Bone Wear, Inc.

Trademark Trial and Appeal Board

Aug 11, 2000

No. 75374999 (T.T.A.B. Aug. 11, 2000)

Paper No. 10
GDH/gdh
8/11/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Bone Wear, Inc.
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Serial No. 75/374,999
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Vincent E. McGeary of Gibbons, Del Deo, Dolan, Griffinger &
Vecchione for Bone Wear, Inc.
Florentina Blandu, Trademark Examining Attorney, Law Office 110
(Chris Pedersen, Managing Attorney).
_______
Before Hohein, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Bone Wear, Inc. has filed an application to register
the mark "6 4 3 DOUBLE PLAY" for "clothing and active wear,
namely, hats, T-shirts, jerseys and jackets".1

1 Ser. No. 75/374,999, filed on October 17, 1997, which alleges a bona
fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/374,999
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "DOUBLE PLAY," which is registered for "girdles and
brassieres,"2 as to be likely to cause confusion, mistake or
deception.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Preliminarily, we note that in any likelihood of
confusion analysis, two key considerations are the similarity or
dissimilarity of the goods and the similarity or dissimilarity of
the marks. See, e.g., Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).3 As to the
respective goods, applicant argues that its mark "is used with
sport-oriented clothes," while registrant's mark is used in
connection with goods which "are commonly referred to as
foundation garments." Registrant's girdles and brassieres, being
items of underwear, are "tight fitting and intended to support
and contour the body," applicant notes, while its hats, T-shirts,

2 Reg. No. 718,269, issued on July 11, 1961, which sets forth dates of
first use of April 4, 1960; first renewal.
3 The court, in particular, pointed out that: "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."
Ser. No. 75/374,999
3
jerseys and jackets are items of outerwear and, in particular,
sportswear. Applicant consequently insists that "[b]ecause the
respective goods are dissimilar, there is a competitive distance
in the goods, and the purchasers of the respective goods are not
likely to be common to both." Specifically, applicant points out
that registrant's "[g]irdles and brassieres are not likely to be
purchased by the majority of males, because they are
traditionally female clothing." Although applicant concedes that
its goods and those of registrant would be purchased by females,
applicant contends that, by their very nature, the respective
goods are "not complementary or companion items, like shoes and
suits," and thus "[t]his competitive distance ... differentiates
the source of the goods."
The Examining Attorney, on the other hand, argues that
the respective goods "are highly related in that they ... consist
of clothing items that may be purchased by everybody." In
particular, she maintains that "applicant's clothing is not
limited to boys or men and that the applicant's hats, t-shirts,
jerseys and jackets can be purchased and ... used by women as
well." In addition, she "finds that the registrant's goods are
not limited to women only" in that they may be purchased by men
as well as women.4 Furthermore, although noting that, as

4 The Examining Attorney further insists that registrant's goods are
closely related to applicant's goods because "[t]here is nothing to
Ser. No. 75/374,999
4
identified, applicant's goods are not restricted to sport-
oriented or athletic apparel, the Examining Attorney insists
that, even if such were the case, the item "brassieres" in
registrant's registration is broad enough to include bras which
are worn in conjunction with exercising, playing sports or
participating in other physically active activities. She
specifically points out that, with respect to "brassieres":
[S]uch an undergarment comes in all styles
and that one of these styles is in the nature
of a sports bra. Sports bras are commonly
used in connection with athletic wear.
Therefore, it is likely that the same
consumers, in one shopping trip[,] will
purchase the applicant's goods together with
the registrant's goods.

stop men form [sic] wearing the same type of undergarments that a
woman would wear, namely, brassieres and girdles." However, this
argument strikes us as ridiculous inasmuch as men typically would not
choose to wear women's foundation garments since they obviously have
no need for the support provided by brassieres and girdles. Moreover,
the very definitions which the Examining Attorney requests that the
Board take judicial notice of undermine, rather than support, her
position inasmuch as the excerpts from the Random House Unabridged
Dictionary (2d ed. 1993) at 254 and 807 respectively define
"brassiere" as "a woman's undergarment for supporting the breasts.
.... Also called bra" and list "girdle," in relevant part, as "a
lightweight undergarment, worn esp. by women, often partly or entirely
of elastic or boned, for supporting and giving a slimmer appearance to
the abdomen, hips, and buttocks." Thus, in common parlance, such
terms refer to women's undergarments and do not include those for men.
There is simply nothing of record, in consequence thereof, to show
that men constitute a significant class of the normal or usual
customers for registrant's goods. As our primary reviewing court has
cautioned: "We are not concerned with mere theoretical possibilities
of confusion, deception, or mistake or with de minimis situations but
with the practicalities of the commercial world, with which the
trademark laws deal." Electronic Design & Sales Inc. v. Electronic
Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir.
1992), citing Witco Chemical Co., Inc. v. Whitfield Chemical Co.,
Inc., 418 F.2d 1403, 164 USPQ 43, 44-45 (CCPA 1969).
Ser. No. 75/374,999
5
Finally, the Examining Attorney contends that the
respective goods are commercially related inasmuch as she has
made of record a number of third-party registrations "where
registrants offer brassieres or girdles in connection with sports
wear articles." She argues that such evidence "serves to show
that it is reasonable for a consumer to believe that the
registrant has expanded use of its mark to also include goods
listed by the applicant under its mark."
It is well settled that the issue of likelihood of
confusion must be determined on the basis of the goods as they
are set forth in the involved application and cited registration.
See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199
(Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 940 (Fed. Cir. 1983); and Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). Thus, where the goods in the application at issue and in
the cited registration are broadly described as to their nature
and type and, as is the case herein, there are no restrictions in
the respective identifications of goods as to their channels of
trade or classes of customers, it is presumed in each instance
that in scope the application and registration encompass not only
all goods of the nature and type described therein, but that the
identified goods move in all channels of trade which would be
Ser. No. 75/374,999
6
normal for such goods and that they would be purchased by all
potential buyers thereof. See, e.g., In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). No weight, therefore, may be given to
applicant's contentions that its "clothing and active wear,
namely, hats, T-shirts, jerseys and jackets," is limited to
"sport-oriented clothes."
Furthermore, it is well established that goods need not
be identical or even competitive in nature in order to support a
finding of likelihood of confusion. Instead, it is sufficient
that the goods are related in some manner and/or that the
circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed in
connection therewith, to the mistaken belief that they originate
from or are in some way associated with the same producer or
provider. See, e.g., Monsanto Co. v. Enviro-Chem Corp., 199 USPQ
590, 595-96 (TTAB 1978) and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In the present case, we agree with the Examining
Attorney that the third-party registrations of record are
sufficiently probative to establish that applicant's goods, while
specifically different from registrant's goods, are nevertheless
so closely related thereto that, if sold under the same or
similar marks, a likelihood of confusion as to the origin or
Ser. No. 75/374,999
7
affiliation of the respective goods would result. In this
regard, the Examining Attorney has introduced in support of her
position copies of eight use-based third-party registrations of
marks which, in each instance, are registered for one or both of
registrant's goods, on the one hand, and at least one or more of
applicant's goods on the other. Five of such registrations, in
fact, list in each case not only girdles and brassieres (or
bras), but also include t-shirts, jackets and/or hats. Although
the third-party registrations are not evidence that the different
marks shown therein are in use or that the public is familiar
with them, they nevertheless have some probative value to the
extent that they serve to suggest that the goods listed therein
are of a kind which may emanate from a single source. See, e.g.,
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993) and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
(TTAB 1988) at n. 6. Clearly, both registrant's and applicant's
goods would be sold through the same channels of trade, such as
retail clothing stores, boutiques, department stores and mass
merchandisers, to the identical classes of purchasers, including
women in general as well as those who favor active lifestyles.
Turning, therefore, to consideration of the respective
marks, applicant argues that its "6 4 3 DOUBLE PLAY" mark, when
used in connection with its sportswear items, conveys an entirely
different impression, namely, that of sports activity, than does
Ser. No. 75/374,999
8
registrant's "DOUBLE PLAY" mark, which when used in connection
with women's foundation garments, such as girdles and brassieres,
engenders the image of support and contour. According to
applicant (italics in original):
"6 4 3 DOUBLE PLAY" is a baseball term
referring to a play where the shortstop,
second baseman and first baseman combine to
record two outs on a single play. In
baseball, the scoring system used to record
the game assigns each player in the field a
numeral. When a play is made in the field,
the play is recorded using a number system.
The term 6-4-3 has received such wide-spread
use in baseball that it has meaning to
persons having even a passing familiarity
with baseball, even when they are not
familiar with the baseball scoring system.
The term suggests the "moving" image of a
shortstop fielding a ground ball, flipping it
to a second baseman, who then fires the ball
to first base.
In 1961, ... Registrant apparently
limited its mark to woman's [sic] underwear:
brassieres and girdles. Registrant made no
attempt to use the term for outerwear and in
particular, activewear or sportswear. The
term "DOUBLE PLAY" chosen by Registrant for
its "foundation garments" clearly suggests
the "static" image of double support provided
by these foundation garments. The term in
this context delivers no connotation with
respect to outerwear.
Applicant consequently maintains that, not only do the
numerals "6 4 3" add three syllables to its mark, thereby giving
it substantial differences in sound and appearance, but such
numerals, by referring to the type of double play "where the
short stop [sic] (6) catches a ground ball, throws it to the
Ser. No. 75/374,999
9
second baseman (4), where the first out is gained, who then
throws the ball to the first baseman (3), where the second out is
gained," makes applicant's "6 4 3 DOUBLE PLAY" mark "more
distinctive" inasmuch as none of such imagery is conveyed by
registrant's "DOUBLE PLAY" mark. By contrast, applicant urges
that:
Close-fitting women's underwear,
especially restrictive underwear like
girdles, are not typically associated with
sports, especially baseball. A woman, when
purchasing a "DOUBLE PLAY" brassiere or
girdle, is unlikely to imagine a baseball
play. Rather the consumer is likely to react
as the Registrant obviously intended: the
underwear will be associated with the double
action of support and contour. The purchaser
of Applicant's loose fitting sports outerwear
(T-shirts, hats, jackets and jerseys) is not
likely to associate the source of these goods
with the maker of the doubly supportive and
contour shaping "DOUBLE PLAY" brassiere.
Therefore, the meaning of Applicant's "6 4 3
DOUBLE PLAY" mark and the meaning of
Registrant's mark are wholly different as
applied to their respective goods and evoke
different images in the consumer.
We are constrained to agree with the Examining
Attorney, however, that confusion is likely. As the she points
out, rather than serving to distinguish the respective marks, the
well-known baseball term "6 4 3" simply designates a particular
type of double play. Thus, when considered in their entireties,
it is the term "DOUBLE PLAY" which constitutes the dominant and
distinguishing element of applicant's "6 4 3 DOUBLE PLAY" mark
Ser. No. 75/374,999
10
and which is identical to registrant's "DOUBLE PLAY" mark. The
manner of keeping score in baseball by means of a numbering
system for the players is so well known and established that the
term "6 4 3" would not be viewed as arbitrary or otherwise
distinguishing matter when used in connection with the baseball
term "DOUBLE PLAY".
The respective marks, consequently, would be viewed,
when considered in their entireties, as being appreciably alike
in sound, appearance and connotation. Moreover, both marks,
contrary to applicant's contentions, convey substantially the
same overall commercial impression, given that the term "double
play" is such a common and familiar expression to all members of
the general public, including women as well as men. Therefore,
even though foundation garments like registrant's girdles and
brassieres undoubtedly provide the dual functions of support and
contour to the body of the wearer, we simply fail to see why
consumers would understand registrant's "DOUBLE PLAY" mark to
have only a significance which is unrelated to its ordinary or
everyday meaning, like in applicant's "6 4 3 DOUBLE PLAY" mark
for its clothing and active wear, as a well-known baseball term.
Instead, we find that purchasers and potential
customers, who are familiar or acquainted with registrant's
"DOUBLE PLAY" mark for girdles and brassieres, would be likely to
believe, upon encountering applicant's substantially similar "6 4
Ser. No. 75/374,999
11
3 DOUBLE PLAY" mark for its hats, T-shirts, jerseys, and jackets,
that such closely related items of apparel emanate from, or are
sponsored by or associated with, the same source. Furthermore,
even if such consumers were to notice the difference in the
respective marks, it would still be reasonable for them to
believe, for example, that applicant's "6 4 3 DOUBLE PLAY" mark
for its clothing and active wear designates a new or additional
product line emanating from, or sponsored by, the same source as
the foundation garments offered by registrant under its "DOUBLE
PLAY" mark.
Decision: The refusal under Section 2(d) is affirmed.
G. D. Hohein
D. E. Bucher
T. E. Holtzman
Administrative Trademark Judges,
Trademark Trial and Appeal Board