Steve Purcell

Trademark Trial and Appeal Board

Dec 4, 2008

No. 77058644 (T.T.A.B. Dec. 4, 2008)

Mailed:
December 4, 2008
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Steve Purcell
________

Serial No. 77058644
_______

Richard W. Stim for Steve Purcell.

Bernice L. Middleton, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
_______

Before Bucher, Drost and Cataldo, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Steve Purcell seeks registration on the Principal
Register of the mark Sam & Max (in standard character format)
for goods identified in the application as “T-Shirts” in
International Class 25.1
This cases is before the Board on appeal from the final
refusal of the Trademark Examining Attorney to register this
mark based upon Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d). The Trademark Examining Attorney has found that

1 Application Serial No. 77058644 was filed on December 6,
2006 based upon claims of first use anywhere and first use in
commerce at least as early as December 1, 1992.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77058644
- 2 -
applicant’s mark, when used in connection with the
identified goods, so resembles the mark SAM & MAX (in
standard character format) registered in connection with
“women’s apparel, namely pants, jackets and blouses” in
International Class 25,2 as to be likely to cause confusion,
to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney fully
briefed the appeal. We affirm the refusal to register.
Applicant contends that there is no likelihood of
confusion given that applicant’s use of the mark Sam & Max
in connection with comic book characters since 1987 has
created a distinct commercial impression connected uniquely
with applicant; that applicant’s and registrant’s channels of
distribution, advertising and promotion have no overlap, and
there is no “proximity” between the respective goods; that
buyers of the respective goods are sophisticated and can
distinguish the source of these very different goods; and
that applicant’s decades-earlier adoption of the mark
demonstrates his good faith intent, and negates the stated
concerns of the Trademark Examining Attorney that this
registrant needs protection from a “newcomer.”

2 Registration No. 3281385 issued on August 21, 2007.
Serial No. 77058644
- 3 -
By contrast, the Trademark Examining Attorney argues
that since the marks of the applicant and registrant are
identical and the goods of applicant and registrant are
closely related, there is likelihood that purchasers would
confuse the sources of these goods.
Likelihood of Confusion
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods and/or services. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The Marks
We turn first to the du Pont factor focusing on the
similarities or dissimilarities in the appearance, sound,
connotation and commercial impression of the respective
marks. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).
Serial No. 77058644
- 4 -
The marks herein are identical as to appearance, sound
and meaning. Furthermore, we agree with the Trademark
Examining Attorney that applicant’s particular history
with its Sam & Max cartoon characters is irrelevant to
the intrinsic commercial impression of these arbitrary
words when applied to T-shirts.
Hence, this critical du Pont factor favors a finding
of likelihood of confusion.
Relationship of the goods:
We begin our discussion of this du Pont factor
keeping in mind that whenever the marks of the respective
parties are identical, the relationship between the goods
of the respective parties need not be as close to support a
holding of likelihood of confusion as might apply where
differences exist between the marks. In re Opus One Inc.,
60 USPQ2d 1812, 1815 (TTAB 2001); and Amcor, Inc. v. Amcor
Indus., Inc., 210 USPQ 70, 78 (TTAB 1981).
When dealing with different items in International
Class 25 (the clothing class), we have often stated that
there is no per se rule that all clothing items are
related. However, the Trademark Examining Attorney has
cited to a series of cases finding some quite-divergent
Serial No. 77058644
- 5 -
items of clothing to be related for purposes of Section
2(d) of the Trademark Act:
women’s boots men’s and boys’ underwear3
underwear neckties4
women’s pants, blouses, shorts
and jackets
women’s shoes5
women’s shoes outer shirts6
hosiery trousers7
men’s suits, coats, and
trousers
ladies’ pantyhose and hosiery8
brassieres and girdles slacks for men and young men9

Interestingly, the goods in these reported cases are
often quite different in descriptive properties (e.g., items
clearly directed to persons of the opposite gender, under-
clothes vs. outer clothes or accessories, items of apparel
vs. footwear, etc.). By contrast, in the instant case, the

3 Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d
623, 128 USPQ 549 (CCPA 1961).

4 Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d
1233 (TTAB 1992).

5 In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).

6 In re Pix of Am., Inc., 225 USPQ 691 (TTAB 1985).

7 In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982).

8 In re Cook United, Inc., 185 USPQ 444 (TTAB 1975).

9 Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400
(TTAB 1964).

Serial No. 77058644
- 6 -
goods are all common items of clothing that are worn
together. In fact, we note that women’s blouses and T-
shirts are alternative types of tops worn by women. Hence,
we are most comfortable finding that T-shirts are closely-
related to women’s pants, jackets and blouses. Undoubtedly,
if consumers who are acquainted with SAM & MAX blouses,
pants, and jackets later saw Sam & Max T-shirts, many, if not
most, would assume that there was some association between
the sources of these respective goods.
Unfortunately, the ten third-party registrations
placed into the record by the Trademark Examining Attorney
are not at all probative of this point. While each of
these registrations does list both sets of goods, none of
these registrations is based on use of the mark in the
United States. Rather, all are owned by non-U.S.-based
companies relying upon recently-issued foreign country
registrations.10 The majority of the identifications of
goods contain pages-long, alphabetical listings of
substantially all the International Class 25 goods listed
in the United States Patent and Trademark Office’s
ACCEPTABLE IDENTIFICATION OF GOODS AND SERVICES MANUAL.

10 Registration Nos. 3268608 [Spain], 3283246 [Japan],
3318382 [Germany], 3360033 [Sweden], 3376226 [Switzerland],
3382122 [Italy], 3385745 [Germany], 3402119 [Japan], 3409447
[Australia] and 3411794 [Italy].
Serial No. 77058644
- 7 -
Nonetheless, as to this factor, we conclude that the
goods are related items of clothing.
Channels of Trade, Classes of Consumers and Conditions of Sale
Applicant’s theory of the case relies upon the specific
history of his mark and the ever-expanding enterprises
associated with his Sam & Max franchise:
Applicant Steve Purcell created the characters
Sam & Max for his 1987 comic book, Sam & Max:
Freelance Police. Sam and Max are wise-
cracking fictional detectives; Sam is a dog
and Max is a rabbit-like creature. Like many
comic book characters, they have
anthropomorphic qualities. The New York
Times described the pair as “a trench-coated
hound dog and his psychopathically violent
rabbit partner.”
The adventures of the characters continued
through three additional Sam & Max comic books
between 1988 and 1992. In 1992, Purcell began
authorizing the sale of Sam & Max t-shirts.
In 1993, Purcell licensed the Sam & Max video
game rights to LucasArts for Sam & Max Hit
the Road. The popularity of that videogame
led to a license for an animated TV series,
Sam & Max: Freelance Police. Thirteen
episodes of the TV series aired on the Fox
Kids programming block in the U.S. and Channel
4/S4C in the UK from 1997 through 1998.
In 2005, Purcell licensed the Sam & Max
videogame rights to Telltale Games. Telltale
created a series of episodic Sam & Max video
games, released during 2006 and 2007. In
July, 2007, Purcell received an Eisner Award
(Best Digital Comic) at San Diego’s Comic-Con
for his Sam & Max comics.
After two decades, the cumulative result of the
Sam & Max comic books, video games, television
series, and merchandise is that the mark SAM
Serial No. 77058644
- 8 -
& MAX, as associated with Purcell, creates a
strong commercial impression. It is the type
of strong source connection between comic
book character and creator that the Board has
previously acknowledged (See DC Comics v. Pan
American Grain Mfg. Co., 77 USPQ 2d 1220
(TTAB 2005)). When consumers — particularly
fans of comic books and video games — see the
mark SAM & MAX on T-shirts they likely view it
as Applicant’s exclusive indicia.

However, in making determinations of likelihood of
confusion, it is well-established that we must look to the
goods as identified in the registration and application.
Although applicant points to evidence that registrant and
applicant tend to employ distinct channels of trade, we
cannot resort to such extrinsic evidence in order to
restrict registrant’s or applicant’s goods. See, e.g., In
re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986)
[evidence that relevant goods are expensive wines sold to
discriminating purchasers must be disregarded given the
absence of any such restrictions in the application or
registration]. Neither of these identifications contains
any limitations as to trade channels, classes of
purchasers, etc. Therefore, we must assume that
registrant’s clothing and applicant’s T-shirts are sold
everywhere that is normal for such items, and that the same
classes of ordinary purchasers will be shopping for both
types of items.
Serial No. 77058644
- 9 -
Accordingly, these related du Pont factors also
support a determination of likelihood of confusion.
Finally, we note that under the circumstances of this
ex parte appeal, we do not find relevant to our
determination the discussions by applicant and/or the
Trademark Examining Attorney of issues relating to
priority of use, good faith adoption, speculation about
the anticipated zones of expansion for manufacturers or
merchants in the clothing field or claims that are
unsupported by evidence, such as the alleged
sophistication of the purchasers or the actual locations
where the respective goods are usually marketed within
specific retail establishments.
Conclusion
We find that with identical, arbitrary marks applied to
related items of clothing, there is a likelihood of
confusion herein.
Decision: The refusal to register this mark based upon
Section 2(d) of the Lanham Act is hereby affirmed.