Lawman Holdings Limited

Trademark Trial and Appeal Board

Jan 10, 2006

No. 78405703 (T.T.A.B. Jan. 10, 2006)

Mailed:
January 10, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lawman Holdings Limited
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Serial No. 78405703
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James M. Lee of Lee & Tran for Lawman Holdings Limited.

Bridgett G. Smith, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Quinn, Bucher and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On April 21, 2004, Lawman Holdings Limited (applicant)
filed an intent-to-use application to register PETROJEANS,
in standard character form, on the Principal Register for
goods now identified as, “wearing apparel, namely, jeans,
pants, shorts, skirts, jackets, outerwear, woven shirts, t-
shirts, blouses, dresses, hats, headwear, footwear, belts
for sale through retail channels of trade excluding truck
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78405703
2
stops and the marketing, sales and trade channels for truck
stops” in International Class 25.1
The examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
based on a likelihood of confusion with the mark in Reg.
No. 1615532,2 owned by Petro Stopping Centers, L.P., as
shown below, for goods in International Class 25 identified
as, “work shirts, t-shirts, polo shirts, sweaters, overalls
and hats,” as well as goods and services in International
Classes 9, 12, 14, 16, 21 and 37.

The registration claims both first use anywhere and first
use in commerce as to the Class 25 goods in October 1984.

1 Applicant amended the identification of goods to insert the
following trade-channel limitation in response to the examining
attorney’s first action: “. . . for sale through retail
channels of trade excluding truck stops and the marketing,
sales and trade channels for truck stops.”
2 The examining attorney had refused registration also based on
Reg. No. 1203914 for PETRO STOPPING CENTER owned by the same
registrant. Although the examining attorney explicitly withdrew
the refusal as to the second registration in her final refusal,
she refers to it in her brief. Because the refusal as to the
second registration was withdrawn, we will not address it in this
opinion.

Ser No. 78405703
3
The registration also includes the following statement:
“The mark is lined for the colors green and orange.” The
registration issued on October 2, 1990, and registrant has
renewed the registration which is currently active.
Applicant responded to the refusal; the examining
attorney made the refusal final; and applicant filed this
appeal. For the reasons indicated below, we affirm.
Section 2(d) of the Act precludes registration of an
applicant’s mark “which so resembles a mark registered in
the Patent and Trademark Office . . . as to be likely,
when used on or in connection with the goods of the
applicant, to cause confusion . . .” Id. The opinion in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1977) sets forth the factors we may
consider in determining likelihood of confusion. Here, as
is often the case, the crucial factors are the similarity
of the marks and the similarity of the goods of the
applicant and registrant. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”). Below we will discuss all factors as to
which applicant argued or presented evidence.
Ser No. 78405703
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Comparison of the Goods and Channels of Trade
Applicant argues that its goods differ from those of
the registrant. In point of fact, applicant’s argument
focuses nearly exclusively on the trade channels for the
registrant’s goods. As applicant states, “Quite simply,
there is no way that the same consumer is going to find
similar items with PETRO and with PETROJEANS in the same
place. Petro Stopping Centers [registrant] puts its mark
PETRO on most of the items found at its truck stops, in the
same way that a retail store or restaurant may put their
name on a shirt and sell it solely in that store.
PETROJEANS would not be found in a truck stop (especially
since the applicant has excluded truck stops and those
channels of trade) any more than a sweat shirt with an
orange and green PETRO design would be found in a
department store.” Applicant extrapolates from the
assumptions expressed here and argues at length regarding
the alleged distinctions between its marketing and trade
channels and registrant’s. To support its assumptions it
provides a few pages allegedly from the web site of the
registrant; the pages provide limited information regarding
“Petro Stopping Centers,” a chain of highway rest stops.
Ser No. 78405703
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In comparing the goods, we must consider the goods as
identified in the application and registration. CBS Inc.
v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB
1991). A simple comparison of the goods identified in the
application and registration reveals that both include
identical items, t-shirts and hats. Applicant’s goods also
include items, such as, woven shirts, which could include
items identified in the registration, such as, work shirts
and polo shirts. Furthermore, both the application and the
cited registration include a variety of clothing items,
and, as the examining attorney notes, the Board has
previously found various clothing items to be related.
See, e.g., Jockey Intl., Inc. v. Mallory & Church Corp., 25
USPQ2d 1233, 1236 (TTAB 1992); In re Pix of America, Inc.,
225 USPQ 691, 692 (TTAB 1985) and cases cited therein.
Therefore, there is no question but that the goods of the
applicant and registrant, as identified in the application
and registration, are, at least in part, identical and
otherwise overlapping or related.
Turning to the focus of applicant’s argument, the same
applies with regard to the channels of trade for the goods.
That is, “. . . we must assume, absent any restrictions in
the identification of goods of the cited registration, that
Ser No. 78405703
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the goods move in all of the channels of trade which are
normal for such goods.” In re Pix of America, Inc., 225
USPQ at 691, citing Paula Payne Products Co. v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973).
Consequently, applicant’s restriction of its own trade
channels in the identification of goods in the application
is futile because the cited registration includes no
restrictions as to trade channels. Furthermore, we may not
consider extraneous evidence, such as the Internet web
pages applicant provided allegedly from registrant’s web
site, to interpose restrictions to registrant’s trade
channels not stated in the registration.
Accordingly, we conclude that the goods of applicant
and registrant are identical, at least in part, and
otherwise related, and that the goods of both applicant and
registrant move in the same or overlapping channels of
trade.
Furthermore, we note that, “the degree of similarity
[between the marks] necessary to support the conclusion of
likely confusion declines” when the goods are identical.
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert.
denied, 506 U.S. 1034 (1992).
Ser No. 78405703
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The Marks
Applicant argues that the marks differ when viewed in
their entireties and asserts that the examining attorney
failed to view the marks in their entireties, as required.
The examining attorney argues principally that “PETRO” is
the only distinctive word element, and therefore, the
dominant element in the cited mark, and that “PETRO” is the
first and only distinctive element, and therefore, the
dominant element in applicant’s mark. The examining
attorney argues further that the marks are similar overall
because they share the same dominant element and because
the elements which differ are insufficient to distinguish
the marks.
To determine whether the marks are confusingly
similar, we must consider the appearance, sound,
connotation and commercial impression of each mark. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005).
First, we must establish which marks, or versions of
the marks, must be compared. The registered mark is in
special form, as show above. Therefore, the form shown
above is the operative version for purposes of our
comparison. Applicant’s mark is in standard-character
Ser No. 78405703
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form. Applicant argues, “PETRO, as registered by Petro
Stopping Centers, has block letters with orange and green
stripping as a background, whereas applicant’s mark,
PETROJEANS, is a typed word mark with no other distinctive
features. These marks side by side do not create the same
impression nor do they look like they are from the same
source.”
Implicit in applicant’s argument is an assumption that
its mark is limited to the generic “typed” display of the
standard-character form. This assumption is incorrect.
When a mark is displayed in standard-character form we must
consider all reasonable manners in which the word mark
could be depicted. See Jockey Intl., Inc. v. Mallory &
Church Corp., 25 USPQ2d at 1236 and cases cited therein.
Furthermore, applicant’s suggestion that a “side by
side” comparison is appropriate is also misplaced. Such a
comparison is not consistent with the way marks are
encountered in the marketplace. Rather, “. . . the
emphasis must be on the average purchaser, who normally
retains a general rather than a specific impression of
trademarks.” Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975) and cases cited therein.
We agree with the examining attorney. That is, we
conclude that “PETRO” is the only distinctive word element
Ser No. 78405703
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in both applicant’s mark and the cited registered mark, and
therefore, the dominant element in both marks. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). We note further that “PETRO” is the only
literal element in the cited registered mark and the first
literal element in applicant’s mark. Presto Products, Inc.
v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).
In Presto the Board considered the significance of two
marks, KIDWIPES and KID STUFF, starting with the same term,
“. . . [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.”
Id. Here it is of particular importance because applicant
merely adds a generic term to the registered mark. This
addition is insufficient to distinguish the marks.
Applicant also implies that the stylized display of
the registered mark, including the orange and green
“stripping” or rectangular background, distinguishes the
marks. This “design” does nothing to either diminish the
dominance of “PETRO” in the cited mark or to distinguish
the marks overall. In re Dixie Restaurants, Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997).
Applicant stated its core argument regarding the marks
as follows, “However, it appears that the [examining}
Ser No. 78405703
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attorney completely ignored the registered mark and the
applicant’s mark in their entirety and focused solely on
the first part of each mark, ‘PETRO.’” As the Court of
Appeals for the Federal Circuit observed in National Data,
“. . . 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 National Data Corp., 224 USPQ at
751. In fact, the examining attorney was careful to point
out that she was considering the marks in their entireties.
Accordingly, we have considered the marks overall and
conclude that “PETRO” is the dominant word element in the
marks. In re Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB
1994). We conclude further that the marks are highly
similar in appearance, sound, connotation and commercial
impression because they share the same dominant word
element and lack any significant distinguishing features.
Other Factors
Applicant also presents arguments related to the du
Pont factors which address: ”The Conditions under which
and buyers to whom sales are made,” and “The extent of
Ser No. 78405703
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potential confusion (de minimus (sic) or substantial).”
However, in each instance applicant again assumes certain
restrictions with regard to the registrant’s goods and its
channels of trade. For example, as to the former factor
applicant states, “. . . it is highly unlikely that the
person will think for one second that the jeans that they
are trying on in the mall that say PETRO is (sic) from the
same source as the t-shirt they bought at a gas station
with the orange and green PETRO.” And as to the latter
factor, applicant states, “Can clothing sold in department
stores possibly threaten the commercial interests of
highway truck stops?” There is no justification for
assuming restrictions not stated in the registration under
these factors for the same reasons we provided above in
discussing the goods and the channels of trade. See In re
Pix of America, Inc., 225 USPQ at 691. Accordingly, we
find these arguments likewise unpersuasive.
Conclusion
After considering all of applicant’s arguments and
evidence bearing on the du Pont factors, we conclude that
there is a likelihood of confusion between applicant’s mark
and the cited registered mark principally because the goods
of applicant and registrant and the channels of trade for
those goods, as specified in the application and
Ser No. 78405703
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registration, are identical at least in part, and because
the marks are highly similar.
Decision: The refusal to register applicant’s mark
under Section 2(d) of the Act is affirmed.