Bone Yard Industries

Trademark Trial and Appeal Board

May 22, 2012

No. 77709106 (T.T.A.B. May. 22, 2012)

Mailed: May 22, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bone Yard Industries
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Serial No. 77709106
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Bone Yard Industries, pro sé.1

Kaelie Kung,2 Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Quinn, Cataldo and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Bone Yard Industries (“applicant”) has filed an application
to register on the Principal Register the mark BONE YARD
INDUSTRIES and design, shown below,

1 Scott Shelingoski, applicant’s CFO, represented applicant during
prosecution of the application and the appeal.
2 The application was originally handled by a different examining
attorney.
THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Serial No. 77709106
2
for “gloves; hats; shirts; [and] sweatshirts” in International
Class 25. The application was filed on April 7, 2009, and
included an allegation of a bona fide intention to use the mark
in commerce under Section 1(b) of the Act.3
Registration has been finally refused on the ground of
likelihood of confusion under Trademark Act Section 2(d), 15
U.S.C. § 1052(d), with the marks in the following registrations,
both owned by the same entity:
Registration No. 3175083 (‘083 Registration)

for the mark BONE YARD and design, shown below,

for “T-shirts and hats” in International Class 25;4
and

Registration No. 3765906 (‘906 registration)

for the mark BONEYARDS (in standard character
format) for, inter alia, “belts; footwear; headwear;
pants; shirts; shorts; [and] T-shirts” in
International Class 25.5

3 The application includes the following description statements: “The
mark consists of the stylized text ‘Bone Yard Industries’ inside a
circle with two devil horns and a halo.” and “Color is not claimed as
a feature of the mark.”
4 Issued November 21, 2006, and claiming April 22, 1996, as the date
of first use anywhere and in commerce. The registration includes the
following description statement: “The mark consists of an oblong oval
with a skull and crossbones in the center between the words bone and
yard.
5 Issued March 30, 2010, and claiming June 21, 2008, as the date of
first use mark anywhere and in commerce as to the Class 25 goods.
Serial No. 77709106
3
The examining attorney also made final a requirement that
the term “INDUSTRIES” in the applied-for mark be disclaimed
because it is descriptive.6
Applicant appealed, and both applicant and the examining
attorney filed briefs. For the reasons discussed below, we
affirm the refusals to register.
At the outset, we note that applicant, in its brief, solely
argues that “the company currently registered, Stussy, does not
have any products in commerce using the name BoneYards,” …
[whereas its] “line has been in commerce since 2008.”
Applicant’s br. p. 1. To the extent applicant is challenging
the validity of the cited registrations, such a challenge
constitutes an impermissible collateral attack on those
registrations. Section 7(b) of the Trademark Act, 15 U.S.C. §
1057(b), provides that a certificate of registration on the
Principal Register shall be prima facie evidence of the validity
of the registration, of the registrant’s ownership of the mark
and of the registrant’s right to use the mark in connection with
the goods or services identified in the certificate. During ex

The registration also includes goods in International Classes 16
and 18, but they were not cited by the examining attorney in her
refusal.
6 Although not particularly stated, the disclaimer requirement is made
pursuant to Section 6 of the Trademark Act, 15 U.S.C. § 1056.
An additional requirement made final was for a more complete
description of the mark. However, this requirement was withdrawn by
the examining attorney in her brief, and accordingly, will be given no
further consideration.
Serial No. 77709106
4
parte prosecution, including an ex parte appeal, an applicant
will not be heard on matters that constitute a collateral attack
on the cited registration (e.g., applicant’s claim of non-use of
the mark in connection with the identified goods). In re Dixie
Restaurants, Inc. 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997); and In re Peebles Inc., 23 USPQ2d 1795, 1797 n. 5 (TTAB
1992). Accordingly, no consideration has been given to
applicant’s argument in this regard.
Disclaimer
We first consider the disclaimer requirement. An examining
attorney may require an applicant to disclaim an unregistrable
component of a mark otherwise registrable. Words or
abbreviations in a trade name designating the legal character of
an entity (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) must
be disclaimed because an entity designation has no source-
indicating capacity. See TMEP § 1213.03(d) (8th ed. 2011). See
also, In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB
1988) (“‘Paint Products Co.’ is no more registrable for goods
emanating from a company that sells paint products than it would
be as a service mark for the retail paint store services offered
by such a company”); and In re Packaging Specialists, Inc., 221
USPQ 917, 919 (TTAB 1984) (“the element ‘INC.’ [in PACKAGING
SPECIALIST, INC.] being recognized, in trademark evaluation, to
have no source indication or distinguishing capacity” (citing In
Serial No. 77709106
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re E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984)). Failure to
comply with a disclaimer requirement is a ground for refusal of
registration. See In re Omaha National Corp., 819 F.2d 1117, 2
USPQ2d 1859 (Fed. Cir. 1987); and In re Box Solutions Corp., 79
USPQ2d 1953 (TTAB 2006).
Here, the examining attorney has required a disclaimer of
the term “industries,” arguing that the term merely describes
the nature of applicant’s business and does not function to
indicate the source of applicant’s goods. We agree.
“Industry,” the singular form of “industries,” is defined by the
relevant dictionary definition of record, taken from The
American Heritage Dictionary of the English Language (2000), as
“commercial production and sale of goods.”7 We also take
judicial notice of a definition taken from Cambridge
Dictionaries Online wherein “industry” is defined as:
“a type of business: She’s worked in the banking and computer
industries.”8
In addition, the examining attorney made of record ten (10)
use based, third-party registrations for marks including the

7 http://education.yahoo.com/reference/dictionary/entry/industry,
retrieved June 25, 2009. Exh. to Office Action issued June 25, 2009.
8 http://dictionary.cambridge.org/dictionary/american-
english/industry_2, retrieved May 12, 2012. The Board may take
judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or have regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 77709106
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term “industries” for clothing items in which that term has been
disclaimed. While the third-party registrations are not
evidence that the registered marks are actually in use, they may
be given some weight to show the meaning of a mark, or a term in
the mark, in the same way that dictionaries are used. In re Box
Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (“[T]hird-
party registrations can be used in the manner of a dictionary
definition to illustrate how a term is perceived in the trade or
industry”). See also In re J.M. Originals Inc., 6 USPQ2d 1393,
1394 (TTAB 1987) (“[T]hird party registrations are of use only
if they tend to demonstrate that a mark or a portion thereof is
suggestive or descriptive of certain goods and hence is entitled
to a narrow scope of protection”).
In view of the foregoing, it is clear that the term
“industries” merely describes applicant’s entity type and, as
such, has no source-identifying capability. The disclaimer
requirement is affirmed.
Likelihood of Confusion
Turning then to the Section 2(d) refusal, our determination
of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence that are relevant to the
factors set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Serial No. 77709106
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Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the
similarities between the goods and/or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also, Dixie Restaurants, 41 USPQ2d at 1531.
We turn first to a consideration of the goods identified in
the application and the cited registrations. In analyzing the
goods, we acknowledge that there is no per se rule governing the
likelihood of confusion cases involving clothing items. In re
British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984). Nonetheless,
the identified goods of applicant and those of registrant in the
cited registrations include identical items (e.g., hats, shirts,
T-shirts and headwear)9, and include otherwise related clothing
items (e.g., gloves, sweatshirts, belts, pants, shorts and
footwear). Likelihood of confusion may be found based on any
item that comes within the identification of goods in the
involved registration. Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Further, with regard, at least, to the identical goods, we must
presume that they will be sold in the same channels of trade and
will be bought by the same classes of purchasers, while the

9 We consider the broadly identified item “shirts” in applicant’s
application to include the more specifically identified T-shirts in
the cited ‘083 and ‘906 Registrations, and the broadly identified
“headwear” in the cited ‘906 Registration to include applicant’s more
narrowly identified “hats.”
Serial No. 77709106
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related goods will be sold in some of the same channels of
trade, and will be bought by some of the same purchasers. See
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994).
In view thereof, the du Pont factors of the similarity of
the goods, channels of trade and classes of purchasers strongly
favor a finding of likelihood of confusion as to the cited
registrations.
We next consider the marks, keeping in mind that “[w]hen
marks would appear on virtually identical goods or services, the
degree of similarity [between the marks] necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992), cert denied, 506 U.S. 1034
(1992).
In comparing applicant’s mark to the cited marks, we must
determine whether they are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Although the marks 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
Serial No. 77709106
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1056, 224 USPQ 749 (Fed. Cir. 1985). For instance, “that a
particular feature is descriptive or generic with respect to the
involved goods or services is one commonly accepted rationale
for giving less weight to a portion of a mark….” Id. at 224 USPQ
at 751. Furthermore, the test 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 and/or services 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). In this case the
average purchaser is an ordinary consumer seeking clothing
items.
With these legal principles in mind, we consider the marks
and find that applicant’s mark is substantially similar in
appearance, sound, connotation and overall commercial impression
to each of the cited marks. With respect to applicant’s mark
vis-à-vis the cited mark BONE YARD and design mark, we find that
the term “BONE YARD” is the primary source identifying element
of both marks. The entity-designating term “Industries” in
applicant’s mark is not source-distinguishing. Moreover, with a
composite mark comprising a design and words, it is the wording
Serial No. 77709106
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that makes a greater impression on purchasers and is the portion
that is more likely to be remembered as the source-signifying
portion of applicant’s mark. In re Dakin’s Miniatures, Inc., 59
USPQ2d 1593 (TTAB 2001) (“words are normally accorded greater
weight because they would be used by purchasers to request the
goods”). See also, e.g., In re Appetito Provisions Co., 3
USPQ2d 1553 (1987). Although the design elements in each mark
are clearly noticeable, the circle carrier and devil horns and a
halo in applicant’s mark have minimal visual impact, merely
serving to frame the literal component of applicant’s mark; with
respect to registrant’s logo mark, the oval carrier has little
visual impact and the skull and cross bone design simply
reinforces the commercial impression conveyed by the literal
portion of registrant’s mark. It is the term BONE YARD in each
mark that is dominating and source-distinguishing and will be
used by purchasers to call for the goods.
Further, with respect to the cited BONEYARDS mark, the
absence of a space between the terms “bone” and “yards” does not
distinguish it from applicant’s mark. See e.g., Stockpot, Inc.
v. Stock Pot Restaurant, Inc. 220 USPQ 52, 54 (TTAB 1983),
aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984)(“There is no
question that the marks of the parties [STOCKPOT and STOCK POT]
are confusingly similar. The word marks are phonetically
identical and visually almost identical.”); and In re Best
Serial No. 77709106
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Western Family Steak House, Inc., 222 USPQ 827, 827 (TTAB
1984)(“There can be little doubt that the marks [BEEFMASTER and
BEEF MASTER] are practically identical.”). Nor is the plural
form of “boneyard” distinguishing inasmuch as the singular and
plural forms of the same root term are essentially the same
mark. See e.g., Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339,
341 (CCPA 1957) (no material difference between the singular and
plural forms of ZOMBIE such that the marks were considered the
same mark); In re Pix of Am., Inc., 225 USPQ 691, 692 (TTAB
1985) (the pluralization of NEWPORT is “almost totally
insignificant” in terms of likelihood of confusion among
purchasers); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962) (no
material difference between the singular and plural forms of RED
DEVIL).
Although differences exist between the marks when viewed on
a side-by-side basis, they are substantially similar in
appearance, sound, connotation and commercial impression due to
the shared term BONE YARD (BONEYARD(S)). Accordingly, the
du Pont factor of similarity/dissimilarity of the marks favors a
finding of likelihood of confusion.
In sum, because we find the marks similar, the goods the
same and/or closely related, and the channels of trade and
purchasers the same, confusion is likely between applicant’s
Serial No. 77709106
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mark and the marks in the cited registrations as applied to
those goods.
Decision: The refusal to register under Section 2(d), and
the requirement for a disclaimer of the term “INDUSTRIES” are
affirmed. In the event that applicant appeals the decision with
respect to the Section 2(d) refusal, and is successful on
appeal, applicant is allowed thirty days from the date of any
successful ruling to submit the required disclaimer of
“Industries,” and the decision will be set aside as to the
affirmance of the disclaimer requirement.10 See Trademark Rule
2.142(g), 37 C.F.R. § 2.142.

10 The standardized printing format for the required disclaimer text
is as follows: “No claim is made to the exclusive right to use
INDUSTRIES apart from the mark as shown.” TMEP § 1213.08(a)(i) (8th
ed. 2011).