Decathlon

Trademark Trial and Appeal Board

Jul 30, 2002

No. 74485941 (T.T.A.B. Jul. 30, 2002)

Mailed: July 30, 2002
Paper No. 46
CEW

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Decathlon
___________

Serial No. 74/485,941
___________

Virgil H. Marsh of Fisher, Christen & Sabol for
Decathlon.

Andrew J. Benzmiller, Trademark Examining Attorney, Law
Office 116 (Adam Striegel, Acting Managing Attorney).
____________

Before Cissel, Hairston and Walters, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Decathlon, a French company, has filed an
application to register the mark DECATHLON on the
Principal Register for the following goods1:

1 Serial No. 74/485,941 was filed on February 3, 1994 in several classes
based on an allegation of a bona fide intention to use the mark in
commerce, under Section 1(b) of the Trademark Act. Applicant included a
claim of priority, under Section 44(d) of the Trademark Act, based upon
an application filed in France on August 10, 1993. After filing its
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 74/485,941

2
Precious metals and their alloys and goods in
precious metals or coated therewith, not
included in any other classes, namely,
horological and chronological instruments,
namely, clocks, chronometers, cufflinks, tie
pins, and sun dials, in International Class 14;

Typewriter paper, staples for offices, drawing
pens and pencils, pencil sharpeners, pencils,
rubber erasers, card and document files, wall
calendars, and adhesive tape dispensers, in
International Class 16; and

Carpets, rugs, plastic bath and doormats and
matting, and carpets for automobiles and
artificial turf, in International Class 27.

The trademark examining attorney has issued a final
refusal to register under Section 2(d) of the Trademark
Act, 15 U.S.C. 1052(d), on the ground that applicant’s
mark so resembles the marks identified below, previously
registered, respectively, for the indicated goods, that,
if used on or in connection with applicant’s goods, it
would be likely to cause confusion or mistake or to
deceive.
With respect to applicant’s goods in
International Class 14, the examining attorney
has cited Registration No. 892,450 for the mark

appeal, applicant divided several classes out of this “parent”
application into two “child” applications, Serial Nos. 75/978,041
and75/980,161; and deleted its Section 1(b), intent-to-use, filing basis
(except with respect to services in International Class 41, which is no
longer in this application). This application includes a photocopy of a
French registration, although its date of submission is not specified
and it is unclear whether the examining attorney has considered it. If
applicant should ultimately prevail in this appeal, the file should be
returned to the examining attorney to consider the photocopy of the
French registration.

Serial No. 74/485,941

3
DECATHLON for “bracelets, including watch
bracelets.”2

With respect to applicant’s goods in
International Class 16, the examining attorney
has cited Registration No. 1,870,515 for the
mark DECATHLON for “desk top accessories,
namely, desk paper trays, desk calendar trays
and pen and pencil holders.”3

With respect to applicant’s goods in
International Class 27, the examining attorney
has cited Registration No. 1,365,708 for the
mark DECATHLON for “floor tiles of plastic
composition.”4

Applicant has appealed. Both applicant and the
examining attorney have filed briefs, but an oral hearing
was not requested.
Upon taking up this appeal for final decision, the
Board conducted a status search of the cited
registrations. Cited Registration Nos. 892,450 and
1,870,515 have been canceled and/or expired. The refusal
to register under Section 2(d) of the Act based on these
registrations with respect to applicant’s goods in
International Classes 14 and 16, respectively, is moot.

2 Registration No. 892,450 issued June 9, 1970, to Textron, Inc. This
registration has been canceled and expired, respectively, under Sections
8 and 9 of the Trademark Act.

3 Registration No. 1,870,515 issued December 27, 1994, to Westinghouse
Electric Corporation. This registration has been cancelled under
Section 8 of the Trademark Act.

4 Registration No. 1,365,708 issued October 15, 1985, to American
Biltrite Inc. Sections 8 and 15 affidavits accepted and acknowledged,
respectively.

Serial No. 74/485,941

4
Therefore, the only issue remaining in this appeal is the
Section 2(d) refusal pertaining to the goods in
International Class 27, which we now consider.
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. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and
differences in the marks.” Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976); and In re Azteca Restaurant Enterprises, Inc., 50
USPQ2d 1209 (TTAB 1999) and the cases cited therein.
Considering, first, the marks, there is no question
that applicant’s mark and the mark in the cited
registration are identical. Further, there is no
evidence in the record indicating that DECATHLON is other
than an arbitrary and strong mark with respect to
applicant’s goods and registrant’s goods.
Thus, we turn to consider the goods involved in this
case. The examining attorney contends that applicant’s
Serial No. 74/485,941

5
and registrant’s goods are closely related because “both
goods are types of hard-surface synthetic floor
coverings”; that there are no limitations on the channels
of trade or classes of purchasers, so that the goods are
presumed to travel through all normal trade channels to
all usual purchasers; and that, in view of the identity
of the marks, there is a sufficient relationship between
applicant’s and registrant’s goods to support a finding
of likelihood of confusion. In support of his position,
the examining attorney cited two cases involving
purportedly similar goods wherein the Board found a
likelihood of confusion. West Point-Pepperell, Inc. v.
Congoleum Industries, Inc., 197 USPQ 191 (TTAB 1997); and
R.H. Macy & Co., Inc. v. Kentile, Inc., 138 USPQ 486
(TTAB 1963).5
Applicant contends that applicant’s and registrant’s
goods have different uses, and travel through different
channels of trade because the goods are sold in different
areas or departments of stores. In particular, applicant
states that carpets for automobiles and artificial turf
are entirely different products from plastic tiles; that

5 Applicant correctly argues that each case must be decided on its
facts, and, therefore, the two cases cited by the examining attorney
must be distinguished on their facts and cannot be the basis for finding
the goods involved herein to be similar.

Serial No. 74/485,941

6
a rug may be placed over a tile floor, but the products
serve different purposes; and that plastic tiles are
adhered to a floor, whereas the other identified products
are not adhered to a floor.
The question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what
the evidence shows the goods or services actually are.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See also,
Octocom Systems, Inc. v. Houston Computer Services, Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). Further, it is a general rule that
goods or services need not be identical or even
competitive in order to support a finding of likelihood
of confusion. Rather, it is enough that goods or
services are related in some manner or that some
circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate

Serial No. 74/485,941

7
from or are in some way associated with the same producer
or that there is an association between the producers of
each parties’ goods or services. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991), and cases cited therein.
As the examining attorney stated, it is well
established that when the marks at issue are the same or
nearly so, the goods in question do not have to be
identical to find that confusion is likely. As we stated
in In re Concordia International Forwarding Corp., 222
USPQ 352, 356 (TTAB 1983), “. . . the greater the degree
of similarity in the marks, the lesser the degree of
similarity that is required of the products or services
on which they are being used in order to support a
holding of likelihood of confusion.”
Neither the examining attorney nor applicant
submitted any evidence in support of their respective
positions regarding the relationship between applicant’s
and registrant’s identified goods. However, the
examining attorney has the burden of establishing the
relationship between these goods and their channels of
trade and classes of purchasers.
There is no question that the goods in both the
application and registration are broadly identified and
contain no limitations with regard to channels of trade
Serial No. 74/485,941

8
or classes of purchasers. The trade channels of the
identified goods by their very nature encompass wholesale
distribution and retail sales, and the purchasers thereof
encompass the general consumer and the construction
trade, among other trade channels and purchasers. In
this regard, there is likely to be an overlap in the
trade channels of applicant’s goods and registrant’s
goods, at least as sold at retail in home improvement
centers or department stores to general consumers. While
the possibility that the respective goods may be sold in
different sections of a store would be a factor to
consider in determining the relationship between the
goods, there is no evidence in the file establishing this
as a fact and we will not presume it to be the case.
Considering applicant’s goods as identified, we find
no basis on this record to find a relationship between
applicant’s “plastic bath and door mats and matting,”
“carpets for automobiles” or “artificial turf” and
registrant’s “floor tiles of plastic composition” that is
close enough for the use of the same mark with both to be
likely to result in confusion. The fact that each
product covers a surface, albeit different surfaces, is
of slight significance in the absence of any evidence
Serial No. 74/485,941

9
that consumers would expect these different products to
emanate from the same or a related source.
However, carpets, rugs and floor tiles, regardless
of composition, are floor coverings that may be used for
the same purposes in homes or business premises to cover
entire floors or parts of floors, and may be used
together, with carpets and rugs being placed on floor
tiles. We find these products to be sufficiently related
that, if identified by the identical marks involved in
this case, confusion as to source would be likely. We
are not persuaded otherwise by applicant’s argument that
tiles are adhered to a floor whereas carpets and rugs are
not. First, this is not entirely true because wall-to-
wall carpeting is, clearly, permanently installed and
rugs and smaller carpets are likely to be “adhered” to a
floor by various means to avoid slippage. Further, there
is no basis in this record to conclude that consumers
would distinguish between the two identical DECATHLON
marks and the likely source of the respectively
identified goods based on the method of installation of
the goods.
Therefore, we conclude that in view of the identity
of applicant’s mark and registrant’s mark, their
contemporaneous use on carpets and rugs, on the one hand,
Serial No. 74/485,941

10
and plastic floor tiles, on the other hand, would be
likely to cause confusion as to the source or sponsorship
of such goods. To support a refusal, under Section 2(d)
of the Act, with respect to the goods in International
Class 27, it is only necessary to find a likelihood of
confusion with respect to one of the goods in that class.
Finally, while our finding of likelihood of
confusion is subject to some doubt because of the lack of
evidence in the record, we resolve that doubt in
registrant’s favor. It is well established that one who
adopts a mark similar to the mark of another for the same
or related goods or services does so at his own peril,
and any doubt as to likelihood of confusion must be
resolved against the newcomer and in favor of the prior
user or registrant. See J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed.
Cir. 1991); and In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025 (Fed Cir. 1988).
Decision: The refusal under Section 2(d) of the Act
is affirmed.