Gregory Speirs

Trademark Trial and Appeal Board

Aug 17, 1999

EX (T.T.A.B. Aug. 17, 1999)

Paper No. 14
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 17,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Gregory Speirs
________
Serial Nos. 75/201,351 and 75/209,841
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Gregory Speirs, pro se.
Craig D. Taylor, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Cissel, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
Applications have been filed by Gregory Speirs to
register the marks shown below
Ser No. 75/209,841
2
for “tee shirts, jackets, shorts, boxer shorts,
sweatshirts, sweatpants, neckties, tank top shirts, socks
[and] sneakers.”1
The Trademark Examining Attorney has refused
registration in each instance under Section 2(d) of the
Trademark Act on the ground that applicant’s mark, when
applied to applicant’s goods, so resembles the previously
registered mark SKULLYS for “men’s hats and caps”2, and the
previously registered mark shown below
for “coats and jackets”3 as to be likely to cause confusion.
The registrations are owned by two different entities.
When the refusals to register were made final,
applicant appealed. Applicant and the Examining Attorney
filed briefs. Because of the close similarity of the

1 Application Serial No. 75/201,351 for the mark SKULLY
(stylized), filed November 21, 1996, alleging a bona fide
intention to use the mark in commerce; Application Serial No.
75/209,841 for the mark SKULLY and skeleton design, filed
December 9, 1996, alleging dates of first use of January 27,
1993. This application includes a statement that the drawing is
lined for the color red.
2 Registration No. 958,187, issued May 1, 1973; renewed.
3 Registration No. 1,219,212, issued July 27, 1982 under Section
2(f); combined Sections 8 and 15 affidavit filed.
Ser No. 75/209,841
3
issues involved in these two appeals, the Board shall
explain our decisions in both of these cases with one
opinion.
We affirm the refusals to register.
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 likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Food, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We first turn our attention to the goods. We
acknowledge that there is no per se rule governing
likelihood of confusion in cases involving clothing items.
In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984). At
the same time, it is noted that likelihood of confusion has
been found in some cases where the same or similar marks
were used by different parties in connection with the types
of clothing items involved in this appeal. See, e.g., In
re Alfred Dunhill Limited, 224 USPQ 501 (TTAB 1984); and
Nina Ricci, S.A.R.L. v. ETF Enterprises, Inc., 203 USPQ 947
(TTAB 1979).
Ser No. 75/209,841
4
In the present case, we particularly note that the
identifications of goods in the involved applications and
Registration No. 1,219,212 both include “jackets.”
Further, notwithstanding the specific differences between
the remainder of the goods of applicant and each of the
registrants here, we find them to be sufficiently related
that, if sold under similar marks, purchasers likely would
be confused. All of applicant’s and registrants’ goods are
sold in the same channels of trade to the same classes of
purchasers, and all may be purchased in the same shopping
trip.
Application Serial No. 75/201,351
We now turn to compare applicant’s marks with the
marks in the cited registrations. With respect to
applicant’s mark SKULLY (stylized), it is virtually
identical to the mark SKULLYS shown in Registration No.
958,187. The facts that the cited mark contains a final
letter “s” and that applicant’s mark is stylized are not
sufficient to distinguish the two marks.
Insofar as the mark SCULLY shown in Registration No.
1,219,212 is concerned, this mark sounds identical to
applicant’s mark SKULLY, and the marks are similar in
appearance.
Ser No. 75/209,841
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Application Serial No. 75/209,841
As to applicant’s SKULLY and skeleton design mark, we
likewise find it similar to each of the cited marks.
Although the skeleton design is prominently displayed in
applicant’s mark, the word SKULLY also is a significant
feature and one which clearly cannot be ignored when
considering the marks in their entireties. The word
SKULLY, being the literal portion of applicant’s mark, will
likely be remembered by consumers and will be used in
calling for the goods in the marketplace. This literal
portion, as discussed above, is similar to each of the
cited marks.
In finding likelihood of confusion in these cases, it
must be remembered that the involved goods are of types
that may be the subjects of impulse purchases. Moreover,
we have kept in mind the normal fallibility of human memory
over time and the fact that consumers retain a general
rather than a specific impression of trademarks encountered
in the marketplace.
The third-party registrations do not compel a
different result here. The registrations are not evidence
that the marks shown therein are in use or that the public
is familiar with them, and the existence on the register of
confusingly similar marks cannot aid an applicant in its
Ser No. 75/209,841
6
effort to register another mark which so resembles a
registered mark as to be likely to cause confusion. AMF
Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177
USPQ 268 (CCPA 1973); and Lilly Pulitzer, Inc. v. Lilli Ann
Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967). It is also
noted that none of the third-party registered marks is for
either SCULLY or SKULLYS. Further, the coexistence on the
register of the cited marks does not compel a different
result herein.
Likewise, applicant’s alleged ownership of other marks
is of no help to him here. Each case must be decided on
its own set of facts.
In arguing against the refusals to register, applicant
made some remarks (bearing on abandonment and mere
descriptiveness) which, as best we can understand them,
appear to be collateral attacks on the cited registrations.
Suffice it to say that such allegations are improperly
raised in the context of this ex parte appeal and, thus,
they have not been considered. See: In re Calgon Corp.,
435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971); and In re
Peebles, Inc., 23 USPQ2d 1795, 1797 n. 5 (TTAB 1992).
Finally, to the extent that any of the points raised
by applicant may cast doubt on our ultimate conclusion on
the issue of likelihood of confusion, we resolve that
Ser No. 75/209,841
7
doubt, as we must, in favor of the prior registrant. In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); and In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusals to register are affirmed.
R. F. Cissel
T. J. Quinn
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 75/209,841
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