NTA Enterprise, Inc.

Trademark Trial and Appeal Board

Mar 5, 2013

No. 77712818 (T.T.A.B. Mar. 5, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 5, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re NTA Enterprise, Inc.
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Serial No. 77712818
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Blynn L. Shideler of The BLK Law Group for NTA Enterprise, Inc.

Susan A. Richards, Trademark Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).
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Before Holtzman, Taylor, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On April 13, 2009, applicant NTA Enterprise, Inc. applied to register the
composite mark shown below:

Serial No. 77712818
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for “gloves; headwear; jackets; neckwear; pullovers; shirts” in International Class 25
pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).1 Registration
has been refused on the ground of likelihood of confusion with the mark
ARMADILLOS, in standard character form, registered for “shoes” in International
Class 25.2 The appeal is fully briefed.
Record
The record on appeal comprises the following evidence submitted by the
examining attorney: (1) screenshots of pages from two websites offering both
footwear and clothing items, including shirts and jackets,3 and (2) 17 use-based
registrations covering both shoes or footwear and one or more of the items of
clothing identified in the application.4
Applicant submitted printouts of USPTO records relating to five additional
registrations incorporating the word “ARMADILLO.”5 Four of those registrations
expired or were canceled from four to seventeen years before they were submitted,
and only one (No. 986486) had identified any goods in Class 25.6 The fifth

1 Serial No. 77712818, based on a claim of first use and first use in commerce on September
1, 2004.
2 Registration No. 1229981, issued March 8, 1983, renewed June 13, 2003. The examining
attorney also cited two potentially conflicting prior pending applications that subsequently
were abandoned.
3 See June 30, 2009 Office action (www.llbean.com and www.reebok.com).
4 See Final Office action, September 30, 2011.
5 See Response to Office action, December 30, 2009.
6 Registration Nos. 986486; 1285742; 1356476; and 1687454.
Serial No. 77712818
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registration is for “rubber in sheet form for lining coal and gravel chutes and the
like” in International Class 17.7
Applicant also included references to other applications and registrations
within its reply brief. However, this evidence was not timely submitted, and we
have given it no consideration. Trademark Rule § 2.142(d), 37 C.F.R. § 2.142(d); In
re Fitch IBCA Inc., 64 USPQ2d 1058, 1059 n.2 (TTAB 2002); In re Trans Cont’l
Records Inc., 62 USPQ2d 1541, 1541 n.2 (TTAB 2002); Trademark Trial and Appeal
Board Manual of Procedure (TBMP) §§ 1203.02(e), 1207.01 (3d ed. rev. 1 2012). We
note that applicant did not file a request to suspend the appeal and remand for
additional evidence pursuant to Trademark Rule § 2.142(d) and TBMP 1207.2.8 See
also In re Max Capital Group Ltd., 93 USPQ2d 1243, 1244 n.4 (TTAB 2010) (“If
applicant had wished to make this registration of record, it had the opportunity to
file a request for remand, and it did not.”).
Analysis
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); 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, two
key considerations are the similarities between the marks and the similarities

7 Registration No. 501325.
8 Applicant’s comment: “Should the examiner feel it is necessary to remand this case and
consider the alleged ‘new’ evidence, she is invited to do so should it materially advance this
case,” is insufficient. Reply Brief at unnumbered page 9.
Serial No. 77712818
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between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the
goods and differences in the marks.”); In re SL&E Training Stable, Inc., 88 USPQ2d
1216, 1217 (TTAB 2008) (“In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods.”). We consider each of the du Pont factors as to which applicant or the
examining attorney submitted evidence.
A. Similarity of the Goods and Channels of Trade
We turn first to the similarity of the goods and their channels of trade, the
second and third du Pont factors, respectively. The goods need not be identical or
even competitive in order to support a finding of a likelihood of confusion. Rather, it
is enough that the goods are related in some manner or that some circumstances
surrounding their marketing are such that they would be likely to be seen by the
same persons under circumstances which could give rise, because of the marks used
therewith, to a mistaken belief that they originate from or are in some way
associated with the same producer or that there is an association between the
producers of the respective goods. In re Melville Corp., 18 USPQ2d 1386, 1388
(TTAB 1991); Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980);
Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978).
Serial No. 77712818
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Registrant’s goods are “shoes.” Applicant’s goods are “gloves; headwear;
jackets; neckwear; pullovers; shirts.” Applicant admits that the goods are related.9
The Board has often found apparel of the types identified in the application related
to shoes. See In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s
shoes related to outer shirts; collecting cases); see also, e.g., In re Melville Corp., 18
USPQ2d at 1388 (women’s pants, blouses, shorts and jackets related to women’s
shoes); B. Rich’s Sons, Inc. v. Frieda Originals, Inc., 176 USPQ 284, 285 (TTAB
1972) (shoe’s and women’s wearing apparel closely related); Craddock-Terry Shoe
Corp. v. Billy Boy Co., 133 USPQ 218, 219 (TTAB 1962) (jackets related to shoes).
In addition, the examining attorney submitted 17 use-based, third-party
registrations covering both shoes or footwear and one or more of the items of
clothing identified in the application. These registrations show that applicant’s and
the prior registrant’s goods are of a kind that may emanate from a single source
under a single mark. In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB
2009). Although these registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them, they nonetheless have probative
value to the extent that they serve to suggest that the identified goods are products
which are produced and/or marketed by a single source under a single mark. See
Venture Out Props. LLC v. Wynn Resorts Holdings LLC, 81 USPQ2d 1887, 1893
(TTAB 2007). Moreover, both the application and the registration are unrestricted.
As noted supra, the examining attorney introduced screenshots of pages from two

9 Reply Brief at unnumbered page 10.
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websites offering both footwear and items of clothing identified in the application,
demonstrating that these goods travel through the same trade channels.
We find that applicant’s goods move in the same channels of trade and are
sufficiently related to those in the prior registration that source confusion is likely.
In our likelihood of confusion analysis, these findings under the second and third du
Pont factors support a conclusion that confusion is likely.
B. Similarity of the Marks
We next consider the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of “the marks in their entireties as to appearance, sound,
connotation, and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting du Pont, 177 USPQ at 567). In comparing the marks, we are
mindful that the test is not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks are sufficiently similar
in terms of their overall commercial impression so that confusion as to the source of
the goods offered under the respective marks is likely to result. San Fernando Elec.
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d, No. 92-1086 (Fed. Cir. June 5, 1992).
Because the similarity or dissimilarity of the marks is determined based on
the marks in their entireties, our 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 Nat’l Data Corp., 753 F.2d 1056, 224
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USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co.,
667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark
should not be dissected and considered piecemeal; rather, it must be considered as a
whole in determining likelihood of confusion.”). On the other hand, different
features may be analyzed to determine whether the marks are similar. Price Candy
Co. v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In
fact, there is nothing improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data
Corp., 224 USPQ at 751.
Except for the plural-forming “s” at the end of the prior registered mark, the
literal portion of Applicant’s mark is identical to the registered mark: the single
arbitrary and distinctive word ARMADILLO. It is well-established that the
singular and plural forms of the same term do not generally create such different
commercial impressions that confusion would be avoided. See, e.g., Wilson v.
Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957); In re Strategic Partners,
Inc., 102 USPQ2d 1397, 1399 (TTAB 2012); Chicago Bears Football Club, Inc. v.
12th Man/Tennessee LLC, 83 USPQ2d 1073, 1077 (TTAB 2007). We find that there
is no material difference between the singular ARMADILLO and the plural form
ARMADILLOS as used in these marks.
We recognize that applicant’s mark also incorporates a stylized design of an
armadillo as a prominent component. However, a number of our cases “reflect the
Serial No. 77712818
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principle that if a mark comprises both a word and a design, the word is normally
accorded greater weight because it would be used by purchasers to request the
goods or services.” M.C.I. Foods, Inc. v. Brady Bunte, 96 USPQ2d 1544, 1551
(TTAB 2010). We find that the wording of the applicant’s mark is the dominant
part of that mark. See In re Strathmore Prods., Inc., 171 USPQ 766, 767 (TTAB
1971) (stating that for composite marks including a word and a design, which of the
two features dominates the mark is usually controlling in determining likelihood of
confusion).
Furthermore, as the examining attorney correctly notes, the doctrine of legal
equivalents provides that a pictorial representation and its literal equivalent
impress the same mental image on purchasers. “It is established that where a
mark comprises a representation of an animal or individual and another mark
consists of the name of that animal or individual, such designations are to be
regarded as legal equivalents in determining likelihood of confusion under the
Trademark Act.” Squirrel Brand Co. v. Green Gables Inv. Co., 223 USPQ 154, 155
(TTAB 1984); see also Izod, Ltd. v. Zip Hosiery Co., 405 F.2d 575, 160 USPQ 202,
204 (CCPA 1969) (finding mark TIGER HEAD for men’s work socks confusingly
similar to registered design of a tiger head for men’s and ladies’ shirts); Puma-
Sportschuhfabriken Rudolf Dassler KG v. Garan, Inc., 224 USPQ 1064, 1066 (TTAB
1984) (finding designs of mountain lion likely to be confused with PUMA, both for
shirts); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974) (finding design of eagle
lined for the color gold likely to cause confusion with GOLDEN EAGLE and design
Serial No. 77712818
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of an eagle, both for clothing, and stating that “the pictorial representation and its
literal equivalent conjure up the same mental image or suggestion”). Thus, the
depiction of an armadillo in applicant’s mark reinforces the wording of that mark,
which it shares with the cited registration, increasing the likelihood of confusion.
For all of the reasons discussed above, we find applicant’s mark
ARMADILLO and design to be highly similar to the cited mark ARMADILLOS in
appearance, sound, connotation, and commercial impression. Therefore, the first
du Pont factor strongly supports a conclusion that confusion is likely.
C. Absence of Confusion
Applicant argues that it has used its mark concurrently with the cited
registration continuously for more than eight years with no evidence of actual
confusion.10 This argument pertains to the seventh and eighth du Pont factors, i.e.,
the nature and extent of any actual confusion and the length of time during and
conditions under which there has been concurrent use without evidence of actual
confusion. Du Pont, 177 USPQ at 567.
The lack of evidence of actual confusion carries little weight, J. C. Hall Co. v.
Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965), especially in
this ex parte context. The record is devoid of probative evidence relating to the
extent of use of applicant’s and registrant’s marks and, thus, whether there have
been meaningful opportunities for instances of actual confusion to have occurred in
the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d

10 Appeal Brief at 1; Reply Brief at unnumbered page 2.
Serial No. 77712818
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1842, 1847 (Fed. Cir. 2000); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992). Accordingly, the du Pont factors regarding the length of time
during and conditions under which there has been contemporaneous use without
evidence of actual confusion are considered neutral.
D. Other du Pont Factors
Finally, we turn to applicant’s arguments concerning several other du Pont
factors. First, applicant alleged that the cited registration is weak due to a crowded
field of coexisting marks incorporating the term ARMADILLO for related goods (du
Pont factor six). We note that third-party registrations have little probative value
as to this factor because they are not evidence of use. See AMF Inc. v. American
Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re Max
Capital Group Ltd., 93 USPQ2d at 1248. As previously noted, applicant has made
of record only one such existing third-party registration, which is for goods
unrelated to shoes or clothing. This does not establish that the cited mark is weak.
We next address applicant’s argument that its goods are purchased by
sophisticated “professional buyers”11 (du Pont factor four). There is no evidence
supporting this assertion. Moreover, because neither the identification in the
application nor in the cited registration contains any limitations, we must assume
that the goods move in all normal channels of trade and are available to all classes
of purchasers. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344,

11 Reply Brief at unnumbered page 9.
Serial No. 77712818
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98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370,
1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Applicant also advanced unsupported arguments as to du Pont factors five,
nine, eleven, and twelve,12 but we do not find them persuasive. See In re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (“Not all of the
DuPont factors are relevant to every case, and only factors of significance to the
particular mark need be considered.”).
Balancing the Factors
We have considered all of the evidence of record as it pertains to the relevant
du Pont factors. We have carefully considered applicant’s arguments and evidence,
even if not specifically discussed herein, but have not found them persuasive. In
view of our findings that the marks are highly similar and that the goods are
related and move in the same or similar channels of trade, we find that applicant’s
mark ARMADILLO and design for “gloves; headwear; jackets; neckwear; pullovers;
shirts” is likely to cause confusion with the registered mark ARMADILLOS.
Conclusion
Decision: The examining attorney’s refusal to register applicant’s mark
under Section 2(d) of the Trademark Act is affirmed.

12 See Appeal Brief at 4-5.