XFight LLC

Trademark Trial and Appeal Board

Feb 26, 2010

No. 76680512 (T.T.A.B. Feb. 26, 2010)

Mailed: February 26, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re X-Fight LLC
________

Serial No. 76680512
_______

Myron Amer of Myron Amer, P.C. for X-Fight LLC.

Midge F. Butler, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Bucher, Bergsman and Ritchie,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

X-Fight LLC filed a use-based application for the mark
X-FIGHT, in standard character form, for “athletic
apparel,” in Class 25. See the discussion below regarding
applicant’s amended description of goods.
Registration has been refused under Section 2(d) of
the Trademark Act of 1946, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used in connection with
clothing so resembles the mark X-FIGHTERS, in standard
character form, for clothing, set forth below, as to be
likely to cause confusion.1

1 Registration No. 3543747, issued December 9, 2009.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 76680512
2
Clothing, namely, T-shirts, blouses,
sweaters, anoraks, wind resistant
jackets, aprons, caps, hats, headbands,
suspenders, belts, money belts, sun
visors; sportswear, namely, shirts,
pants, polo shirts, sweat shirts and
sweat pants, hooded shirts and sweat
shirts, shorts, blouses, skirts,
jumpers, jackets and coats; footwear
for sports; footwear excluding
orthopedic footwear; headgear, namely,
hats, caps, headbands; cap peaks,
namely, cap visors, baseball caps, golf
caps, and caps with visors, in Class
25.

In addition, there is an issue regarding the operative
description of goods because the examining attorney refused
to accept applicant’s second amended description of goods.
A summary of the relevant prosecution history of this
application is necessary to understand the refusal.
Date Action
August 9, 2007 Applicant filed its application for the
mark X-FIGHT for “athletic apparel.”
November 28, 2007 The examining attorney noted application
Serial No. 79038602 for the mark
X-FIGHTERS for clothing as a potential
bar to registration and required an
amendment to the description of goods.
The examining attorney required that
applicant identify the specific types of
clothing with which the mark is used.
February 15, 2008 Applicant amended its description of
goods to read as follows: “Athletic
apparel, namely, sweatshirts and
sweatpants, except t-shirts, sportswear
and footwear for sports.”
April 13, 2009 Application Serial No. 79308602 issued as
Registration No. 3543747 and the
examining attorney cited it as a Section
2(d) bar to registration.
Serial No. 76680512
3
Date Action
May 20, 2009 Applicant amended its mark from X-FIGHT
to X FIGHT (without the hyphen) and
amended the description of goods to read
as follows: “Footwear for sports, not
including golf shoes with spikes.”
May 28, 2009 The examining attorney refused to accept
the second amended description of goods
because it exceeded the scope of the
goods identified in the first amended
description of goods; therefore, the
examining attorney asserted that the
first amended description of goods
remained the operative description of
goods. In addition, the examining
attorney made FINAL the Section 2(d)
likelihood of confusion refusal.

The Description of Goods
Trademark Rule 2.71(a), 37 CFR §2.71(a) provides that
“[t]he applicant may amend the application to clarify or
limit, but not broaden, the identification of goods and/or
services.” Once an applicant amends the identification of
goods and/or services in a manner that is acceptable to the
examining attorney, the amendment replaces all previous
identifications, and thus restricts the scope of
goods/services to that of the amended language. Further
amendments that would add to or expand the scope of the
recited goods or services, as amended, are not permitted.
In re Swen Sonic Corp., 21 USPQ2d 1794, 1795 (TTAB 1991);
In re M.V Et Associes, 21 USPQ2d 1628, 1630 (Comm’r Pats.
1991); TMEP §1407.07(e) (6th ed. 2009). The applicant may
not amend the identification to reinsert goods or services
Serial No. 76680512
4
that were omitted or deleted from the identification of
goods or services. Id.
On February 15, 2008, applicant amended the
description of goods from “athletic apparel” to “athletic
apparel, namely, sweatshirts and sweatpants, except t-
shirts, sportswear and footwear for sports.” The examining
attorney properly refused to accept applicant’s May 20,
2009 proposed amendment to “footwear for sports, not
including golf shoes with spikes” because it exceeded the
scope of the first amended description of goods.
Specifically, applicant sought to insert “footwear for
sports” after explicitly excluding “footwear for sports.”
Applicant argues, as best as we can understand its
argument, that its second proposed description of goods
should be accepted because it obviates the likelihood of
confusion. However, applicant’s argument is based on the
false premise that an amendment to the description of goods
must be accepted merely because it creates additional
distance from the goods in the cited registration. In an
ex parte setting, the description of goods in a cited
registration is not material in determining whether
applicant has a proper identification of goods. Rather, as
explained during the prosecution of this application, the
examining attorney may require amendment of the
Serial No. 76680512
5
identification of goods and/or services to ensure that it
is clear and accurate and conforms to the requirements of
the statute and rules. See TMEP §1402.01(e).
In view of the foregoing, we find that the first
amended description of goods - - “athletic apparel, namely,
sweatshirts and sweatpants, except t-shirts, sportswear and
footwear for sports” - - is the operative description of
goods.
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion. 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
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (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).
Serial No. 76680512
6
A. The similarity or dissimilarity and nature of the
goods, channels of trade and classes of consumers.

As indicated above, applicant is seeking to register
its mark for “athletic apparel, namely, sweatshirts and
sweatpants, except t-shirts, sportswear and footwear for
sports.” The cited registration is for, inter alia,
sportswear, namely, sweatshirts and sweatpants. The
products are legally identical. There is no meaningful
distinction that we can discern between sweatshirts and
sweatpants identified as “sportswear” or “non-sportswear.”
Because the goods identified in the application and
the cited registration are in part identical, we must
presume that the channels of trade and classes of
purchasers are the same. See Genesco Inc. v. Martz,
66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications
thereof as to trade channels and purchasers, these clothing
items could be offered and sold to the same classes of
purchasers through the same channels of trade”); In re
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”).
Serial No. 76680512
7
B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn now to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont De Nemours &
Co., 177 USPQ at 567. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988). In analyzing the similarity or dissimilarity
of the marks, we are mindful that where, as here, the goods
are in part identical, the degree of similarity necessary
to find likelihood of confusion need not be as great as
where there is a recognizable disparity between the goods.
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992);
Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang,
84 USPQ2d 1323, 1325 (TTAB 2007); Jansen Enterprises Inc.
v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
Moreover, in comparing the marks, 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 overall commercial
Serial No. 76680512
8
impression so that confusion as to the source of the goods
offered under the respective marks is likely to result.
San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1835,
1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir.
June 5, 1992). In making this determination, we must
consider the recollection of the average purchaser who
normally retains only a general, rather than a specific,
impression of the marks. Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975). Because the products
at issue are sweatpants and sweatshirts, we analyze the
marks with the ordinary purchaser in mind.
Applicant’s mark X FIGHT is almost identical to the
registered mark X-FIGHTERS. The only differences between
the marks -- the hyphen and “ers” suffix in the registered
mark -- do not distinguish them. Accordingly, we find that
the marks are highly similar in terms of appearance, sound,
meaning and commercial impression.
E. Balancing the factors.
In view of the near identity of the marks and the
goods and the presumption that the goods move in the same
channels of trade and are sold to the same classes of
ordinary consumers, we find that applicant’s mark X FIGHT
Serial No. 76680512
9
for “athletic apparel, namely, sweatshirts and sweatpants,
except t-shirts, sportswear and footwear for sports” so
resembles the mark X-FIGHTERS for, inter alia, sportswear,
namely, sweatshirts and sweatpants as to be likely to cause
confusion.
Decision: The refusal to register is affirmed.