Atomic Industries LLC

Trademark Trial and Appeal Board

Apr 20, 2020

87847222 (T.T.A.B. Apr. 20, 2020)

Mailed: April 20, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Atomic Industries LLC
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Application Serial No. 87847222
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Tye Biasco of Patterson Thuente Pedersen, P.A. for Atomic Industries LLC.

Teague Avent, Trademark Examining Attorney, Law Office 125,
Heather Biddulph, Managing Attorney.
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Before Bergsman, Pologeorgis and Lebow, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Atomic Industries LLC (Applicant) seeks registration on the Principal Register for
the mark ATOMIC, in standard character form, for “Custom sublimated archery
jerseys,” in International Class 25.1
The Examining Attorney refused to register Applicant’s mark under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles the registered mark ATOMIC, in standard character form, for, inter alia,

1 Serial No. 87847222 filed March 23, 2018, under Section 1(a) of the Trademark Act,
15 U.S.C. § 1052(a), based on Applicant’s claim of first use of the mark anywhere and in
commerce as of January 1, 2010.
This Opinion Is Not a
Precedent of the TTAB
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“Athletic clothing, namely, shirts, t-shirts, crew neck shirts, gloves, jackets, base
layer jackets, mid-layer jackets, pullovers, hooded sweatshirts, vests, socks, pants,
polo shirts, base layer pants, base layer shirts, headgear, namely, winter caps,
baseball caps, hats, caps and beanies,” in International Class 25, as to be likely to
cause confusion.2
We base our determination under Section 2(d) on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing on the likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,
113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen
DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) (quoting DuPont,
177 USPQ at 567). “Not all of the DuPont factors are relevant to every case, and only
factors of significance to the particular mark need be considered.” Cai v. Diamond
Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). See also
M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed.
Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB
2015) (“While we have considered each factor for which we have evidence, we focus

2 Registration No. 4743049 registered May 26, 2015.
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our analysis on those factors we find to be relevant.”). “Each case must be decided on
its own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v.
Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”). See also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
I. The similarity or dissimilarity of the marks.
The marks are identical and Applicant does not argue otherwise. Therefore, the
first DuPont factor favors a finding of likelihood of confusion.
II. The similarity or dissimilarity and nature of the goods.
The description of goods in Applicant’s application is “custom sublimated archery
jerseys.” Neither Applicant, nor the Examining Attorney, defined or explained the
nature of a “sublimated jersey” in general or specifically with respect to a “sublimated
archery jersey.” Applicant did not argue that “sublimation” somehow distinguishes
its “custom sublimated archery jerseys” from Registrant’s athletic clothing.
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The RANDOM HOUSE UNABRIDGED DICTIONARY (2020) defines “sublime,” inter alia,
as a verb meaning “to convert (a solid substance) by heat into a vapor, which on
cooling condenses again to solid form, without apparent liquefaction.”3 Accordingly,
we assume that sublimation refers to the printing processing involved in customizing
Applicant’s jerseys.
Merriam-Webster.com defines a “jersey” as follows:4
1. a : any of various close-fitting usually circular
knitted garments especially for the upper
body;
b : an often loose-fitting shirt that is worn by a
member of a sports team as part of a team
uniform and that typically has the athlete’s
name and number on the back.
We construe Applicant’s “custom sublimated archery jerseys” as made to order
shirts for archery. Contrary to Applicant’s argument, the record based on evidence
Applicant submitted, shows that archery is a sport.5
As a sport, archery requires skills of precision, control,
focus, repetition and determination. It is available to be
practiced by all, no matter age, gender or ability, and is a
widespread pastime in both developed and developing
countries.

3 Dictionary.com accessed April 16, 2020. See also, Sublimation, ENCYCLOPAEDIA BRITANNICA
(2020) (Britannica.com) (“Sublimation, in physics, conversion of a substance from the solid to
the gaseous state without its becoming liquid.”). The Board may take judicial notice of
dictionary definitions, including online dictionaries that exist in printed format. In re Cordua
Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632
(Fed. Cir. 2016). In addition, the Board may take judicial notice of information from
encyclopedias. B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d
1719, 1721 (Fed. Cir. 1988) (“dictionaries and encyclopedias may be consulted”).
4 September 9, 2019 Denial of Request for Reconsideration (5 TTABVUE 5).
5 Applicant asserts, “Applicant’s goods are limited to custom-ordered jerseys for use by non-
athletes (archery).” Applicant’s Brief, p. 4 (9 TTABVUE 5).
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Archery is often in the public eye, both as an important
sport on the Olympic Programme, and thanks to popular
culture.6
ESPN’s “panel of experts, a group made up of sports scientists from the United
States Olympic Committee, of academicians who study the science of muscles and
movement, of a star two-sport athlete, and of journalists who spend their professional
lives watching athletes succeed and fail,” categorize archery as one of the least
physically demanding sports (i.e., 55 out of 60).7
The description of goods in the cited registration include “athletic clothing,
namely, shirts.” THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE
(5th ed. 2019) defines “athletics” as “of or befitting athletics or athletes.”8 An “athlete”
is “a participant in a sport, exercise, or game requiring physical skill.”9 In an ex parte
proceeding, we are required to give “full sweep” to Registrant’s identified products
(i.e., athletic shirts). See Paula Payne Prods. Co. v. Johnson Publ’g Co., Inc., 473 F.2d
901, 177 USPQ 76, 77-78 (CCPA 1973). Therefore, Registrant’s shirts encompass all
shirts of the nature and type identified in the registration. In this case, that means
athletic shirts include custom-made archery jerseys. In re Jump Designs LLC, 80
USPQ2d 1370, 1374 (TTAB 2006) (“Where the goods in the application at issue and/or

6 World Archery website (worldarchery.org) attached to the January 10, 2019 Response to
Office Action (TSDR 24). Citations to the examination record refer to the USPTO Trademark
Status and Document Retrieval system (TSDR) by page number in the downloadable .pdf
format.
7 ESPN.com attached to the January 10, 2019 Response to Office Action (TSDR 45-47).
8 September 11, 2019 Denial of Response to Office Action (5 TTABVUE 13).
9 Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY attached to the
January 10, 2019 Response to Office Action (TSDR 15).
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in the cited registration are broadly identified as to their nature and type, such that
there is an absence of any restrictions as to the channels of trade and no limitation
as to the classes of purchasers, it is presumed that in scope the identification of goods
encompasses not only all the goods of the nature and type described therein, but that
the identified goods are offered in all channels of trade which would be normal
therefor, and that they would be purchased by all potential buyers thereof.”). See also
In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018) (where the
goods in an application or registration are broadly described, they are deemed to
encompass all the goods of the nature and type described therein); Sw. Mgmt., Inc. v.
Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (same); In re Hughes
Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly
worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly
identified ‘residential and commercial furniture.’”). Thus, Registrant’s “athletic
clothing, namely, shirts” encompass Applicant’s “custom sublimated archery jerseys.”
Under this DuPont factor, the Examining Attorney need not prove, and we need
not find, similarity as to each product listed in the description of goods. It is sufficient
for a refusal based on likelihood of confusion that we find any item encompassed by
the identification of goods in a particular class in the application and registration
related. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d
866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re Aquamar, Inc., 115 USPQ2d
1122, 1126 n.5 (TTAB 2015) (“it is sufficient for finding a likelihood of confusion if
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relatedness is established for any item encompassed by the identification of goods
within a particular class in the application.”).
Applicant contends that Applicant’s jerseys and Registrant’s athletic clothing are
“mutually exclusive”:10
The goods related to the Applicant’s Mark are expressly
limited to “custom sublimated” jerseys for non-athletic use
(archery). That is, Applicant’s goods are limited to custom-
ordered jerseys for use by non-athletes. By contrast,
Registrant’s goods are expressly clothing used by athletes.
Thus, the goods are the parties are mutually exclusive.
Thus, there would be no likelihood of confusion.11
The problem with Applicant’s contention is that we must consider the goods as
Applicant and Registrant describe them in the application and registration. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d
1157, 1161 (Fed. Cir. 2014); Octocom Sys, Inc. v. Houston Comput. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant's goods, the particular channels of
trade or the class of purchasers to which the sales of goods are directed.”); Paula
Payne Prods. v. Johnson Publ’g Co., 177 USPQ at 77 (“Trademark cases involving the
issue of likelihood of confusion must be decided on the basis of the respective
descriptions of goods”).

10 Applicant’s Brief, p. 4 (9 TTABVUE 5).
11 Id.
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In addition, we do not read limitations into the identification of goods. In re
i.am.symbolic, LLC, 123 USPQ2d at 1748; Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific limitation and nothing in
the inherent nature of Squirtco’s mark or goods that restricts the usage of SQUIRT
for balloons to promotion of soft drinks. The Board, thus, improperly read limitations
into the registration”); In re Thor Tech, 90 USPQ2d 1634, 1638 (TTAB 2009) (“We
have no authority to read any restrictions or limitations into the registrant’s
description of goods.”). Applicant’s description of goods does not exclude athletic
jerseys, nor does it limit the description of goods to non-athletic jerseys. Because
archery is a sport, we must presume that Registrant’s “athletic clothing, namely
shirts” could include all types of shirts for all types of sports, including jerseys for
archery.
We therefore find that the goods are in-part legally identical. Thus, the second
DuPont factor favors a finding of likelihood of confusion.
III. Established, likely-to-continue channels of trade and classes of
consumers.
Because the goods described in the application and the cited registration are in
part legally identical, we presume that the channels of trade and classes of
purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (identical goods are presumed to travel in same channels of
trade to same class of purchasers) (cited in Cai v. Diamond Hong, 127 USPQ2d at
1801 (“With respect to similarity of the established trade channels through which the
goods reach customers, the TTAB properly followed our case law and ‘presume[d] that
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the identical goods move in the same channels of trade and are available to the same
classes of customers for such goods….’”); In re Yawata Iron & Steel Co., 403 F.2d 752,
159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the
channels of trade and classes of purchasers are considered to be the same); United
Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese
Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022,
1028 (TTAB 2011).
Again, Applicant contends that the channels of trade and classes of consumers
differ because Applicant’s jerseys are for non-athletic use and Registrant’s athletic
clothing, namely, shirts are for athletic use.12 As explained above, Applicant’s
description of goods does not exclude athletic jerseys, it does limit the description of
goods to non-athletic jerseys, and the record shows that archery is a sport. In a case
like this, where there is no restriction or limitation in Applicant’s or Registrant’s
identification of goods, we must presume that Applicant and Registrant offer their
goods in all channels of trade that would be normal for such goods to all potential
customers for such goods. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); CBS Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198, 199 (Fed. Cir. 1983); Paula Payne Prods. Co. v. Johnson Publ’g Co.,
177 USPQ at 77.
Accordingly, the third DuPont factor favors a finding of likelihood of confusion.

12 Applicant’s Brief, p. 5 (9 TTABVUE 6).
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IV. Conditions under which Applicant and Registrant make sales.
Under the fourth DuPont factor, Applicant contends that purchasers of custom
sublimated archery jerseys exercises a high degree of purchaser care:
Further any possible overlap of purchasers of Applicant’s
Goods and Registrant’s Goods would be prevented because
Applicant’s Goods are expressly custom-sublimated.
Someone purchasing jersey [sic] that have to be custom
made will be more discerning and would not be likely to
confuse the source of goods between the parties. Such a
purchaser would exhibit a high degree of care in procuring
services [sic], and this reduces any likelihood of
confusion.13
There are several problems with Applicant’s argument. First, Applicant did not
define a “custom sublimated” jersey. Accordingly, as discussed above, we construe a
“custom sublimated” jersey to be a custom made jersey. Second, Applicant did not
explain when, why, or how a customer requires a “custom sublimated” jersey to
support its contention that such a purchaser exercises a high degree of purchaser
care. Third, Applicant’s contention is merely attorney argument unsupported by any
testimony or evidence. “Attorney argument is no substitute for evidence.” Cai v.
Diamond Hong, Inc., 127 USPQ2d at 1799 (quoting Enzo Biochem, Inc. v. Gen-Probe
Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)). Fourth, Applicant’s argument does not
take into account that a purchaser of an athletic shirt may not exercise a higher
degree of care and may mistakenly believe that the source of the custom sublimated
archery jerseys and athletic shirts are the same because of the identity of the marks.
Finally, Applicant’s reliance on Societe Anonyme de la Grande Distilleries v. Julius

13 Applicant’s Brief, p. 5 (9 TTABVUE 6).
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Wile Sons & Co., 161 F.Supp. 545, 117 USPQ 257, 259-60 (SDNY 1958) (mass
produced low priced articles are much less likely to be confused with specialty
products) is misplaced.14 In that case, both parties used their marks to identify crème
de menthe cordials which the court held “involves an exercise of personal taste and
purchasers of such liqueurs are apt to buy with a greater degree of sophistication and
care,” id. at 260, and, therefore, the parties’ purchasers would both exercise a high
degree of care. In this appeal, however, while Applicant’s purchasers might exercise
a higher degree of purchasing care, Registrant’s purchasers might not. As indicated
above, Registrant’s purchasers might mistakenly believe that the source of the
products is the same because the marks are identical.
We find this DuPont factor to be neutral.
V. Conclusion
Because the marks are identical, the goods are in part legally identical, and we
presume Applicant and Registrant offer their goods in the same channels of trade to
the same classes of consumers, we find that Applicant’s mark ATOMIC for “custom
sublimated archery jerseys” is likely to cause confusion with the registered mark
ATOMIC for, inter alia, “athletic clothing, namely, shirts.”
Decision: The refusal to register Applicant’s mark ATOMIC is affirmed.

14 Id.