Lotto Sport Italia S.p.A

Trademark Trial and Appeal Board

Aug 15, 2016

No. 79154511 (T.T.A.B. Aug. 15, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: August 15, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lotto Sport Italia S.p.A
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Serial No. 79154511
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James J. Bitetto and Susan Paik of Tutunjian & Bitetto, P.C.
for Lotto Sport Italia S.p.A.
Steven W. Jackson, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Taylor, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Pursuant to Section 66(a) of the Act, 15 U.S.C. § 1141f(a), Lotto Sport Italia S.p.A
(“Applicant”) filed a Request for Extension of Protection of an international
registration for the mark STRATOSPHERE in standard characters on the
Principal Register for, as amended:
Shoes; footwear; boots for sports; working shoes; sports shoes; gymnastic
shoes; bath slippers; beach shoes; football boots; ski boots; boots; work
boots; wellies; half-boots; sandals; bath sandals; slippers; wooden shoes;
soles for footwear; inner soles; heels; galoshes; gaiter straps; non-slipping
devices for footwear; studs for football boots; tips for footwear; fittings of
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metal for footwear; heelpieces for footwear; footwear uppers; boot uppers
in International Class 25.1

The Trademark Examining Attorney refused registration of Applicant’s mark
pursuant to Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark so resembles the registered mark STRATOSPHERE
in standard characters on the Principal Register for “clothing, namely shirts, T-
shirts, sweatshirts and hats” in International Class 25,2 that, when used on or in
connection with Applicant’s identified goods, it is likely to cause confusion or
mistake or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. The Trademark Examining Attorney maintained the refusal to
register and denied the request for reconsideration. Thereafter, the appeal was
resumed and is now fully briefed.
For the reasons set forth below, we affirm the Section 2(d) refusal.

1 Application Serial No. 79154511, filed pursuant to Section 66(a) of the Trademark Act, 15
U.S.C. § 1141f(a), based on International Registration No. 1221819. See generally The
Protocol Relating to the Madrid Agreement Concerning the International Registration of
Marks (“Madrid Protocol”) and Madrid Protocol Implementation Act of 2002, Pub. L. 107-
273, 116 Stat. 1758, 1913-1921 (“MPIA”). As originally filed, the application included
various clothing items.
2 Registration No. 2409684, issued on December 5, 2000 on the Principal Register; alleging
August 1, 1986 as the date of first use anywhere and in commerce; Section 8 and 15 affidavit
and declaration accepted and acknowledged; renewed.
The Examining Attorney also refused registration under Section 2(d) based on Registration
No. 4109368 but later withdrew the refusal after Applicant amended the identification of
goods. See June 12, 2015 Office Action.
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I. Applicable Law
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). 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, however, two key
considerations are the similarities between the marks and the similarities between
the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir.
2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24 (CCPA 1976). These factors and others are discussed below. See M2 Software,
Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir. 2006) (even
within du Pont list, only factors that are “relevant and of record” need be
considered).
A. The Marks

Commencing with the first du Pont factor, it is undisputed that Applicant’s and
Registrant’s marks are identical. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005) (the first du Pont likelihood of confusion factor involves an analysis of the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression). Applicant however argues that the
deletion of all clothing items from its application renders its mark “unequivocally”
different in commercial impression from the cited mark. Applicant’s Brief, pp. 5-6;
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10 TTABVUE 8-9. In our view, this is not a situation where the same marks are
used to identify goods so dissimilar as to engender different commercial
impressions. Compare In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977)
(no likelihood of confusion found between BOTTOMS UP for ladies’ and children’s
underwear and BOTTOMS UP for men’s suits, coats and trousers). Here the term
STRATOSPHERE is arbitrary in relationship to both Applicant’s and Registrant’s
identified goods, and does not project a different connotation or commercial
impression for Applicant’s goods than it does for Registrant’s. Furthermore, because
the mark is arbitrary in relationship to Registrant’s identified goods, it is entitled
to a wider scope of protection than less distinctive, weaker, suggestive or descriptive
marks. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289, 1290 (Fed. Cir. 1984) (when word marks are identical but neither suggestive
nor descriptive of the goods, the first du Pont factor weighs heavily against the
applicant). Thus, because the marks are identical in appearance, sound, connotation
and commercial impression, the first du Pont factor weighs heavily in favor of
finding a likelihood of confusion.
B. The Goods
Turning now to the second du Pont factor, a comparison of Applicant’s and
Registrant’s respective goods as they are identified in the application and the cited
registration, we bear in mind that where identical marks are involved, as is the case
here, the degree of similarity between the goods that is required to support a finding
of likelihood of confusion declines. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
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1687, 1688-89 (Fed. Cir. 1993); Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1650 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812 (TTAB
2001). Nonetheless, it is still the Examining Attorney’s burden to establish that the
goods are related to support a finding of likelihood of confusion. See, e.g., In re White
Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding Office had failed
to establish that wine and vodka infused with caffeine are related goods). Evidence
of relatedness may include news articles and/or evidence from computer databases
showing that the relevant goods are used together or used by the same purchasers;
advertisements showing that the relevant goods are advertised together or sold by
the same manufacturer or dealer; and/or copies of prior use-based registrations of
the same mark for both applicant’s goods and the goods listed in the cited
registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding
pepper sauce and agave related where evidence showed both were used for the same
purpose in the same recipes and thus consumers were likely to purchase the
products at the same time and in the same stores).
Applicant argues that the involved goods are unrelated because the application,
as amended, only identifies footwear and accessories therefor, and excludes
clothing. Continuing, Applicant asserts that the Board disapproves of any sweeping
rule for wearing apparel and instead favors a case-by-case analysis. In support of
its position, Applicant cites to prior Board decisions finding no likelihood of
confusion with regard to various items of clothing and shoes.
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Applicant is correct that “there can be no rule that certain goods (i.e. all clothing
products) are per se related. ...” The H.D. Lee Company Inc. v. Maidenform, Inc., 87
USPQ2d 1715, 1723 (TTAB 2008). Contrary to Applicant’s assertion, however, the
Examining Attorney does not argue that the involved goods are “per se” related.
Rather, the Examining Attorney has submitted evidence to show that Applicant’s
and Registrant’s goods are related products. Specifically, the Examining Attorney
introduced Internet websites showing that it is not uncommon for Applicant’s and
Registrant’s goods to be sold together in the same retail outlet under the same mark
or sold by entities manufacturing both sets of goods. We highlight the following
examples:
Footlocker (http://www.footlocker.com): A retail store and online
retailer specializing in athletic apparel and footwear offering for sale
shirts and shoes sold under the same mark Under Armour as well as
the mark Adidas.3

Vans (http://www.vans.com): A clothing and footwear manufacturer
showing both shirts and shoes sold under the same mark Vans via
retail stores and its website.4

Calvin Klein (http://www.calvinkein.com): A fashion designer offering
for sale both shirts and shoes for men and women under the mark
Calvin Klein via retail stores and its website.5

Kenneth Cole (http://www.kennethcole.com): A clothing and footwear
manufacturer specializing in men’s and women’s fashions offering for
sale both shirts and shoes under the mark Kenneth Cole via retail
stores and its website.6

3 See January 4, 2016 Office Action.
4 See id.
5 June 12, 2015 Office Action.
6 See id.
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Element (http://us.elementbrand.com): A retail store and online
retailer specializing in men’s fashions selling both shirts and shoes
under the same mark Element.7

Banana Republic (http://bananarepublic.gap.com): A retail store and
online retailer selling both shirts and shoes under the same mark
Banana Republic.8

As the aforementioned evidence demonstrates, it is not uncommon for
manufacturers of footwear to produce and offer for sale shirts under the same mark
and vice-versa. Nor is it uncommon for traditional brick and mortar retail stores as
well as their online counterparts to offer for sale both items under the same brand
name. This establishes that consumers may expect to find both Applicant’s and
Registrant’s goods emanating from a common source.
In addition, the Examining Attorney made of record third-party, used-based
registrations showing that the same entity has registered a single mark identifying
both Applicant’s and Registrant’s goods. See Registration Nos. 4508052, 4627578,
and 4701062 attached to June 12, 2015 Office Action. As a general proposition,
although use-based third-party registrations alone are not evidence that the marks
shown therein are in use or that the public is familiar with them, they nonetheless
may have probative value to the extent they may serve to suggest that the goods
are of a kind that emanate from a single source. See In re Infinity Broad. Corp., 60
USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d

7 January 4, 2016 Office Action.
8 See id.
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1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988).
In view of the foregoing, we find that the goods identified in the application and
registration are related. As such, the second du Pont factor also weighs in favor of
finding a likelihood of confusion.
C. Trade Channels
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. Applicant argues that because “[t]oday’s marketplace abounds with
megastores and online shopping”, “consumers know that many stores/websites sell
a host of unrelated goods, including goods, various items of clothing, toys, footwear,
automotive goods, and so on.” Applicant’s Brief, p. 6; 10 TTABVUE 8. Applicant also
contends that consumers would not encounter Applicant’s and Registrant’s goods in
close proximity either physically in a brick and mortar store or online.
We disagree. Because the identifications in the application and cited registration
have no restrictions on channels of trade, we must presume that the goods travel in
all channels of trade normal for such goods, which the record shows includes both
brick and mortar and online retail stores. See In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). As such, the third du Pont factor regarding the similarity or
dissimilarity of established, likely to continue trade channels also favors a finding
of likelihood of confusion.
D. Conditions of Sale
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Next we consider the conditions under which the goods are likely to be
purchased, e.g., whether on impulse or after careful consideration, as well as the
degree, if any, of sophistication of the consumers, the fourth du Pont factor.
Purchaser sophistication or degree of care may tend to minimize likelihood of
confusion. Conversely, impulse purchases of inexpensive items may tend to have
the opposite effect. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En
1772, 73 USPQ2d at 1695.
Applicant argues that “shirt-buying consumers are sophisticated enough to
discern between clothing apparel such as shirts, and footwear, given their unrelated
attributes.” Applicant’s Brief, p. 6; 10 TTABVUE 8. As Applicant elaborates, goods
such as football boots, gymnastic shoes and ski boots are specialized footwear and
tend to cost more than ordinary footwear. In addition, because these goods are
purchased by athletes, they are likely to be purchased by sophisticated buyers with
specialized knowledge who are less likely to be confused. Applicant’s Reply Brief, p.
5.
Applicant’s arguments are unconvincing. Applicant neglects to mention that its
identification of goods includes broadly worded products such as “shoes” and
“footwear.” Because Applicant’s identification of these products is unrestricted and
because the clothing items in the cited registration are also unrestricted, we must
assume that these goods are sold to ordinary purchasers who exercise ordinary care
in their purchase. Here, the class of consumers for the respective goods consists of
the general public, namely all types of consumers (men, women, and children) with
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no specialized knowledge of any particular sport or athletic endeavor. There is no
evidence that this segment of the general public would necessarily exercise a higher
degree of care when encountering the goods.
And with regard to the more specialized footwear products included in the
application such as ski boots, the fact that such goods may be purchased by
sophisticated or knowledgeable athletes does not necessarily mean that they are
sophisticated or knowledgeable in the field of trademarks or immune from source
confusion. See In re Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009); In re Decombe,
9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB
1983). When the relevant consumers include both those who are sophisticated and
knowledgeable and the general public, the standard of care for purchasing the goods
is that of the least sophisticated purchaser. Alfacell Corp. v. Anticancer, Inc., 71
USPQ2d 1301, 1306 (TTAB 2004). Accordingly, we find that this factor is neutral.
E. Consent to Register
Next we consider the eleventh du Pont factor, the market interface between
applicant and the owner of a prior mark, which includes “a mere ‘consent’ to register
or use.” Applicant made of record a copy of a “Letter of Consent” with a New Zealand
based company, Kathmandu Ltd., which owns a New Zealand registration for the
mark STRATOSHERE for goods in International Classes 24 and 25. Applicant
contends that because this “Letter of Consent” was sufficient to overcome a
provisional refusal issued by the Intellectual Property Office of New Zealand,
another English-speaking jurisdiction, the U.S. Trademark Office should reverse
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the refusal here. A consent agreement executed between Applicant and an
unrelated party in New Zealand has no bearing on this appeal. Accordingly, this du
Pont factor is neutral as well.
II. Conclusion
After considering all of the evidence of record and arguments pertaining to the
du Pont likelihood of confusion factors, the first, second and third du Pont factors
discussed above favor a finding of likelihood of confusion. The remaining factors
discussed above are neutral, and we treat as neutral any du Pont factors for which
there is no evidence of record. We therefore find that there is a likelihood of
confusion between Applicant’s and Registrant’s identical marks for the goods
identified therein.
Decision: The likelihood of confusion refusal under Section 2(d) is affirmed.