Detroit Athletic Co.

Trademark Trial and Appeal Board

Jun 2, 2017

No. 86625093 (T.T.A.B. Jun. 2, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 2, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Detroit Athletic Co.
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Serial No. 86625093
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Kathryn R. Spray of Wright Beamer
for Detroit Athletic Co.

Jeffrey Chery, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
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Before Kuhlke, Kuczma and Goodman, Administrative Trademark Judges.
Opinion by Kuhlke, Administrative Trademark Judge:
Detroit Athletic Co. (Applicant) seeks registration on the Supplemental Register
of the standard character mark DETROIT ATHLETIC CO. (ATHLETIC CO.
disclaimed) for “On-line retail consignment stores featuring sports team related
clothing and apparel; Retail apparel stores; Retail shops featuring sports team
related clothing and apparel; Retail sports team related clothing and apparel
stores,” in International Class 35.1

1 Application Serial No. 86625093, initially filed on May 11, 2015, for registration on the
Principal Register, amended to the Supplemental Register on February 4, 2016. Applicant
alleges first use and first use in commerce on November 8, 2004.
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark, when used in connection with the identified services, so
resembles the typed mark2 DETROIT ATHLETIC CLUB registered on the
Principal Register for “Clothing, namely athletic uniforms, [ cardigans, ] coats, golf
shirts, gym suits, hats, jackets, [ sweaters, ] sweat pants, sweat shirts, polo shirts,
and T-shirts,” in International Class 25,3 as to be likely to cause confusion, mistake
or deception.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the requests for
reconsideration the appeal was resumed. The Examining Attorney and Applicant
filed briefs. We affirm the refusal to register.
Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in 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., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion

2 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. A typed mark is the legal equivalent of a standard character mark. TMEP §
807.03(i) (January 2017).
3 Registration No. 2590532, issued on July 9, 2002, sections 8 and 15 combined declaration
accepted and acknowledged, renewed. The wording “ATHLETIC CLUB” is disclaimed and
the mark is registered under Section 2(f) based on acquired distinctiveness. The goods in
brackets were deleted pursuant to a Section 8 declaration. The registration includes other
services (“City club services - namely providing health club facilities, amateur leagues,
social functions,” in International Class 41 and “hotel services, hotel concierge services, and
restaurant food services,” in International Class 42) that were not cited as a bar to
registration.
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analysis, two key considerations are the similarities between the marks and the
similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Similarity/Dissimilarity of the Marks
We consider Applicant’s mark DETROIT ATHLETIC CO. and Registrant’s mark
DETROIT ATHELTIC CLUB and 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 marks “‘must
be considered … in light of the fallibility of memory ….’” In re St. Helena Hosp., 774
F.3d 747, 113 USPQ2d 1082, 1085 (quoting San Fernando Elec. Mfg. Co. v. JFD
Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper
focus is on the recollection of the average customer, who retains a general rather
than specific impression of the marks. Winnebago Indus., Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975).
The marks are nearly identical in terms of sound, appearance and commercial
impression. They both consist of three words beginning with the identical words
DETROIT ATHLETIC and ending with words that start with the letter C, CO. and
CLUB. The additional differing terms CO. and CLUB are non-source identifying
elements in the marks and are appropriately disclaimed in the application and cited
registration. “[I]n articulating reasons for reaching a conclusion on the issue of
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confusion, 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 consideration of the marks in their entireties.” In re Nat’l Data
Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985); see also Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014).
In this case, we acknowledge the wording DETROIT ATHLETIC is itself
conceptually weak as DETROIT is geographically descriptive (registered based on
acquired distinctiveness in the cited registration) and ATHLETIC is merely
descriptive (disclaimed in the cited registration). However, the fact that the
identical wording “DETROIT ATHLETIC” is at the beginning of both marks,
lessens the possible influence of differing wording at the end inasmuch as
consumers are more inclined to focus on the first word or words in a trademark or
service mark. See Palm Bay, 73 USPQ2d 1692; In re Morinaga Nyugyo Kabushiki
Kaisha, 120 USPQ2d 1738, 1742 (TTAB 2014) (confusing similarity of MT. RAINER
and MOUNT RAINER marks heightened by placement as first words of the mark);
Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it
is often the first part of a mark which is most likely to be impressed upon the mind
of a purchaser and remembered”).
Applicant argues that the difference engendered by the wording CO. and CLUB
is sufficient to distinguish the marks because these terms “tell the consumer that
one is a corporation and the other a social club.” 8 TTABVUE 14. We are not
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persuaded by this argument. We begin by noting that many clubs are themselves
corporations and the designation CO. would not necessarily eliminate the possibility
that a particular entity does business as a club, or the reverse, that the word CLUB
would not necessarily eliminate the possibility that the club is a corporation. The
Examining Attorney submitted a few third-party registrations that illustrate this
point. See, e.g., HULA BAY CLUB (Registration No. 4830796) owned by a Florida
Corporation; WEST BAY CLUB (Registration No. 5015818) owned by a Florida
corporation; LONG BEACH CENTURY CLUB (Registration No. 4945192) owned by
a California corporation.4 While we recognize the common element DETRIOT is also
inherently weak, it is not generic or incapable matter, as is the case with the terms
CLUB and CO. In addition, it is the first word in both marks and the marks have
the identical structure DETROIT ATHLETIC followed by incapable matter starting
with the letter C. In view thereof, in this case, despite the inherent weakness of the
marks overall, we find that the additional terms CLUB and CO. are not sufficient to
distinguish the marks.
In addition, because Applicant’s and Registrant’s marks are in standard
characters they are not limited to any particular depiction. The rights associated
with a mark in standard characters reside in the wording and not in any particular
display. In re RSI Sys., LLC, 88 USPQ2d 1445 (TTAB 2008); In re Pollio Dairy
Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); TMEP § 1207.01(c)(iii) (April
2017). We must consider Applicant’s and Registrant’s marks “regardless of font

4 August 25, 2016 Request for Reconsideration Denial Letter pp. 5, 16, 19.
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style, size, or color,” Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d
1253, 1258-59 (Fed. Cir. 2011), including iterations that emphasize the common
element DETROIT ATHLETIC and deemphasize the last words CO. and CLUB
such as DETROIT ATHLETIC co. or DETROIT ATLETIC club.
We find that, viewed as a whole, the similarities between the marks in
appearance, sound, connotation and commercial impression, due to the identical
words DETROIT ATHLETIC and the identical structure, outweigh the
dissimilarities. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 110 USPQ2d
at 1161. In view thereof, the du Pont factor of the similarity of the marks favors a
finding of likelihood of confusion.
Applicant points to third-party registrations which are not of record. In his brief,
the Examining Attorney “requests the Board disregard the third-party registrations
cited by Applicant in its Appeal brief.” However, when Applicant referenced these
registrations in its request for reconsideration, the Examining Attorney addressed
those references without objection in his denial of the request for reconsideration. In
re Total Quality Group Inc., 51 USPQ2d 1474, 1477 n.6 (TTAB 1999); see also In re
1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) (Board
treated listing of particulars of third-party applications/registrations submitted by
applicant as stipulated into record only to the extent that the specific data provided
by applicant was considered). While the actual registrations are not of record, we
consider these references for whatever probative value they have. 1st USA Realty, 84
USPQ2d at 1583. Applicant points to the registrations for the marks CHICAGO
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ATHLETIC CLUBS for health club and spa services and CHICAGO ATHLETIC
ASSOCIATION for hotel services, which are different from the goods and services at
issue in this case and arguably more distant from each other than the clothing and
retail clothing store services identified in the subject application and cited
registration. Finally, as recognized by Applicant, we are not bound by prior
decisions of other examining attorneys; each case must be decided on its own facts.
In re Max Capital Group Ltd., 93 USPQ2d 1243 (TTAB 2010) (quoting Plus
Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983) (third-party
registration “cannot justify the registration of another confusingly similar mark”).
See also In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001) (Board must decide each case on its own merits and allowance of prior
registrations does not bind the Board).
Similarity of the Goods and Services/Channels of Trade/Consumers
With regard to the goods and services, channels of trade and classes of
consumers, we must make our determinations under these factors based on the
goods and services as they are identified in the application and registration. See In
re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also
Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1161;
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); and Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
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The goods and/or services do not have to be identical or even competitive in order
to find that there is a likelihood of confusion. In re Iolo Techs., LLC, 95 USPQ2d
1498, 1499 (TTAB 2010); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1368
(TTAB 2009). We must consider not whether the actual goods and services are
literally the same, but rather whether the public will be confused as to their source.
See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed.
Cir. 2000); In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed.
Cir. 1993); Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1403–04, 186
USPQ 476, 480 (CCPA 1975); In re Ass’n of the U.S. Army, 85 USPQ2d 1264, 1270
(TTAB 2007). See also In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289 (Fed. Cir. 1984) (holding MARTIN’S for wheat bran and honey
bread, and MARTIN’S for cheese, likely to cause confusion).
It is well recognized that confusion may be likely to occur from the use of the
same or similar marks for goods, on the one hand, and for services involving those
goods, on the other. See, e.g., In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S (stylized) for retail grocery and
general merchandise store services and BIGGS and design for furniture likely to
cause confusion); In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347 (CCPA 1961)
(holding SEILER’s for catering services and SEILER’S for smoked and cured meats
likely to cause confusion); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB
1986) (holding mark consisting of a design featuring silhouettes of a man and
woman used in connection with distributorship services in the field of health and
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beauty aids and mark consisting of a design featuring silhouettes of a man and
woman used in connection with skin cream likely to cause confusion); In re Phillips-
Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items
of clothing and THE “21” CLUB (stylized) for restaurant services likely to cause
confusion); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER
IMAGE (stylized) for retail women’s clothing store services and CREST CAREER
IMAGES (stylized) for uniforms likely to cause confusion); Steelcase Inc. v. Steelcare
Inc., 219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. and design for
refinishing of furniture, office furniture, and machinery and STEELCASE for office
furniture and accessories, likely to cause confusion); Corinthian Broad. Corp. v.
Nippon Elec. Co., Ltd., 219 USPQ 733 (TTAB 1983) (holding TVS for transmitters
and receivers of still television pictures and TVS for television broadcasting services
likely to cause confusion).
Applicant argues that “the clothing sold by registrant has no relation to sports
teams and is described in very general terms … [and] Appellant seeks registration
in class 35 which references a very specific type of clothing … [a]s such, the goods,
while falling under the very general term ‘clothing,’ are indeed very different.” 8
TTABVUE 15. The problem with this line of argument is revealed in the argument
itself. As Applicant recognizes, Registrant’s list of clothing items is “very general”;
what that means for the analysis is that the broad identification in the cited
registration covers all types of clothing, which includes sports teams’ clothing.
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Retail store services featuring sports team clothing, and clothing items are
related.5 This finding is supported by the numerous printouts from the websites of
several third-parties wherein clothing and retail store services featuring athletic
clothing, including sports team clothing, are offered under the same trademark. See,
e.g., FILA online retail store offering FILA branded clothing items;6 NIKE online
retail store offering NIKE branded clothing;7 ADIDAS online retail store offering
ADIDAS branded clothing;8 and CONVERSE online retail store offering
CONVERSE branded clothing.9 In addition, several clothing online retail stores
carry sports team clothing items. See, e.g., Hanes;10 Champion;11 and Puma.12
With regard to the channels of trade, the ordinary channels of trade for clothing
items include all types of clothing stores, both online, and brick and mortar,
including those that specialize in sports teams.
Applicant argues that “[i]n this matter, it is [du Pont] factor number 3 which is
of primary significance: the similarity of established, likely-to-continue trade
channels.” 8 TTABVUE 11. However, Applicant focuses on Registrant’s actual use

5 We note that Applicant’s identification of services includes “retail apparel stores”
separated by semi-colons, as such, those stores in its identification are not limited to sports
team apparel. However, inasmuch as the broad identification of goods in the cited
registration encompasses sports team apparel, it is not necessary to engage in that
analysis.
6 (www.fila.com) April 11, 2016 Office Action at 23-31.
7 April 11, 2016 Office Action at 34.
8 April 11, 2016 Office Action at 49.
9 (www.converse.com) April 11, 2016 Office Action at 50-53.
10 (www.hanes.com) April 11, 2016 Office Action at 15-22.
11 (www.wyndhamathome.com) December 29, 2015 Office action at 60-62.
12 (us.puma.com) April 11, 2016 Office Action at 37-41.
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rather than the goods as identified in the registration. As noted above, the analysis
in comparing the goods/services and trade channels must be based on the
recitations in the application and registration. “Trademark cases involving the issue
of likelihood of confusion must be decided on the basis of the respective descriptions
of goods.” Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901,
177 USPQ 76, 77 (CCPA 1973).
In this case, there are no trade channel restrictions in the registration; the
identification of goods is simply “Clothing, namely athletic uniforms, coats, golf
shirts, gym suits, hats, jackets, sweat pants, sweat shirts, polo shirts, and T-shirts.”
This identification is national in scope and covers all ordinary trade channels for
clothing items. Such trade channels include retail stores both brick and mortar and
online. In other words, although the Registrant may be a private club, there is
nothing in the registration to restrict it from selling its clothing in any retail
establishment because such a restriction is not reflected in the identification of
goods. The mere fact of what Registrant is, is not sufficient to restrict the analysis
of the trade channels to Registrant’s gift shops.13 Such a restriction, to be

13 In addition, the presence of other services in separate classes in the registration do not
serve to limit the goods identified in International Class 25. In a multiple-class registration,
each class stands on its own as it would if it were in a separate registration. See G&W
Laboratories, Inc. v. G W Pharma Limited, 89 USPQ2d 1571, 1574 (TTAB 2009) (“[E]ach
class of goods or services in a multiple class registration must be considered separately
when reviewing the issue of fraud, and judgment on the ground of fraud as to one class does
not in itself require cancellation of all classes in a registration.”); Baseball America Inc. v.
Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 n. 9 (TTAB 2004) (emphasis added) (“[I]f
priority and likelihood of confusion are established as to any of the goods or services
identified in an opposed class of goods or services, the opposition to registration of the mark
as to all of the goods or services identified in that class will be sustained”); Electro-Coatings,
Inc. v. Precision Nat’l Corp., 204 USPQ 410, 420 (TTAB 1979) (“there are, in law, three
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applicable, must be reflected in the identification of goods. The sum total of our
analysis, based on longstanding case law, is to consider whether Registrant’s types
of goods (i.e., clothing, not restricted by trade channel or type and thus including
sports team related apparel”) are sold in “retail apparel stores” or, as other parts of
Applicant’s identification reads, in “retail shops featuring sports team related
clothing and apparel.” The obvious answer is yes, clothing is sold in retail apparel
stores featuring sports team related clothing and apparel. Thus, the Examining
Attorney is not “stretch[ing] to imagine a scenario in which the general public might
be able to purchase clothing from the [R]egistrant.” 8 TTABVUE 12. Applicant’s
evidence about Registrant’s and Applicant’s actual use cannot, in the context of an
ex parte proceeding, be used to restrict the scope of the broad registration. In re
Bercut-Vanderboort & Co., 229 USPQ 763, 764-765 (TTAB 1986) (“[T]he question of
likelihood of confusion must be determined by an analysis of the marks as applied
to the goods [and services] identified in the application vis-à-vis the goods [and
services] recited in the registration, rather than what extrinsic evidence shows
those goods to be.”). Such restriction may only be done in the context of a
cancellation proceeding. Therefore, Applicant’s argument, for example, that its
products and services are noncompetitive, speaks to the evidence of actual use, not
what is broadly reflected and protected in the cited registration.

applications and three oppositions to be adjudicated, because each class in a multiple class
application constitutes a separate case”). Each international class stands on its own, for all
practical purposes like a separate application, and we must make determinations for each
separate class. G&W Laboratories, 89 USPQ2d at 1573-74.

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Nor does the evidence that private clubs sell apparel in their gift shops limit the
cited registration to only the Registrant’s gift shop. The fact that private clubs have
gift shops does not prove private clubs never sell their apparel online or through
other retail establishments.
In view thereof, the du Pont factors of the relatedness of goods and services,
channels of trade and consumers weigh in favor of likelihood of confusion.
Actual Confusion
Applicant argues that:
The nature and extent of any actual confusion also favors
the Appellant as the Appellant has submitted evidence in
the form of the affidavit of long-time customer Kyle
Hamilton attesting to the lack of actual confusion of the
source of goods as between Appellant and registrant, as
well as internet search results … which show that the
Appellant and registrant do not appear together in
consumer searches.
8 TTABVUE 17.
It is well settled that the relevant test is likelihood of confusion, not actual
confusion; thus, it is unnecessary to show actual confusion to establish likelihood of
confusion. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002). In addition, the combined affidavits do not affirmatively
assert that there has been no confusion, only that Mr. Hamilton has been a
customer for 16 years. Further, the fact that Applicant and Registrant do not
appear together in consumer searches does not support Applicant’s position. In
order for a lack of actual confusion to be probative, there should be meaningful
opportunities for confusion to occur, and on this record that is not the case.
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Balancing the Factors
In conclusion, because the marks are similar, the goods and services are related,
and the channels of trade and consumers overlap, we find that confusion is likely
between Applicant’s mark DETRIOT ATHLETIC CO. and the mark DETRIOT
ATHLETIC CLUB in the cited registration.
Decision: The refusal to register based on likelihood of confusion under Section
2(d) of the Trademark Act is affirmed.