NBA Properties, Inc.

Trademark Trial and Appeal Board

Dec 29, 2000

No. 75377561 (T.T.A.B. Dec. 29, 2000)

12/29/00
Paper No. 12
TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re NBA Properties, Inc.
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Serial No. 75/377,561
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Kathryn Barrett Park for NBA Properties, Inc.
Nicholas K. D. Altree, Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney).
_______
Before Hohein, Holtzman and Rogers, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
NBA Properties, 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, parkas, coats, cloth bibs, head bands, wrist
bands, aprons, boxer shorts, slacks, caps, ear muffs and gloves,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/377,561
2
all sold only in promotion of and in connection with a
professional basketball team."1
Registration has been refused under Section 2(d) of the
Trademark Act on the ground that applicant's mark so resembles
the typed mark KAPS shown in Registration No. 966,558 for "men's
and boys' clothing - namely, suits, jackets, slacks, shirts,
ties, and socks"2 as to be likely to cause confusion.3
When the refusal was made final, applicant appealed.
Briefs have been filed but an oral hearing was not requested.
In any likelihood of confusion analysis, we look to the
factors set forth in In re E. I. du Pont de Nemours & Co., 476
1 Application Serial No. 75/377,561, filed October 22, 1997 based on an
allegation of a bona fide intention to use the mark in commerce.
2 Issued August 21, 1973; renewed.
3 Applicant comments on the inconsistent treatment of its present
application, pointing out that its prior (now abandoned) application
for the same mark and nearly identical goods had been approved for
publication by a different Examining Attorney. The prior application
has no bearing on our decision herein. We have no way of knowing the
basis for the Examining Attorney's approval of that application, nor
are we bound by his or her action on that application. Each case must
be decided on its own merits. In re National Novice Hockey League,
Inc., 222 USPQ 638, 641 (TTAB 1984) and cases cited therein.
Ser. No. 75/377,561
3
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention
to the factors most relevant to the case at hand, including the
similarity of the marks and the relatedness of the goods or
services.
We turn first to a consideration of the goods. Applicant
attempts to distinguish the respective goods arguing that
registrant's goods "appear to be formal clothing" targeted to the
general consumer market while its own clothing (presumably
informal) would be sold in promotion of a particular sport,
through "specialized consumer market[s]" and such "discrete NBA
venues" as the NBA's store, web site, catalogs, team stores or
team arenas. Applicant maintains that the purchasers of its
clothing will be fans of professional basketball or collectors of
sports memorabilia, that these purchasers have a "sophisticated
knowledge" about sports team names, sports marks and the
different sources of the relevant goods, and that they would
recognize that the clothing is collateral to applicant's primary
services of sports entertainment.
We are not persuaded by applicant's arguments. The question
of likelihood of confusion is based on the goods as identified in
the application and registration rather than on any restrictions
Ser. No. 75/377,561
4
or limitations reflected in actual (or intended) use.4 See J & J
Snack Foods Corp. v. McDonalds' Corp., 932 F.2d 1460, 1464, 18
USPQ2d 1889, 1892 (Fed. Cir. 1991) and Saks & Co. v. Snack Food
Association, 12 USPQ2d 1833 (TTAB 1989). The clothing items
covered by the cited registration are, for the most part,
identical to those in the application. The language in
applicant's identification, "sold only in promotion of and in
connection with a professional basketball team" does not
effectively limit those goods. The articles of clothing are
still the same, the goods are still sold in the same channels of
trade, including all the usual retail outlets for clothing, and
there is nothing which would limit the classes of purchasers to
those "who have a sophisticated knowledge about Applicant's goods
and marks." It must therefore be presumed that while fans and
sports memorabilia collectors may be among the intended
purchasers of applicant's goods, applicant's clothing, as
identified, could be purchased by customers of all types,
including ordinary consumers. Moreover, we believe it generally
known and not subject to reasonable dispute that fans of
professional sports, including the NBA, include consumers of all
types. Finally, there is no restriction in the registration as
4 Thus, the fact that applicant's clothing may bear identifying matter
such as "NBA Licensed Product" hang tags or that it may be displayed
next to other goods bearing NBA trademarks is not relevant. See, e.g.,
In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992).
Ser. No. 75/377,561
5
to use, channels of trade or classes of customers for
registrant's clothing. We must therefore presume that
registrant's clothing reaches all classes of customers including
applicant's customers and that such clothing may also be sold in
promotion of an underlying sports activity.
We turn then to the marks. In this regard, the Examining
Attorney argues that the marks are phonetically identical, that
the word in applicant's mark is more significant than the design
element in determining likelihood of confusion, and that because
registrant's mark is displayed in typed form "there is nothing to
prevent the registrant from using a design of the U.S. Capitol
building partially obscured by the stylized word KAPS." (p.8
brief).
The marks are identical in sound. However, we agree with
applicant that when considered in their entireties, the marks
differ in appearance and create distinctly different commercial
impressions.5 Registrant's mark consists simply of the word
5 Contrary to applicant's claim, however, any asserted "integral"
association of applicant's mark with professional basketball or the NBA
has no bearing on this analysis. The commercial impression of a mark
is not determined by extrinsic evidence as to its affiliation with a
particular entity. The question is whether purchasers will believe
that the products offered under the respective marks come from the same
source, not whether purchasers can identify the source for the
products. See, e.g., Tone Brothers Inc. v. Sysco Corp., 28 F.3d 1192,
31 USPQ2d 1321 (Fed. Cir. 1994) and Blue Cross and Blue Shield
Association v. Harvard Community Health Plan Inc., 17 USPQ2d 1075 (TTAB
1990).
Ser. No. 75/377,561
6
KAPS, which in relation to clothing appears to be a mere
misspelling of the word "caps" for headwear. Applicant's mark,
however, is a composite consisting a word and a design, both of
which must be considered in determining the overall commercial
impression the mark conveys. The word portion of applicant's
mark is CAPS, but the design itself suggests the U.S. Capitol
building, or perhaps capital cities in general. One definition
of "caps" is, of course, headwear, and this is likely to be the
meaning one would ordinarily attach to the word in applicant's
mark in relation to applicant's identified goods. However, the
dictionary definition of "caps" submitted by applicant shows that
it is also an abbreviated form of the word "capitals."6 Thus,
when CAPS is viewed in the context of the mark as a whole, the
design reinforces its alternative meaning as the shortened word
for "capitals" rather than, as in registrant's mark, the generic
6 The Examining Attorney (in a footnote to his brief on page 6),
relying on a definition from Cassell's German-English English-German
Dictionary (1978), argues as follows: "One might just as easily, and
just as randomly, argue that the word KAPS is a play on the German word
"kapital," which means "capital" in English." This proposition is
unsupported. The registered mark is KAPS, not KAPITALS. There is no
evidence that KAPS would be recognized by those who are knowledgeable
in German as the equivalent of KAPITALS. There is no evidence to show
that KAPS is likely to be perceived as anything other than a misspelled
version of the word "caps."
Ser. No. 75/377,561
7
word for headwear.7
The Examining Attorney's statement regarding the scope of
protection accorded a typed mark is incorrect. A typed drawing
allows protection for all reasonable manners of presentation. See
Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170
USPQ 35 (CCPA 1971) and INB National Bank v. Metrohost Inc., 22
USPQ2d 1585, 1588 (TTAB 1992). This is so because rights in the
typed word reside in the word itself not in any particular
display of the term. Thus, rights in the term would not be
extended to include protection for that word combined with, for
example, other words or a design element. See Fossil Inc. v.
7 Applicant also argues that the registered word KAPS, as meaning
headwear, is weak in the clothing field. To support this claim,
applicant submitted, with its response to the first Office action, a
search report from a private company identifying close to 100 third-
party applications and registrations for marks incorporating the word
"cap" or "kap" for headwear and various items of clothing. The
Examining Attorney did not object to this evidence or even acknowledge
it. Applicant then (for reasons unknown) appended what appears to be
the identical evidence to its appeal brief together with copies of
sixteen of those registrations. The Examining Attorney, in his appeal
brief, objected to these sixteen registrations as untimely. It seems
clear that these registrations formed part of the original search
report which was never objected to by the Examining Attorney. Thus,
the objection to any of the evidence is deemed to have been waived, and
we have considered the evidence as properly of record. Having said
that, however, in view of our finding that the respective marks have
different connotations and create different commercial impressions, the
relevance of these third-party applications and registrations is
minimal. Moreover, we note that the identifications of goods in the
vast majority of those applications and registrations consist solely of
caps, hats or some kind of headwear. While third-party registrations
may be used to show the dictionary meaning of a term, we do not need
third-party registrations to tell us the meaning of "caps" in relation
to headwear.
Ser. No. 75/377,561
8
Fossil Group, 49 USPQ2d 1451 (TTAB 1998) and In re Pollio Dairy
Products Corp., Inc., 8 USPQ2d 2012 (TTAB 1988). Consequently,
it would not be reasonable to assume that registrant's mark KAPS
would be presented with the design element appearing in
applicant's mark.
In view of the foregoing, notwithstanding the identity of
the goods in this case, we conclude that the differences in the
respective marks makes confusion unlikely.8
Decision: The refusal to register is reversed.
8 In a footnote to his appeal brief, the Examining Attorney for the
first time raises the issue of the potential
discriptiveness/genericness of the word CAPS in relation to some of
applicant's identified goods, i.e., headwear. Without commenting on
the propriety of that claim, if the Examining Attorney believed an
additional issue needed to be addressed prior to appeal, he should have
filed the appropriate request for remand of the application as set
forth in Trademark Rule 2.142(f)(6).