Jason Jenkins

Trademark Trial and Appeal Board

May 22, 2009

No. 76682440 (T.T.A.B. May. 22, 2009)

Mailed: May 22, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jason Jenkins
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Serial No. 76682440
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Michael J. Bradford of Luedeka, Neely & Graham, P.C. for
Jason Jenkins

Michael Litzau, Trademark Examining Attorney, Law Office
104 (Chris Donninger, Managing Attorney).
_______

Before Quinn, Hairston and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Jason Jenkins has filed an application to register the
mark shown below for the following goods, as amended,
“clothing and apparel for outdoorsmen, namely, shirts,
sweatshirts, hats, socks, and jackets” in International
Class 25:1

1 Application Serial No. 76682440 was filed on October 1, 2007,
based upon applicant’s assertion of his bona fide intent to use
the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Serial No. 76682440
2

Registration has been finally refused pursuant to
Trademark Act §2(d), 15 U.S.C. §1052(d), on the ground that
applicant’s mark so resembles the following mark:

in Registration No. 21193472 for “T-shirts, jackets, [and]
hats” in International Class 25, as to be likely, if used
on or in connection with the identified goods, to cause
confusion, to cause mistake, or to deceive. Applicant and
the examining attorney have filed briefs on the issue under
appeal. We affirm the refusal.
Our determination under Trademark Act §2(d) is based
upon an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood

2 Issued on December 9, 1997, renewed. The word WEAR is
disclaimed.

Serial No. 76682440
3
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999), and cases
cited therein.
We review the relevant du Pont factors as they apply
to this case.
We begin by comparing applicant’s goods with those of
registrant. In making our determination under the second
du Pont factor, we look to the goods as identified in the
involved application and cited registration. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
Serial No. 76682440
4
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”)
In this case, the registrant’s goods are identified as
“T-shirts, jackets, and hats,” which encompasses some of
applicant’s more narrowly identified goods, “clothing and
apparel for outdoorsmen, namely, shirts, sweatshirts, hats,
socks, and jackets.” Put another way, the goods are
legally identical to the extent that registrant’s goods are
construed to include T-shirts, jackets and hats for
outdoorsmen. The legal identity, in part, of the goods is
a factor that weighs heavily against applicant.
Although applicant’s goods are restricted to items of
apparel “for outdoorsmen,” those of registrant do not
contain any restrictions as to the channels of trade in
which they are distributed or the class of purchasers to
whom they are marketed. It is settled that in making our
determination regarding the channels of trade, we must look
to the goods as identified in the involved application and
cited registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., supra; and Paula Payne Products v.
Johnson Publishing Co., supra. Because as noted above the
Serial No. 76682440
5
goods are legally identical in part and otherwise related,
and there are no restrictions in the registration,
registrant’s goods may be presumed to move in the same
“outdoorsmen” channels of trade as those of applicant and
be available to the same classes of potential consumers,
namely, outdoorsmen. See In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). In this regard, we note that the examining
attorney submitted printouts from several third-party
websites showing retailers offering hats and jackets for a
variety of purposes, including hiking and other outdoor
activities.3 This indicates that even if registrant’s hats
and jackets are not designed for outdoorsmen, they may very
well share some of the same trade channels and be offered
to the same purchasers. Accordingly, these du Pont factors
further favor a finding of likelihood of confusion.
We turn now to the first du Pont factor, i.e., whether
the respective marks are similar or dissimilar when viewed
in their entireties in terms of appearance, sound,
connotation and overall commercial impression. See Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
We note initially that the test under the first du Pont

3 Attached to August 11, 2008 Office Action.

Serial No. 76682440
6
factor is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the goods offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In this case, the marks are similar because the first
literal element in each mark is the term OUCH, with
applicant’s addition of an exclamation point afterwards.
As noted by the examining attorney, the fact that the word
which the marks share in common is also the first word in
the marks is significant. Presto Products, Inc. v. Nice-
Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(“…[it
is] a matter of some importance since it is often the first
part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered.”). See also Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, supra. The connotation created by this term,
OUCH, is clearly that of the cry or interjection “used to
Serial No. 76682440
7
express sudden pain.”4 There is no indication that this
term is anything other than arbitrary or just slightly
suggestive (of clothing that will keep you comfortable when
doing rigorous outdoor activities) in connection with the
identified goods.
As to registrant’s mark in particular, we find the
term OUCH is the dominant element of the mark. It is
significantly larger in size than the other wording in the
mark, including the disclaimed, generic term WEAR. The
secondary phrase, SO GOOD IT HURTS, appears in even smaller
cursive font.
Likewise, we find that the term OUCH! plays a dominant
role in applicant’s mark. It is significant in the
connotation created by the mark and the exclamation point
helps emphasize that role and bring attention to the term.
Yet, we cannot and do not ignore the other features of
applicant’s mark, namely, the design of a hiker climbing a
stylized mountain and the literal portion, MOUNTAIN, with
the letter “t” forming the base of a tree within the
mountain design. Taken together in connection with the

4 Copy of definition of “ouch” attached to examining attorney’s
brief. Merriam-Webster’s Collegiate Dictionary, Tenth Edition
(1999). It is well settled that 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, 596
(TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Serial No. 76682440
8
identified goods, the additional wording and design
portions may connote a wilderness theme or create a
commercial impression of hiking wear or apparel for
outdoors activities.
Ultimately in this case, however, we are persuaded by
the factor that it is usually the literal portion in marks
that is accorded greater weight than the design element
because it is the word portion of the mark that consumers
use to request and to identify an entity’s products. In re
Dakin's Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 2001);
In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB
1987); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228
USPQ 461, 462 (TTAB 1985). In other words, although
applicant’s mark has creative design elements not found in
the registered mark, consumers will likely describe, refer
and/or recall applicant’s mark by verbalizing the literal
portion, OUCH or OUCH MOUNTAIN. Likewise, consumers will
likely reference the registered mark as OUCH or OUCH WEAR.
And, as a result, there may be confusion as to which of the
two marks is being referenced when the goods in question
are legally identical.
Thus, acknowledging that there may be differences in
the connotation or commercial impressions of the marks, we
Serial No. 76682440
9
find that the marks are overall more similar than not.
This du Pont factor weighs against applicant.
Applicant argues that the term OUCH is “weak in
relation to clothing and apparel goods.” Brief,
(unnumbered) p. 3. In support, applicant points to the
cited registration as well as another registered mark,
OUCH, for swimwear5 that was cited (and later withdrawn) by
the examining attorney in the first Office action as a bar
to registration based on a likelihood of confusion.
Applicant contends that there are “at least six other
federal registrations or allowed applications for marks
containing the words (sic) “OUCH” for clothing or apparel
goods.” Applicant provided printout copies of three
registrations and three applications.6 A review of the
referenced applications reveals that all of them have been
abandoned prior to any assertion of use in commerce; thus,
they have no probative value other than to show
applications for those marks were filed and abandoned
without any claim that the marks were being used in
commerce. As to the referenced registrations of record,
other than the cited registration, they are:
OUCH for swimwear;

5 Registration No. 3082697.
6 Attached to applicant’s response (filed July 22, 2008).
Serial No. 76682440
10
OUCH POUCH and OUCH POUCH, JR. for “footwear, namely,
elastic fabric and polymer gel products designed to
protect areas of a dancer's foot” in International
Class 25;7 and

OUCHLESS for “hair accessories, namely, elastic hair
bands and ponytail holders” in International Class 26.

Applicant argues that “[t]hese multiple third party
registrations...are highly probative in this case to show
that otherwise distinguishable marks containing this
terminology can co-exist in the marketplace without a
likelihood of confusion as to the source of goods.” Brief,
(unnumbered) p. 4.
We find applicant’s reliance on the few third-party
registrations to be misplaced. First, only one of the
registrations identifies an article of clothing. Second,
and more importantly, in terms of demonstrating the
strength of a mark, absent evidence of actual use, third-
party registrations have little probative value because
they are not evidence that the marks are in use on a
commercial scale or that the public has become familiar
with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476
F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing
public is not aware of registrations reposing in the U.S.

7 Registrations Nos. 2597196 and 2597192, respectively, are owned
by the same entity. The word POUCH is disclaimed in both
registrations.

Serial No. 76682440
11
Patent and Trademark Office). Simply put, there is no way
an assessment can be made as to what, if any, impact those
marks may have made in the marketplace. However, even if
marks which consist of or contain the term OUCH in
connection with clothing are considered to be weak, they
are entitled to protection where confusion is likely. King
Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 109 (CCPA 1974).
In light of the foregoing, we conclude that consumers
familiar with registrant’s clothing goods sold under its
above-referenced mark would be likely to believe, upon
encountering applicant’s identical goods sold under his
mark that the goods originated with or are associated with
or sponsored by the same entity.
Lastly, to the extent that there is any doubt as to
whether the overall degree of similarity of the parties’
marks is sufficient for purposes of creating a likelihood
of confusion, that doubt is required to be resolved in
favor of the prior registrant. See In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988);
and In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
165, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.