Boyd Coddington’s Hot Rods & Collectibles, Inc.

Trademark Trial and Appeal Board

Aug 28, 2008

No. 78913114 (T.T.A.B. Aug. 28, 2008)

Mailed:
August 28, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Boyd Coddington’s Hot Rods & Collectibles, Inc.
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Serial No. 78913114
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Kit M. Stetina of Stetina Brunda Garred & Brucker for Boyd
Coddington’s Hot Rods & Collectibles, Inc.

Ronald McMorrow, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Mermelstein and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Boyd Coddington’s Hot Rods & Collectibles, Inc. filed
an intent-to-use application for the mark BOYD’S, in
standard character form, for goods ultimately identified as
“wearing apparel, namely, t-shirts, shorts, sweatshirts,
sweatpants, hats, visors, and sandals offered and sold
through authorized dealers,” in Class 25.
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s mark is likely to
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78913114
2
cause confusion with the mark BOYDS, in typed drawing form,
for “men’s and women’s clothing, namely suits, dresses,
jackets, coats, pants, skirts, vests, tuxedos, shirts,
blouses, sweaters, ties, belts, braces, shoes and hosiery,”
in Class 25 and “retailing services for men’s and women’s
clothing and accessories,” in Class 35.1
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue of 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. 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, 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”).

1 Registration No. 2396024, issued October 17, 2000; Sections 8
and 15 affidavits accepted and acknowledged.
Serial No. 78913114
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A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., supra. Applicant’s mark BOYD’S is
virtually identical to the registered mark BOYDS. That
applicant’s mark has an apostrophe “s” while the registered
mark does not is inconsequential in comparing the marks.
See In re Hyper Shoppes, 837 F.2d 463, 6 USPQ2d 1025, 1025
(Fed. Cir. 1988) (“bigg’s” for general merchandise store
services is likely to cause confusion with BIGGS for
furniture); Calvin Klein Industries Inc. v. Calvins
Pharmaceuticals Inc., 8 USPQ2d 1269, 1271 (TTAB 1988) (the
addition of the letter “s” at the end of applicant’s mark
CALVINS does not distinguish it from opposer’s mark
CALVIN); In re Curtis-Burns, Inc., 231 USPQ 990, 992 (TTAB
1986) (McKENZIE is virtually identical to McKENZIE’S).
Accordingly, the similarity of the marks is a factor that
weighs heavily in favor of finding that there is a
likelihood of confusion.
Serial No. 78913114
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B. The similarity or dissimilarity and nature of the
goods and services.

Applicant is seeking to register its mark for “wearing
apparel, namely, t-shirts, shorts, sweatshirts, sweatpants,
hats, visors, and sandals,” and the cited mark has been
registered for “men’s and women’s clothing, namely suits,
dresses, jackets, coats, pants, skirts, vests, tuxedos,
shirts, blouses, sweaters, ties, belts, braces, shoes and
hosiery,” as well as “retailing services for men’s and
women’s clothing and accessories.” The clothing products
identified by the applicant and the registrant are similar
and applicant’s products are the types of products that may
be sold through the registrant’s retailing services. In
view of the foregoing, the similarity and nature of the
goods and services is a factor that favors a finding of
likelihood of confusion.
C. The similarity or dissimilarity of likely-to-continue
trade channels.

The crux of this case is whether the restriction to
applicant’s channels of trade effectively removes or
minimizes the likelihood of confusion. In this regard,
applicant restricted its description of goods to clothing
“offered and sold through authorized dealers.” Applicant
contends that the restriction to the channels of trade in
Serial No. 78913114
5
its description of goods eliminates any likelihood of
confusion for the following reasons:
[Applicant] may control which dealers
are classified as authorized dealers.
The authorized dealers diminish
confusion by clarifying and
illustrating the differences between
the goods sold in connection with the
Proposed Mark and the goods sold in
connection with the Cited Mark. In
particular, the authorized dealers
explain that the good originate from
different sources. Consequently, any
likelihood of confusion is
significantly diminished, if not
completely eliminated.2

The problem with the restriction to the description of
goods is that it does not effectively mitigate the
likelihood of confusion because it does not specify a
distinct channel of trade. For example, applicant does not
identify the nature of the authorized dealers (e.g.,
authorized dealers of hotrod and vehicle parts and
accessories).3 Without that specificity, we are not in a

2 Applicant’s Brief, pp. 8-9.
3 In view of the identity of the marks and similarity of the
goods and services, it might also have been helpful for applicant
to have limited its clothing products to promotional clothing
apparel. While not opining how the Board would decide such a
case, it would also behoove applicant to support its arguments
with evidence demonstrating how and why the limited nature of its
clothing and the restricted channels of trade would diminish, if
not eliminate, any likelihood of confusion. Mere argument of
counsel will not be sufficient. In this regard, even if
applicant were to amend its description of goods to promotional
clothing items sold only by authorized dealers of hotrod and
vehicle parts and accessories, applicant would still have to
address the fact that the registered mark is not resticted to any
Serial No. 78913114
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position to interpret what kind of authorized dealers may
be permitted to sell applicant’s clothing items or in what
channels of trade those authorized dealers may be involved.
Accordingly, we are bound to interpret the current
restriction as including authorized clothing retailers who
may be competing with the registrant. In view of the
foregoing, the channels of trade factor favors finding that
there is a likelihood of confusion.
D. Balancing the factors.
In view of the facts that the marks are essentially
identical, the goods and services are similar, and the
channels of trade are similar, we find that applicant’s
mark BOYD’S for “wearing apparel, namely, t-shirts, shorts,
sweatshirts, sweatpants, hats, visors, and sandals offered
and sold through authorized dealers” is likely to cause
confusion with the mark BOYDS for “men’s and women’s
clothing, namely suits, dresses, jackets, coats, pants,
skirts, vests, tuxedos, shirts, blouses, sweaters, ties,
belts, braces, shoes and hosiery” and “retailing services
for men’s and women’s clothing and accessories.
Decision: The refusal to register is affirmed.

channels of trade: that is, the registrant’s products and
services could be sold to virtually all adults, and therefore
purchasers familiar with the registrant’s mark could be confused,
even if the applicant’s products are sold in resticted channels
of trade.