ASICS Corporation

Trademark Trial and Appeal Board

Jan 4, 2006

No. 76190823 (T.T.A.B. Jan. 4, 2006)

Mailed: January 4, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ASICS Corporation
________

Serial No. 76190823
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Adam J. Thurston of Bryan Cave LLP for ASICS Corporation.

Raul Cordova, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
_______

Before Walters, Bucher and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by ASICS Corporation to
register the mark KEEP RUNNING for goods which were amended to
read "athletic shoes" in International Class 25.1
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles

1 Application Serial No. 76190823, filed January 8, 2001, based on an
allegation of a bona fide intention to use the mark in commerce. The
examining attorney's initial requirement for a disclaimer of RUNNING
was later withdrawn.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76190823
2
the marks for the goods identified in Class 25 in the following
two registrations (both issued to Diageo Brands B.V.), as to be
likely to cause confusion.
Registration No. 2682152 of the mark KEEP WALKING (in
standard character form) for:2
clothing, namely, shirts, suits, pants, slacks, jeans,
shorts, sweaters, hosiery, socks, ties, belts, scarves,
gloves, skirts, blouses, blazers, jackets, coats, sport
coats, raincoats, overcoats, t-shirts, warm-up suits,
jogging suits, bathrobes, underwear, boxer shorts,
nightgowns, pajamas, camisoles, aprons, vests, sweatshirts,
swim suits, headbands, wrist bands, caps, hats, visors.
International Class 25.

Registration No. 2616316 of the mark shown below

for:3

2 Issued on February 4, 2003 under Section 44(e) of the Trademark Act.
The registration also includes the following goods in Classes 28 and
33: "sporting goods, namely, footballs, baseballs, flying discs, table
tennis balls and table tennis paddles, skipping ropes, miniature
trampolines, stationary exercise bicycles, golf balls, golf clubs,
fishing rods, fishing tackle and bags and boxes therefor, tennis
rackets, tennis balls, badminton rackets, skis, snowboards,
skateboards, surfboards, and windsurfing boards" in International Class
28; and "alcoholic beverages, namely, whiskey and alcoholic beverages
containing whiskey" in International Class 33.

3 Issued on December 10, 2002 under Section 44(e) of the Trademark Act.
The registration also includes the following goods in Classes 28 and
33: "sporting goods, namely, footballs, baseballs, flying discs, table
tennis balls and table tennis paddles, skipping ropes, miniature
trampolines, stationary exercise bicycles, golf balls, golf clubs,
fishing rods, fishing tackle and bags and boxes therefor, tennis
rackets, tennis balls, badminton rackets, skis, snowboards,
skateboards, surfboards, and windsurfing boards" in International Class
Serial No. 76190823
3
clothing, namely, shirts, suits, pants, slacks, jeans,
shorts, sweaters, hosiery, socks, ties, belts, shoes,
sneakers, sandals, slippers, scarves, gloves, skirts,
blouses, blazers, jackets, coats, sport coats, raincoats,
overcoats, t-shirts, warm-up suits, jogging suits,
bathrobes, underwear, boxer shorts, nightgowns, pajamas,
camisoles, aprons, vests, sweatshirts, swim suits,
headbands, wrist bands, caps, hats, visors. International
Class 25.

When the refusal was made final, applicant appealed. Briefs
have been filed. An oral hearing was not requested.
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,
including the similarities or dissimilarities between the marks
and the similarities or dissimilarities between the goods. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973).
We turn first to a consideration of the goods. The goods in
Registration No. 2682152 are, in part, legally identical to the
goods identified in the application. Applicant's athletic shoes
are fully encompassed within the broadly identified "shoes and
sneakers" in that registration. Athletic shoes are otherwise
closely related to the goods in both registrations. There is an
obvious relationship between athletic shoes and exercise wear
such as warm-up suits, jogging suits, sweatshirts, socks,

28; and "alcoholic beverages, namely, whiskey and alcoholic beverages
containing whiskey" in International Class 33.
Serial No. 76190823
4
headbands and wrist bands. In addition, the examining attorney
has submitted a number of third-party registrations showing in
each instance a mark which is registered for footwear, on the one
hand, and one or more clothing items and/or accessories
identified in the cited registrations, on the other. These
third-party registrations, while not evidence of use of the marks
therein, tend to show that purchasers would expect the types of
products offered by applicant and registrant, if sold under
similar marks, to emanate from the same source. See, e.g., In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re
Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988).
Applicant maintains that there are substantial differences
between the types of goods identified in the application and
cited registrations as well as differences in the trade channels
for the goods. In support of this position, applicant has
submitted pages from what it claims is registrant's website,
www.johnniewalker.com. While noting that it could not find use
of KEEP WALKING on the website in connection with any Class 25
goods, applicant argues that registrant is a world famous
supplier of whiskey under the brand name JOHNNIE WALKER; that
registrant has built up substantial good will in the mark KEEP
WALKING in connection with whiskey; that the identified shoes and
clothing are sold in promotion of its whiskey products; and that
relevant purchasers would recognize that the products are
Serial No. 76190823
5
collateral to registrant's primary goods. In this regard,
applicant also notes the inclusion of whiskey in both
registrations. Applicant contends that registrant's collateral
goods, unlike applicant's athletic shoes, would likely be
provided exclusively through trade channels where whiskey is sold
or promoted. Applicant argues that in contrast to registrant's
business, applicant is a world famous manufacturer of high
performance athletic shoes under the marks ASICS and KEEP
RUNNING; that applicant's goods are sold to athletes and people
interested in running or fitness; and that its goods are sold
through trade channels where athletic shoes are sold.
Applicant's presumptions about registrant's clothing and
what purchasers would know or think when confronted with the
respective marks on the goods are not relevant. The question of
likelihood of confusion is determined on the basis of the
identification of goods set forth in the application and
registrations, rather than on the basis of what the record may
reveal as to the nature of the goods, or 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).
Serial No. 76190823
6
Registrant's clothing, as identified, is not limited to a
promotional function for its alcoholic beverages. Further, we
will not infer any such restriction from the inclusion of Class
33 (alcoholic beverages) in the registrations, or speculate as to
how registrant's marks are or will be used. In the absence of
any specific restrictions to the Class 25 goods, it must be
presumed that registrant's clothing would be used for all the
usual purposes, that they would reach all classes of customers
including applicant's customers; and that they would be sold
through all normal channels of trade, including the usual retail
outlets for such goods.
Applicant's arguments regarding the cost of its athletic
shoes and the sophistication of those who purchase them are
equally unpersuasive. There is no evidence that athletic shoes
in general are necessarily expensive or that the purchasers for
such goods are sophisticated. See In re Opus One Inc., 60 USPQ2d
1812 (TTAB 2001) and In re Bercut-Vandervoort & Co., 229 USPQ2d
763 (TTAB 1986) (both cases rejecting the applicants' arguments
regarding the high cost of their wines and the sophistication of
their purchasers, where the applications identified goods merely
as "wine."). In fact, athletic shoes may be purchased not only
by "athletes," as applicant contends, but by ordinary consumers
for their everyday workout activities. We have no evidence that
Serial No. 76190823
7
ordinary purchasers of athletic shoes would exercise anything
other than ordinary care in selecting such products.
It is clear that if these legally identical and closely
related goods are offered under similar marks there would be a
likelihood of confusion.
We turn then to the marks. Applicant maintains that the
marks KEEP RUNNING and KEEP WALKING (with and without the design)
are entirely different in sound and appearance; and that they
"connote drastically different ideas" and create different
commercial impressions. Brief at 3. Applicant argues that the
term KEEP WALKING is used as a marketing theme to promote
registrant's line of whiskeys and that in contrast to the
connotation associated with the consumption of whiskey,
applicant's mark has the connotation of physical exercise.
Further, according to applicant, its mark KEEP RUNNING is always
used in connection with its "world famous line of ASICS' athletic
shoes, in particular running shoes." Brief at 4. Applicant
contends, based on registrant's website, that the design in
Registration No. 2616316, known as the "Striding Man," is a major
component of registrant's KEEP WALKING marketing theme used to
promote registrant's world famous line of whiskeys sold under the
JOHNNIE WALKER brand; that the "Striding Man" is also featured
prominently on registrant's whiskey bottles; and that consumers
Serial No. 76190823
8
who encounter the design will instantly associate the design with
registrant's brand of whiskeys.
When applicant's mark KEEP RUNNING and registrant's marks
KEEP WALKING, with or without the design, are considered in their
entireties and in relation to the shoes and clothing offered
thereunder, we find that the overall similarities in the marks
strongly outweigh their differences. The marks are similar in
sound. They are both three-syllable phrases, with identical
beginning and ending syllables, and they both have the same
cadence when spoken. Further, the marks convey substantially
similar meanings and overall commercial impressions. As the
examining attorney points out based on dictionary definitions of
the two terms, running is simply a faster version of walking.
Thus, the two slogans convey a very similar message or
instruction in relation to athletic shoes and exercise wear such
as jogging suits. In addition, the design in Registration No.
2616316, which suggests a man in walking motion, merely serves to
reinforce the meaning of the phrase KEEP WALKING. Purchasers
familiar with registrant's marks KEEP WALKING marks for exercise
clothing and shoes, which could include running and walking
shoes, may well assume that KEEP RUNNING identifies a related
line of clothing or shoes by registrant.
Applicant's contentions regarding the asserted fame or
recognition of ASICS or JOHNNIE WALKER marks are not relevant.
Serial No. 76190823
9
ASICS is not part of applicant's mark and JOHNNIE WALKER is not
part of registrant's marks. Moreover, applicant's claim that
purchasers are familiar with the design in registrant's mark or
would associate it with JOHNNIE WALKER as used in connection with
clothing is speculative. There is no evidence of any use of
JOHNNIE WALKER or the design in connection with clothing. More
important, the commercial impression of a mark is not determined
by extrinsic evidence as to its affiliation with a particular
entity. The question is whether purchasers will believe that the
goods offered under the respective marks come from the same
source, not whether purchasers can identify the source for the
goods.
Applicant argues that the existence of a number of third-
party registrations for marks that include the term KEEP, or KEEP
with additional wording followed by the suffix "ING," for goods
in Class 25, including several for footwear, show that these
terms are commonly used in connection with clothing and that the
cited marks are weak for these types of goods.4 Examples of
these third-party registrations are KEEP AUSTIN WEIRD
(Registration No. 2770544); KEEP TAHOE BLUE (Registration No.
2831888); KEEP YOUR HEAD IN THE GAME (Registration No. 2282572);
KEEP RIGHT (Registration No. 2207591); KEEP IT REAL (Registration

4 The pending applications submitted by applicant are not evidence of
anything except that the applications were filed in the Office.
Serial No. 76190823
10
No. 2491222); KEEP IT DIGITAL STUPID (Registration No. 2149634);
KEEP ON CHARGIN (Registration No. 2306677); and KEEP DIGGIN
(Registration No. 2732848).
None of the marks shown in the third-party registrations for
Class 25 goods contains the words KEEP and WALKING or anything
similar to that slogan or combination of terms. The word KEEP is
used in all of the third-party registrations as part of unitary
marks having entirely different meanings and commercial
impressions than the marks cited herein. The third-party
registrations do not show that purchasers would be able to
distinguish between applicant's and registrant's very similar
marks for identical and closely related goods.
While the mark KEEP WALKING may be suggestive of
registrant's goods, and therefore not entitled to a broad scope
of protection, the mark is at least entitled to protection from
registration of a similar mark for identical and closely related
goods. See King Candy Co. v. Eunice King's Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (likelihood of confusion
is to be avoided as much between weak marks as between strong
marks).
Finally, applicant's contention that there has been no
actual confusion is entitled to little weight. The application
is based on an intention to use the mark in commerce with no
indication that use has actually commenced. Nor is there
Serial No. 76190823
11
evidence of any use of the registered marks for clothing.
Without evidence that there has been any opportunity for
confusion to arise, the lack of actual confusion is not
meaningful.
In view of the similarity of the marks, and because the
goods are identical and otherwise very closely related, 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) is
affirmed.