3-D Belt Company, LP

Trademark Trial and Appeal Board

Nov 7, 2008

No. 76650341 (T.T.A.B. Nov. 7, 2008)

Mailed: November 7, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re 3-D Belt Company, LP
___________

Serial No. 76650341
___________

Daniel D. Chapman of Jackson Walker for 3-D Belt Company,
LP.

William G. Breckenfeld, Trademark Examining Attorney, Law
Office 116 (Michael W. Baird, Managing Attorney).
____________

Before Walters, Bucher and Walsh, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

3-D Belt Company, LP has filed an application to
register the mark shown below on the Principal Register for
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 76650341

2
“wallets,” in International Class 18, and “belts,” in
International Class 25.1

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 shown below, previously registered for “clothing,
namely, cotton jersey shorts, cotton jersey shirts, mesh
shirts, mesh shorts, fleece shirts, fleece pants, fleece
shorts, nylon shirts, nylon pants,” in International Class
25,2 that, if used on or in connection with applicant’s
goods, it would be likely to cause confusion or mistake or
to deceive.

1 Serial No. 76650341, filed November 15, 2005, based on use of the mark
in commerce, alleging first use and use in commerce as of July 1, 1996,
for the goods in both classes. The application includes a description
of the mark as consisting of “the wording BADGER with a design of a
badger above the wording,” and a notation that color is not claimed as a
feature of the mark.

2 Registration No. 2906328, issued November 30, 2004, from an
application filed May 28, 2003. The registration is owned by Badger
Sportswear and is based on use in commerce, alleging first use and use
in commerce as of 2002. The registration includes a disclaimer of SPORT
apart from the mark as a whole.
Serial No. 76650341

3

Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We reverse 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).
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
Serial No. 76650341

4
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when 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).
Applicant’s mark is the word BADGER in a non-
distinctive font directly below a picture of a badger. The
picture and the wording are approximately the same size; and
Serial No. 76650341

5
the picture of the badger reinforces the wording, BADGER.
The registered mark consists of a large stylized “B”
separated by a line from the word, in a non-distinctive
font, BADGER, which is directly below the “B.” In small
print, the word SPORT appears directly below the word
BADGER. The letter “B” is larger than the wording in the
mark and the top portion of the “B” is a distinctive swoosh.
As the first letter in BADGER, the “B” could be perceived
equally as indicating the first letter in a business name or
as reinforcing the word BADGER in the mark. The word SPORT
is merely descriptive and disclaimed, and it is much smaller
that either the “B” or the word BADGER. However, SPORT
remains a part of the mark as it is likely to be spoken.
Purchasers of registrant’s good are likely to use
either the word BADGER or the phrase BADGER SPORT to call
for registrant’s goods, although it is unlikely that they
would use the phrase B BADGER SPORT. It is the wording
BADGER or BADGER SPORT that would make a greater impression
on purchasers and is the portion that is more likely to be
remembered as the dominant and source-signifying portion of
registrant’s mark. In applicant’s mark, it is the word
BADGER that is most likely to be used by purchasers to call
for applicant’s goods and, thus, BADGER is the dominant and
source-signifying portion of applicant’s mark. In re
Dakin’s Miniatures, Inc., 59 USPQ2d 1593 (TTAB 2001) (“words
Serial No. 76650341

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are normally accorded greater weight because they would be
used by purchasers to request the goods”). See also, e.g.,
In re Appetito Provisions Co., 3 USPQ2d 1553 (1987).
However, while both marks contain the dominant term
BADGER, when we view the marks in their entireties, we find
that the additional words, letters and designs, and their
placement relative to each other in the respective marks,
we consider the marks to be more dissimilar than similar.
We add that, while applicant has argued that BADGER is a
weak term in a mark, we are not convinced of this by the
evidence applicant submitted.3
Turning to consider the goods involved in this case, we
note 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, rather than what the

3 In particular, the list of live and cancelled applications and
registrations of marks containing the term BADGER do not make those
applications and registrations properly of record herein. See In re Dos
Padres Inc., 49 USPQ2d 1860, (TTAB 1998). Moreover, applications are
evidence only of their having been filed, and cancelled registrations
are of no probative value. The copies of registrations for marks
including BADGER that are properly in the record are largely inapposite
because the clothing items are in addition to industry-specific goods,
the marks differ from those involved herein, and each case must be
decided on its facts. See In re Nett Designs, Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001). The lists and registrations of marks
containing the word BEAVER, rather than BADGER, are not analogous.
These registrations, as well as the website showing hats made of beaver,
badger and silver fox, are of absolutely no probative value. The
coexistence on the register of the single registration for the mark
WISCONSIN BADGERS, owned by the University of Wisconsin Board of
Regents, does not render the mark in the cited registration a weak mark.
Similarly, applicant’s evidence consisting of an Internet search
printout, a website located in the U.K., and a website that appears to
Serial No. 76650341

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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).
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 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 could 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 cases cited therein; and Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB
2002).
In support of his contention that the goods are
related, the examining attorney submitted a small number of
third-party registrations based on use in commerce: three
registrations include clothing items that are in the cited

use the term “badger” to describe a shirt-style or fabric weave, are of
Serial No. 76650341

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registration and wallets, five registrations include
clothing items that are in the cited registration and belts,
and one registration includes clothing items that are in the
cited registration and both wallets and belts. These
registrations are not evidence that the marks shown therein
are in use on a commercial scale or that the public is
familiar with them, although such registrations nevertheless
have some probative value to the extent that they may serve
to suggest that such goods are of a type which may emanate
from a single source. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988). However, the examining
attorney has submitted such a small number of third-party
registrations relative to the belts and wallets involved
herein, and no additional evidence of actual use, that we
find this showing insufficient to establish a relationship
between applicant’s belts and wallets and the clothing items
listed in the cited registration, and there is certainly no
per se rule regarding a purported relationship between
clothing and accessories.
We note that applicant’s evidence of third-party
registrations for entirely different marks for a variety of
goods and services including clothing, but not belts and
wallets, does not support its contention that the goods are

little or no probative value.
Serial No. 76650341

9
not related.4 However, it is not applicant’s burden to
establish a lack of relationship between the respective
goods. Rather, the burden is on the examining attorney to
establish that the respective goods are related, and he has
not met that burden based on the record before us.
Thus, when we consider the record and the relevant
likelihood of confusion factors, and all of applicant's and
the examining attorney’s arguments relating thereto,
including those arguments not specifically addressed herein,
we conclude that the examining attorney has not established
either that the commercial impressions of applicant’s and
registrant’s marks are substantially similar or that the
respective goods are related or similar such that the
contemporaneous use of these marks on the goods involved in
this case is likely to cause confusion as to the source or
sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
reversed.

4 Applicant’s president’s stated, in a declaration. that there has
been an absence of actual confusion. While a factor to be
considered, the absence or presence of actual confusion is of little
probative value where we have little evidence pertaining to the
nature and extent of the use by applicant and registrant. Moreover,
the test under Section 2(d) is not actual confusion but likelihood of
confusion. See In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003)(“uncorroborated statements of no known
instances of actual confusion are of little evidentiary value.”).
See also, In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984); and In
re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992).