LAC Basketball Club, Inc.

Trademark Trial and Appeal Board

Dec 14, 2000

No. 75445760 (T.T.A.B. Dec. 14, 2000)

12/14/00
Paper No. 9
TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re LAC Basketball Club, Inc.
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Serial No. 75/445,760
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Anil V. George for LAC Basketball Club, Inc.
Marlene M. Menard, Trademark Examining Attorney, Law Office 109
(Ronald R. Sussman, Managing Attorney).
_______
Before Cissel, Quinn and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
LAC Basketball Club, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register the mark
shown below for "clothing, namely, hosiery, footwear, T-shirts,
sweatshirts, sweatpants, pants, tank tops, jerseys, shorts,
pajamas, sport shirts, rugby shirts, sweaters, belts, ties,
nightshirts, hats, warm-up suits, jackets, parkas, coats, cloth
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/445,760
2
bibs, head bands, wrist bands, aprons, boxer shorts, slacks,
caps, ear muffs and gloves."1
Registration has been refused under Section 2(d) of the
Trademark Act on the ground that applicant's mark so resembles
the marks shown below, all owned by the same registrant (Atlanta
National League Baseball Club, Inc.), as to be likely to cause
confusion:
Registration No. 845,032 for "jackets";2
1 Application Serial No. 75/445,760, filed March 6, 1998 based on an
allegation of a bona fide intention to use the mark in commerce.
Applicant has disclaimed the word "BUFFALO" and has claimed ownership
of Registration Nos. 946,091 and 2,201,581.
2 Issued February 27, 1968; combined Sections 8 and 15 filed.
Ser. No. 75/445,760
3
Registration No. 1,562,115 for "clothing, namely, T-shirts,
hats and shorts";3
Registration No. 1,596,052 for "clothing, namely, t-shirts,
sweatshirts, jerseys, jackets, youth replica jerseys,
sweaters, collar shirts, sweatpants, 3/4 sleeve baseball
shirts, baseball caps, shorts, toddler suits, muscle shirts,
baby bibs, and children's play suits."4
When the refusal was made final, applicant appealed. Briefs
have been filed but an oral hearing was not requested.
As a preliminary matter, applicant, relying on Park 'N Fly,
Inc. v. Dollar Park & Fly, Inc., 105 S. Ct. 658, 224 USPQ 327
(1985) and In re The American Sail Training Association, 230 USPQ
879 (TTAB 1986), among other cases, contends that the Section
3 Issued October 24, 1989; combined affidavits under Sections 8 and 15
filed.
4 Issued May 15, 1990; combined affidavits under Sections 8 and 15
filed. Both this registration and Registration No. 1,562,115 above
include other classes. However, the refusal to register, as argued by
the Examining Attorney, pertains only to the goods identified in Class
25 for each registration. Our decision in this case is accordingly
limited to the goods in that class.
Ser. No. 75/445,760
4
2(d) refusal is an impermissible collateral attack on applicant's
prior Registration No. 2,201,581 for the mark BUFFALO BRAVES and
design as shown below for the following goods: "Clothing, namely
hosiery, footwear, T-shirts, sweat shirts, sweatpants, pants,
tank tops, jerseys, shorts, pajamas, sport shirts, rugby shirts,
sweaters, belts, ties, nightshirts, hats, warm-up suits, jackets,
parkas, coats, cloth bibs, head bands and wrist bands."5
It is applicant's position that the prior registration is
"extremely similar" to the current application. Applicant argues
that both of its marks contain the wording BUFFALO BRAVES, which
is "the dominant portion of the marks"; that only the design
portions are different; and that the application contains all of
the goods identified in the registration with some additional
goods in the application.
We disagree that the refusal to register constitutes a
collateral attack on applicant's registration. To begin with,
unlike the involved registrations in the cited cases, the
registration relied on by applicant in this case is not
5 Issued November 3, 1998; the word BUFFALO has been disclaimed.
Ser. No. 75/445,760
5
incontestable and, more important, it is not over five years old.
In addition, the Section 7(b) presumptions accorded a
registration afford prima facie rights in the mark shown therein
as a whole, not in any individual component, and even then, only
for the goods or services for which the mark is registered. See,
e.g., Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d
1560, 4 USPQ2d 1793, (Fed. Cir. 1987) and In re Merrill Lynch,
Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141
(Fed. Cir. 1987). The mark applicant now seeks to register is
not the same mark as the mark previously registered by applicant.
Moreover, the goods identified in the application are not the
same as those in the prior registration, but instead include
additional and different items of clothing. Each application for
registration of a mark for particular goods must be separately
evaluated. There is nothing in the statute which automatically
entitles applicant to a registration for goods which are broader
than those covered by the prior registration. In re Loew's
Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) and
In re Merrill Lynch, Pierce, Fenner, and Smith Inc., supra.
Turning to the likelihood of confusion analysis, we look to
the factors set forth in In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention
to the factors most relevant to the case at hand, including the
Ser. No. 75/445,760
6
similarity of the marks and the relatedness of the goods or
services.
With respect to the goods, we note that a number of articles
of clothing identified in the application, including jackets,
t-shirts, hats shorts, jerseys and sweatshirts, are identical to
those in the cited registrations. Applicant does not argue
otherwise, but instead contends that purchasers of both
applicant's and registrant's clothing are fans of professional
basketball, fans of professional baseball, or collectors of
sports memorabilia, and that these purchasers are sophisticated
and knowledgeable about sports team names, sports marks and the
different sources of the relevant goods. Applicant maintains
that the identified clothing is sold in promotion of a particular
sport and that relevant purchasers would recognize that the
products are collateral to applicant's and registrant's primary
services of sports entertainment.
We are not persuaded by applicant's arguments. The question
of likelihood of confusion is determined on the basis of the
identification of goods set forth in the application and
registration, without limitations or restrictions as to the
actual nature of the goods or services or the classes of
purchasers which are not reflected therein. J & J Snack Foods
Corp. v. McDonalds' Corp., 932 F.2d 1460, 1464, 18 USPQ2d 1889,
1892 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computers
Ser. No. 75/445,760
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Services Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); and CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed.
Cir. 1983).
The application and cited registrations are for clothing,
not any underlying sports activity. Applicant's presumptions
about who the relevant purchasers are or what they would know or
think when confronted with the respective marks on the goods as
described in the application and registrations are not relevant.
It must instead be presumed that while fans and sports collectors
may be among the purchasers of these goods, in the absence of any
specific restrictions in the application or registration as to
the classes of purchasers, both applicant's and registrant's
clothing would be purchased by customers of all types, including
ordinary consumers. We also note that these goods are relatively
inexpensive and therefore likely to be purchased by such
consumers casually and on impulse, thus increasing the risk of
confusion. See Kimberly-Clark Corp. v. H. Douglas Enterprises,
Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985).
We turn to a consideration of the marks, keeping in mind
that when marks would appear on virtually identical goods or
services, the degree of similarity between the marks necessary to
support a finding of likelihood of confusion declines. Century
21 Real Estate corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992).
Ser. No. 75/445,760
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Applicant argues that the marks have been improperly
dissected by the Examining Attorney. Applicant maintains that
when properly evaluated, the marks are dissimilar in appearance,
sound, meaning and commercial impression in that applicant's mark
contains the additional word BUFFALO as well as design elements
which are not present in the cited registrations. Contending
that the word BUFFALO should not be disregarded merely because it
has been disclaimed, applicant argues that BUFFALO is a
"suggestive reference" to the City of Buffalo which, when
combined with the depiction of the buffalo in its mark, "creates
a double entendre." Applicant further argues that while the
basketball design in its own mark is a suggestive reference to
the sport of basketball, the tomahawk design in registrant's mark
creates a "very different" suggestive reference to registrant's
baseball team fans.
In evaluating the similarity of marks, our primary reviewing
Court has stated that there is nothing improper in "examining
each component of the mark" and giving appropriate weight to that
component in reaching a conclusion based on consideration of the
marks in their entireties. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1845 (Fed. Cir. 2000); Sweats
Fashions, Inc. v. Pannill Knitting Co., supra; and In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). When
we compare the marks in this case in their entireties, giving
Ser. No. 75/445,760
9
appropriate weight to the components therein, we find that the
marks are similar in sound and create substantially similar
commercial impressions.
The dominant portion of both applicant's and registrant's
marks is the word BRAVES. In fact, apart from the modest
stylization of that term, in two of the three the cited
registrations, the word BRAVES is essentially registrant's entire
mark. Neither stylized lettering nor designs are sufficient to
distinguish the respective marks and avoid confusion because
those elements are not as likely to be noted or remembered as is
the word BRAVES in these marks. The words in a mark are normally
given greater weight because they would be used by purchasers to
request the goods. See In re Appetito Provisions Co., 3 USPQ2d
1553 (TTAB 1987).
Moreover, the word BUFFALO is not a distinguishing feature
of applicant's mark. This word, while not ignored in the
analysis, is admittedly geographically descriptive of applicant's
goods and therefore of little significance as an indication of
source. See In re National Data Corp., supra. In addition, any
possible "double entendre" associated with the word BUFFALO may
enhance rather than diminish the likelihood of confusion. If
anything, the association of the word "buffalo" with the animal
rather than the city, when viewed in connection with other
elements in the marks such as the word BRAVES, and the
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representations of the feather headdress, buffalo, and tomahawk,
all project Native American themes or images, thereby reinforcing
the similar impressions that, as a whole, the marks create.
Finally, we note applicant's claim that its mark is
"integrally linked to the city of BUFFALO, professional
basketball, and the [NBA]"6 whereas the cited marks are
"integrally linked to the city of Atlanta, professional baseball,
and Major League Baseball." Applicant contends that the baseball
team is known to the public as both the Atlanta Braves and as the
Braves, "but has no connection or association with the city of
Buffalo."7
In fact, as the Examining Attorney points out, applicant's
own evidence (a printout from the NBA's website shown in exhibit
2 to applicant's response) refers to applicant's Buffalo Braves
as simply "the Braves." It would seem from this evidence that
6 Applicant has submitted evidence regarding the history of the
franchise and the evolution of its mark. The "NBA" publications
applicant refers to on page 9 of its brief as having been submitted
with its response to the first Office action are not in the application
file. Regardless, none of this evidence presumably would do anything
to distinguish the marks at issue in this case.
7 We note applicant's argument in its response to the first Office
action (but not pursued in its appeal brief) that "many sports teams in
different leagues currently coexist in professional sports with the
same name without confusion." In support of this claim, applicant had
submitted a list of eight different team names, each paired with what
applicant characterizes as "similar" names for teams in different
sports or different sport leagues. The mere listing of these team
names without evidence of their use is of no probative value and, in
any event, the team names can be differentiated readily by the
different geographic terms which appear in each name.
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purchasers are just as likely to view the word BRAVES in
registrant's mark as a shorthand reference to the BUFFALO BRAVES
as they would a reference to the Atlanta Braves. Moreover, there
is nothing in the cited marks themselves which would suggest a
connection with Atlanta or Major League Baseball, and the
evidence submitted by applicant to support this connection is
both untimely and unpersuasive.8
We conclude that applicant's intended use of its mark
BUFFALO BRAVES (and design) for clothing would be likely to cause
confusion with registrant's "BRAVES" marks for the identical
goods.
Decision: The refusal to register is affirmed.
8 Applicant has asked the Board to take judicial notice of dictionary
definition evidence as well as excerpts from articles taken from the
Lexis/Nexis database, all of which was submitted for the first time
with applicant's appeal brief. The database evidence is not proper
subject matter for judicial notice. On the other hand, the Board will,
if appropriate, take judicial notice of dictionary definitions. In
this case, however, applicant failed to indicate the relevance of this
evidence in its brief or to even identify the particular word applicant
seeks to define. Thus, we decline to take judicial notice of any of
this untimely evidence has not been considered. Even if we had
considered this evidence it would not affect our decision. Even
assuming the evidence shows that the "Atlanta Braves" team is also
known as "the Braves," the evidence does not establish that purchasers
would associate these particular marks, that is, the marks in the cited
registrations, with the Atlanta team. We also note that, for the most
part, the word "Atlanta" appears with the word "Braves" to identify the
team at least once in each of the excerpted articles. The absence of
the word "Atlanta" from other excerpts may be due to the severely
truncated version of the article which applicant has supplied. Under
the circumstances, we could not conclude from any of this evidence that
the word "Braves" alone would automatically prompt an association with
the Atlanta Braves.
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