Sports Heritage, U.S.A. Inc.

Trademark Trial and Appeal Board

Jan 6, 1998

No. 74620616 (T.T.A.B. Jan. 6, 1998)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN 6, 98
Paper No. 8
GDH/gdh
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sports Heritage, U.S.A. Inc.
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Serial No. 74/620,616
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Leland P. Schermer of Dickie, McCamey & Chilcote, P.C. for Sports
Heritage, U.S.A. Inc.
George M. Lorenzo, Trademark Examining Attorney, Law Office 109
(Deborah Cohn, Managing Attorney).
_______
Before Cissel, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Sports Heritage, U.S.A. Inc. has filed an application
to register the mark "BOSTON PILGRIMS" for "clothing, namely, t-
shirts, sweatshirts, jerseys, hats/caps, sport shirts, and
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

1 Ser. No. 74/620,616, filed on January 11, 1995, which alleges a bona
fide intention to use the mark in commerce. The word "BOSTON" is
disclaimed.
Ser. No. 74/620,616
2
mark "PILGRIM," which is registered for "wearing apparel, namely,
shirts, pants, jackets, sweaters, coats, shorts, skirts, dresses,
blouses and hats,"2 as to be likely to cause confusion, mistake
or deception.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Applicant, citing Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976),3 correctly
notes in its brief that, "in any likelihood of confusion
analysis[,] two key considerations are the similarity of the
goods and the similarity of the marks." As to the respective
goods, applicant insists that because the Examining Attorney, in
his final refusal, broadly characterized registrant’s goods "as
being ’primarily women’s clothing goods,’" it follows that
applicant’s goods, which implicitly are not so limited, "are not
closely related" to registrant’s goods. Applicant’s contention,
however, ignores the glaring fact that the respective goods are
absolutely identical in part (shirts, hats and jackets). All of
the goods at issue herein, moreover, plainly are familiar items
of outerwear which would be sold through the identical channels
of trade (such as clothing stores and the apparel sections of
department stores and other mass merchandisers) to the same

2 Reg. No. 1,351,824, issued on July 30, 1985, which sets forth dates
of first use of 1947; combined affidavit §§8 and 15.
Ser. No. 74/620,616
3
classes of purchasers (including men, women and teenagers). The
respective goods, consequently, are by their very nature so
closely related that, if sold under the same or similar marks,
confusion as to the source or sponsorship thereof would be likely
to occur.
Turning, therefore, to consideration of the respective
marks, we note as a preliminary matter that, "[w]hen marks would
appear on virtually identical goods ..., the degree of similarity
[of the marks] necessary to support a conclusion of likely
confusion declines." Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1994). See also ECI Division
of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ
443, 449 (TTAB 1980). Applicant maintains, however, that "the
presence of the word BOSTON in applicant’s mark (BOSTON PILGRIMS)
causes applicant’s mark to have only minimal similarities to the
registered mark (PILGRIM) in terms of visual appearance and
pronunciation." Furthermore, applicant urges that:
As to "similarity of meaning," the mark
BOSTON PILGRIMS evokes the image of a sports
team when it is used in connection with
apparel items such as t-shirts, jerseys, and
the like. On the other hand, the mark
PILGRIM, when used in connection with women’s
clothing goods, conveys an image of a New
England style of clothing, perhaps old
fashion in its basic design.
Applicant, in view thereof, argues that the respective marks,
when considered in their entireties, convey significantly

3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
Ser. No. 74/620,616
4
different commercial impressions and thus are not likely to cause
confusion.
We agree with the Examining Attorney, however, that
confusion is likely. While applicant is, of course, correct that
the respective marks must be compared in their entireties, it is
nevertheless the case that, in articulating reasons for reaching
a conclusion on the issue of likelihood of confusion, "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 [that] the ultimate conclusion rests on consideration of
the marks in their entireties." In re National Data Corp., 753
F.3d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). For instance,
"that a particular feature is descriptive ... with respect to the
involved goods ... is one commonly accepted rationale for giving
less weight to a portion of a mark ...." 224 USPQ at 751.
Here, we concur with the Examining Attorney that, in
light of the geographically descriptive significance of the term
"BOSTON" (as confirmed by applicant’s disclaimer thereof), the
more prominent or distinguishing element of applicant’s mark,
when considered as a whole, is the word "PILGRIMS," which is
virtually identical to registrant’s mark "PILGRIM". As the
Examining Attorney notes, the presence of the geographical term
"BOSTON" in applicant’s "BOSTON PILGRIMS" mark "merely serves the
function of describing geographic origin and does not change the
commercial impression created by the term ’PILGRIM’ alone" in
registrant’s mark. In fact, as the Examining Attorney points

essential characteristics of the goods and differences in the marks."
Ser. No. 74/620,616
5
out, the evidence which he made of record with the final refusal4
indicates that, due to historical circumstances, "the addition of
the wording BOSTON reinforces the idea of Pilgrims because BOSTON
is a chief city of Massachusetts[,] where the Pilgrims settled in
the year 1620." By contrast, there simply is no evidence to
support applicant’s assertion that, as applied to its items of
clothing, the mark "BOSTON PILGRIMS" would necessary evoke the
image of a sports team, nor is there anything which persuasively
demonstrates that the mark "PILGRIM," which is an arbitrary term
as applied to registrant’s wearing apparel, would connote an old-
fashioned design, or a traditional "New England" style, of
clothing.
In summary, when considered in their entireties, the
marks "BOSTON PILGRIMS" and "PILGRIM," especially when used in
connection with identical items of outerwear such as shirts, hats
and jackets, are substantially similar in sound, appearance,
connotation and commercial impression due to the readily apparent
geographical significance of the term "BOSTON" and the arbitrary
nature of the words "PILGRIMS" and "PILGRIM" as applied to
wearing apparel. We accordingly conclude that purchasers and
potential customers, familiar with registrant’s "PILGRIM" mark
for such items of wearing apparel as shirts, pants, jackets,
sweaters, coats, shorts, skirts, dresses, blouses and hats, would
be likely to believe, upon encountering applicant’s substantially

4 Specifically, Webster’s New Geographical Dictionary (1988) at 738 not
only defines "Massachusetts" as "[a] northeast state of U.S.A.," but
also lists Boston as one of three "[c]hief cities" and refers to the
city of Plymouth as being "settled by Pilgrims [in] 1620".
Ser. No. 74/620,616
6
similar "BOSTON PILGRIMS" mark for t-shirts, sweatshirts,
jerseys, hats/caps, sport shirts, and jackets, that such
identical and otherwise closely related items of clothing emanate
from, or are sponsored by or associated with, the same source.
See, e.g., In re Collegian Sportswear Inc., 224 USPQ 174, 176-77
(TTAB 1984) [stylized mark "COLLEGIAN OF CALIFORNIA" (with
disclaimer of "CALIFORNIA") for women’s jackets, skirts, pants,
blouses, t-shirts, sweaters, and jacket and top ensembles is
likely to cause confusion with stylized mark "COLLEGIENNE" for,
inter alia, girls’ and juniors’ coats, suits, dresses, sweaters,
skirts and blouses].
Decision: The refusal under Section 2(d) is affirmed.
R. F. Cissel
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal Board