Nations Outfitters

Trademark Trial and Appeal Board

Mar 29, 2013

No. 85121702 (T.T.A.B. Mar. 29, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 29, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Nations Outfitters
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Serial No. 85121702
_____

Jeffrey P. Doss of Lightfoot Franklin & White LLC,
for Nations Outfitters.
Amy C. Kelly, Trademark Examining Attorney, Law Office 113
Odette Bonnet, Managing Attorney.
_____

Before Bucher, Kuhlke and Wellington,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Nations Outfitters (“applicant”) seeks registration on the Principal Register of
the following mark:

Serial No. 85121702
2

for “online retail store services featuring clothing; retail apparel stores,” in Interna-
tional Class 35.1
Registration has been refused under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground that applicant’s mark, when used with its identi-
fied goods and services, so resembles the mark OUTFITTERS NATION (in stand-
ard character format) registered in connection with:
spectacles, spectacle frames, tinted glasses, sunglasses in Inter-
national Class 9;
jewelry of precious metal and stones, imitation jewelry, cuff links,
tie pins, precious stones, imitation precious stones, chronometric
instruments, namely, watches and pouches for watches sold to-
gether, and clocks in International Class 14;
leather and imitations of leather and goods made of these materi-
als and not included in other classes, namely, boxes of leather or
of leather board in the nature of carrying cases, envelopes of
leather for packaging; leather or imitation leather shopping bags,
school bags, attaché cases, leather cases, briefcases, fine leather
goods, namely, pocket wallets, purses, key-holders, card holders,
namely, credit card wallets, credit card cases; trunks and travel-
ing bags, namely, trunks, valises, traveling bags, garment bags
for travel, vanity-cases for travel sold empty, rucksacks, hand-
bags for traveling, beach bags for traveling, shoulder bags for
traveling, textile tote bags for traveling, suit cases, canvas travel-
ing sacks, luggage, drawstring pouches for traveling, and pouch
bags for traveling composed of leather, textile, and felt; umbrel-
las; parasols; and walking sticks, namely, canes, walking-stick
seats in International Class 18;
clothing and underwear, namely, shirts, sweaters, sweatshirts,
vests, pants, skirts, dresses; dress bodies, namely, corsets; suits,
waistcoats; waterproof clothing, namely, waterproof jackets, wa-
terproof coats, waterproof trousers; coats, pullovers, trousers,
dresses, jackets, shawls, stoles, sashes for wear, scarves, neck

1 Application Serial No. 85121702 was filed on September 2, 2010, based upon applicant’s
claim of use anywhere and use in commerce since at least as early as June 1, 2009. No
claim is made to the exclusive right to use the word “Outfitters” apart from the mark as
shown.
Serial No. 85121702
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ties, ties, braces in the nature of suspenders, gloves, belts, stock-
ings, tights, socks, bathing suits, bath robes; footwear, namely,
shoes and boots; headgear, namely, hats, caps and kerchiefs in In-
ternational Class 25; and
advertising, business management, business administration; of-
fice functions in International Class 35,2
as to be likely to cause confusion, to cause mistake or to deceive.
After the examining attorney made the refusal final, applicant appealed to this
Board. We affirm the refusal to register.
Our determination under Trademark Act § 2(d) is based upon an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evi-
dence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).

2 Registration No. 3639542 issued on June 16, 2009. No claim is made to the exclusive right to
use the word “Outfitters” apart from the mark as shown.
Serial No. 85121702
4

A. Relationship of the Goods/Services, Trade Channels and Clas-
ses of Consumers
We begin with a consideration of the relationship of the goods and services here-
in, as well as the respective trade channels and classes of consumers. In this regard,
we note that applicant has conceded in its response of November 28, 2011, that
“the goods and services referenced in the applicant’s and registrants’ registration
statements are related … .” Furthermore, the Office has demonstrated the close
relationship between retail clothing store services and individual items of cloth-
ing like those listed by registrant in International Class 25 – both with third-
party, use-based registrations and with screen prints from Internet retail web-
sites. Furthermore, the record supports a conclusion that both applicant and
registrant would avail themselves of the same channels of trade and market
their goods and services to a similar class of ordinary consumers. Hence, these
several related du Pont factors all weigh in favor of a finding of likelihood of
confusion.
B. Comparison of the Marks
Applicant has applied to register the mark . The registered
mark is OUTFITTERS NATION. Applicant argues that in spite of the close re-
latedness of the goods and services, the dissimilarities in the marks should be the
determinative factor in our holding that there is no likelihood of confusion. We disa-
gree.
Serial No. 85121702
5

In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the simi-
larity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. The test, un-
der this du Pont factor, is not whether the marks can be distinguished when sub-
jected 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 offered under the respective marks is likely to result. Because
the similarity or dissimilarity of the marks is determined based on the marks in
their entireties, the analysis cannot be predicated on dissecting the marks into their
various components; that is, the decision must be based on the entire marks, not
just part of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). On the other hand, different features may be analyzed to de-
termine whether the marks are similar. Price Candy Company v. Gold Medal Candy
Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, there is noth-
ing improper in stating that, for rational reasons, more or less weight has been giv-
en to a particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re National Data Corp., 224 USPQ
at 751. The focus is on the recollection of the average purchaser, who normally re-
tains a general rather than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Further, where the goods or services are so closely related as are retail clothing
store services and individual items of clothing like those listed by registrant, the
degree of similarity between the marks necessary to support a likelihood of confu-
Serial No. 85121702
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sion determination declines. In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1260 (Fed. Cir. 2010); and In re Max Capital Group Ltd., 93 USPQ2d 1243,
1246 (TTAB 2010).
Whether a likelihood of confusion exists between an applied-for mark and a
previously-registered mark is determined on a case-by-case basis, aided by applica-
tion of the du Pont factors. Citigroup, Inc. v. Capital City Bank Group, Inc., 637
F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011) (CITIBANK opposition against CAPITAL
CITY BANK dismissed); and On-Line Careline v. Am. Online, 229 F.3d 1080, 56
USPQ2d 1471 (Fed. Cir. 2000) (holding ON-LINE TODAY for Internet connection ser-
vices and ONLINE TODAY for an electronic publication likely to cause confusion).
Registrant, in compliance with Section 2.52 of the Rules of Practice in Trade-
mark Cases, obtained a federal trademark registration having a “standard charac-
ter” mark. The rights associated with a mark in standard characters reside in the
wording and not in any particular display. In re RSI Systems, LLC, 88 USPQ2d
1445 (TTAB 2008); and In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015
(TTAB 1988). Accordingly, registrant is not limited to any particular font style, col-
or, or size of display. Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d 1376, 170
USPQ 35 (CCPA 1971). For example, we have to consider that registrant may pre-
sent its mark as:
outfitters
Nation

Serial No. 85121702
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Thus, the minimal stylization in applicant’s mark cannot serve to distinguish its
marks, inasmuch as we must consider registrant’s mark “regardless of font style,
size, or color.” Citigroup, 98 USPQ2d at 1258-59. See also In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).
Further, the common element NATION is the dominant element in both marks
inasmuch as the word “Outfitters” is merely descriptive,3 and words generally dom-
inate over design elements. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553
(TTAB 1987).
In this context, we are not sure that applicant helps its position with a citation
to In re White Rock Distilleries, Inc., 92 USPQ2d 1282 (TTAB 2009).
Unlike the instant case, the White Rock Distilleries registrant/senior
user had registered a composite mark having a significant design fea-
ture, providing it with a somewhat narrower scope of protection with
regard to the literal portions of the mark – especially the subordinated and relative-
ly tiny word “VOLTA” – which matter comprised applicant’s entire mark. We would
readily conclude in applying the above principles to the facts of the White Rock Dis-
tilleries case, that it would not be reasonable to impute to that applicant (the owner
of the VOLTA standard character mark) the adoption of the arbitrary word, TERZA,

3 As noted by the examining attorney, the record shows that the word “Outfitters” is highly
descriptive of these goods and services, and has correctly been disclaimed by both registrant
and applicant
Serial No. 85121702
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and/or a twig design.4 By contrast, in the instant case, someone acquainted with
applicant’s composite mark who later saw registrant’s mark on substantially the
same goods or services could easily be a victim of reverse confusion, thinking OUT-
FITTERS NATION was a minor variation on applicant’s mark, perhaps with less
emphasis on the religious symbology.
As seen above, merely employing standard fonts, registrant’s mark could easily
present a lower-case letter “T” indistinguishable from applicant’s “Latin Cross.” Ad-
ditionally, we find that applicant’s imagery of a dove is not sufficiently strong in
this composite mark to strike the average consumer as clearly religious iconogra-
phy. As seen above, in light of the fallibility of human memory, even accounting for
the presence of these religious symbols heightening the dissimilarities in the literal
elements pointed out by applicant (e.g., the pluralization of the word “Nation” and
reversing the order of these two words), we view all of these differences in appear-
ance as insignificant distinguishing features when comparing the marks in their en-
tireties.

4 Similarly, given the relative positions in the case at bar of registrant (e.g., owner of a reg-
istration having only standard characters) and applicant (later-filed application having a
special form drawing), and given that the two marks herein are arguably very similar as to
overall commercial impression, it would be both illogical and unfair to require the examin-
ing attorney in this ex parte proceeding to demonstrate that registrant had previously used
these same religious symbols, for example, in order to have the cited registration serve as a
bar to the instant application. Contra Burns Philip Food, Inc. v. Modern Products, Inc.,
1 F.3d 1252, 28 USPQ2d 1687 (Fed. Cir. 1993) (applicant’s Spice
Garden mark (in special form) and opposer’s SPICE ISLANDS

mark deemed to present significantly dif-
ferent commercial impressions after the
results of an intensive inter partes proceed-
ing and a review of opposer’s actual usage).

Serial No. 85121702
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C. Weighing the factors
In view of our findings that the marks are similar when compared in their en-
tireties, and that the goods and services are closely related, we find that applicant’s
registration of its mark is likely to cause confusion.
Decision: The refusal to register applicant’s mark under Section 2(d) of the
Lanham Act is hereby affirmed.