Anthony Joseph Perry

Trademark Trial and Appeal Board

Dec 3, 2014

No. 85561003 (T.T.A.B. Dec. 3, 2014)

Mailed: December 3, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Perry
________

Serial No. 85561003
_______

Anthony M. Keats of Stubbs Alderton & Markiles, LLP
for Anthony Joseph Perry.

Marc J. Leipzig, Trademark Examining Attorney, Law Office 115
John Lincoski, Managing Attorney.
_______

Before Quinn, Ritchie, and Lykos, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Anthony Joseph Perry filed an application to register the mark THE
BONEYARD and design as shown below, for “clothing, namely, t-shirts, shirts,
dresses, jackets, skirts, pants, shorts, sweaters, sweatshirts, one piece garments for
infants and toddlers, sweatpants, robes, undergarments, scarves, gloves, socks,
hats, caps, visors, sleepwear; footwear, swimwear,” in International Class 251:

1 Application Serial No. 85561003, filed March 6, 2012, pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use in commerce. The
mark includes the following description: The mark consists of the words “THE
BONEYARD” in a stylized font, with a skull design in between the “E” and “Y” of
“BONEYARD.”
This Opinion is not a
Precedent of the TTAB
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Serial No. 85561003
3
See Federated Foods, Inc. v. Fort Howard 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”). We consider each of the factors as to which Applicant or the Examining
Attorney presented arguments or evidence.
The Goods and Channels of Trade
Both the application and the cited registration identify overlapping items of
clothing, namely, “t-shirts,” “shirts,” “pants,” “shorts,” and “footwear.” Furthermore,
the “hats, caps,” and “visors” identified in the application would be encompassed in
the “headwear” identified in the cited registration. Accordingly, the goods are
overlapping and identical-in-part.
Because the goods described in the application and the cited registration are
identical-in-part, we must presume that the channels of trade and classes of
purchasers overlap as well. See 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 offered and sold to the same
classes of purchasers through the same channels of trade.”); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally
identical, they must be presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”).
Although Applicant argues that there are different buyers for what it argues
would be different styles from itself and the Registrant, there is nothing in the
Serial No. 85561003
4
recital of goods in either the cited registration or the application that limits either
Registrant’s or Applicant’s channels of trade. See In re Linkvest S.A., 24 USPQ2d
1716, 1716 (TTAB 1992) (because there are no limitations as to channels of trade or
classes of purchasers in either the application or the cited registration, it is
presumed that the services listed in the registration and the application move in all
channels of trade normal for those services, and that the services are available to all
classes of purchasers for the listed services). As such, despite Applicant’s
arguments, neither Applicant nor Registrant is actually limited to providing its
overlapping clothing items to a particular audience or via a particular style, and
instead both or either may cater to the same whims of the consumer buying the very
same item from the very same retailer. Accordingly, we find that these du Pont
factors weigh heavily in favor of finding a likelihood of consumer confusion.
The Marks
Preliminarily, we note that when the goods at issue are identical or as here
identical-in-part, the degree of similarity between the marks which is required to
support a finding of likelihood of confusion is less than if the goods were not
identical. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012)
citing Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992). We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their entireties. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Serial No. 85561003
5
The mark in the cited registration is BONEYARDS. The differences of the literal
portions of Applicant’s mark are that it contains an article (i.e., “THE”); it shows a
singular rather than plural (i.e., it omits the “S”); and it contains a space rather
than combining in a compound word (i.e., “BONE YARD” rather than
“BONEYARDS”). None of these three minor differences are source-identifying. See
In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (“[t]he addition of the
word “The” at the beginning of the registered mark does not have any trademark
significance.”); In re Pix of Am., Inc., 225 USPQ 691, 692 (TTAB 1985) (use of the
plural form of a term “is almost totally insignificant in terms of the likelihood of
confusion of purchasers”). We further note that “[t]he proper test is not a side-by-
side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter
the marks would be likely to assume a connection between the parties.” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012) (citation omitted).
Applicant’s mark contains a design element with a skull design. However, it is
well-established that it is typically the words that consumers will use to call for or
refer to goods or services. In re Viterra Inc., 101 USPQ2d at 1911, citing CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983). Indeed in Applicant’s mark
the design merely serves to emphasize the commercial impression of the literal
element, i.e., that of a cemetery or “bone yard.” Accordingly, we find that, when
considered in their entireties, the marks have effectively the same commercial
impression. Furthermore, as the mark in the cited registration is registered in
Serial No. 85561003
6
standard character format and may be presented in any of a variety of ways,4 we
find the dominant literal portion of Applicant’s mark to be substantially identical in
sight and sound to this arbitrary mark.
Applicant argues that he uses his mark as his “primary house mark” mark,
while Registrant’s use of BONEYARDS is merely for one of various lines of
products. (Appl’s brief at 10-11). We note however that there is no indication of
Applicant’s mark as a house mark, and he may use the mark as a product mark as
well. See Section 7(b) of the Trademark Act. Furthermore, such use would not avoid
likelihood of confusion.
In view of the foregoing, the first du Pont factor also weighs in favor of finding a
likelihood of confusion.
Consumer Care/Fame
Applicant argues that his consumers are sophisticated and would recognize the
difference between THE BONEYARD and design mark as used by Applicant for his
clothing and BONEYARDS as registered by Registrant. There is no evidence that
consumers of clothing that may be priced at various levels would necessarily
exercise a heightened degree of care. Furthermore, it is well-established that even
sophisticated consumers are not immune from source confusion, especially where,
as here, the goods overlap, and the marks are quite similar. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000). To the
extent Applicant relies also on his fame as a rock and roll fixture, we note that

4 Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (“If
the registrant ... obtains a standard character mark without claim to ‘any particular font
style, size or color,’ the registrant is entitled to depictions of the standard character mark
regardless of font, style, size, or color.”).
Serial No. 85561003
7
Applicant’s fame is not at issue in this proceeding. To the extent Applicant’s mark
has acquired some degree of renown, this does not avoid likelihood of confusion, and
indeed may engender reverse confusion with the mark in the cited registration.5 See
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (“The
term ‘reverse confusion’ has been used to describe the situation where a
significantly larger or prominent newcomer ‘saturates the market’ with a
trademark that is confusingly similar to that of a smaller, senior registrant for
related goods or services.” [cites omitted]) Accordingly, these factors are neutral.
Balancing the Factors
Considering all of the evidence of record as it pertains to the du Pont factors, we
conclude that the marks are in their dominant literal portions substantially
identical in sound, appearance and meaning and, when considered in their
entireties, give the same commercial impression; they are used on overlapping and
identical-in-part goods, travelling through some of the same channels of trade to the
same classes of purchasers, who are generally unsophisticated. Accordingly, we find
a likelihood of confusion between Applicant’s mark and the mark in the cited
registration.
Decision: The Section 2(d) refusal to register is affirmed.

5 We do not opine as to Applicant’s anticipated use of his mark, but merely his right to
registration, in light of the previously existing cited registration. In this regard, he could
have sought a consent agreement, just as he may seek a license for use.