Kohl’s Department Stores, Inc.

Trademark Trial and Appeal Board

Dec 11, 1997

No. 74528803 (T.T.A.B. Dec. 11, 1997)

Hearing:
April 8, 1997
Paper No. 19
CEW
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB DEC 11, 97
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Kohl’s Department Stores, Inc.
___________
Serial No. 74/528,803
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Norman H. Zivin of Cooper & Dunham for applicant.
Jason Turner, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
____________
Before Cissel, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Kohl’s Department Stores, Inc. has filed a trademark
application to register the mark M SPORT for “athletic
footwear for men, women and children; casual socks for men,
women and children.”1
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15

1 Serial No. 74/528,803, in International Class 25, filed May 24, 1994,
based on an allegation of a bona fide intention to use the mark in
commerce. The application includes a disclaimer of SPORT apart from the
mark as a whole.
Serial No. 74/528,803
2
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark M.M. SPORT, previously registered for
“clothing, namely, men’s, women’s and children’s tops,
bottoms, jackets, dresses, shirts, sweatshirts, sweatpants
and vests,”2 that, if used on or in connection with
applicant’s goods, it would be likely to cause confusion or
mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, and an oral hearing
was held. We affirm the refusal to register.
In the analysis of likelihood of confusion in this
case, two key considerations are the similarities between
the marks and the similarities between the goods. Turning,
first, to the goods, we agree with the Examining Attorney
that applicant’s identified footwear and socks are related
to the articles of clothing identified in the registration.
The evidence submitted by the Examining Attorney of catalog
excerpts3 and third-party registrations4 suggests that such

2 Registration No. 1,785,643 issued August 3, 1993, to Major Motion
Sportswear, in International Class 25. The registration includes a
disclaimer of SPORT apart from the mark as a whole.
3 The evidence includes a page from a Talbot’s mail order catalog
featuring both casual Talbot’s pants and Cole Haan canvas sneakers;
pages from an Eddie Bauer mail order catalog featuring different styles
of winter boots; pages from an L.L. Bean mail order catalog featuring
shorts, pants, tops, Saucony fitness walkers, and hiking boots (some by
L.L. Bean and some by other manufacturers). We have not considered
several additional excerpts from unidentified sources submitted by the
Examining Attorney.
Serial No. 74/528,803
3
goods are of a type which may emanate from a single source.
See, In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467
(TTAB 1988).
We are not persuaded otherwise by applicant’s argument
that the goods and the trade channels are different, and
that “[c]onsumers will not be faced with both marks in any
retail outlet since applicant’s goods are only sold in its
retail stores and applicant does not sell registrant’s
goods.” Neither the application nor the cited registration
contains such limitations to the identifications of goods.
Rather, both identifications of goods are broadly worded.
Therefore, we must presume that the goods of the applicant
and registrant are sold in all of the normal channels of
trade to all of the normal purchasers for goods of the type
identified, including department stores and other clothing
and footwear retailers. See, Canadian Imperial Bank v.
Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
That is, we must presume that the goods of applicant and
registrant are sold through the same channels of trade to
the same classes of purchasers.
Finally, we note that goods or services need not be
identical or even competitive in order to support a finding

4 Each of the submitted registrations, based on use in commerce,
includes, in its identification of goods, items listed in both the
application and registration herein.
Serial No. 74/528,803
4
of likelihood of confusion. Rather, it is enough that goods
or services are related in some manner or that some
circumstances surrounding their marketing are such that they
would be likely to be seen by the same persons under
circumstances which could 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 between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein.
Considering, next, the marks, we note that registrant’s
mark consists of “M.M.” followed by the word SPORT, whereas
applicant’s mark consists of a single M followed by the
identical word, SPORT.
The Examining Attorney contends, essentially, that the
differences in sound, appearance and connotation between the
marks are insubstantial and, thus, the marks engender
significantly similar overall commercial impressions.
Applicant disagrees, contending that the additional “M” and
the punctuation in registrant’s mark create a distinct
appearance, result in a different pronunciation and “tend to
stimulate a different response in the mind of the
purchaser.” Applicant argues that the Examining Attorney
has improperly dissected the mark, which should be
considered in its entirety; and that there are third-party
Serial No. 74/528,803
5
registrations in connection with clothing “which utilize the
letter ‘M’ in combination with another letter and the word
‘SPORT,’ with the word ‘SPORT’ disclaimed.”5
It is a well-established principle 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, provided the
ultimate conclusion rests on consideration of the marks in
their entireties.” In re National Data Corp., 732 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this case, we
find that the marks are substantially similar in sound,
appearance and connotation. We are not persuaded by
applicant that its single “M” as compared to registrant’s
double “M” and punctuation sufficiently distinguish
applicant’s mark from registrant’s mark in either sound or
appearance.
We agree with the Examining Attorney that the principal
cases cited6 by the applicant in support of its position

5 In support of its position, applicant submitted, with its request for
reconsideration, excerpts regarding third-party registrations from a
commercial database. In order to make registrations of record, soft
copies of the registrations themselves, or the electronic equivalent
thereof, i.e., printouts of the registrations taken from the electronic
records of the Patent and Trademark Office’s (PTO) own data base, must
be submitted. See, Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB
1992). Further, the Examining Attorney has objected to this evidence.
As the third-party registrations have not been made of record properly,
we give them no consideration. However, we hasten to add that our
decision would remain the same if we had considered these registrations.
Serial No. 74/528,803
6
that the marks engender different commercial impressions are
inapposite. Unlike the present case, in each of those
cases, while the marks differed by only one letter, one of
the marks was likely to be viewed by consumers as a common
word so that the connotation of that mark differed
significantly from the connotation of the other mark at
issue. Such is not the case herein where the marks differ
only by the repetition of the one letter comprising the
first term in the mark. There is no connotation particular
to “M” or “M.M.,” either alone or in combination with SPORT,
that is likely to distinguish these marks for consumers.
Further, the test of likelihood of confusion is not
whether the marks can be distinguished when subjected to a
side-by-side comparison. The issue is whether the marks
create substantially the same overall commercial impression.
Visual Information Institute, Inc. v. Vicon Industries Inc.,
209 USPQ 179 (TTAB 1980). Due to the consuming public’s
fallibility of memory, the emphasis is on the recollection
of the average customer, who normally retains a general
rather than a specific impression of trademarks or service
marks. Spoons Restaurants, Inc. v. Morrison, Inc., 23
USPQ2d 1735 (TTAB 1991), aff’d. No. 92-1086 (Fed. Cir. June
5, 1992). Neither applicant’s nor registrant’s mark

6 Gulf States Paper Corp. v. Crown Zellerbach Corp., 417 F.2d 795, 163
USPQ 589 (CCPA 1969); and B.V.D. Licensing Corp. v. Body Action Design,
Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir. 1988).
Serial No. 74/528,803
7
includes a design element, nor is either mark solely a
single letter or a combination of letters.7 Viewing the
marks in their entireties, M SPORT and M.M. SPORT, we
believe that any distinctions created by the additional M
and punctuation in registrant’s mark are minimal such that,
upon recall, a consumer is likely to be confused. In this
case, we believe that the overall commercial impressions of
these two marks are substantially similar.
In conclusion, in view of the substantial similarity in
the commercial impressions of applicant’s mark, M SPORT, and
registrant’s mark, M.M. SPORT, their contemporaneous use on
the related goods involved in this case would be likely to
cause confusion as to the source or sponsorship of such
goods.

7 This case is distinguishable from the line of cases involving a single
letter design mark, such as In re Burndy, 300 F.2d 938, 133 USPQ 196
(CCPA 1962), wherein the court found that the subject marks, although
comprised of the identical single letter in stylized form, were
essentially design marks not capable of being spoken and the differences
in the designs of the respective marks were sufficient to distinguish
the marks. To the extent that applicant is arguing that the “M” and
“M.M.” portions of the parties’ marks are predominant, this case is more
analogous to the case of Weiss Associates, Inc. v. HRL Associates, Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990), wherein the court, in
finding a likelihood of confusion, noted that the marks therein, TMS and
TMM, are unpronounceable letter combinations which may be inherently
difficult to remember and thus more susceptible of confusion or mistake
than are word marks, particularly where the marks therein differed only
by the last letter.
Serial No. 74/528,803
8
Decision: The refusal under Section 2(d) of the Act is
affirmed.
R. F. Cissel
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board