American Sporting Goods Corp.

Trademark Trial and Appeal Board

Nov 17, 2000

No. 75532079 (T.T.A.B. Nov. 17, 2000)

Paper No. 12
11/17/00
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re American Sporting Goods Corporation
________
Serial No. 75/532,079
_______
Michael A. Painter of Isaacman, Kaufman & Painter for
American Sporting Goods Corporation.
Douglas M. Lee, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Quinn, Bottorff and Rogers, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark URBAN SPORT, in typed form, for “footwear and
active wear, namely, leotards, unitards, athletic bra tops,
shorts, leggings, tights, sweatshirts, caps and tank tops.”1
Registration has been refused under Trademark Act
Section 2(d), 15 U.S.C. §1052(d), on the ground that

1 Serial No. 75/532,079, filed August 6, 1998. The application
is based on applicant’s bona fide intent to use the mark, under
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/532,079
2
applicant’s mark, as applied to applicant’s goods, so
resembles the mark URBAN SPORT, depicted below,
which is registered for “retail clothing store – featuring
clothing and sportswear for the family,”2 as to be likely to
cause confusion, to cause mistake, or to deceive.
When the refusal was made final, applicant filed this
appeal. Applicant and the Trademark Examining Attorney
filed main briefs, and applicant filed a reply brief. No
oral hearing was requested. 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). In
considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by
§2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in

Trademark Act Section 1(b). Applicant has disclaimed SPORT apart
from the mark as shown.
Ser. No. 75/532,079
3
the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We find that applicant’s mark is essentially identical
to the cited registered mark. The slightly stylized
lettering display of the registered mark does not legally
distinguish the two marks in terms of appearance, inasmuch
as applicant seeks registration of its mark in typed form.
The two marks are identical in terms of sound, and
essentially identical in terms of connotation. Viewing the
marks in their entireties, we find that the marks present
essentially identical overall commercial impressions.
We turn next to a consideration of the similarity
between applicant’s goods, as identified in the
application, and the services recited in the cited
registration. It is not necessary that these respective
goods and services be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is sufficient that the goods and services are
related in some manner or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons in situations
that would give rise, because of the marks used thereon, to

2 Registration No. 2,161,277, issued June 2, 1998. Registrant
has disclaimed SPORT apart from the mark as shown.
Ser. No. 75/532,079
4
a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
association or connection between the producers of the
respective goods. See In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978). Moreover, the greater the
degree of similarity between the respective marks, the
lesser the degree of similarity required in the respective
goods and services to support a finding of likelihood of
confusion, and where the respective marks are essentially
identical, there need be only a viable relationship between
the respective goods and services in order to find that a
likelihood of confusion exists. See In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re
Concordia International Forwarding Corp., 222 USPQ 355
(TTAB 1983).
Applying these principles to the facts of this case,
we find that applicant’s goods are sufficiently closely
related to registrant’s services that confusion is likely
to result from the concurrent use of these essentially
identical marks. The Trademark Examining Attorney has
presented evidence consisting of twelve subsisting, use-
based third-party registrations. In each of these
registrations, the identification of goods and services
Ser. No. 75/532,079
5
includes both retail clothing store services as well as
various clothing items, including the types of clothing
items identified in applicant’s application. It is well-
settled that third-party registration evidence such as this
is probative on the issue of the relationship between the
relevant goods and/or services, inasmuch as it suggests
that the goods and/or services identified in each of the
registrations are of a type which may emanate from a single
source. See In re Azteca Restaurant Enterprises Inc., 50
USPQ2d 1209 (TTAB 1999); In re Albert Trostel & Sons Co.,
29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard
Co. Inc., 6 USPQ2d 1467 (TTAB 1988).3
We find that the third-party registrations submitted
by the Trademark Examining Attorney, which cover both the
types of goods identified in applicant’s application and
the types of services identified in the cited registration,

3 Applicant has attached to its reply brief a copy of an excerpt
from Allen’s Trademark Digest (Nov. 1999) which digests the
Board’s October 6, 1999 unpublished decision in Dayton Hudson
Corporation v. Greatland Corporation (Opposition No. 98,231).
Selectively quoting from this digest of that unpublished
decision, applicant appears to be arguing that the well-settled
and long-standing principle regarding the probative value of
third-party registrations, set forth in In re Azteca, In re
Albert Trostel, and In re Mucky Duck Mustard, no longer is good
law. Applicant’s argument is wholly without merit. First, the
Dayton Hudson decision is unpublished and accordingly is without
precedential value. Second, the decision has absolutely nothing
to do with the issue of the probative value of third-party
registrations in the likelihood of confusion analysis.
Ser. No. 75/532,079
6
are sufficient to establish that applicant’s goods and
registrant’s services are related, for purposes of the
second du Pont evidentiary factor. This evidence suggests
that purchasers reasonably could expect that a single
source may offer, under a single mark, clothing items of
the type identified in applicant’s application as well as
retail clothing store services of the type identified in
the cited registration. Thus, when purchasers encounter
applicant’s goods and registrant’s services being offered
under the essentially identical marks involved here, they
reasonably could assume that a source, sponsorship or other
connection exists.
There are no limitations as to trade channels or
classes of customers in either applicant’s or registrant’s
respective identifications of goods and/or services. We
accordingly must presume that applicant’s goods and
registrant’s services are marketed in all normal trade
channels and to all normal purchasers of such goods and
services. See In re Elbaum, 211 USPQ 639 (TTAB 1981). We
find that retail clothing stores such as registrant’s are
among the normal trade channels for footwear and active
wear such as applicant’s, and that the normal classes of
customers for applicant’s clothing and registrant’s retail
clothing stores are the same.
Ser. No. 75/532,079
7
In sum, after careful consideration of the evidence of
record with respect to the relevant du Pont evidentiary
factors, we find that a likelihood of confusion exists.
Applicant’s mark is essentially identical to the cited
registered mark, and applicant’s goods are sufficiently
closely related to registrant’s services that use of these
identical marks in connection with these goods and services
is likely to cause confusion.
Decision: The refusal to register is affirmed.
T. J. Quinn
C. M. Bottorff
G. F. Rogers
Administrative Trademark Judges
Trademark Trial and Appeal Board