RRF Industries, Inc.

Trademark Trial and Appeal Board

Nov 9, 1998

No. 75136710 (T.T.A.B. Nov. 9, 1998)

Paper No. 13
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 9, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re RRF Industries, Inc.
________
Serial No. 75/136,710
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Myron Amer of Myron Amer, P.C. for applicant.
George M. Lorenzo, Trademark Examining Attorney, Law Office 109
(Deborah Cohn, Managing Attorney).
_______
Before Quinn, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
An application has been filed by RRF Industries, Inc.
to register the mark "WINDBREAKER REGATTA" and design, as
reproduced below,
Ser. No. 75/136,710
2
for "men’s, women’s, boys’ and girls’ jackets".1
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, when applied to its goods, so resembles the
mark "WINDBREAKER," which is registered for, inter alia, "men's,
young men's, boys', women's, misses' and girls' apparel for
sportswear, dress wear, work wear, and uniforms; namely, jackets
and coats of various stylings and lengths for outdoor and/or
indoor wear, vests, trousers (slacks, pants, shorts, and
breeches), suits, shirts, blouses; said articles of apparel
include those specifically adapted for particular uses; namely,
golf and ski jackets, parkas, suburban and car overcoats and top
coats, hunting and riding wear, rainwear, and swimwear; said
articles of apparel may be comprised in whole or in part of
woven, non-woven, and knitted fabrics (uncoated, coated, and/or
impregnated) ...,"2 as to be likely to cause confusion, mistake
or deception.

1 Ser. No. 75/136,710, filed on June 19, 1996, which alleges a bona
fide intention to use the mark in commerce. The term "WINDBREAKER"
has been voluntarily disclaimed. Moreover, although applicant
initially identified its goods as "men’s, women’s, boys’ and girls’
jackets, shirts (knit and woven)[,] pants and shorts," in its request
for reconsideration applicant requested that, "[i]f permitted, please
amend the description of the goods by deleting therefrom ’shirts (knit
and woven), pants and shorts’." While such request appears not to
have been considered and entered by the Examining Attorney (despite
the fact that applicant, in its initial brief, plainly states in the
first paragraph thereof that the goods identified in the application
have been "limited by amendment to ’men’s, women’s[,] boys’ and girls’
jackets’," we hereby deem the application to be so amended. We also
note, however, that regardless of whether or not such items as "shirts
(knit and woven)[,] pants and shorts" form part of the goods set forth
in the application, our decision in this case would be the same since,
like jackets, such items plainly are closely related to registrant’s
articles of wearing apparel.
Ser. No. 75/136,710
3
Applicant has appealed. Briefs have been filed,3 but
an oral hearing was not requested. We affirm the refusal to
register.
Applicant, notably without citation to a specific
dictionary, argues in its initial brief that:
Since 1972 the word WINDBREAKER is noted
in the dictionary as meaning "a short sports
jacket ... having a tight-fitting band at the
waist and cuffs, used for outdoor wear."
([U]nderlining added[.]) As such, it is
descriptive of [the] "jackets" recited in
applicant’s present description of goods"
[and has been disclaimed]....
....
In the [initial] Office Action ... the
trademark attorney contends:
"The dominant element[s] of the marks
are identical in appearance, sound,
connotation and commercial impression, namely
WINDBREAKER."
There is no support of record for
holding that a word, namely WINDBREAKER,
[which is] highly descriptive of "jackets"
would be dominant over REGATTA, which is
totally devoid of descriptiveness of the
goods involved ....

2 Reg. No. 941,015, issued on August 15, 1972, which sets forth dates
of first use of February 15, 1915; renewed. The registration also
covers "plastic films and foams; natural and synthetic leather; [and]
natural and synthetic fur".
3 Applicant, with its reply brief, has submitted certain excerpts from
various "DIALOG computer information sources" in the form of a
"printout evidencing the generic use of WINDBREAKER [consisting] of 58
pages with plural citations on each page." Such evidence, however,
not only is untimely under Trademark Rule 2.142(d) but, in any event,
constitutes a collateral attack upon the validity of the cited
registration which will not be considered in the context of an ex
parte appeal. Instead, if applicant believes the mark of the cited
registration to be generic for some of registrant’s goods, its remedy
lies in the commencement of a petition to cancel such registration as
to those goods. See, e.g., Section 14(3) of the Trademark Act, 15
U.S.C. §1064(3), and In re Calgon Corp., 435 F.2d 596, 168 USPQ 278,
280 (CCPA 1971).
Ser. No. 75/136,710
4
Logic dictates that in applicant’s two-
word mark ... REGATTA not WINDBREAKER is the
dominant word.
To a purchaser, the connotation of
applicant’s mark is that the product, if a
jacket, is a REGATTA-labelled "short sports
jacket ... having a tight-fitting band at the
wrist [sic] and cuff [sic], used for outdoor
wear."
Applicant, in view thereof, contends that there is simply no
likelihood of confusion.
The Examining Attorney, on the other hand, asserts in
his brief that "[w]hile the wording WINDBREAKER is found in the
dictionary, Webster’s clearly defines it as "[a] trademark for an
outer jacket having close-fitting often elastic cuffs and
waistband."4 Accordingly, and in light of TMEP §1213.10,5 the
Examining Attorney maintains that "applicant may not simply

4 Citing Webster’s II New Riverside University Dictionary (1994) at
1320, the Examining Attorney "requests that the Board take judicial
notice of the definition from Webster’s cited above." Inasmuch as it
is well settled that the Board may properly take judicial notice of
dictionary definitions, we have considered the definition of
"Windbreaker" furnished by the Examining Attorney as well as the
asserted dictionary definition thereof offered by applicant. See,
e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d
737, 97 USPQ 330, 332 (CCPA 1953) and University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
5 Specifically, such section, entitled "Mark of Another May Not Be
Registered with Disclaimer," provides that:
Normally, a mark which includes a mark registered by
another person must be refused registration. Disclaiming
another person’s mark does not normally justify
registration. However, one can incorporate the entire mark
of another if there is no resulting likelihood of
confusion. A party who incorporates the entire mark of
another with resulting likelihood of confusion may not
avoid such a finding by disclaiming the mark of another.
Cf. In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662
(C.C.P.A. 1979) (permitting disclaimer of informational
Ser. No. 75/136,710
5
disclaim the registered mark WINDBREAKER and escape a finding of
likelihood of confusion."
The Examining Attorney, besides noting the general
principle that "the mere addition of a term to a registered mark
is not sufficient to overcome a likelihood of confusion," also
contends in support of his position that:
[T]he typed-face [sic] of applicant’s
mark for WINDBREAKER REGATTA is relatively
similar in size and appearance. That is, the
word portion of the applicant’s mark appears
to employ the same font size and style. As
such, neither the wording WINDBREAKER, nor
the wording REGATTA[,] dominate applicant’s
mark. Thus, applicant’s assertion that the
wording REGATTA is the dominant word over the
wording WINDBREAKER is unfounded.
Although applicant’s ... mark also
includes a design, that design is merely
decorative and a background embellishment and
does not obviate the similarity of the marks.
When a mark consists of a word portion and a
design portion, as in the applicant’s mark,
the word portion is more likely to be
impressed upon a purchaser’s memory and to be
used in calling for the goods or services.
In re Appetito Provisions Co. [Inc.], 3
USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v.
Amerco, Inc., 192 USPQ 729 (TTAB 1976). For
this reason, ... greater weight [must be
given] to the literal portions of the marks
in determining whether there is a likelihood
of confusion. In this case, the wording
WINDBREAKER REGATTA is the dominant part of
applicant’s mark.
In view thereof, and inasmuch as both applicant and registrant
utilize their respective marks in connection with the same types
of clothing, namely, jackets, the Examining Attorney concludes
that "a likelihood of confusion exists between the two marks."

phrase indicating that applicant’s employees are
represented by certain labor organizations).
Ser. No. 75/136,710
6
We agree with the Examining Attorney that confusion is
likely. In this case, the respective goods are identical in part
(jackets) and are otherwise closely related articles of wearing
apparel (e.g., vests, trousers, suits, shirts and blouses) which
would be sold to the same classes of purchasers through the
identical channels of trade. Applicant, as the Examining
Attorney accurately points out, does not contend to the contrary.
Consequently, if applicant’s jackets, as well as registrant’s
jackets, vests, trousers, suits, shirts, blouses and other
closely related items of clothing, were to be sold under the same
or substantially similar marks, it is plain that confusion as to
the source or sponsorship of such products would be likely to
occur.
Turning, therefore, to consideration of the respective
marks, we disagree with applicant that the term "REGATTA" must be
considered the dominant or primary source-signifying element of
applicant’s mark. Instead, given the nautical theme conveyed by
the background design of a ship’s decorative or signaling flag in
applicant’s mark and the same size and style of lettering used
for the wording, we concur with the Examining Attorney that it is
the literal elements of applicant’s mark, namely, the words
"WINDBREAKER REGATTA," which form the principal source-indicative
portion of applicant’s mark and which would be used in calling
for or otherwise inquiring about applicant’s goods. Thus, when
considered in their entireties, applicant’s "WINDBREAKER REGATTA"
and design mark is substantially similar in sound, appearance,
connotation and overall commercial impression to registrant’s
Ser. No. 75/136,710
7
"WINDBREAKER" mark, which must be regarded on this record as an
arbitrary or fanciful mark for registrant’s goods, particularly
in the absence (as noted earlier) of a petition by applicant for
partial cancellation of the cited registration on the ground that
such mark is generic for jackets.
In light thereof, we conclude that purchasers and
prospective customers, familiar with registrant’s "WINDBREAKER"
mark for jackets, vests, trousers, suits, shirts, blouses and
other clothing items closely related to jackets, could reasonably
believe, upon encountering applicant’s substantially similar
"WINDBREAKER REGATTA" and design mark in connection with jackets,
that such products are a new or additional line of wearing
apparel produced or sponsored by registrant.
Decision: The refusal under Section 2(d) is affirmed.
T. J. Quinn
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board