Burke

Trademark Trial and Appeal Board

Mar 4, 2008

No. 76485112 (T.T.A.B. Mar. 4, 2008)

Mailed: March 4, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Burke
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Serial No. 76485112
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Charles W. Grimes of Grimes & Battersby, LLP for Kevin J.
Burke.

Allison Holtz, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Hairston, Grendel and Drost, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Kevin J. Burke has filed an application to register
the mark HARD HATS for:
entertainment services, namely, production and
exhibition of theatrical and television movies,
television series, programs for a global computer
network in the nature of reality and dramatic
program[s], Broadway shows, wrestling performances,
musical performances, dance performances and
entertainment in the nature of conducting
competitions in the field of construction industry
activities; production of video cassettes,
entertainment services, namely providing on-line
video games, publication of printed matter, namely,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76485112
2
publication of articles, books, magazines, fanzines
and reports in International Class 41.1

Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used in connection with
applicant’s services, so resembles the mark HARD HAT GAMES
(GAMES disclaimed) which is registered for “entertainment
services in the nature of a construction skills
competition,”2 as to be likely to cause confusion, mistake
or deception.
Applicant and the trademark examining attorney have
filed briefs. We affirm the refusal to register.
As a preliminary matter, we note that for the first
time with its reply brief, applicant submitted a printout
from an Internet website (jerseyhardhatgames.com) which
shows use of “Hard Hat Games” (presumably registrant’s
mark) in association with “WDHA 105.5 JERSEY.” Applicant
submitted this printout in support of its contention that
registrant’s services are marketed and sponsored by a radio
station, and therefore, are different from applicant’s

1 Serial No. 76485112, filed on January 24, 2003. The
application is based on a bona fide intention to use the mark in
commerce.
2 Registration No. 3038717 issued January 10, 2006. The
examining attorney initially cited five additional registrations
as bars to registration of applicant’s mark. These registrations
were subsequently withdrawn as bars to registration of
applicant’s mark.
Ser No. 76485112
3
services. Trademark Rule 2.142(d) provides that the record
in an application should be complete prior to the filing of
an appeal. Additional evidence filed after appeal normally
will be given no consideration. TBMP §1207.01 (2d ed. rev.
2004). In view thereof, we have not considered this
printout in reaching our decision herein. Even if we had
considered this evidence, for the reasons discussed infra,
it would not compel a different result in this case.
Turning then to the refusal to register, our
determination of the issue of likelihood of confusion is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
In any likelihood of confusion analysis, two key
considerations are the similarities/dissimilarities between
the marks and the similarities/dissimilarities between the
goods and/or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We will first consider the relationship between
applicant’s and registrant’s respective services. It is
Ser No. 76485112
4
well settled that the question of likelihood of confusion
must be determined based on an analysis of the services
recited in applicant’s application vis-à-vis the services
recited in the registration, rather than on the basis of
what such services are shown or asserted to actually be.
See, e.g., Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp.
v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB
1991). Further, where the services in an application or
cited registration are broadly described, such that there
are no restrictions as to trade channels and purchasers, it
is presumed that the identification of services encompasses
not only all services of the nature and type described
therein, but that the identified services are provided in
all channels of trade which would be normal therefor, and
that they would be purchased by all potential customers
thereof. See, e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB
1981).
In comparing the services, we focus on applicant’s
specific services of “entertainment in the nature of
conducting competitions in the field of construction
industry activities” and registrant’s “entertainment
Ser No. 76485112
5
services in the nature of a construction skills
competition.” Applicant has attempted to distinguish the
respective services by arguing that registrant’s services
are marketed and sponsored by a radio station whereas
applicant’s services are not marketed and sponsored in this
manner. Here, not only is there no evidence properly of
record to substantiate applicant’s assertion that
registrant’s services are marketed and sponsored by a radio
station, but such evidence would, in any event, be
irrelevant to determination of the issue of likelihood of
confusion herein. Rather, applicant’s identified services
of “entertainment in the nature of conducting competitions
in the field of construction industry activities” and
registrant’s “entertainment services in the nature of a
construction skills competition” are closely related, if
not overlapping, services. Moreover, the identification of
services in registrant’s registration does not contain the
limitation that such services are marketed and sponsored by
a radio station. Thus, for purposes of our likelihood of
confusion determination, we must presume that applicant’s
and registrant’s respective services would be offered
through identical or substantially similar channels of
trade to the same classes of consumers. Clearly, if
applicant’s and registrant’s services were to be marketed
Ser No. 76485112
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under the same or similar marks, confusion or mistake as to
source or sponsorship thereof would be likely to occur.3
Considering next the marks, we must determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and commercial impression. Although the marks 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). For example, “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 of a
mark . . .” Id. at 751. Further, 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 commercial
impression that confusion as to the source of the goods

3 Likelihood of confusion must be found if there is likelihood of
confusion involving any item that comes within the identification
of services in the involved application. Tuxedo Monopoly, Inc.
v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981). It is therefore unnecessary to rule as to whether
each of the other items set forth in the application is so
related to registrant’s services that confusion would be likely.
Ser No. 76485112
7
and/or services 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).
When considering the registrant’s mark, the
descriptive/generic word GAMES has been disclaimed.
Although we have not ignored GAMES, this word is clearly
subordinate to the remainder of the registrant’s mark,
namely the term HARD HAT. This dominant portion of the
registrant’s mark is nearly identical to the entirety of
applicant’s mark HARD HATS. Applicant has merely
appropriated the dominant portion of registrant’s mark and
deleted the descriptive and obviously subordinate portion.
See In re Chatham International Inc., 380 F.3d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004); In re Torito Restaurants
Inc., 9 USPQ2d 2002 (TTAB 1988); and In re Computer Systems
Center Inc., 5 USPQ2d 1378 (TTAB 1987). Also, we note that
HARD HAT in registrant’s mark, as the first words, would be
the portion most likely to be remembered by prospective
purchasers. Presto Products Inc. v. Nice-Pak Products
Inc., 9 USPQ2d 1895 (TTAB 1988).
In terms of sound and appearance, the marks look
similar due to the shared term HARD HAT(S). The marks also
Ser No. 76485112
8
convey similar meanings, both suggesting construction
worker competitions.4 In view of the similarities between
the marks, we find that they create similar overall
commercial impressions.
We are not persuaded by applicant’s argument that the
respective marks are distinguishable because registrant’s
mark appears in association with radio station call letters
and name. No such call letters or name appears in the
registered mark and they therefore are immaterial to our
analysis. See, e.g., Vornado, Inc. v. Breuer Elec. Mfg.
Co., 390 F.2d 724, 156 USPQ 340 (CCPA 1959); and ITT
Canteen Corp. v. Haven Homes Inc., 174 USPQ 539 (TTAB
1972).
Further, applicant contends that marks consisting of
or containing the term HARD HAT are weak marks which are
therefore entitled to only a limited scope of protection.
Specifically, applicant maintains that the term HARD HAT is
frequently used in marks for goods and services related to
the construction industry and that no one party may claim
exclusive rights to this term for such goods and services.
In support of its position, applicant points to the five

4 We take judicial notice that “hard hat” is defined as “1a. A
lightweight protective helmet usually of metal or reinforced
plastic, worn by workers in industrial settings. b. Informal. A
construction worker.” The American Heritage Dictionary of the
English Language (Fourth Edition 2000).
Ser No. 76485112
9
third-party registrations initially cited by the examining
attorney, but subsequently withdrawn, as bars to
registration of applicant’s mark. We note that each of
these registrations is for a mark which includes the term
HARD HAT and covers goods (e.g., publications, video
cassettes) which deal with the construction industry. The
fact that the term HARD HAT appears in a number of
registrations for goods which deal with the construction
industry indicates that the term has a particular
significance in the field, and is not an arbitrary term.
See Mead Johnson & Company v. Peter Eckes, 195 USPQ 187
(TTAB 1997) [Third-party registrations are probative to the
extent that they may show the meaning of mark or a portion
of a mark in the same way that dictionaries are employed].
Third-party registrations do not, however, show that the
public is familiar with the marks shown in the
registrations, nor can they justify the registration of
what could be another confusingly similar mark. Id.
In this case, the various third-party registrations of
marks containing the term HARD HAT indicate that this term
was chosen by the trademark owners to suggest that their
goods deal with the construction industry. However, this
fact does not help to distinguish HARD HAT GAMES and HARD
HATS. The term, as used in both marks, conveys the same
Ser No. 76485112
10
suggestive significance, and the additional word GAMES in
the registrant’s mark does change the meaning or the
commercial impression of the marks when used in connection
with these virtually identical services.
In sum, viewing the marks in their entireties, we find
that applicant’s mark HARD HATS is substantially similar to
the registrant’s mark HARD HAT GAMES in sound, appearance,
connotation and commercial impression.
Accordingly, on the basis of the similarities in the
marks and the close, if not overlapping, relationship
between the respective services, we find that purchasers
are likely to be confused as to the source or sponsorship
of such services.
Decision: The refusal to register under Section 2(d)
is affirmed.