AmericanNeedle

Trademark Trial and Appeal Board

Jul 17, 2006

No. 76552569 (T.T.A.B. Jul. 17, 2006)

Mailed:
July 17, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re American Needle
________

Serial No. 76552569
_______

John S. Mortimer of Wood, Phillips, Katz, Clark and
Mortimer for American Needle.

Kim Saito, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______

Before Seeherman, Grendel and Zervas, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark CHICAGO STING (in standard character form) for
goods identified in the application as “men’s, women’s and
children’s clothing, namely headwear including hats and
caps, pants, shirts, skirts, coats, jackets, shoes, and
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76552569
2
accessories, namely belts.”1 Pursuant to the Trademark
Examining Attorney’s requirement, applicant has disclaimed
the exclusive right to use the geographically descriptive
term CHICAGO apart from the mark as shown.
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that, as applied to applicant’s goods, the mark
so resembles the mark depicted below,

previously registered on the Principal Register for goods
identified in the registration as “clothing, namely, T-
shirts, tank tops, sweat shirts, knit shirts, shorts,
pants, woven shirts, sweaters, swimwear, hats and socks,”
as to be likely to cause confusion, to cause mistake, or to
deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d).
The appeal is fully briefed; no oral hearing was held.
We affirm the refusal to register.

1 Serial No. 765525569, filed September 29, 2003. The
application is based on applicant’s asserted bona fide intention
to use the mark in commerce. Trademark Act Section 1(b), 15
U.S.C. §1051(b).

Ser. No. 76552569
3
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & 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); In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We find, under the second du Pont factor (the
similarity or dissimilarity of the goods), that the goods
identified in applicant’s application are identical in part
and otherwise highly similar to the goods identified in the
cited registration. Applicant does not contend otherwise.
Under the third du Pont factor (similarity or
dissimilarity of trade channels and classes of purchasers),
we note that neither applicant’s nor registrant’s
identification of goods is limited in any way, and we
therefore presume that applicant’s and registrant’s goods
are or would be marketed in all normal trade channels and
to all normal classes of purchasers for such goods. In re
Elbaum, 211 USPQ 639 (TTAB 1981). We find that applicant’s
Ser. No. 76552569
4
goods and registrant’s identical or closely related goods
are or would be marketed in the same trade channels and to
the same classes of purchasers. Applicant does not contend
otherwise.
Under the fourth du Pont factor (conditions of
purchase), we find that the goods at issue here are general
consumer items which would be purchased by ordinary
consumers without a great degree of care or sophistication.
Applicant does not contend otherwise.
Under the sixth du Pont factor, there is no evidence
in the record showing third-party use of similar marks on
similar goods; applicant’s reliance on certain third-party
registrations which were not made of record is to no avail.2
The record does contain a printout of a third-party
application, Serial No. 76413661, now abandoned, which is
of the mark STING RACING (in standard character form;
RACING disclaimed) for “clothing namely, shirts, T-shirts,
tank tops, sweatshirts, jackets, shorts, pants, socks,

2 The Trademark Examining Attorney informed applicant during
prosecution that any third-party registrations must be properly
made of record prior to appeal to be considered. See Trademark
Rule 2.142(d), 37 C.F.R. §2.142(d). Applicant never made them of
record, either prior to or after its appeal. We agree with the
Trademark Examining Attorney’s contention that these
registrations are not of record and can be given no
consideration.

Ser. No. 76552569
5
hats, visors and beanies.”3 However, we find that this
third-party application is not evidence of third-party use
under the sixth du Pont factor. It does not appear that
the STING RACING mark was ever used in commerce (the
application was an intent-to-use application which was
abandoned for failure to file a Statement of Use).
Moreover, even if the mark had been registered, the mere
fact of its registration is not evidence of use of the mark
in commerce under the sixth du Pont factor. See Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992).
We turn finally to the first du Pont factor, i.e.,
whether applicant’s mark and the cited registered mark are

3 The STING RACING application was filed on May 20, 2002, prior
to the filing of applicant’s present application on September 29,
2003 and prior to the November 25, 2002 filing date of the STING
registration cited as a Section 2(d) bar in this case. The STING
RACING mark was examined by the Trademark Examining Attorney
handling the present application; the application which matured
into the cited registered mark STING was examined by a different
Trademark Examining Attorney. As applicant notes, this other
Trademark Examining Attorney did not cite the prior-filed STING
RACING mark as a potential Section 2(d) bar to registration of
the cited registered mark STING. However, the present Trademark
Examining Attorney originally cited the STING RACING application
in the present case as a potential Section 2(d) bar to
registration of applicant’s CHICAGO STING mark. The STING RACING
mark was approved for publication (by the present Trademark
Examining Attorney), and a Notice of Allowance was issued after
publication. The application subsequently was held abandoned due
to the applicant’s failure to file a Statement of Use, and the
Trademark Examining Attorney thereafter withdrew her citation of
it as a potential basis for refusal of applicant’s mark in the
present case.

Ser. No. 76552569
6
similar or dissimilar when compared in their entireties in
terms of appearance, sound, connotation and commercial
impression. We make this determination in accordance with
the following principles.
The test, under the first du Pont factor, 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
impression that confusion as to the source of the goods
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). Finally, in cases such as this, where the
applicant’s goods are identical (in part) to the
registrant’s goods, the degree of similarity between the
marks which is required to support a finding of likelihood
Ser. No. 76552569
7
of confusion is less than it would be if the goods were not
identical. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
We find, first, that the dominant feature in the
commercial impression created by applicant’s mark is the
word STING, which is an arbitrary term as applied to
applicant’s (and registrant’s) goods.4 The other element of
applicant’s mark, i.e., the word CHICAGO, is geographically
descriptive (and disclaimed); while we do not disregard it,
we find that it contributes relatively less to the
commercial impression of the mark than does the arbitrary
word STING. See In re National Data, supra. We also find
that it is the word STING (rather than the stylized
lettering in which it appears) which dominates the
commercial impression of the cited registered mark.

4 The evidence of record includes the following dictionary
definitions of “sting” from Webster’s Ninth New Collegiate
Dictionary, submitted by applicant:

vt 1 : to prick painfully: as a : to pierce or wound
with a poisonous or irritating process b : to affect
with sharp quick pain or smart 2 : to cause to suffer acutely 3 : OVERCHARGE, CHEAT ~ vi 1 : to use a
sting 2 : to feel a keen burning pain or smart

n 1 : the act of stinging; specif : the thrust of a
stinger into the flesh b : a wound or pain caused by
or as if by stinging 2 : STINGER 2 3 : a sharp or
stinging element, force, or quality 4 : an elaborate
confidence game; specif : such a game worked by
undercover police in order to trap criminals

Ser. No. 76552569
8
In terms of appearance and sound, we find that
applicant’s mark and the cited registered mark are similar
to the extent that they both include the word STING, but
dissimilar to the extent that applicant’s mark also
includes the word CHICAGO. Although the cited registered
mark depicts the word STING in stylized lettering, that
fact does not suffice to legally distinguish the marks in
terms of appearance because applicant seeks registration of
its mark in standard character form, which would entitle
applicant to display the mark in a variety of lettering
styles, including a style similar to that of the cited
registered mark. Viewing the marks in their entireties in
terms of appearance and sound, we find that they are more
similar than dissimilar. That is, the similarity which
results from the presence in both marks of the arbitrary
word STING outweighs the points of dissimilarity, i.e., the
presence of the word CHICAGO in applicant’s mark and the
stylized lettering of the cited registered mark.
Viewing the marks in their entireties in terms of
connotation and overall commercial impression, we again
find them to be more similar than dissimilar. STING is an
arbitrary term as applied to applicant’s and registrant’s
goods, and it has the same arbitrary connotation in both
marks. Applicant argues, however, that CHICAGO STING
Ser. No. 76552569
9
presents a unitary connotation and commercial impression
which is lacking in the cited registered mark, because
CHICAGO STING “was the name of a now defunct North American
Soccer League team that operated from 1975 to 1984, and
indeed won the NASL championship in 1984.” (Reply brief at
3.) In support of this contention, applicant has submitted
a printout of an Internet web page5 captioned “Sting Team
Page” which includes a design logo reading “Chicago Sting”
and the wording “Chicago Sting 1975-1984,” along with
various statistics and other information about the team.
The evidence of record simply does not support a
finding that purchasers will readily perceive applicant’s
mark as a unitary mark comprising the name of a now defunct
soccer team. There is no evidence as to the degree of
recognition the team and its name enjoyed while it was
competing, much less that purchasers today, over twenty
years later, will recognize CHICAGO STING as the name of
such team.
Moreover, we agree with the Trademark Examining
Attorney’s contention that even if applicant’s mark is
perceived as the name of a sports team, it is common for
such teams to be referred to simply by the team name, i.e.,

5 http://home.att.net/~nasl/teams/sting.htm

Ser. No. 76552569
10
without the geographical designation preceding the team
name. Thus, the Chicago Sting soccer team would likely be
referred to simply as the “Sting,” which is identical to
the cited registered mark. Purchasers who are aware of the
team would be likely to assume that clothing products
bearing the registrant’s mark STING are somehow related to
or sponsored by the “Chicago Sting” team. Section 2(d)
bars registration of marks which are likely to cause
reverse confusion such as this.
In short, we find that applicant’s mark and the cited
registered mark are similar rather than dissimilar when
viewed in their entireties in terms of appearance, sound,
connotation and overall commercial impression. The first
du Pont factor weighs in favor of a finding of likelihood
of confusion.
Applicant notes that the Office approved for
publication both the cited registered mark STING & design
and the prior-filed mark STING RACING, for identical or
similar goods. (See discussion supra at footnote 3.)
However, we are not privy to the reasons why the Office (by
a different Trademark Examining Attorney) allowed the STING
& Design mark to register despite the existence of the
prior-filed application to register STING RACING, nor are
we bound by that determination. Although consistency of
Ser. No. 76552569
11
examination is a goal of the Office, we must decide each
case on the facts as presented in the record before us.
In this case, considering all of the evidence of
record as it pertains to the du Pont factors, we conclude
that a likelihood of confusion exists. Applicant’s mark
prominently includes the strong and arbitrary designation
STING, which also comprises the essence of the cited
registered mark. The two marks are sufficiently similar
that confusion is likely to result from their use on the
identical goods involved herein, which are presumed to move
in the same trade channels and to the same classes of
ordinary purchasers. To the extent that any doubts might
exist as to the correctness of this conclusion, we resolve
such doubts against applicant. See In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988); and In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).

Decision: The refusal to register is affirmed.