Drive Headwear, LLC

Trademark Trial and Appeal Board

Apr 15, 2004

No. 76347027 (T.T.A.B. Apr. 15, 2004)

Mailed: April 15, 2004
Paper No. 9
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Drive Headwear, LLC
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Serial No. 76347027
______
Ralph H. Dougherty of Dougherty, Clements & Hofer for Drive
Headwear, LLC.
Daniel F. Capshaw, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Simms, Hanak and Bucher, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:

Drive Headwear, LLC (“applicant”), a North Carolina
limited liability company, has appealed from the final
refusal of the Trademark Examining Attorney to register the
mark DRIVE HEADWEAR (“HEADWEAR” disclaimed) for “clothing;
namely, hats, golf hats, visors, and baseball caps.”1 The

1 Serial No. 76347027, filed December 10, 2001, based upon
applicant’s allegation of a bona fide intention to use the mark
in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76347027
2
Examining Attorney has refused registration under Section
2(d) of the Act, 15 USC §1052(d), on the basis of
Registration No. 1,665,099, issued November 19, 1991
(renewed) for the mark DRIVE for “shoes.” Applicant and
the Examining Attorney have submitted briefs but no oral
hearing was requested.
We affirm.
Our determination under Section 2(d) of the Act 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 Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003); and In re E.I. du Pont de Nemours and Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). Two key
considerations are the marks and the goods or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The 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”).
Furthermore, likelihood of confusion may be found when
the goods are not the same or even directly competitive, it
being sufficient if they are related in some way or that
the circumstances under which they are marketed are such
Ser. No. 76347027
3
that persons encountering the goods would assume a
relationship or common source because of the similarity of
the marks. In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Opus One
Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001); and McDonald's
Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989).
First, concerning the marks, applicant argues that the
Examining Attorney has dissected its mark and “discarded”
the disclaimed word “HEADWEAR,” and that the marks are
different in sound, appearance and meaning. Applicant does
acknowledge that the word “DRIVE” is “neither a suggestive
term nor generic identifier.” Brief, 6.
We disagree with applicant’s contention that the
Examining Attorney has dissected applicant’s mark. Rather,
the Examining Attorney has stated, in accordance with
precedent, that, while marks must be considered in their
entireties, it is not inappropriate to give greater weight
to a dominant feature of a mark (in this case, the word
“DRIVE”) because that feature will have greater
significance in creating a commercial impression than a
generic or descriptive word (in this case, the generic and
disclaimed term “HEADWEAR”). When the respective marks
DRIVE and DRIVE HEADWEAR are compared in this light, the
marks, whose dominant feature is the arbitrary word
Ser. No. 76347027
4
“DRIVE,” are substantially similar in sound, appearance and
commercial impression.
With respect to the goods, shoes on the one hand and
hats, golf hats, visors and baseball caps on the other,
applicant argues that these are dissimilar goods worn on
the opposite extremities of the body, which are sold in
different departments of the same store, if not in
different stores, to sophisticated purchasers.2
Here, too, we agree with the Examining Attorney that
applicant’s headwear and registrant’s shoes are related
items of apparel. As the Examining Attorney has noted,
neither identification of goods is limited. Thus, we must
presume that those identifications encompass all goods of
the type described and that they travel in all normal
channels of trade to all potential customers. See, e.g.,
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed.
Cir. 1983); and Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 940 (Fed. Cir. 1983). Viewed in this light,
registrant’s shoes could include all types of shoes,
including athletic shoes, which could be worn with
applicant’s headwear. Moreover, the Examining Attorney has
submitted evidence, such as thirteen use-based third-party
registrations listing either hats, caps or visors as well

2 Applicant does acknowledge that its headwear may be purchased
on impulse.
Ser. No. 76347027
5
as shoes.3 Other evidence submitted includes copies of
clothing catalogs from the Internet showing that both hats
of various types and shoes may be made by or sold by the
same company.
Applicant’s headwear and registrant’s shoes may also
be sold in the same stores to the same class of purchasers.
And, as applicant has acknowledged, its relatively
inexpensive goods may be purchased without much
deliberation. Accordingly, we believe that purchasers,
aware of registrant’s DRIVE shoes, who then encounter
applicant’s hats, visors, and caps offered under the mark
DRIVE HEADWEAR, are likely to believe that these goods come
from the same source or are licensed or approved by the
same source. See, for example, Cambridge Rubber Co. v.
Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549
(CCPA 1961)(women’s boots versus men’s and boys’
underwear); General Shoe Corporation v. Hollywood-Maxwell
Co., 277 F.2d 169, 125 USPQ 443 (CCPA 1960)(shoes vs.
hosiery and brassieres); In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991)(women’s pants, blouses, shorts and jackets
vs. women’s shoes); In re Apparel Ventures, Inc., 229 USPQ

3 The Examining Attorney maintains that his search strategy of
identifications of goods listed in registrations (“shoes” with
“hats” or “visors” or “caps” or “headwear”) yielded 28,290 hits
which listed shoes as well as one of the other items. The
thirteen third-party registrations which the Examining Attorney
made of record are a sample of the results of that search.
Ser. No. 76347027
6
225 (TTAB 1986)(blouses, skirts and sweaters vs. shoes,
boots and slippers); In re Alfred Dunhill Limited, 224 USPQ
501 (TTAB 1984)(various items of men’s clothing vs. shoes);
and In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB
1984)(athletic shoes vs. men’s shirts).
Decision: The refusal of registration is affirmed.