Terry J. Pullaro

Trademark Trial and Appeal Board

Sep 23, 2002

No. 76056316 (T.T.A.B. Sep. 23, 2002)

Paper No. 11
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Terry J. Pullaro
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Serial No. 76/056,316
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Bryan K. Wheelock of Harness, Dickey & Pierce for Terry J.
Pullaro.
Edd Vasquez, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______
Before Hanak, Bottorff and Holtzman, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark MOJO, in typed form, for goods identified in
the application (as amended) as “sports training, practice,
and conditioning equipment, namely a weighted hand-held
device for sport-specific improvement of arm strength and
conditioning.”1
1 Serial No. 76/056,316, filed May 24, 2000. The application is
based on use in commerce, and May 17, 2000 is alleged in the
application as the date of first use anywhere and the date of
first use in commerce.
Ser. No. 76/056,316
2
The Trademark Examining Attorney has refused
registration of applicant’s mark on the ground that
applicant’s mark, as applied to applicant’s goods, so
resembles the mark MOJO, previously registered for
“snowboards, snowboard bindings, ice skates, roller
skates,”2 as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d).3
When the refusal was made final, applicant filed this
appeal. Applicant and the Trademark Examining Attorney
filed main appeal briefs, and applicant filed a reply
brief. No oral hearing was requested. We affirm the
refusal to register.
The evidence of record on appeal includes the
application file, printouts of ten third-party
registrations made of record by the Trademark Examining
2 Registration No. 2,050,135, issued April 8, 1997 pursuant to
Trademark Act Section 44(e).
3 The identification of goods in the cited registration, Reg. No.
2,050,135, also includes “helmets for skating” in Class 9, but
the Trademark Examining Attorney has never specifically argued
for refusal on the basis of those Class 9 goods. Indeed, in his
final office action and in his appeal brief, the Trademark
Examining Attorney’s likelihood of confusion argument is directed
specifically and only to the Class 28 goods identified in the
registration, i.e., “snowboards, snowboard bindings, ice skates,
roller skates,” and he has made no mention of the Class 9
“helmets for skating” identified in the registration. In view
thereof, we deem the Trademark Examining Attorney’s Section 2(d)
refusal to be based solely on the Class 28 goods identified in
the registration.
Ser. No. 76/056,316
3
Attorney, applicant’s product brochure (submitted prior to
appeal and re-submitted as Exhibit C to applicant’s appeal
brief), and a dictionary excerpt from Merriam Webster’s
Collegiate Dictionary (online ed. 2002), attached to
applicant’s appeal brief as Exhibit A, defining the word
“mojo” as “a magic spell, hex, or charm; broadly : magical
power.”4 However, we have given no consideration to the
materials attached as Exhibits B and D to applicant’s
appeal brief, which appear to be lists of certain third-
party registrations and applications obtained from the
Office’s Trademark Electronic Search System (TESS). These
materials are not evidence because they were not made of
record prior to the filing of the notice of appeal. See
Trademark Rule 2.142(d), 37 C.F.R. §2.142(d). In any
event, third-party registrations and applications may not
be made of record merely by listing them. See, e.g., In re
Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994); In re Hub
Distributing, Inc., 218 USPQ 284 (TTAB 1983).
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
4 The Board may take judicial notice of dictionary definitions.
See, e.g., University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); see also TBMP §712.01.
Ser. No. 76/056,316
4
likelihood of confusion factors set forth in In re E.I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
The first du Pont factor requires us to consider “the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.” We find that applicant’s mark MOJO
is identical in all respects to the cited registered mark
MOJO. In terms of connotation and commercial impression,
moreover, we find that MOJO is a strong, inherently
distinctive mark which is arbitrary or, at most, only
slightly suggestive as applied to the sporting goods items
involved in this case. Applicant’s argument to the
contrary is not persuasive. The first du Pont factor thus
weighs heavily in favor of a finding of likelihood of
confusion.
Turning next to the second du Pont factor, i.e., the
similarity or dissimilarity of the goods, it is settled
Ser. No. 76/056,316
5
that is not necessary that the respective goods be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is sufficient that
the goods or services are related in some manner, or that
the circumstances surrounding their marketing are such,
that they would be likely to be encountered by the same
persons in situations that would 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
source or that there is an association or connection
between the sources of the respective goods or services.
See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991); In re International Telephone &
Telegraph Corp., 197 USPQ2d 910 (TTAB 1978). Moreover, the
greater the degree of similarity between the applicant’s
mark and the cited registered mark, the lesser the degree
of similarity between the applicant’s goods or services and
the registrant’s goods or services that is required to
support a finding of likelihood of confusion; where the
applicant’s mark is identical to the registrant’s mark, as
it is in this case, there need be only a viable
relationship between the respective goods or services in
order to find that a likelihood of confusion exists. See
Ser. No. 76/056,316
6
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed.
Cir. 1993); In re Concordia International Forwarding Corp.,
222 USPQ 355 (TTAB 1983).
Applying these principles to the present case, we find
that the goods identified in applicant’s application and
the goods identified in the cited registration are
sufficiently related that confusion is likely to result if
the respective goods are marketed under the identical marks
involved here. The goods identified in the cited
registration are “snowboards, snowboard bindings, ice
skates, roller skates.” Applicant’s goods, as identified
in the application, are “sports training, practice, and
conditioning equipment, namely a weighted hand-held device
for sport-specific improvement of arm strength and
conditioning.” It appears from applicant’s brochure that
applicant’s product is, essentially, a weight-training and
conditioning device used to strengthen and condition the
forearm, wrist and hand so as to improve swing speed and
swing power in sports that involve swinging a hand-held
implement such as a baseball bat, a tennis racket, a golf
club or a hockey stick. The product consists of a weighted
cylinder (such as is on the end of a dumbbell) attached to
a handle with a sport-specific length and diameter.
Ser. No. 76/056,316
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The Trademark Examining Attorney has made of record
ten third-party registrations which include, in their
identifications of goods, various types of weight-training
equipment and devices as well as various of the types of
goods identified in the cited registration, notably
including snowboards and ice skates. Although these
registrations are not evidence that the marks shown therein
are in commercial use, or that the public is familiar with
them, they nevertheless are probative evidence to the
extent that they suggest that the goods or services
identified therein are of a type which may emanate from a
single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In
re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).5
Applicant argues that its goods are not competitive
with nor related to the goods identified in the cited
registration. Specifically, applicant argues that
“applicant’s products are not used with registrant’s
products, or useful to the user’s [sic] of registrant’s
products.” According to applicant, registrant is “a
5 We are not persuaded by applicant’s contention that these
third-party registrations lack probative value because none of
them specifically includes, in the identification of goods,
applicant’s allegedly highly-specialized type of weight-training
device. The “exercise weights” identified in the third-party
registrations legally encompass applicant’s more specialized
weight-training device.
Ser. No. 76/056,316
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snowboard company” and its goods are “extreme sports” gear,
while applicant’s goods are used in connection with
conventional sports such as baseball, tennis and golf.
Moreover, applicant argues, registrant’s goods are used
during actual participation in the sports activity, while
applicant’s goods are not used directly during
participation in sports activity but rather are used to
condition and train for such sports activity.
We are not persuaded. The suggested distinction
between equipment used to directly play a sport and
equipment used to condition or train for a sport is legally
and commercially insignificant. The third-party
registrations of record show that both types of products,
i.e., conditioning or training gear and game-participation
gear, may be sold by a single source under a single mark.
Applicant’s own brochure states that one useful application
of applicant’s product is “on deck warm up and stretching,”
which shows that the product is intended for use during
actual participation in a baseball game, and which suggests
that the product could be used for “warm up and stretching”
during actual participation in other sports as well.
Likewise unpersuasive is applicant’s attempt to
distinguish its goods from registrant’s by limiting
registrant’s goods to “extreme sports” gear. First, as
Ser. No. 76/056,316
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noted above, some of the third-party registrations of
record cover both snowboarding equipment and exercise and
weight-training equipment, evidence which suggests that
both types of products can be marketed by a single source
under a single mark. Second, the goods identified in the
registration are not limited to “snowboards,” but also
include “ice skates.” Applicant’s product brochure
specifically identifies hockey players as athletes who may
benefit from training with applicant’s device. To that
extent, at least, applicant’s assertion that its product
would not be used by or useful to the purchasers and users
of registrant’s goods is not supported by the record and is
belied by applicant’s own brochure.
As noted above, because applicant’s mark is identical
to the cited registered mark, the degree of similarity
between the respective goods which is required to support a
finding of likelihood of confusion is diminished. In re
Shell Oil Co., supra. We find, under the second du Pont
factor, that applicant’s goods are sufficiently related to
the registrant’s goods that confusion is likely to result
if the goods are sold under the same mark.
We also find, under the third du Pont factor, that the
trade channels and classes of purchasers for the respective
goods overlap and are otherwise similar rather than
Ser. No. 76/056,316
10
dissimilar. Given the absence of restrictions in either
applicant’s or registrant’s identification of goods, we
presume that those goods move in all normal trade channels
for such goods and are marketed to all normal classes of
purchasers for such goods. See In re Elbaum, 211 USPQ 639
(TTAB 1981). This is so, regardless of what the evidence
might show to be the actual trade channels and classes of
purchasers for applicant’s and registrant’s goods at this
time. Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
The normal trade channels for both applicant’s and
registrant’s respective goods include sporting goods stores
and the sporting goods departments of department stores.
Applicant argues that even if the respective products are
sold in the same stores, they nonetheless are unrelated
because they would be sold in different departments of
those stores. According to applicant, registrant’s goods
would be sold in the “extreme sports” area of the store, an
area in which applicant’s goods would not be displayed
because applicant’s goods are not used in connection with
such sports. Rather, applicant’s training device “would be
sold in particular departments [of the sporting goods
store]. For example[,] applicant’s baseball device would
be sold with baseball equipment.” (Reply brief at 3).
Ser. No. 76/056,316
11
We are not persuaded. Again, applicant’s argument is
based on the faulty premise that registrant’s goods are
limited to “extreme sports” gear. If, as applicant
asserts, applicant’s baseball device would be sold with the
baseball equipment, it follows that applicant’s “hockey
device” would be sold with the hockey equipment, alongside
registrant’s “ice skates.”
There is nothing in the record to support applicant’s
contention that applicant’s goods and registrant’s goods
are marketed to and used by different classes of
purchasers. Hockey players would be among the purchasers
of both applicant’s hockey swing-training device and
registrant’s ice skates. Even with respect to extreme
sports, however, there is no basis in the record for
concluding that snowboarders and other extreme sports
participants do not also participate in, and train for,
conventional sports like baseball, or that they therefore
would not be potential purchasers of applicant’s goods.
Vice versa, there is no basis for concluding that baseball
players, tennis players, golfers and other “conventional
sports” participants do not also participate in “extreme
sports” such as snowboarding.
Ser. No. 76/056,316
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Thus, we find that the trade channels and classes of
purchasers for applicant’s and registrant’s respective
goods are similar rather than dissimilar.
The sixth du Pont factor requires us to consider
evidence of “similar marks in use on similar goods.”
Applicant argues that the registered mark MOJO is weak and
entitled to a narrow scope of protection because it is
widely-used as a mark in the sporting goods field and in
other fields as well. There is no evidence in the record
to support this assertion. As noted supra at page 3, the
list of third-party MOJO registrations and applications
attached to applicant’s appeal brief has not been
considered because it was not timely-submitted and it is
not in proper form. Even if the third-party registrations
had properly been made of record, however, they would be
entitled to no weight under the sixth du Pont factor. See
Olde Tyme Foods, Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992).
Having carefully considered and weighed all of the
evidence of record pertaining to the relevant du Pont
factors, we conclude that a likelihood of confusion exists.
We have considered all of applicant’s arguments to the
contrary (including any arguments not specifically
discussed in this opinion), but do not find them to be
Ser. No. 76/056,316
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persuasive of a different result. We have no doubt as to
our conclusion that confusion is likely, but even if we
did, such doubt would be resolved against applicant. See
In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d
1025 (Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.