Trustees of the Maxx Trust

Trademark Trial and Appeal Board

Dec 6, 2000

No. 75386785 (T.T.A.B. Dec. 6, 2000)

12/6/00
Paper No. 11
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Trustees of the Maxx Trust
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Serial No. 75/386,785
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Michael S. Sherman & Steven Plotkin of Jeffer, Mangels,
Butler & Marmaro, LLP for Trustees of the Maxx Trust.
Tami Cohen Belouin, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
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Before Cissel, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Trustees of the Maxx
Trust to register the mark UNTOUCHABLES for:
Clothing for men, women, and children, bearing
a drag racing theme or otherwise relating to
motor car racing, that is sold or distributed
in channels of commerce in which souvenirs,
collectibles, accessories and promotional
materials for drag racing are offered, sold
or distributed; namely, warm-up suits;
jogging suits; sweat suits; sweat pants and
sweatshirts; body suits; leotards; leg warmers;
wet suits; ski suits; ski pants; ski bibs; ski
jackets; swim wear; bathing suits; beach and
bathing coverups; slacks; trousers; pants;
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/386,785
2
jeans; shorts; sweat shorts; gym shorts; tops;
jackets; coats; sport coats; shirts; sport
shirts; t-shirts; knit shirts; polo shirts;
pullovers; sweaters; vests; tank tops; blazers;
jump suits; playsuits; overcoats; parkas;
wind resistant jackets; leather jackets;
footwear; shoes; boots; slippers; athletic
footwear; basketball shoes; casual footwear;
sandals; headwear; hats; caps; visors; hoods;
berets; headbands; sweat bands; wristbands;
ear muffs; neckwear; neckties; neckerchiefs;
scarves, bandannas; sleep wear; robes;
pajamas; nightshirts; rain wear; gloves;
mittens; galoshes; lounge wear; underwear;
briefs; underpants; boxer shorts; undershirts;
suspenders; hosiery; socks; belts; masquerade
and halloween costumes; and aprons; provided
that the registration shall give no rights
to the mark for clothing relating to academic
organizations or to youth service organizations.1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that applicant’s mark, if
used in connection with the above clothing, would be likely
to cause confusion with the mark below,

1 Serial No. 75/386,785, filed November 7, 1997, alleging a bona
fide intention to use the mark in commerce.
Ser No. 75/386,785
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which is registered for “clothing; namely, tee shirts,
sweat shirts, socks, pants, [and] caps.”2
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal
to register.
Our determination 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). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Food, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to a consideration of the respective
goods, we note that both applicant’s identification of
goods and that of the registrant include t-shirts, sweat
shirts, socks, pants and caps. Applicant stresses that its
wearing apparel is of a type which bears a drag racing
theme or otherwise relates to motor car racing and that the
channels of trade for its wearing apparel are specifically
limited in its application to “commerce in which souvenirs,

2 Registration No. 1,791,168, issued July 13, 1992; Section 8 &
15 affidavit accepted and acknowledged, respectively.
Ser No. 75/386,785
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collectibles, accessories and promotional materials for
drag racing are offered, sold or distributed.” Further,
applicant argues that registrant’s wearing apparel is used
soley in connection with a youth service organization.
However, as the Examining Attorney correctly observes, the
cited registration has no limitations of any sort and it
must therefore be presumed that the t-shirts, sweat shirts,
socks, pants and caps listed therein include all types,
including those which bear a motor car racing theme, that
the registrant’s goods travels in the usual channels of
trade for such goods, and that the goods are available to
all potential purchasers, including motor car racing
enthusiasts. See In re Elbaum, 211 USPQ 639, 640 (TTAB
1991) and In re Apparel Ventures, Inc., 229 USPQ 225, 226
(TTAB 1986). Thus, we agree with the Examining Attorney
that in analyzing the issue of likelihood of confusion
herein, the goods of applicant and registrant are in part
legally identical.
We turn next to compare the marks UNTOUCHABLES and
UNTOUCHABLES and design. It is well established that marks
must be compared in their entireties although, in
appropriate circumstances, more or less weight may be given
to a particular feature of a mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). For
Ser No. 75/386,785
5
example, if we find that purchasers are more likely to note
or remember the word, rather than the design portion of a
mark, because that is the way the goods or services will be
called for and referred to, then the word would be the
dominant portion. See In re Appetito Provisions Co., 3
USPQ2d 1553 (TTAB 1987).
In this case, because purchasers of registrant’s
t-shirts, sweat shirts, socks, pants and caps would refer
to and call for them by the word UNTOUCHABLES, which is the
only part of registrant’s mark which can be articulated, it
is the word which is likely to make a greater impression on
them. Thus, when applicant’s and registrant’s marks are
compared in their entireties, with appropriate weight given
to the element UNTOUCHABLES in registrant’s mark, we find
that the marks are extremely similar, and that their use on
identical goods is likely to cause confusion. Although the
shield design is certainly a noticeable part of the
registrant’s mark, it does not serve to sufficiently
distinguish the marks, as applicant argues.
In view thereof, we conclude that purchasers and
prospective customers familiar with registrant’s
UNTOUCHABLES and design mark for t-shirts, sweat shirts,
socks, pants and caps could reasonably assume, upon
encountering applicant’s substantially similar UNTOUCHABLES
Ser No. 75/386,785
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mark for the identical items of wearing apparel, that the
goods emanate from, or are sponsored by the same source.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.
R. F. Cissel
T. J. Quinn
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board