Roush Fenway Racing, LLC

Trademark Trial and Appeal Board

Sep 3, 2008

No. 75932713 (T.T.A.B. Sep. 3, 2008)

Mailed: September 3, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Roush Fenway Racing, LLC
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Serial No. 75932713
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Jesse B Ashe III of Summa & Allan for Roush Fenway Racing,
LLC.

David H Stine, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
____________

Before Walters, Bucher and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Roush Fenway Racing, LLC has filed an application to
register the mark shown below on the Principal Register for
“Clothing, namely, tops, hats, night shirts, shirts, socks,
sweat shirts, T-shirts, tank tops, caps, jackets, shorts,
visors, sweat pants, sweaters, sweat suits, suspenders,
pants, and bibs, all related to the field of professional
automobile racing,” in International Class 25.1

1 Serial No. 75932713, filed March 1, 2000, based on use of the mark in
commerce, alleging first use and use in commerce as of June 1, 1999.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 75932713

2

The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the mark SEVENTEEN, previously registered for “shirts,”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. We affirm the refusal
to register.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood 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 Company, 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).

2 Registration No. 2693602 issued March 4, 2003, and is owned by Roush
Fenway Racing LLC.

Serial No. 75932713

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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 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 the cases cited therein.
We consider, first, the goods involved in this case.
Applicant’s main point in arguing that the goods are
different is that the clothing identified by its mark is
race-oriented apparel marketed in connection with
professional automobile racing to “middle-aged male race
fans” (brief, p. 6); whereas, applicant contends that
registrant’s goods are marketed to teenage girls interested
in fashion. However, we must consider the question of
likelihood of confusion based on an analysis of the goods or
services recited in applicant’s application vis-à-vis the
goods or services recited in the registration, rather than
what the evidence shows the goods or services actually are.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987). See also, Octocom
Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp.
v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
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In this regard, registrant’s goods, identified as “shirts,”
encompass shirts of all types for all usual purchasers of
shirts, including teenage girls interested in fashion and
racing fans, related to all fields, including both fashion
and racing. Applicant’s “night shirts,” “shirts,” “sweat
shirts,” “t-shirts,” and “tank tops” are all different types
of “shirts” and, as such, are encompassed within the broad
identification of goods in the cited registration.
Therefore, applicant’s goods are, in part, legally identical
to registrant’s “shirts.”
While the application is limited to the specified
clothing “related to the field of professional automobile
racing,” this limitation does not take applicant’s goods out
of the purview of those in the cited registration because
registrant’s “shirts” encompasses such goods. In view of
the identity of the shirt items in applicant’s
identification of goods, it is unnecessary to consider
whether or to what extent the other clothing items listed
therein are related to registrant’s “shirts.”
The analysis of the trade channels, the class of
purchasers and the level of care involved in purchasing the
respective goods leads to the same result. Applicant’s
goods are presumed to travel through all normal trade
channels for the specified clothing related to professional
automobile racing, and to all of the usual purchasers of
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such goods. Again, in view of the lack of limitations on
the goods in the cited registration, applicant’s identified
trade channels and purchasers are encompassed by those for
the registrant’s goods. Applicant’s evidence of the nature
of the actual goods identified by the respective marks in
the marketplace is not relevant to our determination of
registrability.
Additionally, applicant argues that the purchasers of
its goods are sophisticated, knowledgeable consumers who
purchase these items with care. Applicant does not
establish this allegation in the record and, certainly, the
purchasers of such clothing items encompass the general
consumer who may or may not be exercising care in such a
purchase. Moreover, even sophisticated purchasers are not
immune from confusion when the marks are as similar as these
marks, as discussed below, and the goods with which they are
used are legally the same. See In re General Electric
Company, 180 USPQ 542 (TTAB 1973).
Turning, next, to consider the marks, we note that
“when marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). We must determine
whether applicant’s mark and the registered mark, when
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viewed in their entireties, are similar in terms of
appearance, sound, connotation and commercial impression.
The test 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 impressions that confusion as to the source of
the goods or services 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).
Furthermore, although the marks at issue must be considered
in their entireties, it is well settled that one feature of
a mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
The registered mark is the standard character word
SEVENTEEN, which means that no particular format is claimed.
Applicant’s mark is a stylized numeral “17.” Certainly,
these marks are aurally identical and they have the same
connotation, i.e., the number seventeen (“17”). Applicant’s
contentions that these two marks have different connotations
pertaining either to automobile racing or fashion are not
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well taken. We must consider the connotation of the marks
in the context of the identified goods and, as previously
stated, applicant’s shirts pertaining to professional
automobile racing are encompassed within registrant’s
“shirts.” Extrinsic evidence that may tend to limit the
scope of registrant’s goods is essentially a collateral
attack on the cited registration, which is not appropriate
in this context, nor is such evidence probative of the
registrability of applicant’s mark.
We also do not find the stylization of applicant’s mark
a distinguishing factor. First, it consists merely of a
relatively non-distinctive font style. Second, registrant’s
mark is in standard character format and, thus, registrant
could conceivably display its mark in any lettering style,
including the same font used to display the number “17” in
applicant’s mark. 37 C.F.R. § 2.52(a); In re Pollio Dairy
Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988) (when
registering a mark in block letters, registrant remains free
to change the display of its mark at any time). See e.g.,
Sunnen Products Co. v. Sunex Int’l Inc., 1 USPQ2d 1744 (TTAB
1987) (styling of letters is irrelevant to the issue of
confusion where applicant seeks to register mark without any
special form of lettering or design).
While applicant’s mark, which represents the number
“17” as a numeral, is visually different from the registered
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mark, which represents the same number as a word, we find
that the marks are more similar than dissimilar and, in
fact, they have substantially similar commercial
impressions.
In its reply brief, applicant states that, while there
is case law that presumes registrant’s shirts encompass
those directed to the field of professional racing, “the
Board cannot ignore the commercial realities of the
publishing and auto racing industries, and expect the
publisher of SEVENTEEN magazine to offer shirts targeting
NASCAR fans [or] that applicant … offers fashion advice to
teenagers” (reply brief, p. 4). Applicant implores the
Board to consider commercial realities and cites the case of
Electronic Design & Sales, Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992), in
support of its position. However, that case differed from
the case herein because the parties’ goods as identified
were different and noncompetitive products directed to
different and sophisticated purchasers, even if within the
same fields.
When we consider the record and the relevant likelihood
of confusion factors, and all of applicant's arguments
relating thereto, including those arguments not specifically
addressed herein, we conclude that in view of the
substantial similarity in the commercial impressions of
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applicant’s mark and registrant’s mark, their
contemporaneous use on the same goods involved in this case
is likely to cause confusion as to the source or sponsorship
of such goods.
In its reply brief, applicant states that it is
“amenable” to amending its identification of goods to
further limit the trade channels by adding “all promoting a
racing team, and all offered by authorized vendors at
trackside booths, on racing related websites, and racing
affiliated retail outlets.” Not only is this point in the
proceeding too late for remand to the examining attorney for
discussion of a possible amendment, but the proposed
amendment would not resolve the issue of likelihood of
confusion because, as stated herein, the cited registration
does not contain any limitations to the channels of trade
for the identified shirts.
Decision: The refusal under Section 2(d) of the Act is
affirmed.