Smith & Hook Winery, Inc.Download PDFTrademark Trial and Appeal BoardJun 12, 2009No. 78910557 (T.T.A.B. Jun. 12, 2009) Copy Citation 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 6 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 7 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 8 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 9 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 10 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 11 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 12 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 13 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. Copy with citationCopy as parenthetical citation