Bluglass Designs LLC dba Bluglass Designs

Trademark Trial and Appeal Board

Nov 25, 2015

No. 86199370 (T.T.A.B. Nov. 25, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bluglass Designs LLC
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Serial No. 86199370
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Clay D. Shorrock of The McHattie Law Firm LLC,
for Bluglass Designs LLC.
Marco Wright, Trademark Examining Attorney, Law Office 120,
Michael W. Baird, Managing Attorney.
_____

Before Kuczma, Gorowitz and Goodman,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Bluglass Designs LLC d/b/a Bluglass Designs (“Applicant”) seeks registration on
the Principal Register of the mark EXPERIENCE (in standard characters) for:
Athletic apparel, namely, shirts, pants, hats and caps;
Collared shirts; Golf shirts; Graphic T-shirts; Hooded
sweat shirts; Long-sleeved shirts; Shirts for infants,
toddlers, children, adults, men and women in
International Class 25.1

1 Application Serial No. 86199370 was filed on February 20, 2014, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as January 2, 2014.
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The Trademark Examining Attorney issued a final refusal to register Applicant’s
mark pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing
Registration No. 4240729 as a bar to registration. Registration No. 4240729 owned
by Skis Rossignol-Club Rossignol is for the mark EXPERIENCE (in standard
character format) for “ski boots, snowboard boots” in International Class 25.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the request for reconsideration was denied, the appeal was
resumed. Applicant and the Examining Attorney have filed briefs including
Applicant’s Reply brief. For the reasons set forth below, the refusal to register is
affirmed.
I. Likelihood of Confusion
Applicant contends that in view of the weakness of Registrant’s mark, the
differences between the marks, the differences in the goods covered in its
application versus the goods covered in the cited registration, the differences in the
customers and trade channels, and the sophistication of the customers, there is no
likelihood of confusion.
Our determination of likelihood of confusion under § 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. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Co., 315 F.3d 1311,

2 Registration No. 4240729 also includes goods in International Class 28 (skis, ski bindings,
snowboards, snowboard bindings) which have not been considered as such goods are not as
closely related to Applicant’s goods as the goods in International Class 25.
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65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Here, the relevant considerations are the
similarities between the marks, the relatedness of the goods, the similarity of the
customers and trade channels of the goods, sophistication of the customers, and the
number and nature of similar marks used on similar goods. See In re St. Helena
Hospital, 774 F.3d 747, 113 USPQ2d 1082, 1084 (Fed. Cir. 2014); In re Viterra Inc.,
671 F. 3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). We have considered all of
the evidence as it pertains to the relevant du Pont factors, as well as Applicant’s
arguments (including any evidence and arguments not specifically discussed in this
opinion). To the extent any other du Pont factors for which no evidence or argument
were presented may nonetheless be applicable, we treat them as neutral.
A. The similarity or dissimilarity of the marks as to
appearance/sound/meaning and commercial impression
We consider the first du Pont factor, focusing on the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, connotation and commercial
impression. In re Viterra Inc., 101 USPQ2d at 1908; du Pont, 177 USPQ at 567.
Applicant’s mark is indistinguishable from Registrant’s mark in sound, sight
and meaning. In an attempt to distinguish its mark from Registrant’s identical
mark, Applicant argues that the marks convey different commercial messages
because Applicant uses EXPERIENCE as a verb while Registrant appears to use it
as a noun.3 Applicant’s claim that its usage of the mark differs from that of
Registrant is not relevant in this analysis because we consider the marks as set

3 August 20, 2014 Response to Office Action, p. 12 .
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forth in the application and registration. In this case, both marks are identical, the
term EXPERIENCE in standard characters, without stylization, design or other
elements to show any distinguishing characteristics from each other.
B. The relatedness of the goods, channels of trade and classes of customers
We next consider the du Pont factors involving the relatedness of Applicant’s
goods, especially, athletic apparel, namely, shirts, pants, hats and caps,4 to
Registrant’s goods, ski boots and snowboard boots, the channels of trade and classes
of customers.
Notwithstanding Applicant’s evidence and arguments regarding the actual scope
of the Registrant’s commercial use of the cited mark, we may not limit, by resort to
extrinsic evidence, the scope of goods in the cited registration (or those in the
subject application). In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008);
In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). The question of
likelihood of confusion must be determined based on an analysis of the goods
identified in Applicant’s application vis-à-vis the goods identified in the registration,
rather than what the particular nature of evidence shows the goods actually are.
See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110

4 While Applicant’s application contains additional goods in International Class 25, those
goods are deemed less relevant. We need not consider Applicant’s remaining goods because
likelihood of confusion as to one of the products listed in Applicant’s description of goods in
that Class is sufficient to support a conclusion of likelihood of confusion. Tuxedo Monopoly,
Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)
(likelihood of confusion must be found if there is likely to be confusion with respect to any
items that come within the identification of goods in the application).
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USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Hughes
Furniture Industries, Inc., 114 USPQ2d 1134, 1137 (TTAB 2015).
The goods of the parties need not be identical or even competitive to find a
likelihood of confusion. See On-line Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are
different from, and thus not related to, one another in kind, the same goods can be
related in the mind of the consuming public as to the origin of the goods.”). The
respective goods need only be “related in some manner and/or if the circumstances
surrounding their marketing [be] such that they could give rise to the mistaken
belief that [the goods] emanate from the same source.” Coach Services, Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). And
because the marks of the respective parties are identical, the relationship between
the relevant goods need not be as close to support a finding of likelihood of
confusion. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir.
1993); In re House Beer, LLC, 114 USPQ2d 1073, 1077 (TTAB 2015); In re Davey
Products Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009).
Here, the respective goods are related. It is common for entities that provide ski
boots and snowboard boots to also provide athletic apparel, namely, shirts, pants,
hats and caps. For example, Salomon, Burton, and Rossignol (the owner of the cited
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Registration), are ski boot and snowboard boot producers that also offer clothing,
such as pants, tops, t-shirts, and jackets marketed under the same mark as their
ski/snowboard boots.5 Additionally, online retailers, i.e., Rei.com, Evo.com,
Backcountry.com, and The House Outdoor Gear, offer clothing items such as pants,
shirts, and hats along with ski boots and snowboard boots (“Relevant Goods”).6
Therefore, the evidence demonstrates that the same entity commonly produces the
Relevant Goods and markets the goods under the same mark. It also demonstrates
that the Relevant Goods are sold or provided through the same trade channels and
used by the same classes of consumers in the same fields of use. See, e.g., In re
Davey Products Pty Ltd., 92 USPQ2d at 1203; In re Toshiba Medical Systems Corp.,
91 USPQ2d 1266, 1271-72 (TTAB 2009).
Applicant argues, without support, that Registrant’s ski boots and snowboarding
boots are highly specialized products sold online or in specialty ski shops which
cater to a sophisticated segment of the population. Conversely, Applicant contends
its products are sold on-line or in its flagship boutique on Long Island, NY.7 Because
the channels of trade in which the parties’ goods supposedly travel are not
restricted in either the cited registration or Applicant’s application, nothing

5 See May 3, 2014 Office Action pp. 8, 11-13, 14-18; September 11, 2014 Final Office Action
pp. 47-49, 54, 56-59. Applicant also provided evidence of Registrant’s use of its
ROSSIGNOL mark in connection with clothing. See, Exhibit G to Certification of Clay D.
Shorrock, Esq. submitted with Request for Reconsideration, containing copy of Rossignol
website with a link to Winter Clothing, p. 47.
6 See September 11, 2014 Final Office Action pp. 10, 13-14, 15, 19-20, 23-24, 25-31, 32-34,
37, 39-41. Also see, Exhibit B to Certification of Christopher J. McHattie, Esq. submitted
with Request for Reconsideration, containing copies of pages from the www.the-house.com
website advertising Rossignol Experience ski boots and links to Snowboard Clothing, p. 71.
7 Applicant’s Appeal Brf. p. 14 (7 TTABVUE 20).
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prevents Registrant’s ski and snowboard boots from being promoted in the same
channels of trade for and to the same classes of customers that purchase Applicant’s
athletic apparel, namely, shirts, pants, hats and caps.
Skiers and snowboarders are the primary purchasers of Registrant’s ski and
snowboard boots. Inasmuch as they would be likely to wear athletic clothing, such
as the athletic apparel, namely, shirts, pants, hats and caps, identified in
Applicant’s application, particularly when they are participating in their respective
sports, the target consumers of both Registrant and Applicant overlap, as indicated
by the evidence above.
Accordingly, we find that the du Pont factors regarding the relatedness of the
goods, channels of trade and classes of customers weigh in favor of finding a
likelihood of consumer confusion. In re Iolo Technologies LLC, 95 USPQ2d 1498,
1501 (TTAB 2010).
C. Sophistication of Purchasers
Given the high cost of Registrant’s products as well as the fact that they are
highly technical goods that satisfy a focused need, Applicant maintains that
consumers of Registrant’s goods use a high degree of care in their purchasing
decisions. Moreover, Applicant asserts that as the standard of sophistication and
care associated with the consumers of Registrant’s goods are elevated to that of a
discriminatory purchaser, they would undertake careful consideration before
purchasing expensive goods and not be confused as to the source of Applicant’s low
cost casual clothing items.
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Applicant’s evidence shows goods bearing Registrant’s EXPERIENCE mark
being advertised at retail sales prices of $649 and $406.95.8 Because Registrant’s
goods are “enormously” expensive, Applicant argues that the standard of
sophistication and care associated with the consumers of Registrant’s goods are
greatly elevated to that of a discriminating purchaser. Although Applicant
concludes that the discriminating purchasers of Registrant’s goods would not be
confused as to the source of Applicant’s low cost casual clothing items,9 there is no
evidence regarding the cost of Applicant’s goods. However, “… it is the identification
of goods that controls, not what extrinsic evidence may show about the specific
nature of the goods…. An applicant may not restrict the scope of the goods covered
in the cited registration by argument or extrinsic evidence.” In re Peregrina Ltd., 86
USPQ2d at 1646. Thus, our determination must be based on Registrant’s identified
“ski boots, snowboard boots” generally, not on the legally irrelevant fact that
Registrant’s actual boots might be expensive. See In re Opus One Inc., 60 USPQ2d
1812, 1817 (TTAB 2001).
On the record, there is no basis upon which we might find that ski boots and
snowboarding boots necessarily are so expensive, or that the purchasers of these
goods necessarily are so knowledgeable and careful in purchasing the goods, that
the likelihood of confusion arising from the use of identical marks on such goods

8 See Request for Reconsideration, pp. 43 (Certification of Clay D. Shorrock, Esq. Exhibit G
from http://www.rossignol.com/US/US/alpine-men-boots.html); pp. 70-71 (Certification of
Christopher J. McHattie, Exhibit B from http:/www.the-house.com/ro2es31095tbl12zz-
rossignol-ski-boots.html).
9 Applicant’s Appeal Brf. p. 13 (7 TTABVUE 19).
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would be significantly mitigated. Moreover, even if we were to find that the
Registrant’s goods are somewhat expensive and that some care would be taken in
purchasing the goods, it is well-settled that even careful purchasers who are
knowledgeable as to the goods are not necessarily knowledgeable in the field of
trademarks or immune to source confusion arising from the use of confusingly
similar (and in this case, identical) marks on or in connection with the goods. See In
re Davey Products Pty Ltd., 92 USPQ2d at 1204; In re Wilson, 57 USPQ2d 1863,
1866 (TTAB 2001). Thus, even careful purchasers are not immune from source
confusion. We find this to be especially the case here where the marks are identical
and the goods are related. See In re Total Quality Group Inc., 51 USPQ2d 1474,
1477 (TTAB 1999); In re Linkvest, S.A., 24 USPQ2d 1716 (TTAB 1992); In re
TIE/Communications Inc., 5 USPQ2d 1457 (TTAB 1987); and In re Graphics
Technology Corp., 222 USPQ 179 (TTAB 1984).
D. Number and Nature of Similar Marks in Use on Similar Goods
Applicant contends that Registrant’s mark is too weak to deserve a monopoly
within the entire marketplace of clothing. While acknowledging that weak marks
are entitled to protection, Applicant maintains the protection afforded to a weak
mark is extremely limited, in this case to the description of goods listed in
Registrant’s registration, and should not be read to extend to the entire Class 25 set
of goods.
Applicant also contends that Registrant’s mark is a “sub-brand” that is only used
in connection with Registrant’s famous house mark “Rossignol,” which greatly
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limits any independent commercial recognition of the mark and lessens any
likelihood of confusion.10 Applicant’s argument is misguided. The mark shown in
Registrant’s registration is EXPERIENCE which is identical to Applicant’s mark.
Additionally, contrary to Applicant’s argument, it has long been held that the
addition of a trade name or house mark to a registered mark does not generally
avoid confusion. In re Fiesta Palms LLC, 85 USPQ2d 1360, 1364 (TTAB 2007) citing
Menendez v. Holt, 128 U.S. 514, 521 (1888).
Applicant argues that Registrant’s suggestive mark is extremely weak due to the
“literally thousands of registrations utilizing the term EXPERIENCE,”11 and is
therefore entitled to a limited scope of protection, limiting any likelihood of
confusion.12 Given the weak nature of Registrant’s mark, Applicant argues there
simply can be no possibility of confusion between Registrant’s use of its mark on ski
boots and snowboarding boots, and Applicant’s use of its mark on “general casual”
clothing. As set forth above, however, Applicant’s goods are not just “general casual”
apparel; rather, they include “athletic apparel, namely, shirts, pants, hats and
caps.” Notably, athletic apparel includes “shirts, pants, hats and caps” for skiing
and snowboarding.
In support of its position, Applicant submits copies of searches conducted on the
USPTO’s Trademark Electronic Search System (TESS) system.13 Third-party

10 Applicant’s Appeal Brf. pp. 6-7 (7 TTABVUE 12-13).
11 Applicant’s Appeal Brf., p. 6 (7 TTABVUE 12); Request for Reconsideration p. 16.
12 Applicant’s Appeal Brf., p. 7 (7 TTABVUE 13).
13 While such searches are commonly accepted as evidence, the copies of the searches
submitted as evidence by Applicant do not contain the full search results. Applicant has
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registration evidence may show that a term carries a well-recognized descriptive or
suggestive connotation in the relevant industry and therefore may be considered
somewhat weak. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v.
New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir.
2015); Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1675 (Fed. Cir. 2015). While Applicant asserts that the USPTO records show
“there are over 6,040 marks identified on TESS (2,717 that are live) that include the
term ‘experience,’” neither copies of the entire TESS searches, nor copies of the
USPTO records for the marks found in the search, were provided.14 Thus,
Applicant’s representations are unsupported.
Applicant also relies on similar “search” results which it says show 236 marks
containing the word “EXPERIENCE” are registered in Class 25.15 However, only
100 of those 236 marks were shown in the search results provided in Exhibit D, and
of those marks, only 30 were currently registered, i.e., “Live” marks. More
importantly, the “search” results submitted by Applicant reveal that Registrant’s
mark is the only registered mark for the single-word EXPERIENCE in

only provided the listing of responsive marks found in each search. Such listings do not
contain important information such as the goods and services covered by the registration or
the name of the trademark owner. The lack of such information significantly decreases the
value of the search results.
14 See Certification of Clay D. Shorrock, Esq. dated March 11, 2015 at Exhibit B attached to
Request for Reconsideration pp. 23, 26-29, and Certification of Christopher J. McHattie,
Esq. at Exhibit A, attached to Request for Reconsideration at pp. 63, 66-68.
15 See Certification of Christopher J. McHattie, Esq. at Exhibit D, attached to Request for
Reconsideration at p. 63, 76-80.
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International Class 25 and is only one of nine marks registered in all Classes for the
single-word “EXPERIENCE.”16
While “… extensive evidence of third-party use and registrations is ‘powerful on
its face,’” and is relevant to show that a segment common to both parties’ marks
may have “a normally understood and well-recognized descriptive or suggestive
meaning, leading to the conclusion that that segment is relatively weak,” such
evidence has not been submitted in this case. See Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 116 USPQ2d at
1136. No evidence showing third-party use of similar marks has been provided and
the trademark “searches” that were submitted are not complete. For example, the
trademark “searches” submitted by Applicant do not contain crucial information
such as the goods covered by the registrations or the identity of the owner(s) of the
registrations.17 More importantly, virtually all of the marks listed in the partial
search summaries Applicant submitted into evidence are marks that include the
term “experience” as part of a phrase. Such marks convey significantly different
commercial impressions from the mark in Applicant’s application and Registrant’s
registration which is the single-word mark EXPERIENCE.
Applicant also argues that the fact that “two registrations” for the literal mark
EXPERIENCE in connection with the very same goods can coexist without a

16 Exhibit C to Certification of Clay D. Shorrock, Esq., attached to Request for
Reconsideration at p. 30.
17 The same problems are encountered with the search results for “(experience)[COMB] and
(clothing)[GS]” and “(experience)[COMB] and (sports)[GS]” attached as Exhibit E to the
McHattie Certification submitted with the Request for Reconsideration at pp. 81-89.
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likelihood of confusion is very strong evidence of the weakness of Registrant’s mark.
In support, Applicant points to the eleven “live registered marks” for EXPERIENCE
shown in its TESS search, noting that two of those marks are for use in
International Class 9 “and both of the marks relate to computer applications for
mobile phones, the exact same good and/or service”18 (emphasis original). With
respect to the search results, there is only one registered mark in International
Class 9 relating to computer applications for mobile phones; the other mark
referenced is still the subject of a pending application.19 The goods covered by the
registration and application are different; Applicant misconstrues the nature of the
goods covered by the registered mark and the pending application by describing
them as relating to “computer applications for mobile phones, the exact same
good and/or service”20 (emphasis original). Moreover, the Board is not bound by
the prior decisions of examining attorneys in allowing marks for registration. It has
been noted many times that each case must be decided on its own facts. See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if

18 Applicant Appeal Brf. p. 4 (7 TTABVUE 10); and Exhibit C to Certification of Clay D.
Shorrock, Esq. attached to Request for Reconsideration at p. 30.
19 See Serial No. 85600922 in Exhibit C to Certification of Clay D. Shorrock, Esq. attached
to Request for Reconsideration at p. 30. Moreover, even copies of third-party applications
have no evidentiary value other than to show that the applications were filed.
20 See Shorrock Certification at Exhibits D-F, Request for Reconsideration pp. 31-35.
Registration No. 4335974 is for “Computer application software for mobile phones, namely,
software for use by hotel guests, for enhancing the quality of their hotel stay” (Exhibit D, p.
31), while Serial No. 85600922 is for “Computer application software for mobile phones,
namely, software for providing at least one feature for payment card or other payment
method use; …” (Exhibit E, pp. 33-34). Thus, while both the registration and the application
generally cover computer application software for mobile phones, the specific application of
the software has very different and unrelated purposes.
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some prior registrations had some characteristics similar to [applicant’s]
application, the PTO’s allowance of such prior registrations does not bind the Board
or this court.”); and In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567,
4 USPQ2d 1141, 1142 (Fed. Cir. 1987).
The listings of the third-party registrations submitted by Applicant do not
compel a different result in the present case.21 Even if all of the pertinent
information regarding the registrations was provided in the search results
submitted as evidence, the registrations are not evidence that the marks shown
therein are in use or that the public is familiar with them, and the existence on the
register of confusingly similar marks cannot aid Applicant in its effort to register
another mark which so resembles a registered mark as to be likely to cause
confusion. Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542,
1545 (Fed. Cir. 1992); AFM Inc. v. American Leisure Products, Inc., 474 F.2d 1403,
177 USPQ 268, 269-70 (CCPA 1973); In re Total Quality Group Inc., 51 USPQ2d at
1477 (“[E]ven careful purchasers are not immune from source confusion.”).
E. Conclusion
In view of the exact similarity of the marks used on related goods, which are sold
to the same customers in the same marketplace, Applicant’s EXPERIENCE mark is
likely to cause confusion with Registrant’s identical mark.

21 The mere listing of third-party registrations normally is insufficient to make them of
record. In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). Mere lists do not show what
the particular goods are for which the marks have been registered. Thus, the search results
submitted by Applicant have very limited probative value, if any. Black & Decker Corp. v.
Emerson Electric Co., 84 USPQ2d 1482, 1494 (TTAB 2007).
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Decision: The refusal to register Applicant’s mark EXPERIENCE is affirmed.