BBC IceCream, LLC

Trademark Trial and Appeal Board

May 15, 2006

No. 76557044 (T.T.A.B. May. 15, 2006)

Mailed:
May 15, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re BBC Ice Cream, LLC
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Serial No. 76557044
_______

Brad D. Rose and Teresa A. Lee of Pryor Cashman Sherman &
Flynn LLP for BBC Ice Cream, LLC.

Chrisie Brightmire King, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Seeherman, Grendel and Cataldo, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark depicted below

THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76557044
2
for goods identified in the application as

all-purpose sports and athletic bags, fanny
packs, backpacks, knapsacks, sports packs,
waist packs, gym bags, duffel bags, tote bags,
book bags, hand bags, purses, clutch purses,
change purses, shoulder bags, carry-on bags,
travel bags, garment bags for travel, leather
shopping bags, beach bags, satchels, luggage,
luggage tags, trunks, suitcases, cosmetic cases
sold empty, toiletry cases sold empty, vanity
cases sold empty, cosmetic bags sold empty,
tool bags sold empty, attache cases,
briefcases, briefcase-type portfolios, men’s
clutches, business cases, business card cases,
credit card cases, calling card cases, passport
cases, key cases, leather key chains, coin
pouches, wallets, billfolds, umbrellas and
parasols

in International Class 18.1
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that, as applied to applicant’s goods, the mark
so resembles the mark BBC, previously registered (in
standard character form) for goods identified in the
registration as “luggage, bags, namely, book bags and
duffle bags, knapsacks,”2 as to be likely to cause

1 Serial No. 76557044, filed with Certificate of Express Mail
dated September 25, 2003. The application is based on
applicant’s asserted bona fide intention to use the mark in
commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b).

2 Registration No. 2021832, issued December 10, 1996. Affidavits
under Trademark Act Sections 8 and 15 accepted and acknowledged.

Ser. No. 76557044
3
confusion, to cause mistake, or to deceive. Trademark Act
Section 2(d), 15 U.S.C. §1052(d).
Applicant and the Trademark Examining Attorney have
filed main appeal briefs, and applicant has filed a reply
brief. No oral hearing was requested. We affirm the
refusal to register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We find that certain of the goods identified in
applicant’s application, i.e., “luggage,” “book bags,”
“duffel bags” and “knapsacks,” are identical to the goods
identified in the cited registration.3 We also find that

3 We find that the “duffle bags” identified in the cited
registration are legally identical to the “duffel bags”
identified in applicant’s application. We take judicial notice
that “duffle” is a variant of “duffel.” See Webster’s II New
Riverside University Dictionary (1988) at 409. The Board may
Ser. No. 76557044
4
many if not all of the other goods identified in
applicant’s application are similar and related to the
goods identified in the cited registration. Thus, we find
that the second du Pont factor weighs in favor of a finding
of likelihood of confusion.
We find that registrant’s goods and applicant’s
identical and otherwise similar or related goods would be
marketed in the same trade channels and to the same classes
of purchasers. The third du Pont factor accordingly weighs
in favor of a finding of likelihood of confusion.
We also find that the goods involved herein are
ordinary, relatively inexpensive consumer items which would
be purchased without a great deal of care or
sophistication. The fourth du Pont factor accordingly
weighs in favor of a finding of likelihood of confusion.
We turn finally to the first du Pont factor, i.e.,
whether applicant’s mark and the cited registered mark are
similar or dissimilar when compared in their entireties in
terms of appearance, sound, connotation and commercial
impression. See Palm Bay Imports, Inc., supra. We make

take judicial notice of dictionary definitions. See University
of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ
594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).

Ser. No. 76557044
5
this determination in accordance with the following
principles.
The test, under the first 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
impression 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). Furthermore, although
the marks at issue must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Finally, in cases such as this, where the
applicant’s goods are identical (in part) to the goods
identified in the cited registration, the degree of
similarity between the marks which is required to support a
finding of likelihood of confusion is less than it would be
if the goods were not identical. Century 21 Real Estate
Ser. No. 76557044
6
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
We find, initially, that the dominant feature in the
commercial impression created by applicant’s mark is the
acronym BBC. Contrary to applicant’s contention, there is
nothing “abstract,” “conceptual,” “indefinable” or
“unpronounceable” about this acronym; the letters BBC would
be readily perceived and pronounced by purchasers viewing
and recollecting the mark. These letters appear in very
large type which physically dwarfs the other wording in the
mark, BILLIONAIRE BOYS CLUB. The visual prominence of the
acronym BBC in the mark, vis-à-vis the remaining wording,
is a tacit invitation to purchasers to use the acronym as a
shorthand way of referring to the mark. The acronym BBC
also is more dominant than the design element in the mark
because it, unlike the design element, is subject to ready
pronunciation. For these reasons, we find that it is the
letters BBC which dominate the commercial impression of
applicant’s mark. We do not ignore the other elements of
applicant’s mark, but we give more weight to the acronym
BBC in our comparison of applicant’s mark and the cited
registered mark. See In re National Data Corp., supra.
In terms of appearance, we find that applicant’s mark
is identical to the cited registered mark to the extent
Ser. No. 76557044
7
that they both include the acronym BBC, but that the marks
are dissimilar to the extent that applicant’s mark, but not
the cited registered mark, includes the design element and
the wording BILLIONAIRE BOYS CLUB. The stylization of the
lettering in applicant’s mark is not dispositive, given the
fact that the cited registered mark is registered in
standard character form and thus could be displayed in
lettering similar to applicant’s. See, e.g., In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re
Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB
1988); Sunnen Products Co. v. Sunex International Inc., 1
USPQ2d 1744, 1751 (TTAB 1987); In re Hester Industries,
Inc., 231 USPQ 881, 883, n.6 (TTAB 1986).
In terms of sound, we find that the marks are
identical to the extent that BBC would be pronounced as the
first or only element in both. The marks sound dissimilar
to the extent that applicant’s mark also includes the words
BILLIONAIRE BOYS CLUB.
In terms of connotation, we find that applicant’s mark
connotes “billionaire boys club” as per the wording in the
mark; the cited registered mark has no such definite
connotation, being merely the acronym BBC. We do not find
that the design element in applicant’s mark adds anything
specific or definite to the connotation of applicant’s
Ser. No. 76557044
8
mark, or that it aids in distinguishing the meaning of
applicant’s mark from the meaning of the cited registered
mark. Applicant’s argument to the contrary (regarding the
“exclusive” astronaut club) simply is not persuasive.
In terms of overall commercial impression, we find
that the marks are similar rather than dissimilar because
they both prominently include the acronym BBC. The wording
BILLIONAIRE BOYS CLUB in applicant’s mark would be viewed
as merely the written-out version of the acronym BBC shared
by both marks, and it therefore does not serve to
distinguish the marks as source identifiers. Purchasers
familiar with registrant’s mark BBC, upon encountering
identical or similar goods marketed under applicant’s mark,
which so prominently features the acronym BBC, are likely
to assume that there is a source or other connection
between the respective goods. The presence in applicant’s
mark of the written-out wording BILLIONAIRE BOYS CLUB and
of the design element would not relieve them of that
misconception. That is, purchasers are more likely to
assume, based on the presence in both marks of the
arbitrary designation BBC, that a source connection exists,
than they are likely to assume, based on the presence in
applicant’s mark of the additional wording and the design
element, that no such source connection exists.
Ser. No. 76557044
9
On balance, and considering the marks in their
entireties, we find them to be similar rather than
dissimilar, and that the first du Pont factor weighs in
favor of a finding of likelihood of confusion. As noted
above, where the applicant’s and registrant’s goods are
identical, the degree of similarity between the marks which
is required to support a finding of likelihood of confusion
is decreased. Century 21 Real Estate Corp. v. Century Life
of America, supra. We find in this case that applicant’s
mark is sufficiently similar to the cited registered mark
that confusion is likely to result from use of the marks on
identical goods, which are marketed in identical trade
channels to identical classes of ordinary purchasers.
Weighing all of the evidence of record as it pertains
to the relevant du Pont factors, we find that a likelihood
of confusion exists. To the extent that any doubts might
exist as to the correctness of this conclusion, we resolve
such doubts against applicant. See In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988); and In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).

Decision: The refusal to register is affirmed.