British Customs, LLC

Trademark Trial and Appeal Board

Apr 13, 2018

No. 86191055 (T.T.A.B. Apr. 13, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 13, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re British Customs, LLC
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Serial No. 86191055
_____

Jayson M. Lorenzo, Esq.
for British Customs, LLC.
Michelle E. Dubois, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Wellington, Lykos and Lynch,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
British Customs, LLC (“Applicant”) seeks to register on the Principal Register the
composite mark displayed below for goods ultimately identified as “motorcycle parts,
components and accessories, namely, wheels, rearview mirrors, engine rebuild kits
sold as a unit, hub caps, brake cylinders, wheel bearing kits, fork crown covers, fork
joints, gas caps, turn signals, sprockets, handlebar grips, clutch springs, and fenders”
in International Class 12.1

1 Application Serial No. 86191055, filed February 11, 2014, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a). The description of the mark is as follows: “The mark
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Applicant has appealed the Trademark Examining Attorney’s final refusal to
register the mark on the ground that Applicant’s mark so resembles the registered
mark on the Principal Register displayed below

for “[a]utomobiles and structural parts therefor; motorcycles and structural parts
therefor; shock absorbers for automobiles; axle bearings for land vehicles; crankcases
for land vehicles; clutches for land vehicles; brake cylinders; automobile bumpers;
vehicle parts, namely, suspension struts; land vehicle suspension parts, namely, coil
springs” in International Class 122 that, when used on or in connection with
Applicant’s identified goods, it is likely to cause confusion or mistake or to deceive

consists of the shape of an outline of a shield divided down the middle with left half of the
shield containing a letter ‘B’ and the right half of the shield in shadow and containing the
letter ‘C’, the words “BRITISH CUSTOMS” appear below the shield in a stylized form.” Color
is not claimed as a feature of the mark.
2 Registration No. 4511587, registered on April 8, 2014. The mark consists of the stylized
letters ‘BC’ in red. The color red is claimed as a feature of the mark.
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within the meaning of Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d).
Registration has also been refused on the ground that Applicant failed to comply with
the Trademark Examining Attorney’s requirement to disclaim BRITISH CUSTOMS
pursuant to Trademark Act Section 6(a), 15 U.S.C. § 1056(a), as merely descriptive
of the identified goods, or alternatively, submit an acceptable claim of acquired
distinctiveness as to that portion of the mark pursuant to Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f).3 The appeal is now briefed.
I. Disclaimer Requirement and Section 2(f) Claim
We commence with the issue of whether Applicant is required to disclaim
BRITISH CUSTOMS apart from the mark as shown. An examining attorney may
require an applicant to disclaim an unregistrable component of a mark otherwise
registrable. Trademark Act Section 6(a), 15 U.S.C. § 1056(a). A “disclaimer” is a
statement that an applicant does not claim exclusive rights to an unregistrable
component of a mark apart from the mark as a whole. Sprague Electric Co. v. Erie
Resistor Corp., 101 USPQ 486, 486-87 (Comm’r Pats. 1954). Merely descriptive terms
that have not acquired distinctiveness are unregistrable on the Principal Register
under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), and, therefore, are
subject to a disclaimer requirement if the mark is otherwise registrable. Failure to
comply with a disclaimer requirement is grounds for refusal of registration. In re
Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson
Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re National Presto Indus. Inc.,

3 As explained further below, this basis for refusal has now been withdrawn.
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197 USPQ 188 (TTAB 1977); and In re Pendleton Tool Indus. Inc., 157 USPQ 114
(TTAB 1968).
For the reasons explained below, the Examining Attorney’s requirement that
Applicant disclaim BRITISH CUSTOMS as merely descriptive of the identified goods
has been rendered moot.
Applicant initially filed its application without a claim of acquired distinctiveness
under Section 2(f). In the first Office action, the Examining Attorney issued the
requirement that Applicant disclaim the wording BRITISH CUSTOMS because it is
merely descriptive of the goods. See April 6, 2014 Office Action. In response thereto,
Applicant argued that the term is inherently distinctive and as such, a disclaimer is
not required. See October 3, 2014 Response. The Examining Attorney continued and
maintained the disclaimer requirement in the next Office action. See October 28, 2014
Office Action. Applicant responded by reiterating the assertion that BRITISH
CUSTOMS is inherently distinctive, and alternatively, that the BRITISH CUSTOMS
portion of the mark has acquired distinctiveness under Section 2(f).4 See April 28, 2015
Response. Following subsequent Office actions instructing Applicant how to perfect a

4 Applicant’s April 28, 2015 response is not a model of clarity as to whether Applicant
intended to claim acquired distinctiveness as to the entire mark or only the BRITISH
CUSTOMS portion. For example, Applicant initially stated that it “believes the term ‘British
Customs’ is inherently distinctive and has acquired secondary meaning” and submitted
evidence of acquired distinctiveness relevant only to that portion of the mark. Id. at TSDR 7.
However, Applicant concluded with a general statement that “the mark has acquired
secondary meaning and need not be disclaimed.” Id. at TSDR 9. The Examining Attorney
interpreted this as a claim of acquired distinctiveness in part only as to the wording BRITISH
CUSTOMS. See July 18, 2015 Office Action. We think the Examining Attorney’s
interpretation was reasonable given the nature of the mark and limited scope of the
disclaimer requirement as well as the totality of Applicant’s statements in its response and
the nature of the evidence submitted therewith.
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claim of acquired distinctiveness in part as to BRITISH CUSTOMS and failed
attempts by Applicant to comply, the Examining Attorney made final both the
requirement to disclaim BRITISH CUSTOMS and the refusal to register under
Section 2(f).
After the appeal was briefed, Applicant filed a request for remand, which was
granted by the Board, for consideration of Applicant’s claim of acquired distinctiveness
of its mark as a whole. October 31, 2016 Request for Remand (7 TTABVUE) and
December 20, 2016 Board Order (8 TTABVUE). Applicant referred to a recent Board
decision holding the term BRITISH CUSTOMS merely descriptive of the same goods,
and did not make its claim of acquired distinctiveness in this case in the alternative.5
On remand, the Examining Attorney withdrew the final refusal under Section 2(f) and
accepted Applicant’s claim of acquired distinctiveness as to the entire mark, citing
Trademark Manual of Examining Procedure (“TMEP”) § 1212.02(d) (Oct. 2017), with
the following observations:
It is noted that applicant’s Section 2(f) statement remains inaccurate
since it claims acquired distinctiveness as to the mark as a whole, rather
than to the required portion, “BRITISH CUSTOMS”. However, since the
examining attorney has given applicant multiple opportunities to correct
this language, the examining attorney takes applicant’s latest statement
as a wish to have the entire mark under Section 2(f).

September 11, 2017 Office action (11 TTABVUE 1). However, the Examining Attorney
also maintained the final refusal regarding the disclaimer requirement, on the
incorrect assumption that Applicant intended to reserve the right to appeal this

5 7 TTABVUE 2 (“Applicant wishes remand and [to] amend the application to claim Section
2(f) acquired distinctiveness in light of the two previous appeal decisions”).
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requirement. Id. The Examining Attorney has not taken the position that BRITISH
CUSTOMS is generic, such that a disclaimer of that portion of the mark would be
necessary in addition to the Section 2(f) claim.
As the application now stands, Applicant has sought registration of the mark
pursuant to Section 2(f). See Cold War Museum, Inc. v. Cold War Air Museum, Inc.,
586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (“Where an applicant seeks
registration on the basis of Section 2(f), the mark’s descriptiveness is a nonissue; an
applicant’s reliance on Section 2(f) during prosecution presumes that the mark is
descriptive.”). Accord In re Country Music Ass’n Inc., 100 USPQ2d 1824, 1834 (TTAB
2011). The Examining Attorney has accepted Applicant’s amendment under Section
2(f); accordingly, the disclaimer requirement on the basis that the wording is merely
descriptive is moot and should not have been maintained.6
II. Section 2(d) Refusal - Applicable Law
We direct our attention now to the Section 2(d) refusal. Our determination under
Section 2(d) is based on an analysis of all of the probative evidence of record bearing
on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“du Pont”). See also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, however, two key considerations are the similarities between the marks and

6 In view thereof, we need not consider the Examining Attorney’s argument that the doctrine
of res judicata mandates a disclaimer of the merely descriptive wording BRITISH CUSTOMS
based on a prior Board decision. See In re British Customs, LLC; Serial Nos. 86154804 and
86154813 (TTAB Sept. 21, 2016).
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the similarities between the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors and others are discussed below.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944 (Fed.
Cir. 2006) (even within du Pont list, only factors that are “relevant and of record”
need be considered).
A. The Goods and Established, likely-to-continue Channels of Trade
First we compare the goods, bearing in mind that Applicant’s and Registrant’s
respective goods must be compared as they are identified in the application and the
cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston
Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).7
Registrant’s broadly worded “motorcycles and structural parts therefor”
necessarily encompass Applicant’s more narrowly identified “motorcycle parts,
components and accessories” consisting of “wheels, rearview mirrors, engine rebuild
kits sold as a unit, hub caps, brake cylinders, wheel bearing kits, fork crown covers,
fork joints, gas caps, turn signals, sprockets, handlebar grips, clutch springs, and
fenders.” See, e.g., 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.’”). As such, Applicant’s and Registrant’s goods are in-part legally identical.

7 Applicant did not address the second and third du Pont factors in its appeal brief.
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See id. Because the goods are legally identical in part and unrestricted as to trade
channels, we must also presume that these particular goods travel in the same
ordinary trade and distribution channels and will be marketed to the same potential
consumers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion); 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); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028
(TTAB 2011). Accordingly, these du Pont factors weigh in favor of finding a likelihood
of confusion.
B. The Marks

Next, we consider “the similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression.” Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-
by-side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012) (citation omitted). Our analysis cannot be predicated on dissecting the marks
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into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). However, in reaching a conclusion on the issue
of likelihood of confusion, there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark, provided
the ultimate conclusion rests on a consideration of the marks in their entireties. In
re Nat’l Data Corp., 224 USPQ at 751. See also Stone Lion, 110 USPQ2d at 1161.
Finally, it is well-settled that where, as here, the goods are identical in part, less
similarity between the marks is needed for us to find a likelihood of confusion. Coach
Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721; Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992) (“When marks would appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely confusion declines.”).
Applicant takes the position that the dominant element of its mark is neither the
acronym “BC” nor the wording BRITISH CUSTOMS, but rather the shield design,
given its relatively larger size in relation to the other elements of its mark. Applicant
asserts that the connotation and commercial impressions of the involved marks are
distinct insofar as
[t]he shield is symbolic of the performance, quality and strength which
[are] some of the pillars Applicant constructed its business around.
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[internal citation omitted]. It is also an ode to one of the types of
motorcycles it serves – the Triumph motorcycle company – as it is
reminiscent of medieval times, when shields were thrust into the air in
‘triumph’ after a party beat his opponent.

Applicant’s Brief, p. 8; 4 TTABVUE 9. In terms of sound, Applicant argues that
consumers would focus on the BRITISH CUSTOMS portion of the mark, Applicant’s
brand name familiar to consumers, as opposed to the abbreviation “BC.” Elaborating,
Applicant submits that its products are known in the industry by its trade name,
BRITISH CUSTOMS, and that the only use of the letters “B” and “C” is within the
shield. By contrast, Applicant postulates that the dominant feature of the cited mark
is not the lettering “BC” but rather the color red which has been claimed as a feature
of the mark.
We disagree with Applicant’s assertion that the color red is the dominant portion
of the cited mark; rather, it is the lettering “BC.” Applicant’s and Registrant’s marks
each share this literal element. With respect to Applicant’s mark, we agree with the
Examining Attorney’s determination that “BC” is the dominant element. The wording
BRITISH CUSTOMS and carrier in the shape of a shield are subordinate to, and
merely serve to reinforce, the prominence of the significantly larger “BC” that appears
centered and atop in the mark. It is an often-recited principle that when a mark
consists of a literal portion and a design portion, the literal portion is usually more
likely to be impressed upon a purchaser’s memory and to be used in calling for the
goods; therefore, the literal portion is normally accorded greater weight in
determining whether marks are confusingly similar. See, e.g., In re Viterra Inc., 101
USPQ2d at 1911; In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999).
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See also CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983); In
re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011). We do not think
that the shield design projects strong source-identifying characteristics such that
consumers would focus on this element rather than the prominently displayed
lettering “BC.” Applicant’s and Registrant’s marks each incorporate the literal
element “BC” making them similar in sound and appearance. The stylization of the
lettering of each mark is not unusual and bear some similarity in appearance to one
another. Thus, consumers would likely perceive both marks as having virtually the
same meaning and commercial impression.
To the extent, if any, Applicant is urging the Board to disregard the “BC” element
of its mark because it does not represent how consumers call for its products, this is
improper. The “correct inquiry” requires a comparison of the applied-for mark with
the cited mark in their entireties. In re i.am.symbolic, LLC, 866 F.3d 1315, 123
USPQ2d 1744, 1749 (Fed. Cir. 2017). Thus, keeping in mind that the involved goods
are legally identical, when comparing the marks overall, they are similar in sight,
sound, connotation and commercial impression. This du Pont factor also weighs in
favor of finding a likelihood of confusion.
C. The Number and Nature of Similar Marks in Use on Similar Goods
Lastly, we consider the number and nature of similar marks in use on similar
goods, the sixth du Pont factor. In an ex parte appeal, “[t]he purpose of [an applicant]
introducing third-party uses is to show that customers have become so conditioned
by a plethora of such similar marks that customers have been educated to distinguish
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between different such marks on the bases of minute distinctions.” Palm Bay, 73
USPQ2d at 1694. See also 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 Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted). “[T]he strength
of a mark is not a binary factor” and “varies along a spectrum from very strong to
very weak.” Juice Generation, 115 USPQ2d at 1675-76 (internal citations omitted).
“The weaker [the registrant’s] mark, the closer an applicant’s mark can come without
causing a likelihood of confusion and thereby invading what amounts to its
comparatively narrower range of protection.” Id. at 1676 (internal citations omitted).
See also Palm Bay, 73 USPQ2d at 1693 (“Evidence of third-party use of similar marks
on similar goods is relevant to show that a mark is relatively weak and entitled to
only a narrow scope of protection.”).
Applicant maintains that the common element in both marks, the word “BC,” is
relatively weak and entitled to a narrow scope of protection as applied to products in
International Classes 7 and 12. In support thereof, Applicant has made of record
Principal Register third-party registrations of marks consisting solely of or
incorporating “BC” for various goods in either International Class 7 or 12, or both.8

8 In the July 18, 2015 Office Action, the Examining Attorney timely objected to Applicant’s
mere listing of third-party registrations from the USPTO TESS database with its April 28,
2015 Response (TSDR 16-19) as procedurally improper. See Trademark Trial and Appeal
Board Manual of Procedure (“TBMP”) § 1208.02 (June 2017) and cases cited therein.
Applicant acknowledged and cured this defect in its next response by submitting copies of
the third-party registrations from the USPTO Trademark Electronic Search system
(“TESS”). See January 18, 2016 Response. It is this evidence, not the list, that we have
considered in making our determination. That being said, third-party registrations that have
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See January 18, 2016 Response (TSDR 9-51). Third-party registrations may be
relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so
commonly used in ordinary parlance that the public will look to other elements to
distinguish the source of the goods. Juice Generation, 115 USPQ2d at 1674-75. See
also Institut National des Appellations D’Origine v. Vintners Int’l Co. Inc., 22 USPQ2d
1190, 1196 (Fed. Cir. 1992) (“third party registrations show the sense in which the
word is used in ordinary parlance and may show that a particular term has
descriptive significance as applied to certain goods or services.”) (internal citations
omitted). We have carefully reviewed the third-party registrations. Suffice to say,
they are of minimal, if any, probative value because the identified goods are too
dissimilar from the goods identified in the cited registration.9 See i.am.symbolic, 123
USPQ2d at 1751 (disregarding third-party registrations for other types of goods
where the proffering party “has neither introduced evidence, nor provided adequate

been cancelled have not been considered. See In re Hartz Hotel Servs. Inc., 102 USPQ2d 1150,
1152 n.5 (TTAB 2012) (Board did not consider four cancelled third-party registrations
submitted by applicant).
Applicant also made of record third-party applications which we have not considered. Third-
party applications, as opposed to registrations, have no probative value other than as
evidence that the applications were filed. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089
(TTAB 2016); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002).
9 See, e.g., Registration No. 4800677 (“bicycles”); Registration No. 4476707 (“infant car seat
covers”); Registration No. 1142438 (“engine driven tractor units and parts therefor”);
Registration No. 3586680 (“fitted bicycle covers”); Registration No. 3820235 (machines);
Registration No. 3811450 (automated test tube preparation machines); Registration No.
3451931 (“rescue apparatuses, namely, hydraulic excavators and hydraulic cutters”);
Registration No. 3850875 (“clutches for machines”); Registration No. 4287353 (“Electric
actuators; pneumatic valve actuators; hydraulic valve actuators; pneumatic and hydraulic
positioners for controlling valves; gears for machines in the nature of reduction gears for
valves and louvers”); Registration No. 0776993 (“Packaging, Conveying, and Tying
Machinery as Well as Component Parts Therefor”). January 18, 2016 Response (TSDR 9-51).
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explanation to support a determination that” the marks for other types of goods
“support a finding that registrants’ marks are weak with respect to the goods
identified in their registrations”). Only one registration, Registration No. 4601753,
for the mark BC GLOBAL in standard characters on the Principal Register for vehicle
parts in International Classes 7 and 12 is relevant. We cannot say, however, that this
single registration incorporating the term “BC” renders the cited mark weak for the
identified goods.
We further observe that the record is devoid of examples of actual use of marks
comprised of “BC” in connection with Registrant’s goods or goods related thereto.
Thus, the evidence before us falls short of showing that the cited mark is weak for
the relevant goods. We therefore deem this factor neutral.
D. Conclusion
After considering all of the evidence of record and arguments pertaining to the
du Pont likelihood of confusion factors, each of the du Pont factors discussed above
either favors a finding of likelihood of confusion or is neutral. The marks are similar
in sound, appearance, connotation and commercial impression. This, coupled with the
legally identical nature of the goods in part, marketed in the same trade channels to
the same consumers, supports a finding that there is a likelihood of confusion
between Applicant’s mark and the registered mark.
Decision: The Section 2(d) refusal is affirmed.