Maloof Skateboarding, LLC

Trademark Trial and Appeal Board

May 23, 2012

No. 77931954 (T.T.A.B. May. 23, 2012)

Mailed:
May 23, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Maloof Skateboarding, LLC
________

Serial No. 77931954
_______

Scott Hervey of Maloof Skateboarding, LLC for Maloof
Skateboarding, LLC.

Janice Kim, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Seeherman, Quinn and Shaw, Administrative Trademark
Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Maloof Skateboarding, LLC has appealed from the final
refusal of the trademark examining attorney to register the
design shown below for “clothing, namely, shirts, t-shirts,
sports shirts and sweaters; caps, hats and sun visors” in
Class 25.1 The mark is described as consisting “of a

1 Application Serial No. 77931954, filed February 9, 2010, on
the basis of Section 1(b) of the Trademark Act (intent-to-use).
The application originally also was for services in Class 41;
however, when the examining attorney refused registration solely
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77931954
2
silhouette of a skateboarder appearing to be in mid-air
while performing a trick with a skateboard slightly
underneath.” Color is not claimed as a feature of the
mark.

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the mark shown below,
and registered for “men’s shirts, jackets, outerwear,
namely coats and jackets, sweaters, sweatshirts, t-shirts,
pants, shorts, socks”2 that, if used on applicant’s goods,
it is likely to cause confusion or mistake or to deceive.

with respect to the goods in Class 25, applicant requested that
the Class 41 services be divided out into a “child” application.
2 Registration No. 3216146, issued March 6, 2007.
Ser No. 77931954
3

We affirm the refusal of registration.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Applicant’s goods and the registrant’s goods are in
part identical. Applicant’s identified shirts, t-shirts
and sweaters encompass the “men’s shirts, sweaters and t-
Ser No. 77931954
4
shirts” identified in the cited registration, while the
“sports shirts” indentified in applicant’s application is
encompassed by the “men’s shirts” identified in the
registration. Although many of the other items in the
applicant’s identification of goods are, on their face,
related to the registrant’s identified goods, we need not
discuss them, because likelihood of confusion must be found
if there is likely to be confusion with respect to any item
that comes within the identification of goods in the
application. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Further, because the goods are in part legally identical,
they must be presumed to be sold in the same channels of
trade to the same classes of consumers. In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). The du Pont
factors of the similarity of the goods and channels of
trade favor a finding of likelihood of confusion.
We now turn to a consideration of the marks, keeping
in mind that when marks would appear on identical goods, as
they do here, the degree of similarity necessary to support
a conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). Further, the test is
not whether the marks can be distinguished when subjected
Ser No. 77931954
5
to a side-by-side comparison, but rather whether the marks
are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of
the goods or services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. In re
Association of the United States Army, 85 USPQ2d 1264, 1268
(TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975). Under actual marketing conditions,
consumers do not necessarily have the luxury of making
side-by-side comparisons between marks, and must rely upon
their imperfect recollections. Dassler KG v. Roller Derby
Skate Corporation, 206 USPQ 255 (TTAB 1980). .
For ease of reference, we reproduce both marks below:

Ser No. 77931954
6
In a side-by-side comparison one can pick out specific
differences in the marks, as applicant has detailed:
In addition to the clearly distinctive
competitive skateboarding styles (vertical versus
street as further discussed below), Applicant’s
Mark features the silhouette of a long-haired
skateboarder wearing long jeans, no protective
gear, and a skateboard forward facing with feet
detached from the skateboard in midair performing
a “kick flip.” On the other hand, the Registered
Mark features a skateboarder wearing shorts, a
helmet, elbow and knee pads, and with feet
planted on a downward facing skateboard board
[sic] launching through the air. Additionally,
the Registered Mark skateboarder’s left arm is
reaching up, while Applicant’s skateboarder’s
left arm is downward facing.

Brief, p. 5.
However, as the case law makes clear, and as applicant
acknowledges, a side-by-side comparison is not the correct
test. Rather, we must consider the general impression that
consumers will have of the marks, and the general
impression of these marks is the same, the silhouette of a
person on an airborne skateboard with his body turned
slightly toward his right. Details such as whether the
skateboarder has long hair or wears jeans, to the extent
that these details would even be apparent in the
silhouettes, are not likely to be noted or remembered. Nor
are consumers likely to remember whether the skateboarder’s
arm is up or down.
Ser No. 77931954
7
Applicant’s primary argument is that the marks feature
figures practicing different types of skateboarding, with
the registered mark representing a vertical or “vert
skateboarder” while applicant’s mark represents a “street
skateboarder.” Applicant further argues that to the
relevant consuming purchasers, these different styles will
be readily apparent and as a result they will distinguish
the marks. It is applicant’s position that the relevant
consumers of applicant’s goods are “highly specialized and
knowledgeable about Applicant’s sporting event and sub-
categories of skateboarding, such as vert and street
skateboarding.” Brief, p. 9.
The problem with applicant’s argument is that neither
applicant’s nor the registrant’s goods are identified as
being sold only to skateboarders or skateboarding
aficionados. The goods are clothing items which may be
sold to all members of the general public, not only those
interested in skateboarding. Thus, whether or not some of
the purchasers of the goods at issue are skateboarding
enthusiasts who are knowledgeable and sophisticated
purchasers, we must determine the issue of likelihood of
confusion from the point of view of the general public that
buys the ordinary clothing items identified in the
application and registration. Such purchasers cannot be
Ser No. 77931954
8
assumed to recognize the distinctions in the skateboarding
figures. Rather, to the public at large, the marks would
have a similar appearance, and have the meaning and
commercial impression of a skateboarder per se.
Thus, the du Pont factor of the similarity of the
marks favors a finding of likelihood of confusion, as does
the factor of the conditions of purchase. With regard to
the latter, we reiterate that the goods as identified are
items that are purchased by the public at large, including
those without any specialized knowledge of skateboarding
styles or the sport of skateboarding.
Neither applicant nor the examining attorney has
discussed or submitted any evidence as to any other du Pont
factors. To the extent that any are relevant, we treat
them as neutral.
In view of the foregoing, and our findings that the
marks are similar, the goods and channels of trade are in
part legally identical, and the goods can be purchased by
unsophisticated purchasers, we further find that
applicant’s mark, if used on its identified goods, is
likely to cause confusion with the mark in the cited
registration.
Decision: The refusal of registration is affirmed.