SOS Sportswear AB

Trademark Trial and Appeal Board

Jan 31, 2007

No. 75448387 (T.T.A.B. Jan. 31, 2007)

Mailed: January 31, 2007

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SOS Sportswear AB,
assignee of Sportswear of Sweden AB1
________

Serial No. 75448387
_______

Martin G. Linihan of Hodgson Russ Andrews Woods & Goodyear
LLP for SOS Sportswear AB

Jordan Baker, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______

Before Seeherman, Drost and Taylor, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

SOS Sportswear AB has appealed from the final refusal
of the trademark examining attorney to register SOS SPORT
and design, in the form shown below, with the word SPORT
disclaimed,

1 The application was filed by Sportswear of Sweden AB. During
prosecution of the application, Sportswear of Sweden AB assigned
THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Serial No. 75448387
2
for goods which were ultimately identified as “headwear,
pants, dresses, jackets, gloves, and footwear.”2
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
applicant’s mark, when applied to the identified goods, so
resembles the mark S.O.S., in standard character form,
previously registered for “men’s, women’s and children’s
apparel; namely, shirts”3 as to be likely to cause
confusion, mistake, or deception.
Applicant and the examining attorney filed briefs. We
affirm the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. duPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201

the application to SOS Sportswear AB. The assignment is recorded
in the Assignment Branch of the Office at Reel/Frame 3229/0005.
2 Application Serial No. 75448387, filed March 11, 1998, based on
an asserted bona fide intention to use the mark in commerce and
ownership of a foreign registration as provided for in Trademark
Act § 44(e), with a claim of priority pursuant to Trademark Act §
44(d). In response to a request from the examining attorney,
applicant claimed ownership of a prior registration, i.e.,
Registration No. 1277076 for the mark SOS SPORTSWEAR OF SWEDEN
and design, as shown infra, for “Sportswear for Skiers-Namely,
Jackets, Anoraks, and Ski-Suits.”

3 Registration No. 1899969 issued June 13, 1995, renewed.
Serial No. 75448387
3
(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).
Considering first the similarity of the marks, we must
determine whether applicant’s mark and registrant’s mark,
when compared in their entireties, are similar or
dissimilar in terms of sound, appearance, connotation and
commercial impression. Although the marks 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). For instance, “that a
particular feature is descriptive or generic with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark….”
224 USPQ at 751. Furthermore, 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
Serial No. 75448387
4
similar in terms of their overall commercial impression
that confusion as to the source of the goods and/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).
The examining attorney argues that when the marks are
compared in their entireties, applicant’s mark is
confusingly similar to the registered mark in that a
significant portion of the applicant’s mark is nearly
identical in appearance, connotation and meaning to the
registered mark.
Applicant contends that the examining attorney
improperly dissected applicant’s mark into separate
components and essentially argues that its mark includes a
plurality of components, namely the word SPORT, a design
feature and stylized lettering, all of which serve to
distinguish applicant’s mark from registrant’s mark. We
disagree. The dominant and distinguishing portion of
applicant’s mark SOS SPORT and design is the letters “SOS.”
The word SPORT, as evidenced by the disclaimer, is merely
descriptive, and would not be looked to as a source-
identifying element. Nor are consumers likely to notice
Serial No. 75448387
5
the presence or absence of periods between the letters SOS,
or treat this as a distinguishing factor.
Although applicant stresses the stylization of “SOS”
and “SPORT” as a distinguishing feature, because
registrant’s mark is registered in typed format,
registrant’s rights therein encompass the letters “SOS” and
are not limited to the depiction thereof in any special
form. See Phillips Petroleum Co. v. C. J. Webb, Inc. 442
F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). As the Phillips
Petroleum case makes clear, when a word mark is registered
in typed form, the Board must consider all reasonable modes
of display that could be represented. Accordingly,
registrant’s mark must be considered to include the same
stylized lettering as that in which the SOS component of
applicant’s mark appears. The stylized lettering of “SOS”
and “SPORT” consequently does not serve to distinguish
applicant’s mark from registrant’s mark.
Nor do we find the design sufficient to distinguish
applicant’s mark from the registrant’s mark. The shaded
triangles abutting each letter “S” of the letters “SOS”
have minimal visual impact, merely serving to frame the SOS
component of applicant’s mark. Accordingly, we find that
when the marks are compared in their entireties, they are
substantially similar in appearance, sound and connotation
Serial No. 75448387
6
and convey a substantially similar commercial impression.
Thus, the factor of the similarity of the marks favors a
finding of likelihood of confusion.
We now turn to a consideration of the goods identified
in the application and the cited registration. It is well
settled that the question of likelihood of confusion must
be determined 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. Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783
(Fed. Cir. 1992); and The Chicago Corp. v. North American
Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). Further, it is
a general rule that goods or services need not be identical
or even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that the
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 would give rise, because of the marks
used therewith, 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 the cases cited therein.
Serial No. 75448387
7
Applicant, in urging that the refusal to register be
reversed, argues that its mark is for a range of goods
including items which are sufficiently different from the
shirts identified in the cited registration. Applicant
further argues that:
The headwear, pants, dresses, jackets,
gloves, and footware [sic] in
applicant’s definition of good [sic]
usually are featured separately from
the goods of registration 1,899,969
such as in different physical locations
in retail establishments or at
different locations in mail order
catalogs, websites and other media-
based channels of trade. (Brief, pp. 2-
3)

The examining attorney, on the other hand, argues that
applicant’s headwear, pants, dresses, jackets, gloves, and
footwear and the shirts identified in the cited
registration are all complementary goods. In support of
his position, the examining attorney cites to a long line
of precedents from the Board and our primary reviewing
Court finding many different types of apparel to be
related, including: In re Pix of America, Inc., 225 USPQ
691 (TTAB 1985) (“NEWPORTS” for women’s shoes v. “NEWPORT”
for outer shirts); and In re Melville Corp. 18 USPQ2d 1386
(TTAB 1991) (“ESSENTIALS” for women’s pants, blouses,
shorts and jackets v. women’s shoes).
Serial No. 75448387
8
The examining attorney also cites to Kangol Ltd. v.
KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed.
Cir. 1992) and In re Smith and Mehaffey, 31 USPQ2d 1531
(TTAB 1994) and further argues that:
[N]either the application nor the
registration(s) contain any limitations
regarding trade channels for the goods
and therefore it is assumed that
registrant’s and applicant’s goods are
sold everywhere that is normal for such
items, i.e., clothing and department
stores. Thus, it can also be assumed
that the same class of purchasers shop
for these items and that consumers are
accustomed to seeing them sold under
the same or similar marks.

We find that the headwear, pants, dresses, jackets,
gloves, and footwear identified in applicant’s application
are related to the shirts identified in the cited
registration, and that confusion is likely to result from
the use thereon of the substantially similar marks in this
case. While we recognize that the respective goods are not
identical and would not be confused for each other, as
noted above, that is not the test. The “pants” and
“jackets” identified in applicant’s application are
complementary to the “shirts” identified in the cited
registration, in that they can worn together as an outfit,
and may well be encountered and/or purchased in the course
Serial No. 75448387
9
of a single shopping trip. Thus, these goods, in
particular, are closely related.
Finally, applicant argues that consideration should be
given to the fact that the Patent and Trademark Office
allowed the cited Registration No. 1899969 “in the face of”
applicant’s earlier Registration No. 1277076 for the mark
SOS SPORTSWEAR OF SWEDEN and design, which also contains
the letters SOS. We presume by this that applicant is
arguing that inasmuch as it owns an earlier existing
registration containing the letters SOS, and that
registration coexists with the cited registration,
applicant should be allowed to register the SOS SPORT and
design mark. We find this argument unpersuasive.
Registration No. 1277076 is for the mark SOS SPORTSWEAR OF
SWEDEN and design, as shown, below,

for “Sportswear for Skiers-Namely, Jackets, Anoraks, and
Ski-Suits.” That registration, though, is for
significantly different goods from those in the present
application, in that applicant has expanded the
identification of goods in the present application to
Serial No. 75448387
10
include all types of jackets, not just those for skiers, as
well as dresses, pants, headwear and footwear. In light of
the broad identification in the present application, the
fact that applicant owns a registration for a non-identical
mark for significantly narrower goods does not persuade us
that there is no likelihood of confusion in this case.
In view of the foregoing, we conclude that consumers
familiar with the registered mark S.O.S. for men’s, women’s
and children’s apparel; namely, shirts would be likely to
believe, upon encountering applicant’s substantially
similar mark SOS SPORT and design for headwear, pants,
dresses, jackets, gloves, and footwear, that such goods
emanate from, or are sponsored by or affiliated with the
same source.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.