DRHORSE-POWER, INC.

Trademark Trial and Appeal Board

Dec 4, 2015

No. 77505597 (T.T.A.B. Dec. 4, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: December 4, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re DRHORSEPOWER, INC.
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Serial No. 77505597
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Andrew D. Skale and Ben L. Wagner of Mintz Levin Cohn Ferris Glovsky and Popeo
for DrHorsepower, Inc.

Anne C. Gustason, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
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Before Zervas, Adlin and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

DrHorsepower, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark shown below that contains DRHORSEPOWER YOUR PRESCRIPTION
FOR WINNING!

Serial No. 77505597
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for energy drinks in International Class 32 (Application).1 The description of the
mark characterizes the design element in the mark as “a whiskered man riding on a
cartoon dragster with smoke coming from the wheels.” The Examining Attorney
refused registration of Applicant’s mark under § 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), as likely to cause confusion with the registered mark
HORSEPOWER ENERGY DRINKS (standard characters) for identical goods (the
“Registration”).2 After the Examining Attorney made the refusal final, Applicant
appealed to this Board and filed a request for reconsideration which was denied. We
affirm the refusal to register.
I. Applicable Law

The determination under § 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de

1 Application Serial No. 77505597 was filed June 23, 2008 based on Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
2 Registration No. 3690631 issued October 13, 2010.
Serial No. 77505597
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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, 1203 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380
F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); 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.”).
With respect to the marks, 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). The test
assesses not whether the marks can be distinguished in a side-by-side comparison,
but rather whether their overall commercial impressions are so similar that
confusion as to the source of the goods offered under the respective marks is likely
to result. Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Laboratories Inc. v. Lichter, 102
USPQ2d 1546, 1551 (TTAB 2012).
As to the goods, we must determine whether their degree of relatedness rises to
such a level that consumers would mistakenly believe the goods emanate from the
same source. The comparison must be based on the identifications in the
Application and Registration. See Stone Lion Capital Partners, LP v. Lion Capital
Serial No. 77505597
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LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990).
II. Analysis

Turning first in the likelihood of confusion analysis to the relatedness of
Applicant’s and Registrant’s goods, we find that this du Pont factor weighs heavily
in favor of likely confusion because the goods are identical. Applicant makes no
argument alleging differences between the goods themselves.
We also presume, as we must, that Applicant’s and Registrant’s identical goods,
for which both identifications are unrestricted, travel through the same channels of
trade to the same class of purchasers. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012); see also Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that
where the identification is unrestricted, “we must deem the goods to travel in all
appropriate trade channels to all potential purchasers of such goods”). The
consumers of the energy drinks at issue include members of the general public.
Applicant improperly seeks to narrow the channels of trade for the Registration
based on its review of Registrant’s website, though neither the webpages nor other
supporting evidence is of record. See In re Consolidated Specialty Restaurants Inc.,
71 USPQ2d 1921, 1929 (TTAB 2004) (“[A]ttorney argument without support in the
record ... does not overcome the prima facie case.”). Even if Registrant’s energy
drinks actually travel only in trade channels associated with golf, the identification
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of goods in the Registration, energy drinks without limitation, controls, not the
goods as sold in the marketplace. See Cunningham, 55 USPQ2d at 1848. Attempts
in an ex parte proceeding to argue limitations outside the identified goods in the
cited registration effectively constitute improper collateral attacks on the validity of
the registration. In re Dixie Restaurants, Inc., 105 F.3d 1405, 105 F.3d 1405, 1408
(Fed. Cir. 1997). Accordingly, given the identical goods and lack of trade channel
restrictions in the identifications of goods, we find that the trade channels are
identical, and this du Pont factor also heavily favors likely confusion.
Turning to the similarity of the marks themselves, we compare them in their
entireties. When the goods are identical, the appearance of a mark of similar sound,
appearance, or connotation is more likely to cause confusion than if the goods are
significantly different. See Century 21 Real Estate v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.1992) (“When marks would appear on
virtually identical goods or services, the degree of similarity necessary to support a
conclusion of likely confusion declines.”).
We remain mindful that Registrant may display its HORSEPOWER ENERGY
DRINKS standard character mark in any lettering style, including that in which
Applicant displays the wording encompassed in its mark. See Viterra., 101 USPQ2d
at 1909; In re Mighty Leaf Tea, 601 F.3d 1342, 1348 (Fed. Cir. 2010). Both the mark
in the Application and the mark in the Registration contain the identical wording
HORSEPOWER, though Applicant’s mark includes the additional wording DR and
YOUR PRESCRIPTION FOR WINNING!, as well as a design element that the
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description of the mark characterizes as “a whiskered man riding on a cartoon
dragster with smoke coming from the wheels.” The mark in the Registration
contains the obviously generic additional wording ENERGY DRINKS, which
Registrant disclaimed.
Applicant contends that its mark differs from that in the Registration because of
its prominent design and because it also contains “the unique name DR.
HORSEPOWER and the slogan YOUR PRESCRIPTION FOR WINNING!.”3
Applicant further argues that the larger number of words and syllables in its mark
makes it sound different, and that the doctor and prescription references create a
distinct commercial impression that its energy drinks are “just what the doctor
ordered.”4 Also, Applicant maintains that the slogan brings about a consumer sense
that the energy drinks will help them “perform their absolute best and win races in
life.”5 According to Applicant, the mark in the Registration, by contrast, conveys the
impression “that the registrant’s product is a powerful energy drink.”6
We find that Applicant’s mark and the mark in the Registration share the
dominant element HORSEPOWER and that Applicant’s mark as a whole looks,
sounds, and gives an impression that a consumer likely would view as a variation of
the mark in the Registration. We agree with Applicant that the design in its mark
is large and fairly prominent, but not that it suffices to distinguish Applicant’s

3 16 TTABVUE at 8-9.
4 Id. at 10.
5 Id.
6 Id. at 11.
Serial No. 77505597
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mark. The design depicts a doctor character wearing an old-fashioned medical head
mirror, who presumably must be “Dr. Horsepower.” Thus, the design emphasizes
the DR HORSEPOWER wording that appears first and at the top of the mark.
While Applicant’s mark comprises both words and a design, “the verbal portion of
the mark is the one most likely to indicate the origin of the goods [services] to which
it is affixed.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA v. New
Millennium Sports, S.L.U., 116 USPQ2d 1129, 1134 (Fed. Cir. 2015), citing CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). If a mark
comprises both wording and a design, greater weight is often given to the wording,
because it is the wording that purchasers would use to refer to or request the goods
or services. See, e.g., Viterra, 671 F.3d at 1366, 101 USPQ2d at 1911; see also In re
Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) (holding applicant's
mark, MAX with pillar design, and registrant’s mark, MAX, likely to cause
confusion, noting that the “addition of a column design to the cited mark ... is not
sufficient to convey that [the] marks ... identify different sources for legally identical
insurance services”).
The marks share the term HORSEPOWER as the dominant element or part of
the dominant element. Overall, DR HORSEPOWER dominates Applicant’s mark.
We find that the other wording, YOUR PRESCRIPTION FOR WINNING!, gives the
impression of a tagline or slogan accompanying the DR HORSEPOWER and design
brand reference. In the Registration, HORSEPOWER clearly dominates the mark,
as the other wording, ENERGY DRINKS, is generic for the goods and has been
Serial No. 77505597
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disclaimed. See In re Chatam Int'l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed.
Cir. 2004) (“Because ALE has nominal commercial significance, the Board properly
accorded the term less weight in assessing the similarity of the marks under
DuPont. As a generic term, ALE simply delineates a class of goods.”); Anheuser-
Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824 (TTAB 2015) (“And
it is beyond dispute that descriptive or generic terms (such as WINE when used in
connection with "wines") serve little source-identifying function.”). We remain
mindful that “[a]lthough the court may place more weight on a dominant portion of
a mark, for example if another feature of the mark is descriptive or generic standing
alone, the ultimate conclusion nonetheless must rest on consideration of the marks
in total.” Viterra, 101 USPQ2d at 1908 (citations omitted).
In considering the marks in their entireties, we find that Applicant’s mark uses
the same dominant element, HORSEPOWER, in a way that creates an impression
that consumers likely would perceive as a variation of Registrant’s mark for the
identical goods. Consumers likely would mistakenly believe that Registrant
established a character, “Dr. Horsepower,” to represent the goods sold under its
HORSEPOWER ENERGY DRINKS mark, and added a slogan that the drinks are
“YOUR PRESCRIPTION FOR WINNING!” Also, where, as here, the goods are
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great. See Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350,
1354 (Fed. Cir. 2004). Accordingly, this factor favors likely confusion.
Serial No. 77505597
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Applicant next contends that the du Pont factor of the number and nature of
similar marks in use on similar goods weighs against likely confusion. Citing In re
Broadway Chicken, Inc., 38 USPQ2d 1559 (TTAB 1996), Applicant argues that
“widespread” third-party use of marks containing the term HORSEPOWER render
confusion unlikely.7 Applicant attempts to rely on a third-party application
containing the term HORSEPOWER for energy drinks. However, “[a]n application
is not evidence of anything except that the application was filed on a certain date.”
Wet Seal, Inc. v. FD Management, 82 USPQ2d 1629, 1634 (TTAB 2007). Thus, the
pending application lacks probative value to support the proposition. Applicant also
offers four instances of third-party use of the term HORSEPOWER in connection
with energy drinks and contends that such use has conditioned consumers to “look
to other elements in marks as a means of distinguishing the source of energy
drinks.”8 In one such example, Applicant submits a Wikipedia entry for the Diesel
Energy Drink that indicates that the beverages come with “6000 or 9000
horsepower,” which “refers to the amount (in milligrams) of energy components
found in each can.”9 The Wikipedia entry does not show direct use by the third
party, and regardless, seems to indicate that any use of horsepower is as a
measurement of energy components rather than in the manner of a mark. Another
example consists of an individual consumer comment about an energy drink, which
is marked on the webpage as “no longer available.” The consumer states that the

7 16 TTABVUE at 12-15.
8 Id. at 14.
9 April 13, 2011 Response to Office Action at 3.
Serial No. 77505597
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drink has “way more horsepower” than another type of energy drink.10 Again, this
evidence does not reflect third party use in the manner of a mark, so as to suggest
that consumers are accustomed to distinguishing among marks with this common
element. The remaining two pieces of evidence show use of the terms “Liquid
Horsepower” and “Human Horsepower” with energy drinks.11 Unlike in Broadway
Chicken, where the record contained hundreds of examples of third-party use, the
evidence in this case essentially consists of two examples. Thus, we find that the
record here does not show the type of widespread use of marks containing the term
contemplated by the holding in Broadway Chicken. In this case, the evidence of
third-party use of HORSEPOWER with energy drinks does not establish that
consumers are accustomed to relying on small differences to distinguish among
many marks containing the shared term HORSEPOWER. Thus, we consider this du
Pont factor neutral.
Applicant also contends that other du Pont factors merit consideration,
specifically, the extent to which Applicant has a right to exclude others from use of
its mark on its goods, and the extent of potential confusion. According to Applicant,
the alleged weakness of the mark in the Registration entitles it to relatively less
protection and weighs against likely confusion. Even if the evidence of use of the
term “horsepower” in connection with energy drinks demonstrates some degree of
suggestiveness, we disagree that it rises to the level of proving weakness. Applicant
also makes a conclusory argument that given the evidence under various du Pont

10 Id. at 5.
11 Id. at 2, 4.
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factors, any potential confusion is merely de minimis, and “does not rise to a
sufficient probability of confusion so as to justify depriving Applicant of a
registration under Section 2(d).”12 As argued by Applicant, this essentially involves
the balancing of all the relevant du Pont factors, rather than a separate
consideration.
Based on the similarity of the marks, as well as the identical nature of the goods
and trade channels, we find confusion likely. We treat the remaining relevant du
Pont factors as neutral. Balancing the relevant factors, we consider the Application
likely to result in consumer confusion.
Decision: The refusal to register Applicant’s mark under § 2(d) is affirmed.

12 16 TTABVUE at 15.