Arizona Lacrosse, LLC

Trademark Trial and Appeal Board

Mar 31, 2008

No. 76561842 (T.T.A.B. Mar. 31, 2008)

Oral Hearing: February 21, 2008 Mailed: March 31, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Arizona Lacrosse, LLC
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Serial No. 76561842
Serial No. 76561843
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Scot L. Claus of Mariscal, Weeks, McIntyre & Friedlander, P.A.
for Arizona Lacrosse, LLC.

Christopher L. Buongiorno, Trademark Examining Attorney, Law
Office 102 (Karen Strzyz, Managing Attorney).
_______

Before Quinn, Holtzman and Mermelstein, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Arizona Lacrosse, LLC, has filed applications to
register the marks shown below:

THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial Nos. 76561842 and 76561843
2
Application Serial No. 76561842

Application Serial No. 76561843:

The two applications are for the same goods, ultimately
identified as follows:
Clothing, namely shirts, t-shirts, shorts, lacrosse
uniforms, jerseys, sweatshirts, boxer shorts, robes,
sleepwear and socks; and autographed shirts, t-
shirts, shorts, lacrosse uniforms, jerseys,
sweatshirts, boxer shorts, robes, sleepwear and
socks, coats, jackets, pullovers, sweaters, pants,
sweat pants and tops, caps, visors, shoes, athletic
shoes, tank tops, scarves, stocking caps, gloves,
vests, pajamas, underwear, rainwear, ponchos, belts
and Halloween costumes.

The applications were filed on November 24, 2003, based on
an allegation of a bona fide intention to use the mark in
commerce. The word ARIZONA has been disclaimed in each
Serial Nos. 76561842 and 76561843
3
application. The '843 application contains the following
description of the mark: "Scorpion holding lacrosse stick with
the words Arizona Sting."
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act in each application on
the ground that applicant's marks, when applied to applicant's
goods, so resemble the mark shown below for "clothing, namely, T-
shirts, tank tops, sweat shirts, knit shirts, shorts, pants,
woven shirts, sweaters, swimwear, hats and socks," as to be
likely to cause confusion.1

When the refusal was made final, applicant appealed.2
Briefs have been filed, and an oral hearing was held.
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 likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key

1 Registration No. 2781698; issued November 11, 2003.

2 The appeals were consolidated by the Board on August 23, 2006.
Serial Nos. 76561842 and 76561843
4
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to a consideration of the goods. Registrant's
goods include t-shirts, sweat shirts, knit shirts, woven shirts,
shorts and socks. These goods are identical or legally identical
at least as to the shirts, shorts, sweatshirts, and socks
identified in the applications.
Applicant, however, characterizes its goods as "team branded
clothing," arguing that "there is absolutely no evidence in the
record supporting the conclusion that an average consumer will
encounter the marks in the same retail forum"; and that to the
contrary "the evidence in the record establishes that Applicant's
Mark is used in connection with goods sold to fans of Applicant's
professional Lacrosse team." Applicant maintains that consumers
"will undoubtedly know -- by virtue of both the design element
associated with [the] Mark -- and the fact that they are likely
to be purchasing the Mark at Applicant's team shop -- that the
source of the Mark is the professional Lacrosse team Arizona
Sting, and not the Competing Mark."
First, applicant's presumptions about what consumers would
know or think when confronted with the respective marks on these
goods are unsupported, and in any event, legally irrelevant. The
Serial Nos. 76561842 and 76561843
5
question of likelihood of confusion is determined on the basis of
the identification of goods set forth in the applications and
registration, rather than on the basis of what applicant claims,
or the record may show, as to the actual nature of the goods, or
as to the actual channels of trade or purchasers for the goods.
See J & J Snack Foods Corp. v. McDonalds Corp., 932 F.2d 1460,
1464, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991); Octocom Systems Inc.
v. Houston Computers Services Inc., 918 F.2d 937, 942, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990); and CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198 (Fed. Cir. 1983).
There are no restrictions in the applications or in the
registration as to these identical goods. It must therefore be
presumed that applicant's goods will include clothing that is not
"team branded"; that while lacrosse fans may be among the
purchasers of these goods, both applicant's and registrant's
clothing would be purchased by customers of all types, including
ordinary consumers; and that applicant's and registrant's
clothing would be sold through all normal channels of trade,
which would include all of the usual retail outlets for such
goods. In other words, we must presume the goods, as well as the
channels of trade and purchasers for both applicant's and
registrant's goods would be the same. See Interstate Brands
Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000); and In re
Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
Serial Nos. 76561842 and 76561843
6
We turn next to the similarity or dissimilarity of the marks
in their entireties in terms of sound, appearance, meaning and
commercial impression, keeping in mind that when marks would
appear on identical goods, the degree of similarity between the
marks necessary to support a finding of likelihood of confusion
declines. Century 21 Real Estate v. Century Life, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992)..
The test under this du Pont factor is not whether the marks
can be distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in terms of
their overall commercial impressions that confusion as to the
source of the goods offered under the respective marks is likely
to result. The focus is on the recollection of the average
purchaser, who normally retains a general, rather than a
specific, impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In addition, while marks must be compared in their
entireties, "there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties." In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). "Indeed, this type of analysis appears to be
unavoidable." Id.
Serial Nos. 76561842 and 76561843
7
When applicant's and registrant's marks are considered in
their entireties, giving appropriate weight to the features
thereof, and considering that the marks are used on identical
goods, we find that the overall similarities in the marks
outweigh their differences.
At the outset, we note that applicant takes issue with the
examining attorney's characterization of applicant's marks as
STING ARIZONA, insisting throughout its briefs that its marks
"[are] now--and [have] always been -- ARIZONA STING."3 Suffice
it to say that whether applicant's marks are characterized as
ARIZONA STING or STING ARIZONA, has no affect on our analysis of
the marks or on our ultimate determination of whether the marks
when used on the identical goods are likely to cause confusion.
Applicant maintains that "there are virtually no
professional sports teams whose place name comes after the team
moniker" and that "no professional lacrosse fan is going to think
that it is encountering a mark for anything other than the
'ARIZONA STING.'" However, as we said earlier, the purchasers

3 Applicant, in its brief, lists the serial numbers of eight
applications claiming that the applications are all for the mark
"Arizona Sting" and contending that these applications "are part of the
record." The examining attorney states that he does not object to this
late-filed evidence, so we have considered it as of record for whatever
probative value it may have. That said, however, this evidence is of
no probative value. We do not have the files for those applications or
any information about the goods and/or services, and even if we did,
those other applications would have no bearing on the question of
whether there is a likelihood of confusion in the cases before us which
must be decided on their own facts and record.
Serial Nos. 76561842 and 76561843
8
for applicant's goods are not limited to lacrosse fans; they
include ordinary members of the general public who may or may not
be familiar with the names of lacrosse teams, or even aware that
this mark identifies a sports team. Moreover, even those
purchasers who are familiar with the team are going to see these
marks as emphasizing the team "moniker," STING. It is common
knowledge that sports teams are also referred to by their names
or nicknames alone, that is, without an accompanying geographic
indicator.4
We turn then to a comparison of the marks as presented in
the applications and registration. We begin by noting that the
shared literal term, STING, is an essential element of both
applicant's and registrant's marks. We also point out that the
word STING is entirely arbitrary in relation to registrant's
goods.5 Furthermore, there is no evidence that the word is

4 Indeed, applicant's evidence shows that the team is promoted as
STING. Applicant submitted a printout from the website
www.arizonasting.com which according to applicant shows applicant's
"actual usage" of its mark. We find that this evidence supports our
view of the marks. The web pages contain numerous references to
"STING" alone which further undercuts applicant's claim that the mark
would necessarily be perceived as "Arizona Sting." These references
include "STING HEADLINES"; "STING ACQUIRE FIRST ROUND PICK"; "STING
FALL TO CALGARY"; and "STING TICKET INFO."

5 As requested by the examining attorney, we take judicial notice of
the definition of "sting" in Random House Compact Unabridged Dictionary
(Special Second Edition 1996) as meaning, for example, "to prick or
wound with a sharp-pointed, often venom-bearing organ." None of the
meanings has any relationship to clothing. The Board may properly take
judicial notice of dictionary definitions. See University of Notre Dame
du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial Nos. 76561842 and 76561843
9
commonly used or registered by others in the clothing field. As
a result, registrant's mark which prominently features this term
must be considered a strong mark entitled to a broad scope of
protection. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005) ("VEUVE is arbitrary term as applied to sparkling
wines, and thus is conceptually strong as trademark"); and In re
Wilson, 57 USPQ2d 1863 (TTAB 2001).
Because the arbitrary term STING is the only literal
component of registrant's mark, and it is a strong component of
applicant's marks, the respective marks when spoken are similar
in sound. The only additional word in applicant's mark is the
disclaimed term ARIZONA. This term is not, as applicant
contends, "a distinctive" addition to the mark. It is, instead,
a non-distinctive, descriptive word which simply provides
geographic information about the goods. Thus, while this term is
not ignored in the analysis, the fact remains that it is far less
important than STING in creating an impression, and it is of
little, if any, source-distinguishing effect. See In re National
Data Corp., supra ("That a particular feature is descriptive or
generic with respect to the involved goods or services is one
commonly accepted rationale for giving less weight to a portion
Serial Nos. 76561842 and 76561843
10
of a mark").6 Furthermore, the term STING, as the first word
that purchasers will hear or see is more likely to have a greater
impact on purchasers and be remembered by them when they
encounter the marks at different times on identical goods. See
Palm Bay, supra at 1692 ("The presence of this strong distinctive
term [VEUVE] as the first word in both parties' marks renders the
marks similar, especially in light of the largely laudatory (and
hence non-source identifying) significance of the word
ROYALE.")).
The arbitrary word STING also contributes substantially to
the meaning and the commercial impression of the marks. The
"scorpion" design in the '843 application merely reinforces the
word STING. Thus, the design adds to, but does not significantly
change, the meaning and commercial impression conveyed by the
word STING alone. Also, the stylized script of STING in
registrant's mark, with its sharp, pointed edges at the beginning
and end of the word, resemble stingers, perhaps scorpion
stingers, which further enhances the impact of the word STING.
There are differences between the marks in appearance, but
those differences are not sufficient to overcome the similarities
in sound, meaning and commercial impression. In the '842
application, the word STING is clearly the predominant visual

6 Contrary to applicant's contention, National Data is clearly on point
and the principle cited in that case is not limited to generic terms.
Serial Nos. 76561842 and 76561843
11
element. The word ARIZONA is so small that it may barely
register if the marks are viewed from any distance. Furthermore,
while the mark in the '843 application contains a large design
feature, it is not, as applicant claims, a "design mark." In
this regard, applicant's reliance on In re Electrolyte Labs,
Inc., 929 F.2d 645, 16 USPQ2d 1239 (Fed. Cir. 1990) and similar
cases, such as In re Burndy Corp., 300 F.2d 938, 940 133 USPQ 196
(CCPA 1962), is misplaced. Those cases involved composite
"letter" marks which, as the Court in Electrolyte noted, can be
close to design marks and therefore may or may not be vocalized.
Here, we are dealing with composite marks that feature clearly
identifiable and pronounceable words. In any event, those cases
do not compel a finding that the design, or the design features,
in the respective marks in the present case are sufficient to
distinguish the marks as a whole.
We find, instead, that the word STING, notwithstanding the
presence of the scorpion design, is still a visually significant,
if not the most significant, element of that mark. Furthermore,
the word portion of these composite marks is entitled to greater
weight because purchasers will rely on the words, rather the
designs, in calling for or referring to applicant's and
registrant's clothing. See In re Appetito Provisions Co., 3
USPQ2d 1553, 1554 (TTAB 1987).
Serial Nos. 76561842 and 76561843
12
In view of the foregoing, and because similar marks are or
will be used in connection with identical goods, we find that
confusion is likely.
To the extent that there is any doubt on the issue of
likelihood of confusion, such doubt must be resolved in favor of
the prior registrant. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687 (Fed. Cir. 1993).
Decision: The refusal to register under Section 2(d) as to
both applications is affirmed.