Longhornville Limited

Trademark Trial and Appeal Board

Aug 16, 2017

No. 85884496 (T.T.A.B. Aug. 16, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 16, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Longhornville Limited
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Serial No. 85884496
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Longhornville Limited, pro se.

Mark S. Tratos, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
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Before Taylor, Adlin and Masiello,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Longhornville Limited (“Applicant”) seeks registration of TEXAS FIGHT, in
standard characters and with TEXAS disclaimed, for “clothing, namely, t-shirts,
shirts, sweatshirts; wristbands; hats, caps.”1 The Examining Attorney refused
registration under Section 2(d) of the Trademark Act on the ground that Applicant’s
mark so resembles the previously registered mark TEXAS FIGHTER, in standard
characters also with TEXAS disclaimed, for “beanies; caps; footwear; gloves; hats;
headwear; jackets; rash guards; shirts; shorts; skull caps; socks; sweat pants; sweat

1 Application Serial No. 85884496, filed March 23, 2013 based on an alleged intent to use the
mark in commerce under Section 1(b) of the Trademark Act.
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shirts; sweat suits; t-shirts; tank tops; warm up outfits,”2 that use of Applicant’s mark
in connection with Applicant’s goods is likely to cause confusion or mistake or to
deceive. After the refusal became final, Applicant appealed and filed a request for
reconsideration which was denied. Applicant and the Examining Attorney filed
briefs.3
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the likelihood of confusion factors set forth in In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See
also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”).
Turning first to the goods and channels of trade, they are in-part identical, as
Applicant and Registrant both offer or intend to offer “shirts,” “t-shirts,”
“sweatshirts,” “hats” and “caps.” Where, as here, Applicant’s and Registrant’s goods
are in-part identical, we must presume that the channels of trade and classes of
purchasers for those goods are also the same. See In re Viterra Inc., 671 F.3d 1358,

2 Registration No. 3929132, issued March 8, 2011; Section 8 Affidavit accepted.
3 The Examining Attorney’s objection to evidence Applicant submitted well after its brief
was due is sustained, because the evidence is untimely. Trademark Rule 2.142(d).
Serial No. 85884496
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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); In re Yawata Iron
& Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are identical
goods, the channels of trade and classes of purchasers are considered to be the same).
The identity (in part) of Applicant’s and Registrant’s goods and their overlapping
channels of trade not only weigh heavily in favor of finding a likelihood of confusion,
but also reduce the degree of similarity between the marks necessary to find a
likelihood of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group Ltd., 93
USPQ2d 1243, 1248 (TTAB 2010).
As for the marks, they are highly similar “in their entireties as to 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
(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). In fact, the only difference
between them is that Registrant’s includes the letters “er” at the end of the word
“fight.” These additional two letters at the end of Registrant’s mark do not result in
the marks looking or sounding meaningfully different. To the contrary, the marks
look and sound almost identical, to the point that a customer asking for TEXAS
FIGHT clothes could very well be directed to TEXAS FIGHTER clothes, either
because a store salesperson thinks the requesting customer made a minor mistake in
identifying the brand of interest, or because the salesperson himself or herself makes
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a minor mistake in recalling the brand name. Applicant itself “stipulate[s] that the
letters and root word, ‘fight’, bears a textual similarity to ‘fighter’, and sound similar.”
Request for Reconsideration of July 16, 2014.
While there is some difference in connotation between TEXAS FIGHT and TEXAS
FIGHTER, the difference is not substantial. Both terms could convey fights taking
place in Texas, with Applicant’s mark conveying the fight itself and Registrant’s
conveying one of the fighters. In other words, a “TEXAS FIGHTER” could very well
be a combatant in a “TEXAS FIGHT.” Alternatively, someone who possesses a
characteristic known as “TEXAS FIGHT” could be referred to as a “TEXAS
FIGHTER.”
Applicant argues that “Texas Fighter refers to a company promoting MMA (mixed
martial arts) combat, with actual pugilists. ‘Texas Fight’ refers to a spirit group or
glee club or cheerleaders, who typically have a ‘fight song’, which is how a playing
team’s morale is raised, by getting the audience to cheer. It is a ‘go team’ concept. A
‘fight song’ is a class of song, like a dirge or hymn or canon.” Id. The problem with
Applicant’s argument is that nothing – neither the drawing of the mark nor the
identification of goods in the cited registration4 nor any evidence of record – supports

4 Again, the goods are in-part identical and we must therefore presume that the channels of
trade and classes of consumers are too.
The authority is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application regardless of
what the record may reveal as to the particular nature of an
applicant’s goods, the particular channels of trade or the class of
purchasers to which sales of the goods are directed … Thus, it
was not error, as OSI argues, for the board to give no weight to
OSI’s evidence purporting to show that OCTOCOM modems are
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a finding that TEXAS FIGHTER will convey MMA to ordinary consumers. And even
if consumers perceived Applicant’s mark the way Applicant suggests, the spirit group
or cheerleaders’ fight song could be used to cheer on a “TEXAS FIGHTER,” even a
Texas MMA fighter. Considered in their entireties, Applicant’s and Registrant’s
marks are similar, and this also weighs in favor of finding a likelihood of confusion.
Because the goods are in-part identical and presumed to move in the same
channels of trade, and the marks are similar, confusion is likely.5

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.

brought (sic) by a particular class of purchasers. It would have
been error to do otherwise. Because OSI seeks an unrestricted
registration, such evidence as there is of a specific class of
customers did not relate to a material fact.

See Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990).
5 Applicant’s arguments in favor of registration are unavailing and unsupported by any
evidence. There is no evidence supporting Applicant’s argument that the relevant consumers
are sophisticated or will exercise heightened care. In any event, Applicant and Registrant
identify “t-shirts,” “hats” and other clothing items which are typically not expensive and are
sold to ordinary consumers. As for the alleged lack of actual confusion, Applicant claims an
intent to use the mark in commerce rather than actual use, so there has presumably been no
opportunity for confusion to occur if it was likely to occur. See Nina Ricci S.A.R.L. v. E.T.F.
Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989). Applicant’s reliance on
the doctrine of foreign equivalents is misplaced because Applicant’s and Registrant’s marks
are in English. Finally, Applicant’s claim that Registrant does not use its mark in commerce
is an impermissible collateral attack on the cited registration which, while appropriate for a
petition for cancellation based on abandonment or nonuse, is not appropriate or permissible
in this ex parte proceeding. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534-35 (Fed. Cir. 1997).