No Fear, Inc.

Trademark Trial and Appeal Board

Dec 30, 1998

No. 74598109 (T.T.A.B. Dec. 30, 1998)

Paper No. 12
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC 30 ,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re No Fear, Inc.
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Serial No. 74/598,109
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Kit M. Stetina of Stetina Brunda Garred & Brucker for No
Fear, Inc.
Kim Saito, Trademark Examining Attorney, Law Office 109
(Deborah S. Cohn, Managing Attorney)
_______
Before Sams, Simms and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
No Fear, Inc. has filed an intent-to-use application
to register the mark ONLY THE BRAVE for “wearing apparel,
namely, t-shirts, shirts, shorts, pants, sweat shirts,
sweat pants, hats, visors, shoes, sandals, and belts.”1

1 Ser. No. 74/598,109, filed November 14, 1994. The application
is based on applicant’s bona fide intention to use the mark in
commerce.
Ser. No. 74/598109
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, if applied to its identified
goods, would so resemble the registered mark owned by
Diesel, S.A. (a corporation of Italy) and shown below
for “trousers, pants, jeans, shorts, skirts, overcoats,
raincoats, jackets, windresistant jackets, cabans, blazers,
sweaters, jerseys, vests, cardigans, shirts, t-shirts,
blouses, dresses, suits, tracksuits, sweatshirts,
pullovers, overalls”2; and for “footwear, namely, shoes,
boots and slippers, belts,”3 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested. We affirm the refusal to register.

2 Reg. No. 1,605,656, issued July 10, 1990, Section 8 affidavit
accepted, Section 15 affidavit acknowledged. The claimed dates
of first use and first use in commerce are February 2, 1982 and
July 31, 1982, respectively.
3 Reg. No. 1,939,141, issued December 5, 1995. The registration
is based on Sections 44(d) and (e) of the Trademark Act. The
Ser. No. 74/598109
3
The Examining Attorney essentially takes the position
that the word portion of the cited registered mark is the
dominant portion of said mark; that applicant has adopted a
portion of the registrant’s mark as applicant’s entire
mark; that the respective goods are identical in part and
are otherwise all related clothing items; and that the
goods are sold to the same general purchasers through the
same channels of trade. The Examining Attorney submitted
Webster’s II New Riverside University Dictionary definition
of the term “brave--n. 1. A North American Indian warrior”.
Applicant essentially contends that the dominant
portion of the cited mark is the “Mohawk Indian head”,
while the words DIESEL-ONLY-THE-BRAVE-DIESEL are in small
print and must be read in a different manner because they
appear in a circle around the design portion of the mark;
that the purchasing public would remember the picture of
the Mohawk Indian as the overall impression of the
registrant’s mark; and that the word DIESEL, which is the
registrant’s “company trademark”, is also more likely to be
remembered by purchasers.
Turning first to a consideration of the respective
goods, both applicant’s and the cited registrant’s goods

registration issued in six classes. The Examining Attorney cited
only the Class 25 goods referred to above.
Ser. No. 74/598109
4
are various clothing items. In fact, several of the
clothing items listed in applicant’s identification of
goods are precisely the same as certain of the registrant’s
goods, e.g., t-shirts, shirts, shorts, pants, sweat shirts,
shoes and belts4. Thus, the involved goods are virtually
identical.5
The Examining Attorney has made of record copies of
several third-party registrations, all but two of which
issued on the basis of use in commerce, to demonstrate that
“shirts, shorts, pants, hats, belts and footwear are found
under the same mark.” (Final Office action, p. 2.)
Third-party registrations are not evidence of
commercial use of the marks shown therein, or that the
public is familiar with them. Nevertheless, third-party
registrations which individually cover a number of

4 In footnote 1, page 6 of applicant’s December 20, 1996 response
to an Office action, applicant argued that if the Examining
Attorney maintained that “the slight overlap in goods precludes
registration”, then applicant agreed to amend the identification
of goods to read “wearing apparel, namely, T-shirts, shirts,
shorts, pants, sweatshirts, sweat pants, hats and visors, sold
solely through retail clothing stores”. The Examining Attorney
did not comment on applicant’s proffered amendment; and applicant
never referred to this proposed amendment again. As applicant
did not press this matter, the proffered amendment to applicant’s
identification of goods will not be considered by the Board. Due
to the similar goods of both applicant and registrant, even if
entered, applicant’s proposed amendment to its identification of
goods would not change the result we reach in this case.
5 Applicant acknowledged that “many of the goods sold by
Registrant are the same as those sold by Applicant.”
(Applicant’s brief, p. 12).
Ser. No. 74/598109
5
different items and which are based on use in commerce have
some probative value to the extent they suggest that the
listed goods emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467 (TTAB 1988).
Regarding the respective trade channels and
purchasers, clearly the respective goods (including several
identical clothing items) could be offered and sold to the
same class of purchasers through the same stores and other
channels of trade for clothing.
Turning next to a consideration of the respective
marks, generally the word portion of a mark, i.e., the
portion utilized in calling for the goods, is most likely
to be impressed in the purchaser’s memory and to serve as
the indicium of origin. See Consumers Building Marts, Inc.
v. Mr. Panel, Inc., 196 USPQ 510 (TTAB 1977). In this
case, both applicant’s mark, and registrant’s mark include
the identical wording, ONLY THE BRAVE. The only spoken
portion of the marks are ONLY THE BRAVE and DIESEL ONLY THE
BRAVE DIESEL. A purchaser familiar with registrant’s goods
sold under the registered mark with three prominent
components (namely, the corporate name-DIESEL, the words
ONLY THE BRAVE, and the Indian-head design) would, upon
Ser. No. 74/598109
6
seeing applicant’s mark on identical or closely related
goods, assume that applicant’s goods come from the same
source as registrant’s goods. This is so because
applicant’s mark consists solely of a prominent component
of registrant’s compound mark. That is, applicant’s mark
has nothing to distinguish it from registrant’s mark.
Moreover, the differences are not likely to be recalled by
purchasers seeing the marks at separate times. The
emphasis in determining likelihood of confusion is not on a
side-by-side comparison of the marks, but rather must be on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of the
many trademarks encountered; the purchaser’s fallibility of
memory over a period of time must also be kept in mind.
See Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573 (CCPA 1973); Mucky Duck Mustard Co.,
supra; and Edison Brothers Stores v. Brutting E.B. Sport-
International, 230 USPQ 530 (TTAB 1986).
Even if purchasers realize that applicant’s mark is
different from registrant’s mark, they may believe that
applicant’s mark is a revised version of registrant’s mark.
Thus, the marks are similar.
Any doubt on the question of likelihood of confusion
must be resolved against the newcomer as the newcomer has
Ser. No. 74/598109
7
the opportunity of avoiding confusion, and is obligated to
do so. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988); and Hilson Research Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423, at
1440 (TTAB 1993).
Based on the identity of the wording ONLY THE BRAVE,
the identity and/or close relationship of the goods, and
the identity of the trade channels, we find that there is a
likelihood that the purchasing public would be confused if
applicant were to use ONLY THE BRAVE as a mark for various
clothing items. See In re E. I. duPont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Decision: The refusal to register under Section 2(d)
is affirmed.
J. D. Sams
R. L. Simms
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board