PAHL, L.P.

Trademark Trial and Appeal Board

Apr 20, 2006

No. 75125078 (T.T.A.B. Apr. 20, 2006)

Hearing: Mailed:
November 30, 2005 April 20, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re PAHL, L.P.
________

Serial No. 75125078
_______

Scott B. Schwartz of Cozen O’Connor, P.C. for PAHL, L.P.

Jeri J. Fickes, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Walters, Grendel and Zervas, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

PAHL, L.P. has appealed from the final refusal of the
trademark examining attorney to register

as a trademark for the following goods, as amended:
“[a]ccessories, namely, earrings and ornamental
lapel pins” in International Class 14;

THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 75125078
2
“[c]lothing, namely, t-shirts, sweat shirts, knit
shirts, jerseys, jackets, coats, shorts, pants,
sweat pants, socks, shirts and rainwear;
headwear; and footwear” in International Class
25; and

“[a]ccessories, namely, ornamental novelty
buttons; ornamental novelty pins; and hair
twists, namely, hair ornaments in the nature of
fabric covered elasticized hair holders” in
International Class 26.1

The examining attorney has refused registration pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on
the ground that applicant’s mark so resembles the
previously registered mark PHANTOMS (in standard character
form) for “clothing; namely, t-shirts, sweatshirts, and
sweat pants” in International Class 25,2 that, as intended
to be used on applicant’s identified goods, applicant's
mark is likely to cause confusion or mistake or to deceive.
Applicant has appealed the final refusal. Both
applicant and the examining attorney have filed briefs. An
oral hearing was held on November 30, 2005.
We affirm the Section 2(d) refusal of registration
with respect to the goods in International Class 25 and
reverse the Section 2(d) refusal with respect to the goods
in International Classes 14 and 26.

1 Application Serial No. 75125078, filed June 25, 1996,
asserting a bona fide intention to use the mark in commerce under
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
2 Registration No. 1980328, issued June 18, 1996. Section 8 and
15 filings accepted and acknowledged.
Serial No. 75125078
3
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We initially consider the similarities between
registrant's and applicant's goods in International Class
25. Both applicant and registrant identify t-shirts, sweat
shirts and sweat pants in their identifications of goods,
without any limitations. Thus, applicant's and
registrant’s goods are identical in part.
Applicant has argued that because “purchasers of goods
bearing sports logos have come to expect that these goods
have an association with the team which uses that
particular logo … it is unlikely that purchasers of the
goods which have the distinctive ‘PHANTOMS & Mask Design’
Serial No. 75125078
4
would be confused or deceived into believing that the
source of the goods is other than the source of the sports
team.” Applicant adds that “sports fans specifically seek
out goods bearing the ‘PHANTOMS & Mask Design’ and would
not likely be satisfied with goods simply bearing the word
‘Phantoms.’” Brief at pp. 6 – 7. Applicant's argument is
premised on the assumption that all of applicant's
customers are sports fans, and ignores those potential
purchasers who are not sports fans and who would purchase
applicant's goods because of the style, color or design of
such goods. Also, applicant's argument ignores
registrant’s potential customers, i.e., those persons who
may or may not be sports fans, but who are familiar with
registrant's goods, and who, upon perceiving the term
PHANTOMS on applicant's goods, will purchase applicant's
goods rather than registrant’s goods, believing they are
registrant's goods. We therefore find applicant's argument
unpersuasive.
Turning now to the International Class 14 and 26
goods, the evidence of record offered to show a
relationship between applicant’s and registrant’s goods
consists of (a) a first registration for, inter alia, t-
shirts and earrings; (b) a second registration for goods
and services in seven International Classes including
Serial No. 75125078
5
various clothing items such as t-shirts, sweatshirts and
sweat pants, jewelry (which would include earrings) and
hair ornaments; and (c) a printout of five pages “from
www.bananarepublic.com … showing a retail clothing source
offering for sale both hair ornaments and jewelry,” as well
as “men’s apparel” and “women’s apparel,” attached to the
June 28, 2004 Office action. Brief at unnumbered p. 6.
The printout shows that brooches, hair ties and earrings
may be purchased through the same website.3
The examining attorney’s evidence is insignificant in
quantity and hence does not establish that a relationship
exists between clothing items such as t-shirts, sweatshirts
and sweat pants and applicant's International Class 14 and
26 goods. Moreover, there are obvious differences among
the goods, with registrant’s goods used to clothe the body
and applicant's International Class 14 and 26 goods used
for ornamentation and other purposes. We thus find that on
the present record, the examining attorney has not
established prima facie that registrant’s and applicant’s
International Class 14 and 26 goods are similar or related
to one another.

3 The printouts do not specifically state that t-shirts,
sweatshirts or sweat pants, i.e., registrant’s goods, are offered
for sale on the website.

Serial No. 75125078
6
We next consider the similarities of the marks. We do
not consider whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar that confusion as to the
source of the goods offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Also,
we are guided by the well-established principle that
although the marks must be considered in their entireties,
there is nothing improper, under appropriate circumstances,
in giving more or less weight to a particular portion of a
mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985).
In this case, we are in agreement with the examining
attorney that it is appropriate to give greater weight to
the word portion of the mark when considering applicant's
mark as a whole. It is by the word PHANTOMS that
purchasers will refer to the goods, and it is the word,
rather than the design feature or even the stylized
lettering, that will have a greater impression on them.
See Id. at 751 (it is well established that there is
nothing improper in stating that, for rational reasons,
Serial No. 75125078
7
more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on the
consideration of the marks in their entireties); Ceccato v.
Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d
1192 (TTAB 1994); In re Appetito Provisions Co., 3 USPQ2d
1553 (TTAB 1987). Moreover, the design element in
applicant's mark, which applicant has characterized as a
mask4 and which includes two eyes glaring through the mask,
reinforces the meaning of the design in the mark as
depicting a “phantom.”5 In addition, the lettering in the
mark is in a font consistent with the “phantom” label for
the design.6
In view of the foregoing, we find that applicant's
mark is identical in sound and connotation to the wording

4 In its reply brief at p. 2, applicant characterizes the mask as
“highly reminiscent of a hockey goalie’s mask.” There is no
evidence in the record to support applicant's characterization of
the mask as “a hockey goalie’s mask.”
5 We take judicial notice of the following definition of
“phantom” from the online version of The American Heritage
Dictionary of the English Language; “1. a. Something apparently
seen, heard, or sensed, but having no physical reality; a ghost
or an apparition. … 3. Something dreaded or despised.” See
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983) (the Board may take judicial notice of
dictionary definitions).
6 In this regard, the examining attorney states: “There is an
association between phantoms and masks: both represent hidden or
unknown identities, therefore one of the ways of physically
embodying a phantom is to show a mask wearing figure, such as the
well-known depiction of the Phantom of the Opera.” Brief at
unnumbered p. 3.

Serial No. 75125078
8
in registrant’s mark, which only consists of the term
“phantoms” (in plural too).
We next consider the commercial impression of the
marks. Applicant argues that “the overall commercial
impression of Applicant's mark is strikingly different from
the mark in the cited registration and wholly distinguished
through the use of the distinctive ‘Mask’ design [and that]
[t]he use of this ‘Mask’ design in Applicant’s [mark] …
immediately conveys an association with the Philadelphia
Phantoms ice hockey team.” Brief at pp. 4 –5. We
disagree. Applicant's argument is premised on the
assumption that the mask design is well known, and there is
no evidence of record to support applicant's assumption.
Also, those who encounter both applicant’s and registrant’s
goods and who know of applicant's mask design would likely
believe that applicant endorsed or in some way was
associated with registrant’s goods in that both marks
contain the term PHANTOMS. See In re Dennison Mfg. Co.,
229 USPQ 141 (TTAB 1986) (“It is a general rule that the
addition of extra matter such as a house mark or trade name
to one of two otherwise confusingly similar marks will not
serve to avoid a likelihood of confusion between them.”);
In re Riddle, 225 USPQ 630 (TTAB 1985).
Serial No. 75125078
9
Rather, inasmuch as both marks refer to “phantoms,”
and PHANTOMS is the only wording in the marks, we find too
that they are identical in commercial impression.
As for the appearance of the marks, we note that
registrant’s mark is in standard character form. As such,
registrant is not limited to presentation of its mark in
any particular stylization and may display its mark in
various formats or fonts, in upper or lower case letters,
and may, in choosing a particular form of display, end up
with a mark very similar in appearance to the word in
applicant's mark. See Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937 (Fed. Cir. 1983); 37 C.F.R. §2.52(a).
Thus, we find too that the marks are similar in appearance.
Applicant points out that seven registrations exist
which include the term PHANTOM or PHANTOMS “for the same or
similar goods [and] eliminates any likelihood of
confusion.”7 Applicant maintains that “these other
registrations demonstrate the narrow scope of protection
afforded to the Registrant’s mark”; and that consumers have

7 Applicant submitted a copy of each registration – and also a
printout of certain pages of its website - for the first time
with its appeal brief. The examining attorney did not object to
the submission of the registrations or the printouts after the
filing of the appeal, and, in fact, discussed the registrations
in her brief. In view thereof, any objection the examining
attorney may have had to the late-submission of the registrations
and printouts is deemed waived by the examining attorney.

Serial No. 75125078
10
learned to distinguish between the coexisting ‘Phantom’
marks and can distinguish between them based on small
differences in the marks and the goods.” Brief at p. 9.
Third-party registrations, however, by themselves, are
entitled to little weight on the question of likelihood of
confusion. Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d
200, 22 USPQ2d 1542 (Fed. Cir. 1992); In re Hub
Distributing, Inc., 218 USPQ 284 (TTAB 1983). Such
registrations are not evidence of what happens in the
marketplace or that the public is familiar with the use of
those marks. AMF Inc. v. American Leisure Prods., Inc.,
474 F.2d 1403, 177 USPQ 268 (CCPA 1973); National
Aeronautics and Space Administration v. Record Chemical
Co., 185 USPQ 563 (TTAB 1975). Moreover, as to the marks
which are the subjects of these seven registrations, one is
for “soccer balls,”8 which are not goods for which applicant
seeks registration. Additionally, four of the
registrations include additional wording which makes the
connotations and commercial impressions of these marks
different from those of applicant's mark.9 The remaining
two registrations, i.e., for PHANTOMS TORONTO (and design)

8 Registration No. 2864587 for PHANTOM.
9 These four marks are Registration No. 2531861 for PHANTOM HORSE
(and design), Registration No. 2685252 for PHANTOM FIREWORKS.COM
(and design), Registration No. 2553349 for FORT PHANTOM and
Registration No. 2922270 for PHOEBUS PHANTOMS.
Serial No. 75125078
11
and TORONTO PHANTOMS,10 are simply insufficient in number to
be persuasive.
Applicant also argues that its goods are intended to
be sold at “games and in sporting goods stores and
department stores”; and that “[p]otential consumers seeing
the ‘PHANTOMS & Mask Design’ on clothing, headwear,
footwear and accessories will immediately believe and
understand that the source of the good is the same as the
Philadelphia Phantoms ice hockey team” and not “consider
Applicant's goods sold under its mark to be the same goods
or emanating from the same source as t-shirts, sweatshirts
and sweat pants sold under the mark “PHANTOMS” alone.”
Brief at p. 5. However, applicant has not limited its
identification of goods to specify that its goods will only
be sold at games and in sporting goods stores and
department stores. Rather, we must consider that
applicant's goods may be sold in all channels of trade that
are appropriate for the sale of applicant's clothing,
including general clothing stores, and not merely the
specific channels of trade in which applicant’s represents

10 Registration Nos. 2745968 and 2541755, respectively.
Serial No. 75125078
12
its clothes are intended to be sold. See In re Elbaum, 211
USPQ 639 (TTAB 1981).11
Thus, in view of the foregoing, we find that
applicant's mark and the cited marks are similar or even
identical in sound, appearance, connotation and commercial
impression.
We therefore hold that (a) with respect to the goods
in International Class 25, when applicant's mark and the
registered mark PHANTOMS are used on goods which are
identical in part and sold to ordinary purchasers,
confusion is likely; and (b) with respect to the goods in
International Classes 14 and 26, the examining attorney has
not met her burden of demonstrating that the goods are
related so that consumers who would come into contact with
both would likely be confused by applicant's use of its
mark. Additionally, we note that on a different record
than the one before us, we might have arrived at a

11 The examining attorney, in discussing this argument, refers to
printouts of applications and registrations which show “teams
with variant marks registered both with and without designs.”
Our inspection of these printouts reveals that a number of them
are the subject of pending applications, and are not
registrations. The probative value of these applications is
minimal because they are only evidence that the applicants listed
therein have applied for registration for marks on the identified
goods. See In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB
2002). Of the few remaining registrations, they fail to show “a
common practice of sports teams using variations of a core mark
….” Brief at unnumbered p. 3.

Serial No. 75125078
13
different result with respect to the goods in International
Classes 14 and 26.
DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act is affirmed for the goods
in International Class 25 and is reversed for the goods in
International Classes 14 and 26.