Oakley, Inc.

Trademark Trial and Appeal Board

Apr 6, 2011

No. 77668645 (T.T.A.B. Apr. 6, 2011)

Mailed:
April 6, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Oakley, Inc.
________

Serial No. 77668645
_______

Janet Robertson Kaufman of Weeks, Kaufman, Nelson & Johnson
for Oakley, Inc.

Eli J. Hellman, Trademark Examining Attorney, Law Office
112 (Angela B. Wilson, Managing Attorney).
_______

Before Quinn, Wellington, and Wolfson, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Oakley, Inc. has applied to register the mark 12 GAUGE
(in standard characters) on the Principal Register for
“timepieces, namely, watches and watch bands” in Class 14.1
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), because of the registered mark TWELVE
GAUGE CLOTHING (in standard characters) for “clothing,

1 Application Serial No. 77668645, filed on February 11, 2010,
based on an allegation of a bona fide intent to use the mark in
commerce.

THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Serial No. 77668645
2
namely, leather jackets, pants, boots, denim pants,
jackets, and shirts” in Class 25.2 The word “Clothing” has
been disclaimed.
When the refusal was made final, this appeal followed.
As a preliminary matter, we sustain the examining
attorney’s objection to applicant’s submission of materials
that were attached to its appeal brief and were not
previously submitted. The materials were not timely
submitted and thus the Board has not considered them. Rule
2.142(d).
Inasmuch as the refusal is based on a likelihood of
confusion, we must analyze the evidence in light of the
factors set out by the Court of Customs and Patent Appeals
in 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 Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he fundamental inquiry mandated by § 2(d) goes to

2 Registration No. 3613842 issued on April 28, 2009. The
registered mark appears in lower and upper case lettering;
however, since the registration contains a standard character
claim, the difference in case lettering is insignificant and, for
ease of reference, we hereinafter reference the registered mark
in all capital lettering.

Serial No. 77668645
3
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).
We begin our analysis by comparing the marks. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005). Here, the marks are very similar inasmuch as
applicant’s mark is nearly identical to the dominant
portion of the registered mark. As the examining attorney
points out, the wording 12 GAUGE and TWELVE GAUGE are legal
equivalents; applicant’s mark merely employs the numerical
term, 12, and the registered mark spells it out, TWELVE.
The addition of the generic term CLOTHING in the registered
mark has little, if any, significance in distinguishing the
two marks. Moreover, because applicant’s mark and the
registered mark appear in their drawings in standard
character format, we must assume the marks may be displayed
in the same manner, e.g., in a specific font or stylized
lettering. Citigroup Inc. v. Capital City Bank Group,
Inc., ___ F.3d ___, ___ USPQ2d ___, slip op. at 12-13 (Fed.
Cir. Mar. 28, 2011).
As to the commercial impression or connotation,
applicant argues that the registrant’s mark “brings to mind
Serial No. 77668645
4
a clothing line, while the other [applicant’s mark] a shot
gun.” Brief, p. 5. The examining attorney argues that
both marks are suggestive of twelve gauge shotguns. On
this record, the term 12 GAUGE or TWELVE GAUGE appears to
be arbitrary with respect to clothing and watches. Thus,
should either term be understood by consumers as having a
special meaning, e.g., evoking a twelve gauge shotgun, we
must assume that same meaning can be attributed to both
marks. In terms of connotation and commercial impression,
the marks are essentially the same.
Applicant’s reliance on the generic term CLOTHING in
registrant’s mark to distinguish the respective marks is
misplaced. Applicant posits the following hypothetical and
attempts to reason, “...if the Twelve Gauge Clothing
company [registrant] were to sell watches, a consumer might
wonder why a clothing company was selling watches.
Applicant submits that the overall commercial impression of
the marks is sufficiently different so as to avoid any
confusion as to source.” Reply Brief, p. 2. Applicant’s
reasoning is off. Although generic terms such as
“clothing” inform the purchasers what the goods are, it is
for this very reason that this term has been disclaimed by
registrant and it has long been held that such terms
essentially have little to no significance as an indication
Serial No. 77668645
5
of source. See In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). It simply stands to
reason that consumers will generally focus on the
distinctive and non-descriptive portions of marks to
distinguish them from others. In this case, consumers will
focus on the distinctive portion of registrant’s mark,
TWELVE GAUGE, versus applicant’s applied-for mark 12 GAUGE,
and should they see those terms on related goods, they are
likely to mistakenly believe that 12 GAUGE watches derive
from the same source as the TWELVE GAUGE CLOTHING goods.
Of course, such a conclusion is premised on a determination
that the goods are sufficiently related such that consumers
would make such a connection.
This brings us to the du Pont factor involving the
relationship, if any, between the goods at issue in this
appeal. In considering this factor, we must compare the
goods as they are described in the identifications of goods
in the application and registration. Octocom Systems, Inc.
v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990); and Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood
of confusion must be decided on the basis of the respective
descriptions of goods”).
Serial No. 77668645
6
[It] has often been said that goods or services need not
be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
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 thereon, 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
each [party’s] goods or services.

In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
See also In re Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB
2001); and McDonald's Corp. v. McKinley, 13 USPQ2d 1895,
1898 (TTAB 1989).
Here, applicant’s goods are “watches and watch bands”
and the cited registered mark covers “clothing, namely,
leather jackets, pants, boots, denim pants, jackets, and
shirts.” The examining attorney argues that the respective
goods are related because they “commonly emanate from a
single source.” Brief, (unnumbered) p. 9. In support, he
has submitted approximately fifty use-based, third-party
registrations showing that entities have registered the
same mark for the same type of goods covered by applicant’s
and registrant’s marks.3 The examining attorney referenced
a sampling of excerpts from these registrations in his

3 Attached to Office Actions dated April 30, 2009 and January 19,
2010.
Serial No. 77668645
7
brief and we see no point repeating that information here.4
In addition, the examining attorney submitted internet
printouts from various websites showing the same trademark
being used in connection with watches and clothing,
including applicant’s own website.
Applicant has acknowledged “concededly many companies
sell both [watches and clothing],” but argues that
consumers would nonetheless “not automatically presume they
emanate from the same source.” Reply Brief, (unnumbered)
p. 2.
Based on the record and applicant’s concession, we are
convinced that applicant’s watches and registrant’s
clothing are sufficiently related for purposes of
likelihood of confusion. The examining attorney has shown
by way of the numerous third-party registrations that the
same goods may certainly emanate from a common source and
has provided some real examples of companies, including
applicant, who have used the same mark on both watches and
articles of clothing. See In re Albert Trostel & Sons, 29
USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1469 (TTAB 1988), aff'd (unpublished) No. 88-

4 We have reviewed the registrations and confirm that nearly all,
if not all, of the third-party registrations are based on use and
cover both watches (or watch bands) and articles of clothing such
as those listed in the cited registration.

Serial No. 77668645
8
1444 (Fed. Cir. Nov. 14, 1988) [Third-party registrations
which individually cover a number of different items and
which are based on use in commerce may serve to suggest
that the listed goods are of a type that may emanate from a
single source.] Thus while watches and clothing may be
inherently different in several respects, they are
sufficiently related such that when a substantially similar
mark is being used on both, consumers may mistakenly
believe the watches and clothing items are from the same
source.
As to the du Pont factors involving the channels of
trade and classes of purchasers, we initially note that the
respective identifications of goods in the application and
the cited registration do not have any restrictions in this
regard. Thus, we must assume that the respective goods
will be offered to all of the usual customers in all of the
normal trade channels for said goods. The classes of
consumers for both watches and clothing include the general
public.
Applicant argues that the purchasers of its watches
and watch bands are “highly sophisticated, and therefore,
less likely to confuse the source of the respective
products.” Brief, p. 8. However, we note that neither
applicant’s identification of goods nor the identification
Serial No. 77668645
9
of goods in the registration are limited to a certain class
of watches or clothing or otherwise constrained to a
certain price range for the goods. The evidence
demonstrates that on one website, www.brooksbrothers,
watches may vary in price from slightly under $500 to over
$2500 whereas the shirts, being sold under the same brand
name, are approximately $70. However, on another website,
www.shopadidas.com, watches range from $55-135 and a shirt
may be purchased for $30. On applicant’s own website,
www.oakley.com, the Oakley house brand is used on: denim
pants (starting at $39), shirts ($50) and watches (ranging
from $500-3,500). Because there is no restriction in
applicant’s identification of goods and, in spite of
evidence that some of applicant’s watches are advertised
for several hundred dollars, we must assume that applicant
may also sell watches in the $70 range. Thus, in addition
to the fact that the general public one is class of
purchasers for both applicant’s and registrant’s goods, we
cannot make a finding that the relevant consumers are
either sophisticated or would exercise a higher level of
care in making their purchases.
We are mindful of the limitations of the internet
evidence showing use of the same mark in connection with
both watches and clothing, namely, said goods are not shown
Serial No. 77668645
10
being advertised in proximity to one another (e.g., on the
same screenshot). Also, aside from www.nordstrom.com, the
websites are the manufacturers’ own and do not advertise
products emanating from more than one source.
Notwithstanding these shortcomings, the evidence
establishes that applicant’s watches and the various
articles of clothing listed in the registration are related
goods such that, when being sold under very similar marks
and to the same class of purchasers, confusion is likely.
Decision: The examining attorney’s refusal to
register applicant’s mark 12 GAUGE under Section 2(d) of
the Trademark Act is affirmed.