Crossfire Foundation, Inc.

Trademark Trial and Appeal Board

Mar 31, 2017

No. 86830256 (T.T.A.B. Mar. 31, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 31, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Crossfire Foundation, Inc.
_____

Serial No. 86830256
_____

Kevin E. Regan of Helsell Fetterman LLP,
for Crossfire Foundation, Inc.
Wendell S. Phillips III, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____

Before Taylor, Adlin and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Crossfire Foundation, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark CROSSFIRE, in standard characters, for “shirts; sports jerseys;
sweatshirts; sweat suits; warm up outfits” in International Class 25.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of

1 Application Serial No. 86830256, filed on November 24, 2015, based on an allegation of use
in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming October
14, 1997 as both the date of first use and the date of first use in commerce.

Serial No. 86830256
- 2 -
likelihood of confusion with the mark CROSS FIRE and design, depicted below,
registered on the Principal Register for “clothing consisting of men's and boys [sic],
jeans, pants, jackets and shorts” in International Class 25:2

When the refusal was made final, Applicant appealed. We affirm the refusal to
register.
I. 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 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 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.”).

2 Registration No. 2738213, issued on July 15, 2003; renewed.
Serial No. 86830256
- 3 -
A. Comparison of the Marks
We first address 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.” Palm Bay Imps., 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 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)
(quotation omitted).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
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.”). On the other hand, 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, 224 USPQ at 751.
Serial No. 86830256
- 4 -
Applicant’s mark is CROSSFIRE in standard characters. The cited mark is
CROSS FIRE in stylized lettering with a design consisting of: (1) three horizontal
lines forming a quadrilateral before the term CROSS and after the term FIRE; and
(2) a zig zag line starting from the top of the second letter “S” in the term CROSS and
ending at the top of the letter “F” in the term FIRE.
Applicant argues that marks are visually different and convey distinct and
differing commercial impressions.3 Specifically, Applicant contends that its mark is a
single word that has specific dictionary definitions, i.e., lines of gunfire from two or
more positions crossing each other and/or the act of firing guns from two or more
places at the same time, so that the paths of the bullets cross.4 In view of these
definitions and because Applicant maintains that its mark is used in connection with
soccer apparel, Applicant contends that its CROSSFIRE mark suggests someone
shooting a ball.5 Applicant argues that the cited mark, in contrast, consists of the two
separate words, namely, cross and fire, each of which has an “independent
significance” and thus when viewed together have an “ambiguous meaning.”6
Applicant also argues that the inclusion of the distinctive design element
incorporated in the cited mark, as well as the stylization of the literal portion of
Registrant’s mark, are sufficient to avoid a likelihood of confusion.7 We disagree.

3 Applicant’s Appeal Brief, p. 3, 4 TTABVUE 7.
4 Applicant’s Appeal Brief, p. 5, 4 TTABUVE 9.
5 Applicant’s Appeal Brief, p. 6, 4 TTABVUE 10.
6 Id.
7 Applicant’s Appeal Brief, pp. 3 and 6-7, 4 TTABVUE 7 and 10-11.
Serial No. 86830256
- 5 -
We find that Applicant’s mark and the literal portion of the mark in the cited
registration are identical in sound and virtually identical in appearance. The only
difference between Applicant’s mark and the literal portion of the cited mark is the
space between the terms CROSS and FIRE in the cited mark. It is well-established
that the addition or removal of a space between otherwise identical terms in a mark
does not generally alter the commercial impression of that wording for likelihood of
confusion purposes. See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51
(TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of
law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc.,
222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks
[BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v.
Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ
665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT
and STOCK POT] are confusingly similar. The word marks are phonetically identical
and visually almost identical.”).
We also find unpersuasive Applicant’s argument that because the definition of its
single term CROSSFIRE mark differs from Registrant’s term CROSS FIRE the
marks convey different connotations and/or commercial impressions. While Applicant
is correct that the terms “cross” and “fire” each have separate meanings apart from
the meaning of the combined term “crossfire,” when the terms are combined as a
phrase, the connotation and commercial impression of the mark is going to be that of
the combined term, rather than the separate meanings of “cross” and “fire.” This is
Serial No. 86830256
- 6 -
especially true when Registrant’s mark is heard but not seen. In fact, the record
demonstrates that the definitions of CROSSFIRE and CROSS FIRE are identical.8
Applicant concedes this point.9 Moreover, as discussed more fully infra, the Board
cannot consider extrinsic evidence regarding Applicant’s goods, i.e., that the goods
are limited to soccer apparel, absent any such restriction in the identification of goods.
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); and In re Bercut-
Vandervoort & Co., 229 USPQ 763 (TTAB 1976). Accordingly, Applicant’s argument
that its mark connotes shooting a ball because its clothing apparel is solely associated
with soccer is without merit.
We also find, contrary to Applicant’s arguments, that the cited mark’s stylization
and design are insufficient to distinguish the marks and avoid a likelihood of
confusion. Applicant’s mark is in standard characters. Marks appearing in standard
character form may be displayed in any reasonable stylization, font, color and size.
See Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA
1971) (a mark in typed or standard character form is not limited to the depiction
thereof in any special form); INB National Bank v. Metrohost Inc., 22 USPQ2d 1585,
1588 (TTAB 1992) (“[a]s the Phillips Petroleum case makes clear, when [an] applicant
seeks a typed or block letter registration of its word mark, then the Board must
consider all reasonable manners in which … [the word mark] could be depicted…”);
and TMEP § 807.03 (Jan. 2017). We must consider the possibility that Applicant’s

8 See definitions from www.oxforddictionary.com and www.dictionary.com submitted with
Applicant’s April 16, 2016, Response to Office Action.
9 Applicant’s Appeal Brief, p. 6, 4 TTABVUE 10.
Serial No. 86830256
- 7 -
mark will be displayed in the same font or stylization as Registrant’s mark. See In re
Viterra Inc., 671 F3d 1358,101 USPQ2d 1905 (Fed. Cir. 2012). Moreover, when
considering a composite mark containing both words and a design, the word portion
is generally more likely to indicate origin, because it is that portion of the mark that
consumers use when referring to or requesting the goods and/or services. In re
Viterra, 101 USPQ2d at 1908; Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016).
Because the design elements in Registrant’s mark are not particularly distinctive
and because Applicant’s mark and the literal portion of the cited mark are identical
in sound, connotation and overall commercial impression and virtually identical in
appearance, we find that, when the marks are considered in their entireties, they are
highly similar. Thus, the first du Pont factor heavily favors a finding of likelihood of
confusion.
B. Comparison of the Goods
We next compare Applicant’s and Registrant’s goods. In making our
determination under this second du Pont factor, we look to the goods as identified in
the involved application and 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) (“The authority is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods set forth
in the application regardless of what the record may reveal as to the particular nature
of an applicant’s goods, the particular channels of trade or the class of purchasers to
Serial No. 86830256
- 8 -
which the sales of goods are directed.”). See also Paula Payne Prods. v. Johnson Pub.
Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the basis of the respective
descriptions of goods.”).
As noted above, Applicant’s identified goods are “shirts; sports jerseys; sweat
shirts; sweat suits; warm up outfits.” The goods identified in the cited registration
are “clothing consisting of men's and boys [sic], jeans, pants, jackets and shorts.”
The Examining Attorney made of record 14 active third-party, used-based
registrations showing that the same entity has registered a single mark identifying
both Applicant’s and Registrant’s goods. By way of illustration:10
WISE AND SILENT (Registration No. 4602745) for “beanies; button down
shirts; cyclists' jerseys; gloves; hats; jackets; jeans; jerseys; scarves; shoes;
sleeveless jerseys; sneakers; sports jerseys; sweat bands; sweat jackets; sweat
pants; sweat shirts; sweat shorts; sweat suits; sweaters; t-shirts for men and
women; women's clothing, namely, shirts, dresses, skirts, blouses; wristbands;”

HYBRIDSKILLZ (Registration No. 4689675) for “bandanas; baseball caps; belts;
ear muffs; footwear; gloves; headbands; headwear; hooded sweatshirts; jackets;
jeans; jumpsuits; neckwear; pants; polo shirts; pullovers; sandals; scarves;
shawls; shirts; shoes; shorts; ski gloves; sneakers; snowboard gloves; socks;
sports jerseys; sweaters; sweatpants; sweatshirts; t-shirts; track jackets;
visors; wraps; wristbands;”

B BABALU and design (Registration No. 4664833) for “baseball caps; beach
coverups; beach shoes; beachwear; belts of textile; bermuda shorts; bicycle gloves;
bikinis; blouses; body shirts; body suits; boots; bow ties; boxer briefs; boxer shorts;
brassieres; capri pants; capris; corsets; cycling shoes; cycling shorts; dresses; g-
strings; girdles; gym boots; gym pants; gym shorts; gym suits; headgear, namely,
hats and caps; jackets; jeans; jumpsuits; leotards and tights for women, men and
children of nylon, cotton or other textile fibers; lingerie; long sleeved vests; long-
sleeved shirts; men's and women's jackets, coats, trousers, vests; motorcycle
jackets; pajamas; pants; perspiration absorbent underwear clothing; running

10 See February 8, 2016, Office Action.
Serial No. 86830256
- 9 -
shoes; running suits; shirts and short-sleeved shirts; shorts; skirts; sleeping
garments; sleepwear; slippers; socks; sport coats; sport stockings; sports bras;
sports caps and hats; sports jackets; sports jerseys and breeches for sports; sports
overuniforms; sports pants; sports shirts; sports shirts with short sleeves; sports
shoes; sports vests; stockings; stockings; sweat bands; sweat pants; sweat shirts;
sweat suits; sweaters; sweatshirts; swimwear; tops; underpants; underwear;
women's athletic tops with built-in bras; yoga pants; yoga shirts;”

CLUB CHAOS (Registration No. 4657751) for “clothing, namely, t-shirts, shirts,
sweatshirts, jackets, hats, caps, bandanas, sports jerseys, tank-tops,
sweatpants, shorts, footwear, pants, jackets, coats, gloves, jeans;”

GANGLAND (Registration No. 4650499) for “clothing, namely, t-shirts, shirts,
sweatshirts, jackets, hats, caps, bandanas, sports jerseys, tank-tops,
sweatpants, shorts, footwear, pants, jackets, coats, gloves, jeans;”

NECESSARY HUSTLE (Registration No. 4712354) for “athletic shirts; athletic
shorts; bandanas; belts; boxer shorts; gloves; hats; hooded sweatshirts; jackets;
jeans; jerseys; pants; scarves; shirts; shoes; shorts; socks; sports jerseys;
sweatpants; sweatshirts; t-shirts; tank-tops; tops; underwear; wristbands;”

420 TIME (Registration No. 4756055) for “clothing, namely, t-shirts, shirts,
sweatshirts, jackets, hats, caps, bandanas, sports jerseys, tank-tops,
sweatpants, shorts, footwear, pants, jackets, coats, gloves, jeans.”

As a general proposition, although use-based third-party registrations alone are
not evidence that the marks shown therein are in use or that the public is familiar
with them, they nonetheless may have probative value to the extent they may serve
to suggest that the goods are of a kind that emanate from a single source. See In re
Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co.,
Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Serial No. 86830256
- 10 -
The Examining Attorney also submitted Internet evidence demonstrating one or
more of the items identified by both Applicant and Registrant are offered under the
same mark.11 For example:
Web page printouts from www.adidas.com – showing shorts, jackets, and sport
jerseys offered under a common mark;

Web page printouts from www.augustaactive.com – showing pants, jackets, sport
jerseys, and sweatshirts offered under a common mark;

Web page printouts from www.majesticathletic.com – showing jerseys, jackets,
and shorts offered under a common mark;

Web page printouts from www.store.nike.com – showing jackets, shorts
sweatshirts, sports jerseys, and pants offered under a common mark;

Web page printouts from www.underarmour.com – showing shorts, jackets and
warm up suits offered under a common mark.

Applicant argues that its itemized description of particular types of sporting
apparel is sufficiently different from Registrant’s itemized description of men’s and
boy’s apparel to avoid confusing any reasonable consumer.12 Applicant’s argument is
unavailing. It is not necessary that the goods be identical, similar or competitive to
support a finding of likelihood of confusion; it is sufficient to establish that the goods
are related in some manner or that conditions and activities surrounding marketing
of these goods are such that they would or could be encountered by the same persons
under circumstances that could, because of the similarities between the marks , give
rise to the mistaken belief that they originate from or are in some way associated
with the same producer. Coach Servs., Inc., 101 USPQ2d at 1722; Edwards

11 See May 9, 2016, Office Action.
12 See Applicant’s April 16, 2016, Response to Office Action.
Serial No. 86830256
- 11 -
Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); Schering
Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v.
Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978).
In view thereof, we find that the evidence of record sufficiently demonstrates that
the goods identified in Applicant’s application and the goods identified in the cited
registration are closely related. Thus, the second du Pont factor also weighs in favor
of finding a likelihood of confusion.
C. Similarity of Trade Channels and Classes of Purchasers
Applicant argues that the parties’ respective trade channels differ since Applicant
only sells its goods online and at Applicant’s youth soccer events and academies.13
Applicant further maintains, based on its submitted Internet evidence, that
Registrant has very limited sales and distribution and that Registrant produces
private label brands for third-party retailers.14 We must, however, base our
determination regarding channels of trade on the goods as they are identified in the
application and the cited registration. Octocom Sys. Inc., 16 USPQ2d at 1787;
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987); Mini Melts, 118 USPQ2d at 1471. Neither Applicant’s application nor the
cited registration contain any limitations as to channels of trade or classes of
customers, and we may not read any limitation into them, even if Applicant’s evidence
suggests that the trade channels are distinct. Squirtco v. Tomy Corp., 697 F.2d 1038,

13 Applicant’s April 16, 2016, Response to Office Action.
14 Id.
Serial No. 86830256
- 12 -
216 USPQ 937, 940 (Fed. Cir. 1983) quoted in In re Mr. Recipe, LLC, 118 USPQ2d
1084, 1091 (TTAB 2016); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing
Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958). See also In re
Pierce Foods Corp., 230 USPQ 307, 309 (TTAB 1986) (“[I]t is clear that applicant has
restricted its goods to institutional purchasers. However, since the cited registration
is unrestricted as to channels of trade, we must presume that registrant's coating mix
for chicken is also sold to the institutional purchaser.”); In re Bercut-Vandervoort, 229
USPQ at 764 (extrinsic evidence and argument suggesting trade-channel restrictions
not specified in application rejected). In any event, the Examining Attorney
introduced website evidence showing that the type of clothing items identified in
Applicant’s application, as well as the cited registration, may be sold via the same
online marketplace to all relevant classes of purchasers. Thus, the third du Pont
factor also weighs in favor of finding a likelihood of confusion.
D. Lack of Actual Confusion
Applicant argues that it has been using its applied-for mark since “at least as early
as October 14, 1997” with no evidence of any actual confusion with Registrant’s mark.
Applicant concludes therefore that there is not a likelihood of confusion.15
While it may be true that the lack of evidence of actual confusion may be probative
in inter partes or infringement cases, in this ex parte proceeding, in which Registrant
is not a participant and cannot respond to Applicant's claims, Applicant's
uncorroborated statement that there are no known instances of actual confusion is of

15 Applicant’s Appeal Brief, p. 9, 4 TTABVUE 13.
Serial No. 86830256
- 13 -
little or no evidentiary value, especially because we have no evidence concerning the
extent of Applicant’s or Registrant’s use. In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1205 (Fed. Cir. 2003); J.C. Hall Co. v. Hallmark Cards, Inc., 52
C.C.P.A. 981, 340 F.2d 960, 964, 144 USPQ 435, 438 (CCPA 1965); In re Seiber &
McIntyre, Inc., 192 USPQ 722 (TTAB 1976). Accordingly, the du Pont factor of the
length of time during and conditions under which there has been contemporaneous
use without evidence of actual confusion is neutral.
E. Examination of Third-Party Marks
Applicant also argues that, more similar, and even identical, marks have been
found unlikely to cause confusion, even when used for more closely related products.16
Applicant’s argument is not compelling because prior decisions and actions of other
trademark examining attorneys in registering other marks have little evidentiary
value and are not binding upon the Board. See In re Midwest Gaming & Entm’t LLC,
106 USPQ2d 1163, 1165 n.3 (TTAB 2013) (citing In re Nett Designs, Inc., 236 F.3d
1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)); TMEP §1207.01(d)(vi) (Jan.
2017). Each case is decided on its own facts, and each mark stands on its own merits.
See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269
(C.C.P.A. 1973); In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009).
F. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Because we have

16 See Applicant’s April 16, 2016, Response to Office Action.
Serial No. 86830256
- 14 -
found that: (1) the marks are identical in sound, connotation and commercial
impression and virtually identical in appearance; and (2) Applicant’s goods are closely
related to Registrant’s and that they move in the same or overlapping trade channels
and are offered to the same classes of purchasers, we conclude that Applicant’s mark,
as used in connection with the goods identified in the application, so resembles the
cited mark for the identified goods as to be likely to cause confusion or mistake, or to
deceive under Section 2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s CROSSFIRE mark under Section
2(d) of the Trademark Act is affirmed.