bicycle shirts, bicycle jackets, bicycle vests, bicycle leg
warmers, and bicycle arm warmers); 3254308 (Bicycle gloves;
Bicycling gloves; … Coats for men and women, … Hats, … Men
and women jackets, coats, trousers, vests; … Rain coats;
Rain jackets; Rain trousers; Rainproof jackets, … Shirts;
Shirts for suits; Sweat pants; Sweat shirts; T-shirts; …
Trousers”); and 3321503 (“Clothing and underclothes for
women, men, and children, In particular for mountaineering,
hiking, water sports and bicycling, namely, T-shirts, tank
tops, shirts, … sweatshirts, … sweatpants, pants, side zip
pants, shorts, trousers, jeans, vests, parkas, anoraks,
coats, jackets, wind-resistant jackets, bicycle jerseys, …
leisure wear, namely, skirts, shirts, shorts, pants and
dresses). These registrations may “serve to suggest that
such goods or services are of a type which may emanate from
a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988). See also www.nike.com (women’s
apparel for cycling and other sports). This evidence
suggests that applicant’s cycling clothing is related to
registrant’s clothing even if the clothing is not
specifically for cycling. Again, we add that neither
applicant’s nor registrant’s goods are limited to their
current marketing practices or channels of trade.
Ser Nos. 78910544 and 78910557
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Next, we look at the marks to compare “‘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). Both
applicant’s and registrant’s marks contain the identical
word GLADIATOR. Registrant’s mark is for the word
GLADIATOR by itself in typed form. Inasmuch as the word
GLADIATOR is the only feature of registrant’s mark, it
would be its dominant feature.
On the other hand, applicant’s marks consist of the
words CYCLES GLADIATOR, in standard character form and also
with a design. Applicant’s marks include the term
“Cycles,” which applicant describes as “an important part
of its mark.” Reply Brief at unnumbered p, 2. While
applicant refers to “Cycles” as functioning “in the manner
of a house mark” (Brief at 2), regardless of whatever
meaning it would have on other goods, the term “Cycles”
clearly has a descriptive meaning when it is used on
clothes for cycling as it is in the present applications.
“When comparing the similarity of marks, a disclaimed term
… may be given little weight, but it may not be ignored.”
M2 Software Inc. v. M2 Communications Inc., 450 F.3d 1378,
Ser Nos. 78910544 and 78910557
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78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006). See also
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000). As such, the term GLADIATOR
would be the dominant part of the mark CYCLES GLADIATOR.
When we consider the marks GLADIATOR and CYCLES
GLADIATOR, they look and sound very similar because of the
identical dominant part. In addition, their meanings would
overlap. While applicant’s CYCLES GLADIATOR mark places
the “gladiator” in the context of “cycles,” because
registrant’s goods could include cycling clothes, the
meaning and commercial impression would be similar.
Therefore, we conclude that the marks GLADIATOR and CYCLES
GLADIATOR are similar.
We now consider whether the marks GLADIATOR and CYCLES
GLADIATOR and design are similar. Here, the word GLADIATOR
is displayed in a slightly larger font than the word CYCLES
and the design includes a “cycle” and a nude woman. We
must assume that registrant’s mark could be displayed in
the same script as applicant’s mark (Squirtco, 216 USPQ at
939) and that the term “cycles” is descriptive of “cycling
clothing.” While the overall design is a significant
feature of the mark, nonetheless, when a decision to
purchase cycling clothing is being made, the identical
nature of the dominant term is likely to result in the
Ser Nos. 78910544 and 78910557
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marks being more similar than they are different in sound
and meaning. Indeed, even the appearance and commercial
impressions of the marks are similar to the extent that the
term GLADIATOR is a prominent part of both marks.
Therefore, while we do not disregard the term “Cycles”
and the design, we cannot agree that either would be the
dominant part of applicant’s mark. See, e.g., Wella Corp.
v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419,
422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design
likely to be confused with CONCEPT for hair care products).
When we compare applicant’s and registrant’s marks in
their entireties, we find that they share the identical
term GLADIATOR. Applicant’s addition of the word “Cycles”
simply describes the goods as being clothes for cycling.
The term “Gladiator” is an arbitrary or at most a slightly
suggestive term for clothing.6 When the marks GLADIATOR and
CYCLES GLADIATOR appear on the same clothing, their

6 Even if we considered applicant’s untimely evidence of a
list of third-party registrations, it is hardly sufficient
to show that the term GLADIATOR is so weak that it is
entitled to only a very narrow scope of protection. Jump
Designs, 80 USPQ2d at 1375 (“[T]he registrations are not
evidence of use of the marks shown therein. Thus, they are
not proof that consumers are familiar with such marks so as
to be accustomed to the existence of similar marks in the
marketplace, and as a result are able to distinguish
between the JUMP marks based on slight differences between
them”).
Ser Nos. 78910544 and 78910557
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similarities in sound, appearance, meaning, and commercial
impressions would result in confusingly similar marks. See
In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1534 (Fed. Cir. 1997) (Federal Circuit held that,
despite the addition of the words “The” and “Cafe” and a
diamond-shaped design to registrant’s DELTA mark, there was
a likelihood of confusion). The bicycle and woman design
adds an additional element but consumers are likely to
believe that there is some association between the source
of GLADIATOR and CYCLES GLADIATOR and design for identical
clothing items. We add that to the extent that there is
any doubt on the issue of likelihood of confusion, we have
resolved it in the registrant’s favor. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir.
1988). See also In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944, 1948 (Fed. Cir. 2004).
Decision: The examining attorney’s refusals to
register applicant’s marks CYCLES GLADIATOR and CYCLES
GLADIATOR and design on the ground that they are likely to
cause confusion with the cited registered mark used in
connection with the identified goods under Section 2(d) of
the Trademark Act are affirmed.