DML Marketing Group, Inc.

Trademark Trial and Appeal Board

Oct 4, 2000

No. 75308640 (T.T.A.B. Oct. 4, 2000)

Paper No. 11
Bottorff
10/4/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re DML Marketing Group, Inc.
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Serial No. 75/308,640
_______
George J. Netter for DML Marketing Group, Inc.
Jill C. Alt, Trademark Examining Attorney, Law Office 114
(Conrad Wong, Acting Managing Attorney)
_______
Before Seeherman, Quinn and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark DAKOTA BLUE, in typed form, for goods
identified in the application as “clothing, namely,
anklets, knee highs, thigh highs and tights.”1 Pursuant to
the Trademark Examining Attorney’s requirement, applicant

1 Serial No. 75/308,640, filed June 13, 1997. The application is
based on use in commerce, and December 4, 1996 is alleged in the
application as the date of first use of the mark anywhere and
first use of the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/308,640
2
has disclaimed the exclusive right to use BLUE apart from
the mark as shown.
The Trademark Examining Attorney has refused
registration of applicant’s mark on the ground that the
mark, as applied to applicant’s goods, so resembles the
mark DAKOTA, registered for “snowmobile suits, jackets,
coats, coveralls, ski pants and jackets, jumpsuits and
jackets,”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 filed main briefs, but applicant did not
file a reply brief. No oral hearing was requested.
Our 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 cumulative effect of differences in the

2 Registration No. 941,497, issued August 22, 1972, renewed
September 3, 1992. Affidavits under Trademark Act Sections 8 and
15 accepted and acknowledged.
Ser. No. 75/308,640
3
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).
The first factor to consider is whether applicant’s
mark DAKOTA BLUE and the registered mark DAKOTA, when
considered in their entireties as to appearance, sound and
connotation, are similar or dissimilar. For the reasons
stated below, we find that the two marks are similar,
rather than dissimilar.
Although the ultimate conclusion as to the similarity
or dissimilarity of the marks rests on consideration of the
marks in their entireties, it is not improper to state
that, for rational reasons, more or less weight has been
given to a particular feature of the mark. In re National
Data Corporation, 753 F.2d 1056, 1058, 224 USPQ 749, 751
(Fed. Cir. 1985). In this case, we find that DAKOTA is the
dominant feature of applicant’s mark DAKOTA BLUE because,
as applied to applicant’s goods, DAKOTA is an arbitrary
term or at most a slightly suggestive term, while, as
applicant has acknowledged by agreeing to the Examining
Attorney’s requirement for a disclaimer, BLUE is the name
of a common, primary color which is either merely
descriptive or deceptively misdescriptive of the goods.
Ser. No. 75/308,640
4
More specifically, we find that DAKOTA dominates the
commercial impression of applicant’s mark for the following
reasons. It appears on this record that DAKOTA is an
arbitrary term as applied to applicant’s goods. Although
applicant’s dictionary evidence shows that “Dakota” was the
name of a former U.S. territory, there is no evidence that
the term is now used or recognized as the name of any
specific geographic place, much less a geographic place
that has anything to do with applicant’s goods. Likewise,
applicant’s dictionary evidence shows that DAKOTA is the
name of a group of Indian tribes, a fact which has no
effect on the arbitrariness of the term as applied to
applicant’s goods. Finally, there is no evidence of any
use by third parties of the term DAKOTA, or any term
similar thereto, in connection with the types of goods
involved in this case or in connection with any goods or
services at all, a fact which leads us to conclude that
DAKOTA is relatively strong as a source indicator.
In contrast, the term BLUE contributes relatively
little to the commercial impression created by applicant’s
mark DAKOTA BLUE. It is the name of a common color, and as
such it would be perceived by purchasers as either
descriptive or misdescriptive of a feature of applicant’s
goods, i.e., the color of the goods. We base this finding
Ser. No. 75/308,640
5
on the numerous third-party registrations made of record by
the Trademark Examining Attorney, in which various clothing
items are included in the respective identifications of
goods and in which the word BLUE appears in the respective
marks but is disclaimed. Indeed, applicant itself has
disclaimed the word BLUE in its application. Although we
cannot ignore a disclaimed term in our determination of the
similarity or dissimilarity of the marks, the fact that
BLUE was disclaimed by applicant further supports our
finding that BLUE contributes less to the commercial
impression that applicant’s mark would make on purchasers.
See In re National Data Corp., supra.
Having found, for the above-stated reasons, that
DAKOTA is the dominant feature of applicant’s mark DAKOTA
BLUE and that it accordingly is entitled to greater weight
in our determination of the mark’s commercial impression
than is the term BLUE, we now proceed to a comparison of
applicant’s and registrant’s marks, in their entireties, as
to appearance, sound and connotation.
With respect to appearance and sound, the two marks
obviously are identical to the extent that they both
include the word DAKOTA, but they are dissimilar to the
extent that applicant’s mark, but not registrant’s mark,
also includes the word BLUE. However, for the reasons
Ser. No. 75/308,640
6
previously discussed, we find that it is the presence of
the word DAKOTA in both marks, rather than the presence or
absence of the common word BLUE, that is more likely to be
noticed and recalled by purchasers who encounter the marks.
On balance, therefore, we find that the similarity between
the marks, i.e., their shared use of the word DAKOTA,
outweighs the dissimilarities between the marks resulting
from the presence of the word BLUE in applicant’s mark. We
conclude that the marks, considered in their entireties,
are similar rather than dissimilar in terms of appearance
and sound.
As for the connotation of the respective marks,
applicant’s dictionary evidence shows that DAKOTA would
connote or suggest to purchasers the aforementioned former
U.S. territory and/or the group of American Indian tribes
and their language. When compared in their entireties,
both marks convey the same connotation. Although
applicant’s mark also contains the word BLUE, that word,
which is descriptive or misdescriptive of applicant’s
goods, is not sufficient, in itself, to eliminate the
confusing similarity resulting from both parties’ use of
the arbitrary word DAKOTA as the dominant feature of their
respective marks. See, e.g., In re El Torito Restaurants
Ser. No. 75/308,640
7
Inc., 9 USPQ2d 2002 (TTAB 1988); In re Corning Glass Works,
229 USPQ 65 (TTAB 1985).
We note applicant’s contention that, by combining the
word BLUE with the word DAKOTA, it has created a unitary
composite, DAKOTA BLUE, which is distinguishable from
DAKOTA, per se, in terms of connotation and commercial
impression. More specifically, applicant contends that
DAKOTA BLUE would be perceived by purchasers as the name of
a color, i.e., a particular shade of blue. However, there
is no evidence in the record that any such color exists, or
that DAKOTA BLUE would be perceived as such a color when
used in connection with applicant’s goods. In the absence
of such evidence, we cannot conclude that DAKOTA BLUE is a
unitary composite term with its own distinctive meaning.3
In summary, we have carefully considered applicant’s
mark and registrant’s mark in their entireties, and
conclude, for the foregoing reasons, that the marks are
similar rather than dissimilar in terms of their
appearance, sound and connotation, and that they therefore

3 If the parties’ marks were, for example, POWDER and POWDER
BLUE, applicant’s argument would be more persuasive. The
addition of the word BLUE to the word POWDER results in a unitary
composite, the well-known color “powder blue,” which has a
connotation quite different from the connotation of the word
POWDER, per se. In this case, applicant has not shown that any
such unitary composite is created by the combination of the
descriptive word BLUE with the arbitrary and dominant word
DAKOTA.
Ser. No. 75/308,640
8
convey similar commercial impressions. This similarity
between the marks weighs in favor of a conclusion that
confusion is likely.
We turn next to a consideration of the commercial
relationship, if any, between the respective goods
identified in applicant’s application and in the cited
registration, i.e., between applicant’s “clothing, namely,
anklets, knee highs, thigh highs and tights” and
registrant’s “snowmobile suits, jackets, coats, coveralls,
ski pants and jackets, jumpsuits and jackets.” 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 producer or that there is an
association or connection between the producers of the
respective goods. See In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978). Moreover, it is settled
that if any of the goods identified in the applicant’s
Ser. No. 75/308,640
9
application are related to the goods identified in the
cited registration, refusal of the application on the
ground of likelihood of confusion is appropriate. See
Shunk Manufacturing Company v. Tarrant Manufacturing
Company, 137 USPQ 881 (CCPA 1963); Alabama Board of
Trustees v. BAMA-Werke Curt Baumann, 231 USPQ 408 at fn. 7
(TTAB 1986).
In this case, we are persuaded by the Trademark
Examining Attorney’s contention that applicant’s “tights”
are complementary to and used in conjunction with the
skiing and snowmobiling outerwear identified in the cited
registration, and that these respective goods therefore are
similar and related for purposes of our likelihood of
confusion analysis. See, e.g., In re Melville Corp.,
supra; In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984).
More specifically, we find that the two types of products,
i.e., tights and skiing or snowmobiling outerwear, would
both be components of the outfit or ensemble worn by skiers
or snowmobilers while pursuing their respective winter
outdoor activities.
It is apparent from the third-party registration
evidence made of record by the Trademark Examining Attorney
that the term “tights” in applicant’s identification of
goods is broad enough to include tights used for athletic
Ser. No. 75/308,640
10
or sports-related activities. Applicant has not restricted
its identification of goods to exclude such type of tights,
and it must be presumed that the “tights” identified in the
application include tights used during athletic activity.
See Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
It is common knowledge that one of the primary
reasons that athletic tights are worn during outdoor
activity is the warmth they provide to the wearer. It also
is common knowledge that the activities of skiing and
snowmobiling take place in the snow and in cold weather and
locations, and that it is appropriate to “layer” one’s
clothing while engaging in these activities so as to ensure
the appropriate degree of body warmth and comfort.
Accordingly, a skier or snowmobiler could and would readily
use athletic tights as the “first layer” of his or her
layered outfit, underneath outerwear of the type identified
in registrant’s registration.
In view thereof, and in view of the fact that
applicant has never contested the Trademark Examining
Attorney’s arguments regarding the complementary nature of
applicant’s tights and registrant’s outerwear, we find that
applicant’s goods and registrant’s goods, as identified in
the respective application and registration, are similar
Ser. No. 75/308,640
11
and related. This fact weighs in favor of a conclusion
that confusion is likely.
Applicant argues that confusion is unlikely because
the parties’ respective goods are marketed in different
trade channels. In support of this contention, applicant
has submitted the declaration of its Operations Manager,
Susie Koo. She states that registrant’s types of goods are
sold primarily in specialty sports stores or in the sports
departments of department and chain stores, while
applicant’s own goods are sold in department stores and
chain stores but not in stores specializing solely in
sports clothing.
Ms. Koo’s declaration is sufficient, in the absence of
any contradictory evidence from the Trademark Examining
Attorney, to establish that registrant’s types of goods are
normally sold in specialty sports stores or in the sports
departments of department and chain stores. However, her
declaration is insufficient to establish that the types of
goods identified in the application, particularly “tights,”
are not sold in the same locations as well. As discussed
above, applicant’s “tights” are not limited in the
identification so as to exclude athletic and sports tights.
Likewise, applicant’s identification of goods is not
limited as to the types of retail facilities or department
Ser. No. 75/308,640
12
store departments in which applicant’s goods are offered
for sale. We accordingly must presume that they are
offered in all normal and usual trade channels for such
goods, not just in the specific trade channels in which
they are presently offered. See In re Elbaum, 211 USPQ 639
(TTAB 1981).
In view of the complementary nature of applicant’s
“tights” and registrant’s ski and snowmobile outerwear, it
is entirely reasonable to assume that these goods would be
offered for sale in the same locations and purchased at the
same time. That is, “tights,” as identified in the
application and which would include athletic or sports
tights, are presumed to be offered for sale in the same
specialty sports stores and department store sports
departments as registrant’s outerwear. Thus, we find that
the established and likely-to-continue trade channels for
the parties’ respective goods overlap, a fact which weighs
in favor of a conclusion that confusion is likely.
In summary, we have carefully considered all of the
evidence of record pertaining to the relevant du Pont
likelihood of confusion factors, and conclude that
confusion is likely to result from applicant’s use of its
Ser. No. 75/308,640
13
mark on its identified goods. To the extent that any of
applicant’s arguments raise a doubt as to that conclusion,
we must resolve that doubt in favor of the prior
registrant. 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 Section 2(d) refusal is affirmed.
E. J. Seeherman
T. J. Quinn
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board