JDK Select, Inc.

Trademark Trial and Appeal Board

Aug 2, 2006

No. 78324310 (T.T.A.B. Aug. 2, 2006)

Mailed:
August 2, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re JDK Select, Inc.1
________

Serial No. 78324310
_______

Lauri S. Thompson of Greenberg Traurig LLP for JDK Select,
Inc.

Steven W. Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Seeherman, Drost and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On November 6, 2003, JDK Select, Inc. of Las Vegas,
Nevada (applicant) filed an intent-to-use application to
register SIN CITY BREWING COMPANY in standard-character
form on the Principal Register for goods identified as,
“wearing apparel, namely, shirts, t-shirts, polo shirts,
golf shirts, tank tops, vests, blouses, sweaters, parkas,
turtlenecks, pullovers, skirts, shorts, jeans, slacks,
pants, robes, nightshirts and night gowns, pajamas, robes,
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78324310

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rompers, socks, coveralls, mittens, gloves, undergarments,
jerseys, leotards, hosiery, booties, slippers, scarves,
belts, neckties, suspenders, headbands, hats, caps, visors,
blazers, rain ponchos, jackets, wind resistant jackets,
warm-up suits, jogging suits, sweatshirts, sweat pants,
beach wear, namely, bathing suits, beach sandals, beach
towels, footwear, namely shoes, boots, sandals, sneakers
and athletic shoes” in International Class 25.
The examining attorney refused registration on two
grounds.
First, the examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C. §
1052(d), based on a likelihood of confusion with Reg. No.
2591771 for the SIN CITY mark, also in standard-character
form, registered for “clothing namely tops and bottoms, t-
shirts, sweatshirts, sweaters, shorts, sweatpants, socks,
underwear, pants, sweatbands, hats, caps, socks, shoes,
boots, and sneakers” in International Class 25. The
registration issued on July 9, 2002. The registration
claims both first use anywhere and first use in commerce on
March 3, 2001.

1 This application was filed by Barry Shier and later assigned to
JDK Select, Inc. in a document recorded at Reel 2990/Frame 0426.
Ser No. 78324310

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Secondly, the examining attorney refused registration
based on a requirement to disclaim “SIN CITY” under
Trademark Act Section 6, 15 U.S.C. § 1056, on the ground
that “SIN CITY” is “primarily geographically descriptive”
of the goods under Trademark Act Section 2(e)(2), 15 U.S.C.
§ 1052(e)(2).
Applicant responded to the refusals; the examining
attorney made the refusals final; and applicant filed this
appeal. Applicant and the examining attorney have filed
briefs, but applicant did not request an oral hearing. For
the reasons indicated below, we affirm the refusal under
Section 2(d) and reverse the refusal under Sections 6 and
2(e)(2).
Section 2(d) - Likelihood of Confusion
Section 2(d) of the Act precludes registration of an
applicant’s mark “which so resembles a mark registered in
the Patent and Trademark Office . . . as to be likely,
when used on or in connection with the goods of the
applicant, to cause confusion . . .” Id. The opinion in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1977), sets forth the factors we may
consider in determining likelihood of confusion. Here, as
is often the case, the crucial factors are the similarity
of the marks and the similarity of the goods of the
Ser No. 78324310

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applicant and registrant. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”). Below we will discuss these and all other
factors as to which applicant or the examining attorney
argued or presented evidence.
Comparison of the Goods and Channels of Trade
Applicant does not argue that its goods differ from
those of registrant. Applicant’s argument related to the
goods focuses exclusively on the trade channels for its
goods. As applicant states, “It is also recognized that if
the goods of one party are sold to one class of buyers in a
different marketing context than the goods of another
seller, the likelihood that a single group of buyers will
be confused by similar trademarks is less than if both
parties sold the goods through the same channels of
distribution (citation omitted). Applicant suggests that
because applicant is presenting its goods to the public
under the purview of its primary service, which is brewing
and selling ‘microbrewed’ beer, the channels of marketing
for the product will differ from those of the Registrant,
which markets and sells its goods on their own value.”
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Applicant concludes this portion of its argument by
stating, “The relevant consuming public will be very aware
that the Applicant is offering the goods only in connection
with, and as a direct promotion tool for the primary goods.
Similarly, consumers may be able to see Registrant’s goods
offered at a multitude of completely unrelated locations,
further distancing any association that they may have had
between the two marks.” Applicant’s Brief, unnumbered page
6.
The examining attorney points out that both the
application and registration include the following
identical goods, “t-shirts, sweaters, shorts, pants, socks,
hats, socks, caps, sweatshirts, sweat pants, shoes, boots
and sneakers” and that the balance of the goods of
applicant and registrant are closely related. The
examining attorney argues further that neither the
application nor the registration includes any restrictions
as to trade channels “and therefore it is assumed that the
registrant’s and applicant’s goods are sold everywhere that
is normal for such items . . . (citations omitted).”
In comparing the goods, we must consider the goods as
identified in the application and registration. CBS Inc.
v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB
Ser No. 78324310

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1991). A simple comparison of the goods identified in the
application and registration reveals that both include
identical items, as noted by the examining attorney.
Furthermore, consistent with the examining attorney’s
argument, the Board has previously held that various
clothing items, such as those at issue here, are related.
See, e.g., Jockey Intl., Inc. v. Mallory & Church Corp., 25
USPQ2d 1233, 1236 (TTAB 1992); In re Pix of America, Inc.,
225 USPQ 691, 692 (TTAB 1985) and cases cited therein.
Therefore, there is no question but that the goods of the
applicant and registrant, as identified in the application
and registration, are, at least in part, identical and
otherwise related.
Turning to the focus of applicant’s argument, the same
applies with regard to the channels of trade for the goods.
That is, “. . . we must assume, absent any restrictions in
the identification of goods of the cited registration [or
application], that the goods move in all of the channels of
trade which are normal for such goods.” In re Pix of
America, Inc., 225 USPQ at 691, citing Paula Payne Products
Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76
(CCPA 1973). In view of the fact that both the application
and registration include identical items of apparel, and
neither the application nor the registration includes any
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restrictions as to trade channels, we must assume that the
trade channels of applicant and registrant are, at least in
part, identical, and otherwise overlapping.
Accordingly, we conclude that the goods of applicant
and registrant are identical, at least in part, and
otherwise related, and that the goods of both applicant and
registrant move in the same or overlapping channels of
trade.
Furthermore, we note that, “the degree of similarity
[between the marks] necessary to support the conclusion of
likely confusion declines” when the goods are identical.
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert.
denied, 506 U.S. 1034 (1992).2
The Marks
Applicant argues that the marks differ when viewed in
their entireties and asserts that the examining attorney
failed to view the marks in their entireties, as required.
Applicant then argues, “. . . incorporation of the BREWING
COMPANY terms creates a clear identifier for the consumer

2 In its brief applicant has both cited and discussed numerous
cases which originated in the district courts. These cases
involve infringement and similar claims where the focus is on the
actual use of marks. These cases are of limited relevance here
due to our focus in this proceeding on the particulars of the
application and registration, not actual use.

Ser No. 78324310

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that can be used to distinguish this mark from similar
uses.” Applicant argues further that the addition of
BREWING COMPANY creates a commercial impression distinct
from the registered mark and concludes by stating, “. . .
the addition of the BREWING COMPANY terms conveys the
immediate impression that reflects the Applicant’s primary
business activity.” On the other hand, the examining
attorney argues that the commercial impressions projected
by SIN CITY and SIN CITY BREWING COMPANY are highly similar
and that the addition of BEWING COMPANY is not sufficient
to distinguish the marks.
To determine whether the marks are confusingly
similar, we must consider the appearance, sound,
connotation and commercial impression of each mark. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). Furthermore, a side-by-side comparison of the marks
is not the appropriate test; rather, “. . . the emphasis
must be on the average purchaser, who normally retains a
general rather than a specific impression of trademarks.”
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975) and cases cited therein.
It is significant that both marks begin with the words
SIN CITY. Presto Products, Inc. v. Nice-Pak Products Inc.,
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9 USPQ2d 1895, 1897 (TTAB 1988)(“. . . [it is] a matter of
some importance since it is often the first part of a mark
which is most likely to be impressed upon the mind of a
purchaser and remembered.”). Here it is of particular
importance because SIN CITY not only comes first but it
stands out in projecting the connotation and commercial
impression in both marks. The Oxford Dictionary of Modern
Slang (1992) includes the following definition: “sin city
- noun often jocular A city of licentiousness and vice
(1973) A. THACKERAY What's going to happen
Chicago? . . . All you want to do is run amok in 'Sin City'
(1975).”3 Thus, the registered mark projects the image of a
place of “licentiousness and vice,” a concept which grabs
one’s attention. Consequently, SIN CITY is the dominant
element in both marks. The addition of BREWING COMPANY in
applicant’s mark does nothing to alter either this
impression or the dominance of SIN CITY in the mark. If
anything, it reinforces the impression. Applicant’s mark
may even be regarded as a variation on the theme of the
registered mark.

3 We take judicial notice of this dictionary definition.
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. 78324310

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In concluding that SIN CITY is the dominant element in
both marks, we are mindful of the necessity to view the
marks overall, as applicant urges, and we have done so.
However, it is also true that greater weight may be given
to one feature in that overall assessment. As the Court of
Appeals for the Federal Circuit observed, “. . . in
articulating reasons for reaching a conclusion on the issue
of confusion, 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 consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant’s arguments with regard to the distinction
between the marks rests principally on the same theory
applicant advances with regard to the goods and channels of
trade. That is, applicant posits that purchasers will
distinguish between the marks due to the context of
applicant’s use in conjunction with its “primary business
activity,” microbrewed beers. This argument assumes the
purchaser’s knowledge of applicant as a brewer. However,
it is no more legitimate for us to consider applicant’s
allegedly restricted trade channels in considering the
Ser No. 78324310

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similarity of the marks than it would be in relation to the
goods. We must assume that purchasers will encounter
applicant’s and registrant’s marks, applied to identical
clothing items, without any knowledge of applicant and its
primary products. Under these circumstances we conclude
that the connotations and commercial impassions of the
marks of applicant and registrant are highly similar.
While there are obvious differences in the appearance
and sound of the two marks due to the additional element
BREWING COMPANY in applicant’s mark, we believe that the
strong similarities in connotations and commercial
impressions override those differences. Accordingly, we
conclude that the marks of applicant and registrant are
similar.
Finally, due to the similarity of the marks and the
fact that both the goods and channels of trade for the
goods are, at least in part, identical, we conclude that
there would be a likelihood of confusion.
The Disclaimer Requirement
As we indicated above, the examining attorney has also
refused registration based on a requirement to disclaim
“SIN CITY” under Trademark Act Section 6, 15 U.S.C. § 1056,
on the ground that “SIN CITY” is “primarily geographically
descriptive” of the goods under Trademark Act Section
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2(e)(2), 15 U.S.C. § 1052(e)(2). Accordingly, we must
consider whether SIN CITY is primarily geographically
descriptive” of the goods.
To determine whether SIN CITY is primarily
geographically descriptive of the goods here we must, as a
threshold matter, determine whether the primary
significance of SIN CITY is as the name of a place which is
generally known. In re Societe Generale des Eaux Minerales
de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1452 (Fed.
Cir. 1987); In re JT Tobacconists, 59 USPQ2d 1080, 1081
(TTAB 2001); In re California Pizza Kitchen Inc., 10 USPQ2d
1704, 1705 (TTAB 1988).
In this case, we are not presented with a “place name”
which would appear on any conventional map or in any
similar reference work. Rather, the examining attorney
relies on cases holding that certain terms “not on the map”
may nonetheless fall within the scope of Section 2(e)(2).
See In re Charles S. Lobe Pipes, Inc., 190 USPQ 238, 245
(TTAB 1976)(OLD DOMINION held to be geographical term on
the basis that it is the “accepted nickname for the State
of Virginia”).
Here the examining attorney argues that SIN CITY, like
OLD DOMINION, should be recognized as a geographical term,
because it is the accepted nickname of Las Vegas,
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applicant’s place of business. In support of this position
the examining attorney has submitted a number of entries
from various web sites. In his brief the examining
attorney relies on four in particular, and summarizes them
as follows:
www.sincitychamberofcommerce.com/las_vegas_sin_city_hi
story.htm: article titled “History of Las Vegas – And
the Evolution of Sin City. The website also features
various events in Las Vegas: “Sin City Expo,” “Sin
City Golf Classic,” and “Sin City Poker Tournament.”

www.igougo.com/planning/journal.asp?JournalID=16276:
article states,”two words that perfectly describe Las
Vegas are its nickname “Sin City.”

www.meagnedwards.com/Vegasland/Las_Vegas_Grocery_Store
s.htm: article titled, “Grocery Shopping in Sin
City.”

www.startribune.com/stories/425/765564.html: article
titled “If You go to Sin City: Las Vegas.”

On the other hand applicant argues that SIN CITY is
suggestive: “Applicant concedes that ‘Sin City’ may be
used by some to identify the city of La Vegas. However, it
also can be seen in a broad sense as simply suggesting a
certain style of good or service that is prepared or
presented in a certain manner that connotes a (sic)
uninhibited or hedonistic attitude.”
We agree with applicant. The evidence of record
indicates nothing more than a suggestive use of SIN CITY in
relation to Las Vegas. Furthermore, the entry from the
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Oxford Dictionary referenced above supports this
conclusion. It indicates that the term SIN CITY can be
applied to any location associated with “licentiousness and
vice.” This case is distinguishable from the OLD DOMINION
case where the Board relied on a dictionary definition to
establish OLD DOMINION as the accepted nickname for the
State of Virginia and, therefore, as a geographical term
for purposes of Section 2(e)(2). In re Charles S. Lobe
Pipes, Inc., 190 USPQ at 245.
Accordingly, we find on this record that SIN CITY is
not a geographical term and therefore need not be
disclaimed.
Decision: We reverse the refusal under Sections 6 and
2(e)(2), and we affirm the refusal under Section 2(d).
Registration is refused.