UK Gear Ltd.

Trademark Trial and Appeal Board

Jan 26, 2009

No. 77052071 (T.T.A.B. Jan. 26, 2009)

Mailed:
January 26, 2009
AZ

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re UK Gear Ltd.
________

Serial No. 77052071
_______

Hunter S. Freeman of McNair Law Firm, P.A. for UK Gear Ltd.

David S. Miller, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Holtzman, Zervas and Kuhlke, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On November 28, 2006, UK Gear Ltd. (“applicant”) filed
an application (Serial No. 77052071) to register the mark
UK GEAR in standard character form on the Supplemental
Register for goods ultimately identified as “sportswear
apparel and casual clothing, namely, shorts, shirts, vests,
tee-shirts, jumpers, socks, trousers, sweatshirts, track
suits, hats and footwear, namely sports, tennis, squash,
badminton, golf, jogging, track, training and casual shoes”
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Ser No. 77052071
2
in International Class 25. Applicant claims first use
anywhere and first use in commerce on March 1, 2005 and has
entered a disclaimer of the term GEAR.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
(i) Registration No. 2806593 issued on January 20, 2004 for
the mark

and (ii) Registration No. 3207910 issued on February 3,
2007 for the mark UK (in standard character form), both for
the following International Class 25 goods:
clothing, namely, T-shirts, sweatshirts,
sweatpants, sweatsuits, swim suits, suspenders,
gym shorts, hats, jackets, jogging suits, shoes,
sandals, shorts, socks, tanktops, turtlenecks, V-
neck sweaters, infantwear, baby shoes, baby
socks, scarves, sport coats, and leather jackets,
neckties, sportshirts, polo shirts, athletic
jerseys and shorts, cloth baby bibs, hooded
sweatshirts, rugby shirts, mufflers, athletic
training suites, parkas, ponchos, rainwear,
earmuffs, boxer shorts, and aprons; children's
clothing, namely, shirts, shorts, pants, socks,
sweatshirts, sweatpants, athletic jerseys, hats
and T-shirts.

Both registrations issued to the University of Kentucky.
Applicant has appealed the final refusal of its
application. Both applicant and the examining attorney
Ser No. 77052071
3
have filed briefs. As discussed below, the refusal to
register is affirmed.
We first consider two evidentiary matters. First,
applicant mentions at p. 15 of its brief three third-party
registrations that are not in the record. We sustain the
examining attorney’s objection to these registrations and
do not give them further consideration – applicant cannot
rely on registrations that it has not timely introduced
into the record.
Second, applicant has included various exhibits with
its reply brief, which it submits for the first time. This
material has been untimely filed. Trademark Rule 2.142(d),
37 C.F.R. § 2.142(d), provides that the record in the
application should be complete prior to the filing of the
appeal. Accordingly, we do not further consider the
evidence submitted with applicant’s reply brief, including
the dictionary definitions, of which we decline to take
judicial notice.1
We now consider the merits of the Section 2(d)
refusal. Our determination of the refusal is based on an
analysis of all of the facts in evidence that are relevant

1 If we had considered any of the evidence that we have excluded,
our disposition of this appeal would not be any different than
that set forth in this opinion.
Ser No. 77052071
4
to the factors bearing on the likelihood of confusion
issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, 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 and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Considering first the du Pont factor regarding the
similarity or dissimilarity of applicant's and registrant’s
goods, we find that applicant's shorts, shirts, tee-shirts,
socks, trousers, sweatshirts, tracksuits, hats and footwear
are encompassed within or legally identical to registrant’s
T-shirts, sweatshirts, hats, jogging suits, athletic
training suits, shoes, shorts, socks, sport shirts, polo
shirts and children’s pants.
With respect to applicant's remaining goods, i.e.,
“vests” and “jumpers,” the examining attorney has made
several third-party use-based registrations of record
listing “vests” and “jumpers,” and clothing items such as
pants, shirts and t-shirts, which appear in registrant’s
Ser No. 77052071
5
identification of goods. See Registration Nos. 2475698,
3187720, 3290471, 3295433 and 3245585, made of record with
the final Office action. These registrations suggest that
the same entity is likely to be the source of such clothing
items. In re Infinity Broadcasting Corp. of Dallas, 60
USPQ2d 1214, 1217-18 (TTAB 2001) (“The registrations show
that entities have registered their marks for both
television and radio broadcasting services. Although these
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them, they
nevertheless have probative value to the extent that they
serve to suggest that the services listed therein,
including television and radio broadcasting, are of a kind
which may emanate from a single source. See, e.g., In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 at n. 6 (TTAB 1988)”).
In view of the foregoing, and because applicant has
not contested the examining attorney’s contention that the
goods are identical, similar or otherwise related, we
resolve the du Pont factor concerning the similarity of
applicant's and registrant’s goods against applicant for
both cited marks.
Ser No. 77052071
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With regard to the trade channels of the goods, we
consider the goods as they are identified in the involved
application and registrations. Because there are no
limitations in the identifications, we must presume that
each “registration encompasses all goods of the nature and
type described, [and] that the identified goods move in all
channels of trade that would be normal for such goods,” In
re Elbaum, 211 USPQ 639, 640 (TTAB 1981), and that
applicant's goods would move in the same trade channels as
registrant’s goods and be sold in the same outlets as
registrant’s goods. We also find that applicant's and
registrant’s clothing items would be sold to the same
purchasers, i.e., members of the general public. The du
Pont factors regarding trade channels and classes of
consumers are also resolved against applicant for both
marks.2

2 Applicant argues that registrant’s consumers are “sports fans
or supporters of the University of Kentucky” and that the goods
“are sold to supporters of the school and sports fans.” Reply
brief at pp. 10 – 11. Such arguments are not persuasive because
we consider the mark and goods as identified in the application,
and not based on actual use. There is no limitation in the
identification of goods which limits sales of the goods to
“supporters of the school and sports fans,” and we do not read
such a limitation into the identification of goods.
Applicant also argues that “[w]hile both parties’ goods may be
found in sporting goods stores, the goods will be found in
different sections”; and that registrant’s goods would be
“typically found in the section of the store where the promotion
goods containing college/professional sports teams’ logos are
kept.” Id. at p. 11. Applicant's argument is without
Ser No. 77052071
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We next turn to the du Pont factor regarding the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689
(Fed. Cir. 2005). The test, under this du Pont factor, 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 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. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Also, although
a mark in issue must be considered in its entirety, it is
well settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944

evidentiary support and ignores the fact that many of applicant's
and registrant’s goods are legally identical.
Ser No. 77052071
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(Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).
Because GEAR is defined as “clothing and accessories”
in the definition of record taken from The American
Heritage Dictionary of the English Language (4th ed. 2000)
located at bartleby.com, GEAR is at a minimum merely
descriptive of applicant's goods and hence accorded less
weight in the likelihood of confusion analysis. Further,
GEAR has been disclaimed by applicant, and disclaimed
matter is often “less significant in creating the mark's
commercial impression.” In re Code Consultants, Inc., 60
USPQ2d 1699, 1702 (TTAB 2001).
UK therefore is the dominant portion of applicant's
mark, and is identical to registrant’s standard character
mark. It is also highly similar to registrant’s stylized
UK mark because applicant's mark, as a standard character
mark, is allowed all reasonable modes of display that could
be represented, and such display would at least extend to a
lettering style similar to that used in registrant’s mark.3
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); and Phillips Petroleum Co. v. C. J.

3 Applicant's contention at pp. 10 – 11 that registrant’s
lettering style is “famous” and that consumers would “immediately
know from the famous stylization that, as used by Registrant, UK
refers to the University of Kentucky rather than the United
Ser No. 77052071
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Webb, Inc. 442 F.2d 1376, 170 USPQ 35 (CCPA 1971). As
such, the marks are highly similar in appearance. They are
also similar in sound because they both contain the term
UK.
Applicant's primary arguments against the Section 2(d)
refusal lie in the meaning and commercial impression of the
marks. Applicant maintains that the evidence of record,
namely a dictionary definition and a Wikipedia entry for
“UK” introduced by the examining attorney in support of
this Section 2(e)(2) refusal (which the examining attorney
withdrew after applicant amended its application to seek
registration on the Supplemental Register), indicates that
“UK” in applicant's mark commonly and primarily refers to
the United Kingdom. According to applicant, the
connotation of the registered marks is not “United
Kingdom,” but is “University of Kentucky,” and the marks
differ in meaning. We are not persuaded by this argument
because there is nothing in the marks themselves which
directs consumers to provide one meaning to one mark and
another meaning to the other mark. Consumers would just as
likely give one mark the same meaning as the other. Only
after considering information such as the name of the owner

Kingdom” is not persuasive. Applicant has not introduced any
evidence regarding any fame of this mark.
Ser No. 77052071
10
of the registered marks or the name and address of
applicant would the consumer arrive at the meanings
advocated by applicant. Of course, consideration of such
additional information is not contemplated under the
analysis required under du Pont, supra.4
Applicant also argues that the examining attorney,
when he initially refused registration under Trademark Act
Section 2(e)(2), took the position that the meaning of UK
in the mark is “United Kingdom,” and that even though the
Section 2(e)(2) refusal has been obviated by applicant's
amendment of its application to seek registration on the
Supplemental Register, the examining attorney is not
permitted to “take factually inconsistent or alternative
positions.” According to applicant, judicial estoppel
should apply, estopping the examining attorney from taking
a position that is factually inconsistent with the position
he took in connection with the Section 2(e)(2) refusal.
Reply brief at p. 5.
Judicial estoppel does not apply to this case;
although earlier in the prosecution of the application the
examining attorney addressed two bases for refusal, only
the Section 2(d) refusal is before us. See In re Recorded

4 Applicant has not commented on consumer perception when
applicant’s goods are sold in Kentucky.
Ser No. 77052071
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Books, Inc. 42 USPQ2d 1275, no. 5 (TTAB 1997)(“although the
Examining Attorney's remarks on registrability were
somewhat inconsistent, there is no estoppel here, the
Examining Attorney apparently changing her mind after
conducting a search of the NEXIS database.”). Moreover, as
stated by the Commissioner in In re Stenographic Machines,
Inc., 199 USPQ 313, 317 (Comm. 1979): “Consistency of
Office practice must be secondary to correctness of Office
practice.” Additionally, to the extent that applicant is
arguing that we must consider UK in applicant's mark as
meaning “United Kingdom,” we are not bound by prior
decisions of examining attorneys. See In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). See
also, In re Kent-Gamebore Corp., 59 USPQ2d 1373 (TTAB
2001).
In connection with its estoppel argument, applicant
maintains that it has been prejudiced by the examining
attorney’s positions on the meaning of the mark. According
to applicant, the examining attorney has persuaded
applicant to accept the examining attorney’s position that
the mark is geographically descriptive and amended its
application to seek registration on the Supplemental
Register; and that it “would simply be unfair if the
Examiner is allowed to argue that consumers are likely to
Ser No. 77052071
12
perceive the mark as referring to the United Kingdom for
purposes of the Section 2(e) refusal while simultaneously
arguing that consumers are just as likely to perceive
[applicant's] mark as referring to the University of
Kentucky for purposes of the Section 2(d) refusal since
doing so places [applicant] in a ‘no win’ situation where
it is forced to argue against itself.” Brief at pp. 6 – 7.
We do not agree that applicant has been prejudiced by
the examining attorney’s positions regarding the meaning of
UK. When applicant amended its application to seek
registration on the Supplemental Register, the examining
attorney properly withdrew his Section 2(e)(2) refusal – it
was the amendment to the Supplemental Register which
resulted in the refusal being withdrawn. Registration has
always been refused under Section 2(d). We therefore do
not agree that applicant has suffered any prejudice due to
the examining attorney’s consideration of the meaning of
the marks.
Thus, with respect to the meaning of the marks and
their commercial impressions, because both marks include
the term UK, and GEAR is at least merely descriptive and
does not provide UK in UK GEAR with a different meaning
Ser No. 77052071
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from UK, we find that they are similar.5 We therefore
resolve the du Pont factor regarding the similarity of the
marks against applicant.
Upon consideration of the relevant du Pont factors
discussed above, as well as the evidence of record and all
of the arguments of the examining attorney and applicant,
we conclude that when purchasers who are familiar with
registrant’s marks for their respective identified goods
encounter applicant's mark on identical or related goods,
they are likely to be confused as to source.
Decision: The refusal to register under Section 2(d)
of the Trademark Act in view of Registration Nos. 2806593
and 3207910 is affirmed.

5 Applicant has argued that the meaning of UK in registrant’s
marks is the University of Kentucky and the meaning of UK in UK
GEAR is “United Kingdom.” This argument is not persuasive
because there are no additional elements in either mark which
would direct the consumer to one meaning over the other.