John Vrana

Trademark Trial and Appeal Board

Apr 22, 2016

No. 86536026 (T.T.A.B. Apr. 22, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 22, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re John Vrana
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Serial No. 86536026
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Matthew H. Swyers of The Trademark Company, PLLC for John Vrana.

Nicholas Altree, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop,
Managing Attorney).
_____

Before Zervas, Gorowitz, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
John Vrana (“Applicant”) has filed an application to register the mark ONCE A
PHILLIE, ALWAYS A PHILLIE, in standard characters, for “Polo shirts; Shorts;
Sweatpants; Sweatshirts; T-shirts,” in International Class 25.1
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 marks set forth

1 Application Serial No. 86536026, filed February 16, 2015 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s asserted bona fide intention
to use the mark in commerce.
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below as to be likely to cause confusion, or to cause mistake, or to deceive. The cited
marks are registered for the goods in International Class 25 indicated below:
REGISTERED MARK GOODS IN CLASS 25
PHILLIES Clothing; namely, shirts, shorts, dresses, jogging
suits, socks, underwear, jackets, vests, pants,
ponchos, visors, caps, bibs, infantwear, baseball
uniforms, ties, pajamas, sweatshirts, knitted
headwear, hosiery, and wristbands, shoes.2

Clothing, namely, caps, hats, visors, knitted
headwear, shirts, T-shirts, tank tops, blouses,
sweaters, turtlenecks, pullovers, vests, shorts, pants,
dresses, baseball uniforms, jerseys, sweatshirts,
sweatpants, underwear, boxer shorts, robes,
sleepwear, pajamas, jackets, cloth bibs, infant wear,
jumpers, rompers, coveralls, creepers, baby booties,
ties, wristbands, footwear, socks, hosiery, slippers.3

Clothing and related items; namely, shirts, shorts,
dresses, underwear, jackets, pants, ponchos, hats,
caps, two-piece diaper sets comprising cloth diapers
and protective underwear, baby pants, sweatshirts.4

Clothing, namely, shirts.5

2 Reg. No. 1660775, issued October 15, 1991; Section 8 affidavit accepted; renewed. The
registration also covers goods in International Class 16.
3 Reg. No. 3747556, issued February 9, 2010; Section 8 affidavit accepted; Section 15
affidavit acknowledged.
4 Reg. No. 1862960, issued November 15, 1994; Section 8 affidavit accepted; Section 15
affidavit acknowledged; renewed. The registration also covers goods and services in
International Classes 6, 14, 16, 18, 21, 28, and 41. The Class 41 services are “entertainment
services in the nature of baseball exhibitions.”
5 Reg. No. 1604774, issued July 3, 1990; Section 8 affidavit accepted; Section 15 affidavit
acknowledged; renewed.
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Clothing, namely, sweatshirts.6

The five cited registrations belong to the same owner, The Phillies, a limited
partnership. When the refusal was made final, Applicant appealed. Applicant and
the Examining Attorney have filed briefs.
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 as set forth in 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. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
For the sake of economy, we will confine our analysis to the issue of likelihood of
confusion between Applicant’s mark and the mark in Reg. No. 1660775, which is
PHILLIES in standard characters. Of all the cited marks, this one is the most
similar to Applicant’s mark and is registered for goods that are most similar to
Applicant’s goods. If the refusal cannot be affirmed on the basis of this registered

6 Reg. No. 1550914, issued August 8, 1989; Section 8 affidavit accepted; Section 15 affidavit
acknowledged; renewed.
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mark, it could not be affirmed on the basis of the other cited marks. See In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
1. The goods; trade channels; customers.
We will first consider the similarity or dissimilarity of the goods as identified in
the application and the cited registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014);
Octocom Syst. Inc. v. Houston Computers Srvs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). The goods are legally identical in part: both the application
and the registration cover “shorts” and “sweatshirts.” In addition, Applicant’s “T-
shirts” are included within the scope of Registrant’s more broadly identified “shirts.”
We must presume that Registrant’s goods encompass all goods of the nature and
type identified in the registration. See In re Jump Designs, 80 USPQ2d 1370, 1374
(TTAB 2006). Moreover, it appears that Applicant has conceded that the goods at
issue are identical.7 Accordingly, the du Pont factor regarding the similarity or
dissimilarity of the goods favors a finding of likelihood of confusion.
As Applicant’s goods are, in part, legally identical to those of Registrant, we must
presume that the goods of Applicant and Registrant move in the same channels of
trade and are offered to the same classes of consumers. See In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no
evidence regarding channels of trade and classes of consumers, the Board was
entitled to rely on this legal presumption in determining likelihood of confusion);

7 Applicant’s brief at 10, 5 TTABVUE 11 (“… the remaining du Pont factors must be
regrettably conceded due to the overlap in goods …”)
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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). Accordingly, the du Pont factors relating to the
similarity or dissimilarity of trade channels and classes of customers favor a finding
of likelihood of confusion.
2. The marks.
We next consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison
of the marks, but instead whether the marks are sufficiently similar in terms of
their commercial impression such that persons who encounter the marks would be
likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal
quotation marks omitted). While we consider each mark in its entirety, 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 that our ultimate conclusion rests
upon a comparison of the marks in their entireties. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). “Indeed, this type of analysis
appears to be unavoidable.” Id. 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
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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).
In appearance the two standard character marks under consideration are
similar to the extent that PHILLIES resembles the term PHILLIE, which appears
twice in Applicant’s mark. However, the words ONCE A and ALWAYS A in
Applicant’s mark are visually points of difference.
In sound, the two marks are not identical, but there is a substantial degree of
phonetic similarity, inasmuch as the term PHILLIE, which is nearly identical in
sound to Registrant’s mark, is pronounced twice in the course of pronouncing
Applicant’s mark. The repetition of PHILLIE reinforces the phonetic similarity
between the two marks.
With respect to the meanings of the marks, Applicant has sought to show that
PHILLIE, as used in its mark, means “of or relating to the city of Philadelphia,
Pennsylvania”;8 but that PHILLIES, as used in Registrant’s mark, refers to a well-
known professional baseball team.9 The Examining Attorney has conceded that the

8 See definition of “Philly” from MERRIAM-WEBSTER DICTIONARY, Applicant’s response of
July 13, 2015 at 44. See also the entry from for the
term PHILLY (which is “redirected from Phillie”), indicating that PHILLY may refer to the
city of Philadelphia; the Philadelphia Phillies baseball team; Philly cheesesteak; Phillies, a
brand of American-made cigars; four individuals named Philly, a TV series, the Philly Pops
orchestra, and a song by the band Fluke. Id. at 43.
9 Applicant’s brief at 9-10, 5 TTABVUE 10-11.
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term PHILLIES has been used to “refer to residents of Philadelphia …”10 However,
there is also abundant evidence to show that the terms PHILLIES and PHILLIE, as
they appear in both marks, would be readily recognized as a reference to the Major
League Baseball team known as the Philadelphia Phillies. The Wikipedia entry for
“Philadelphia Phillies.11 repeatedly uses the term PHILLIES and associates it with
“an American baseball team based in Philadelphia …” The entry cites 145
references as sources for its content, all of which relate to this baseball team, and 40
of which have, in their titles, the term “Phillies.” The Wikipedia entry also
demonstrates several uses of the singular term PHILLIE in reference to a member
of the Philadelphia Phillies baseball team:
From 1978 to 2003, the Phillies inducted one former Phillie [into the
Philadelphia Baseball Wall of Fame] … per year. Since 2004 they have
inducted one Phillie annually.

In addition to costumed characters, animated Phil and Phylis figures
mounted on the center field façade would “hit” the Liberty Bell after a
Phillie home run.

In 1978, the team introduced a new mascot, the Phillie Phanatic, who
has been called “baseball’s best mascot” …

“Every Phillie wears high socks, but most hide them with long pants.”
The Philadelphia inquirer.

The Wikipedia entry displays the mark in cited Reg. No. 1862960 and associates it
with the Philadelphia baseball team; sets forth a drawing of the team’s uniform that

10 Examining Attorney’s brief, 7 TTABVUE 7.
11 Office Action of May 27, 2015 at 19-35.
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bears the mark in cited Reg. No. 1604774; and displays several photographs of
baseball players wearing shirts bearing that mark.12
With respect to the meanings of the marks, Applicant argues:
[Applicant’s mark] is a phrase which engenders a
connotation of loyalty and civic pride. Not necessarily to a
baseball team, but to a city, Philadelphia. … As such, the
connotation of the trademark … is merely one of loyalty
and devotion to the City of Philadelphia …
In contrast, the cited stylized marks all refer to the
baseball team know [sic] known as the Philadelphia
Phillies. Each of those marks, however, is designed to
specifically create a connotation to the Major League
Baseball team located in Philadelphia … None of these
trademarks create a connotation of loyalty or devotion.
Rather, they evoke feelings of baseball and, specifically,
baseball in Philadelphia …13
The Examining Attorney, in response, argues that “[t]he critical point … is that the
connotation [of PHILLIE and PHILLIES] is the same in both Applicant’s mark and
Registrant’s marks …”14 He argues that Applicant intended the reference to
PHILLIE in his mark to refer to the Philadelphia baseball team:
… Applicant’s “Sports-4-All” retail store [ ] is located in a
close-in suburb of Philadelphia. As the record
demonstrates, Applicant’s store features “a wide range of
game-used MLB jerseys” and baseball apparel, including
shirts emblazoned with Registrant’s PHILLIES mark, as

12 See also the entry for “Philadelphia Phillies” from the ENCYCLOPEDIA BRITTANICA
(“Philadelphia Phillies, American professional baseball team based in Philadelphia that
plays in the National League (NL).” The entry refers repeatedly to the team as “the
Phillies.”) Office Action of August 10, 2015 at 22-23.
13 Applicant’s brief at 9-10, 5 TTABVUE 10-11. We note Applicant’s request that we take
judicial notice of a web page that purportedly contains information regarding the historic
meaning of “Phillies.” This web page is not a “source whose accuracy cannot reasonably be
questioned,” Fed. R. Evid. 201(b)(2). It is therefore not suitable matter for judicial notice.
14 Examining Attorney’s brief, 7 TTABVUE 8.
Serial No. 86536026

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well as indoor batting cages displaying posters of baseball
players wearing Registrant’s PHILLIES uniforms.15
The Examining Attorney has made of record internet materials regarding a
sporting goods store that, he contends, is operated by Applicant. A news item about
the sporting goods store called Sports 4 All refers to “John Vrana” as its owner, and
states “Even though the all-star game is a week away, and the Phillies are looking
like sellers at the trade deadline, the crack of the baseball bat can be heard loud
and clear in Haddon Township …”16 The website of the Sports 4 All store shows a t-
shirt bearing one of Registrant’s PHILLIES marks offered for sale, and an in-store
batting cage decorated with wall art depicting baseball batters in PHILLIES
uniforms.17 Another news item states, “Since 2009, every Phillies home win has
ended with Harry Kalas’ rendition of ‘High Hopes.’”18 The same article, referring to
“John Vrana,” states:
Though he wishes the Phillies never re-signed Rollins in
December 2011, Vrana now wants Rollins to reach that
mark – and more.
“I want him to end a Phillie,” he says. “Right now I
wouldn’t want to see him in another uniform. … [H]e’s
one of the greatest players to ever play for the Phillies.” …
No wonder Vrana sells more Utley gear than any Phillie
at his sports apparel store.19

15 Id., 7 TTABVUE 9.
16 “Sports 4 All Batting Cages Open on Haddon Ave.,” , Office Action of August
10, 2015 at 11-13.
17 , id. at 5, 7.
18 “Fans ponder age-old question with Rollins, Utley, Howard,” , id.
at 16.
19 Id. at 17-18.
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The evidence of record supports, prima facie, the Examining Attorney’s contention
that applicant, John Vrana, is the owner of the store Sports 4 All, and Applicant has
neither denied such contention nor offered evidence to contradict it.
The evidence supports a finding that the term PHILLIE in Applicant’s mark and
the term PHILLIES in Registrant’s marks would both be perceived by relevant
customers as having the same meaning, whether that meaning is a reference to the
residents of Philadelphia or to the Philadelphia baseball team. This is a strong
point of similarity in meaning. In overall commercial impression, both marks, as
applied to apparel, convey the idea of an association with, or support of, the city of
Philadelphia or the Philadelphia baseball team. Any connotation of “loyalty” in
Applicant’s mark would not be inconsistent with this overall impression. We find
that the strong points of similarity between the marks in appearance, sound,
meaning and commercial impression outweigh the differences. Accordingly, the du
Pont factor of the similarity or dissimilarity of the marks weighs in favor of a
finding of likelihood of confusion.
3. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. The goods at
issue are legally identical and would travel through the same channels of trade to
the same classes of purchasers. The similarities between the marks outweigh the
differences. Under such circumstances, we find that Applicant’s mark so resembles
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the mark in Reg. No. 1660775 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.