ESTESS Sports, Håkan Dahlbo OG

Trademark Trial and Appeal Board

Jul 22, 2015

No. 79133041 (T.T.A.B. Jul. 22, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: July 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re ESTESS Sports, Håkan Dahlbo OG
_____

Serial No. 79133041
_____

Thorsten Schmidt and Bruce J. Koch of Schmidt LLC,
for ESTESS Sports, Håkan Dahlbo OG.

David Taylor, Trademark Examining Attorney, Law Office 112,
Angela Bishop Wilson, Managing Attorney.
_____

Before Seeherman, Lykos and Kuczma,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Pursuant to Section 66(a) of the Act, 15 U.S.C. § 1141f(a) (the “Madrid
Protocol”), ESTESS Sports, Håkan Dahlbo OG (“Applicant”) has filed a Request for
Extension of Protection of an international registration for the mark ESTESS and
design, as shown below, on the Principal Register for the following goods and
services:
Clothing, namely, sports clothing; footwear; headgear, namely
headwear (Class 25);

Serial No. 79133041
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Transport, packaging and storage of goods; travel arrangement; tour
operation services; travel-arrangement services; tour operating and
organizing; coordinating travel arrangements for individuals and for
groups (Class 39); and

Provision of physical education; physical education, educational
support for physical education and instructional services; conducting
sports instruction programmes; sports tutoring; computer-assisted
physical education services (Class 41).

Applicant has submitted a description of its mark as consisting “of a square
standing on its point containing a futuristic “E” followed by the text ESTESS.” Color
is not claimed as a feature of the mark.1
The Trademark Examining Attorney made final a requirement for an acceptable
identification for the goods and services, and also refused registration on the ground
of likelihood of confusion. Applicant then filed a notice of appeal and a request for
reconsideration, which was denied. The appeal was resumed and briefs were filed
by Applicant and the Examining Attorney. Applicant did not file a reply brief.
I. Preliminary Matters
We note that, although in its request for reconsideration Applicant amended the
identification for the services in Class 39, in denying the request for reconsideration
on December 19, 2014, the Examining Attorney did not address this amendment at
all, and merely said that “applicant’s request has not resolved all the outstanding
issue(s), nor does it raise a new issue or provide any new or compelling evidence

1 Application Serial No. 79133041, based on International Reg. No. 1167754, issued May 30,
2013. The USPTO was notified of the request for extension on May 30, 2013.
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with regard to the outstanding issue(s) in the final Office action.” However, in his
brief the Examining Attorney made clear that the requirement for a definite
identification applied only to the Class 25 goods and Class 41 services.
With respect to the ground of likelihood of confusion, in the first and final Office
actions the Examining Attorney discussed this ground by setting forth the goods
and services in all three classes. However, in discussing the goods/services, he
mentioned only the relatedness between Applicant’s Class 25 goods and the
Registrant’s goods. No mention was made of any purported relatedness between
Applicant’s Class 39 and 41 services and the Registrant’s goods. The Examining
Attorney made explicit in his brief that the refusal on the ground of likelihood of
confusion applied to only the goods in Class 25.
Accordingly, the issues before us on appeal are whether Applicant’s
identification of goods and services in Classes 25 and 41 are acceptable, Trademark
Rule 2.32(a)(6), and whether the use of Applicant’s mark on its goods in Class 25 is
likely to cause confusion with the marks in Registration Nos. 3059270 and 3024077
for, respectively, ESTES in standard characters2 and ESTES and design, as shown
below,3 both owned by the same entity for clothing, namely caps, shirts, sweatshirts
and jackets in Class 25. Trademark Act Section 2(d).

2 Registration No. 3059270 for ESTES in standard characters issued on February 14, 2006;
Section 8 affidavit accepted; Section 15 affidavit acknowledged.
3 Registration No. 3024077 for ESTES and design issued on December 6, 2005; Section 8
affidavit accepted; Section 15 affidavit acknowledged.
Serial No. 79133041
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There are no refusals with respect to the services in Class 39, and the application in
this class is not the subject of this appeal.4
II. Evidentiary Issues
The Examining Attorney has raised an objection to Applicant’s listing in its brief
of web addresses or hyperlinks as evidence in support of its position that the
channels of trade are distinct. 9 TTABVUE 11. The Examining Attorney correctly
points out that the mere submission of a web address or hyperlink is insufficient to
make the webpages associated with that address or hyperlink of record. In re HSB
Solomon Assocs., LLC, 102 USPQ2d 1269, 1274 (TTAB 2012). However, in this case
Applicant, in both its response filed March 24, 2014 and its request for
reconsideration filed November 19, 2014, referenced a number of hyperlinks in its
arguments traversing the Section 2(d) refusal of registration, and the Examining
Attorney never apprised Applicant of the deficiency of Applicant’s submissions.
Certainly at the time the Examining Attorney issued the final Office action on May
19, 2014, Applicant would have had an opportunity to remedy the evidentiary
problem. In view thereof, we consider the Examining Attorney to have waived his
objection. Cf. In re Houston, 101 USPQ2d 1534, 1536 (TTAB 2012) (finding that the

4 The appeal fee for Class 39 was properly filed since, at the time of the appeal, the
Examining Attorney had not withdrawn the refusal pertaining to this class.
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examining attorney’s failure to advise applicant of the insufficiency of the list of
registrations when it was proffered during examination constituted a waiver of any
objection to consideration of that list); In re Broyhill Furniture Indus., Inc., 60
USPQ2d 1511, 1513 n.3 (TTAB 2001) (finding examining attorney’s objection to a
listing of third-party registrations waived because it was not raised in the Office
action immediately following applicant’s response in which applicant’s reliance on
the listing as evidence was indicated).
However, that still leaves the problem that the associated webpages were not
submitted during examination. The Board cannot consider webpages that are not
submitted, nor does the Board itself engage in obtaining such evidence. We note
that with its appeal brief Applicant has submitted for the first time two exhibits.
Normally such exhibits would not be considered, since they are untimely. See
Trademark Rule 2.142(d). However, Exhibit 2 is a printout from the website for
Estes Rocket at the url www.estesrockets.com, and this is one of the urls listed in
Applicant’s March 24, 2014 response. Therefore, we have considered this document.
See TBMP § 1208.02 (2015) (if the examining attorney does not advise the applicant
that a listing of third-party registrations is not sufficient to make the registrations
of record at a point that the applicant can correct the error, the list will be
considered by the Board for whatever probative value it may have); In re City of
Houston, 101 USPQ2d at 1536. Exhibit 1, on the other hand, is an entry for “Estes
Serial No. 79133041
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Industries” in Wikipedia, and this article was never mentioned in Applicant’s
response to the Office action. Therefore, we have given it no consideration.5
III. Refusals and Requirements
We now consider the procedural requirements and substantive grounds for
refusal with respect to each class in the application.
Class 25
1. Identification Requirement
We first turn to the requirement for a definite identification of goods in Class 25.
The goods as identified by Applicant are “clothing, namely, sports clothing;
footwear; headgear, namely, headwear.” The Examining Attorney has objected to
this identification because Applicant has not specified each item of sports clothing,
e.g., shirts, shorts, pants. The Examining Attorney has explained that the broad
wording “sports clothing” could include goods in different classes, such as
“protective sports clothing, namely, reflective and illuminated clothing for safety
purposes.” Brief, 7 TTABVUE 13. Applicant has not addressed the objection to the
identification in its brief or, indeed, in its request for reconsideration and, as noted,
did not file a reply brief.6 We do not share the Examining Attorney’s concern that
the goods could be in a class other than Class 25. The application was filed

5 Even if we were to have considered it, it would not affect our decision herein since, as
discussed infra, Applicant cannot limit the cited Registrant’s goods or channels of trade by
extrinsic evidence.
6 In the first Office action, mailed September 24, 2013, the Examining Attorney suggested
amending the identification, with instructions inserted in brackets to the goods as then
identified: Clothing, namely, [specify each by common commercial name]; footwear,
headgear, namely, [specify each type, or amend to ‘headwear’]. Applicant followed only the
suggestion to identify “headwear.”
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pursuant to the Section 66(a) of the Trademark Act, and the classification for such
applications cannot be changed from the classification assigned by the International
Bureau of the World Intellectual Property Organization. See Trademark Rule
2.85(d). Therefore, anyone viewing this application would understand that the goods
are Class 25 sports clothing, and not protective sports clothing in Class 9. However,
we do find that the identification of “sports clothing” is indefinite, because “sports
clothing” can include a wide range of goods, from sports bras to running shorts to
ski jackets to bathing suits. The broad term “sports clothing” does not adequately
indicate the specific goods on which Applicant uses or intends to use its mark.
We affirm the requirement for a definite identification of goods.
2. Likelihood of confusion
This brings us the substantive ground for refusal of the application in Class 25,
likelihood of confusion. Registration was refused pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles the marks ESTES and ESTES and design, registered for caps, shirts,
sweatshirts and jackets in Class 25 that, if used on Applicant’s goods, it is likely to
cause confusion or mistake or to deceive.
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (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 analysis, two key considerations are the
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similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Turning first to the factors of the goods and channels of trade, although the
Examining Attorney contends that Applicant’s identified “clothing, namely sports
clothing” is indefinite, this broadly worded identification would certainly include
shirts, sweatshirts and jackets, all items that can be worn when playing sports.
Moreover, the Examining Attorney has submitted several use-based third-party
registrations that list, as specific items of “athletic apparel,” shirts and jackets
(Registration Nos. 4528927,7 4528436,8 4525673,9 452570310). Therefore, the
Registrant’s identified “shirts” and “jackets” would encompass the “shirts” and
“jackets” identified in Applicant’s application. Further, Applicant’s identified
“headwear” would encompass “caps.” Therefore, we find Applicant’s and the
Registrant’s goods, as identified, to be in part legally identical. This du Pont factor
favors a finding of likelihood of confusion. Moreover, because the goods are in part
legally identical, they are deemed to travel in the same channels of trade to the
same classes of consumers. In re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB
2015). This du Pont factor also favors a finding of likelihood of confusion.

7 May 19, 2014 Office action, p. 10.
8 Id. at 7.
9 Id. at 13.
10 Id. at 14.
Serial No. 79133041
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Applicant argues that the goods are different because sports apparel is different
from “generic” clothing. However, because the Registrant’s goods are not restricted
to any particular purpose for the clothing, the identified clothing must be deemed to
encompass shirts, sweatshirts and jackets used for sports. Applicant contends that
because the Examining Attorney submitted third-party registrations showing that
other entities have specifically identified their goods as “athletic apparel,” this
shows that there is a distinction between “athletic apparel” and “generic” clothing.
However, the fact that some clothing is identified as athletic apparel does not mean
that clothing identified without such a restriction would not encompass sports
clothing. We also point out that Applicant’s “headgear” is not restricted to sports
clothing. Thus, Applicant’s identified “headgear” and the Registrant’s identified
“caps” are legally identical, and based on this alone the du Pont factor of the
similarity of the goods favors a finding of likelihood of confusion. See Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981) (likelihood of confusion must be found as to a particular class in an
application if there is likely to be confusion with respect to any item that comes
within the identification of goods in the class).
Applicant also argues that the goods are sold in different channels of trade,
namely that the Registrant’s goods are sold to model rocket enthusiasts through the
Registrant’s website. It bases this argument on what it contends to be shown on the
Registrant’s website and the specimens in the registration files. The specimens are
not of record, and the one webpage from the Registrant’s website that was attached
Serial No. 79133041
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to Applicant’s brief does not indicate anything about the channels of trade for the
Registrant’s identified goods. In any event, likelihood of confusion must be
determined on the basis of an analysis of the mark as applied to the goods and/or
services recited in an applicant’s application vis-à-vis the goods and/or services
recited in the cited registration, rather than what the evidence shows the goods
and/or services to be. See In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1534 (Fed. Cir. 1997); Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, NA, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). The identification of the
goods in the cited registrations contain no restrictions as to the channels of trade or
classes of purchasers, and therefore are deemed to travel in all channels of trade
appropriate for the goods.
With respect to the conditions of sale factor, Applicant asserts that the relevant
customers are likely to be careful because purchasers of products from the
Registrant “are sophisticated buyers who are drawn to the Registrant because of an
interest in model rocketry or RC airplanes.” Brief, 7 TTABVUE 16. Again, Applicant
is attempting to limit the class of purchasers of the Registrant’s goods by relying on
extrinsic evidence. However, Registrant’s goods are identified as shirts, sweatshirts,
jackets and caps, and Applicant’s sports clothing are presumed to include such
items. Such articles can be relatively inexpensive, as shown by the website evidence
made of record by the Examining Attorney in which shirts are offered for as low as
Serial No. 79133041
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$19.99,11 while some others are offered from $29.00 to $31.00.12 Moreover, some of
these items, like caps, can be the subject of impulse purchase.
This brings us to the du Pont factor of the similarity of the marks. When goods
are legally identical, as they are, in part, here, the degree of similarity necessary to
support a conclusion of likely confusion declines. See In re Viterra, Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Applicant’s mark is ESTESS with a design element described by Applicant as
a futuristic “E”.

The cited marks are ESTES in standard characters and ESTES with a design.

The literal portion of the marks, ESTES and ESTESS, are almost identical,
differing only by the final “S” in Applicant’s mark. The presence or absence of this
“S” does little to change the appearance of the words; most consumers are not likely
to notice it. The test is not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks are sufficiently similar
in terms of their overall commercial impression so that confusion as to the source of

11 May 19, 2014 Office action, p. 22.
12 September 24, 2013 Office action, p. 17; May 19, 2014 Office action, p. 17.
Serial No. 79133041
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the goods or services offered under the respective marks is likely to result. United
Global Media Grp. Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014) (citing San
Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ
1, 3 (CCPA 1977)). Nor does the additional “S” in Applicant’s mark change the
pronunciation of the marks. Because there is no correct pronunciation of a
trademark, ESTES and ESTESS can be pronounced identically.13 Embarcadero
Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re
Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012)). In view
of the in part legally identical goods, the similarity in sound is sufficient to find that
the first du Pont factor favors a finding of likelihood of confusion. In re White Swan
Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (a finding of similarity as to any one factor
(sight, sound or meaning) alone may be sufficient to support a holding that the
marks are confusingly similar). See also, Centraz Industries Inc. v. Spartan
Chemical Co., 77 USPQ2d 1698, 1701 (TTAB 2006) (similarity in sound between
ICE SHINE and ISHINE is so substantial that it outweighs any differences in
appearance and meaning).
Applicant’s mark, of course, contains a design element which is not present in
the ESTES standard character mark. Applicant argues that the design element is
the dominant feature of Applicant’s mark because it is “a unique diamond design in

13 Applicant engages in an extended discussion of how ESTES and ESTESS would be
pronounced, contending that “when analyzing a new word, a reader searches for clues to
the word’s meaning by looking for familiar prefixes and segments of words.” Brief, 7
TTABVUE 9. Applicant essentially acknowledges that ESTES and ESTESS are not known
words with recognized pronunciations. Thus, its very arguments support the well-
established principle that there is no correct pronunciation of a trademark.
Serial No. 79133041
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which the letter ‘e’ is incorporated,” and because this unique design is at the
beginning of Applicant’s mark. Brief, 7 TTABVUE 8. We disagree. Applicant’s own
description of the design is that it includes a “futuristic E,” and we consider the
depiction of this letter to be so “futuristic” that consumers are not likely to recognize
it as letter E at all. In the case of marks consisting of words and a design, the words
are normally given greater weight because they would be used by consumers to
request or refer to the products. Bd. of Regents, Univ. of Tex. Sys. v. S. Ill. Miners,
LLC, 110 USPQ2d 1182, 1188 (TTAB 2014); In re Appetito Provisions Co., 2
USPQ2d 1553, 1554 (TTAB 1987). Because of the abstract nature of the design
appearing in the diamond, and the fact that a diamond is a simple geometric shape
that is often used as a carrier for marks, we think that this general rule applies to
Applicant’s mark, and the dominant element of the mark is the term ESTESS. See,
e.g., In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1138 (TTAB 2015). We
also add that, because the design would not be readily recognized as the letter “E,”
consumers are not likely to refer to the mark as E ESTESS, as Applicant contends.
Comparing Applicant’s mark and the standard character mark ESTES in their
entireties, and giving appropriate weight to the dominant element ESTESS in
Applicant’s mark, we find that these marks are similar in appearance and identical
in pronunciation, and since both are similar looking invented terms, they convey the
same commercial impression.
Having weighed all the relevant du Pont factors, (including any that have not
been discussed herein), we find that Applicant’s mark ESTESS and design for its
Serial No. 79133041
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identified goods in Class 25 is likely to cause confusion with the cited registration
for ESTES in standard characters. Having reached this conclusion with respect to
Applicant’s mark and ESTES in standard characters, there is no need for us to
consider the issue of likelihood of confusion with the cited registration for ESTES
and design.
3. Class 41
The only issue involving the application in this class is whether the
identification is acceptable. In the first Office action, mailed September 24, 2013,
the Examining Attorney showed in brackets the problems in the original
identification:
Provision of physical education; physical education, educational
support [the wording “educational support” is indefinite and must be
clarified] and instructional services; conducting sports instruction
programmes; sports tuition [this wording is indefinite]; computer-
assisted physical education services.

Applicant amended the identification in its March 24, 2014 response:
Provision of physical education; physical education, educational
support for physical education and instructional services; conducting
sports instruction programmes; sports tutoring; computer-assisted
physical education services.

The Examining Attorney found this identification indefinite as well, and in the
May 19, 2014 Office action explained the remaining problems in the bracketed
instruction, and with bold type indicating wording that should be added:
Provision of physical education; physical education, educational
support [the wording educational support is indefinite] for physical
education and physical education instructional services; conducting
sports instruction programmes; sports tutoring; computer-assisted
physical education services.
Serial No. 79133041
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Applicant made no further amendments or remarks in the subsequent request
for reconsideration or its brief and, as noted, it did not file a reply brief. The
Examining Attorney has explained in his brief that the wording “educational
support” is indefinite because it does not adequately specify the nature of the
“educational support” services, stating that this wording is overly broad and “could
include support services in a number of different classes, e.g., office support staff
services for schools in International Class 35. The Examining Attorney also
contends that the wording “instructional services” is “overly broad in the context of
the overall class 41 services specified because it does not indicate the subject matter
of the services.” Brief, 9 TTABVUE 13.
Again, as with the Examining Attorney’s argument regarding the identification
of goods in Class 25, we find the Examining Attorney’s contention that the
identification could include support services in a number of different classes not to
be relevant. Because the application is based on Trademark Act Section 66(a), the
classification of the services in Class 41 cannot be changed. However, this is not to
say that the identification in its totality has the necessary specificity. “The
applicant’s identification of goods … should identify the goods by their common,
ordinary name so that the average person would recognize what they are.” J.
Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 19.48 (4th
ed. 2008), quoted in In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1124 Fed. Cir.
2009); In re Faucher Industries Inc., 107 USPQ2d 1355, 1358 (TTAB 2013) (“The
primary purposes for requiring a clear identification of the goods in a trademark
Serial No. 79133041
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application are (i) to allow for informed judgments concerning likelihood of
confusion under 15 U.S.C. § 1052(d) and (ii) to allow for the proper classification of
the goods.”). We agree with the Examining Attorney that the identification
“instructional services” is indefinite, as it does not indicate the subject matter of the
instructional services. Although “instructional services” appears as part of the
clause, “physical education, educational support for physical education and
instructional services,”14 “physical education” is not used in a way that it would be
viewed as modifying “instructional services.”15
We reach a different result when we consider the Examining Attorney’s objection
to “educational support for physical education.” Although the Examining Attorney
contends that “educational support” does not adequately identify the nature of the
services, a fair reading of the phrase “educational support for physical education …
services” is that Applicant’s identification is not for “educational support” per se,
but “educational support for physical education.” Clearly, the Examining Attorney’s
concern that this identification could encompass “office support staff services for
schools” would be a misreading of the identification. The subject matter of the
educational support services is identified as physical education.
Although we find that one of the Examining Attorney’s objections to the
identification is not well taken, we agree that the identification for this class as a

14 The above-quoted language is shown as one phrase, separated from the other phrases by
semi-colons.
15 As noted, the Examining Attorney had suggested that the problem with the identification
could be cured if Applicant were to add “physical education” before “instructional services.”
Applicant chose not to do so.
Serial No. 79133041
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whole is indefinite. Therefore, we affirm the requirement for a definite identification
of services in the class. We further point out that, because the Examining Attorney
did not include a clear and explicit statement that the requirement applies to only
certain services in the class, the affirmance of the requirement is to entire class. See
In re Faucher Industries Inc., 107 USPQ2d at 1358; cf. Trademark Rule 2.165(a)(1)
(“If all refusals and/or requirements are expressly limited to certain goods and/or
services, the application will be abandoned only as to those goods and/or services.”).
Decision:
Class 25: The refusal to register Applicant’s mark ESTESS and design on the
basis that its mark for its identified goods is likely to cause confusion with cited
Registration No. 3059270 is affirmed; the requirement for an acceptable
identification of goods is affirmed.
Class 41: The requirement for an acceptable identification of services is affirmed.
Class 39: The application in this class was not the subject of this appeal.
Because there is no outstanding refusal or requirement for the application in
Class 39, the application will proceed to publication only for the services in Class
39.