Creighton University

Trademark Trial and Appeal Board

Oct 28, 2015

No. 86067745 (T.T.A.B. Oct. 28, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Creighton University
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Serial No. 86067745
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Gerald M. Keller of Advent, LLP for Creighton University.

Darryl M. Spruill, Trademark Examining Attorney, Law Office 112,
Angela Bishop Wilson, Managing Attorney.
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Before Cataldo, Bergsman and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Creighton University (“Applicant”) seeks registration of the mark shown below

Serial No. 86067745
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for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps,
athletic uniforms.”1 The Examining Attorney refused registration under Section 2(d)
of the Act on the ground that Applicant’s mark so resembles the registered mark
shown below

for “Shirts and Blouses for Men, Women, and Children; Men’s and Boys’ Trousers,
Suits, and Coats,”2 that use of Applicant’s mark in connection with Applicant’s
goods is likely to cause confusion or mistake or to deceive. After the refusal became
final, Applicant appealed and filed a motion for reconsideration which was denied.
When the appeal resumed, Applicant and the Examining Attorney filed briefs.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all 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

1 Application Serial No. 86067745, filed September 18, 2013 under Section 1(b) of the
Trademark Act, based on an intent to use the mark in commerce, and later amended to
allege first use dates of October 9, 2013. The registration includes Applicant’s claim of
ownership of a number of federal registrations, and this description of the mark: “The mark
consists of the stylized word CREIGHTON, with a bluejay head on top of the word.”
2 Registration No. 731585, issued May 15, 1962, with a claim of acquired distinctiveness
under Section 2(f) of the Act; renewed.
Serial No. 86067745
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key considerations are the similarities between the marks and the similarities
between the goods. 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.”).
Here, the goods are legally identical in part, because Registrant’s shirts for men,
women and children encompass Applicant’s athletic apparel, namely shirts, while
Registrant’s men’s and boys’ trousers encompass Applicant’s athletic apparel,
namely pants.3 Neither identification includes any limitations with respect to
channels of trade.
Where, as here, Applicant’s and Registrant’s goods are in part legally identical,
we must presume that the channels of trade and classes of purchasers for those
goods are the same. 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);

3 Furthermore, the Examining Attorney introduced evidence that a number of use-based
third-party registrations cover athletic shirts and pants such as Applicant’s and other,
unspecified types of shirts and pants, such as Registrant’s. “Third-party registrations which
cover a number of differing goods and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in use on a commercial scale or
that the public is familiar with them, may nevertheless have some probative value to the
extent that they may serve to suggest that such goods or services are of a type which may
emanate from a single source.” See, In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470
n.6 (TTAB 1998); see also In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009).
Serial No. 86067745
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American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
Applicant’s argument that its mark “is prominently displayed on athletic goods
in order to represent Creighton University and Creighton’s athletic program,” while
Registrant’s mark is “inconspicuously” displayed on “dress clothing (e.g., blouses,
trousers, suits, etc.) and nonathletic clothing” is irrelevant. The problem is that
Registrant’s identification of goods is not limited to dress clothing or nonathletic
clothing, and instead merely identifies “shirts” (of unspecified type) for “men,
women, and children” (in other words everyone) and “trousers” for men and boys,
while Applicant’s identification of athletic apparel (including shirts and pants) is
not limited to Creighton University or Creighton athletic program-related apparel.
It is settled that where, as here, Applicant’s and Registrant’s identifications contain
no limitations with respect to the types of shirts, trousers or athletic apparel
including shirts and pants offered, we must presume that those identifications
encompass all shirts, trousers and athletic apparel of the types identified, and
Applicant’s and Registrant’s clothes are presumed to move in all normal channels of
trade and be available to all classes of consumers therefor. Stone Lion Capital
Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed.
Cir. 2014) (“An application with ‘no restriction on trade channels’ cannot be
‘narrowed by testimony that the applicant’s use is, in fact, restricted to a particular
class of purchasers.’”); Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d
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1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). We
cannot limit the goods, channels of trade or classes of customers to what Applicant’s
evidence shows them to be. In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65
(TTAB 1986) (“It is well settled that in a proceeding such as this, the question of
likelihood of confusion must be determined by an analysis of the marks as applied
to the goods identified in the application vis-à-vis the goods recited in the
registration, rather than what extrinsic evidence shows those goods to be.”); see
also, Tuxedo Monopoly, 209 USPQ at 988; In re Thor Tech Inc., 90 USPQ2d 1634,
1637-38 (TTAB 2009) (“we must also analyze the similarity or dissimilarity and
nature of the goods based on the description of the goods set forth in the application
and the registration at issue … we may not limit or restrict the [goods] listed in the
cited registration based on extrinsic evidence”). In other words, we must presume
that Registrant’s shirts include athletic shirts, and that Registrant’s men’s and
boys’ trousers include athletic pants for men and boys. And Registrant could place
its mark wherever it chooses on its goods, including in the prominent location where
Applicant places its mark.
The legal identity of certain of Applicant’s and Registrant’s goods and their
presumed overlapping channels of trade and classes of purchasers not only weigh
heavily in favor of a finding of likelihood of confusion, but also reduce the degree of
similarity between the marks necessary to find a likelihood of confusion. In re
Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
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1257, 1260 (Fed. Cir. 2010); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248
(TTAB 2010).
Turning to the marks, Applicant is correct that 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).
That is, we may not dissect the marks into their various components. 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).
However, Applicant is incorrect that its “bluejay head” design sufficiently
distinguishes the marks to avoid confusion. When considered in their entireties, the
marks sound identical, look similar and convey similar meanings. Indeed, where, as
here, a mark is comprised of both words and a design, the words are normally
accorded greater weight, because consumers are likely to remember and use the
word(s) to request the goods. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553,
1554 (TTAB 1987) (holding that “if one of the marks comprises both a word and a
design, then the word is normally accorded greater weight because it would be used
by purchasers to request the goods or services” and “because applicant’s mark
shares with registrant’s mark that element responsible for creating its overall
commercial impression, the marks are confusingly similar”); see also, In re Viterra
Inc., 671 F.2d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal portion of
a word and design mark likely will be the dominant portion”).
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Consumers familiar with Registrant’s clothes but unfamiliar with Creighton
University or the fonts it uses could simply believe that Applicant’s mark is a new
version of Registrant’s mark, which is presented in a different font and with a
bluejay head design. And consumers merely hearing advertising for or discussions
of products bearing Applicant’s mark may have no basis whatsoever for
distinguishing it from Registrant’s mark. Applicant presents no evidence that its
bluejay head design changes the meaning of the word CREIGHTON which
Applicant’s and Registrant’s marks share, at least for consumers unfamiliar with
the university. We must presume that Applicant’s customers, who are not specified
or limited in any way by Applicant’s identification of goods, include those familiar
with Creighton University and those unfamiliar with the university or its mascot.
Conversely, consumers who are familiar with Creighton University could view
Registrant’s mark as a new version of Applicant’s mark, presented in a different
font. They would not likely be surprised that Registrant offers “dressier” clothes
than the athletic apparel identified in the involved application, because the
Examining Attorney has introduced evidence that clothing items such as sweaters,
woven shirts, ties, outdoor coats and dress shirts bear Creighton University marks.
Denial of Request for Reconsideration, March 15, 2015 (printouts from “bkstr.com”
and “mylocker.net”). In short, Applicant’s mark and Registrant’s mark are more
similar than dissimilar, and this factor also weighs in favor of a finding of likelihood
of confusion.4

4 Applicant’s argument that Registrant’s specimen shows the cited mark on clothing tags or
labels, without being prominently displayed, is irrelevant. The cited registration entitles
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Finally, Applicant argues that Registrant’s prospective purchasers “include
wholesale clothing purchasers and sophisticated purchasers of nonathletic apparel
that are likely to exercise great care in purchasing,” while Applicant’s prospective
purchasers “are likely to be sophisticated sports enthusiasts or have knowledge of
and be familiar with Creighton University and Creighton’s sporting programs.” Like
Applicant’s arguments about the similarity of the goods, these arguments are
irrelevant, because neither Applicant’s nor Registrant’s identification of goods
specifies the types of purchasers for either Applicant’s or Registrant’s goods.
Therefore, we must presume that Applicant’s and Registrant’s identified goods
encompass inexpensive and expensive varieties of the identified goods, and that the
goods are offered to all types of customers therefor. See e.g., Stone Lion Capital, 110
USPQ2d at 1162-63 (“Stone Lion effectively asks this court to disregard the broad
scope of services recited in its application, and to instead rely on the parties’ current
investment practices … the Board properly considered all potential investors for the
recited services, including ordinary consumers seeking to invest in services with no
minimum investment requirement.”) (emphasis in original).
Conclusion
Applicant’s and Registrant’s goods are legally identical in part, and presumed to
travel in the same channels of trade. We must also presume that Registrant’s goods
are offered to all types of customers for shirts and pants, including athletic shirts

Registrant to place its mark in exactly the same place(s) as Applicant places its mark.
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and pants. Furthermore, the goods are offered under marks which are more similar
than dissimilar. Accordingly, confusion is likely.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.