Triple T Enterprises

Trademark Trial and Appeal Board

Jun 12, 2014

No. 85300439 (T.T.A.B. Jun. 12, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Triple T Enterprises
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Serial No. 85297275
Serial No. 85300439
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Robert Hart of the Law Offices of Robert Hart for Triple T Enterprises.

Margaret Power, Trademark Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).
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Before Zervas, Kuhlke and Bergsman, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Applicant Triple T Enterprises filed use-based applications for the mark
SMOKY MOUNTAIN, in standard character form,1 and SMOKY MOUNTAIN and
design, shown below,2

1 Serial No. 85297275 filed April 17, 2011.
2 Serial No. 85300439 filed April 20, 2011.
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for goods ultimately identified as “clothing, namely T-shirts, shirts and hats
marketed exclusively as promotional clothing items of restaurants and food
products and specifically excluding causal shoes, slippers and boots as well as
promotional clothing related to smokeless, tobacco-free and nicotine-free
alternatives to tobacco,” in Class 25. Applicant claimed ownership of the previously
registered mark SMOKY MOUNTAIN PIZZA & PASTA, in typed drawing form, for
the goods and services listed below:
1. Registration No. 2841465 for “clothing, namely, t-shirts and hats,” in
Class 25;3 and
2. Registration No., 2879075 for “preparation of food, namely, pizza,
pasta and sandwiches,” in Class 42.4
Also, applicant is the owner of the registered mark SMOKY MOUNTAIN PIZZERIA
GRILL and design, shown below, for “clothing, namely, t-shirts and hats,” in Class
25.5

3 Issued May 11, 2004; Sections 8 and 15 affidavits accepted and acknowledged.
4 Issued August 21, 2004; Sections 8 and 15 affidavits accepted and acknowledged.
Applicant disclaimed the exclusive right to use “Pizza & Pasta.”
5 Registration No. 3319675 issued October 23, 2007; Sections 8 and 15 affidavits accepted
and acknowledged. Applicant disclaimed the exclusive right to use “Pizzeria Grill.”
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The Trademark Examining Attorney refused to register applicant’s marks
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
that applicant’s marks so resemble the mark SMOKY MOUNTAIN, in typed
drawing form, for “casual shoes and slippers,” in Class 25,6 and “boots,” in Class 25,7
as to be likely to cause confusion.
Because the issues and the records in the two applications are the same, we
consolidated the appeals in our June 17, 2013 order. References to the record are to
Serial No. 85297275 unless otherwise indicated.
Our determination under Section 2(d) is based on an analysis of all of the
probative 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, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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”). These factors, and any
other relevant du Pont factors in the proceeding now before us, will be considered in
this decision.

6 Registration No. 1686526, issued Mary 12, 1992; second renewal.
7 Registration No. 1888540, issued April 11, 1995; renewed.
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A. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

Applicant’s mark SMOKY MOUNTAIN in standard character form is
identical to the mark in the cited registration, SMOKY MOUNTAIN in typed
drawing form. Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52,
was amended to replace the term “typed” drawing with “standard character”
drawing.
Applicant’s composite word and design mark is very similar to the mark in
the cited registration. In this regard, it is settled that when a mark consists of a
literal portion and a design portion, the literal portion is more likely to be impressed
upon a purchaser’s memory and to be used in calling for the goods and/or services;
therefore, the literal portion is normally accorded greater weight in determining
whether marks are confusingly similar. In re Dakin’s Miniatures, Inc., 59 USPQ2d
1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218
USPQ 198, 200 (Fed. Cir. 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261,
1267-68 (TTAB 2011). This is especially true here where the design feature
comprising a mountain emphasizes the literal portion “SMOKY MOUNTAIN,”
thereby reinforcing the dominance of that term.
B. The similarity or dissimilarity and nature of the goods, the established,
likely-to-continue channels of trade and classes of consumers.

Applicant is seeking to register its marks for “T-shirts, shirts and hats
marketed exclusively as promotional clothing items of restaurants and food
products and specifically excluding causal shoes, slippers and boots as well as
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promotional clothing related to smokeless, tobacco-free and nicotine-free
alternatives to tobacco.” In other words, collateral merchandising products. The
goods in the cited registrations are “casual shoes and slippers” and “boots.”
In her February 16, 2012 and September 7, 2012 Office actions, the
Trademark Examining Attorney submitted excerpts from three websites advertising
services to make custom order promotional footwear and one website advertising
the sale of promotional footwear.
1. BAGUS Custom Flip Flops (baguscustome.com) advertises “sandals
and footwear emblazoned with your logo, graphics, school, team or mascot. Our
custom imprinted or emblazoned flip flops increase your visibility, generate school
spirit, or build your brand and enhance your image.”
2. NEET FEET Premium Footwear (neetfeet.com) advertises that its
“custom sandals and logo flip flops make the perfect promotional product to promote
your business.”
3. ePromos (epromos.com) advertises the sale of promotional, “fully-
customizable, sandals, flip-flops, socks, and shoelaces … to increase brand
awareness, gain new clients, and increase customer loyalty.”
4. Football Fanatics (footballfanatics.com) advertises the sale of various
footwear and clothing items emblazoned with team logos.
Also, in her February 6, 2012 and September 7, 2012 Office actions, the
Trademark Examining Attorney submitted excerpts from the Ann Taylor, L.L.
Bean, Nike, Guess, J. Crew, and totes websites all advertising the sale of some
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combination of shoes, hats, and shirts. These retailers advertised the sale of their
branded products, not the sale of their products marketed as promotional clothing.
In the September 7, 2012 Office action, the Trademark Examining Attorney
submitted numerous use-based, third-party registrations for shoes, hats, and shirts.
Third-party registrations which individually cover a number of different goods that
are based on use in commerce have some probative value to the extent that they
serve to suggest that the listed goods are of a type which may emanate from a single
source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786; In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). However, not one
of the third-party registrations was for shoes, hats, or shirts marketed as
promotional items. The probative value of third-party registrations for an analysis
of likelihood of confusion, is based on the presumption that the registrations may
serve to suggest that the identified products typically emanate from a single source.
Because the Trademark Examining Attorney did not submit any third-party
registrations that include clothing sold or distributed as promotional items, the
third-party registrations submitted by the Trademark Examining Attorney do not
serve to suggest that applicant’s clothing items distributed as promotional items
and registrant’s “casual shoes and slippers” and “boots” emanate from a single
source.
As indicated above, applicant is seeking to register its marks for “T-shirts,
shirts and hats marketed exclusively as promotional clothing items of restaurants
and food products.” (Emphasis added). Registrant’s descriptions of goods are
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“casual shoes and slippers” and “boots.” Because there are no restrictions or
limitations in registrant’s descriptions of goods, we generally assume that
registrant’s “casual shoes and slippers” and “boots” encompass all ordinary channels
of trade for such products. The ordinary channel of trade for “casual shoes and
slippers” and “boots” on the retail level would be department stores, shoe stores,
retail clothing and sporting goods stores, etc. Because the registration is not limited
in any manner, we also must consider the wholesale level which could include
selling “casual shoes and slippers” and “boots” to others for use as collateral
products to promote the customer’s goods and services, including those marketed
exclusively as promotional clothing items of restaurants and food products. See
Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76,
77 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139
(CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). However,
promotional “T-shirts, shirts, and hats” are not the same as commercial “casual
shoes, and slippers” and “boots” because they move in different channels of trade
and are distributed to different classes of consumers. The Board, in another case,
stated the following, which is equally appropriate in this case:
The licensing of commercial trademarks for use on
“collateral” products (such as clothing, glassware, linens,
etc.), which are unrelated in nature to those goods or
services on which the marks are normally used, has
become a common practice in recent years. See: General
Mills Fun Group, Inc. v. Tuxedo Monopoly, Inc., 204
USPQ 396, 400 [where we stated that such use is a
matter of common knowledge and “has become a part of
everyday life which we cannot ignore”], affirmed 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981) [where the Court
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of Customs and Patent Appeals noted that “‘collateral
product’ use is a matter of textbook discussion (see J.
Gilson, Trademark Protection and Practice §5.05[10]
(1980) and frequent commentary (see Grimes and
Battersby, The Protection of Merchandising Properties, 69
T.M. Rep. 431 (1979) and references cited therein)”].
In re Phillips-Van Heusen Corporation, 228 USPQ 949, 951 (TTAB 1986). See also
L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1889 (TTAB 2008) (“It is common
knowledge, and a fact of which we can take judicial notice, that the licensing of
commercial trademarks on ‘collateral products’ has become a part of everyday life.”);
Turner Entertainment Co. v. Nelson, 38 USPQ2d 1942, 1945 (TTAB 1996) (“It is
common knowledge, and in the present case, undisputed that video games, t-shirts,
beach towels, caps and other logo-imprinted products are used as promotional items
for a diverse range of goods and services.”).
The issue before us is whether registrant’s “casual shoes and slippers” and
“boots” and applicant’s “T-shirts, shirts and hats” distributed in connection with the
marketing of restaurant services and food products, are sold or distributed under
circumstances likely to give rise to the mistaken belief that the products emanate
from the same source. See Berghoff Restaurant Co. v. Washington Forge, Inc., 225
USPQ 603, 608 (TTAB 1985) (“The crux of the issue before us is whether the
respective goods sold and services rendered under the marks are sufficiently related
in the minds of the common purchasers to result in a likelihood of confusion.”).
We are not persuaded that the channels of trade or classes of consumers for
applicant’s distribution of promotional “T-shirts, shirts, and hats” in connection
with the marketing of restaurant services and food products are similar to the
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channels of trade or classes of consumers for registrant’s “casual shoes and slippers”
and “boots.” On the one hand, purchasers encountering applicant’s promotional
SMOKY MOUNTAIN “T-shirts, shirts, and hats” are interacting with applicant in
connection with applicant’s restaurant services or food products. In this regard,
applicant has also registered SMOKY MOUNTAIN, in standard character form, for
“delivery of food, namely, grilled food, pizza, pasta and sandwiches,” in Class 39,8
and SMOKY MOUNTAIN PIZZA & PASTA, in typed drawing form, for
“preparation of good, namely, pizza, pasta and sandwiches,” in Class 42.9 On the
other hand, registrant’s SMOKY MOUNTAIN “casual shoes and slippers” and
“boots” will be sold or distributed to consumers in the market for those footwear
products in department stores, shoe stores, retail clothing stores, etc. and other
associated online retailers. Registrant’s customers are not looking for promotional
footwear.
If registrant sells or distributes its footwear to others for promotional
purposes, the purchaser is going to place its mark on the footwear (e.g., a restaurant
mark, automobile model, etc.) to draw attention to the customer’s core product or
service. For example, if registrant sells its footwear to a restaurant for promotional
purposes, the purchaser will place its mark on the footwear (e.g., McDonald’s,
Burger King, etc.). If registrant sells its footwear to another company using the

8 Registration No. 3504730, issued September 23, 2008; Sections 8 and 15 affidavits
accepted and acknowledged.
9 Registration No. 2879075, issued August 31, 2004; Sections 8 and 15 affidavits accepted
and acknowledged.
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SMOKY MOUNTAIN name or mark for promotional purposes, then registrant will
have made a business decision that the promotional use of SMOKY MOUNTAIN on
footwear is not likely to cause confusion with registrant’s products.
There is no evidence in the record that promotional footwear distributed in
connection with the restaurant services and food products are sold in retail stores,
catalogs, online or otherwise alongside other commercial footwear. Thus, there is
nothing in the record to support finding that consumers for footwear and restaurant
patrons who receive promotional shirts and hats will encounter both marks under
circumstances likely to give rise to the mistaken belief that “casual shoes and
slippers” and “boots” emanate from the same source as “T-shirts, shirts and hats
marketed exclusively as promotional clothing items of restaurants and food
products.” Applicant’s customers are not buying “casual shoes and slippers” and
“boots”; they are buying or being given a promotional hat or shirt from a restaurant.
The distribution of shirts and hats in connection with the marketing of restaurant
services and food products is limited to souvenir purposes and collateral source
identification for a restaurant rather than for establishing a reputation for the
mark among purchasers of “casual shoes and slippers” and “boots.” In other words,
the marks are used in different marketing milieus and will not be encountered by
the same consumers.10

10 Applicant’s use of the term “marketed exclusively as promotional clothing items of
restaurants and food products” is an appropriate way to restrict its clothing to “collateral”
products.
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We find that the likelihood of confusion claim posited by the Trademark
Examining Attorney is a speculative, theoretical possibility, notwithstanding
identical marks are involved. Language by our primary reviewing court is helpful
in analyzing the likelihood of confusion issue in this case:
We are not concerned with mere theoretical possibilities
of confusion, deception, or mistake or with de minimis
situations but with the practicalities of the commercial
world, with which the trademark laws deal.
Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21
USPQ2d 1388, 1391 (Fed. Cir. 1992), citing Witco Chemical Co. v. Whitfield
Chemical Co., Inc., 418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g
153 USPQ 412 (TTAB 1967). To hold otherwise, one would have to put form over
substance and ignore the realities of the commercial impact as the marks would be
used.
In view of the foregoing, we find that the nature of registrant’s goods and
applicant’s goods are different, the goods move in different channels of trade and
are sold or distributed to different classes of consumers.11
C. “Any other established fact probative of the effect of use.”

11 The addition of some variation of the restriction or limitation “marketed exclusively as
promotional clothing items of restaurants and food products” to a description of goods does
not mean that the use of a similar restriction in all cases will lead to a finding that the
goods move in different channels of trade and are sold to different classes of consumers in
all cases, no matter what the circumstances of that particular case (e.g., where it may be
shown that shirts featuring pop bands are sold in retail stores and online). As has been
frequently stated, each trademark case must be decided on its own merits. While we may
look to other cases for guidance, these cases do not present hard and fast rules as to when
confusion is likely and when it is not. It is the Trademark Examining Attorney’s burden to
show that the goods in the cited registration are related to the applicant's goods and that
there will be a likelihood of confusion.
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This du Pont factor relates to “any other established fact probative of the
effect of use.” Indeed, each case must be decided on its own specific and, sometimes,
unique facts. This final factor accommodates the need for flexibility in assessing
each unique set of facts, such as is the case in the present appeal. This factor is
applicable here because applicant is the owner of the following registrations listed
below:
1. Registration No. 2841465 for SMOKY MOUNTAIN PIZZA & PASTA
marks, in typed drawing form, for “clothing, namely, t-shirts and hats”; and
2. Registration No. 3319675 for the mark SMOKY MOUNTAIN
PIZZERIA GRILL and design, shown below, for “clothing, namely, t-shirts and
hats,” in Class 25.

Applicant’s registered marks are very similar to the marks at issue in these
appeals; are registered for shirts and hats; and have coexisted with the cited mark
for over five years. Applicant’s previously registered marks include the descriptive
terms “Pizza & Pasta” and “Pizzeria Grill.” This means that the applicant’s
previously registered marks and its marks at issue in these appeals are not
substantially identical such that we can consider them to be legal equivalents.
However, consumers are unlikely to attribute any significant difference between
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SMOKY MOUNTAIN, in standard character form, and SMOKY MOUNTAIN
PIZZA & PASTA, in typed drawing form, or to attribute any significant difference
between SMOKY MOUNTAIN and SMOKY MOUNTAIN PIZZERIA GRILL both
with the same mountain design when the marks are used in connection with
substantially identical products.
We find that this du Pont factor favors applicant.
D. Balancing the factors.
Although applicant’s mark SMOKY MOUNTAIN in standard character form
is identical to the mark in the cited registration and applicant’s composite mark is
very similar to the mark in the cited registration, because the goods are not related,
move in different channels of trade and are sold or distributed to different classes of
consumers, we find that applicant’s marks SMOKY MOUNTAIN and SMOKY
MOUNTAIN and design for “clothing, namely T-shirts, shirts and hats marketed
exclusively as promotional clothing items of restaurants and food products and
specifically excluding causal shoes, slippers and boots as well as promotional
clothing related to smokeless, tobacco-free and nicotine-free alternatives to tobacco”
are not likely to cause confusion with the mark SMOKY MOUNTAIN for “casual
shoes and slippers” and “boots.”
Decision: The refusal to register is reversed.