Boot Royalty Co., L. P.

Trademark Trial and Appeal Board

Oct 3, 2001

No. 75938995 (T.T.A.B. Oct. 3, 2001)

10/3/01

Paper No. 9
Bottorff

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Boot Royalty Company, L.P.
________

Serial No. 75/938,995
_______

Charles s. Cotropia of Sidley & Austin for Boot Royalty
Company, L.P.

Brooke A. Beyer, Jr., Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______

Before Walters, Bucher and Bottorff, Administrative
Trademark Judges.

Opinion by Bottorff, Administrative Trademark Judge:

Applicant has filed an intent-to-use application to
register the mark PBO (in typed form) for goods identified
as “orthopedic insoles sold separately” and “orthopedic
insoles sold as an integral part of boots and shoes.”1
Registration has been refused on the ground that
applicant’s mark, as applied to applicant’s goods, so
resembles the mark depicted below,

1 Serial No. 75/938,995, filed March 8, 2000.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/938,995
2

previously registered for “orthopedic and prosthetic
appliances and parts thereof, and instruments for the
fitting and assembly of such appliances,”2 as to be likely
to cause confusion, to cause mistake, or to deceive.
Trademark Act Section 2(d), 15 U.S.C. §1052(d).
When the refusal was made final, applicant filed this
appeal. Applicant and the Trademark Examining Attorney
have filed main appeal briefs, but applicant did not file a
reply brief, and 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
probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. See
In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In considering the evidence of
record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by §2(d) goes to the
Ser. No. 75/938,995
3
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We turn first to a determination of whether
applicant’s mark and the cited registered mark, when
compared in their entireties in terms of appearance, sound
and connotation, are similar or dissimilar in their overall
commercial impressions. The test 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 an 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

2 Registration No. 932,357, issued April 11, 1972, renewed.
Ser. No. 75/938,995
4
impression created by the mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Applicant’s mark consists solely of the letters PBO.
We find that the letters PB constitute the dominant feature
of the commercial impression of the cited registered mark.
Neither the minimal manner in which those letters are
stylized nor the rectangular carrier device in which the
letters appear contributes significantly to the registered
mark’s overall commercial impression. We also find that
the marks are arbitrary, inasmuch as there is no indication
in the record that the letters “PB” or “PBO” have any
meaning or significance as applied to the goods at issue
here.
Applicant argues that its mark is distinguishable from
the cited registered mark in terms of appearance and sound,
due to applicant’s addition of the letter “O” to its mark.
We disagree. Applicant’s mark begins with the letters PB,
the same letters which comprise the dominant feature of
registrant’s mark. In our comparison of the two marks’
overall commercial impressions, we find this point of
similarity to be more significant than the differences
which result from applicant’s addition of the letter “O” to
its mark. Although the two marks are not identical, we
Ser. No. 75/938,995
5
nonetheless find that they are confusingly similar when
viewed in their entireties.
It is settled that “confusion is more likely between
arbitrarily arranged letters than between other types of
marks.” Edison Brothers Stores, Inc. v. Brutting E.B.
Sport-International GmbH, 230 USPQ 530, 533 (TTAB 1986).
“Arbitrary arrangements of letters have generally been
given a wide scope of protection, based on the premise that
it is more difficult to remember a series of arbitrarily
arranged letters than it is to remember words, figures,
phrases or syllables.” J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition §23:33 (4th Ed. 6/2000).
Thus, confusing similarity has repeatedly been found to
exist between an arbitrary letter mark consisting of two
letters, such as the cited registered mark in this case,
and another mark which consists of the same two letters
plus a third, such as applicant’s mark.3

3 See, e.g., Feed Service Corp. v. FS Services, Inc., 432 F.2d
478, 167 USPQ 407 (CCPA 1970)(FSC and FS); Helena Rubenstein,
Inc. v. Hudnut, 193 F.2d 207, 92 USPQ 147 (CCPA 1951)(RHR and
HR); Edison Brothers Stores, Inc., supra (EBS and EB); ECI
Division of E-Systems, Inc. v. Environmental Communications,
Inc., 207 USPQ 443 (TTAB 1980)(ECI and EC); American Optical
Corp. v. Southwest Petro-Chem, Inc., 175 USPQ 317 (TTAB 1972)(AOC
and AO); Scott Forsman & Co. v. Scientific Film Co., 165 USPQ 287
(TTAB 1970), aff’d, Scientific Film Co. v. Scott Forsman & Co.,
171 USPQ 525 (N.D. Ill. 1971) (SFC and SF); Cities Service Oil
Co. v. A.W. Chesterton Co., 127 USPQ 459 (TTAB 1960)(DSC and DC);
W-K-M Division of Joy Manufacturing Co. v. WK Industries, 2
USPQ2d 1967 (S.D. TX 1987)(WKM and WK).
Ser. No. 75/938,995
6
For these reasons, we find that applicant’s mark is
confusingly similar to the cited registered mark.
We turn next to the issue of the similarity between
applicant’s goods and the goods identified in the cited
registration. It is not necessary that these respective
goods be identical or even competitive in order to support
a finding of likelihood of confusion. Rather, it is
sufficient that the goods are related in some manner, or
that the circumstances surrounding their marketing are
such, that they would be likely to be encountered by the
same persons in situations that would give rise, because of
the marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
source or that there is an association or connection
between the sources of the respective goods. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ2d 910 (TTAB 1978).
We are persuaded by the Trademark Examining Attorney’s
contention that the cited registration’s broadly-identified
“orthopedic appliances” must be deemed to include
applicant’s “orthopedic insoles.” The Trademark Examining
Attorney has submitted dictionary evidence establishing
Ser. No. 75/938,995
7
that: “appliance” is defined as “a device or instrument
designed to perform a specific function…” and as “a dental
or surgical device designed to perform a therapeutic or
corrective function”; that “orthopedics” is defined as “the
branch of medicine that deals with the prevention or
correction of injuries or disorders of the skeletal system
and associated muscles, joints, and ligaments”; and that
“insole” is defined as “the inner sole of a shoe or boot”
and “an extra strip of material put inside a shoe for
comfort or protection.” Based on these definitions, we
find that an “orthopedic insole” can be considered to be an
“orthopedic appliance.”
Conversely, we are not persuaded by applicant’s
contention that “appliance” has a specialized meaning in
the relevant trade which would not encompass applicant’s
insoles. Applicant has made of record a copy of
registrant’s online catalog of orthopedic products. Based
on this evidence, and on the presence of the words “and
instruments for the fitting and assembly of such
appliances” in registrant’s identification of goods,
applicant argues that “appliances” are understood in the
relevant trade to be limited to “mechanical assemblies”
which brace, support, or restrict movement of selected
parts of the consumer’s body, and which “must be custom
Ser. No. 75/938,995
8
designed and fitted to the consumer’s unique needs.”
Applicant’s insoles, according to applicant, do not fall
within this recognized and specialized meaning of
“appliance,” inasmuch as an insole “is a foot
support/cushion which is simply placed inside a shoe to
provide orthopedic support and/or cushioning to selected
areas of the foot when a consumer is standing or walking.”
Rather than being assembled or custom-fitted, applicant
argues, “insoles are distributed in pre-determined shapes
and sizes such that a consumer can simply select a desired
shape or size.”
However, the evidence applicant relies on does not
support its contention that “appliance” has any such
special or restricted meaning in the trade. First, like
applicant’s insoles, many of the orthopedic products
displayed in registrant’s catalog are offered in pre-
determined sizes, i.e., small, medium and large. Second,
it does not logically follow from the presence of the
wording “and instruments for the fitting and assembly of
such appliances” in registrant’s identification of goods
that all “orthopedic appliances” require the use of such
instruments. Applicant has provided us with no evidence
from medical dictionaries or other reference sources which
provides any such narrow definition of “appliance,” nor has
Ser. No. 75/938,995
9
applicant presented any third-party catalog or other
evidence showing that others in the trade use the term
solely to refer to a “mechanical assembly” which must be
“custom designed and fitted.” As noted above, the only
direct evidence in the record as to the definition of
“appliance” is the definition submitted by the Trademark
Examining Attorney, which clearly would encompass
applicant’s insoles.
Moreover, even if we were to assume arguendo that
“orthopedic appliance” has the narrow meaning in the trade
that applicant ascribes to it, such that applicant’s
“orthopedic insoles” are not encompassed therein, we still
would find that applicant’s goods and registrant’s goods
are closely related for purposes of our likelihood of
confusion analysis. Registrant, for example, offers for
sale in a single catalog both “appliances” of the
“mechanical assembly” type as well as other orthopedic
products which are similar in kind, construction or use to
applicant’s orthopedic insoles. See, e.g., the knee, wrist
and elbow braces, wraps and supports on pages 161 and 169.
Even if orthopedic insoles and other such “non-mechanical”
orthopedic products are different from or not encompassed
within the meaning of “orthopedic appliances,” they
Ser. No. 75/938,995
10
nonetheless can originate from and be marketed by a single
source under a single mark.
For these reasons, we find that applicant’s goods and
registrant’s goods are similar rather than dissimilar, for
purposes of the second du Pont evidentiary factor.
We turn next to a comparison of the trade channels and
classes of purchasers for applicant’s and registrant’s
goods. We note that neither applicant’s nor registrant’s
identifications of goods are limited in any way as to trade
channels or classes of purchasers, and that the identified
goods accordingly are presumed to move in all normal trade
channels for such goods and that they are marketed to all
normal classes of purchasers for such goods. See In re
Elbaum, 211 USPQ 639 (TTAB 1981). Insofar as applicant’s
“orthopedic insoles” are deemed to be legally identical to
and encompassed within registrant’s broadly-identified
“orthopedic appliances,” we find that the respective goods
share the same trade channels and classes of purchasers.
We are not persuaded by applicant’s argument that
“orthopedic appliances,” as identified in the cited
registration, are sold only pursuant to a doctor’s
prescription, or that they are sold only to medical
professionals trained in the custom fitting and assembly of
such appliances. Although it appears from registrant’s
Ser. No. 75/938,995
11
catalog that registrant offers its particular “orthopedic
appliances” only by prescription, there is nothing in the
registrant’s identification of goods which so limits the
goods, and nothing in the record which proves that similar
products offered by others in the trade also are available
only by prescription. Likewise, the fact that registrant’s
identification of goods includes the words “and instruments
for the fitting and assembly of such appliances” does not
support applicant’s conclusion that any and all such
appliances necessarily must be “custom” fitted or assembled
by medical professionals.4
Finally, we find no evidence in the record to support
applicant’s contention that the goods involved in this case
are purchased only by knowledgeable, sophisticated
purchasers.
In summary, after careful review of the evidence of
record pertaining to the relevant du Pont evidentiary
factors, we conclude that a likelihood of confusion exists
in this case. Any doubts as to that conclusion must be

4 Applicant’s reliance on the Board’s findings with respect to
the nature of registrant’s goods in the case of U.S. Navy vs.
United States Manufacturing Company, 2 USPQ2d 1254 (TTAB 1987) is
misplaced. Whatever evidence the Board relied on in making its
findings in that inter partes case is not of record herein. More
fundamentally, the goods identified in the cited registration in
this case are not the same as the identified goods involved in
that case.

Ser. No. 75/938,995
12
resolved against applicant. See In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); 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.