Dal-Con Promotions, Inc.

Trademark Trial and Appeal Board

Sep 23, 1999

No. 74176705 (T.T.A.B. Sep. 23, 1999)

Paper No. 19
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTTAB 9/23/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Dal-Con Promotions, Inc.
________
Serial No. 74/176,705
_______
Francie R. Gorowitz of Ladas & Parry for applicant.
Raul F. Cordova, Trademark Examining Attorney, Law Office
114 (Mary Frances Bruce, Managing Attorney).
_______
Before Quinn, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Dal-Con Promotions,
Inc. to register the mark RIVER RUN for “souvenir novelty
jewelry pins sold in connection with a motorcycle rally,
primarily at the rally” (in International Class 14);
“souvenir t-shirts sold in connection with a motorcycle
rally, primarily at the rally” (in International Class 25);
Ser No. 74/176,705
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and “organizing and conducting a motorcycle rally” (in
International Class 41).1
The Trademark Examining Attorney has refused
registration in International Class 25 only. As the basis
of the refusal under Section 2(d) of the Trademark Act, the
Examining Attorney asserts that applicant’s mark, when
applied to applicant’s “souvenir t-shirts sold in
connection with a motorcycle rally, primarily at the
rally,” so resembles the previously registered mark RIVER
RUN for “clothing for skiing, hunting and fishing, namely
jackets, vests, pants, overalls and one piece suits”2 as to
be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs.
Applicant, in urging that the refusal be reversed,
argues that although the marks are identical in sound and
appearance, they have different meanings when applied to
the respective goods. Applicant, relying on a dictionary
definition of “run,” contends that the registered mark,

1 Application Serial No. 74/176,705, filed June 17, 1991,
alleging dates of first use of March 20, 1983 and dates of first
use in interstate commerce of June 30, 1983. The application
originally was filed by Dale A. Marschke. The application
subsequently was assigned to Dal-Com Promotions, Inc., and the
assignment is recorded in the Assignment Branch of the Office at
reel 1842, frame 0747.
2 Registration No. 1,412,446, issued October 7, 1986; Section 8
affidavit filed and accepted.
Ser No. 74/176,705
3
particularly with respect to the clothing for fishing,
“connotes the migration of fish up or down a river.”3
Applicant goes on to claim that its mark, on the other
hand, is “totally arbitrary and has no meaning other than
applicant’s motorcycle rally.” Applicant also contends
that given the restriction in its identification of goods,
the goods are sold in different channels of trade--
applicant’s at or in connection with a motorcycle rally and
registrant’s at sporting goods stores and the like, or in
sports clothing departments of clothing or department
stores. Lastly, applicant claims that the purchasers of
the respective goods are sophisticated, asserting that
“purchasers of applicant’s souvenir t-shirts that are sold
in connection with applicant’s motorcycle rally are
motorcycle enthusiasts who associate the source of the t-
shirt with the source of the rally” and that purchasers of
registrant’s clothing are “looking for a particular type
and quality of clothing appropriate for their particular
sport.” (reply brief, p. 2)
The Examining Attorney counters by pointing to the
identity between the involved marks, and contending that
the goods are similar and move in similar channels of

3 The term “run” is defined, in part, as “a migration of fish (as
up or down a river) esp. to spawn.” Merriam Webster’s Collegiate
Ser No. 74/176,705
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trade. The Examining Attorney asserts that the restriction
in applicant’s identification is open ended, and “the fact
that the [t-shirts] will be sold in connection with a
certain event again does not impose any limitations on
applicant.” (brief, p. 4) The Examining Attorney has
submitted pages from a department store catalog showing,
according to the Examining Attorney, that sportswear items
are not necessarily expensive.
Our determination 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 likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Food, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
In the present case, the marks are identical in sound
and appearance. Nonetheless, registrant’s mark, when
applied to registrant’s specific goods, would appear to
have a somewhat suggestive meaning, connoting the outdoors.
Applicant’s mark, on the other hand, when applied to
souvenir t-shirts sold in connection with a motorcycle

Dictionary (10th ed.)
Ser No. 74/176,705
5
rally, primarily at the rally, clearly suggests an
association with the motorcycle rally organized under the
same mark by applicant.
Insofar as the goods are concerned, it is well settled
that the issue of likelihood of confusion in these types of
cases must be determined on the basis of the goods as they
are identified in the involved application and
registration. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Further, we acknowledge that there is no per se rule
governing likelihood of confusion in cases involving
clothing items. In re British Bulldog, Ltd., 224 USPQ 854
(TTAB 1984); and In re Sydel Lingerie Co., Inc., 197 USPQ
629, 630 (TTAB 1977).
In the present case, we find that applicant’s
identification of goods includes significant restrictions
(that is, “souvenir t-shirts sold in connection with a
motorcycle rally, primarily at the rally”) which clearly
differentiate applicant’s t-shirts from registrant’s
skiing, hunting and fishing clothing. Contrary to the
Examining Attorney’s contentions, the restrictions in
applicant’s identification convince us that the respective
goods travel in different channels of trade to different
classes of purchasers. The purchasers of applicant’s
souvenir t-shirts obviously are aware of applicant’s rally,
Ser No. 74/176,705
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and know, when buying these t-shirts, that the goods are
associated with applicant.
Based on the limited record before us, we see the
likelihood of confusion finding of the Examining Attorney
as amounting to only a speculative, theoretical
possibility. Language by our primary reviewing court is
helpful in resolving the likelihood of confusion
controversy in this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception, or mistake or with de
minimis situations but with the
practicalities of the commercial world,
with which the trademark laws deal.
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
citing Witco Chemical Co. v. Whitfield Chemical Co., Inc.,
418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff’g
153 USPQ 412 (TTAB 1967).
Decision: The refusal to register is reversed.
T. J. Quinn
C. E. Walters
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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