Jeff Tanner

Trademark Trial and Appeal Board

Sep 29, 2005

No. 76416091 (T.T.A.B. Sep. 29, 2005)

Mailed:
29 September 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jeff Tanner.
________

Serial No. 76416091
_______

Stephen A. Anderson of Anderson & Associates for Jeff
Tanner.

Sonya B. Stephens, Trademark Examining Attorney, Law Office
108 (Andrew D. Lawrence, Managing Attorney).
_______

Before Hairston, Drost, and Kuhlke, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On June 6, 2002, Jeff Tanner (applicant) applied to
register the mark shown below on the Principal Register for
“clothing, namely, t-shirts, sweatshirts, sports shirts,
hats and shorts” in Class 25. Serial No. 76416091.

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76416091
2
While somewhat difficult to see in the drawing, the mark
consists of the word CLUTCH and underneath that word is the
word GEAR in smaller letters and a design of a gear or
cogwheel.1 The application indicates that the mark was
first used anywhere and first used in commerce on April 1,
2002.
The examining attorney refused to register the mark
under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), because of a registration for the mark CLUTCH
and design shown below for “clothing, namely, suits,
jackets, skirts, pants, evening dresses, formal dresses,
short coats, trench coats, over coats, rain coats, jogging
pants, sweatpants, [and] jumpers” in Class 25.

1 Applicant (brief at 6) and the examining attorney (brief at 1)
refer to applicant’s “cogwheel” design. A “cogwheel” is “a
gearwheel, esp. one having teeth of hardwood or metal inserted
into slots.” Random House Dictionary of the English Language
(unabridged) (2d ed. 1987). We take judicial notice of this
definition. University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983). Applicant also refers to “the
image of the cogwheel or ‘clutch gear.’” Brief at 9.
Ser No. 76416091
3
The registration (No. 2,622,663) issued September 24, 2002
and contains a statement that the Japanese characters in
the mark are a transliteration of the word “Clutch.”
In addition to the refusal under Section 2(d), the
examining attorney refused to register applicant’s mark
without a disclaimer of the term “Gear” under the provision
of Section 6(a) of the Trademark Act. 15 U.S.C. § 1056(a).
The examining attorney has required a disclaimer of the
term on the ground that the term is merely descriptive of
applicant’s goods. See 15 U.S.C. § 1052(e)(1).
After the examining attorney made the refusals final,
this appeal followed.
Likelihood of Confusion
We first address the question of likelihood of
confusion, which requires us to consider the evidence in
relation to the relevant factors set out in In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003). See also In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); and Recot,
Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed.
Cir. 2000). In considering the evidence of record on these
factors, we must keep in mind that “[t]he fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
Ser No. 76416091
4
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We begin our analysis by considering the similarities
and dissimilarities of applicant’s and registrant’s marks.
When we consider the marks, we look to see whether the
marks are similar in appearance, sound, connotation, and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691-92 (Fed. Cir. 2005). When we compare the
marks, it is obvious that the marks are not identical but
they do have the identical word “Clutch” prominently
featured in both marks. Registrant’s mark is the word
CLUTCH in simple block letters above Japanese characters
that the registration indicates are the transliteration of
the word “Clutch.” In the registrant’s mark, the only
other feature is the design consisting of four Japanese
characters. To the majority of prospective purchasers in
the United States, it is likely that these characters would
only be viewed as Japanese characters that they are unable
to translate. To the extent that prospective purchasers
can understand Japanese, both the registration and
Ser No. 76416091
5
applicant (Brief at 14) agree that the characters would be
roughly transliterated as “clutch.”2
Applicant’s mark consists of the word CLUTCH in large
letters above the word GEAR in smaller letters and the
design of a gear. The word CLUTCH is prominently featured
in applicant’s mark. The word, “gear,” in addition to
being in much smaller letters, is integrated into the gear
design. Indeed, it may be hard for some prospective
purchasers to easily recognize the word “gear.”
Furthermore, we add that “clutch” has no meaning in
relation to clothes. The examining attorney has submitted
dictionary definitions of “gear” that indicates that it
means “clothing.” See Attachments to Final Office Action;
Applicant’s Brief at 7 (“Indeed, a descriptive word (like
“GEAR”) can be combined with nondescriptive wording…”).
The examining attorney has also submitted copies of
registrations that show that the term is often disclaimed
when it is used in registrations for clothing. In re J.M.
Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (Third-
party registrations may be used to demonstrate that a
portion of a mark is suggestive or descriptive). Under

2 Applicant asserts (brief at 14) that the transliteration would
not be pronounced exactly the same as the English word “clutch.”
Ser No. 76416091
6
these circumstances, the term “gear” would have less
trademark significance.
We also note that applicant’s mark contains a gear
design, while registrant’s mark also includes Japanese
characters. The presence of these two designs does not
significantly change the marks because applicant’s gear
design simply appears to be a play on the word “gear” which
would ordinarily mean “clothing” when applied to
applicant’s goods. Even the presence of an entirely
different design does not necessarily avoid a likelihood of
confusion. Wella Corp. v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA
CONCEPT and surfer design likely to be confused with
CONCEPT for hair care products). We add that the design in
registrant’s mark is simply a type of transliteration of
the word in the mark. To those who understand Japanese, it
would add little to the mark. Repeating a mark in Chinese,
Japanese, Arabic, Hebrew, or similar non-western letters or
characters would not add a significantly different feature
to the mark. To those who are not fluent in Japanese,
these characters would add a Japanese flavor to the mark
but it is likely simply to suggest that the registrant is
also marketing its goods internationally.
Ser No. 76416091
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The meaning of the marks CLUTCH and Japanese
characters and CLUTCH GEAR and gear design could be similar
to the extent that CLUTCH has no meaning in relation to
clothing and both marks could simply refer to the clutch in
a motor vehicle. Applicant’s mark certainly suggests a
motor vehicle’s clutch and many would likely understand
that registrant’s mark also has a similar meaning.
Finally, the commercial impressions of the marks, while not
identical, would not be significantly different inasmuch as
both marks consist of the arbitrary term “clutch.” See In
re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d
1944, 1946 (Fed. Cir. 2004) (“With respect to JOSE, the
Board correctly observed that the term simply reinforces
the impression that GASPAR is an individual’s name. Thus,
in accord with considerable case law, the JOSE term does
not alter the commercial impression of the mark.” The
marks JOSE GASPAR GOLD and GASPAR’S ALE were determined to
be similar).
When we compare marks, we also keep in mind that a
“[s]ide by side comparison is not the test.” Grandpa
Pigdeon’s of Missouri, Inc. v. Borgsmiller, 477 F.2d 586,
177 USPQ 573, 574 (CCPA 1973). Furthermore, "[h]uman
memories… are not infallible." In re Research and Trading
Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986),
Ser No. 76416091
8
quoting, Carlisle Chemical Works, Inc. v. Hardman & Holden
Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).
Another point we add is that there is no evidence that the
term CLUTCH is a weak mark when used in association with
clothing.3
It is simply not enough to list the similarities and
differences between the marks in a likelihood of confusion
analysis. Instead, we must compare the marks 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 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). When we consider the

3 Applicant refers to Serial No. 78027374 for the mark CLUTCH
GOLF as evidence that its mark is registrable. We note that this
intent-to-use application is now abandoned. An abandoned,
intent-to-use application with no evidence of use hardly supports
the registration of applicant’s mark. In addition, while
applicant refers to “212 pending and registered marks that
contain the term CLUTCH” (Brief at 21), applicant has not made
these records of record and, we cannot give applicant’s cryptic
reference any weight. Moreover, applicant admits that the
“majority of such marks appear to be related to the automotive
field.” Brief at 21. These records would not demonstrate that
the mark CLUTCH is weak for the identified clothing in this case.
Furthermore, evidence of a pending application “is incompetent as
proof of anything other than the fact that such an application
for registration was filed in the Patent Office.” Zappia-
Paradiso, S.A. v. Cojeva Inc., 144 USPQ 101, 102 n.4 (TTAB 1964).
Ser No. 76416091
9
marks in their entireties, we hold that the marks'
similarities outweigh their dissimilarities. The arbitrary
term CLUTCH dominates both marks. If “the dominant portion
of both marks is the same, then confusion may be likely
notwithstanding peripheral differences.” In re Denisi, 225
USPQ 624, 624 (TTAB 1985). The marks would be similar to
the extent that they are both dominated by the word CLUTCH.
The words would be pronounced the same to the extent that
they have the same dominant word. The presence of the word
“gear,” to the extent it is noticed, would not cause
prospective purchasers to distinguish the marks.
Furthermore, CLUTCH GEAR and design and CLUTCH and design
can have the same meaning, i.e., a motor vehicle clutch.
Even if these purchasers understood applicant’s mark to be
a unitary term CLUTCH GEAR, this fact does not distinguish
the marks. The meaning and commercial impression of the
marks would still emphasize the reference to a motor
vehicle clutch. Under these circumstances, we hold that
the marks are similar.
The next factor we consider is whether applicant’s and
registrant’s goods are related. We must consider these
goods as they are identified in the application and
registrations. Paula Payne Products v. Johnson Publishing
Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark
Ser No. 76416091
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cases involving the issue of likelihood of confusion must
be decided on the basis of the respective descriptions of
goods”).
Applicant argues that the “nature of the respective
parties’ goods are sufficiently dissimilar that no
likelihood of confusion would result.” Brief at 15.
Applicant then cites several cases where there was a
determination of no likelihood of confusion when various
clothing items were involved. See, e.g., In re Shoe Works,
6 USPQ2d 1890 (TTAB 1988) (consent agreement); House of
Worsted-Tex, Inc. v. Superba Cravats, Inc., 284 F.2d 528,
128 USPQ 119, 121 (CCPA 1960) (No likelihood of confusion
between IVY LEAGUE MODEL and rectangle design for outer
garments v. IVY HALL and IVY LOOM for neckties; “opposer
has failed to establish an exclusive right to the term ‘Ivy
League’ in the clothing field”).
We have no disagreement with applicant’s basic
argument that differences in the specific articles of
clothing in the identification of goods may be a
significant factor in determining that there is no
likelihood of confusion. However, applicant ignores the
close relationship between specific articles of clothing in
applicant’s and registrant’s identifications of goods.
Applicant’s goods are t-shirts, sweatshirts, sports shirts,
Ser No. 76416091
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hats, and shorts. Registrant’s goods include jackets,
jogging pants, and sweatpants. While these goods are not
necessarily identical, they are very closely related. For
example, sweatshirts and sweatpants are complementary
items. Purchasers seeking an outfit for exercise could
clearly be in the market for sweatpants and sweatshirts.
These items are worn together and their material
composition could be the same. Furthermore, applicant’s
shorts could include jogging shorts, which would be similar
to registrant’s jogging pants. We decline the examining
attorney’s suggestion to read the term “suits” in
registrant’s identification of goods to include motorcycle
suits because we do not believe that this is a fair reading
of the term. However, the term “jackets” is a broad term
that could clearly encompass more casual jackets worn while
engaging in outdoor exercise such as jogging.
“In order to find that there is a likelihood of
confusion, it is not necessary that the goods or services
on or in connection with which the marks are used be
identical or even competitive. It is enough if there is a
relationship between them such that persons encountering
them under their respective marks are likely to assume that
they originate at the same source or that there is some
association between their sources.” McDonald's Corp. v.
Ser No. 76416091
12
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re
Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001).
Registrant’s casual clothing that would include jackets,
jogging pants, and sweatpants are related to applicant’s
similar casual clothes such as sweatshirts, sports shirts
and t-shirts. Therefore, we hold that applicant’s goods
and various goods in the cited registration are related.
See, e.g. In re TSI Brands Inc., 67 USPQ2d 1657, 1659 (TTAB
2002) (“It is also common knowledge that athletic apparel,
such as jerseys, sweaters, shorts, sweatshirts and
sweatpants, is often purchased and worn as casual clothing
or sportswear”).
In addition, there are no restrictions on the channels
of trade of the goods and we must assume that all the goods
travel in the normal channels of trade for these goods.
See Morton-Norwich Products, Inc. v. N. Siperstein, Inc.,
222 USPQ 735, 736 (TTAB 1984) (“Since there is no
limitation in applicant's identification of goods, we must
presume that applicant's paints move in all channels of
trade that would be normal for such goods, and that the
goods would be purchased by all potential customers”); In
re Elbaum, 211 USPQ 639, 640 (TTAB 1981)(“[W]here the goods
in a cited registration are broadly described and there are
no limitations in the identification of goods as to their
Ser No. 76416091
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nature, type, channels of trade or classes of purchasers,
it is presumed that the scope of the registration
encompasses all goods of the nature and type described,
that the identified goods move in all channels of trade
that would be normal for such goods, and that the goods
would be purchased by all potential customers”). At the
very least, the channels of trade for t-shirts,
sweatshirts, sports shirts and shorts and jackets, jogging
pants, and sweatpants would be very similar, if not
overlapping.4
Regarding the prospective purchasers, as indicated
above, the prospective purchasers of t-shirts, sweatshirts,
and shorts and jackets, and sweatpants would likely
overlap. Furthermore, there is no evidence that the
purchasers of these goods would be particularly careful or
sophisticated and there is no per se rule that purchasers

4 Applicant argues that “no evidence of any established trade
channels for the ‘Japanese’ goods has been shown, and to the
contrary, the evidence suggests that the prior cited Registrant
has yet to use such mark in any trade channels within U.S.
commerce.” Brief at 20. Applicant cannot attack a cited
registration in an ex parte proceeding. In re Protection
Controls, Inc., 185 USPQ 692, 693 (TTAB 1975) (“[E]ven were the
cited registration based on foreign registration and use, it is
entitled to all of the presumptions afforded a registration under
Section 7(b) and, as such, constitutes a bar under Section 2(d)
to the registration of a similar mark for like or similar
goods”). As we indicated previously, we must consider that the
registered mark is used in all normal channels of trade for the
goods.
Ser No. 76416091
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of casual shirts and sweatpants and jackets are anything
other than ordinary purchasers exercising ordinary care in
their purchases.
Applicant also points out that there is no evidence of
the fame of the registrant’s mark or evidence of actual
confusion. In an ex parte case, registrant is not a party
and the evidence of fame such as the nature and extent of
advertising and sales, is not often available to the
examining attorney. Also, applicant’s assertion of a lack
of actual confusion is not significant. Majestic
Distilling, 65 USPQ2d at 1205 (“The lack of evidence of
actual confusion carries little weight”).
Therefore, we conclude that the marks CLUTCH GEAR and
gear design and CLUTCH and Japanese characters design are
similar. The goods such as sweatshirts and sweatpants are
closely related. When we view all the other factors, we
conclude that prospective purchasers are likely to be
confused when they encounter these marks on closely related
goods.
Disclaimer
The second issue in this appeal is the question of
whether the applicant should be required to disclaim the
term “gear.” The examining attorney has submitted several
dictionary definitions that show that the term “gear”
Ser No. 76416091
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means, among other things, “clothing.” The examining
attorney has also submitted copies of numerous
registrations that show that the term “gear” has been
disclaimed in various registrations for clothing items.
With its appeal brief, applicant submitted numerous
copies of registrations that show that the term “gear’ has
not been disclaimed in similar circumstances. The
examining attorney has objected and we agree these
registrations should have been submitted sooner. 37 CFR
§ 2.142(d). However, in its response dated December 12,
2003, applicant has submitted a copy of a registration (No.
2,739,717) that does show that the mark 3RD GEAR for
“clothing, namely, T-shirts, sweatshirts, sport shirts and
hats” registered without a disclaimer of the term “gear.”
Applicant also submitted printouts from Internet websites
that show that there are parts referred to as a “Clutch
Gear.” See, e.g., www.duratrax.com (DTXC7124 Clutch Gear
14T Two Speed). See also APS Racing (“NTC3 Hard Coated 1st
Clutch Gear, NTC3 Hard Coated 2nd Clutch Gear”); Hobby
People (“HPI Clutch Gear Holder W/one-way/Savage 21… This
is a replacement clutch gear holder with one way from HPI
for the Savage 21”); Team Magic (“Hard Coated Alum. Light
24” Clutch Gear”); Hobbylinc.com (“This K Factory Hard
Aluminum Clutch Gear Wrench is Designed for Kyosho Cars…
Ser No. 76416091
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Fits all clutch gears used on Kyosho V-One-R Fantom”); and
NH Power (“Clutch Gear”).
Applicant argues that as “part of a unitary mark, even
if the mark CLUTCH GEAR is applied to clothing, the term
GEAR alone, is simply not required to be disclaimed.”
Brief at 8. We agree with applicant’s argument that the
term “Clutch Gear” is a unitary term. The Federal Circuit
has held that a disclaimer was appropriate when “no
particular meaning in the words European Formula or the
circular design links these detached features. Belvedere
presents no evidence about the meaning of these features.”
Dena Corp. v. Belvedere International Inc., 950 F.2d 1555,
21 USPQ2d 1047, 1052 (Fed. Cir. 1991). Here, applicant has
presented evidence that the term “Clutch Gear” has a
meaning. Applicant’s gear design reinforces the
mechanical/automotive connotation or meaning of the term.
Prospective purchasers who would notice the term “gear”
used in association of a design of a gear and the word
clutch are likely to view the mark as a unitary term that
emphasizes the clutch and shifting gears in an automobile
or other motor vehicle. We add that while we conclude that
the expression CLUTCH GEAR is unitary, it does not overcome
our holding that confusion is likely. As we indicated
above, the term “Gear” is a subordinate term and used in a
Ser No. 76416091
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less noticeable manner by applicant. When purchasers would
encounter the term, they would have already been well aware
of the dominant term “Clutch” and the design of a gear.
While these purchasers are likely to then see the term
CLUTCH GEAR as unitary, this term would not be dissimilar
to the registrant’s mark.
Decision: The examining attorney’s requirement for a
disclaimer is reversed. The refusal to register
applicant’s mark under Section 2(d) is affirmed.