Felt Racing, LLC

Trademark Trial and Appeal Board

Mar 5, 2013

No. 85415875 (T.T.A.B. Mar. 5, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 5, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Felt Racing, LLC
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Serial No. 85415875
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Eric L. Tanezaki of Stetina Brunda Garred & Brucker for Felt Racing, LLC.

Shaunia Carlyle, Trademark Examining Attorney, Law Office 110 (Chris A. F.
Pedersen, Managing Attorney).
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Before Bucher, Wellington, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Felt Racing, LLC filed an application to register on the Principal Register the
mark FAST, in standard character form, for “bicycles and bicycle structural parts,”
in International Class 12.1
The trademark examining attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as used in
connection with applicant’s goods, so resembles the registered mark GO FAST, as to

1 Application Serial No. 85415875, filed under Trademark Act § 1(b), 15 U.S.C. § 1051(b), on
September 6, 2011.
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be likely to cause confusion, or to cause mistake, or to deceive. The cited mark is
registered on the Principal Register for “automobiles, vans, airplanes, motorbikes,
motorcycles, racing cars, bicycles, boats, personal watercraft, namely, recreational
jet boats, land vehicles, power boats, go carts, all terrain vehicles, non-motorized
scooters, motorized scooters.” When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs and applicant has filed a
reply brief.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Addressing first the goods of applicant and registrant, we find that they are
legally identical. “Bicycles” are identified in both the application and the cited
registration. In the context of an analysis under Section 2(d), it is sufficient if
likelihood of confusion is found with respect to use of the mark on any item that
comes within the description of goods in the application or registration. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB
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2007). Accordingly, the du Pont factor of the similarity or dissimilarity of the goods
favors a finding of likelihood of confusion.
As applicant’s goods are identical to those of registrant, we must presume
that those goods move in all channels of trade normal for those goods and are
available to all classes of purchasers for those goods, including the trade channels
and customers of registrant. American Lebanese Syrian Associated Charities Inc. v.
Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith
and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994); In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). These two du Pont factors favor a
finding of likelihood of confusion.
We next consider the similarity or dissimilarity of the marks at issue. In
comparing the marks, we are mindful that where, as here, the goods are identical,
the degree of similarity necessary to find likelihood of confusion need not be as great
as where there is a recognizable disparity between the goods. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007);
Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007).
Applicant contends that its mark FAST is an acronym that stands for “Felt
Active Stay Technology.” However, applicant seeks registration of FAST without
any restrictions relating to its display as an acronym or display in connection with
the wording “Felt Active Stay Technology.” We cannot take this aspect of display
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into consideration as it is not set forth in the application. Tuxedo Monopoly at 988;
Toro Co. v. Hardigg Industries, Inc., 549 F.2d 785, 790, 193 USPQ 149, 155 (CCPA
1977); The Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419
(CCPA 1977). In any event, the evidence submitted by applicant to demonstrate the
acronym significance of the mark demonstrates that applicant in fact uses the mark
FAST alone, in isolation from “Felt Active Stay Technology.” See applicant’s
response of March 5, 2012, Exhibit A, an advertisement of applicant showing at
least ten uses of FAST alone and only one use in combination with “Felt Active Stay
Technology.”
Applicant rightly points out that in our analysis under Section 2(d) we must
compare the marks at issue in their entireties. However, 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 a
consideration of the marks in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). For example, it is significant that
applicant’s mark FAST is contained in its entirety in the cited registered mark; in
such cases, confusing similarity has often been found. See, In re Mighty Leaf Tea,
601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (ML similar to ML MARK
LEES); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407
(CCPA 1967) (THE LILLY similar to LILLI ANN); In re United States Shoe Corp.,
229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE similar to CREST CAREER
IMAGES).
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Applicant contends that the examining attorney has impermissibly dissected
the registered mark GO FAST, focusing on the term FAST to the exclusion of the
component GO.2 The examining attorney’s position is that “The addition of the
word GO in the Registrant’s mark does not change the meaning of the word FAST
or the commercial impression of the mark. Both marks convey a message of
speed.”3 We find that the marks at issue, considered in their entireties, convey
substantially similar meanings. The purpose of bicycles is locomotion. In the
context of such goods, applicant’s mark FAST carries with it the strong suggestion
that the goods will allow the user to move (or “go”) fast.4 In this sense, FAST and
GO FAST create highly similar commercial impressions.
Applicant argues that where the common element of two marks is “weak,”
because it is descriptive or highly suggestive, confusion is unlikely.5 The rationale
underlying this argument is that the other matter in the marks will help consumers
to distinguish between them. Such an argument applies with much greater force
when each of the two marks contains some additional matter not common to the
other mark. In the present case, by contrast, only the registered mark has
additional matter, namely, the term GO. Moreover, for the reasons discussed in the

2 Applicant’s brief at 6-7.
3 Examining attorney’s brief at unnumbered p. 5.
4 The primary definition of “go” is “to move on a course : pass from point to point or station
to station : proceed by any of several means.” WEBSTER’S THIRD NEW INTERNATIONAL
DICTIONARY (1993) p. 971. The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
5 Applicant’s brief at 4-5.
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preceding paragraph, the designation GO does not forcefully distinguish the
registered mark from the applicants’ mark, because in the field of bicycles, GO is
strongly suggestive of locomotion. Accordingly, in the present situation, we do not
find that the asserted weakness of FAST reduces the likelihood of confusion.
Applicant further argues that GO FAST is, as a whole, suggestive and
entitled to a lesser scope of protection than an arbitrary or coined mark. Applicant
cites The Wooster Brush Co. v. Prager Brush Co., 231 USPQ 316 (TTAB 1986) for
the principle that “the addition of other matter to a highly suggestive or descriptive
designation … may be sufficient to avoid confusion.” In that case, the defendant’s
mark contained additional matter to distinguish it from each of the plaintiff’s three
marks. In applicant’s mark, there is no “addition of other matter”; it offers nothing
new to distinguish itself from the registered mark and is, if anything, less
distinctive than the registered mark. As the newcomer, applicant had the
obligation to select a mark which would avoid confusion with pre-existing marks.
DC Comics v. Pan American Grain Mfg. Co., 77 USPQ2d 1220, 1229 (TTAB 2005).
Applicant should not be heard to argue that the registrant’s mark is entitled to a
limited scope of protection as against applicant’s less distinctive mark.
We find In re Fleetwood Enterprises, Inc. (Serial No. 78579524, TTAB 2008),
which was non-precedential, inapposite for the reasons set forth in the examining
attorney’s brief.6

6 Examining attorney’s brief at unnumbered pp. 5-6.
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Applicant argues that the marks can be distinguished in meaning because
“the singular term “FAST” … could have various meanings and may be an adjective,
an adverb or even a verb.” We find this unpersuasive, because the adjectival and
adverbial meanings of FAST in the context of bicycles are not substantially different
from the suggestive meanings of FAST as it appears in the registered mark. Both
marks contain the suggestion that one may go fast on a fast bicycle. (It is unlikely
that customers would interpret FAST as a verb in the context of bicycles, although
such a meaning might seem appropriate in the fields of dietetic foods or weight
reduction services.)
It is true, as applicant points out, that there are differences in appearance
and sound between applicant’s mark and the cited mark.7 However, as the
examining attorney points out, a side-by-side analysis of the two marks does not
accurately reflect the likely perception of the marks in the marketplace. The proper
test is whether the marks are sufficiently similar in terms of their overall
commercial impression so that confusion as to the source of the goods offered under
the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). In this case, the similarities
between the marks and the overall commercial impression that they create
outweigh the relatively minor differences in sound and appearance, especially

7 Applicant’s brief at 8.
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considering that the marks would be used on identical goods marketed to the same
classes of customers and through the same trade channels.
Finally, if there were any doubt about likelihood of confusion, that doubt is
required to be resolved in favor of the prior registrant. In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin's Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s mark, as
applied to applicant’s goods, so closely resembles the cited registered mark as to be
likely to cause confusion, mistake or deception as to the source of applicant’s goods.
Decision: The refusal to register is affirmed.