Jacquelyn Silberberg and Courtney Silberberg

Trademark Trial and Appeal Board

Jul 24, 2007

No. 78712155 (T.T.A.B. Jul. 24, 2007)

Mailed:
July 24, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jacquelyn Silberberg and Courtney Silberberg
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Serial No. 78712155
_______

Valerie Ann Memeth for Jacquelyn Silberberg and Courtney
Silberberg.

Daniel J. Russell, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Grendel, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Jacquelyn Silberberg and Courtney Silberberg, joint
applicants herein, seek registration on the Principal
Register of the mark depicted below, for goods identified
in the application as “clothing, namely, hats, shirts,
caps, sweatsuits, shorts, pants, socks, wristbands,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78712155
2
headbands, jackets and socks [sic], for men, women and
children,” in Class 25.1

Applicants have disclaimed KID TENNIS apart from the mark
as shown.
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicants’ mark on
the ground that the mark, as applied to the goods
identified in the application, so resembles the mark
TENNISKIDS, previously registered on the Principal Register
(in standard character form) for various Class 25 goods,2 as

1 Serial No. 78712155, filed on September 13, 2005. The
application is based on applicant’s asserted bona fide intention
to use the mark in commerce. Trademark Act Section 1(b), 15
U.S.C. §1051(b). The application also seeks registration of the
mark for various Class 9 goods. The Trademark Examining Attorney
has not refused registration as to Class 9.

2 Registration No. 2393152, issued on October 10, 2000.
Affidavits under Sections 8 and 15 accepted and acknowledged.
The registration also includes various Class 28 goods, which are
not cited by the Trademark Examining Attorney and are not at
issue in this appeal.
Ser. No. 78712155
3
to be likely to cause confusion, to cause mistake, or to
deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d).
The goods identified in the cited registration are:3

Clothing, namely, children’s t-shirts, children’s
sweatshirt, children’s polo shirt, children’s
spot [sic – sport?] shirt, child’s dress,
toddler’s tennis dress, children’s shirt,
children’s shirt, children’s shorts, children’s
pants, children’s cap, children’s sweater, adult
t-shirt, adult sweatshirt, adult sport and polo
shirt, adult tennis dress, adult sweater, adult
cap, adult hat, adult skirt, adult pants, adult
shorts, sweatbands.

The appeal is fully briefed. After careful
consideration of the evidence of record and the arguments
of counsel, we reverse the refusal to register.
Initially, we note that applicants submitted with
their appeal brief various items of evidence. The
Trademark Examining Attorney has objected to such evidence
on the ground that it is untimely. We sustain the
objection. To the extent that any of this evidence was not
made of record prior to appeal, we have given it no
consideration. See Trademark Rule 2.142(d).4

3 The Class 25 identification of goods in the registration, as
set forth in the Office’s electronic records, is somewhat garbled
and repetitive, and includes some misspelled words. We have
reproduced the identification of goods as it appears in the
registration, without correcting the apparent errors.

4 We note that most of this evidence, which includes a California
state trademark registration and a copyright registration, as
Ser. No. 78712155
4
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We turn first to the second du Pont factor, i.e., the
similarity or dissimilarity of the goods. We find that
applicants’ Class 25 goods, as identified in the
application, are for the most part identical to, and
otherwise are closely related to, the Class 25 goods
identified in the cited registration. Applicants do not
contend otherwise. This du Pont factor weighs in favor of
a finding of likelihood of confusion.
Given the essentially identical nature of the
respective goods, we also find that the trade channels in

well as several third-party registrations, a mere listing of
third-party registrations and applications, and printouts of
other registrations owned by applicant, would be of little or no
probative value in any event. We do not rely on this evidence in
reaching our decision herein.
Ser. No. 78712155
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which and the classes of purchasers to whom applicants’ and
registrant’s Class 25 goods are or would be marketed are
identical. The third du Pont factor therefore weighs in
favor of a finding of likelihood of confusion.
We find that the purchasers of the identified goods
would be ordinary consumers who would exercise only an
ordinary degree of care in purchasing the goods. The
fourth du Pont factor therefore weighs in favor of a
finding of likelihood of confusion.
We turn finally to the crux of the dispute in this
case, which is the first du Pont factor. This factor
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. Palm Bay Imports, Inc., supra. The test,
under the first du Pont factor, 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
that confusion as to the source of the goods offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
Ser. No. 78712155
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USPQ 106 (TTAB 1975). Furthermore, although the marks at
issue must be considered in their entireties, it is well-
settled that one feature of a mark may be more significant
than another, and it is not improper to give more weight to
this dominant feature in determining the commercial
impression created by the mark. See In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed.
Cir. 2004); In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). Finally, in cases such as this,
where the applicant’s goods are identical to the goods
identified in the cited registration, the degree of
similarity between the marks which is required to support a
finding of likelihood of confusion is less than it would be
if the goods were not identical. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
Applying these principles in the present case, we find
as follows.
First, we cannot agree with the Trademark Examining
Attorney’s contention that it is the wording in applicant’s
mark that necessarily is the dominant feature of the mark’s
commercial impression. The design element of the mark
certainly is visually prominent in the mark. The manner in
which the words and the design are visually integrated,
Ser. No. 78712155
7
with the letter “i” in “kid” serving also as the post to
which the tennis net is attached, and the tennis ball
serving as the dot over the letter “i” in “kid,” and the
word TENNIS stretching around the corner of the tennis
court, creates a whole in which neither the words nor the
design, per se, dominates the other in terms of the overall
commercial impression created by the mark.
Comparing the marks in their entireties in terms of
appearance, we find them to be dissimilar rather than
similar. The design element in applicant’s mark, and the
creative way in which the design element and the words are
integrated, create a visual impression that is quite
different from the appearance of the registered TENNISKIDS
mark. Contrary to the Trademark Examining Attorney’s
contention, we do not find it dispositive in this case that
the cited registered mark is presented in standard
character format. It is true that, in our likelihood of
confusion analysis, a mark registered in standard character
format is not limited to any particular manner of display,
but rather must be considered in all reasonable manners in
which it might be depicted. See, e.g., INB National Bank
v. Metrohost, 22 USPQ2d 1585 (TTAB 1992). However, we deem
applicant’s mark to be so highly stylized that it does not
fall within the range of “reasonable” manners of display
Ser. No. 78712155
8
that should be reserved to the registered standard
character mark. Cf. Fossil, Inc. v. The Fossil Group, 49
USPQ2d 1451 (TTAB 1998)(in an inter partes context,
opposer’s registration of the word FOSSIL in typed drawing
form affords opposer a scope of protection which
encompasses all reasonable manners in which the word FOSSIL
could be depicted, but it does not afford opposer rights in
the word FOSSIL combined with other wording or with
designs). On balance, we find the marks to be visually
dissimilar.
In terms of sound, the marks obviously are similar to
the extent that each includes the word TENNIS and also the
singular or plural version of the word KID. However, the
marks are dissimilar in terms of sound to the extent that
the order of the two words is reversed in the two marks.
On balance, we find the marks to be more similar than
dissimilar in terms of sound.
In terms of connotation, we find that applicant’s
mark, when viewed in its entirety, connotes a particular
character, i.e., a character named “Kid Tennis.” This
construction of the mark would be similar to other
characters or personalities that go by or are known by a
name which begins with the designation “Kid,” such as “Kid
Galahad” or “Kid Rock.” This connotation of the mark as
Ser. No. 78712155
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identifying a particular character is reinforced by the
design element of the mark, which depicts what is most
likely going to be seen as a specific cartoon character
named “Kid Tennis.” This specific connotation of
applicant’s mark is not the same as the connotation of the
cited registered mark, which would be understood to be
referring to “tennis kids” in general, i.e., to the general
idea of “kids who play tennis.” On balance, we find that
the marks viewed in their entireties are dissimilar in
their connotations.
We likewise find that the marks are dissimilar in
terms of overall commercial impression. The prominence of
the design feature of applicant’s mark and the way it is
integrated with the wording in the mark to create the
impression of a cartoon character named “Kid Tennis”
results in a commercial impression which differs from the
commercial impression of the registered TENNISKIDS mark.
The words “tennis” and “kid(s)” are at best highly
suggestive of the Class 25 goods identified in the
application and in the registration, given the likelihood
that both applicant and registrant are or would likely be
marketing the clothing items to tennis-playing kids and/or
their parents. The mere presence in both marks of these
highly suggestive words does not outweigh the
Ser. No. 78712155
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dissimilarities between the marks in their overall
commercial impressions. See In re Box Solutions Corp., 79
USPQ2d 1953 (TTAB 2006).
Considering the two marks in their entireties in terms
of appearance, sound, connotation and overall commercial
impression, we find that the marks are dissimilar rather
than similar. The high level of stylization and design in
applicant’s mark, along with the obviously highly
suggestive nature of the wording in both marks, renders the
marks dissimilar. The first du Pont factor weighs against
a finding of likelihood of confusion.
Balancing all of the du Pont factors, we conclude that
confusion is not likely. Notwithstanding the legal
identity of the respective goods, trade channels and
purchasers, and the fact that only an ordinary degree of
care is likely to be exercised in purchasing the goods, we
find that the marks are sufficiently dissimilar that
confusion is unlikely. In this ex parte proceeding, we
cannot conclude that the scope of protection to be accorded
the registered mark extends so far as to preclude
registration of applicants’ dissimilar mark. The
dissimilarity of the marks under the first du Pont factor
simply outweighs the other du Pont factors in this case,
making confusion unlikely. See Truescents LLC v. Ride Skin
Ser. No. 78712155
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Care, L.L.C., 81 USPQ2d 1334 (TTAB 2006); Kellogg Co. v.
Pack’Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990),
aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).

Decision: The refusal to register is reversed.