Marcellous Thornton III, Monwell Valdez Madison and Derrick Allen

Trademark Trial and Appeal Board

Oct 26, 2016

No. 86478609 (T.T.A.B. Oct. 26, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: October 26, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re
Marcellous Thornton III,
Monwell Valdez Madison
and Derrick Allen
_____

Serial No. 86478609

Andria Allen for Marcellous Thornton III, Monwell Valdez Madison
and Derrick Allen.
April Roach, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Cataldo, Shaw and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Marcellous Thornton III, Monwell Valdez Madison, and Derrick Allen (jointly
“Applicant”) seek registration on the Principal Register of the mark Outcast MC (in
standard characters) for
Athletic apparel, namely, shirts, pants, jackets, footwear,
hats and caps, athletic uniforms; Belts; Bottoms; Head
wraps; Headbands for clothing; Jackets; Leather belts;
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Tops; Tops for motorcycle riders; Wearable garments and
clothing, namely, shirts, in International Class 25.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resemble the mark OUTKAST (in typed form)2 for “clothing for
men, women and children namely, pants, jumpers, shorts, shirts, t-shirts, tank tops,
sweatshirts, sweatpants, blouses, dresses, sweaters, caps, hats, underwear, briefs,
sleepwear, loungewear, stockings, leggings, footwear, cloth[sic]”3 as to be likely to
cause confusion, mistake or deception.
When the refusal was made final, Applicant appealed. We affirm the refusal to
register.
I. Evidentiary Issue
As a preliminary matter, the Examining Attorney has objected to Applicant’s
reference to “over 400 different registered marks containing the lettering ‘MC’” in the
request for reconsideration filed on March 14, 2016.4 The basis for the objection is
that applicant did not submit copies of the registrations with the request for
reconsideration. The general rule is that “merely listing third-party registrations is

1 Application Serial No. 86478609 was filed on December 12, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
2 It is noted that prior to November 2, 2003, “standard character” drawings were known as
“typed” drawings. A typed mark is the legal equivalent of a standard character mark. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012).
3 Registration No. 2731201 issued July 1, 2003; renewed.
4 Applicant referred to “over 400” registrations but did not provide copies of any of the
registrations.
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insufficient to properly make them of record.” In re Compania de Licores
Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012). Further, merely
referring to a number of registrations without providing status and title copies of each
is insufficient to make them of record.
Accordingly, Applicant’s reference to “over 400 different registered marks
containing the lettering ‘MC,’” will not be considered.
II. Discussion
Our determination of the issue of likelihood of confusion is based on an analysis
of 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). See
also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997).
A. Similarity or dissimilarity of the goods, the channels of trade and the
class of customers.
We start our analysis with the second and third du Pont factors, the similarity of
the goods, the channels of trade, and the class of customers. When determining the
relationship between the goods,
[i]t is well settled that the issue of likelihood of confusion
between applied-for and registered marks must be
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determined on the basis of the goods as they are identified
in the involved application and cited registration, rather
than on what any evidence may show as to the actual
nature of the goods, their channels of trade and/or classes
of purchasers.
In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). See also Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161-1162 (Fed. Cir. 2014).
Applicant’s goods are identified as “athletic apparel, namely, shirts, pants,
jackets, footwear, hats and caps, athletic uniforms; belts; bottoms; head wraps;
headbands for clothing; jackets; leather belts; tops; tops for motorcycle riders;
wearable garments and clothing, namely, shirts” and the goods in the cited
registration are identified as “clothing for men, women and children namely, pants,
jumpers, shorts, shirts, t-shirts, tank tops, sweatshirts, sweatpants, blouses, dresses,
sweaters, caps, hats, underwear, briefs, sleepwear, loungewear, stockings, leggings,
footwear, cloth.”
Both the application and the registration include “shirts” “pants,” and “footwear.”
These goods are legally identical. As a result, if we find there is a likelihood of
confusion as to these goods, it is not necessary to consider likelihood of confusion with
respect to the rest of the goods in the application. See, e.g., Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (If there
is a likelihood of confusion involving any of the goods set forth in the application and
cited registration, the refusal applies to all of the goods in the same class).
Applicant argues that “[t]he applied for mark OUTCAST MC is marketed and
oriented to a specific group of individuals e.g. Motor Cycle enthusiast [sic] whereas
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the registered mark OUTKAST is largely marketed towards individuals in the hip
hop industry and those that are fans of the widely known music group.” Appeal Brief,
7 TTABVUE 8. Applicant’s contentions about the use of both its mark and the cited
mark are irrelevant to this proceeding since we are bound by the identification of
goods which does not restrict the nature of the goods, their channels of trade and/or
classes of purchasers.5 Cf. In re i.am.symbolic, LLC, 116 USPQ2d 1406, 1410 (TTAB
2015) (Language in identification of goods that goods are “associated with William
Adams, professionally known as ‘will.i.am’” does not impose “a meaningful limitation
on Applicant’s goods in any fashion, most especially with respect to either trade
channels or class of purchasers.”)
Accordingly, we find the goods to be identical-in-part. “[I]t is well established that,
absent restrictions in the application and registration, [identical] goods and services
are presumed to travel in the same channels of trade to the same class of purchasers.”
In re Viterra Inc., 671 F3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) quoting
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005
(Fed. Cir. 2002). Therefore, Applicant’s goods are presumed to be sold in the same
channels of trade and to the same customers.
Accordingly, the second and third du Pont factors strongly favor a finding of
likelihood of confusion.

5 Applicant also asserts that purchasers of its goods are sophisticated. (Appeal Brief, 7
TTABVUE 8) Contrary to these assertions we find clothing items, i.e. shirts, pants, and
footwear, are purchased by ordinary purchasers.
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B. Similarity or dissimilarity of the marks.
We next determine the similarity or dissimilarity of the marks in their entireties,
keeping in mind that “[w]hen marks appear on virtually identical goods or services,
the degree of similarity necessary to support a conclusion of likelihood of confusion
declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992).
In comparing the marks we must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (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 Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Moreover, the emphasis
must be on the recollection of the average purchaser who normally retains a general,
rather than specific, impression of trademarks. In re Cynosure, Inc., 90 USPQ2d 1644,
1645 (TTAB 2009), citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975).
While “the similarity or dissimilarity of the marks is determined based on the
marks in their entireties … 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
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the ultimate conclusion rests on a consideration of the marks in their entireties.” In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant’s mark, OUTCAST MC contains the phonetic equivalent of the cited
mark OUTKAST. Despite the slight misspelling of the word OUTCAST in the cited
mark, the terms are virtually the same. See Viterra, 101 USPQ2d at 1912 (XCEED
and X-SEED are phonetic equivalents).
The term MC in Applicant’s mark, which is disclaimed does little to alter the
commercial impression of Applicant’s mark.6 It is well-settled that disclaimed matter
may have less significance in likelihood of confusion determinations. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000), quoting, In re National Data Corp., 224 USPQ at 752 (“Regarding descriptive
terms, this court has noted that the descriptive component of a mark may be given
little weight in reaching a conclusion on the likelihood of confusion”); In re Dixie Rests.
Inc., 41 USPQ2d at 1533-34; In re Code Consultants, Inc., 60 USPQ2d 1699, 1702
(TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s
commercial impression”). Moreover, when analyzing literal marks, “[i]t is often the
first part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered.” Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,

6 There is no evidence that the majority of the purchasing public would identify MC as an
abbreviation for “motor cycle.” Further, since MC is the subordinate element in Applicant’s
mark, confusion may also be likely for those members of the purchasing public who are
familiar with the abbreviation.
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1897 (TTAB 1988) (Likelihood of confusion found between KIDWIPES and KID
STUFF for pre-moistened disposable towelettes).
When we compare the marks OUTCAST MC and OUTKAST in their entireties,
and give greater weight to the dominant elements, we conclude that the marks are
similar in appearance, sound, meaning and overall commercial impression. See Palm
Bay Imports, 73 USPQ2d at 1692 (affirming the Board’s holding that
contemporaneous use of appellant’s mark, VEUVE ROYALE, for sparkling wine, and
appellee’s marks, VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN, for
champagne, is likely to cause confusion, noting that the presence of the “strong
distinctive term [VEUVE] as the first word in both parties’ marks renders the marks
similar, especially in light of the largely laudatory (and hence non-source identifying)
significance of the word ROYALE”); In re Chatam Int’l Inc., 380 F.3d 1340, 1343, 71
USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Viewed in their entireties with non-dominant
features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and
JOSE GASPAR GOLD for tequila] become nearly identical.”); and Hewlett-Packard
Co. v. Packard Press, Inc., 281 F.3d 1261, 1266, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002) (finding that even though applicant’s mark PACKARD TECHNOLOGIES (with
TECHNOLOGIES disclaimed) does not incorporate every feature of opposer’s
HEWLETT PACKARD marks, a similar overall commercial impression is created).
Thus, the first du Pont factor weighs in favor of a finding of likelihood of confusion.
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C. Conclusion.
Having considered all the evidence and arguments on the relevant du Pont
factors, we find that Applicant’s mark OUTCAST MC, in standard characters, is
likely to cause confusion with the cited mark OUTKAST, in typed format, when used
in connection with “shirts, pants and footwear.” As such, we find that there is a
likelihood of confusion between Applicant’s mark OUTCAST MC for athletic apparel,
namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; belts;
bottoms; head wraps; headbands for clothing; jackets; leather belts; tops; tops for
motorcycle riders; wearable garments and clothing, namely, shirts” and the cited
mark OUTKAST for “clothing for men, women and children namely, pants, jumpers,
shorts, shirts, t-shirts, tank tops, sweatshirts, sweatpants, blouses, dresses, sweaters,
caps, hats, underwear, briefs, sleepwear, loungewear, stockings, leggings, footwear,
cloth.”
Decision: The refusal to register Applicant’s mark Outcast MC in standard
characters is affirmed.