The Jockey Club LLC

Trademark Trial and Appeal Board

Apr 24, 2015

No. 85595169 (T.T.A.B. Apr. 24, 2015)

THIS OPINION IS NOT
A PRECEDENT
OF THE TTAB
Mailed:
April 24, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re The Jockey Club LLC
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Serial No. 85595169
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David Weild III of Edwards Wildman Palmer LLP for The Jockey Club LLC.
Allison P. Schrody, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).

Before Zervas, Bergsman and Wolfson, Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

The Jockey Club LLC (“Applicant”) seeks registration on the Principal Register
of the mark THE JOCKEY CLUB RACING COLORS (in standard character form)
for “luggage, bags, namely, courier bags, beach bags, tote bags, backpacks, and
travel bags; leather goods, namely, wallets, briefcases, attaché cases, handbags,
leather covers for diaries, notebook covers, garment bags for travel and saddles, all
made of leather” in International Class 18.1

1 Application Serial No. 85595169 was filed on April 11, 2012, based on an allegation of a
bona fide intention to use the mark in commerce.
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The Examining Attorney refused registration of Applicant’s mark under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that Applicant’s
mark is likely to cause confusion or mistake or to deceive with the marks which are
the subject of the following six registrations for International Class 25 goods owned
by Jockey International, Inc.:
Cited Mark Goods
JOCKEY
Reg. No. 3916922
Underwear, such as men’s and boys’ undershirts, underdrawers,
both with and without legs, as well as hosiery
JOCKEY
Reg. No. 5093643
Men’s and boys’ underwear, undershirts, hosiery, sport
shirts, and t-shirts
JOCKEY
Reg. No. 32580664
Underwear tops and bottoms; shorts, shirts; active wear, namely
boxer shorts, bicycle shorts, gym shorts, pants,
pullovers, sport shirts, t-shirts, tank tops, jogging suits,
warm-up suits; long underwear; sleepwear; nightwear, pajamas;
robes; panties, bras, all-in-ones in the nature of camisoles with
built in bras, camisoles, foundation garments, crop tops,
stockings, tights and hosiery
JOCKEY PERSON
TO PERSON
Reg. No. 35450695
Shorts; shirts; active wear, namely, women’s sweat pants,
sweat shirts, sweat shorts, t-shirts, tank tops; camisoles;
jackets; pants; slacks

Reg. No. 35552406
Underwear tops and bottoms; hosiery and socks for
women; shirts; pants; activewear for women, namely, sweat
pants, t-shirts, tank tops; long underwear; sleepwear; night
wear; pajamas; robes; women’s intimate apparel, namely,
panties, bras, all-in-ones, camisoles, slips, foundation garments,
and crop tops

Reg. No. 37581377
Underwear tops and bottoms; shirts; active wear, pants,
t-shirts, tank tops, long underwear; sleepwear; nightwear;
pajamas; panties; bras; camisoles; foundation garments;
crop tops; socks; hosiery

2 Registered November 18, 1941. Fourth renewal, December 15, 2011.
3 Registered May 30, 1949. Third renewal, November 26, 2008.
4 Registered July 3, 2007. Section 8 affidavit accepted.
5 Registered December 9, 2008. Section 8 affidavit accepted August 19, 2014.
6 Registered December 30, 2008.
7 Registered March 9, 2010.
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When the refusal was made final, Applicant filed a Request for Reconsideration
and an appeal. After the Examining Attorney denied the Request for
Reconsideration, the Board resumed the appeal and Applicant and the Examining
Attorney filed briefs. We affirm the refusal to register.
Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 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); see also In
re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
In addition to the similarities or dissimilarities of the marks and the goods, the
relevant du Pont factors in this case are the similarities or dissimilarities of trade
channels and purchasers, as argued by Applicant and the Examining Attorney.
We focus our analysis on Registration Nos. 391692, 509364 and 3258066, all for
the mark JOCKEY (in standard characters) for various clothing items because
when considered vis-à-vis Applicant’s mark and identified goods, this mark is most
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likely to support a finding of likelihood of confusion. That is, if confusion is likely
between those marks, there is no need for us to consider the likelihood of confusion
with the other cited marks, while if there is no likelihood of confusion between
Applicant’s mark and the JOCKEY standard character mark, then there would be
no likelihood of confusion with the other cited marks. See, e.g., In re Max Capital
Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). Thus, all references in the
remainder of this opinion to JOCKEY alone are to the JOCKEY mark of these three
registrations.
Similarity or Dissimilarity of the Marks
We compare the marks for similarities and dissimilarities in appearance, sound,
connotation and commercial impression. Palm Bay, 73 USPQ2d at 1692. 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 that confusion as to the source of the goods or
services 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.8 In re Association of the United States Army, 85
USPQ2d 1264 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975). Under actual marketing conditions, consumers do not necessarily
have the luxury of making side-by-side comparisons between marks, and must rely

8 Because the goods at issue are common consumer goods, the average purchaser is the
ordinary consumer who is a member of the general public.
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upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corp., 206
USPQ 255 (TTAB 1980).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, the 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 National Data Corp., 753 F.2d 1056, 224
USPQ 749 (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”). However, in articulating reasons for reaching
a conclusion on the issue of likelihood of confusion, “there is nothing wrong 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 a consideration of
the marks in their entireties.” In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985).
With these principles in mind, we turn to Applicant’s arguments in support of
registration. Applicant argues that the common term JOCKEY is part of a “lengthy
adjectival phrase”; that RACING COLORS is “the more distinctive phrase of
Applicant’s mark”; and that JOCKEY is “buried amongst other wording” and is less
dominant than other portions of the mark, namely, the terms RACING COLORS
which primarily evokes the context of horse racing. Applicant also states that
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JOCKEY is a non-distinctive term when used in connection with underwear, and
has a multiplicity of meaning.
While there are similarities and dissimilarities between the registered JOCKEY
mark and Applicant’s THE JOCKEY CLUB RACING COLORS mark, “[t]he
practical question is whether they are significant” because “[t]he purchasing public,
we believe, does not indulge in such recognitional contortions but sees things as
they are.” B.V.D. Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727, 6
USPQ2 1719, 1721 (Fed. Cir. 1988). As Applicant recognizes at p. 7 of its Brief, its
mark is a combination of two components, THE JOCKEY CLUB and RACING
COLORS. Despite Applicant’s protests to the contrary, THE JOCKEY CLUB, as the
initial phrase of the mark, is the dominant phrase. The dominance of THE JOCKEY
CLUB is heightened if Applicant depicts its mark in a form where RACING
COLORS is a minor part of its mark, in smaller lettering than THE JOCKEY
CLUB, which it is entitled to do because it has identified its mark in standard
characters in its application. Further, “racing colors,” as a unitary term, has
significance in the context of horse racing, where racing colors identify a jockey or
the owner of a horse ridden in a race.9
JOCKEY, in THE JOCKEY CLUB, signifies who the club celebrates, and forms
the dominant term in THE JOCKEY CLUB. “THE” at the beginning of the mark
does not have any trademark significance, see In re Thor Tech Inc., 90 USPQ2d

9 See webpages introduced by Applicant generally, but particularly
www.oughtonlimited.com/blog/racing-colors, indicating that racing colors identify riders
and horse owners and www.championsilks.com (“We know how important your racing
colors are …”).
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1634, 1635 (TTAB 2009) (WAVE and THE WAVE are “virtually identical” and likely
to be confused), and CLUB suggests an association or a meeting place - for jockeys.10
Thus, JOCKEY, the dominant term in Applicant’s mark, is identical to registrant’s
JOCKEY marks.
In view of the foregoing, we find that the marks are similar in connotation and
commercial impression, with registrant’s mark referring to the jockey or “someone
who rides horses in races,”11 and the dominant part of Applicant’s mark evoking a
club for a “jockey.” In addition, with the inclusion of the shared term JOCKEY in
Applicant’s mark, we find that the marks are similar in sound and appearance, and
that the points of similarity of the marks are greater than the points of
dissimilarity. As noted above, we are mindful that marks must be compared in their
entireties and should not be dissected. We have given appropriate weight to the
components of Applicant’s mark and rest our ultimate conclusion on a comparison of
the marks in their entireties.
In arriving at our conclusion, we are not persuaded with those arguments made
by Applicant and noted above. We also disagree with the following arguments made
by Applicant:

10 See definition of “club” from , defining “club”
in relevant part as “the meeting place of a club ” and “an athletic
association or team.” The Board may take judicial notice of dictionary definitions, including
online dictionaries which exist in printed format. See In re CyberFinancial.Net Inc., 65
USPQ2d 1789 (TTAB 2002). See also 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).
11 See definition of “jockey” from www.merriam-webster.com/dictionary/jockey, submitted
with Applicant’s Second Request for Reconsideration.
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1. “Jockey” has several meanings, as demonstrated by the various
definitions of the term in the record. The connotation of JOCKEY in
registrant’s mark, however, may be the same as JOCKEY in Applicant’s
mark. There is no reason to suspect that JOCKEY will have one definition in
one mark and another definition in the other mark.
2. Registrant’s mark “conjure[s] up no commercial impression other than
that of a male supportive undergarment.”12 The record does not contain
corroborating evidence of any fame or renown of JOCKEY, and we will not
construe Applicant’s statement as a concession that registrant’s mark is
famous for underwear.13 In addition, “underwear” is not within any definition
of “jockey” in the record.
3. The registered JOCKEY mark is weak based on third-party webpages
containing the marks MIAMI JOCKEY CLUB, and MONTE CARLO POLO
AND JOCKEY CLUB.14 These marks differ from registrant’s mark.
4. Third-party registrations demonstrate that Applicant’s and
registrant’s marks can coexist without risk of confusion. However, (i) the

12 Applicant's Brief at 7.
13 See, however, Jockey International Inc. v. Butler, 3 USPQ2d 1607, 1612 (TTAB 1987)
(“The record before us establishes beyond any doubt that JOCKEY word and design marks
are famous trademarks in the field of clothing. Accordingly, that the propensity of
consumers to associate a relatively unknown mark with one which is well known to them
increases the likelihood of confusion or deception is an important factor in opposer’s favor.
E.g., Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 699, 223 USPQ 1281,
1282 (Fed. Cir. 1984); Finn v. Cooper's Incorporated, 292 F.2d 555, 130 USPQ 269 (CCPA
1961).”).
14 The application for registration of the mark submitted by Applicant has no probative
value because third-party applications are only evidence that an application has been filed
for a particular mark.
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marks of the two third-party registrations Applicant submitted are farther
removed from the marks in either the cited registrations or involved
application; and (ii) the third-party registrations Applicant submitted are not
evidence of use of the marks shown therein and, therefore, are not proof that
consumers are familiar with said marks so as to be accustomed to the
existence of similar marks in the marketplace. See Smith Bros. Mfg. Co. v.
Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); Richardson-
Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982).
In sum, Applicant’s arguments do not persuade us that the marks are dissimilar
in sound, appearance, meaning or commercial impression.
Similarity or Dissimilarity of the Goods
We base our evaluation on the goods as they are identified in the registration
and application. Octocom Systems, Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled
that it is not necessary that the respective goods be identical or even competitive in
order to find that they are related for purposes of our likelihood of confusion
analysis. That is, the issue is not whether consumers would confuse the goods
themselves, but rather whether they would be confused as to the source of the
goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods need only be
sufficiently related that consumers would be likely to assume, upon encountering
the goods under similar marks, that the goods originate from, are sponsored or
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authorized by, or are otherwise connected to the same source. 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).
The Examining Attorney placed in the record webpages from several third-party
websites that offer clothing (including undergarments) and bags, luggage and
leather accessories under the same mark. See, e.g., the webpages from:
• TravelSmith “Clothing, Gear & Advice To Go,” offering
luggage, bags, wallets, luggage accessories, shirts, underwear,
and undershirts (http://travelsmith.com);

• J.Crew, offering handbags, totes, clutches, duffels, suitcases,
leather wallets, leather billfolds, backpacks, weekender bags,
briefcases, garment bags, and providing links to “shirts,” “tees”
and “underwear” as categories (http://www.jcrew.com);

• Gap, offering satchel bags, canvas bags, messenger bags,
totes, travel totes, backpacks, clutches, wallets, and women’s
clothing goods including bras and underwear (http://gap.com);

• Brooks Brothers, offering briefcases, duffels, messenger
bags, weekender bags, totes, socks, boxer shorts and t-shirts
(http://brooksbrothers.com);

• L.L. Bean, displaying links to luggage, tote bags, backpacks,
messenger bags, duffels, gear bags, briefcases, and garment
bags, and girls’ long underwear and other clothing goods
(http://llbean.com);

• Filson, offering tote bags and satchels and small leather
goods including leather wallets, notebook covers, smartphone
cases, passport cases, satchels, totes and luggage tags, as well as
long underwear and long john tops (http://filson.com);

• Under Armour, offering backpacks, equipment bags, duffels,
travel bags, messenger bags and men’s undershirts and
underwear (http://underarmour.com); and

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• Ralph Lauren, offering handbags, traveler bags, underwear
and t-shirts (http://ralphlauren.com).15

In view of this evidence, the Examining Attorney has established that
Applicant’s and registrant’s goods are commercially related.
Applicant submitted registrations for the mark SAM EDELMAN16 for footwear
and EDELMAN17 for, inter alia, “handbags, traveling bags, luggage trunks,
umbrellas, harnesses and saddlery,” and argued that the Office “has permitted very
similar marks to coexist for goods in Class 18 on one hand and goods in Class 25 on
the other hand, perceiving no risk of confusion.”18 We do not know the
circumstances involving the registration of these two marks, and we are not bound
by prior decisions of Examining Attorneys and determine each case on its own
record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
Applicant’s evidence therefore does not persuade us that the goods are not
commercially related.
Similarity or Dissimilarity of Classes of Purchasers and Trade Channels
Because there are no limitations or restrictions as to trade channels or classes of
purchasers in the respective identifications of goods, we presume that the goods are
or would be marketed in all normal trade channels for such goods and to all normal
classes of purchasers of such goods. See Packard Press Inc. v. Hewlett-Packard Co.,
56 USPQ2d 1351, 1357 (Fed. Cir. 2000). As noted earlier in this decision, because

15 The Examining Attorney also pointed out registrant also owned now-cancelled
Registration No. 1715756 for the mark JOCKEY (in typed or standard character form) for
“luggage, brief cases and carrying cases.”
16 Registration No. 3271895.
17 Registration No. 3000104.
18 Applicant’s Brief at 5-6.
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the goods at issue are common consumer goods, the average purchaser is the
ordinary consumer who is a member of the general public.
The classes of purchasers of the goods involved in this appeal are the same, as
they are all common consumer goods offered to the general public.
As for the trade channels, the Examining Attorney relies on webpages from
retailers Brooks Brothers, REI, Dover Saddlery, Chick’s Discount Saddlery, Athleta
and Adidas showing that clothing (including undergarments) and luggage, bags,
and leather goods including saddles and wallets, are commonly sold together at the
same types of stores.19 The Examining Attorney remarks that specialty sporting
goods stores typically offer bags, luggage, accessories and clothing goods which are
specialized for particular activities.20 Through this evidence, the Examining
Attorney has established that the trade channels for Applicant’s and registrant’s
goods are related.
Conclusion
We have found that the marks are similar in commercial impression and that
the points of similarity of the marks are closer than the points of dissimilarity with
regard to appearance, meaning and sound. In addition, we have found that the
goods are related and that they travel through related trade channels and that the
customers of both Applicant’s and registrant’s goods are the same. We therefore find
that Applicant’s mark, when use on the goods set forth in Applicant’s application, is

19 Submitted with the Examining Attorney’s August 25, 2014 denial of the Request for
Reconsideration and the February 4, 2014 Final Office Action.
20 Examining Attorney Brief at unnumbered p. 12.
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likely to be confused with registrant’s standard character JOCKEY marks for the
goods set forth in the underlying registrations.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.