HEG Inc.

Trademark Trial and Appeal Board

Jan 15, 2019

EX (T.T.A.B. Jan. 15, 2019)

Mailed: January 15, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re HEG Inc.
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Serial No. 87061391
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Brian L. Michaelis of Seyfarth Shaw LLP,
for HEG Inc.
Kristin Carlson, Trademark Examining Attorney, Law Office 105,
Jennifer L. Williston, Managing Attorney.
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Before Hightower, Heasley, and Coggins,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant HEG Inc. seeks to register on the Principal Register the mark

for “retail convenience store services” in International Class 35.1 The Trademark
Examining Attorney refused registration under Section 2(d) of the Trademark Act,

1 Application Serial No. 87061391 was filed June 6, 2016, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention to use the
This Opinion Is Not a
Precedent of the TTAB
Serial No. 87061391
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15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied to the services
identified in the application, so resembles the marks in three registrations on the
Principal Register as to be likely to cause confusion, to cause mistake, or to deceive.
The cited marks, all with the same owner, are:
• KICKS (typeset) for “retail convenience store services” in
International Class 42;2
• for “retail convenience store services” in International
Class 35;3 and
• for “retail convenience stores” in International
Class 35.4
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. The appeal is fully briefed. We affirm the refusal to register.

mark in commerce. The description of the mark states: “The mark consists of a kicking
donkey between two horizontal lines, above the cursive word ‘KICKSMART’, the entirety
surrounded by a geometric shape.” Color is not claimed as a feature of the mark.
2 Registration No. 2067834, issued June 3, 1997; renewed twice. Before November 2, 2003,
“standard character” drawings were known as “typed” drawings. A typed mark is the legal
equivalent of a standard character mark. TMEP § 807.03(i) (Oct. 2018). Retail store services
transferred from Class 42 to Class 35 in 1997.
3 Registration No. 2218164, issued January 19, 1999; renewed once. The mark is lined for the
color red.
4 Registration No. 3653968, issued July 14, 2009. The description of the mark states: “The
mark consists of the word ‘KICKS’ with an expanded stylized ‘K’ followed by the block letters
‘icks’.” Color is not claimed as a feature of the mark.
Serial No. 87061391
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I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the goods
[or services] and differences in the marks.”).
We focus our likelihood of confusion analysis on the cited mark KICKS in typeset
form, Registration No. 2067834. If we find that there is a likelihood of confusion
between this mark and Applicant’s mark, there is no need for us to consider the
likelihood of confusion with the other two cited marks. Conversely, if we find there is
no likelihood of confusion with this mark, we would find no likelihood of confusion
with the other cited marks. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245
(TTAB 2010).
A. Similarity of the Services, Customers, and Channels of Trade
We first consider the second and third du Pont factors, the similarity of the
services and channels of trade. Applicant and Registrant recite identical “retail
convenience store services.” Therefore, we must presume that the channels of trade
and classes of customers are the same. See, e.g., In re Viterra Inc., 671 F.3d 1358, 101
Serial No. 87061391
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USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Inn at St. John’s, LLC, 126 USPQ2d 1742,
1745 (TTAB 2018). The second and third du Pont factors weigh heavily in favor of a
finding that confusion is likely.
B. Similarity of the Marks
Next, we address the first du Pont likelihood of confusion factor, which focuses on
“‘the similarity or dissimilarity of the marks in their entireties as to appearance,
sound, connotation and commercial impression.’” Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-
by-side comparison of the marks, but instead whether the marks are sufficiently
similar in terms of their commercial impression such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted).
Because the similarity of the marks is determined based on the marks in their
entireties, our analysis is not predicated on dissecting the marks into their various
components. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015).
On the other hand, in articulating reasons for reaching a
conclusion on the issue of confusion, there is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of
the marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.
In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also
Viterra, 101 USPQ2d at 1908.
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Where, as here, marks are used in association with identical services, the degree
of similarity between them necessary to support a determination that confusion is
likely declines. Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992).
Applicant’s mark is . Although we assess each mark in its
entirety, wording often is considered the dominant feature of a mark comprising both
literal and design elements. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134
(Fed. Cir. 2015); Viterra, 101 USPQ2d at 1908. We find that to be appropriate here.
Consumers are likely to view KICKSMART as indicating the source of Applicant’s
services, not only because it is wording but also because it is far larger than the
kicking donkey image, and the remaining simple graphic elements are not distinctive.
Indeed, the literal component KICKSMART is likely to be used alone in text and when
spoken by consumers of Applicant’s services. Viterra, 101 USPQ2d at 1911.
As we often have said, the lead element in a mark has a position of prominence; it
is likely to be noticed and remembered by consumers and so to play a dominant role
in the mark. See, e.g., Palm Bay, 73 USPQ2d at 1692 (stating that VEUVE is a
prominent part of the mark VEUVE CLICQUOT because it is the first word in the
mark); Century 21, 23 USPQ2d at 1700 (stating that consumers will first notice the
identical lead word on encountering the marks). Here, the cited mark KICKS is the
first literal portion of Applicant’s mark.
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While there is no rule that likelihood of confusion automatically applies where one
mark subsumes another, in this case, the fact that the first syllable of Applicant’s
mark is the entire cited mark KICKS increases the similarity between the two. See,
e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010)
(affirming Board decision that ML is likely to be perceived as a shortened version of
ML MARK LEES, and stating that “the presence of an additional term in the mark
does not necessarily eliminate the likelihood of confusion if some terms are
identical”); Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v. Joseph E. Seagram &
Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL LANCER &
design for club soda, quinine water, and ginger ale likely to cause confusion with
BENGAL for gin); In re Integrated Embedded, 120 USPQ2d 1504, 1516 (TTAB 2016)
(BARR GROUP, with “group” disclaimed, likely to cause confusion with BARR for
engineering services); In re El Torito Rests. Inc., 9 USPQ2d 2002, 2004 (TTAB 1988)
(MACHO COMBOS, with “combos” disclaimed, likely to cause confusion with
MACHO for restaurant entrees).
1. Third-Party Use and Registration of –MART Formatives
The facts of this appeal present another consideration enhancing the similarity of
the marks. As discussed above, both marks are for “retail convenience store services.”
The Examining Attorney introduced Internet printouts displaying several examples
of use by third parties of –MART formatives for such services, including Sprint Mart,
Planet Mart, E-Z Mart, GoMart, Express Mart, Mapco Mart, and Redi Mart.5 In

5 September 19, 2016 Office Action at TSDR 8-14.
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addition, the Examining Attorney submitted several pairs of existing, use-based
registrations in which the third-party registrant owns a leading term and its –MART
formative, both for retail food or convenience store services. These are:
• MOBIL and MOBIL MART, with “mart” disclaimed;
• and MILLER MART, with “mart” disclaimed;
• and , with “mart” disclaimed;
• and NATURALMART; and
• and MOTOMART.6
Third-party registrations like these may be relevant to show the sense in which a
mark is used in ordinary parlance; that is, that an element of a mark has a normally
understood and well-recognized descriptive or suggestive meaning. Jack Wolfskin,
116 USPQ2d at 1136. In this case, they demonstrate that –MART means a “market”7
operated by the same owner as the leading mark. The term MART thus encompasses
retail convenience store services. Combined with KICKS, it suggests that Registrant
provides those services.
2. Applicant’s Arguments
Applicant focuses its arguments on the first du Pont factor. See Reply Brief at 1,
7 TTABVUE 2. Applicant argues that the marks make different commercial
impressions, partly because its mark presents the visual pun KICK SMART. See, e.g.,

6 November 14, 2017 Final Office Action at TSDR 2-20, 25-28.
7 We take judicial notice that “market” is a definition of the noun “mart.” https://www.
merriam-webster.com/dictionary/mart. The Board may take judicial notice of definitions from
dictionaries, including online dictionaries that exist in printed format. E.g., In re S. Malhotra
& Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018).
Serial No. 87061391
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Reply Brief at 2, 7 TTABVUE 3. Applicant cannot rely on this consumer
interpretation. Cf. Viterra, 101 USPQ2d at 1912 (stating that “there is no correct
pronunciation of a trademark, and consumers may pronounce a mark differently than
intended by the brand owner”). Applicant also contends that the evidence of “wide
spread [sic] use of the term MART as used in association with retail convenience store
services” weighs against confusion “because consumers have been conditioned to look
to the other elements of the marks” to distinguish the services. Appeal Brief at 7, 8,
4 TTABVUE 10, 11. That may be true, but given the pattern established by the
Examining Attorney’s evidence, we think it is highly likely that consumers will
believe the source of KICKS retail convenience store services also is the source of
retail convenience store services.
Applicant’s mark differs from the cited mark in sound and appearance. Considered
as a whole, however, we find that Applicant’s mark is similar to Registrant’s mark in
connotation and overall commercial impression. Bearing in mind that less similarity
between the marks is necessary because the services are identical, we find that the
first du Pont factor weighs in favor of a finding that confusion is likely.
II. Conclusion
We have considered all of the evidence of record and Applicant’s arguments,
including those not specifically discussed, as they pertain to the relevant du Pont
likelihood of confusion factors. To the extent that any other factors for which no
evidence was presented by Applicant or the Examining Attorney may nonetheless be
applicable, we treat them as neutral.
Serial No. 87061391
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We have found that the first three du Pont factors weigh in favor of a finding that
confusion is likely, with none weighing against. We conclude that Applicant’s mark
is likely to cause confusion with the mark in cited Registration No. 2067834 when
used in association with the services identified in the application.
Decision: The refusal to register Applicant’s mark is affirmed.