Design Resources, Inc.

Trademark Trial and Appeal Board

Feb 12, 2007

No. 78478872 (T.T.A.B. Feb. 12, 2007)

Mailed:
February 12, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Design Resources, Inc.
________

Serial No. 78478872
_______

Glenn K. Robbins II of Spencer Fane Britt & Browne LLP for
Design Resources, Inc.

Jacqueline A. Lavine, Trademark Examining Attorney, Law
Office 101 (Ronald R. Sussman, Managing Attorney).
_______

Before Seeherman, Cataldo and Taylor, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Design Resources, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register
DRI-DUCK and design, as shown below, for “clothing, namely,
coats, jackets, parkas, shirts, pants, overalls, vests,
sweaters, gloves, mittens, scarves, and headwear.1

1 Application Serial No. 78478872, filed September 3, 2004, and
asserting first use and first use in commerce as of October 20,
2003. We recognize that applicant uses the silhouette of a
diamond between DRI and DUCK, but because we cannot reproduce
THIS DISPOSITION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78478872
2

The color red is claimed as a feature of the mark, and
applicant has provided the following description:
The mark consists of the image of a
canvas back duck with a diamond shaped
border and the words DRI DUCK. A
diamond separates the two words. The
diamond separator and the word DUCK are
colored red.

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark so resembles the mark DRIDUX in typed
form, previously registered for “outerwear jackets,
outerwear pants, outerwear suits, hats and mitts all for

this element in our text, and because applicant and the Examining
Attorney have used a hyphen in their papers, we will do so also.
Ser No. 78478872
3
sports and/or recreation,”2 that, as used on applicant’s
identified goods, it is likely to cause confusion or
mistake or to deceive.
The appeal has been fully briefed. With her brief,
the Examining Attorney submitted copies of dictionary pages
to show the pronunciation of “duck” and “dux,” and has
asked us to take judicial notice of them. Applicant, in
its reply brief, asks that we also take judicial notice of
the definitions of such words. We grant both requests.3
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 Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie

2 Registration No. 2484894, issued September 4, 2001.
3 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser No. 78478872
4
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Turning first to the goods, applicant does not dispute
“that the goods under Applicant’s mark and that of the
cited registration are similar.” Brief, p. 1. In fact, we
find that applicant’s identified jackets, pants, headwear
and mittens either encompass or are encompassed by the
outerwear jackets, pants, hats and mitts for sports
and/recreation that are identified in the cited
registration, while applicant’s identified coats, parkas,
overalls, vests, sweaters, gloves and scarves are closely
related to the outerwear items listed in the registration.
The du Pont factor of the similarity of the goods favors a
finding of likelihood of confusion.
Moreover, to the extent that the goods are legally
identical, they must be deemed to be sold in the same
channels of trade and to the same classes of customers.
Many of the closely related items are also sold in the same
channels of trade, e.g., gloves, mittens and mitts;
jackets, coats, and parkas; outerwear pants and overalls;
hats and scarves. The du Pont factor of the channels of
trade also favors a finding of likelihood of confusion.
The purchasers for the identified goods of applicant
and the registrant are the general public. They must be
Ser No. 78478872
5
considered to be ordinary purchasers. Although we note
that the goods identified in the registration are all for
use in “sports and/or recreation,” many sports and
recreational activities may be undertaken without
specialized clothing and be engaged in by users having
varying degrees of experience, including newcomers to the
sport/activity. Thus, we cannot consider the purchasers of
either applicant’s or the registrant’s goods to have any
particular sophistication about the products. Further,
some of applicant’s goods, such as gloves and mittens and
headwear, may be purchased on impulse, or without
exercising great care. Thus, this du Pont factor favors a
finding of likelihood of confusion.
This brings us to the factor of the similarity of the
marks. In considering this factor, we must keep in mind
that “[w]hen 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).
Applicant’s mark is DRI-DUCK, with the design of a
duck and a diamond shape between the two words; the cited
mark is DRIDUX. The Examining Attorney bases her position
that the marks are confusingly similar primarily on the
Ser No. 78478872
6
marks’ similarity in sound. Applicant, on the other hand,
argues that the marks would be pronounced differently. In
particular, applicant asserts that “it is unclear how the
cited registered mark should be pronounced and many
different pronunciations appear possible.” Brief, p. 2.
As noted above, the Examining Attorney has submitted a
dictionary excerpt of “dux” which shows that it would be
pronounced like “ducks.” Applicant, relying on the fact
that the owner of the cited registration is a Canadian
corporation with an address in Montreal and submitted as a
specimen for its trademark application a label with only
French wording, has submitted the declarations of six
individuals who are Canadian citizens and who are fluent in
French as well as English. In identical terms, these
individuals have stated that DRIDUX has no meaning in
French, but that the French pronunciation of DRIDUX would
be “dree-duux.”
We are not persuaded by applicant’s arguments or its
evidence that applicant’s mark would be pronounced
differently from the registrant’s. DRIDUX is not a
recognized word, whether in English or in French.
Therefore, there can be no “correct” pronunciation for it.
In re Teradata Corporation, 223 USPQ 361, 362 (TTAB 1984)
(“as we have said many times, there is no ‘correct’
Ser No. 78478872
7
pronunciation of a trademark”}. Moreover, applicant’s
evidence as to how French speakers would pronounce the word
is misplaced. Although the registrant’s specimens, when it
submitted its application, might have been in French, the
registrant is not required to use only French on its
labels. Thus, even French-speaking people would not
necessarily attempt to give DRI-DUX a French pronunciation.
More importantly, we must consider the consumers for both
applicant’s and registrant’s goods to be everyone in the
United States, including English speakers who have no
knowledge of French. Because DRI is likely to be perceived
as a misspelling of DRY, such persons will pronounce DRI in
the registrant’s mark in the same way that applicant
pronounces this identically-spelled element in its mark.
Such persons are also likely to pronounce DUX in the same
way as they would pronounce DUCKS. This would be a logical
way of pronouncing the word, as it is the pronunciation
given for the word “dux” in the dictionary, and would also
rhyme with the commonly used word “tux.” It would also be
logical to pronounce DRIDUX as DRY DUCKS given that the
mark is used for clothing, and “duck” has a meaning in
connection with clothing. The dictionary definition
submitted by the Examining Attorney shows that “duck” means
“a heavy, plain-weave cotton fabric for tents, clothing,
Ser No. 78478872
8
bags, etc. in any of various weights and widths.”4 Thus, we
find that the marks are virtually identical in
pronunciation.
We also find the marks to be similar in connotation.
Again, both marks begin with the word DRI, which would be
regarded by consumers as the equivalent of DRY. As noted,
“duck” has a specific meaning when used in connection with
clothing. When these words are combined as DRI-DUCK or
DRIDUX, and used on the identified goods, they both convey
the same meaning, that of clothing that keeps one dry or
that repels water. Although in applicant’s mark the
picture of the bird creates a double meaning for DUCK in
applicant’s mark, the meaning of fabric is present as well.
Thus, at least on this one level, both applicant’s mark and
the registrant’s mark have the same connotation.
We note that neither applicant nor the Examining
Attorney apparently were aware of this meaning of “duck”;
at least neither raised it. Rather, the Examining Attorney
viewed DUX in the cited mark, and “DUCK” in applicant’s
mark, as referring only to the bird. To the extent that
consumers would view DUX and DUCK as meaning only the bird,
the marks DRIDUX and DRI-DUCK and design still have the
same connotation. We also note that, in its reply brief,

4 The Random House Unabridged Dictionary, 2d ed. © 1993.
Ser No. 78478872
9
applicant points to the definitions of DUX that is found in
the dictionary excerpt submitted by applicant: “1. Brit.
the pupil who is academically first in a class or school;
2. (in the later Roman Empire) a military chief commanding
the troops in a frontier province.”5 Because these meanings
are relatively obscure, however, we are not persuaded that
consumers in the United States would recognize DUX as
having such connotations or, even if they were aware of the
dictionary definitions, that they would attribute them to
DUX as it is used in the cited mark, since DRIDUX makes no
sense in terms of a pupil who is dry or a military chief
who is dry. Thus, whether DUX and DUCK are viewed as
meaning the bird or the fabric, the marks DRI-DUCK and
design and DRIDUX project similar connotations.
With respect to appearance, the duck design is
prominently featured, and it does give a somewhat different
appearance to applicant’s mark. However, the word part of
applicant’s mark, DRI-DUCK, is very similar to the cited
mark DRIDUX, in that both begin with the element DRI, and
are followed by the letters DU, such that the word portions
of the marks differ only in their final letter/final two
letters. Moreover, to the extent that DUX in the
registered mark would be viewed as meaning the plural of

5 The Random House Unabridged Dictionary, 2d ed. © 1993.
Ser No. 78478872
10
“duck,” the design merely emphasizes the marks’ similarity
in meaning. Thus, in view of the virtually identical
pronunciations of the marks, and the similar connotations,
the addition of the duck design and the slight differences
in spelling of the words is not sufficient to distinguish
the marks. Overall, and taking into consideration the
differences in appearance, the marks still convey similar
commercial impressions. See Centraz Industries Inc. v.
Spartan Chemical Co., 77 USPQ2d 1698, 1701 (TTAB 2006) (the
similarity in sound between ISHINE in stylized form and ICE
SHINE so substantial that it outweighs any differences in
appearance and meaning).
The du Pont factor of the similarity of the marks
favors a finding of likelihood of confusion.
There are two additional arguments that applicant did
not raise in its brief, but did assert during the course of
prosecution. Applicant stated that there were a large
number of registrations for DUCK marks, and therefore that
the cited registration was entitled to a limited scope of
protection. We note that applicant did not submit any
third-party registrations, but merely asserted that a
search of the USPTO TESS database disclosed 568 active
registrations in Class 25 (the clothing class) for marks
containing the word “duck.” In order for third-party
Ser No. 78478872
11
registrations to be considered, copies of the
registrations, or their electronic equivalent, taken from
the USPTO records must be submitted. However, because the
Examining Attorney did not apprise applicant, when
prosecution was still at a point that it could have cured
the problem, that its mere statement regarding the number
of registrations it found was insufficient to make them of
record, we will consider the information for whatever
probative value it may have. And because applicant did not
supply any information about these registrations, such as
the marks and the goods, the probative value of just the
number of the registrations is very limited.
We also point out that even if copies of the
registrations had been properly made of record, such
registrations do not prove that the marks are in use, or
that the public is familiar with them. Third-party
registrations have evidentiary value only to the extent
that they can be used in the manner of dictionary
definitions, to show that a term has a particular meaning
or significance in the industry. In this case, because we
do not what the specific marks or goods are, we cannot
determine whether the word DUCK as used in the
registrations indicates a particular meaning for the term.
However, we do have the dictionary definition itself, which
Ser No. 78478872
12
shows that DUCK has a suggestive, if not a descriptive
significance when applied to clothing.
If the only common element between applicant’s mark
and the cited mark were DUCK/DUX, other elements in the
marks might be sufficient to distinguish them. However,
there are many other points of similarity: both marks begin
with the element DRI, the word portions of both marks are
very similar; the marks have a virtually identical
pronunciation and connotation, and they have similar
commercial impressions. In these circumstances, consumers
are not likely to distinguish the marks on the basis of the
duck design in applicant’s mark. Thus, even though the
scope of protection for the registrant’s registration is
more limited than it would be if the mark were arbitrary,
it is still broad enough to prevent the registration of
another mark with such a similar word element for identical
and closely related goods.
The second argument applicant raised during
prosecution was that the owner of the cited registration
had provided a consent to the registration of a third
party’s mark. This document, which applicant made of
record, is clearly not a consent to the registration of
applicant’s mark; if it were, it would be entitled to great
weight in our likelihood of confusion analysis. However,
Ser No. 78478872
13
the fact that the registrant consented to another party’s
registration is of virtually no probative value since that
third-party application was for “weather resistant fabrics
made primarily of non-woven fabrics and finished goods
using woven fabrics for use in the manufacture of hunting,
fishing, camping and golf apparel.” As applicant itself
has pointed out, “unfinished items such as fabric and
leather are distributed in different channels of trade, and
have different consumers than finished articles such as
clothing.” Response filed October 14, 2005. Therefore, we
can in no way extrapolate from the consent the registrant
gave to a third-party applicant that the registrant
consents to the registration of applicant’s mark for
clothing items that are identical or closely related to the
registrant’s identified goods.
Finally, we note applicant’s argument that “this is a
close call for likelihood of confusion.” Brief, p. 6.
Although the Examining Attorney has pointed out that any
doubt on the issue of likelihood of confusion must be
resolved in favor of the registrant, applicant contends
such a view “is short-sighted as a policy and unfairly cuts
off analysis that would be better informed in an inter
partes setting.” Reply brief, p. 2. Applicant’s
suggestion goes against well-settled law. As our primary
Ser No. 78478872
14
reviewing court stated in In re Dixie Restaurants Inc., 41
USPQ2d supra at 1535:
Dixie argues alternatively that the PTO
should pass the mark to publication and
allow the registrant to oppose the
applicant's mark, if it chooses. But it
is the duty of the PTO and this court
to determine whether there is a
likelihood of confusion between two
marks. In re Apparel, Inc., 366 F.2d
1022, 1023, 151 USPQ 353, 354 (CCPA
1966). It is also our duty “to afford
rights to registrants without
constantly subjecting them to the
financial and other burdens of
opposition proceedings.” Id.; see also
In re The Clorox Co., 578 F.2d 305,
308, 198 USPQ 337, 341 (CCPA 1978);
McCarthy, supra , Section 23.24[1] [d]
(where PTO rejects an application under
section 1052(d), “it is no answer for
the applicant to ask that the
application be passed to publication to
see whether the owner of the cited mark
will oppose the registration”).
Otherwise protecting their rights under
the Lanham Act would be an onerous
burden for registrants.

Although doubt must be resolved in favor of the
registrant, in this case no such doubt exists. After
considering all of the relevant du Pont factors, we find
that the use of applicant’s mark DRI-DUCK and design for
its identified goods is likely to cause confusion with the
cited registration for DRIDUX.
Decision: The refusal of registration is affirmed.