Edward Roth

Trademark Trial and Appeal Board

Feb 23, 2001

No. 75374375 (T.T.A.B. Feb. 23, 2001)

2/23/01
Paper No. 16
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Edward Roth
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Serial No. 75/374,375
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Inga Regenass of Van Cott, Bagley, Cornwall & McCarthy for
Edward Roth
Daniel F. Capshaw, Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney)
_______
Before Seeherman, Hanak and Wendel, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Edward Roth, the assignee of the original applicant,
Mooneyes USA, Inc., seeks to register, under the provisions
of Section 2(f) of the Trademark Act, the mark ED “BIG
DADDY” ROTH and design, as shown below, for “shirts and
caps.”1 The mark is described as the words ED “BIG DADDY”
1 Application Serial No. 75/374,375, filed October 14, 1997, and
asserting first use in June 1988 and first use in commerce in
July 1988.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/374,375
2
ROTH with the design of a rat. ED “BIG DADDY” ROTH is
identified as a living individual and, indeed, is the
current applicant.
The Trademark Examining Attorney has made final a
refusal to register the mark, pursuant to Section 2(d) of
the Act, 15 U.S.C. 1052(d), on the ground that applicant’s
mark so resembles the mark BIG DADDY’S and design, shown
below, and registered for “activewear, namely tee shirts,
shorts, sweat suits, sweat shirts, and hats”2 that, when
used on applicant’s identified shirts and caps, it is
likely to cause confusion or mistake or to deceive.
2 Registration No. 1,986,812, issued July 16, 1996.
Ser. No. 75/374,375
3
Applicant has appealed from the final refusal. Both
applicant and the Examining Attorney have filed briefs; an
oral hearing was not requested.
We reverse.
In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis under Section 2(d), two of
the most important considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
Turning first to the goods, they are in part legally
identical, in that the shirts identified in applicant’s
application would encompass the tee shirts and sweat shirts
listed in the cited registration, and the hats listed in
the cited registration would encompass applicant’s
identified caps. Moreover, because there is no limitation
in the application or the registration as to the channels
of trade or customers for the goods, we must deem these
legally identical goods to travel in the same channels of
trade and to be sold to the same classes of consumers. See
Ser. No. 75/374,375
4
Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); In re
Riley Company, 182 USPQ 510 (TTAB 1974). Thus, applicant’s
arguments as to differences in the classes of the
purchasers of the goods and trade channels are unavailing.
Despite this, however, we find that the differences in
the marks are sufficient to make confusion unlikely.
Although applicant’s mark does include the term BIG DADDY
which is, in effect, the dominant element of the cited
mark,3 we must compare the marks in their entireties, and
not focus our attention on only the common element in the
marks. BIG DADDY’S is the dominant element of the cited
mark, both visually, phonetically and connotatively. The
typestyle, while having a printing quality, and oval
carrier, are not likely to be noted or remembered by
consumers. In applicant’s mark, on the other hand, the
name ED ROTH is clearly the major visual focus, being
depicted in the largest letters, and in a visually eye-
catching font, with exaggerated initials for both the first
and last name. The rat design, too, has a strong visual
effect. Of all the elements, the term BIG DADDY is the
least noticeable because of its size and its placement.
3 We recognize that BIG DADDY’S appears in the possessive in the
cited mark.
Ser. No. 75/374,375
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Phonetically, again ED ROTH has a strong presence,
being the first and last word which is pronounced, with the
term BIG DADDY sandwiched in the middle. Finally, with
regard to connotation, applicant’s mark suggests a specific
person named ED ROTH, who either has the nickname BIG
DADDY, or is associated with a rat named BIG DADDY. The
cited mark, on the other hand, has only the general meaning
of BIG DADDY, which is defined as, inter alia, “a man
regarded as the paternalistic head of a family; the founder
or a leading member of a company, organization, movement,
etc.; Chiefly Southern U.S. grandfather.”4 Thus, the marks
convey different commercial impressions.
Moreover, the term BIG DADDY, which is the only term
common to both marks, is a recognized term in the nature of
a nickname. Applicant has pointed out that “there are a
number of ‘Big Daddy’s’ around, not the least of whom
include Cincinnati Bengals lineman Dan ‘Big Daddy’
Wilkinson, 1960s Speaker of the California Assembly, Jesse
‘Big Daddy’ Unruh, Ugandan dictator Idi ‘Big Daddy’ Amin,
and fictionally, ‘Big Daddy’ in Tennessee Williams’ Cat on
a Hot Tin Roof….” Response filed November 23, 1999, p. 3.
4 The Random House Dictionary of the English Language, 2d ed.,
unabridged © 1987. The Board may take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/374,375
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Thus, BIG DADDY’S in the cited mark could indicate anyone
who uses the nickname Big Daddy, and consumers are not
likely to view this term as referencing the ED ROTH of
applicant’s mark.
Applicant has also made of record Internet submissions
showing a large number of references to “Big Daddy,”
including the movie Big Daddy; Big Daddy Dave’s Virtual
Marketplace; Big Daddy’s BBQ Sauce and Spices; Big Daddy’s
General Store and Big Daddy Doodle’s Guitaropedia. In
addition, applicant has submitted a substantial number of
third-party registrations for BIG DADDY marks.5 Third party
registrations may be used in the same manner as dictionary
definitions, to show that a term has a meaning in a
particular trade or industry. See Conde Nast Publications,
Inc. v. Miss Quality, Inc., 507 F.2d 1404, 184 USPQ 422
(CCPA 1975). In this case, the registrations are for a
wide range of goods and services, ranging from golf clubs
to frozen vegetables to grass seed. Although these
registrations are for goods and services far different from
the clothing items identified in applicant’s application
and the registrant’s registration, the very range of goods
5 Applicant also submitted a number of third-party applications;
however, such applications are evidence only of their filing, and
have no other legal effect.
Ser. No. 75/374,375
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and services on which the mark is used suggests that BIG
DADDY is widely recognized as a nickname. Moreover, two of
the registrations submitted by applicant, owned by the same
party, are for BIG FAT DADDY, and BFD BIG FAT DADDY, and
are for clothing articles such as those at issue herein,
including shirts, T-shirts and hats. It is noted that the
cited registration issued in 1996, despite the presence of
the BIG FAT DADDY registration which issued in 1995.
All of the foregoing evidence suggests that the term
BIG DADDY (or BIG DADDY’S) is not entitled to a broad scope
of protection. In view thereof, and given the differences
in the marks, as noted above, we find that confusion is not
likely. We say this even though the goods are legally
identical, must be deemed to be sold through the same trade
channels to the same classes of consumers, and, because of
the nature of the goods, they are likely to be the subject
of impulse purchases by the general public. It is well
established that in determining likelihood of confusion,
any one of the duPont factors may be dispositive. Kellogg
Company v. Pack’em Enterprises, Inc., 951 F.2d 330, 21
USPQ2d 1142 (Fed. Cir. 1991). In this case, the
differences in the marks and the limited scope of
protection to be accorded the term BIG DADDY(’S) outweigh
Ser. No. 75/374,375
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the duPont factors favoring a finding of likelihood of
confusion.
Decision: The refusal of registration is reversed.