Dada Corp.

Trademark Trial and Appeal Board

May 24, 2001

No. 75669947 (T.T.A.B. May. 24, 2001)

5/24/01
Paper No. 13
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Dada Corporation
________
Serial No. 75/669,947
_______
Dada Corporation, pro se.1
Tami Cohen Belouin, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney)
_______
Before Seeherman, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Dada Corporation has appealed from the final refusal
of the Trademark Examining Attorney to register SURE-FIT,
in the stylized form shown below, for “head bands,
clothing, namely, hats, caps (e.g., baseball caps) and
headwear.”2
1 Kelly Carroll has been appointed domestic representative for
applicant, a Korean corporation, but no attorney was ever
appointed.
2 Application Serial No. 75/669,947, filed March 30, 1999, and
asserting a bona fide intent to use the mark in commerce. It is
noted that certain of applicant’s papers identify applicant as
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/669,947
2
It is noted that, in the final Office action, the
Examining Attorney advised applicant that parentheses are
not allowed in identifications, but she did not
specifically make final a requirement for an acceptable
identification. Further, in her brief she has set forth
the identification as it appears in our opinion.
Accordingly, we deem her to have waived any objection that
she may have had to the identification. Thus, the only
issue on appeal is the Examining Attorney’s refusal to
register applicant’s mark, pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. 1052(d), on the ground that the
mark so resembles the mark SUREFIT, previously registered
for football helmets and bicycle helmets3 that, if used on
Boo Yi Park (e.g., the response to the first Office action) and
as Boo Yi Park, C.E.O. of Dada Corp. (e.g., the notice of
appeal). Because no assignment of the application to Boo Yi Park
has been recorded, and because the last paper filed in the
application, a change in domestic representative, identified
applicant as Dada Corp, with Boo Yi Park listed as the CEO, we
deem Dada Corporation to be the applicant.
3 Registration No. 1,913,111, issued August 22, 1995.
Ser. No. 75/669,947
3
applicant’s identified goods, it would be likely to cause
confusion or mistake or to deceive.
Applicant and the Examining Attorney have filed
briefs. An oral hearing was not requested.
We affirm the refusal of registration.
Our determination 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). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The marks at issue herein, SURE-FIT and SUREFIT, are
virtually identical. They are identical in pronunciation
and connotation, and are nearly so in appearance. The
scope of protection to be accorded the cited mark, which is
registered as a typed drawing, would extend to the minimal
stylization shown in applicant’s mark. Further, the fact
that applicant’s mark is hyphenated and the registered mark
is not does not serve to distinguish them visually; both
marks would immediately be recognized as the words SURE
FIT, whether they are telescoped as in the registered mark
or hyphenated as in applicant’s mark.
Ser. No. 75/669,947
4
Applicant does not dispute the similarity of the
marks, but argues that confusion is not likely because of
the differences in the goods, and the fact that they are
classified in different international classes.
With respect to the latter point, the Patent and
Trademark Office’s classification system follows that set
up by the Nice Convention, and is essentially an
administrative system. The mere fact that goods are
classified in different classes does not mean that
confusion is not likely to occur if the same or nearly
identical marks are used on them. See National Football
League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1216, n.5
(TTAB 1990). It is well established that the goods of the
parties need not be similar or competitive, or even that
they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient that
the respective goods of the parties are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Ser. No. 75/669,947
5
In this case, the Examining Attorney has demonstrated
the relationship between football and bicycle helmets, on
the one hand, and headbands, hats, caps and headwear on the
other, through third-party registrations and third-party
catalogs and websites. The third-party registrations show
that various entities have registered their marks both for
goods of the type recited in applicant’s application and
for goods of the type recited in the registrant’s
registration. Third-party registrations which individually
cover a number of different items and which are based on
use in commerce serve to suggest that the listed goods
and/or services are of a type which may emanate from a
single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993).
In addition, the catalog and website evidence shows
that football and/or bicycle helmets are sold through the
same channels of trade as are caps, baseball caps, and
headwear.
Moreover, applicant’s identified goods and the
registrant’s identified goods are items sold to and used by
the public at large, rather than by sophisticated
purchasers. People who engage in athletic activities, such
as football playing or bicycle riding, and who therefore
may purchase the registrant’s helmets, may also play
Ser. No. 75/669,947
6
baseball or simply wear a cap at other times. Certainly
there may be an overlap in the purchasers for the goods.
Thus, although applicant characterizes the only
similarity between its goods and the registrant’s as that
they are both headwear, the evidence shows that the
relationship between the goods is far greater.
Applicant also points to the fact that registrant’s
mark for football and bicycle helmets was registered
despite a prior registration for the same mark for
“footwear fitting inserts sold to shoe stores and shoe
repair stores, namely heel pads, insoles, taps, tongue
pads, halter and pinch pads.” The differences between
these goods appear, on their face, to be greater than the
differences between applicant’s goods and those of the
cited registrant’s. Moreover, the channels of trade for
the helmet and footwear inserts are different while, as
previously indicated, they are the same for the applicant’s
goods and those of the cited registrant.
Applicant has also pointed to the coexistence of two
registrations for SURE GRIP, one for “components for paint
applicator rollers, paint brushes, paint applicator pads,
and extension rods for paint applicators, namely, handles
sold as part of the above goods”, and the other for “pre-
inked rubber stamps.” Again, there are greater differences
Ser. No. 75/669,947
7
between these goods and the goods of the applicant and the
cited registrant. In any event, even if other marks for
different goods co-exist on the register, our decision must
rest on the evidence before us in this appeal.
Although we have no doubt that in certain cases
identical marks can coexist without any likelihood of
confusion if they are used on sufficiently different goods,
in this case the Examining Attorney has demonstrated that a
sufficient relationship between the goods exists to make
confusion likely to occur if applicant were to use the mark
SURE-FIT for the identified head bands, clothing, namely,
hats, caps (e.g. baseball caps) and headwear.
Decision: The refusal of registration is affirmed.