Bijoux 5Int’l., Inc.

Trademark Trial and Appeal Board

May 22, 2001

EX (T.T.A.B. May. 22, 2001)

5/22/01
Paper No. 8
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re Bijoux International, Inc.
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Serial No. 75/542,447
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Myron Amer, P.C. for Bijoux International, Inc.
Angela M. Micheli, Trademark Examining Attorney, Law Office
108 (David E. Shallant, Managing Attorney).
_______
Before Cissel, Hairston and Holtzman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Bijoux International,
Inc. to register the mark EXTREME SPORT for “all purpose
sport bags and fanny packs, backpacks, duffel bags, travel
bags, tote bags, handbags, and luggage.”1
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act on the
1 Serial No. 75/542,447 filed August 25, 1998, based on
applicant’s assertion of a bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/542,447
2
ground that applicant’s mark, if used in connection with
the identified goods, would so resemble the previously
registered mark EXTREME for “backpacks,”2 as to be likely to
cause confusion. In addition, the Examining Attorney has
made final a requirement that applicant disclaim the word
SPORT apart from the mark as shown.
Applicant has appealed. Briefs have been filed, but
no oral hearing was requested.
We turn first to the disclaimer requirement. It is
the Examining Attorney’s position that the word SPORT, as
used in connection with all purpose sport bags, fanny packs
and the like describes a feature or use of the goods and
thus, it must be disclaimed. In support of her position,
she has submitted several registrations for marks which
include the word SPORT, wherein SPORT is disclaimed, for
goods of the type involved in this appeal. Applicant, on
the other hand, maintains that its mark EXTREME SPORT is a
unitary term and thus, a disclaimer is unnecessary.
TMEP Section 1213.06(a) states, in pertinent part,
that:
A mark or portion of a mark is considered “unitary”
when it creates a commercial impression separate
and apart from any unregistrable component. That
is, the elements are so merged together that they
2 Registration No. 1,292,277 issued August 28, 1984; Section 8 &
15 affidavit filed.
Ser No. 75/542,447
3
cannot be divided to be regarded as separable
elements. If the matter comprising the mark or
relevant portion of the mark is unitary, no
disclaimer of an element, whether descriptive,
generic, or otherwise is required.
In this case, we agree with applicant that its mark
EXTREME SPORT is a unitary mark and thus, a disclaimer of
SPORT is unnecessary. The term “extreme sport” refers to a
non-traditional type sport, such as mountain climbing, hang
gliding, or motor cross.3 Applicant’s mark EXTREME SPORT is
very different from the marks in the third-party
registrations relied on by the Examining Attorney wherein
the word SPORT is combined with a trade name, e.g., SIERRA
SPORT and REGATTA SPORT. In those situations, the trade
name and the word SPORT are regarded as separable elements.
However, because applicant’s mark EXTREME SPORT creates a
commercial impression which is separate from that created
by the word SPORT alone, a disclaimer is not required in
this case.
We turn next to the refusal to register under Section
2(d) of the Trademark Act.
3 We take judicial notice of The American Heritage Dictionary of
the English Language (4th ed. 2000) wherein “extreme” is defined
at no. 5 as:
Sports a. Very dangerous or difficult: “extreme
skiing.” b. Participating or tending to participate
in a very dangerous or difficult sport: “an extreme
skier.”
Ser No. 75/542,447
4
At the outset, we note that the goods of applicant and
registrant are identical in part (backpacks). The rest of
applicant’s goods are closely related to registrant’s
backpacks in that they are all items for carrying one’s
belongings. Applicant does not take issue with the fact
that the respective goods are in part identical and are
otherwise closely related in that they would be sold in the
same channels of trade to the same classes of purchasers.
We will focus, therefore, as have applicant and the
Examining Attorney, on the involved marks.
As our principal reviewing court, the Court of Appeals
for the Federal Circuit, has stated, “When marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). In this case, applicant seeks to
register the mark EXTREME SPORT, while the cited mark is
EXTREME. We find that, when considered in their
entireties, there are obvious similarities in sound and
appearance between the marks. The EXTREME portion of
applicant’s mark is identical to the entirety of
registrant’s mark, and the addition of SPORT in applicant’s
mark as insufficient to avoid a likelihood of
Ser No. 75/542,447
5
confusion when the marks are applied to identical and
closely related goods. The word SPORT is descriptive of
applicant’s goods in that, as even applicant acknowledges,
it indicates that such goods are of a “sport” type or for
sport use. If applicant were to use its EXTREME SPORT mark
in connection with goods which are identical and closely
related to registrant’s, purchasers are likely to believe
that EXTREME SPORT is a new line of sport backpacks and
other products from the makers of EXTREME backpacks.
In finding that applicant’s mark is similar to
registrant’s mark, we have kept in mind the normal
fallibility of human memory over time and the fact that
purchasers retain a general, rather than a specific,
recollection of trademarks encountered in the marketplace.
Another factor we have considered is that the record is
devoid of any evidence of third-party uses and/or
registrations of EXTREME marks for goods similar to the
types of goods involved in this appeal.
We conclude that consumers familiar with registrant’s
backpacks sold under its mark EXTREME would be likely to
believe, upon encountering applicant’s mark EXTREME SPORT
for identical and closely related goods, that the goods
originated with or were somehow associated with the same
entity.
Ser No. 75/542,447
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Decision: The requirement for a disclaimer of SPORT
is reversed. The refusal to register under Section 2(d) of
the Trademark Act is affirmed.