Crazy Dog T-Shirts, Inc.

Trademark Trial and Appeal Board

Apr 4, 2016

No. 86230096 (T.T.A.B. Apr. 4, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 4, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Crazy Dog T-Shirts, Inc.
_____
Serial No. 86230096
_____

Katherine H. McGuire of Woods Oviatt Gilmann LLP,
For Crazy Dog T-Shirts, Inc.

Karen Bracey, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_____
Before Taylor, Greenbaum, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background

Crazy Dog T-Shirts, Inc. (“Applicant”) seeks registration on the Principal Register
of the mark CRAZY DOG TSHIRTS, in standard characters and with the term
TSHIRTS disclaimed, for “On-line retail store services featuring graphic t-shirts,
Serial No. 86230096
- 2 -
hoodies and decals” in International Class 35.1 The Examining Attorney refused
registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark is likely to cause confusion with the registered mark

for “Articles of clothing for men, women, and children, namely t-shirts,
sweatshirts, cap and outerwear, namely jackets and wind resistant jackets” in
International Class 25.2
After the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
II. Evidentiary Issue
Applicant attached to its brief some screen shots of webpages featuring the cited
registration in an effort to argue trade channel restrictions. The Examining Attorney
objects to this new evidence offered for the first time at the briefing stage.3 We sustain
the objection, as Trademark Rule 2.142(d) provides that the record “should be
complete prior to the filing of an appeal.” 37 C.F.R. § 2.142(d). See In re Midwest
Gaming & Entertainment LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB 2013) (new

1 Application Serial Number 86230096 was filed March 24, 2014 based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as May 28, 2004.
2 Registration Number 2473090, issued July 31, 2001; renewed.
3 9 TTABUVE at 11.
Serial No. 86230096
- 3 -
evidence submitted with brief is “untimely and therefore not part of the record for
this case”).
III. Likelihood of Confusion

The determination under Section 2(d) involves 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); see also In re Majestic
Distilling Co., 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 relatedness of the goods and services. See In re Chatam Int’l Inc.,
380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); 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 services] and differences in the marks.”).
A. Similarity of the Marks
With respect to the marks, we must compare them “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, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). The test assesses
not whether the marks can be distinguished in a side-by-side comparison, but rather
whether their overall commercial impressions are so similar that confusion as to the
source of the goods offered under the respective marks is likely to result. Coach
Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Serial No. 86230096
- 4 -
Cir. 2012); see also Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB
2012).
Applicant’s proposed mark is CRAZY DOG TSHIRTS, and the mark in the cited
registration is . The marks share a very significant visual and phonetic

similarity because of the common wording CRAZY DOG, bearing in mind that with
Applicant’s mark, “it is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered.” Presto Prods., Inc. v. Nice-
Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). CRAZY DOG also is the
dominant portion of Applicant’s mark, in large part because the other word,
TSHIRTS, is generic and is disclaimed for Applicant’s goods. Consumers would not
be inclined to rely on the disclaimed generic word as source-indicating. See In re Dixie
Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985). Thus, while we
consider Applicant’s mark as a whole, we do not agree with its contention that “each
feature of Appellant’s mark must be afforded equal weight.”4 See In re Viterra, Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (“[T]he court may place more
weight on a dominant portion of a mark, for example if another feature of the mark
is descriptive or generic standing alone”); In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). (While marks must be compared in their
entireties, “there is nothing improper in stating that, for rational reasons, more or

4 7 TTABVUE at 4 (Applicant’s Brief).
Serial No. 86230096
- 5 -
less weight has been given to a particular feature of the mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties”). In the cited
registration, the identical CRAZY DOG wording dominates the mark. While this
mark comprises both words and a design, “the verbal portion of the mark is the one
most likely to indicate the origin of the goods to which it is affixed.” Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015), citing CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). Greater weight is often given to the
wording because it is the wording that purchasers would use to refer to or request the
goods or services. See, e.g., Viterra, 101 USPQ2d at 1911. In addition, although we
agree with Applicant that the mark includes a significant design element, the design
is a depiction of a “crazy dog” wearing sunglasses, and therefore merely reinforces the
wording in the mark. See In re 1st USA Realty Professionals, Inc., 84 USPQ2d 1581,
1586 (TTAB 2007) (stars design insufficient to distinguish mark in part because the
stars motif merely reinforced “USA” wording common to both marks).
In considering the marks in their entireties, visually, they share the key similarity
of the dominant CRAZY DOG component, along with the consideration that the
standard character mark in the Application could be presented in any font style or
size, including in the same lettering used in Applicant’s mark. See Viterra, 101
USPQ2d at 1909; see also 37 C.F.R. § 2.52(a). This dominant feature creates a similar
sound between the marks. Also, as noted above, given that the design portion of
Applicant’s mark merely reinforces the literal element shared by both marks, it does
Serial No. 86230096
- 6 -
not differentiate the marks in terms of connotation and commercial impression. The
shared dominant words mean the same thing in each mark, and strongly contribute
to a similar commercial impression.
While we take note of Applicant’s reliance on a non-precedential decision, In re
Mathes, Serial Number 85892299, involving the marks and
SOUTH BEACH WINE & FOOD FESTIVAL, we do not find it persuasive. As an
initial matter, “[a]lthough parties may cite to non-precedential decisions, the Board
does not encourage the practice.” In re Morrison & Foerster LLP, 110 USPQ2d 1423,
1427 n.6 (TTAB 2014). Second, Applicant inaccurately reports that the identified
goods for both marks “included t-shirts,” when, in fact, the applicant in that case had
explicitly excluded t-shirts in its identification. Third, we do not find the marks,
goods, and factual record in the Mathes case comparable to this one, in part because
the Board found the that shared “South Beach” wording in the marks was
geographically descriptive and therefore an inherently weak source-indicator.5 See
In re Fleet-Wing Corp., 188 F.2d 476, 89 USPQ 369, 370 (CCPA 1951) (noting that
because the circumstances in cases differ, it is unlikely to have other decisions
“sufficiently analogous to be absolutely controlling”).
Given the similarity in sight, sound, and commercial impression, the first du Pont
factor weighs in favor of likely confusion.

5 http://ttabvue.uspto.gov/ttabvue/v?pno=85892299&pty=EXA&eno=29 at p.8.
Serial No. 86230096
- 7 -
B. Relatedness of the Goods and Services and Trade Channels
Turning next to the goods and services, we must determine whether their degree
of relatedness rises to such a level that consumers would mistakenly believe
Applicant’s services and Registrant’s goods emanate from the same source. We must
focus on the goods and services as identified in the application and registration, not
on extrinsic evidence of actual use. Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Systems, Inc.
v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990).
Applicant provides online retail store services featuring t-shirts, and the cited
registration is for clothing, including t-shirts. The record includes evidence
establishing the relatedness of the online retail services identified in the subject
application and the clothing goods in the cited registration, as follows:
• GAP used in connection with online retail clothing store services and t-shirts;6
• BANANA REPUBLIC used in connection with online retail clothing store
services and t-shirts;7
• HOLLISTER used in connection with online retail clothing store services and
t-shirts;8
• AEO used in connection with retail clothing store services and t-shirts;9 and

6 January 7, 2015 Office Action at 4; www.gap.com.
7 Id. at 8; http://bananarepublic.gap.com.
8 Id. at 12-13; www.hollisterco.com.
9 Id. at 15-16; www.ae.com.
Serial No. 86230096
- 8 -
• AMERICAN APPAREL used in connection with online retail clothing store
services and t-shirts.10
This evidence demonstrates that consumers encounter retail clothing store services
such as those identified in the Application under the same mark as t-shirts such as
those identified in the cited registration. Applicant’s own statements about its
business activities provide further support for this principle, as Applicant
acknowledges that in addition to the online retail services for which it has applied, it
also uses the same CRAZY DOG TSHIRTS mark on t-shirts “as a true trademark of
apparel.”11
The respective goods and services may be deemed related “if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that they emanate from the same source.” Coach Servs., 101 USPQ2d at 1722. This
evidence shows that the circumstances surrounding the marketing of online retail
clothing store services and t-shirts under a similar mark likely would give rise to such
a mistaken belief. As our principal reviewing court has noted, “trademarks for goods
find their principal use in connection with selling the goods,” and it found confusion
likely between a mark for merchandise store services that featured furniture and a
similar mark for furniture. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025, 1026 (Fed. Cir. 1988).

10 Id. at 2; http://store.americanapparel.net.
11 7 TTABVUE at 6 (Applicant’s Brief).
Serial No. 86230096
- 9 -
Turning next to the trade channels, in this case, the identifications in the
Application and cited registration are unrestricted, and we presume that Applicant’s
online retail services and Registrant’s t-shirts are marketed in all usual trade
channels and to all normal classes of purchasers. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that
where the identification is unrestricted, “we must deem the goods to travel in all
appropriate trade channels to all potential purchasers of such goods”); In re Wilson,
57 USPQ2d 1863, 1865 (TTAB 2001). The website evidence detailed above shows that
retail store services for clothing and t-shirts move in the same trade channels.
Applicant’s attempts to argue differing trade channels based on the alleged nature of
actual use fail because the identifications of goods and services, which lack
limitations, control, not the goods or services as offered in the marketplace. See
Cunningham, 55 USPQ2d at 1846 (“the identification of goods/services statement in
the registration, not the goods/services actually used by the registrant, frames the
issue”).
Thus, these du Pont factors weigh in favor of likely confusion.
IV. Conclusion
Based on the similarity of CRAZY DOG TSHIRTS to , as well as the
relatedness of Applicant’s retail clothing store services to the t-shirts in the cited
registration, and the identical trade channels, we find that Applicant’s mark is likely
to cause confusion with the mark in cited Registration No. 2473090.
Serial No. 86230096
- 10 -
Decision: The refusal to register Applicant’s mark CRAZY DOG TSHIRTS is
affirmed.