Schembechler Enterprises, LLC

Trademark Trial and Appeal Board

Jun 12, 2013

No. 85314616 (T.T.A.B. Jun. 12, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 12, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Schembechler Enterprises, LLC
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Serial No. 85314616
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Timothy Edward Eagle of Varnum, LLP for Schembechler Enterprises, LLC.

Kristina Morris, Trademark Examining Attorney, Law Office 116 (Michael W.
Baird, Managing Attorney).
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Before Zervas, Ritchie, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On May 6, 2011, applicant Schembechler Enterprises, LLC filed an
application to register the mark THE TEAM, THE TEAM, THE TEAM (in standard
character form) for goods in International Classes 9 and 16 that are not at issue
here, as well as for the following goods in International Class 25:
Clothing, namely, athletic footwear, athletic uniforms,
baseball caps, bathing trunks, Bermuda shorts, caps,
cloth bibs, coats, jackets, fleece pullovers, footwear, golf
shirts, gym shorts, headwear, hat bands, jerseys, jogging
suits, polo shirts, rainwear, shorts, socks, sweat pants,
sweat shirts, sweat shorts, sweat suits, sweaters, tank
Serial No. 85314616
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tops, T-shirts, one piece baby undershirts with diaper
cover, shirts, and pants, in International Class 25.1
The examining attorney refused registration of applicant’s mark as to the
goods in International Class 25 on the ground of a likelihood of confusion under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with the prior registered
mark TEAM (in standard character form) for “athletic shoes and sandals for men
and boys; dress shoes, sandals, and slippers for women and girls.”2
The examining attorney also refused registration of applicant’s mark for
“athletic uniforms” on the ground that it is merely descriptive of those specific goods
pursuant to Trademark Act Section 2(e)(1), 15 U.S.C. § 1051(e)(1).
Applicant timely appealed. Both applicant and the examining attorney filed
appeal briefs.
Likelihood of Confusion
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
between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

1 Application Serial No. 85314616, filed pursuant to Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b), as to all classes.
2 Registration No. 2809492, issued January 27, 2004; combined declaration of use and
incontestability under Sections 8 and 15 of the Trademark Act accepted and acknowledged
February 3, 2010.
Serial No. 85314616
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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.”).
A. Similarity of the Goods and Channels of Trade
We turn first to the similarity of the goods and the channels of trade, the
second and third du Pont factors, respectively. Applicant’s goods in Class 25
include “footwear” and “athletic footwear.” The goods in the cited registration are
“athletic shoes and sandals for men and boys; dress shoes, sandals, and slippers for
women and girls.”
Registrant’s “athletic shoes and sandals for men and boys” are a subset of
applicant’s broader category of “athletic footwear,” while applicant’s “footwear”
comprises all of the more specifically identified prior registered goods. Therefore,
with respect to footwear, we presume that the application encompasses the goods in
the prior registration, the goods move in all normal channels of trade, and they are
available to all potential classes of ordinary consumers. See Citigroup Inc. v.
Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Moreover, because the
footwear described in the application is legally identical to the goods in the cited
registration, we presume that the channels of trade and classes of purchasers are
the same. See American Lebanese Syrian Assoc. Charities Inc. v. Child Health
Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding the Board entitled to
rely on this legal presumption in determining likelihood of confusion).
Serial No. 85314616
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It is sufficient for a finding of likelihood of confusion if confusion is likely with
respect to use of the mark on any item that comes within the description of goods in
the application or registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.net,
Inc., 90 USPQ2d 1393, 1397 (TTAB 2007). Accordingly, in our likelihood of
confusion analysis, these findings under the second and third du Pont factors
strongly support a finding of likely confusion.
B. Similarity of the Marks
We next consider the du Pont 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 Elecs. 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). We also keep in mind that when, as here, marks would
appear on virtually identical goods or services, “the degree of similarity necessary to
support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v.
Serial No. 85314616
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Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen
Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
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
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).
Here, applicant’s mark is THE TEAM, THE TEAM, THE TEAM and the
cited registered mark is TEAM. Applicant’s mark simply repeats the entire prior
registered mark three times and adds the definite article THE. Mere repetition
does not necessarily create a new and different meaning or commercial impression
of a mark as compared to its separate components. See In re Tires, Tires, Tires, Inc.,
94 USPQ2d 1153, 1155 (TTAB 2009) (TIRES TIRES TIRES generic for retail tire
store services); In re Litehouse, Inc., 82 USPQ2d 1471, 1474 (TTAB 2007) (CAESAR!
CAESAR! merely descriptive of salad dressing); In re Disc Jockeys, Inc., 23 USPQ2d
1715, 1716 (TTAB 1992) (DJDJ merely descriptive of disc jockey services). In
addition, the definite article “the” is insignificant as a source-identifier. See In re
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Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (affirming refusal to register
WAVE due to a likelihood of confusion with registered mark THE WAVE, stating:
“The marks are virtually identical. The addition of the word ‘The’ at the beginning
of the registered mark does not have any trademark significance.”); In re Narwood
Prods., Inc., 223 USPQ 1034, 1034 (TTAB 1984) (noting the insignificance of the
word “the” in comparison of THE MUSIC MAKERS and MUSICMAKERS); Conde
Nast Publ’ns Inc. v. Redbook Publ’g Co., 217 USPQ 356, 357 (TTAB 1983) (noting
that the word “the” cannot serve as an indication of origin); U.S. Nat’l Bank of
Oregon v. Midwest Savs. & Loan Ass’n, 194 USPQ 232, 236 (TTAB 1977).
Applicant argues that its mark makes a different overall commercial
impression than the mark in the cited registration, and relies on two existing
registrations for the mark PIZZA!PIZZA! for “restaurant services” and “pizza for
consumption on or off the premises.”3 However, we are not bound by those
registrations; each case must be decided on its own facts, based on the particular
mark, the particular goods or services, and the particular record in each application.
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
We do not view the triple repetition by applicant, taking into account the
addition of the word “THE,” as creating a mark with a different meaning or
significantly different commercial impression from the cited registered mark TEAM.
We find applicant’s mark THE TEAM, THE TEAM, THE TEAM to be similar to the
cited mark TEAM in sight, sound, connotation, and commercial impression.

3 See Appeal Brief at 5; Registration Nos. 1439558 and 1399730, February 27, 2012
response to Office action at 2-5.
Serial No. 85314616
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Therefore, the first du Pont factor supports a conclusion that confusion is likely,
particularly considering that applicant’s goods are legally identical to those
identified in the cited registration.
C. Conclusion as to Likelihood of Confusion
We have carefully considered all of the evidence of record as it pertains to the
relevant du Pont factors. To the extent that any other du Pont factors for which no
evidence or argument was presented by applicant or the examining attorney may
nonetheless be applicable, we treat them as neutral. In view of our findings that
the marks are similar and the goods are legally identical and move in the same
channels of trade and to the same customers, we find that applicant’s mark is likely
to cause confusion with the registered mark when used in association with
applicant’s Class 25 goods.
Mere Descriptiveness
We now turn to the examining attorney’s refusal to register the International
Class 25 goods in view of the asserted mere descriptiveness of “athletic uniforms,”
in applicant’s identification of goods.
A term is merely descriptive within the meaning of Section 2(e)(1) if it
immediately conveys knowledge of a quality, characteristic, function, feature,
purpose or use of the goods with which it is used. In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a particular term is merely
descriptive must be determined not in the abstract, but in relation to the goods for
which registration is sought, the context in which the term is used, and the possible
Serial No. 85314616
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significance that the term is likely to have to the average purchaser encountering
the goods in the marketplace. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215,
218 (CCPA 1978); In re Eng’g Sys. Corp., 2 USPQ2d 1075, 1076 (TTAB 1986). That
a term may have other meanings in different contexts is not controlling. In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that “[t]he
question is not whether someone presented with only the mark could guess what
the goods or services are. Rather, the question is whether someone who knows
what the goods or services are will understand the mark to convey information
about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
Athletic uniforms are worn by teams. To our knowledge, there is no use or
purpose for athletic uniforms other than to be worn by members of athletic teams.4
For that reason, applicant’s mark THE TEAM, THE TEAM, THE TEAM conveys no
information about applicant’s athletic uniforms. Accordingly, the refusal to register
applicant’s mark for “athletic uniforms” under Section 2(e)(1) is reversed.
Decision: We affirm the examining attorney’s refusal to register applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), for applicant’s
goods in International Class 25. We reverse the refusal to register applicant’s mark
for “athletic uniforms” under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1). The application will proceed to publication solely as to the goods in
International Classes 9 and 16.

4 See August 27, 2011 Office action at 13, 46-55 (screenshots from websites offering athletic
team uniforms); see also examining attorney’s brief at unnumbered p. 11 (“Athletic
uniforms, by their nature of being used to identify members of a group, are commonly
intended to be used by sports teams.”).