Yonex Kabushiki Kaisha

Trademark Trial and Appeal Board

Apr 28, 2008

No. 78634265 (T.T.A.B. Apr. 28, 2008)

Decision Mailed:
Monday, April 28, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Yonex Kabushiki Kaisha
________

Serial No. 78634265
_______

Robert R. Caliri of Olson & Hierl, Ltd. for Yonex Kabushiki
Kaisha.

Bonnie Luken, Trademark Examining Attorney, Law Office 107 (J.
Leslie Bishop, Managing Attorney).
_______

Before Hohein, Bergsman, and Wellington, Administrative Trademark
Judges.

Opinion by Wellington, Administrative Trademark Judge:

Yonex Kabushiki Kaisha has filed an application to register
on the Principal Register in standard character form the mark
POWER CUSHION for "badminton shoes and tennis shoes" in
International Class 25.1
Registration has been finally refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the

1 Ser. No. 78634265, filed on November 22, 2004, which alleges a date
of first use in commerce of May 25, 2001.
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Serial No. 78634265
2
mark POWER-CUSHIONED, which is registered on the Principal
Register in standard character form for "socks" in International
Class 252, as to be likely to cause confusion, or to cause
mistake, or to deceive.
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
Our determination of the issue of likelihood of confusion is
based on an analysis of all the probative facts in evidence that
are relevant to the factors set forth in 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, however, 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, 29 (CCPA 1976) (“the fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential character of the goods and
differences in the marks”).
Turning first to determining the similarity or dissimilarity
of the marks, we must consider the marks in their entireties in
terms of sound, appearance, meaning and commercial impression.
See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test under this du

2 Reg. No. 1675934 issued on February 18, 1992, and was renewed (for
ten years) on January 10, 2002.

Serial No. 78634265
3
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 impressions that confusion as to the source of the
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. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975).
Applicant’s mark is POWER CUSHION and the cited mark is
POWER-CUSHIONED. In terms of appearance, we find them to be
nearly identical. The only differences visually between the
marks are applicant’s omissions of a hyphen and the letters
“ED” at the end of CUSHION. These differences are of little
consequence and we find that the marks, on balance, look very
similar. In terms of sound, there is only a slight aural
distinction in the marks’ pronunciations (created by the “ED”
at the end “CUSHION” in applicant’s mark).
As to the connotation and overall commercial impression, we
find that the marks are also very similar. We agree with
applicant that the registered mark POWER-CUSHIONED, in connection
with socks, creates a commercial impression that the socks are
heavily cushioned. Brief, p. 7. However, we disagree with
applicant that its mark, POWER CUSHION, somehow creates a
different commercial impression in relation to its tennis and
Serial No. 78634265
4
badminton shoes. Rather, we believe the same commercial
impression is created by both marks, i.e., that applicant’s shoes
and the registrant’s socks provide a strong cushion for the feet
of persons wearing said goods. As demonstrated in the evidence
of record (discussed infra), impact absorption or “cushioning” is
a sought-after quality in shoes, including tennis shoes.3 We
disagree with applicant’s contention that the omission of the
letters “ED” at the end of “CUSHION” in its mark somehow changes
the overall commercial impression.4 The Board has held that a
tense change (or formative change in the root word) does not
alter the meaning of the marks. See, e.g., In re Dahiquist,
Inc., 192 USPQ 237, 238 (TTAB 1976) (“The past tense, ‘phased’,
of the verb of which ‘phase’ is the present tense and ‘phasing’
is the present participle, would, we think, convey to purchasers
of, and dealers in, high fidelity sound reproduction equipment
the same meaning or connotation as the words ‘phase’ and
‘phasing’”). Herein, consumers will perceive the two marks as
conveying or suggesting that the respective goods provide comfort

3 Advertisements for shoes (attached to Office action dated December
30, 2005) contain descriptions “midsole offers cushioning”, “cushion
running shoe”, and “provides maximum shock absorption in the heel and
forefoot.”
4 In this regard, we take judicial notice of the relevant definitions
of “cushion” (in the noun form) as meaning “something resilient used
as a rest, support, or shock absorber”; and “cushioned” (in the
inflected verb form of cushion) as meaning “to protect from impacts or
other disturbing effects” in The American Heritage Dictionary of the
English Language (4th ed. 2000). The Board may take judicial notice of
dictionary definitions. 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).

Serial No. 78634265
5
to the wearer’s feet because they either have strong “cushion” or
are strongly “cushioned” and thus there is some impact resistance
qualities to the goods.
Viewing the marks in their entireties, we find that they
are extremely similar and likely to cause confusion when used
in connection with the respective goods involved in this case.
Thus the first du Pont factor weighs in favor of a finding of
likelihood of confusion.
We now turn to a consideration of the goods identified in
the application and the cited registration. It is well settled
that the question of likelihood of confusion must be determined
based on an analysis of the goods or services recited in an
applicant’s application vis-à-vis the goods or services recited
in the cited registration. Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715
(TTAB 1991). Further, it is a general rule that goods or
services need not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it is
enough that the goods or services are related in some manner or
that some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which would give rise, because of the marks used
therewith, to a mistaken belief that they originate from or are
in some way associated with the same producer or that there is an
Serial No. 78634265
6
association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and
the cases cited therein.
With the above principles in mind and based upon the record,
we find that the examining attorney has established that there is
a commercial relationship between applicant’s badminton and
tennis shoes and registrant’s socks. In support of her refusal
and attached to her Office actions, the examining attorney
submitted a variety of evidence that includes the following:
• website printouts from various online sporting goods
retailers selling both athletic shoes and socks, with such
items included in the same ‘drop down’ menu;
• website printouts (from www.tennisnuts.com) advertising
goods under the heading “tennis shoes, badminton shoes,
squash shoes & socks” on one of the pages;
• website printouts (from www.racket-sport.com) advertising
tennis and badminton shoes in addition to socks on the same
page;
• pictures of the inside of stores selling athletic shoes in
proximity to socks; and
• a news article, in discussing Kmart’s new store layout,
refers to such as “carry[ing] fewer items but displays them
more efficiently and attractively.... If shoes are in one
area, for example, then socks should be nearby.”5

The examining attorney also submitted copies of
approximately 7 third-party registrations based on use in
commerce, each for marks used to identify a variety of apparel,
including shoes (which encompass the goods listed in applicant's
identification of goods) and socks (registrant’s goods).
Although third-party registrations which cover a number of

5 Dayton Business Journal, December 20, 2002.

Serial No. 78634265
7
differing goods and/or services, and which are based on use in
commerce, are not evidence that the marks shown therein are in
use on a commercial scale or that the public is familiar with
them, such registrations nevertheless have some probative value
to the extent that they may serve to suggest that such goods or
services are of a type which may emanate from a single source.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993);
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Taken together, the evidence demonstrates that there is a
commercial relationship between applicant’s tennis and badminton
shoes and registrant’s socks, so that, if such goods were
identified by confusingly similar marks, confusion as to source
would be likely. This du Pont factor weighs in favor of finding
a likelihood of confusion.
We turn now to fifth du Pont factor regarding the strength
of the registered mark and what scope of protection it deserves
against conflicting marks of others. Applicant contends that the
cited mark POWER-CUSHIONED is “highly descriptive, and therefore
weak” with respect to socks and is entitled to “an extremely
narrow scope of protection.” Brief, p. 4. Applicant’s argument
is unavailing, however, in view of the presumptions we must
accord all registrations under Section 7(c) of the Trademark Act
of 1946, 15 U.S.C. §1057(c), which specifically include that a
registration is prima facie evidence of the validity of the
registered mark. Therefore, we must presume that the registered
Serial No. 78634265
8
mark POWER-CUSHIONED is, at worst, suggestive rather than merely
descriptive. Moreover, an ex parte proceeding is not the proper
forum to attack the validity of a cited registration. In re
Calgon Corp., 453 F.2d 596, 168 USPQ 278, 280 (CCPA 1971).
We add that even if the cited mark is considered suggestive
and hence weak, “weak marks are entitled to protection against
registration of similar marks, especially identical ones, for
related goods and services.” In re Colonial Stores, 216 USPQ
793, 795 (TTAB 1982). See also In re Clorox Co., 578 F.2d 305,
198 USPQ 337, 341 (CCPA 1978). Therefore to the extent that the
asserted lack of strength of the registered mark creates any
doubt as to whether there is a likelihood of confusion, that
doubt is resolved in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 840, USPQ2d 1025, (Fed. Cir.
1988); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 165,
223 USPQ 1289 (Fed. Cir. 1984).
For the reasons discussed above, and considering all of the
evidence of record pertaining to the du Pont factors, we conclude
that applicant's mark, POWER CUSHION, is very similar to
registrant's mark, POWER-CUSHIONED, and their contemporaneous use
on the commercially related goods involved in this case is likely
to cause confusion as to the source or sponsorship of such goods.
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.