Brooks

Trademark Trial and Appeal Board

Apr 13, 2009

No. 76666106 (T.T.A.B. Apr. 13, 2009)

Mailed:
April 13, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Brooks
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Serial No. 76666106
_______

Edwin D. Schindler, Esq. and Michael I. Kroll, Esq. for
Eric Brooks.

Jill C. Alt, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Holtzman, Bergsman and Wellington, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Eric Brooks (“applicant”) filed an intent-to-use
application to register the mark DON’T STOP and design,
shown below, for goods ultimately identified as “clothing,
namely, pants, sweatshirts, jogging suits, shirts, blouses,
jackets, dresses, coats, bathing suits and underwear,” in
Class 25.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76666106
2
The Trademark Examining Attorney refused to register
applicant’s mark 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 cause confusion with the mark IT DON’T
STOP, in typed drawing form, for “clothing, namely, caps,
hats, jackets, t-shirts, sweatshirts, lingerie, sleepwear,”
in Class 25.1
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
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. 2940755, issued April 12, 2005.
Serial No. 76666106
3
A. The similarity or dissimilarity and nature of the
goods described in the application and registration.

The goods at issue are in part identical because both
the application and the cited registration include jackets
and sweatshirts. Moreover, the remainder of the products
listed in the description of goods in the application (i.e.,
pants, jogging suits, shirts, blouses, dresses, coats,
bathing suits and underwear) are related to the remainder of
the products listed in the cited registration (i.e., caps,
hats, t-shirts, lingerie, and sleepwear).
C. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Because the products identified in the application and
the cited registration are in part identical, we must
presume that the channels of trade and classes of
purchasers are the same. See Genesco Inc. v. Martz, 66
USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical
and in-part related nature of the parties’ goods, and the
lack of any restrictions in the identifications thereof as
to trade channels and purchasers, these clothing items
could be offered and sold to the same classes of purchasers
through the same channels of trade”); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to
Serial No. 76666106
4
travel in the same channels of trade, and be sold to the
same class of purchasers”).
C. 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., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 9
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that where, as here, the goods are in part
identical, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there
is a recognizable disparity between the goods. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Real Estate One,
Inc. v. Real Estate 100 Enterprises Corporation, 212 USPQ
957, 959 (TTAB 1981); ECI Division of E-Systems, Inc. v.
Environmental Communications Incorporated, 207 USPQ 443,
449 (TTAB 1980).
Serial No. 76666106
5
In addition, 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 so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
The proper focus is on the recollection of the average
customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975). In this case, the relevant public would be
ordinary purchasers of jackets, sweatshirts, and other
clothing products (i.e., the general public).
While the marks must be compared in their entireties,
in analyzing the similarity or dissimilarity of two marks,
there is nothing improper in stating that for rational
reasons, more or less weight has been given to a particular
feature of a mark. In re National Data Corporation, 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In the case
Serial No. 76666106
6
of marks consisting of words and a design, the words are
normally given greater weight because they would be used by
consumers to request the products. In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re
Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987).
In this case, the term “DON’T STOP” is the dominant
element of applicant’s mark. That term rests above the
infinity symbol which emphasizes the word portion of the
mark in the same way underlining would emphasize the word
portion. Indeed, since “infinity” means “boundlessness,”2
the infinity symbol could be construed as a synonym for
“don’t stop” “by visually projecting infinity, something
that will never stop.”3
The marks are obviously similar in terms of
appearance, sound, meaning, and commercial impression
because they share the term “DON’T STOP.” In fact, the
cited registration, IT DON’T STOP, incorporates the entire
word portion of applicant’s mark. Because there is nothing
in the record to indicate that the term “DON’T STOP” has
any descriptive or suggestive meaning when used in

2 Merriam-Webster Online (http://mw1.merriam-webster.com)
attached to the August 10, 2007 Office Action.
3 August 10, 2007 Office Action, p. 2.
Serial No. 76666106
7
connection with clothing, it is an arbitrary term and it is
inherently strong.
“When one incorporates the entire arbitrary mark of
another into a composite mark, the inclusion of a
significant, nonsuggestive element will not necessarily
preclude a likelihood of confusion. [Internal citations
omitted]. And inclusion of a merely suggestive or
descriptive element, of course, is of much less
significance in avoiding a likelihood of confusion.” The
Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194
USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer
design is similar to the mark CONCEPT). See also Coca-Cola
Bottling Co. v. Seagram & Sons, Inc., 526 F.2d 556, 188
USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and Bengal Lancer
soldier design is similar to the mark BENGAL); In re
Bissett-Berman Corp., 177 USPQ at 529 (E-CELL is similar to
the mark E).
We are not persuaded by applicant’s argument that
DON’T STOP and IT DON’T STOP engender different commercial
impressions. Applicant contends that DON’T STOP implores
the reader not to quit, whereas IT DON’T STOP refers “to
some ‘thing,’ such as an article or process, separate and
Serial No. 76666106
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apart from the reader.”4 We find that both marks engender
the commercial impression of something that does not stop
or quit.
D. Balancing the factors.
In view of the facts that the marks are similar, the
goods are in part identical or otherwise related, and
because we must presume that the goods move in the same
channels of trade and are available to the same classes of
consumers, we find that applicant’s registration of the
mark DON’T STOP and design for “clothing, namely, pants,
sweatshirts, jogging suits, shirts, blouses, jackets,
dresses, coats, bathing suits and underwear” is likely to
cause confusion with the mark IT DON’T STOP for “clothing,
namely, caps, hats, jackets, t-shirts, sweatshirts,
lingerie, sleepwear.”
Decision: The refusal to register is affirmed.

4 Applicant’s Brief, p. 5.