I.T.C. Limited

Trademark Trial and Appeal Board

May 22, 2001

No. 75615020 (T.T.A.B. May. 22, 2001)

5/22/01
Paper No. 11
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re I.T.C. Limited
________
Serial No. 75/615,020
_______
Karla C. Shippey and Dana E. Stewart of Hilborne, Hawkin &
Co.1 for I.T.C. Limited.
Richard S. Donnell, Trademark Examining Attorney,2 Law
Office 106 (Mary Sparrow, Managing Attorney).
_______
Before Seeherman, Bottorff and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
I.T.C. Limited has appealed from the final refusal of
the Trademark Examining Attorney to register WILLS SPORT
and design, as shown below, for “culottes, jackets
including leather jackets, jogging suits, pants, sweat
pants, polo shirts, golf shirts, knit shirts, sports
1 Another attorney with the firm prepared applicant’s appeal
brief.
2 Mr. Donnell prepared the appeal brief; another Examining
Attorney prepared the Office Actions during the examination of
the application.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/615,020
2
shirts, t-shirts, sweat shirts, evening gowns, shorts, tank
tops, footwear including athletic shoes.”3
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 WILLS & CO., with “&
CO.” disclaimed, previously registered for “articles of
apparel, namely shirts,”4 that, if used on applicant’s
identified goods, it would be likely to cause confusion or
mistake or to deceive. The Examining Attorney has also
made final requirement for a disclaimer of the word SPORT.
The appeal has been fully briefed. Applicant withdrew
its request for an oral hearing.
At the outset, we note that applicant has submitted
certain exhibits with its appeal brief which had not
previously been made of record, specifically Exhibits Nos.
4 through 11.5 The Examining Attorney has objected to these
3 Application Serial No. 75/615,020, filed December 21, 1998,
asserting a bona fide intention to use the mark in commerce.
4 Registration No. 1,604,746, issued July 3, 1990; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
5 Exhibit Nos. 1-3 were copies of two Office actions and one
response filed in the present application, and are of record.
Applicant is advised that it is not necessary to file copies of
Ser. No. 75/615,020
3
exhibits as being untimely filed. The Examining Attorney’s
objection is well taken. Trademark Rule 2.142(d) provides
that the record in the application should be complete prior
to the filing of an appeal, and that the Board will
ordinarily not consider additional evidence filed with the
Board after the appeal is filed.
We turn first to the requirement for a disclaimer. In
response to the Examining Attorney’s requirement for a
disclaimer of the word SPORT, applicant offered a
disclaimer of the separate words WILLS and SPORT. The
Examining Attorney pointed out that a disclaimer of WILLS
was not necessary, and in his brief advised applicant that
if it were offering the disclaimer in order to attempt to
overcome the likelihood of confusion refusal, the entry of
such a disclaimer would not render registrable a mark which
is otherwise unregistrable. In its reply brief applicant
reiterated its desire to disclaim both the word WILLS and
the word SPORT.
Although an Examining Attorney may require a
disclaimer only of an unregistrable component of a mark
otherwise registrable, the Commissioner for Trademarks has
stated that an applicant may voluntary disclaim a component
these papers with its brief, since they are present in the
application file in which the brief is also found.
Ser. No. 75/615,020
4
of a mark, even if that component is registrable matter.
See In re MCI Communications Corp., 21 USPQ2d 1534 (Comr.
Pats. 1991). Accordingly, the proffered disclaimer of
WILLS and SPORT will be entered into the record. Further,
because this disclaimer meets the Examining Attorney’s
requirement for a disclaimer of the word SPORT, the refusal
to register based on that requirement is reversed as moot.
We emphasize, however, that the disclaimer of WILLS
cannot serve to avoid a finding of likelihood of confusion.
As applicant itself has recognized, disclaimers have no
effect upon purchasers. Disclaimed material still forms a
part of the mark.
This brings us to the refusal based on the asserted
likelihood of confusion with the registered mark WILLS &
CO. for shirts. In determining this issue, we must
consider 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).
Ser. No. 75/615,020
5
The cited mark is for shirts, while applicant’s
identified goods include a number of different types of
shirts, such as polo shirts, golf shirts, knit shirts,
sports shirts and t-shirts. These goods of applicant’s are
clearly encompassed within the registrant’s identified
shirts, and therefore applicant’s shirts must be deemed to
be legally identical to registrant’s.6 As such, they must
be deemed to be sold through the same channels of trade and
to the same classes of customers which, in the case of
clothing items, would be the public at large.
We turn next to a consideration of the marks, keeping
in mind that when marks would appear on or in connection
with 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).
As applicant has pointed out, citing In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985),
marks must be considered in their entireties. However,
applicant neglected to quote the additional language in
6 Many other goods of applicant’s, including culottes, pants,
shorts and tank tops, would be considered closely related
articles of apparel. However, we need not belabor this point in
view of the identical nature of the shirts.
Ser. No. 75/615,020
6
this opinion, namely, that “in articulating reasons for
reaching a conclusion on the issue of likelihood 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. Id., 224 USPQ at 751.
In this case, we disagree with applicant’s contention
that its mark, WILLS SPORT and design, is a unitary term.
It is clear that the word SPORT is a descriptive term for
much of the clothing listed in applicant’s identification,
including the golf shirts, polo shirts and T-shirts. The
Examining Attorney has made of record numerous third-party
registrations for apparel in which this word has been
disclaimed, thereby showing that it is regarded as
descriptive. The Examining Attorney has also submitted
with his brief dictionary definitions showing that “sport”
is used to describe items “designed or appropriate for
outdoor or informal wear: a sport shirt,” and that
“sportswear” describes a category of “clothes designed for
comfort and casual wear.”7 Because SPORT has such a strong
descriptive connotation, consumers will look to other
elements of the mark for its source-identifying
7 The American Heritage Dictionary of the English Language, 3d
ed. © 1992. 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. 75/615,020
7
significance. Similarly, although applicant’s mark has a
noticeable design element, it is well established that when
a mark comprises both a word and a design, the word is
normally accorded greater weight because it would be used
by purchasers to request or refer to the goods or services.
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).8
In the present case we see no reason to depart from the
general rule, since the design portion of applicant’s mark,
to the extent it would be articulated at all, is, as
applicant describes it, “a large and thick letter ‘W’,”
brief, p. 3, which merely reinforces the WILLS portion of
the mark.
Similarly, WILLS must also be considered the dominant
portion of the registered mark, since the additional
element “& CO.” is merely an entity designation which
consumers will not look to as a source-identifier.
Thus, when the marks are compared in their entireties,
they are very similar in pronunciation, with the word WILLS
being identical and the other differences in sound being in
the non-distinctive words “SPORT” and “& CO.” As stated
8 Applicant stated, at p. 4 of its brief, that “the Examiner’s
position that ‘when a mark consists of a word portion and a
design portion, the word portion is more likely to be impressed
upon a purchaser’s memory and to be used in calling for the goods
or services’ is untenable and unfounded in both fact and law.”
Given the statement in In re Appetito, we would describe
applicant’s position as untenable.
Ser. No. 75/615,020
8
above, consumers are not likely to distinguish the marks
because of these differences in pronunciation because these
additional words do not have any source-identifying value.
For similar reasons, the marks are also similar in
appearance. The word WILLS is a strong visual element of
both marks. Further, because the cited mark is registered
in a typed drawing format, its protection is not limited to
any particular stylization, and would certainly extend to
the minor stylization of the words shown in applicant’s
mark. The marks are also similar in connotation.
Applicant argues at great length that the cited mark would
be regarded as a surname, as indicating the company of a
person with the last name WILLS. Assuming that is the
case, a similar connotation is conveyed by applicant’s
mark, namely that of a company named WILLS selling a line
of sport clothing.9 When the marks are compared as a whole,
consumers are likely to believe that the WILLS SPORT and
design mark is a variant of, or identifies a sport clothing
line of, WILLS & CO. apparel.
Applicant has argued at great length in its brief that
the cited mark is primarily merely a surname. We will
9 Applicant states, at p. 12 of its brief, that its mark “does
in fact conjure up an idea synonymous to Nike’s popular slogan
‘just do it.’” Suffice it to say that we do not believe that
consumers will understand WILLS SPORT to mean the will to win, or
anything of the sort.
Ser. No. 75/615,020
9
assume that applicant is not attempting to collaterally
attack that registration which, or course, is not allowed.
To the extent that applicant is asserting that the cited
registration is entitled to a limited scope of protection,
we find that its protection would nevertheless extend to
applicant’s use of such a similar mark for identical goods.
See Hollister Incorporated v. Ident A Pet, Inc., 193
USPQ439 (TTAB 1976). We also think it appropriate to point
out that the cited registration issued on the Principal
Register without resort to Section 2(f) because,
presumably, the Examining Attorney considered it to be
inherently distinctive. Certainly the registration should
not be given less protection than would a Section 2(f)
registration. In any case, surname marks are generally
found to have acquired distinctiveness after five years’
use; the cited registration is now more than 10 years old,
has been renewed, and even in a cancellation proceeding
could not be attacked on the basis that it is primarily
merely a surname.
Applicant has apparently recognized that it has
appropriated the primary feature of the cited mark in its
own mark, citing to cases in which no likelihood of
confusion was found where registered marks were
incorporated into the mark of another. The examples
Ser. No. 75/615,020
10
provided by applicant, FRESH and FEMFRESH, and PET and
PETITE, are far different from the present situation, in
which the word WILLS retains its significance, and is not a
descriptive or highly suggestive term.
Finally, applicant has referred to its other
applications for the same mark, in Classes 18 and 28, which
were approved for publication. Although evidence as to
these applications was untimely filed with the appeal
brief, the Examining Attorney did discuss these
applications in his brief, and we have therefore considered
the existence of the applications and their acceptance for
publication. However, the fact that other applications for
the same mark but for different goods were approved for
publication has no persuasive value herein. We are called
upon to consider whether applicant’s mark, if used for the
goods identified in the subject application, is likely to
cause confusion. As noted several times, the cited
registration is for goods which are in part identical to
the goods identified in the present application, and
whether applicant’s use of its mark for different goods in
other classes is not likely to cause confusion has
virtually no persuasive influence in this case.
Ser. No. 75/615,020
11
Decision: The refusal of registration pursuant to
Section 2(d) is affirmed; the requirement for a disclaimer
is reversed as moot.