Thorsten Bold

Trademark Trial and Appeal Board

Jan 17, 2013

No. 79089751 (T.T.A.B. Jan. 17, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
January 17, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Thorsten Bold
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Serial No. 79089751
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Brewster Taylor of Stites & Harbison PLLC for Thorsten Bold.

Ronald E. Aikens, Trademark Examining Attorney, Law Office 112 (Angela Wilson,
Managing Attorney).
_____

Before Kuhlke, Bergsman and Kuczma, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Thorsten Bold, seeks registration on the Principal Register of the
standard character mark ROSEBOWL AND BRICKS based on a request for
extension of protection under Section 66(a) of the Trademark Act, 15 U.S.C.
§ 1141(f) for goods ultimately identified as:
Clothing, namely, T-shirts, shirts, jackets, leather jackets, dresses,
pants, and leather pants, in International Class 25.1

1 The application originally included goods in other classes but those were deleted during
prosecution of the application.

Serial No. 79089751

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Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used with its identified
goods, so resembles the following registered marks:
ROSE BOWL in typed form for “clothing; namely, shirts caps,
sweaters, and jackets,” in International Class 25, owned by Pasadena
Tournament of Roses Association (PTRA);2 and

for, inter alia, “hats” in International Class 25,
owned by the City of Pasadena.3

as to be likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed and briefs have been
filed.
As a preliminary matter, the examining attorney requested that the Board
take judicial notice of “dictionary entries.” In addition, he objected to (1) applicant’s
reference to Reg. No. 2482717, one of the registrant’s non-cited registrations, and
(2) to applicant’s references “to any specific consent agreement between the two
cited [registrants]” because applicant “failed to include a copy of the consent
agreement [and] ignored the Examining Attorney’s requests for a copy of the noted
agreement.”

2 Registration No. 1994297, issued on August 20, 1996, Sections 8 and 15 declaration
accepted and acknowledged, renewed.

3 Registration No. 2476069, issued on August 8, 2001, partial Sections 8 and 15 declaration
accepted and acknowledged (certain goods were deleted), renewed.
Serial No. 79089751

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The request for judicial notice is granted as to the first “dictionary entry”
which consists of the following entry for “Rose Bowl” from the American Heritage
New Dictionary of Cultural Literacy (3rd ed. 2005), retrieved from dictionary.com:4
The oldest and most famous of the “bowl games” – college
football games held after the regular college football season
between teams that are invited on the basis of their record in
the regular season. The Rose Bowl game is played in Pasadena,
California, on New Year’s Day, and is preceded by the
Tournament of Roses Parade of floats adorned with roses.

The other entry is a printout from Wikipedia.org for “Rose Bowl.” We decline
to take judicial notice of the wikipedia.org entry.5 However, because applicant
specifically does not object to this entry and references it in its arguments we
consider it stipulated into the record.
As to the examining attorney’s objections, inasmuch as a printout from the
USPTO’s electronic database for Reg. No. 2482717 was attached to applicant’s
request for reconsideration that objection is denied. Further, during prosecution
applicant submitted and quoted from the PTRA’s response to an office action in
another one of its applications that discusses a consent agreement between it and
the other cited registrant, the City of Pasadena. Contrary to his statement quoted
above, the examining attorney never requested a copy of this agreement. Moreover,

4 The Board may take judicial notice of dictionary definitions. In re Red Bull GmbH, 78
USPQ2d 1375, 1378 (TTAB 2006). See also University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

5 In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB 2007) (“[T]he Board will
consider evidence taken from Wikipedia so long as the nonoffering party has an opportunity
to rebut that evidence by submitting other evidence that may call into question the
accuracy of the particular Wikipedia information.”)
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in its request for reconsideration, applicant stated that PTRA’s response in its other
application indicates that copies of the agreement had been submitted to the
USPTO; however, they were not available in that application’s electronic record. In
view of these circumstances, we overrule the examining attorney’s objection.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in 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 Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We begin with the du Pont factor of the relatedness of the goods. We base our
evaluation on the goods as they are identified in the registrations 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 and
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services under similar marks, that the goods and services originate from, are
sponsored or 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).
Applicant did not present argument regarding this factor. Applicant’s “shirts
and jackets” are identical to the “shirts and jackets” in Registration No. 1994297. It
is sufficient for a finding of likelihood of confusion if the relatedness is established
for any item encompassed by the identification of goods within a particular class in
the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986 (CCPA 1981).
With regard to cited Registration No. 2476069, applicant’s “t-shirts” and
“shirts” are closely related to the “hats” in Registration No. 2476069, as
demonstrated by the third-party registrations and website printouts submitted by
the examining attorney. See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203
(TTAB 2009); In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001);
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993) (third-party
registrations serve to suggest that the goods and/or services listed therein are of a
kind that may emanate from a single source). See, e.g., Reg. No. 4136030 for the
mark HOLLYWOOD HEART BREAKER and design for, inter alia, t-shirts, jackets
and headwear; Reg. No. 4119202 for a design mark for shirts, hats, caps,
sweatshirts; and Reg. No. 3133451 for the mark MAD CIRCUS CLOTHING
COMPANY for hats and t-shirts.
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With regard to the channels of trade, because the goods are identical and so
closely related, and there are no limitations in the identifications of the application
and cited registrations, we must presume that they are offered in the same
channels of trade to the same classes of customers. Hewlett-Packard Co., 62
USPQ2d 1001.
We turn then to the du Pont factor of the similarities and dissimilarities
between applicant’s mark ROSEBOWL AND BRICKS and registrants’ respective
ROSE BOWL marks. We analyze “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. Further, where the goods are
identical, as with the shirts and jackets in Reg. No. 1994297, the degree of
similarity between the marks necessary to support a determination that confusion
is likely declines. In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260
(Fed. Cir. 2010); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB
2010).
Applicant’s mark ROSEBOWL AND BRICKS incorporates the entirety of the
cited ROSE BOWL mark in Reg. No. 1994297 and the literal portion of Reg. No.
2476069. Nonetheless, applicant’s mark presents more as a phrase and would be
viewed as such. Thus, we are not persuaded by the examining attorney’s argument
regarding the dominance of ROSEBOWL and applicant’s arguments regarding the
prominence of AND BRICKS. However, the element common to registrants’ marks,
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ROSEBOWL, would be perceived by consumers as a separate word in applicant’s
mark and it is the first word in applicant’s mark. Palm Bay, 73 USPQ2d at 1692;
Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1998) (“”it
is often the first part of a mark which is most likely to be impressed upon the mind
of a purchaser and remembered”). Further, as to the mark in Reg. No. 2476069, the
literal element, ROSE BOWL, is the dominant portion of that mark, and the design
of the rose does not serve to distinguish it from applicant’s mark. In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987).
Applicant attempts to distinguish its mark by contending that the
connotation of its mark is the incongruent juxtaposition of a fragile rose bowl with
bricks, both everyday objects, as opposed to the cited marks, which are associated
with the Tournament of Roses parade and the Rose Bowl football game. However,
we must analyze the marks in connection with the registered and applied-for goods,
namely, t-shirts, hats, etc. As to these goods, the term ROSE BOWL would
engender the same connotation, and, to the extent consumers are aware of the
secondary source aspect of registrants’ marks, i.e., the association with the parade
and football game, there is nothing in the record to suggest they would not make
the same association with applicant’s mark, in particular because the Rose Bowl
parade and football game are so well-known. See, e.g., American Heritage New
Dictionary of Cultural Literacy (the Rose Bowl is the “most famous of the bowl
games” and “is preceded by the Tournament of Roses Parade”); and Wikipedia.org
(“The Rose Bowl is nicknamed ‘The Granddaddy of Them All’ because it is the oldest
Serial No. 79089751

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bowl game, and is often considered the most prestigious of all the bowl games. It
was first played in 1902, and has been played annually since 1916. Since 1915, it
has been the highest attended college football bowl game. It is a part of the
Tournament of Roses, ‘America’s New Year Celebration’, which also includes the
Historic Tournament of Roses Parade.”)
Thus, while there are differences in the marks, we find the similarities
outweigh the dissimilarities.
Applicant argues that the term ROSE BOWL in the cited registrations is
sufficiently weak to allow for registration of its mark based on the difference
occasioned by the addition of the words “AND BRICKS” to its mark. Specifically,
applicant argues :
The coexistence of [registrations owned by the cited registrants] and
the consent of the owners of the registrations to coexist results in such
dilution of the term “ROSE BOWL” as an indication of source for
clothing that neither of the cited marks should prevent registration or
use of the distinct mark “ROSEBOWL AND BRICKS”. ... In this case,
the Examining Attorney did not consider “the extent to which dilution
may indicate that there is no likelihood of confusion” and never
acknowledged that either the coexistence of the “ROSE BOWL” marks
for clothing or the owners’ consent to coexistence had any bearing at all
on the issue of “likelihood of confusion” with Applicant’s mark
“ROSEBOWL AND BRICKS”. ... The Examining Attorney has erred in
concluding that the consent agreement between the Pasadena
Tournament of Roses Association and the City of Pasadena does not
make the mark weak but rather instead “suggests that the two
separate entities share the common goal of precluding all others from
infringing on the shared component and have an express interest in
preventing dilution thereof”.

App. Br. p. 4-6.
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In support of its position that ROSE BOWL is weak, applicant submitted a
copy of the PTRA’s response to an Office action refusing registration to its
application and copies of other registrations owned by the two cited registrants. As
noted above, the response included reference to a consent agreement between the
two cited registrants. Applicant relies on California Fruit Growers Exchange v.
Sunkist Baking Co., 166 F.2d 971, 76 USPQ 85 (7th Cir. 1947). Applicant asserts
that in this case the Court “relied on the consent agreement between the plaintiffs,
stating that when the plaintiffs agreed that there would be no confusion for such
closely related food products they could not claim that there would be confusion by
use of the same mark for bread.” App. Br. p. 7.
Applicant concludes that because the mark is diluted and weak and
applicant’s mark is more distinct from the cited marks than they are to each other,
there will be no likely confusion.
We first note that registrations are not probative on the du Pont factor of
third-party use, because such registrations do not establish that the registered
marks identified therein are in actual use in the marketplace or that consumers are
accustomed to seeing them. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403,
1406, 177 USPQ 268, 269 (CCPA 1973). Second, in general, the coexistence of
marks incorporating a common element owned by only two other registrants does
not present strong support for a conclusion that a term is diluted. Finally, we are
not bound by prior decisions of examining attorneys. In re Nett Designs Inc., 236
Serial No. 79089751

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F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); and In re Sunmarks Inc., 32
USPQ2d 1470 (TTAB 1994).
In this case, applicant has provided at least a glimpse into the circumstances
surrounding the allowance of the coexisting registrations. At a minimum, it
appears to be a somewhat unique situation. Below is an excerpt from the June 26,
2001 response filed by PTRA in another application discussing the consent
agreements and the relationship between PTRA and the City of Pasadena:
The Agreements [given to the Office on June 13, 2001] establish
a “protocol” (Trademark Agreement, page 3, line 1) for
registration and use by the City and applicant of “ROSE BOWL”
marks for goods and services. ... The relation between applicant
and the City of Pasadena is longstanding and unusual, if not
unique. It is cooperative and constructive. Because the Mark of
this application pertains to applicant’s parade which is the
origin of that relation (football games associated with the parade
first occurred several years after the first parade), this
application and its facts presents an unusual (perhaps unique)
situation to the Office. The City is aware of this application by
applicant pursuant to the terms of the Trademark Agreement.
Therefore, in the special circumstances of this application, it is
reasonable, proper and practical for the Office, in its
examination activities, to consider and to give effect to all of the
pertinent facts and circumstances. Applicant and the City
(owner of the cited registrations) do not have the
applicant/registrant relation usually encountered by the Office.
Applicant and the City are partner-like associates in a common
venture: enhancement of the City of Pasadena in many ways.

Exhibit attached to App. Response (July 21, 2011), consisting of PTRA’s Response
and Amendment for Application Serial No. 76178057 p. 5 (May 25, 2001).

We first reject applicant’s general proposition that the mere existence of a
consent agreement between two parties weakens a mark. Further, in this case, the
mere coexistence of these registrations by two consenting owners does not serve to
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dilute the strength of these marks and there is nothing in the record to suggest that
the marks are weak or do not, each in their separate uses, indicate a single source.
In fact, the record points to the opposition conclusion. See, e.g., American Heritage
New Dictionary of Cultural Literacy; Wikipeida.org; and PTRA’s Response and
Amendment for Application Serial No. 76178057 p. 5 (May 25, 2001). In view
thereof, we do not find the registered marks to be weak.
Finally, even if we considered the term ROSE BOWL to be weak in the
context of these goods, in view of the legally identical and closely related goods, and
highly similar marks, the cited registrations would still be entitled to protection.
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109
(CCPA 1974). The Sunkist case relied upon by applicant does not persuade us of a
different result. That case was an infringement case brought by the two consenting
parties that used the marks Sunkist and Sun-Kist in connection with fresh fruits
and canned fruits against a third party that used Sunkist in connection with bakery
products. The Court of Appeals determined, inter alia, that (1) the lower court had
not properly made findings as to “confusion as to source,” and (2) the goods were
unrelated. Here, we have identical and closely related goods.
In conclusion, we find that because the goods are identical or otherwise
closely related, the channels of trade and classes of consumers are the same, and
the marks are similar, confusion is likely between applicant’s mark ROSEBOWL
AND BRICKS and the marks ROSE BOWL and in the cited
registrations.
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Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed as to each cited registration.