Kenneth T. Riddleberger

Trademark Trial and Appeal Board

Dec 12, 2014

No. 85637348 (T.T.A.B. Dec. 12, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kenneth T. Riddleberger
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Serial Nos. 85632364 and 856373481
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Matthew H. Swyers of The Trademark Company PLLC,
for Kenneth T. Riddleberger.
Susan B. Allen, Acting Senior Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Zervas, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Kenneth T. Riddleberger (“Applicant”) seeks registration on the Principal
Register of the marks 8UP2 and 8UPSPORTS,3 both in standard character format

1 Because the Board deems the cases to have common questions of fact and of law, and the
records are largely identical, the appeals are hereby consolidated. See, e.g., In re Anderson,
101 USPQ2d 1912, 1915 (TTAB 2012) (Board sua sponte consolidated two appeals).
2 Application Serial No. 85637348, filed May 29, 2012, pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging January 1, 2009 as the date of first use
anywhere and April 11, 2009 as the date of first use in commerce.
3 Application Serial No. 85632364, filed May 22, 2012, pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging January 5, 2009 as the date of first use
anywhere and April 11, 2009 as the date of first use in commerce. The application includes
a statement that “The word(s) ‘8UPSPORTS’ has no meaning in a foreign language.”
Serial Nos. 85632364 and 85637348
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for, as amended, “Coats, t-shirts, head wear, long sleeve t-shirts, short sleeve shirts,
tank tops, sports bras, sweatshirts, sweatpants, thongs, hoods, pants, jeans, shorts,
bathing suits, hats, caps, balaclavas, socks, sweatbands, wrist bands, head bands,
jackets, cloth bibs, chaps, cowboy hats, belts, underwear, boxers, pajamas, lingerie,
rain jackets, rain pants, polo shirts, sweaters, vests, jerseys, gloves, scarves, shoes,
flip flops, sandals, outerwear, namely, ponchos, face coverings, namely, knit face
masks, wetsuits, booties, sun glasses, backpacks, dress shirts, jock straps, athletic
uniforms, footwear, cleats, golf shoes, skirts, blouses” in International Class 25.
In each application, Applicant claimed ownership of a
Supplemental Register registration for the mark displayed at right,
for “Coats, t-shirts, head wear, long sleeve t-shirts, short sleeve
shirts, tank tops, sports bra, sweatshirts, sweatpants, thongs,
hoods, pants, jeans, slacks, shorts, bathing suits, hats, caps, skull caps, balaclavas,
socks, sweatbands, wrist bands, head bands, jackets, cloth bibs, belt, underwear,
boxers, pajamas, lingerie, rain jacket, rain pants, polo shirt, sweater, vest, jerseys,
gloves, scarves” in International Class 25.4
During ex parte prosecution of the applications, in response to the Trademark
Examining Attorney’s inquiry regarding the meaning of the term “8UP,” Applicant

4 Registration No. 4103259, issued on February 21, 2012, alleging October 5, 2010 as the
date of first use anywhere and February 10, 2011 as the date of first use in commerce. The
description of the mark is as follows: “The mark consists of the number "8" with a face in
the upper portion and the letters "UP" in the lower portion.” Color is not claimed as a
feature of the mark.
Serial Nos. 85632364 and 85637348
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responded that the term had no significance in relation to the identified goods, nor
any meaning in a foreign language.
Registration was refused under Section 2(d) of the Trademark Act of 1946, 15
U.S.C. § 1052(d), on the ground that Applicant’s applied-for marks so resemble the
following two registered marks owned by two different individuals, that, when used
on or in connection with Applicant’s identified goods, it is likely to cause confusion
or mistake or to deceive:
Registration No. 3777317 issued April 20, 2010, owned by Ralph
Calebrese, for the mark displayed below on the Principal Register

for “Clothing, namely, T-shirts, Hats, Visors, Beanies, Sweatshirts,
Hooded Sweatshirts, Coats, Jackets, Gloves, Jeans, Polo shirts, Long
sleeve T-shirts, Wind Breakers, Sock Hats, Sweat Bands, Socks, Shorts,
Button up Shirts, Scarves, Sandals, Pants, Sweats, Tank Tops, Ski Mask,
Skirts, Underwear, Under Garments, Belts” in International Class 25
with a disclaimer of the word “APPAREL”; and

Registration No. 3905603 issued January 11, 2011, owned by Casey
Baldovin for the mark displayed below on the Principal Register

for “Sweat shirts; Swim wear; T-shirts” in International Class 25, with a
disclaimer of “CLOTHING.”

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When the refusals were made final, Applicant appealed. For the reasons set
forth below, we affirm the refusals to register.
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also In re Majestic Distilling Company, Inc., 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. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). These factors, and the other relevant du Pont factors, are
discussed below.
I. Goods/Trade Channels/Purchasers
We first consider the goods as they are identified in the involved applications
and cited registrations, as well as the similarity or dissimilarity of established,
likely to continue trade channels. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990) and Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002). It is undisputed that the involved applications
and cited registrations involve goods that are identical, at least in part as to “t-
shirts” and “sweatshirts.” Because the goods are legally identical in part, and
neither registration nor the involved applications contain any limitations on the
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channels of trade and classes of purchasers, we must presume that the channels of
trade and classes of purchasers are also the same. See Stone Lion, 110 USPQ2d at
1161; In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968)
(where there are legally identical goods, the channels of trade and classes of
purchasers are considered to be the same); American Lebanese Syrian Associated
Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB
2011). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion). We further note that the Trademark Examining Attorney
submitted evidence that clothing items of this type are typically sold in department
stores, such as Dillards or Nordstrom or via online retailers. Thus, the in part
identical nature of the goods and legal presumptions regarding the channels of
trade and purchasers weigh in favor of finding a likelihood of confusion.
II. The Marks
Next we turn to the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and 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). “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
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Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (“Coach
Servs. Inc.”).
Consistent with these principles, we observe that both Applicant’s and
Registrants’ marks are comprised, either in whole or in part, of the numerical and
literal phrase “8UP” and/or its phonetic equivalent “ATE UP.” Indeed, this phrase is
the lead portion of each mark, making it the dominant feature. See Palm Bay
Imports Inc., 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark
VEUVE CLICQUOT because “Veuve” is the first word in the mark and the first
word to appear on the label); Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering
the marks, consumers will first notice the identical lead word).
Our analysis however cannot be predicated on dissecting the marks into their
various components; that is, the decision must be based on the entire marks, not
just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,
212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). Consistent with this principle, we observe the
distinctions in terms of wording, namely the presence of the descriptive term
“sports” in Applicant’s mark 8UPSPORTS and “apparel” and “clothing” in each of
the cited marks, respectively. It is well established, however, that descriptive or
generic terms such as these are typically less significant or less dominant when
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comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997). As such, prospective consumers are more likely to focus on
the shared term “8UP” when encountering the marks.
We further acknowledge the stylized wording and presence of design elements in
Registrants’ marks. Nonetheless, it is more likely that prospective consumers will
overlook these distinctions and instead confuse the marks as originating from the
same source, given that they either contain or consist solely of the literal element
“8UP” or the phonetic equivalent thereof. It is well established 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 services;
therefore, the word portion is normally accorded greater weight in determining
whether marks are confusingly similar. In re Dakin’s Miniatures, Inc., 59 USPQ2d
1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow, 708 F. 2d 1579, 218 USPQ
198, 200 (Fed. Cir 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68
(TTAB 2011).
In addition, because Applicant applied to register his marks in standard
character form, Applicant’s’ marks, if registered, could potentially be used in any
stylized display or color scheme, including one that is identical to that used by
either Registrant. See Trademark Rule 2.52(a). That is to say, if Applicant’s mark
were registered, Applicant would have the right to use his standard character
marks 8UP and 8UPSPORTS in the same stylized font, size and shades of color as
depicted in each of the registered marks.
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Applicant contends that the Office acted inconsistently in permitting
registration of the two cited marks and not permitting the registrations of
Applicant’s marks. This argument is not persuasive because we are not privy to the
record of the prior registrations and are bound to make a decision based on the
record before us. See AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268,
269 (CCPA 1973); In re International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000);
and In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994).
We therefore agree with the Examining Attorney’s determination that
Applicant’s mark is similar in sound, appearance, connotation, and commercial
impression to the registered marks. This du Pont factor also weighs in favor of
finding a likelihood of confusion.
III. Lack of Actual Confusion
Applicant contends that it is unaware of any instances of actual confusion.
However, “[t]he fact that an applicant in an ex parte case is unaware of any
instances of actual confusion is generally entitled to little probative weight in the
likelihood of confusion analysis, inasmuch as the Board in such cases generally has
no way to know whether the registrant likewise is unaware of any instances of
actual confusion….” In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001).
Furthermore, there is no evidence that the nature and extent of Applicant’s and
Registrants’ actual use of their marks in the marketplace, including the extent of
any geographical overlap, has been so substantial so as to render the apparent
absence of actual confusion legally significant. See In re Thomas, 79 USPQ2d 1021,
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1028 (TTAB 2006); In re Continental Graphics Corp., 52 USPQ2d 1377 (TTAB
1999); Gillette Canada, Inc. v. Ranir, 23 USPQ2d 1768 (TTAB 1992). We therefore
find that this du Pont factor is neutral.
To the extent that there are any other relevant du Pont factors, we treat them as
neutral.
IV. Conclusion
After considering all of the evidence of record and arguments pertaining to the
du Pont likelihood of confusion factors, we find that the Trademark Examining
Attorney has carried the Office’s burden of showing a likelihood of confusion
between Applicant’s marks and the cited registered marks.
Decision: The Section 2(d) refusals to register Applicant’s marks are affirmed.