AIT, Inc.

Trademark Trial and Appeal Board

Dec 13, 2000

No. 75323787re (T.T.A.B. Dec. 13, 2000)

12/13/00
UNITED S
Tra
Serial Nos.
R
Ira S. Dorman, Es
Shanna Blaustein,
108 (David Shalla
Before Simms, Qui
Judges.
Opinion by Rogers
The Board, i
affirmed the Exam
applications no.
75/323,786, and 7
of the marks KEY
MANATEES, SANIBEL
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.
Paper No. 14
GFR
TATES PATENT AND TRADEMARK OFFICE
________
demark Trial and Appeal Board
________
In re AIT, Inc.
________
75/323,782; 75/323,783; 75/323,785;
75/323,786; and 75/323,787
_______
equest for Reconsideration
_______
q. for AIT, Inc.
Trademark Examining Attorney, Law Office
nt, Managing Attorney).
_______
nn and Rogers, Administrative Trademark
, Administrative Trademark Judge:
n a decision dated October 4, 2000,
ining Attorney's refusal of applicant's
75/323,782, 75/323,783, 75/323,785,
5/323,787, for registration, respectively,
LARGO LIMES, KEY WEST WAHOOS, MARCO ISLAND
STINGRAYS, and SIESTA KEY SNOOKS. Each
Ser No. 75/323,782; 75/323,783; 75/323,785; 75/323,786; and
75/323,787
2
application is based on applicant's allegation of a bona
fide intention to use the mark for goods identified as
"men's, women's and children's clothing, namely, shirts,
sweatshirts, T-shirts, jackets, coats, robes, sweaters,
hats, caps, skirts, dresses, sweatpants, trousers, slacks,
shorts, sleepwear and neckwear."
The marks were refused registration under Section
2(e)(3) of the Trademark act on the ground that they are
primarily geographically deceptively misdescriptive of the
goods on or in connection with which applicant claims to
have an intent to use its marks. In addition, two of the
marks were refused registration on the additional ground
that, under Section 2(d) of the Trademark Act, they are
unregistrable because of a likelihood of confusion with
previously registered marks.
Applicant has filed a request for reconsideration.
Applicant does not dispute the Board's finding that each of
its marks have a primarily geographic connotation. Nor
does applicant retreat from its prior admission that its
goods will not come from the places named in its marks.
Applicant's only complaint is with that portion of the
Board's decision which found a goods/place association,
i.e., that members of the public would believe the origins
of the goods are the places named in the marks.
Ser No. 75/323,782; 75/323,783; 75/323,785; 75/323,786; and
75/323,787
3
First, applicant argues that its goods include more
than just t-shirts and that there is no evidence that its
marks will be "emblazoned" on its goods in a manner that
would prominently display the marks. This point is
mystifying, as applicant analogized the nature of its goods
to "T-shirts, sweatshirts, and other articles of clothing
bearing the names of sports teams," stated that its t-
shirts are "representative of the entire line of goods" and
asserted (as the Board acknowledged in its order) that each
of its marks "is or will be" applied to the goods "by
printing it prominently thereon."
Applicant's second complaint is that the Board did not
define the term "tourist destination" when it held that the
evidence established that the places named in applicant's
marks are aptly characterized as such, and that the
Examining Attorney had not so characterized the involved
places. The term "tourist destination" hardly seems in
need of definition. Applicant cites no authority for its
apparent proposition that the Board cannot employ common
lexicon in its evaluation of evidence without citation to
dictionaries. Likewise, applicant cites no authority for
the proposition that the Board cannot consider evidence for
what it shows on its face. Moreover, applicant appears to
have similarly assessed some of the evidence, for it stated
Ser No. 75/323,782; 75/323,783; 75/323,785; 75/323,786; and
75/323,787
4
"the evidence presented by the Trademark Attorney
establishes that, if Key Largo is famous for anything, it
is as 'The dive capital of the world.'" It requires no
leap of faith to conclude that a place acknowledged as the
"dive capital of the world" would be a "tourist
destination."
The request for reconsideration is denied in regard to
the refusals of registration under Section 2(e)(3) of the
Act.
Turning to the Section 2(d) refusals, applicant
essentially argues that the Board found the connotations of
applicant's marks to be primarily geographic; that the
Board found applicant's marks and the marks in the two
cited registrations to be "indistinguishable" as
designations of source; and that these findings are
irreconcilable insofar as the cited registrations contain
no geographic terms.
The Board did not find applicant's marks and the cited
marks "indistinguishable." Such a characterization of the
marks would be equivalent to finding the marks virtually
identical. The Board only found that there exists a
likelihood of confusion. Similarity of marks, including
their connotations, is only one duPont factor. A
likelihood of confusion can be found even where, as in
Ser No. 75/323,782; 75/323,783; 75/323,785; 75/323,786; and
75/323,787
5
these cases, the marks are not virtually identical. They
need only be similar enough that, when other duPont factors
are considered, e.g., the legally identical nature of at
least some of the goods, channels of trade and classes of
consumers, a finding of likelihood of confusion is
warranted.
Equally infirm is applicant's argument that it is
irreconcilable for the Board to find the connotations of
applicant's marks primarily geographic, in the context of
assessing the Section 2(e)(3) refusal, yet to also find
that they are similar enough to marks with no geographic
connotations that a likelihood of confusion exists. The
assessment of applicant's marks under Section 2(e)(3) is
done from the perspective of the average consumer and
required consideration of the marks, the goods, and the
proposed nature of display of the marks on the goods. The
assessment of whether confusion might result from
contemporaneous use of applicant's marks and the cited
marks, for legally identical goods marketed in the same
channels of trade to the same classes of consumers,
required consideration of, inter alia, whether those
familiar with the cited marks would, when confronted with
applicant's marks, assume some relation. Consumers could
reach such a conclusion, and thereby be confused, mistaken
Ser No. 75/323,782; 75/323,783; 75/323,785; 75/323,786; and
75/323,787
6
or deceived, even if they attributed somewhat different
connotations to the marks. For example, consumers could
assume the different marks are variations reflecting
different product lines from the same producer, or that
applicant's marks are updated or modified versions of the
cited marks.
The request for reconsideration is denied in regard to
the refusals of registration under Section 2(d) of the Act.