Likelihood of Confusion - Similarity of the goods as described



As stated in section 1207.01 Likelihood of Confuion of the Trademark Manual of Examination Procedure: In the ex parte examination of a trademark application, a refusal under §2(d) is normally based on the examining attorney's conclusion that the applicant's mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion. (See TMEP §1207.02 concerning §2(d) refusals to register marks that so resemble another mark as to be likely to deceive, and TMEP §1207.03 concerning §2(d) refusals based on unregistered marks. Note: Refusals based on unregistered marks are not issued in ex parte examination.)

The examining attorney must conduct a search of Office records to determine whether the applicant's mark so resembles any registered mark(s) as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application. The examining attorney also searches pending applications for conflicting marks with earlier effective filing dates. See TMEP §§1208 et seq. regarding conflicting marks. The examining attorney must place a copy of the search strategy in the file.

If the examining attorney determines that there is a likelihood of confusion between applicant's mark and a previously registered mark, the examining attorney refuses registration under §2(d). Before citing a registration, the examining attorney must check the automated records of the Office to confirm that any registration that is the basis for a §2(d) refusal is an active registration. See TMEP §716.02(e) regarding suspension pending cancellation of a cited registration under §8 of the Act or expiration of a cited registration for failure to renew under §9 of the Act.

Also, if Office records indicate that an assignment of the conflicting registration has been recorded, the examining attorney should check the automated records of the Assignment Services Branch of the Office to determine whether the conflicting mark has been assigned to applicant.

In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. In ex parte examination, the issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services. The other factors listed in du Pont may be considered only if relevant evidence is contained in the record. See In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003) ("Not all of the DuPont factors may be relevant or of equal weight in a given case, and ‘any one of the factors may control a particular case,'" quoting In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)); In re National Novice Hockey League, Inc., 222 USPQ 638, 640 (TTAB 1984). In an ex parte case, the following factors are usually the most relevant:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  • The relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
  • The similarity or dissimilarity of established, likely-to-continue trade channels.
  • The conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing.
  • The number and nature of similar marks in use on similar goods.
  • A valid consent agreement between the applicant and the owner of the previously registered mark.

The Court of Appeals for the Federal Circuit has provided the following guidance with regard to determining and articulating likelihood of confusion:

The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used (citations omitted). It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark (footnote omitted). On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties (footnote omitted). Indeed, this type of analysis appears to be unavoidable.

In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985).

There is no mechanical test for determining likelihood of confusion. The issue is not whether the actual goods are likely to be confused but, rather, whether there is a likelihood of confusion as to the source of the goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein. Each case must be decided on its own facts.

The determination of likelihood of confusion under §2(d) in an intent-to-use application does not differ from the determination in any other type of application.

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  • The second du Pont factor requires a determination of the similarity or dissimilarity of applicant's services and the goods and services identified in the cited registrations.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • We turn next to the second du Pont factor, which requires us to determine the similarity or dissimilarity of applicant's services and the goods and services identified in the cited registrations.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • We turn next to the second du Pont factor, i.e., the similarity or dissimilarity of the parties' services. It is settled that it is not necessary that the respective services be identical or even competitive in order to support a finding of likelihood of confusion. That is, the issue is not whether consumers would confuse the services themselves, but rather whether they would be confused as to the source of the services. It is sufficient that the services be related in some manner, or that the circumstances surrounding their use be such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same source or that there is an association or connection between the sources of the respective services. 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); and In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
    • Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007)
      • The next du Pont factor we consider is the similarity of the goods and services. As opposer has pointed out, it is not necessary that the goods and services of the parties be similar or competitive, or even that they move in the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective goods of the parties are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same producer. In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • We turn first to the second du Pont factor, i.e., the similarity or dissimilarity of the parties' goods. It is settled that it is not necessary that the respective goods be identical or even competitive in order to support a finding of likelihood of confusion. 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. It is sufficient that the goods be related in some manner, or that the circumstances surrounding their use be such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same source or that there is an association or connection between the sources of the respective goods. 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); and In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • We turn next to the second du Pont factor, i.e., the similarity or dissimilarity of the parties' respective goods. It is not necessary that these respective goods be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is sufficient that the goods are related in some manner, or that the circumstances surrounding their marketing are such, that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same source or that there is an association or connection between the sources of the respective goods. 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); In re International Telephone & Telegraph Corp., 197 USPQ2d 910 (TTAB 1978). Moreover, the greater the degree of similarity between the applicant's mark and the cited registered mark, the lesser the degree of similarity between the applicant's goods or services and the registrant's goods or services that is required to support a finding of likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • We turn first to the second and third du Pont factors, i.e., the similarity or dissimilarity of the respective goods, and the similarity or dissimilarity of the trade channels for the goods. It is settled that it is not necessary that the respective goods be identical or even competitive in order to support a finding of likelihood of confusion. 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. It is sufficient that the goods be related in some manner, or that the circumstances surrounding their use be such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same source or that there is an association or connection between the sources of the respective goods. 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); and In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
  • The relevant question is whether purchasers would perceive both party's goods as emanating from the same source.
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006)
      • The relevant question is whether purchasers would perceive goods as diverse as clothing and automobiles as emanating from the same source. See Shen Manufacturing Co., Inc. v. The Ritz Hotel Limited, 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004).
  • In making a determination regarding the relatedness of the goods and services provided or certified by the parties, one must look to the goods and services as identified in the involved application and pleaded registration.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • It is settled that in making our determination regarding the relatedness of the goods and services provided or certified by the parties, we must look to the goods and services as identified in the involved application and pleaded registration. See Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) ("The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.") See also Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) ("Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods.")
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • The next factor we consider is whether the goods and services of the parties are related. It is well established that we consider the goods and services as they are described in the identification of goods and services in the registrations. Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
    • In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007)
      • An analysis of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), includes a comparison of the goods or services in the refused application and cited registration(s). In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • We must compare the goods and services as described in the application and the registrations to determine if there is a likelihood of confusion. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
  • It is well-established that the goods and services of the parties or their certificants need not be similar or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • With regard to the second du Pont factor, i.e., the similarity or dissimilarity and nature of the goods and services, it is well-established that the goods and services of the parties or their certificants need not be similar or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion.
  • When we are dealing with an opposition to register, as with other board proceedings, we must compare the goods as described in the application and the opposers' registrations to determine if there is a likelihood of confusion.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • When we are dealing with an opposition to register, as with other board proceedings, we must compare the goods as described in the application and the opposers' registrations to determine if there is a likelihood of confusion. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
  • However, it is not necessary that the respective goods and services be identical or even competitive to support a finding of likelihood of confusion. It is sufficient that the goods and services be related in some manner, or that the circumstances surrounding their use be such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same source or that there is an association or connection between the sources of the respective services.
    • Apple Computer v. TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007).
      • However, it is not necessary that the respective goods and services be identical or even competitive to support a finding of likelihood of confusion. It is sufficient that the goods and services be related in some manner, or that the circumstances surrounding their use be such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same source or that there is an association or connection between the sources of the respective services. See In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
    • The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007)
      • However, it is well established that the goods of the applicant and registrant need not be similar or competitive, or even move in the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective goods are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same producer. See In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • Although these products are distinctly different, in analyzing the similarity or dissimilarity of the products, it is not necessary that the products of the parties be similar or even competitive to support a finding of likelihood of confusion. Likelihood of confusion may be found if the respective products are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source. In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Seaguard Corporation v. Seaward International, Inc., 223 USPQ 48, 51 (TTAB 1984).
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • It is sufficient that the respective goods and/or services of the parties are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods and/or services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. See Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • It is well settled that the determination of likelihood of confusion must be based on a comparison of the goods as identified in the applications and registrations, rather than on the basis of what evidence might show the actual nature of the goods or actual purchasers of the goods to be. See J & J Snack Foods Corp., supra; and Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • However, it is not necessary that the respective goods be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is sufficient that the goods are related in some manner or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association or connection between the producers of the respective goods. See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • "It "has often been said 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 goods or services are related in some manner or that circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of each parties' goods or services."" In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). See also Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002).
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • Further, it is not necessary that the respective goods be identical or competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective goods are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originated from the same producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • With respect to the goods, it is well established that the goods of the parties need not be similar or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective goods of the parties are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. See Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re International Telephone & Telephone Corp., 197 USPQ 910, 911 (TTAB 1978).
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • With respect to the goods, it is well established that the goods of the parties need not be similar or competitive, or even that they are offered through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective goods of the parties are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. See Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re International Telephone & Telephone Corp., 197 USPQ 910, 911 (TTAB 1978).
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • It is settled that it is not necessary that the respective goods and/or services be identical or even competitive in order to support a finding of likelihood of confusion. That is, the issue is not whether consumers would confuse the goods and/or services themselves, but rather whether they would be confused as to the source of the goods and/or services. It is sufficient that the goods and/or services be related in some manner, or that the circumstances surrounding their use be such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same source or that there is an association or connection between the sources of the respective goods and/or services. 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); and In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
  • We turn then to the question of whether applicant's goods and opposer's goods are sufficiently related and/or whether the circumstances surrounding the marketing of the goods are such that purchasers encountering them would, in view of the similarity of the marks, mistakenly believe that the goods emanate from the same source. Even if the marks are identical, if these conditions do not exist, confusion is not likely to occur.
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • We turn then to the question of whether applicant's goods and opposer's goods are sufficiently related and/or whether the circumstances surrounding the marketing of the goods are such that purchasers encountering them would, in view of the similarity of the marks, mistakenly believe that the goods emanate from the same source. See Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590 (TTAB 1978); and In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). Even if the marks are identical, if these conditions do not exist, confusion is not likely to occur. See, e.g., Nautilus Group Inc. v. ICON Health and Fitness Inc., 71 USPQ2d 1173, 1185 (Fed. Cir. 2004); In re Unilever Limited, 222 USPQ 981 (TTAB 1984); and In re Fesco, Inc., 219 USPQ 437 (TTAB 1983).
  • Where the applicant's goods are identical to the opposer's goods, the degree of similarity between the marks which is required to support a finding of likelihood of confusion is less than it would be if the goods were not identical.
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • Finally, in cases such as this, where the applicant's goods are identical to the opposer's goods, the degree of similarity between the marks which is required to support a finding of likelihood of confusion is less than it would be if the goods were not identical. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • It is clear that if these identical goods are offered under similar marks there would be a likelihood of confusion. Thus, we turn to the marks, keeping in mind that when marks would appear on identical goods, the degree of similarity between the marks necessary to support a finding of likely confusion declines. Century 21 Real Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • Finally, in cases such as this, where the applicant's goods are identical (in part) to the opposer's goods, the degree of similarity between the marks which is required to support a finding of likelihood of confusion is less than it would be if the goods were not identical. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
    • Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004).
      • Moreover, where, as in the present case, the marks would appear on virtually identical goods and services, the degree of similarity between the marks which is necessary to support a finding of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
    • Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006).
      • Additionally, where, as in the present case, the marks are applied to identical goods, the degree of similarity between the marks which is necessary to support a finding of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994).
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • Finally, we note "[w]hen marks would appear on virtually identical goods or services, the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • We also begin this discussion of the similarity of the marks mindful of black letter trademark case law that where, as here, the marks are applied to "virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) [finding CENTURY LIFE OF AMERICA for insurance underwriting services confusingly similar to opposer's CENTURY 21 mark for insurance brokerage services]; Centraz Industries Inc. v. Spartan Chemical Co., 77 USPQ2d 1698, 1700 (TTAB 2006) [finding [iShine] and ICE SHINE confusingly similar for floor-refinishing preparations].
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • Next, we must consider whether the goods and services of the parties are related. Here, the goods are in part identical because applicant seeks registration for pants, jackets, t-shirts, sweatshirts, and shorts and these goods are identical to items in the CHICAGO BEARS mark (No. 1,803,222). To the extent that the goods of the parties are identical, when "marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
    • In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006).
      • We turn then to the marks, keeping in mind that when marks would appear on identical goods, the degree of similarity between the marks necessary to support a finding of likely confusion declines. Century 21 Real Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
    • Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006).
      • Finally, where as in the present case, the marks would appear on legally identical goods, the degree of similarity between the marks which is necessary to support a finding of likelihood of confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2 14698 (Fed. Cir. 1992).
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • We turn then to the marks, keeping in mind that when marks would appear on identical goods, the degree of similarity between the marks necessary to support a finding of likely confusion declines. Century 21 Real Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
    • Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006).
      • First, "when marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
    • In re Chica, Inc., Serial No. 76627857, (TTAB 2007).
      • We point out that both the cited registration's and the application's identifications of goods include the identical goods: "jewelry." "When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • In addition, when "marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • We note in discussing this factor, the Court of Appeals for the Federal Circuit has held that when marks appear on "virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • "When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • "When marks would appear on virtually identical goods or services, the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1992).
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • In considering the marks, we initially note that when marks are used in connection with identical goods and/or services, "the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • In this case, the purchasers of the goods are ordinary consumers who would not exercise a great deal of care in their purchasing decision.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • In considering the marks, we initially note that when marks are used in connection with identical goods and/or services, "the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
    • INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002)
      • Considering next the marks, we note at the outset that when the goods are at least in part legally identical, as is the case here, "the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • Insofar as the marks are concerned, we initially note that when marks are applied to legally identical goods, as is the case here, "the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • The issues concerning the similarity of the marks and the similarity of the goods and services are interrelated. When goods and services are highly related, "the degree of similarity necessary to support a conclusion of likely confusion declines." Shen Manufacturing Co., Inc. v. The Ritz Hotel Limited, 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004).
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • In comparing the goods, we initially note that where identical marks are involved, as is the case here, the degree of similarity between the parties' goods that is required to support a finding of likelihood of confusion declines. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed. Cir. 1993); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001).
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • We turn then to consideration of the marks. In doing so, we are mindful of the proposition that when marks appear on or in connection with virtually identical or closely related goods, the degree of similarity of the marks necessary to support a conclusion of likely confusion is not as great as when the goods are different. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), and In re L.C. Licensing, Inc., 49 USPQ2d 1379, 1381 (TTAB 1998).
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • In comparing the goods, we initially note that where identical marks are involved, as is the case here, the degree of similarity between the parties' goods that is required to support a finding of likelihood of confusion declines. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed. Cir. 1993); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001).
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006).
      • Turning to the likelihood of confusion issue, two key factors are the degree of similarity of the parties' marks and the degree of similarity of their respective goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • We find this evidence sufficient to establish that applicant's fresh citrus fruits and registrant's canned fruits and vegetables, although not precisely identical, are nonetheless similar under the second du Pont evidentiary factor. Generally, the greater the degree of similarity between the parties' marks, the lesser the degree of similarity required in the parties' goods to support a finding of likelihood of confusion. Moreover, where, as here, the parties' marks are essentially identical in terms of their overall commercial impressions, there need be only a viable relationship between their respective goods in order to find that a likelihood of confusion exists. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
  • Where the parties' marks are essentially identical in terms of their overall commercial impressions, there need be only a viable relationship between their respective goods in order to find that a likelihood of confusion exists.
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • We find this evidence sufficient to establish that applicant's fresh citrus fruits and registrant's canned fruits and vegetables, although not precisely identical, are nonetheless similar under the second du Pont evidentiary factor. Generally, the greater the degree of similarity between the parties' marks, the lesser the degree of similarity required in the parties' goods to support a finding of likelihood of confusion. Moreover, where, as here, the parties' marks are essentially identical in terms of their overall commercial impressions, there need be only a viable relationship between their respective goods in order to find that a likelihood of confusion exists. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
  • Case Finding: "entertainment services, namely, presentations of pageants and contests" are indentical to "entertainment services, namely, presentations of pageants and contests."
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Applicant's services, as recited in the application, are "entertainment services in the nature of conducting gay beauty pageant." Opposer's services, as recited in its Registration No. 1597876 (MISS UNIVERSE), are "entertainment services, namely, presentations of pageants and contests" in Class 41. The services recited in opposer's Registration No. 620557 (MISS UNIVERSE) are "promoting the sale of goods and services by others through the medium of a beauty contest conducted on a national and regional basis" in Class 35.6

        Based on these respective recitations of services, see Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002), we find that applicant's services are identical to opposer's services insofar as both parties' services involve conducting or presenting entertainment services in the nature of beauty pageants. Also, the evidence of record shows that the intended format of applicant's beauty pageant is or will be essentially identical to the format of opposer's pageant. For example, both pageants are or will involve preliminary regional contests which lead to a televised final pageant featuring celebrity masters of ceremonies, celebrity entertainers and celebrity judges. (Roth Dep. at 58-61; Santomauro Dep. At 21-24.)

        FOOTNOTE 6 "We note that opposer, in its briefs, has presented no arguments pertaining specifically to the issue of likelihood of confusion between applicant's mark and services and the marks and goods or services covered by opposer's other three pleaded registrations, i.e., Registration No. 1182063 (MISS UNIVERSE for magazines), Registration No. 1146211 (MISS UNIVERSE for clothing items), and Registration No. 2733781 (MISS NUDE UNIVERSE for beauty pageants). In view thereof, we shall give no consideration to opposer's pleaded Section 2(d) claim insofar as it is based on these other three registrations, and shall consider opposer's Section 2(d) claim only as it pertains to opposer's MISS UNIVERSE registrations in Classes 35 and 41."

  • The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed. Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • As a result, we must assume that applicant's jewelry, bumper stickers, insulated beverage containers, towels, clothing items, and ornamental novelty buttons encompass all goods of that type. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) ("The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed"). See also Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) ("Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods"). Therefore, we conclude that applicant's and opposers' goods are in part identical, and otherwise related, and this factor also favors opposers.
  • The issue is not whether each party's goods/services will be confused for one another or whether the relevant public will be able to distinguish between the goods/services themselves. Rather, the issue is whether the relevant public will assume, due to the similarity of the marks, that there is a source, sponsorship or other connection between the two goods/services.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Applicant argues that the parties' respective pageants are not directly competitive and would not be confused for each other due to the difference in the contestant pools for each pageant, with opposer's MISS UNIVERSE pageant involving unmarried females and applicant's MR. GAY UNIVERSE pageant involving gay males. However, the issue is not whether the two pageants will be confused for one another or whether the relevant public will be able to distinguish between the pageants themselves. Rather, the issue is whether the relevant public will assume, due to the similarity of the marks, that there is a source, sponsorship or other connection between the two pageants. The difference in the respective contestant pools is not dispositive, if the public is likely to assume that applicant's pageant is an offshoot of or is otherwise affiliated with opposer's famous pageant.

        "The likelihood of confusion in this case does not stem only from the possibility that a consumer might mistake the defendants' services for those of the plaintiff. The real danger lies in the probability that this same consumer may associate the defendants with the plaintiff. Thus, it would be quite reasonable to assume that the defendant's MRS. USA pageant [a contest involving married women only] is an offshoot of the plaintiff's MISS USA pageant [a contest involving unmarried women only]." Miss Universe, Inc. v. Pitts, 714 F.Supp. 209, 216-17, 14 USPQ2d 2004, 2010 (W.D. La. 1989)(internal citation omitted).

    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Likewise, in a case finding a likelihood of confusion between the marks MISS AMERICA (for a pageant involving females aged 18 to twenty-eight years old) and LITTLE MISS AMERICA (for a pageant involving females aged five to ten years old), the predecessor to our primary reviewing court found as follows: "Though the record discloses vast differences in the scale and details of their operations, it seems to us that both would be perceived by the public at large as being in the same general business." Palisades Pageants, Inc. v. Miss America Pageant, 442 F.2d 1385, 1388, 169 USPQ 790, 793 (CCPA 1971). See also Miss Universe Inc. v. Drost, 189 USPQ 212 (TTAB 1976)(finding likely confusion between the marks MISS USA and MISS NUDE USA, both for beauty pageants).
  • Third-party registrations are of little material significance in determining likelihood of confusion since the existence of these registrations is not evidence of what happens in the marketplace or of the fact that consumers are familiar with them. Moreover, the inclusion on the register of confusingly similar marks cannot aid an applicant to register another mark which is likely to cause confusion.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Applicant also argues that by "long standing tradition," male and female pageants are so "well divided" that purchasers are accustomed to distinguishing between male and female pageants as to source. There is no evidence in the record to support this assertion. Applicant cites the co-existence on the Register of third-party registrations of marks including MISS AMERICA and MR. AMERICA, and MISS U.S.A. and MR. U.S.A. However, these third-party registrations are "of little material significance" in determining likelihood of confusion "since the existence of these registrations is not evidence of what happens in the marketplace or of the fact that consumers are familiar with them. Moreover, the inclusion on the register of confusingly similar marks cannot aid an applicant to register another mark which is likely to cause confusion." Miss Universe v. Drost, supra, 189 USPQ at 213-14. Further with respect to applicant's "male vs. female" argument, see Augusta National, Inc. v. The Northwestern Mutual Life Ins. Co., 193 USPQ 210, 220 (S.D. Ga. 1976)("Defendant has sought to make much of the fact that the Masters is a men's [golf] tournament, while NMC's is for women only, thereby eliminating any confusion between the two. But that fact would not prevent the public from believing that both Masters were being sponsored and operated by Augusta National").
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Finally, applicant argues that its pageant and opposer's pageant will not be confused because applicant's pageant involves gay contestants while opposer's pageant involves straight contestants. This argument is unpersuasive because, first, opposer's recitation of services is worded broadly enough that it encompasses both gay and straight pageants. More fundamentally, however, and as noted above, the issue is not whether the two pageants would be confused for each other, but whether the public will mistakenly assume, due to the similarity of the marks, that there is a source connection or affiliation between applicant's pageant and opposer's pageant.
  • Third-party registrations are not evidence that the marks shown therein are in use or that the public is familiar with them; they nonetheless have probative value to the extent that they serve to suggest that the goods or services listed therein are of a kind which may emanate from a single source under a single mark.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • Although these third-party registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, they nonetheless have probative value to the extent that they serve to suggest that the goods or services listed therein are of a kind which may emanate from a single source under a single mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
  • A determination under Section 2(d) should be based on applicant's goods/services as recited in the application as compared to the goods recited in petitioner's petition to cancel, rather than what respondent's goods are asserted or shown to actually be, and not on any extraneous evidence as to the actual nature of applicant's services.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • However, it is settled that we must make our determination under Section 2(d) based on applicant's services as recited in the application, and not on any extraneous evidence as to the actual nature of applicant's services. See Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • Insofar as the goods are concerned, it is well settled that the question of likelihood of confusion must be determined based on an analysis of the goods recited in applicant's application vis-à-vis the goods identified in the cited registration. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992).
    • Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006).
      • Considering first the goods of the parties, it is well established that the issue of likelihood of confusion in a proceeding such as this must be determined on the basis of the identification of goods or services set forth in defendant's involved registration vis-à-vis the identification of goods or services in plaintiff's registration. See Octocom Services Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • With respect to the goods and/or services, the nature and scope of a party's goods and/or services must be determined on the basis of the goods and/or services recited in the application and/or registration. See, e.g., Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006).
      • With regard to the similarity of the goods at issue, it is well settled that the question of likelihood of confusion must be determined based on an analysis of the goods recited in respondent's registration vis-à-vis the goods recited in petitioner's petition to cancel, rather than what respondent's goods are asserted or shown to actually be. See, e.g., Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
  • Case Finding: The mere use of the term "associations" is not enough to believe that the general public would understand that the organization was not connected with, or approved by, the United States Government.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • We simply cannot agree that such a "sharp demarcation" exists in the public's understanding as to the relationship or lack of a relationship between an association and a governmental agency where the name of the association includes within it the name of the agency. Even if we were to assume that "associations" in fact are always nongovernmental organizations, we still would find that the relevant public is likely to assume, due to the presence of the words OF THE UNITED STATES ARMY in applicant's mark, that applicant's organization and its services, and its use of its mark, are connected with or approved by the United States Army.
  • It is sufficient that the respective goods and services are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods and services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • It is sufficient that the respective goods and services are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods and services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. See Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re International Telephone & Telephone Corp., 197 USPQ 910, 911 (TTAB 1978).
  • The issue, of course, is not whether purchasers would confuse the goods and services, but rather whether there is a likelihood of confusion as to the source thereof.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • The issue, of course, is not whether purchasers would confuse the goods and services, but rather whether there is a likelihood of confusion as to the source thereof. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
  • Comparison of goods in connection with a certification mark.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • As previously noted, because opposer's RATED R mark is a certification mark, it is not used by opposer. See Section 4 of the Trademark Act, 15 U.S.C. §1054. Rather, opposer's RATED R mark is used by persons certified by opposer. See TMEP §1306.01(a)….Thus, for purposes of our likelihood of confusion analysis, we must determine whether applicant's "men's and ladies' shirts, pants, ladies' dresses, shorts and jackets" are related to the "entertainment services rendered through the medium of motion pictures" provided by users of opposer's RATED R certification mark. See DuPont v. Yoshida, supra. See also Tea Board of India v. Republic of Tea, Inc., 80 USPQ2d 1881 (TTAB 2006).
  • Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
  • Where opposer's mark (including a certification mark) is famous, there is an even greater likelihood that purchasers will be confused inasmuch as less care may be taken in purchasing a product under a famous mark even when the goods and/or services involved are not closely related.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • Finally, our primary reviewing court has held that in cases such as this in which an opposer's mark is famous, there is an even greater likelihood that "purchasers will be confused inasmuch as less care may be taken in purchasing a product under a famous mark" even when the goods and/or services involved are not closely related. See Recot, supra, at 1898.
  • Where the evidence introduced by opposer establishes that applicant's goods and the services provided by users of opposer's certification mark are related, and where there are no recited restrictions as to their channels of trade or classes of purchasers, it is assumed that the goods and services are available in all the normal channels of trade to all the usual purchasers for such goods and services, and that the channels of trade and the purchasers for applicant's goods as well as the services certified by opposer would be the same.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • Because the evidence introduced by opposer establishes that applicant's goods and the services provided by users of opposer's certification mark are related, and because there are no recited restrictions as to their channels of trade or classes of purchasers, we must assume that the goods and services are available in all the normal channels of trade to all the usual purchasers for such goods and services, and that the channels of trade and the purchasers for applicant's goods as well as the services certified by opposer would be the same. See Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000).
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • Applicant's argument is unavailing. Neither applicant's nor opposer's identification of goods is limited in any way as to trade channels or purchasers, and we therefore must presume that the identified goods are marketed in all normal trade channels for such goods and to all normal classes of purchasers for such goods. In re Elbaum, 211 USPQ 639 (TTAB 1981). Any evidence as to the differences in the parties' current or anticipated actual trade channels is irrelevant to our determination under the second and third du Pont factors. See Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., supra, 1 USPQ2d at 1450, and cases cited therein.
    • In re Chica, Inc., Serial No. 76627857, (TTAB 2007).
      • Also, inasmuch as the goods are identical and closely related and there are no restrictions on the goods, we must assume that the goods move in the same channels of trade to the same customers. Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069, 2073 (TTAB 1989) ("[S]ince there are no restrictions with respect to channels of trade in either applicant's application or opposer's registrations, we must assume that the respective products travel in all normal channels of trade for those alcoholic beverages").
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • Applicant's goods include t-shirts, jackets, swimsuits and wet suits. These goods are identical to the t-shirts, jackets, swimsuits and wet suits listed in the cited registration. Pointing to printouts from registrant's website (sexwax.com), applicant argues that registrant targets a very specialized market selling surfing-related products and predominantly wax products. Response dated June 8, 2006. However, we must base our analysis on the goods as identified in the application and registration. Registrant's goods are identified as clothing, not wax products, and the clothing is identified broadly without any restrictions as to a particular use or a particular market. Because there are no restrictions in the identification of goods, we must assume that these identical goods are used for all the usual purposes, that they are sold in all the normal channels of trade to all the usual purchasers for such goods, and that the uses, channels of trade and purchasers for both applicant's and registrant's goods would be the same. See J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); and Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (registrability is based on the identification of goods "regardless of what the record may reveal as to the particular nature of an applicant's goods...").
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Absent any restrictions in the respective applications and registrations, we must presume that applicant's apparel and bags and opposer's apparel are sold through all normal channels of trade for those goods, including all the usual retail outlets. See Canadian Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • Where there is no limitation on the channels of trade in the recitation of services in any of the subject applications, as in this proceeding, it is presumed that the recitations encompass all services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. Paula Payne Products Co. v. Johnson Publishing Co., 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • Because there are no restrictions as to the channels of trade in petitioner's registrations pertaining to television broadcasting services, we must consider petitioner's television broadcasting services as if they were rendered in all of the normal channels of trade to all of the normal purchasers of such services. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, supra; Toys R Us v. Lamps R Us, 219 USPQ 340, 343 (TTAB 1983). Thus, as a matter of law, as well as fact, petitioner's television broadcasting services include distribution by satellite and cable.
  • Case Finding: Cases finding in favor of the second du Pont factor.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • Thus, while we recognize that applicant's goods may not be available in movie theaters through which persons render the services certified by opposer, both the goods and services are presumed to be marketed to the same consumers, i.e., the general public. As a result of the foregoing, we find that if these related goods and services were offered under similar marks there would be a likelihood of confusion. Thus, this du Pont factor also favors opposer.
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • The evidence of record establishes that opposer uses its marks on newsletters, on printed recipes, and on recipes included as part of the packaging for its prepared food products such as crackers.6 (Hood Decl. at ¶¶ 8-9, Exh. Nos. 3, 4 and 21.) These goods are legally identical to the various "newsletters" and to the "printed recipes sold as a component of food packaging" identified in applicant's application (such "food packaging" being so broadly worded that it legally encompasses packaging for all types of food products, including opposer's types of food products), and the second du Pont factor therefore clearly weighs in opposer's favor as to those goods. We also find that the printed goods identified in applicant's application are similar and related to opposer's prepared food products, for purposes of the second du Pont factor.
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • Because applicant's "printed recipes sold as a component of food packaging" must be deemed to include recipes on packaging for foods which feature, as ingredients, food items like opposer's such as bakery products, corn and tortilla chips, or breakfast cereals, consumers would be likely to associate such recipes with opposer's products if they were offered under confusingly similar marks. Based on this evidence, we find that applicant's goods, as identified in the application, are legally identical to the printed goods on which opposer has proven prior use of its marks, and that they are similar and commercially related to opposer's food products. The second du Pont factor therefore weighs in opposer's favor in our likelihood of confusion analysis.
  • Case Finding: Examples of the determination of goods and services.
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • Applicant's goods are identified in the application as "road maps." We must presume that applicant's goods include all types of road maps, and not just the types of road maps applicant actually markets under the mark at this time. See Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 473 FF.2d 901, 177 USPQ 76 (CCPA 1973); In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001); In re Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986).
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • The identification of goods in opposer's Registration No. 2,000,037, of the mark ROAD RUNNER in typed form, includes "children's books, coloring books, [and] activity books." Opposer has presented evidence which shows that a third party, Rand McNally, sells both maps and children's activity books under the same mark, i.e., "Rand McNally." See opposer's Exhibit No. 73.21 This is probative evidence that purchasers are likely to assume a source connection between road maps and children's activity books which are sold under the same or similar marks. Cf. Recot, Inc., supra; In re Albert Trostel & Sons Co., 29 USPQ2d 1783; In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • We also find that applicant's "road maps" are related to the goods identified in opposer's Registration No. 1,927,458, i.e., "motion picture, video, and television films; prerecorded audio-video tapes, cassettes and/or discs featuring animation and/or music," because road maps are within opposer's natural area of expansion. See generally Mason Engineering & Designing Corp. v. Mateson Chemical Corp., 225 USPQ 956 (TTAB 1985).
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • We conclude from this evidence that road maps are within the natural area of expansion of products for which opposer might license use of its Looney Tunes marks, including the Road Runner. There is no evidence in the record which suggests that opposer would not or could not license the Road Runner mark for use on maps. In view thereof, we find that purchasers encountering a road map bearing applicant's confusingly similar road runner mark are likely to assume that opposer has licensed or approved use of such mark.
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • We find that applicant's goods, as identified in the application, are legally identical to certain of opposer's goods (applicant's skin cleansers and moisturizers versus opposer's facial cleansers, skin soaps and lotions), and otherwise are closely related personal care products. Applicant has presented no argument to the contrary, but argues instead that the goods are unrelated because the parties are or will be marketing their respective goods in different trade channels and to different classes of purchasers. Specifically, applicant argues that its products are marketed to purchasers in the "motorcyclemarket," and not in the mass market retail trade channels in which opposer markets its products... Applicant's argument is unavailing.
  • It is sufficient if likelihood of confusion is found with respect to use of the mark on any item that comes within the description of goods in the application or registration.
    • Apple Computer v. TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007).
      • Moreover, in the context of likelihood of confusion, it is sufficient if likelihood of confusion is found with respect to use of the mark on any item that comes within the description of goods in the application or registration. Tuxedo Monopoly Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (MONOPOLY on T-shirts, where application included "shirts," would be likely to cause confusion with plaintiff's mark on board game).
  • The likelihood of confusion determination must be made on the basis of the goods or services as identified in the application and the registration, rather than on the basis of what the evidence might show the applicant's or registrant's actual goods or services to be.
    • In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999).
      • Trackmobile does not stand for the proposition that when the goods or services identified in the cited registration are described broadly, the Board may or should consider extrinsic evidence as to the nature of the registrant's actual goods or services when making its likelihood of confusion determination.3 Indeed, that proposition is directly contrary to the rule, expressly reiterated by the Board in Trackmobile, that the likelihood of confusion determination must be made on the basis of the goods or services as identified in the application and the registration, rather than on the basis of what the evidence might show the applicant's or registrant's actual goods or services to be. See In re Trackmobile, supra, 15 USPQ2d at 1153. See also Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).

        FOOTNOTE 3 "In Trackmobile, a Section 2(d) refusal had been issued based on a registration in which the goods were identified as "light railway motor tractors." The applicant, in attempting to overcome the Section 2(d) refusal by demonstrating that its goods were unrelated to the goods identified in the cited registration, offered extrinsic evidence as to the nature of the registrant's goods, evidence which the Board considered."

  • With respect to the goods, as often stated, TTAB proceedings are concerned with registrability and not use of a mark and, thus, the common identification of goods in the registration and application frames the issue.
    • Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006).
      • With respect to the goods, as often stated, Board proceedings are concerned with registrability and not use of a mark and, thus, the common identification of goods in the registration and application herein frames the issue. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
  • It is well settled that the determination of whether there is a likelihood of confusion must be based on the goods and services as they are identified in applicant's opposed applications.
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • It is well settled that the determination of whether there is a likelihood of confusion must be based on the goods and services as they are identified in applicant's opposed applications. Octocom, 16 USPQ2d at 1787. See also J & J Snack Foods Corp. v. McDonald's Corp., 18 USPQ2d 1889, 1882 (Fed. Cir. 1991); and Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 1 USPQ2d 1813 (Fed. Cir. 1987).
  • In analyzing this particular factor in the present case, it is of significant importance that the issue of likelihood of confusion must be determined on the basis of respondent's goods as they are set forth in the involved registration, rather than in light of what the goods actually are as shown by any extrinsic evidence.
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • In analyzing this particular factor in the present case, it is of significant importance that the issue of likelihood of confusion must be determined on the basis of respondent's goods as they are set forth in the involved registration, rather than in light of what the goods actually are as shown by any extrinsic evidence. See, e.g., Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); and Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983).
  • The question of likelihood of confusion is based on the goods as identified in the application and registrations regardless of what the record may show as to the actual channels of trade or purchasers for the goods.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • In any event, the question of likelihood of confusion is based on the goods as identified in the application and registrations regardless of what the record may show as to the actual channels of trade or purchasers for the goods. See CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).
  • There is nothing in the language of Section 2(d) and otherwise no authority for treating certification marks differently from trademarks, or for affording them a lesser scope of protection.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • In fact the Board held "as a matter of law" that in a case involving a certification mark "the traditional du Pont likelihood of confusion analysis is applicable" and "as in any other Section 2(d) case ... includes likelihood of confusion as to source, sponsorship, affiliation, or connection." Institut, supra at 1891; and also at 1890 (pointing out that there is nothing in the language of Section 2(d) and otherwise no authority for treating certification marks differently from trademarks, or for affording them a lesser scope of protection).
  • When a user's goods are not genuine or do not meet the certifier's standards, it may provide additional support for a Section 2(d) claim.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • When a user's goods are not genuine or do not meet the certifier's standards, it may provide additional support for a Section 2(d) claim. See, e.g., Bureau National Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610, 1617 (TTAB 1988) (finding that the mark COLAGNAC so resembled the certification mark COGNAC "as to be likely, when applied to the goods of the applicant, to cause confusion, mistake, or deception among purchasers, that is, to cause them to mistakenly believe that applicant's product is, or contains, authentic 'COGNAC' brandy (i.e., brandy which has been certified by opposer Bureau as having been produced from grapes grown in the Cognac region of France in accordance with French laws and regulations.)").
  • The fact that a user's products may be genuine, whether in whole or in part, is simply irrelevant, and is not a defense to a likelihood of confusion claim.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • In contrast, the fact that a user's products may be genuine, whether in whole or in part, is simply irrelevant, and is not a defense to a likelihood of confusion claim. See, e.g., Societe Des Produits Nestle v. Casa Helvetia, Inc., 982 F.2d 633, 25 USPQ2d 1256, 1262 (1st Cir. 1992) ("A showing that the alleged infringing product suffers in quality is not necessary to prove a Lanham Act violation"); and The American Angus Association v. Sysco Corp., 829 F.Supp. 807, 25 USPQ2d 1683, 1691 (W.D.N.C. 1992) ("Even if such a certification existed, making the phrase 'certified angus beef' arguably truthful as applied to Defendants' product...[i]t is the secondary meaning of the phrase (aligning it with Plaintiff's product) which makes its use in Defendants' ads impermissible.").
  • The greater the degree of similarity in the marks, the lesser the degree of similarity that is required of the products or services on which they are being used in order to support a holding of likelihood of confusion.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • Moreover, "the greater the degree of similarity in the marks, the lesser the degree of similarity that is required of the products or services on which they are being used in order to support a holding of likelihood of confusion." In re Concordia International Forwarding Corp., 222 USPQ 352, 356 (TTAB 1983). See also, In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (Contemporaneous use of identical or nearly identical marks can lead to the assumption that there is a common source "even when [the] goods or services are not competitive or intrinsically related.")
  • There is certainly no rule that all computer products and services are related.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Opposer argues that its goods are closely related to applicant's goods and points to its registrations for computer consulting services and its computer-based irrigation and fertigation systems. Br. at 16. However, there is certainly no rule that all computer products and services are related. In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) ("[W]e think that a per se rule relating to source confusion vis-a-vis computer hardware and software is simply too rigid and restrictive an approach and fails to consider the realities of the marketplace"). See also Electronic Design and Sales Inc. v. Electronic Data Systems, 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992) (No confusion between battery chargers and power supplies and computer services).
  • It is not necessary that opposer prove likelihood of confusion with respect to all of the goods set forth in applicant's application.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • Applicant concedes that the goods are identical in terms of paper towels, and that such goods are sold in the same channels of trade. (Applicant's brief at 8).2

        FOOTNOTE 2 "It is not necessary that opposer prove likelihood of confusion with respect to all of the goods set forth in applicant's application. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983)."

  • Where the goods and channels of trade are identical, the goods must be presumed to be sold to the same class of purchasers.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • Further, in view of the identity of the goods and trade channels, the goods must be presumed to be sold to the same class of purchasers. In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
  • The issue is not whether purchasers would confuse the goods and/or services, but rather whether there is a likelihood of confusion as to the source of the goods and/or services.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • The issue, of course, is not whether purchasers would confuse the goods and/or services, but rather whether there is a likelihood of confusion as to the source of the goods and/or services. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
  • Likelihood of confusion may result from the use by different parties of the same or similar marks in connection with goods, on the one hand, and services which deal with or are related to those goods, on the other.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • It is settled that the likelihood of confusion may result from the use by different parties of the same or similar marks in connection with goods, on the one hand, and services which deal with or are related to those goods, on the other. See In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988) and Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983). See also J. Thomas McCarthy, Trademarks and Unfair Competition §24:25 (2006) ("[w]here the services consist of retail sales services, likelihood of confusion is found when another mark is used on goods which are commonly sold through such a retail outlet.").
  • TTAB proceedings are concerned with registrability and not use of a mark and, thus, the identification of goods in the respective registrations herein frames the issue.
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • As often stated, Board proceedings are concerned with registrability and not use of a mark and, thus, the identification of goods in the respective registrations herein frames the issue. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
  • If there is a likelihood of confusion as to some of the goods, then applicant's application must be refused as to the entire class of goods.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • In this case, opposer has not provided any evidence that its undergarments must be considered related to those clothing items in applicant's identification of goods that are not identical or virtually identical to opposer's goods. We therefore have focused our analysis only on the identical goods. Nonetheless, if we find there is a likelihood of confusion as to those goods, then applicant's application must be refused as to the entire class of goods. See Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004) and cases cited therein.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • In sum, while there is no evidence that opposer's goods are related to many of applicant's identified clothing items, the fact that even some of applicant's goods are identical to opposer's goods means the similarity of the goods is a factor that favors opposer.
  • When goods are identical, the degree of similarity necessary to support a conclusion of likely confusion declines.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • We turn then to a comparison of opposer's mark in application Serial No. 74468405 for bags, where STARTER is part of the mark, with applicant's mark for identical goods, keeping in mind that when goods are identical, "the degree of similarity necessary to support a conclusion of likely confusion declines." Shen Manufacturing Co., Inc. v. The Ritz Hotel Limited, 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004).
  • Evidence: Third-party registrations and applicant's unrelated application can suggest that the services are of a type that may emanate from a single source in connection with the same mark.
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • Thus, the numerous third-party registrations and applicant's unrelated application for the mark WYNN suggest that the services involved herein, namely, opposer's hotel services and applicant's casino services, restaurant, bar, and cocktail lounge services, are of a type that may emanate from a single source in connection with the same mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
  • A party's unsupported argument as to whether the respective services are related is unpersuasive to overcome the other party's argument with evidentiary support.
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • However, in stark contrast to opposer's submission of evidence, applicant did not provide any evidence to show, or designate specific portions of the record to show, that there is a genuine factual issue as to whether the respective services are related. In view of the extensive evidence provided by opposer, applicant's unsupported argument is unpersuasive. See Octocom, 16 USPQ2d at 1786 (Court determined that applicant's argument was "without evidentiary foundation" and "no more than [applicant's] disagreement with the board's ultimate conclusion on the likelihood-of-confusion issue").
  • Case Finding: Hotel and restaurant services are related such that purchasers would ascribe a common origin to them when rendered under similar marks.
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • Moreover, we note that in the past the Board has found hotel and restaurant services to be related such that purchasers would ascribe a common origin to them when rendered under similar marks. The Board has found that it is common for hotels to have restaurants as part of their package of services and that hotel chains have evolved from what were initially restaurant businesses only. See In re The Summit Hotel Corporation, 220 USPQ 927 (TTAB 1983) (restaurants and hotels offer complementary services to the same general class of consumers) and Bonaventure Associates v. Westin Hotel Co., 218 USPQ 537 (TTAB 1983)(restaurant services are an integral part of hotel services). See also In re Dixie Restaurants Inc., 41 USPQ2d at 1534 (likelihood of confusion between THE DELTA CAFÉ and design for restaurant services and DELTA for hotel, motel and restaurant services).
  • With respect to the du Pont factor of the similarity of the goods and/or services, the case law is clear that it is not necessary that the goods or services of applicant and the registrant be similar or competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective goods or services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same producer.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • With respect to the du Pont factor of the similarity of the goods and/or services, the case law is clear that it is not necessary that the goods or services of applicant and the registrant be similar or competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective goods or services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same producer. See In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
  • Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Infinity Broadcasting Corporation, 60 USPQ2d 1214, 1217-1218 (TTAB 2001).
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • Third-party registrations may have some probative value to the extent that they serve to suggest that the listed goods are of a type which may emanate from a single source. However, this evidence is insufficient to convince us, as opposer claims, that its clothing will be perceived by consumers as emanating from or sponsored by applicant.
  • The question of likelihood of confusion must be determined based on an analysis of the mark as applied to the goods and/or services recited in an applicant's application visà- vis the goods and/or services recited in the cited registration, rather than what the evidence shows the goods and/or services to be.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • The problem with applicant's argument is that it is based on applicant's actual activities and what it asserts are the registrant's actual business practices. However, the question of likelihood of confusion must be determined based on an analysis of the mark as applied to the goods and/or services recited in an applicant's application visà- vis the goods and/or services recited in the cited registration, rather than what the evidence shows the goods and/or services to be. See Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); In re William Hodges & Co., Inc., 190 USPQ 47 (TTAB 1976).
  • Case Finding: The third-party registrations made of record show that entities may adopt a single mark for the services identified in both applicant's application and the cited registration. Accordingly, if consumers encounter these services rendered under the same or a confusingly similar mark, they are likely to believe that they emanate from the same source.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • The third-party registrations made of record show that entities may adopt a single mark for the services identified in both applicant's application and the cited registration. Accordingly, if consumers encounter these services rendered under the same or a confusingly similar mark, they are likely to believe that they emanate from the same source. The du Pont factor of the similarity of the services favors a finding of likelihood of confusion.
  • A broad general market category is not a generally reliable test of relatedness of products.
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • As the provider of electric power to Kotzebue, KEA presumably purchases numerous goods and services. However, we simply do not have evidence to conclude that KEA and other cooperatives would assume that all goods and services are associated with petitioner simply because such goods and services are all involved with producing electricity. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1310 (Fed. Cir. 2002) (A "broad general market category is not a generally reliable test of relatedness of products").
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • However, we simply do not have evidence to conclude that KEA and other cooperatives would assume that all goods and services are associated with petitioner simply because such goods and services are all involved with producing electricity. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1310 (Fed. Cir. 2002) (A "broad general market category is not a generally reliable test of relatedness of products"). Therefore, we find that petitioner's association services and its services involving conducting educational workshops, seminars and training programs, and management, law, and labor relations update seminars and lectures in the field of rural electrification, are at best only tenuously related to wind turbines and component parts.
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • As for petitioner's lapel pins and publications, petitioner has not established any relationship between these goods and wind turbines. Coors Brewing, 68 USPQ2d at 1064 ("[D]egree of overlap between the sources of restaurant services and the sources of beer is de minimis").
  • The TTAB must consider the cited registrant's goods as they are described in the registration and cannot read limitations into those goods.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • Further, we must consider the cited registrant's goods as they are described in the registration and we cannot read limitations into those goods. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987).
  • If the cited registration describes goods or services broadly, and there is no limitation as to the nature, type, channels of trade or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all channels of trade normal for these goods, and that they are available to all classes of purchasers for the described goods.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • If the cited registration describes goods or services broadly, and there is no limitation as to the nature, type, channels of trade or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all channels of trade normal for these goods, and that they are available to all classes of purchasers for the described goods. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).
  • The fact that the respective marks will not appear with each other increases the likelihood of confusion, since consumers will not have the opportunity of making side-by-side comparisons between the marks, and must rely upon their imperfect recollections.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • In reaching this conclusion, we have considered applicant's argument that its mark and the registrant's mark generally appear in different advertising media, e.g., applicant's mark appears on signs located on real property and in real estate listings, while the registrant's mark "appears on credit card statements and solicitations received by consumers via the mail or a banking institution." Brief, p. 14.7 If anything, the fact that the respective marks will not appear with each other increases the likelihood of confusion, since consumers will not have the opportunity of making side-by-side comparisons between the marks, and must rely upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
  • It is well-settled that the issue of likelihood of confusion between registered marks must be determined on the basis of the services as they are identified in the involved registrations, rather than what any evidence may show as to the actual nature of the services, their channels of trade, and/or classes of purchasers.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • It is well-settled that the issue of likelihood of confusion between registered marks must be determined on the basis of the services as they are identified in the involved registrations, rather than what any evidence may show as to the actual nature of the services, their channels of trade, and/or classes of purchasers. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
  • The question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed.
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • For these reasons, applicant's contention in its brief in opposition to the motion for summary judgment that the channels of trade for its goods will be limited is insufficient to raise a genuine issue of material fact. Fed. R. Civ. P. 56(e). See Octocom, 16 USPQ2d at 1786 ("the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed").
  • Goods may be viewed as complementary in that they may be used together.
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • As shown by the record, the goods may be viewed as complementary in that they may be used together; that is to say, some consumers, when buying a line of products for their bathroom, want their toilet, sink, shower door, bathroom door and cabinet fixtures to all match or at least be coordinated.
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • Although this evidence is far from overwhelming on this factor, it nevertheless has probative value to the extent that the registrations serve to suggest that toilets and sinks on the one hand, and door hardware on the other, are goods of a type that emanate from the same source. In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214 (TTAB 2001); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
  • To demonstrate that goods are related, it is not sufficient that a particular term may be found which may broadly describe the goods.
    • In re The W.W. Henry Company, L.P., Serial No. 78401595, (TTAB 2007).
      • However, to demonstrate that goods are related, it is not sufficient that a particular term may be found which may broadly describe the goods. See General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690 (TTAB 1977); Harvey Hubbell Inc. v. Tokyo Seimitsu Co., Ltd., 188 USPQ 517 (TTAB 1975).
  • The issue of likelihood of confusion is determined on the basis on the goods as identified in the involved application and cited registration, regardless of what the record may reveal as to the particular nature of the goods, their actual trade channels or the class of purchasers to which they are in fact directed and sold.
    • In re Big Pig, Inc., Serial No. 78249582, (TTAB 2006).
      • The issue of likelihood of confusion is determined on the basis on the goods as identified in the involved application and cited registration, regardless of what the record may reveal as to the particular nature of the goods, their actual trade channels or the class of purchasers to which they are in fact directed and sold. See, e.g., Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1813 (Fed. Cir. 1987).
  • The differences between the parties' services and the marks under which they are sold more than offset the fame of petitioner's service mark and, therefore, serve to negate any likelihood of confusion.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • Accordingly, with respect to respondent's telephone calling card services, we find that the differences between the parties' services and the marks under which they are sold more than offset the fame of petitioner's CBN service mark and, therefore, serve to negate any likelihood of confusion. 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 characteristics of the goods and differences in the marks").
  • The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • Accordingly, with respect to respondent's telephone calling card services, we find that the differences between the parties' services and the marks under which they are sold more than offset the fame of petitioner's CBN service mark and, therefore, serve to negate any likelihood of confusion. 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 characteristics of the goods and differences in the marks").
  • Services must be considered to be identical inasmuch as they overlap.
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • Therefore, the services must be considered to be identical inasmuch as they overlap. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) ("The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed"). See also Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) ("Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods").
  • Case Finding: The TTAB may consider extrinsic evidence regarding registrant's goods not to determine the nature of registrant's particular goods, but rather to determine what the class of goods are in general.
    • In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999).
      • Thus, when the Board considered the applicant's extrinsic evidence regarding the registrant's goods in Trackmobile, it was not because the registrant's goods were identified broadly in the registration, but because the Board was uncertain as to what the goods identified in the registration were. That is, the Board did not consider the extrinsic evidence in order to determine the nature of the registrant's particular "light railway motor tractors," but rather to determine what "light railway motor tractors" were, in general.
    • In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999).
      • In the present case, by contrast, no extrinsic evidence is necessary in order to educate the Board as to what "printing services" are; the term, although broad, is neither vague nor uncertain.
  • Where applicant amended the application to clarify that its goods were sold only to the trade, and not general public, the relevant classes of purchases for likelihood of confusion are limited accordingly.
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • The purpose of the amendment was to clarify that applicant's citrus fruit is sold under applicant's mark only to the trade, i.e., to wholesalers and to retailers/storeowners, and not to the general consuming public. Applicant asserts that its fruit bears a different mark when it is offered for sale by retailers to the general public, i.e., applicant's "T.H. WILSON" mark. Accordingly, for purposes of our likelihood of confusion analysis, we assume that the relevant classes of purchasers for applicant's goods are limited to wholesalers and storeowners, and that they do not include the general purchasing public.
  • There is no per se rule that confusion is likely when the same or similar mark is applied to food products on the one hand and to restaurant services on the other.
    • In re Comexa Ltda., Serial No. 75/396,043, (TTAB 2001).
      • Concerning the relatedness of applicant's goods and registrant's services, the Board has noted that there is no per se rule that confusion is likely when the same or similar mark is applied to food products on the one hand and to restaurant services on the other. In re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209, 1210 (TTAB 1999).
    • In re Comexa Ltda., Serial No. 75/396,043, (TTAB 2001).
      • As in that case, we believe that the record herein shows that there is "something more" than simply food versus restaurant services, in the language articulated by our primary reviewing court in Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA 1982).
  • Case Finding: All food products sauces and dressings are perhaps the ones most likely to be marketed by the restaurants in which those items are served.
    • In re Comexa Ltda., Serial No. 75/396,043, (TTAB 2001).
      • The Mucky Duck case is particularly noteworthy for what the Board stated, at 1469: "Although these goods [mustard] and services [restaurant services] obviously differ, mustard is, as the Examining Attorney has noted, a condiment which is commonly utilized in restaurants by their patrons, especially in such restaurants as delicatessens, fast food houses, steak houses, taverns, inns, and the like, and we think it is common knowledge that restaurants sometimes market their house specialties, including items such as salad dressings, through retail outlets." As we observed in that case and as the Examining Attorney has argued, of all food products sauces and dressings are perhaps the ones most likely to be marketed by the restaurants in which those items are served.2 Thus, the nature of the particular food items here is significant.
  • Each application for a new mark, or the addition of goods, must be separately evaluated and each application is unaffected by the prosecution and registration of prior marks.
    • In re Comexa Ltda., Serial No. 75/396,043, (TTAB 2001).
      • With respect to applicant's ownership of a prior registration on the Supplemental Register (AMAZON PEPPER), we observe that the issue before us is likelihood of confusion with the cited mark. The fact that applicant owns a Supplemental Register registration is not particularly relevant to our determination. See In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed. Cir. 1985) ("[Applicant's] existing rights arising from its registration of DURANGOS for cigars are unaffected by the ruling with respect to the subject application… The basic flaw in [applicant's] analysis is that each application for registration of a mark for particular goods must be separately evaluated. Nothing in the statute provides a right ipso facto to register a mark for additional goods when items are added to a company's line or substituted for other goods covered by a registration. Nor do the PTO rules afford any greater rights…"); and In re Sunmarks Inc., 32 USPQ2d 1470, 1472-73 (TTAB 1994)("The cases are legion holding that each application for registration of a mark for particular goods or services must be separately evaluated… Section 20 of the Trademark Act, 15 USC Section 1070, gives the Board the authority and duty to decide an appeal from an adverse final decision of the Examining Attorney. This duty may not be delegated by adoption of conclusions reached by Examining Attorneys on different records. Suffice it to say that each case must be decided on its own merits based on the evidence of record. We obviously are not privy to the record in the files of the registered marks and, in any event, the issuance of a registration(s) by an Examining Attorney cannot control the result of another case.")
  • There is no per se finding of no likelihood of confusion whenever we have restaurant services against food products, because there will allegedly always be some evidence of relatedness between food products and restaurant services
    • In re Comexa Ltda., Serial No. 75/396,043, (TTAB 2001).
      • Finally, while the dissent fears that there will always be registrations covering both restaurant services on the one hand and an involved food item on the other, leading to the establishment of a per se rule finding likelihood of confusion, we believe that we should not substitute another per se rule (that of finding no likelihood of confusion whenever we have restaurant services against food products, because there will allegedly always be some evidence of relatedness between food products and restaurant services) for a careful evaluation of the quality and quantity of the evidence in each case. Precedent clearly requires us to evaluate the evidence and decide each case on its own merits. Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 152 (CCPA 1978)("…each case must be decided on the basis of all relevant facts which include the marks and the goods as well as the marketing environment in which a purchaser normally encounters them and the experience generated as a result of their use in the marketplace…").
  • Applicant is free to rebut a showing of the Examining Attorney with countervailing evidence demonstrating that it is unlikely that the involved food products and restaurant services are commercially related, either by other registrations, a declaration from someone knowledgeable in the trade, or by other means.
    • In re Comexa Ltda., Serial No. 75/396,043, (TTAB 2001).
      • Applicant is free to rebut a showing of the Examining Attorney with countervailing evidence demonstrating that it is unlikely that the involved food products and restaurant services are commercially related, either by other registrations, a declaration from someone knowledgeable in the trade, or by other means.
  • In considering this factor in the analysis of likelihood of confusion, we must compare the goods and services as described in the involved applications and registrations.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • In considering this factor in the analysis of likelihood of confusion, we must compare the goods and services as described in the involved applications and registrations. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
  • There is certainly no rule that all computer products and services are related.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • There is certainly no rule that all computer products and services are related. See In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) ("[W]e think that a per se rule relating to source confusion vis-à-vis computer hardware and software is simply too rigid and restrictive an approach and fails to consider the realities of the marketplace"). See also Electronic Design and Sales Inc. v. Electronic Data Systems, 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992) (No confusion between battery chargers and power supplies and computer services).
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • Opposer presses its argument that its retail store services involve selling computer games and some items of sporting equipment that include computer chips or may be used in conjunction with computers, such as a global positioning system that can be used by hunters, hikers and others engaged in outdoor activities and that can exchange information with a computer. There is no evidence in the record, however, to establish that such goods typically emanate from entities that retail computer hardware and software and provide computer consulting services. See Hasbro Inc. v. Clue Computing Inc., 66 F. Supp.2d 117, 122, 52 USPQ2d 1402, 1406 (D.Mass. 1999), aff'd, 232 F.3d 1, 56 USPQ2d 1766 (1st Cir. 2000), wherein the court held that it would be "an extraordinary stretch to assert that Hasbro's technical support to game users is similar in any meaningful way to the ‘computer consulting services' provided by Clue Computing." See also, Falk Corp. v. Toro Manufacturing Corp., 493 F.2d 1372, 1378, 181 USPQ 462, 467 (CCPA 1974) (Court reversed Board decision sustaining opposition, explaining that the opposer could not prevail merely on the ground that applicant's ‘rubber element shaft couplings' might be contained in some of opposer's machines).
  • Where the registration does not limit the specific type of goods, it is presumed that the mark is used on all types of goods.
    • Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006).
      • Because the identification in petitioner's registration reads "toy vehicles and accessories," without any limitations as to specific types of toy vehicles, we must presume, for purposes herein, that petitioner uses its mark on toy vehicles of all types, including the type set forth in respondent's registration, namely, "mechanical action toy vehicles."
    • Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006).
      • Thus, each mark consists of the term RAD followed by a one-syllable term which describes a type of vehicle -– RIGS, in petitioner's case, signifying a tractor-trailer, and RODS, in respondent's case, signifying a hot rod. In view of the descriptive nature of the terms RIGS and RODS, and because RAD is the first term in each mark, it is the term RAD which dominates the commercial impression of each mark and is entitled to greater weight in our comparison of the marks.
  • It is well settled that goods need not be similar or competitive in nature to support a finding of likelihood of confusion. The question is not whether purchasers can differentiate the goods themselves, but rather whether purchasers are likely to confuse the source of the goods.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • We turn first to a consideration of the goods identified in the application and the cited registration. It is well settled that goods need not be similar or competitive in nature to support a finding of likelihood of confusion. The question is not whether purchasers can differentiate the goods themselves, but rather whether purchasers are likely to confuse the source of the goods. See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989).
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • It is well established that the goods and/or services of the parties need not be similar or competitive, or even that they are offered through the same channels of trade, to support a holding of likelihood of confusion.
  • Where the goods are of a type sold through the type of alleged services, the two are considered competitive, inherently related goods and services.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • We first consider the refusal with respect to Registration No. 1709522 of the mark BLACK MARKET MINERALS (MINERALS disclaimed) for "retail jewelry and mineral store services." Applicant's goods are "jewelry." Registrant's services involve the retail sale of those goods. These are competitive, inherently related goods and services. See, e.g., Fortunoff Silver Sales, Inc. v. Norman Press, Inc., 225 USPQ 863, 866 (TTAB 1985) ("there is little question that jewelry store services and jewelry are highly related goods and services"); and In re Jewelmasters, Inc., 221 USPQ 90 (TTAB 1983). See also J. Thomas McCarthy, Trademarks and Unfair Competition §24:25 (2006) ("[w]here the services consist of retail sales services, likelihood of confusion is found when another mark is used on goods which are commonly sold through such a retail outlet.").
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • There are no limitations on the types of jewelry produced by applicant or sold in registrant's retail store. While the minerals purchased from registrant's store may be used by customers to create pieces of jewelry, the term "jewelry" itself in the identification encompasses all kinds and styles of jewelry, including fine jewelry and costume or "Goth" jewelry. Thus, whether or not registrant actually sells the same type of "Goth" style jewelry as applicant is immaterial.
  • The question of likelihood of confusion is determined on the basis of the identification of goods and services set forth in the application and registration, rather than on the basis of what evidence might show the actual nature of the goods and services or purchasers to be.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • As our primary reviewing court has often stated, the question of likelihood of confusion is determined on the basis of the identification of goods and services set forth in the application and registration, rather than on the basis of what evidence might show the actual nature of the goods and services or purchasers to be. See J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); and Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).
  • The fact that applicant may have obtained a registration for different goods has no bearing on whether the marks and goods at issue in the case are likely to cause confusion.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • The fact that applicant may have obtained a registration for different goods has no bearing on whether the marks and goods at issue in this case are likely to cause confusion.
  • Where the parties' goods are in-part identical and in-part related, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, the goods could be offered and sold to the same classes of purchasers through the same channels of trade.
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (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. See Canadian Imperial Bank of Commerce, National Association v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994); and In re Elbaum, 211 USPQ 639 (TTAB 1981).
  • The TTAB must base its determination of whether there is a relationship between the goods and services of the parties on the basis of the goods and services identified in the respective application and registrations.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • The Board must base its determination of whether there is a relationship between the goods and services of the parties on the basis of the goods and services identified in the respective application and registrations. Octocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed. Cir. 1990).
  • The issue, of course, is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of the goods.
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • The issue, of course, is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of the goods. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
  • Because some of applicant's and opposer's goods are identical, one must assume that the channels of trade and purchasers are the same.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • Regarding the factors concerning potential purchasers and channels of trade, these factors also favor opposers. We have already determined that many of applicant's goods are identical to opposers' goods. Because some of the goods are identical, we must assume that the channels of trade and purchasers are the same. 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").
  • It is entirely reasonable for the opposer to object to the use of certain marks in use on some goods which it believes would conflict with the use of its marks on its goods and services while not objecting to use of a similar mark on other goods which it does not believe would conflict with its own use.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • While applicant has submitted copies of several websites that use the marks "Chicago Bears," these sites seem to be fan-type sites that discuss the performance of the Chicago Bears football team. It is not clear why these websites would support applicant's arguments that its mark for 12TH BEAR is not confusingly similar to opposers' BEARS and CHICAGO BEARS marks for the same or very similar goods. Applicant is not seeking registration of the mark for website-related services. Even if there were some relevance to these websites, we note that "it is entirely reasonable for the opposer to object to the use of certain marks in use on some goods which it believes would conflict with the use of its marks on its goods and services while not objecting to use of a similar mark on other goods which it does not believe would conflict with its own use." McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1899-1900 (TTAB 1989).
  • Because some of the goods are identical and because there are no restrictions in applicant's identification, we must assume that the common goods of opposer and applicant are marketed to overlapping classes of consumers.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • Similarly, because some of the goods are identical and because there are no restrictions in applicant's identification, we must assume that the common goods of opposer and applicant are marketed to overlapping classes of consumers. See Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed. Cir. 1990) ("an application with an identification of goods having no restriction on trade channels obviously is not narrowed by testimony that the applicant's use is, in fact, restricted to a particular class of purchasers").
  • Even if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods. It is this sense of relatedness that matters in the likelihood of confusion analysis.
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • As our primary reviewing Court stated in Recot Inc. v. M.C. Becton, 214 F.3d 1332, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000): "Even if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods. It is this sense of relatedness that matters in the likelihood of confusion analysis."
  • Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • The same Court reiterated in the case of Hewlett-Packard Company v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) as follows: "Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services."
  • The meaning or connotation of a mark must be determined in relation to the named goods or services.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • Finally, the meaning or connotation of a mark must be determined in relation to the named goods or services. See In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987); and In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984).
  • Case Finding: Underwear and other clothing items can be considered related items, but there is no per se rule that they must be considered related items.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • In regard to applicant's other goods, we note that there are reported cases that found underwear and other clothing items to be related items. See, e.g., Jockey International Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (opposer provided evidence that a number of different companies market under the same trademarks both underwear and neckties and opposer's underwear and applicant's neckties were found by both majority and concurring opinions to be related goods for likelihood of confusion purposes).
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • There is no per se rule, however, that such goods must be considered related. See In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984).
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • Nor will the Board take judicial notice that items of outerwear and undergarments are related items for likelihood of confusion purposes. See In re Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987).
  • Although third-party registrations are not evidence that the marks shown therein are in commercial use, or that the public is familiar with them, they nevertheless are probative evidence to the extent that they suggest that such goods are of a type which may emanate from a single source under a single mark.
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • The Trademark Examining Attorney has submitted ten third-party registrations in which the identifications of goods include both fresh fruits and canned fruits and/or canned vegetables. Although these registrations are not evidence that the marks shown therein are in commercial use, or that the public is familiar with them, they nevertheless are probative evidence to the extent that they suggest that such goods are of a type which may emanate from a single source under a single mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
    • In re Comexa Ltda., Serial No. 75/396,043, (TTAB 2001).
      • Here, the numerous third-party registrations submitted by the Examining Attorney have some probative value to the extent that they "serve to suggest that the goods and services listed therein (which are the same types of goods and services involved here) are of a kind which may emanate from a single source." In re Azteca, supra, at 1211; In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470, at n.6 (TTAB 1988), aff'd. (unpublished), Appeal No. 88-1444 (Fed. Cir. Nov. 14, 1988).
  • It is well settled that third-party registrations are not evidence of use of the marks shown therein, or that consumers have been exposed to them.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • It is well settled that third-party registrations are not evidence of use of the marks shown therein, or that consumers have been exposed to them. AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (CCPA 1973).
  • Third-party registrations, while not evidence of use, may be used to show that the respective goods are of a type which may emanate from the same source.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • Third-party registrations, while not evidence of use, may be used to show that the respective goods are of a type which may emanate from the same source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
    • In re The W.W. Henry Company, L.P., Serial No. 78401595, (TTAB 2007).
      • Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods are of a type which may emanate from a single source. In re Albert Trostel & Sons Co., supra.
  • The degree of 'relatedness' must be viewed in the context of all the factors, in determining whether the services are sufficiently related that a reasonable consumer would be confused as to source or sponsorship.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • While jewelry may be related to clothing, the goods are nevertheless specifically different. We cannot conclude on the basis of the evidence of record that jewelry and clothing are so closely related that, notwithstanding the differences in the marks, purchasers would naturally expect these goods to emanate from the same source. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) ("The degree of 'relatedness' must be viewed in the context of all the factors, in determining whether the services are sufficiently related that a reasonable consumer would be confused as to source or sponsorship.").
  • Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods, not based on which consumers would primarily encounter the marks.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • It is essentially defendant's position that there is no likelihood of confusion because its collective membership mark and service mark are encountered primarily by single store jewelry retailers who sell higher-priced products, whereas plaintiff's collective membership mark is encountered primarily by chain-store jewelry retailers with stores located in shopping malls. However, the problem with this argument is that the involved application and registrations contain no such restrictions with respect to type of jewelry retailers, distributors, or vendors. See Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) ("Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods").
  • Where the identification of goods in the registration are not limited in terms of price, the goods would encompass both the expensive and inexpensive goods.
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • Although respondent may actually sell only premium door hardware, its identification of goods in the involved registration is not limited in terms of price...Inasmuch as the identification of goods is not limited to expensive hardware, we must presume that respondent's hardware encompasses hardware of all price ranges. Thus, the goods would encompass not only expensive hardware, but inexpensive hardware as well.
  • When the TTAB is somewhat uncertain as to what the goods identified in the registration are, it is appropriate to consider extrinsic evidence to determine the nature of the particular goods
    • In re The W.W. Henry Company, L.P., Serial No. 78401595, (TTAB 2007).
      • Applicant has submitted extrinsic evidence which shows that polyolefin products are molded by plastic manufacturers and that its goods are used by such manufacturers. See, In re Trackmobile, Inc., 15 USPQ2d 1152 (TTAB 1990) [when the Board is somewhat uncertain as to what the goods identified in the registration are, it is appropriate to consider extrinsic evidence to determine the nature of the registrant's particular goods].
  • Highly suggestive marks are not entitled to a broad scope of protection.
    • In re The W.W. Henry Company, L.P., Serial No. 78401595, (TTAB 2007).
      • We also note that, although applicant's and the cited registrant's mark are very similar, they are also highly suggestive. Thus, the cited registration is not entitled to a broad scope of protection.
  • Likelihood of confusion may be found when goods are not the same or even competitive, for it is sufficient if they are related in some way or that the circumstances under which they are marketed are such that persons encountering the branded goods would assume a relationship or common source.
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • In fact, the goods in the involved application and registration are in part identical (e.g., computers, computer operating software, and computer peripherals); and others are closely related (i.e., applicant's identification includes a number of software products for running various hardware products, including many listed in registrant's identification). See In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (Likelihood of confusion may be found when goods are not the same or even competitive, for it is sufficient if they are related in some way or that the circumstances under which they are marketed are such that persons encountering the branded goods would assume a relationship or common source).
  • The TTAB specifically rejected the theory that the use of certified goods constitutes a defense to a certification mark owner's Section 2(d) claim.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • The Board specifically rejected the theory that the use of certified goods would constitute a defense to a certification mark owner's Section 2(d) claim. See Institut, supra at 1891.
  • Case Finding: Applicant's identified clothing items are commercially related to opposer's services of retail and mail order sales of various clothing items.
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • We also find that applicant's identified clothing items are commercially related to opposer's services of retail and mail order sales of various clothing items. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); Safety-Klean Corporation v. Dresser Industries, Inc., 518 F.2d 1399, 186 USPQ 476 (CCPA 1975); and Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983).
  • Evidence: Articles may not be used to prove the truth of the matters asserted therein, as that would constitute reliance on hearsay.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • Opposer has asserted in its brief that cigarettes and opposer's goods and services are complementary, but has submitted no evidence in support of such a statement. Opposer states that it features cigarette lighters as the focus of a segment in its current production, but again, there is no evidence of this in the record. (As we stated previously, articles may not be used to prove the truth of the matters asserted therein, as that would constitute reliance on hearsay.)
  • Evidence: The fact that an ad may appear on one page of a magazine or newspaper, far removed from any article referencing opposer's mark and services, is not sufficient to demonstrate that readers/consumers would be exposed to both the goods and services under circumstances that would give rise to the mistaken belief that they originate from the same producer.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • In any event, the fact that a cigarette ad may appear on one page of a magazine or newspaper, far removed from any article referencing opposer's mark and services, is not sufficient to demonstrate that readers/consumers would be exposed to both the goods and services under circumstances that would give rise to the mistaken belief that they originate from the same producer. See International Telephone & Telegraph Corp., 197 USOQ 910, 911 (TTAB 1986).
  • Marks can project the same or different meanings and lead to different commercial impressions of the respective marks based on the goods/services at issue.
    • In re Big Pig, Inc., Serial No. 78249582, (TTAB 2006).
      • When we compare applicant's mark PSYCHO as applied to its clothing items and registrant's mark PSYCHO as applied to legally identical and related clothing items, we find that the marks project the same meaning. This is not a case where the goods to which the marks are applied lead to different commercial impressions for the respective marks. Cf. In re Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987)[different meanings are projected by the mark CROSSOVER when used on brassieres and on ladies' sportswear, respectively].
  • There must be a reasonable basis for the public to attribute applicant's goods to opposer and its trademark.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • There must be a reasonable basis for the public to attribute applicant's portable animal water dishes to opposer and its BIG GULP trademark. University of du Lac v. J. C. Gourmet Food Imports Co., supra. See also Dymo Industries, Inc. v. Schramm, Inc., 181 USPQ 540, 541-542 (TTAB 1974); American Optical Corporation v. Autotrol Corporation, 175 USPQ 725, 729 (TTAB 1972).
  • Absent any limitations in petitioner's recitation of services, it must be presumed that petitioner's services encompass all types of establishments that render said services to all classes of purchasers.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • In comparing petitioner's "restaurant services" to respondent's "restaurant services featuring bagels as a main entrée," it must be noted that petitioner's recitation of services does not include any limitations. Thus, we must presume that petitioner's "restaurant services" encompass all types of restaurants, and that the restaurant services are rendered to all classes of purchasers. In re Smith and Mahaffey, 31 USPQ2d 1531 (TTAB 1994); and In re Elbaum, 211 USPQ 639 (TTAB 1981). Accordingly, petitioner's restaurant services are presumed to encompass restaurants that feature bagels as a main entrée.
  • Where the parties' services are legally identical, it is presumed that the services are rendered to the same classes of purchasers.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • In view of the above, in our analysis we must treat the parties' restaurant services as being legally identical. Accordingly, we presume that the services are rendered to the same classes of purchasers, and that these would include ordinary purchasers. Genesco Inc. v. Martz, 66 USPQ2d 1260 (TTAB 2003).
  • A registrant cannot restrict the scope of its goods/services listed in the registration by extrinsic evidence or argument.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Further, the fact that respondent sells only kosher foods is of no moment. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) [a registrant cannot restrict the scope of its goods/services listed in the registration by extrinsic evidence or argument].
  • Case Finding: Women's clothing and fragrances are commercially related goods.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • While the evidence is not overwhelming in quantity, it is sufficient to persuade us that women's clothing and fragrances are commercially related goods.22

        FOOTNOTE 22: We also note that a number of cases have recognized the interrelationship between clothing and beauty aids such as fragrance products and cosmetics, including Edison Brothers Stores Inc. v. Cosmair Inc., 651 F.Supp. 1547, 2 USPQ2d 1013 (S.D.N.Y. 1987); Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989); Seligman & Latz, Inc. v. Merit Mercantile Corporation, 222 USPQ 720 (TTAB 1984); Clairol Incorporated v. Topaz Hosiery Mills Inc., 161 USPQ 545 (TTAB 1969); and Catalina, Inc. v. Catalina Cosmetics Corporation, 161 USPQ 55 (TTAB 1969).

  • It is not necessary that goods be competitive or be sold together or through the same outlets if they can be shown to be related in some manner that would suggest to persons encountering them, even at different locations, sources, or offices a likelihood of common sponsorship.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • However, opposer's ARDEN B clothing is sold exclusively in opposer's own ARDEN B clothing stores, and the ARDEN B stores sell, almost exclusively, opposer's house brand of clothing. Opposer has expressed no intention of expanding the sale of its merchandise to include the stores of others or the brands of merchandise of others. Applicant argues that because opposer's goods are only sold in opposer's stores, and since opposer is prohibited by the parties' agreement from selling cosmetics under the ARDEN B mark, the parties' clothing and cosmetic products in this case will never in fact be sold together. Applicant's statement is true, but not compelling. First, purchasers are not going to be aware that opposer is prohibited from selling cosmetic products under the ARDEN B mark. Further, where products are closely related, merely because the products in fact would not be sold together would not necessarily prevent consumers, when encountering the products in different outlets, from believing the products come from the same source. See Freedom Savings and Loan Association v. Fidelity Bankers Life Insurance Company, 224 USPQ 300, 304 (TTAB 1984) ("It is not necessary that goods be competitive or be sold together or through the same outlets if they can be shown to be related in some manner that would suggest to persons encountering them, even at different locations, sources, or offices a likelihood of common sponsorship").
  • Goods that are neither used together nor related to one another in kind may still be related in the mind of the consuming public as to the origin of the goods. It is this sense of relatedness that matters in the likelihood of confusion analysis.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • "[G]oods that are neither used together nor related to one another in kind may still ‘be related in the mind of the consuming public as to the origin of the goods. It is this sense of relatedness that matters in the likelihood of confusion analysis.'" Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004) (citing Recot, Inc. v. Becton, 54 USPQ2d at 1898). See also McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989) ("In order to find that there is a likelihood of confusion, it is not necessary that the goods or services on or in connection with which the marks are used be identical or even competitive. It is enough if there is a relationship between them such that persons encountering them under their respective marks are likely to assume that they originate at the same source or that there is some association between their sources").
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Applicant maintains that while "both marks identify some type of medical diagnostic product in the broad sense, this fact alone is not enough to support a likelihood of confusion." Brief at 13. However, "goods that are neither used together nor related to one another in kind may still ‘be related in the mind of the consuming public as to the origin of the goods. It is this sense of relatedness that matters in the likelihood of confusion analysis.'" Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 350 (Fed. Cir. 2004) (citing Recot, 54 USPQ2d at 1898). See also McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989) ("In order to find that there is a likelihood of confusion, it is not necessary that the goods or services on or in connection with which the marks are used be identical or even competitive. It is enough if there is a relationship between them such that persons encountering them under their respective marks are likely to assume that they originate at the same source or that there is some association between their sources").
  • "Razors" are presumed to include the more narrowly identified "disposable razors" and thus both are legally identical.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • The goods identified in opposer's Registration No. 2881805 for its SCHICK mark are "razors and razor blades" in International Class 8. Applicant's goods under its SLICK ULTRA PLUS mark are identified as "disposable razors," in International Class 8. Thus, as identified, opposer's "razors" are presumed to include applicant's more narrowly identified "disposable razors." As a result, these goods are legally identical.
  • A party cannot attempt to limit registrant's goods only to a specific product where the registration utilizes a broader unambiguous term as its description of goods.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • Applicant here is apparently attempting to do what the Trackmobile applicant specifically disavowed, i.e., limiting registrant's goods to the specific product applicant found on the internet. Trackmobile, 15 USPQ2d at 1153 ("Applicant acknowledges the foregoing rule of law by noting, by way of example, that if a prior registration utilizes the unambiguous term ‘vegetables' as its description of goods, it would be improper for an applicant to argue that in point of fact registrant makes use of its mark only on ‘peas'").
  • Although multiple third-party registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, they nonetheless have probative value to the extent that they serve to suggest that the goods listed therein are of a kind which may emanate from a single source under a single mark.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Also supporting a finding that the goods are related is the Trademark Examining Attorney's evidence, submitted with her initial and final Office actions, consisting of printouts of twenty-one third-party use-based registrations, each of which includes in its identification of goods both the goods identified in applicant's application, i.e., water pumps and/or electric motors for machines, and the goods identified in the cited registration, i.e., air compressors. Although such registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, they nonetheless have probative value to the extent that they serve to suggest that the goods listed therein are of a kind which may emanate from a single source under a single mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
  • Although vodka and wine may both be described generally as "alcoholic beverages," this is insufficient to establish that applicant's and registrant's goods are related.
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • Although vodka and wine may both be described generally as "alcoholic beverages," this is insufficient to establish that applicant's and registrant's goods are related. See General Electric Company v. Graham Magnetics Inc., 197 USPQ 690 (TTAB 1977) [It is not enough to find one term that may generically describe the goods].
  • Another important factor is the question of whether the goods are related.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Another important factor is the question of whether the goods are related.
  • Applicants may submit sets of third-party registrations to suggest the opposite, i.e., that the Office has registered the same mark to different parties for the goods at issue.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • Similarly, applicants may submit sets of third-party registrations to suggest the opposite, i.e., that the Office has registered the same mark to different parties for the goods at issue. See In re Thor Tech, Inc., 90 USPQ2d 1634, 16 (TTAB 2009) ("On the other hand, applicant has submitted copies of 13 sets of registrations for the same or similar marks for different types of trailers owned by different entities arguing, in essence, that the third party registrations serve to suggest that the listed goods are of a type which may emanate from different sources"). See also Helene Curtis Industries v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989) ("In connection with its related goods arguments, plaintiff has made of record numerous third-party registrations and exhibits to show that it is common in the trade for the same mark to appear both on personal care products and wearing apparel emanating from the same source. Defendant, on the other hand, has introduced registrations and exhibits to show registration and use of the same or similar marks on these same types of products, but emanating from different sources").
  • Because the services are legally identical, they must be presumed to travel in the same channels of trade and be rendered or offered to the same classes of consumers.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • Further, because the services are legally identical, they must be presumed to travel in the same channels of trade and be rendered or offered to the same classes of consumers. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001 (Fed. Cir. 2002); Squirtco v. Tomy Corp., 697 F.2d 1038, 1042- 43, 216 USPQ 937, 940 (Fed. Cir. 1983)("[I]n the absence of specific limitations in the registration, the court assumes use of the mark will include all normal and usual channels of trade and methods of distribution.").
  • Case Finding: Applicant contends that some of these third-party registrations also include varying numbers of other goods in addition to applicant's and registrant's goods, and that such registrations therefore are entitled to little probative value on the issue of whether applicant's goods and registrant's goods are related. However, we find that in none of the third-party registrations are the identified goods so varied, numerous and obviously unrelated that the probative value of the registration under Trostel and Mucky Duck is negated.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Applicant contends that some of these third-party registrations also include varying numbers of other goods in addition to applicant's and registrant's goods, and that such registrations therefore are entitled to little probative value on the issue of whether applicant's goods and registrant's goods are related. However, we find that in none of the third-party registrations are the identified goods so varied, numerous and obviously unrelated that the probative value of the registration under Trostel and Mucky Duck is negated.
  • Case Finding: Applicant has rightfully conceded that outerwear and undergarments are both clothing, they are different types of clothing, having different purposes. Therefore, opposer has the burden of showing that consumers will believe that outerwear and undergarments identified by similar marks come from a single source.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • While applicant has rightfully conceded that outerwear and undergarments are both clothing, they are different types of clothing, having different purposes. Therefore, opposer has the burden of showing that consumers will believe that outerwear and undergarments identified by similar marks come from a single source.
  • Case Finding: Although it may be assumed that vodka and wine are sold to the same class of purchasers, namely persons of legal drinking age, this is not a sufficient basis on which to conclude that such goods are related.
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • Furthermore, although we may assume that vodka and wine are sold to the same class of purchasers, namely persons of legal drinking age, this is not a sufficient basis on which we may conclude that such goods are related.
  • Case Finding: Applicant's Class 9 goods include "software for processing images, graphics, and text." Applicant's software for processing images and the ‘680 registrant's imaging services that convert documents from one medium to another are very similar. Consumers familiar with the ‘680 registrant's document imaging services are likely to assume that registrant is now the source of software that performs some of the same functions.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • Applicant's Class 9 goods include "software for processing images, graphics, and text." Applicant's software for processing images and the ‘680 registrant's imaging services that convert documents from one medium to another are very similar. Consumers familiar with the ‘680 registrant's document imaging services are likely to assume that registrant is now the source of software that performs some of the same functions.6
  • Case Finding: Applicant's goods identified as "electric motors for machines" are related to registrant's goods identified as "air compressors and parts therefor," because the record shows that an electric motor is or can be an essential component and/or replacement part of an air compressor.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • We find that applicant's goods identified as "electric motors for machines" are related to registrant's goods identified as "air compressors and parts therefor," because the record shows that an electric motor is or can be an essential component and/or replacement part of an air compressor.
  • Case Finding: Based on the identifications themselves, we find that applicant offers a product that is complementary in function and purpose to the software installation, maintenance and updating services offered by registrant. Specifically, an optimizing software feature would be among the software tools that a computer technician might use when installing, maintaining or updating electronic communications computer software.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • Here, based on the identifications themselves, we find that applicant offers a product that is complementary in function and purpose to the software installation, maintenance and updating services offered by registrant. Specifically, an optimizing software feature would be among the software tools that a computer technician might use when installing, maintaining or updating electronic communications computer software. See Id. (applicant's OCTOCOM for modems is likely to cause confusion with opposer's OCTACOMM for computer programs because the products are used in conjunction with each other).
  • Case Finding: Disussion of case where the items sold by applicant and registrant are considered complementary goods.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • "A woman's ensemble, which may consist of a coordinated set of pants, a blouse and a jacket, is incomplete without a pair of shoes, which match or contrast therewith. Such goods are frequently purchased in a single shopping expedition. When shopping for shoes, a purchaser is usually looking for a shoe style or color to wear with a particular outfit. The items sold by applicant and registrant are considered complementary goods. They may be found in the same stores, albeit in different departments. We are convinced that this is a sufficient relationship between the goods to support a holding of likelihood of confusion where both sets of goods are sold under the same mark. In re Melville Corp., 18 USPQ2d at 1388.32 FOOTNOTE 32 ""It may be that women buy undergarments as part of an ensemble, or that they may purchase an undergarment because the cut of specific clothing requires a certain undergarment. However, opposer did not introduce any evidence, or make any argument, in that respect. While that may very well be the case, we will not take judicial notice of women's shopping practices. Therefore, opposer has the burden of showing how women shop for clothing, specifically undergarments, as part of its burden of proving that applicant's intimate apparel and opposer's outerwear are related."""
  • Case Finding: In re Trackmobile, Inc., 15 USPQ2d 1152 (TTAB 1990) and Acomb v. Polywood Plastics Corp., 187 USPQ 188 (TTAB 1975) do not provide much support for applicant's position that the identification of goods as "printng machines" is so broad and all inclusive as to be meaningless and that the TTAB should consider extrinsic evidence showing that the description of the goods has a specific meaning.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • Applicant argues that the "identification of goods in the cited registration as ‘printing machines' is so broad and all inclusive as to be meaningless" and that we should consider "extrinsic evidence showing that the description of the goods has a specific meaning." Brief at 7. Applicant relies on In re Trackmobile, Inc., 15 USPQ2d 1152 (TTAB 1990) and Acomb v. Polywood Plastics Corp., 187 USPQ 188 (TTAB 1975). However, those cases do not provide much support for applicant's position.
  • Case Finding: Luggage encompasses luggage trunks, these products are, in effect, identical.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • In this case, the goods identified by applicant and the registrant are identical in part. Both descriptions of goods include wallets and handbags. In addition, applicant has listed luggage while the registration includes luggage trunks. Because luggage encompasses luggage trunks, these products are, in effect, identical.
  • Case Finding: Medical magnetic resonance imaging diagnostic apparatus and medical diagnostic apparatus are related.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Here, several facts support the conclusion that applicant's medical magnetic resonance imaging diagnostic apparatus, namely, MRI diagnostic apparatus, and registrant's medical diagnostic apparatus, namely, medical ultrasound device, are related. First, both goods are medical diagnostic apparatus with imaging functions. Second, the facts show that MRI and ultrasound diagnostic equipment originate from the same source. Third, the same facilities (hospitals and diagnostic centers) have both MRI and ultrasound equipment. Fourth, MRI and ultrasound equipment can serve complementary purposes, for they can be used by physicians and other medical personnel in the treatment of the same patient for such diseases as prostate and breast cancer or in the treatment of a patient with a fibroid tumor. When we consider that applicant's and registrant's goods are medical diagnostic equipment that can originate from the same source (applicant itself is a source of both types of equipment), that can be purchased by the same facilities, and that are used on the same patients to treat the same disease by the same physician, we conclude that these goods are related.13 FOOTNOTE 13 "We are not basing our conclusion that the goods are related on the simple fact that hospitals can purchase both applicant's and registrant's goods. "The ‘hospital community' is not a homogeneous whole, but is composed of separate departments with diverse purchasing requirements…." Astra Pharmaceutical Products v. Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786, 791 (1st Cir. 1983). However, the record in this application contains reports that Teton Radiology and Health Scan Imaging use both types of equipment for their specific diagnostic facilities and it suggests that the same would be true of a hospital's comparable diagnostic facility."
  • Case Finding: The Trademark Examining Attorney has submitted a printout of a page from the website of Electric Motor Warehouse, upon which are advertised "Century® Magnetek Electric Motors," which are described as "Replacement Air Compressor Motors." Also, the price list for registrant's air compressors, submitted by applicant with its request for reconsideration, states that a standard feature of respondent's air compressors is a "230/460Volt, 3Phase, 60Hertz, 1800 RPM Motor." This evidence shows that registrant's "air compressors and parts therefor" are related to, and actually encompass, applicant's "electric motors for machines."
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • The Trademark Examining Attorney has submitted a printout of a page from the website of Electric Motor Warehouse, upon which are advertised "Century® Magnetek Electric Motors," which are described as "Replacement Air Compressor Motors." Also, the price list for registrant's air compressors, submitted by applicant with its request for reconsideration, states that a standard feature of respondent's air compressors is a "230/460Volt, 3Phase, 60Hertz, 1800 RPM Motor." This evidence shows that registrant's "air compressors and parts therefor" are related to, and actually encompass, applicant's "electric motors for machines."
  • Case Finding: These registrations support the examining attorney's argument that registrant's roofing tiles and applicant's stones, ceramic floor tiles and porcelain floor tiles are likely to originate from a common source.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • These registrations support the examining attorney's argument that registrant's roofing tiles and applicant's stones, ceramic floor tiles and porcelain floor tiles are likely to originate from a common source. In re Association of the United States Army, 85 USPQ2d 1264 (TTAB 2007) ("We find, first, that applicant's ‘association services' are related to the Class 35 and Class 42 services recited in the ‘479 and ‘969 registrations. The Trademark Examining Attorney has made of record six use-based third-party registrations…").
  • Case Finding: Third-party registrations were not particularly compelling evidence that the goods are related when balanced against the differences in the clothing products and testimony that the parties are not competitors and that the goods are not related.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • In this case, the 8 third-party registrations are not particularly compelling evidence that the goods are related when balanced against the differences in the clothing products and Ms. Cahill's testimony that opposer and applicant are not competitors and that opposer's jeans and pants are not related to applicant's intimate apparel.33" FOONOTE 33 "Although Ms. Cahill testified that tops may be related to applicant's intimate apparel, she did not explain what she meant by related, or why pants and jeans were not related, but tops were related to intimate apparel. We are left with just a conclusion without any support or explanation. In this regard, we note that opposer also sells camisoles. However, as indicated above, it is not clear whether opposer labels camisoles with the ONE FAB FIT trademark. In addition, because there is no evidence that any company other than opposer sells camisoles and other types of outerwear, it is not clear that consumers would expect that camisoles and outerwear emanate from a single source."
  • Case Finding: This is not a case where the term in the registrant's identification of goods is so vague as to need extrinsic evidence to determine if the term has a specific meaning in the trade.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • This is not a case where the term in the registrant's identification of goods is so vague that we need extrinsic evidence to determine if the term has a specific meaning in the trade. Applicant's term "printing machines" is not a term like "light railway motor tractors." Trackmobile, 15 USPQ2d at 1154 ("In the present case, [given] the somewhat vague nature of registrant's description of goods (light railway motor tractors), and given the fact that applicant has presented extrinsic evidence showing that the term ‘light railway motor tractors' is used to refer to relatively small, unmanned devices utilized to move loads from point to point within a factory, it is not proper to rely simply upon abstract reasoning to give this somewhat vague term a broad meaning absent countervailing extrinsic evidence showing that it is entitled to such a broad meaning").
  • Case Finding: We note that none of applicant's pairs of registrations involves an example where an applicant has taken an entire registered mark and added an additional word to it. In addition, the marks involved are so different from the present case that, even if they were relevant, they would merely stand for the principle that the Office determines each case on its own merits.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • We note that none of applicant's pairs of registrations involves an example where an applicant has taken an entire registered mark and added an additional word to it. In addition, the marks involved are so different from the present case that, even if they were relevant, they would merely stand for the principle that the Office determines each case on its own merits.
  • Discussion of evidence submitted by the examining attorney to support the conclusion that applicant's goods and registrant's services are likely to be perceived by consumers as deriving from the same source.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • The evidence submitted by the examining attorney tends to support the conclusion that applicant's goods and registrant's services are likely to be perceived by consumers as deriving from the same source. Specifically, the examining attorney has submitted copies of use-based, third-party registrations covering goods and services of the type in both the application and the cited registration. For example, Registration No. 3292522 identifies "computer software for . . . optimizing the physical layout of computer networking hardware. . . " in Class 9 (as identified in the application) and "technical support services" in Class 42 (as identified in the cited registration); and Registration No. 3367407 identifies "computer software for use in . . . optimizing the characteristics of computer drives and multiple software applications . . ." in Class 9 (as identified in the application) and "technical support services" in Class 42 (as identified in the cited registration). The examining attorney also submitted evidence from several websites to show that various types of optimization software such as identified by applicant and technical support services such as identified by the cited registration are advertised to consumers under the same mark. These websites include www.finallyfast.com, www.asmwsoft.com, www.passmark.com, www.pcpitstop.com, and www.intel.com. We note that these thirdparty identifiers are not necessarily specific about the nature of their "technical support" services nor their "optimization" software. However, they tend to support the relatedness shown by the parties' identifications. This weighs in favor of finding a likelihood of confusion. See also McCarthy on Trademarks § 24:44 (4th ed. 2009) ("[I]f the targeted markets for the computer products overlap, it is more likely that confusion will result.")
  • Discussion of In re Association of the United States Army case and the relatedness of goods.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • "In re Association of the United States Army, 85 USPQ2d 1264, 1271 (TTAB 2007): ""Next, we find that applicant's recited services are related to the goods identified in cited Registration No. 2910619 as "downloadable educational software for teaching users about the armed forces, career education, and military tactics and strategies, and instruction manuals sold as a unit therewith." For the same reasons as those discussed above in connection with our finding that applicant's association services are related to registrant's employment and career related services, we likewise find that applicant's services are related to registrant's downloadable software to the extent that such software includes "career education" as part of its subject matter."""
  • Discussion of internet evidence finding that there is no evidence that energy vodka infused with caffeine and wine are complementary products.
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • The examining attorney submitted excerpts from several Internet websites showing that (1) vodka and wine are offered on the same website to the same consumers, and (2) there are several vodkas which are made with wine grapes. This evidence, however, is hardly sufficient to convince us that applicant's energy vodka infused with caffeine and registrant's wines are related. There is no evidence that vodka, much less applicant's specific type of vodka, and wine emanate from a single source under a single mark. Also, there is no evidence that energy vodka infused with caffeine and wine are ingredients for any particular cocktails such that we could consider them complementary products that would be bought and used together.
  • Discussion of relatedness of women's clothing.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • However, in this case, opposer's evidence that its outerwear is related to applicant's undergarments was not persuasive. Unlike in the Melville case, there is nothing in this record that allows us to conclude that women consider undergarments as part of an ensemble including coats, shorts, shirts, blazers, jackets, skirts, jeans, or pants, and that undergarments and outerwear are considered complementary products. Moreover, we find that the fact that the products of the parties are sold in different sections of department stores underscores their differences (e.g., there is no evidence or testimony that, in the same shopping trip, women buy underwear to go with their jeans).
  • First, we must consider the goods as they are described in the application and registration.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • First, we must consider the goods as they are described in the application and registration. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) ("The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed"). See also Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) ("Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods").
  • Given that the facts in each case vary and the weight to be given each factor may be different in light of the varying circumstances, there can be no rule that certain goods are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • We begin our analysis of the similarity or dissimilarity and nature of the goods by noting that the facts in each case vary and the weight to be given each factor may be different in light of the varying circumstances; therefore, there can be no rule that certain goods (e.g., all clothing products) are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto. See B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d at 1506; In re Shoe Works, 6 USPQ2d 1890, 1891 (TTAB 198) (women's shoes and men's, women's and children's shorts and pants); In re British Bulldog, Ltd., 224 USPQ 854, 855-56 (TTAB 1984) (shoes and men's underwear).
  • Goods can be related even if there is no evidence that any entity, much less the applicant or registrant, is the source of both applicant's and registrant's goods.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • Indeed, goods can be related even if there is no evidence that any entity, much less the applicant or registrant, is the source of both applicant's and registrant's goods. In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003) ("Although the PTO apparently found no evidence of any manufacturer who both brews malt liquor and distills tequila, Majestic has not shown that the PTO's lack of evidence in that regard is relevant. Unless consumers are aware of the fact, if it is one, that no brewer also manufactures distilled spirits, that fact is not dispositive").
  • Goods can be related even if they are not identical, interchangeable, or combinable.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • We have also considered applicant's evidence that registrant3, and two other entities, "only sell roofing tiles and do not sell any floor tiles" (Gonzalez dec. at 2-3) and that applicant does not sell roofing tiles. Again, as set out earlier, goods can be related even if they are not identical, interchangeable, or combinable.
  • Goods may nonetheless be related even if they are not identical, competitive, or combinable.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • More importantly in this case, while applicant points out that floor tiles and roofing tiles are different goods and not interchangeable, goods may nonetheless be related even if they are not identical, competitive, or combinable.
  • 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 goods or services are related in some manner or that circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of each parties' goods or services.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • It "has often been said 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 goods or services are related in some manner or that circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of each parties' goods or services." In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). See also Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002).
  • If a proposed identification can be classified in more than one class, it is not an acceptable identification of goods or services. However, the conclusion that a term would clearly include items classified in more than one class should not be drawn unless reasonable, in light of the commercial relationships between all the goods or services identified in the application.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • FOOTNOTE 5 "If a proposed identification can be classified in more than one class, it is not an acceptable identification of goods or services. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007) (The "scope of the term ‘chronographs' is ambiguous for registration purposes, for it includes both watches and time recording devices"). "However, the conclusion that a term would clearly include items classified in more than one class should not be drawn unless reasonable, in light of the commercial relationships between all the goods or services identified in the application." TMEP § 1402.03.
  • In an ex parte appeal, likelihood of confusion is determined on the basis of the goods as they are identified in the application and the cited registration.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • In an ex parte appeal, likelihood of confusion is determined on the basis of the goods as they are identified in the application and the cited registration. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re William Hodges & Co., Inc., 190 USPQ 47, 48 (TTAB 1976). See also Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) ("The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed").
  • In cases where the applicant's mark is identical to the cited registered mark, the degree of relatedness between the respective goods that is necessary to support a finding that the goods are related under the second du Pont likelihood of confusion factor is less than it would be if the marks were not identical; there need be only a viable relationship between the respective goods.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Moreover, in cases such as this where the applicant's mark is identical to the cited registered mark, the degree of relatedness between the respective goods that is necessary to support a finding that the goods are related under the second du Pont likelihood of confusion factor is less than it would be if the marks were not identical; there need be only a viable relationship between the respective goods. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001); and In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
  • In determining the similarity or dissimilarity of the goods, we note that the more similar the marks at issue, the less similar the goods or services need to be for the TTAB to find a likelihood of confusion.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • In determining the similarity or dissimilarity of the goods, we note that the more similar the marks at issue, the less similar the goods or services need to be for the Board to find a likelihood of confusion. In re Shell Oil Co., 26 USPQ2d at 1688-1689 (Fed. Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001).
  • In the absence of much evidence of record, the Court of Appeals for the Federal Circuit, directed the TTAB to simply compare the services described in applicant's application with the goods and services described in opposer's registrations.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • In a similar case, in the absence of much evidence of record, our primary reviewing court, the Court of Appeals for the Federal Circuit, directed the Board to simply "compare the services described in [applicant's] application with the goods and services described in [opposer's] registrations." Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (finding likelihood of confusion "as a matter of law" based on a comparison of the parties' identifications, although they involved different goods and services within the fields of technology); see also Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) ("The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed." (citations omitted)).
  • It is not necessary that the respective goods be identical or even competitive in order to support a finding of likelihood of confusion.
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • It is not necessary that the respective goods be identical or even competitive in order to support a finding of likelihood of confusion.
  • 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.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • 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).
  • It is sufficient that the goods are related in some manner, or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same source or that there is an association or connection between the sources of the respective goods.
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • Rather, it is sufficient that the goods are related in some manner, or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same source or that there is an association or connection between the sources of the respective goods. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re International Telephone & Telegraph Corp., 197 USPQ2d 910 (TTAB 1978).
  • It is well-settled that the TTAB must base a likelihood of confusion determination on the goods or services as identified in the involved application and cited registration.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • FOOTNOTE 3 "To the extent that applicant attempted to "clarify" registrant's identification by submitting the specimen from the latter's registration file with applicant's appeal brief, we have not considered this submission. First, we find it necessary to sustain the examining attorney's objection to the evidence as having been untimely submitted. See 37 CFR § 2.142(d). Furthermore, even if we were to consider the evidence, it would not change our decision, since we do not find anything of probative value therein regarding the description of registrant's services. Although applicant suggests that the cited registration covers technical support of only "electronic communications equipment," we read the identification's reference to "electronic communications computer hardware and software" to include technical support of equipment and programs and to encompass all communications that are electronic, i.e., by Internet, e-mail, etc., which includes most computer functions. The specimen does not indicate anything to the contrary. Further, it is well-settled that we must base our likelihood of confusion determination on the goods or services as identified in the involved application and cited registration. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Nor do we find the recitation of services in the cited registration to be so vague as to require clarification. Cf. In re Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990)."
  • Likelihood of confusion may be found based on any item that comes within the identification of goods in the involved application or registration.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Likelihood of confusion may be found based on any item that comes within the identification of goods in the involved application and registration. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 209 USPQ 986 (CCPA 1981); In re La Peregrina Ltd., 86 USPQ2d 1645 (TTAB 2008).
  • Likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods or services in the application.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • The examining attorney has also submitted third-party registrations showing the relatedness of the other insurance services in applicant's application and the cited registration, but in view of these legally identical services, there is no need for us to discuss this additional evidence. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods or services in the application).
  • The goods and/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 and/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 could give rise, because of the marks used or intended to be 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 association between the producers of each of the parties' goods and/or services.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • In any event, the goods and/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 and/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 could give rise, because of the marks used or intended to be 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 association between the producers of each of the parties' goods and/or services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
  • 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 authorized by, or are otherwise connected to the same source.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • 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 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); and In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
  • The goods of the parties must be compared as they are identified without reading in any limitations into the goods.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • At this point, we must compare registrant's "printing machines" as they are identified without reading in any limitations to registrant's goods. In addition to being theoretically related, the actual goods that are involved here underscore the relatedness of the goods. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1310 (Fed. Cir. 2002) ("[T]here is ample evidence of relatedness from the text of the registrations alone. When the text of the advertising for the ACOUSTIC WAVE product is considered, the conclusion of relatedness is inescapable. The consumers who purchase the Bose product cannot ignore the fact that it, like the QSC product, amplifies via an amplifier"). See also Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984) ("Applicant's proposed [registration] is not limited to spiced teas, and opposer's mark [for teas] is used for both spiced and unspiced teas") (emphasis added).
  • The law recognizes that trademark owners have different marks that are used as a house mark, a mark for a line of products, and a mark for specific items. It is, therefore, to be expected that many registrations for marks would not cover all of a party's goods and services.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • Third, the law recognizes that trademark owners have different marks that are used as a house mark, a mark for a line of products, and a mark for specific items. It is, therefore, to be expected that many registrations for marks would not cover all of a party's goods and services.
  • The mere fact that some goods are not included in a registration's identification of goods does not establish that the owner of the mark has not registered the mark for those goods in another registration since, for example, the registrant may have begun using the mark on those goods at a later date.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • Second, the mere fact that some goods are not included in a registration's identification of goods does not establish that the owner of the mark has not registered the mark for those goods in another registration since, for example, the registrant may have begun using the mark on those goods at a later date.
  • The question of whether goods are related depends on a comparison of the goods as they are described in the application and registration.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • Normally, when we address the question of whether goods are related, we must compare the goods as they are described in the application and registration. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) ("The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed"). See also Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) ("Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods") and Dixie Restaurants, 41 USPQ2d at 1534 (punctuation in original), quoting, Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1816 (Fed. Cir. 1987) ("‘Likelihood of confusion must be determined based on an analysis of the mark as applied to the … services recited in applicant's application vis-à-vis the … services recited in [a] … registration, rather than what the evidence shows the … services to be'").
  • The second du Pont factor requires the TTAB to determine the similarity or dissimilarity of the goods as identified in the application and in the cited registration, respectively.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • The second du Pont factor requires us to determine the similarity or dissimilarity of the goods as identified in the application and in the cited registration, respectively.
  • The term "printing machines" so broad as to be virtually meaningless.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • Nor is the term "printing machines" so broad as to be virtually meaningless. Acomb, 187 USPQ at 190 ("In the instant case, ‘molded wood products consisting of particulate wood and resin' is so broad and comprehensive as to be devoid of any information as to just what molded wood products are marketed by opposer. It defies one's imagination because molded wood products could be most anything from toys to furniture to building materials to containers and so on").
  • The test for whether goods and services are related is not whether the goods and services are the same or interoperable.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • The test for whether goods and services are related is not whether the goods and services are the same or interoperable.
  • The TTAB does not read limitations into identifications of goods and services.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • FOOTNOTE 6 "We point out that the class 40 services in the ‘680 registration are not limited to "for courtroom use," as applicant argues. We do not read limitations into identifications of goods and services. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983). Therefore, registrant's services are not limited to purchasers in the "legal community." Applicant's Brief at 9."
  • The TTAB does not read limitations into the identification of goods.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • We also do not read limitations into the identification of goods. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)("There is no specific limitation and nothing in the inherent nature of Squirtco's mark or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board, thus, improperly read limitations into the registration").
  • The TTAB has previously found the use of identical marks for women's shoes, on the one hand, and women's clothing, namely, pants, blouses, shorts and jackets, on the other hand, is likely to cause confusion because the products are complementary.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • The Board has previously found the use of identical marks for women's shoes, on the one hand, and women's clothing, namely, pants, blouses, shorts and jackets, on the other hand, is likely to cause confusion because the products are complementary. In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
  • The TTAB must consider the goods as they are identified in the application and registration.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • We must consider the goods as they are identified in the application and registration. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
  • The TTAB will not take judicial notice that items of outerwear and undergarments are related items for purposes of determining likelihood of confusion.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Nor will the Board take judicial notice that items of outerwear and undergarments are related items for purposes of determining likelihood of confusion. B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d at 1506; In re Sears Roebuck & Co., 2 USPQ2d 1312, 1314 n.5 (TTAB 1987).
  • There is no per se rule that computer-related goods and services are related.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • Applicant cites several cases for the proposition that there is no per se rule that computer-related goods and services are related. See Toro Co. v. ToroHead, Inc.¸61 USPQ2d 1164 (TTAB 2001); In re Quadram Corp., 228 USPQ 863 (TTAB 1985); and Hasbro Inc. v. Clue Computing, Inc., 66 F.Supp.2d 117, 52 USPQ2d 1402 (D. Mass. 1999). We fully agree.
  • There is no per se rule that holds that all alcoholic beverages are related.
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • There is no per se rule that holds that all alcoholic beverages are related. See G. H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d 1292, 16 USPQ2d 1635 (Fed. Cir. 1990)[RED STRIPE and design for beer was not confusingly similar to a design of a red stripe for wines and sparkling wines]; National Distillers and Chemical Corp. v. William Grant & Sons, Inc., 505 F.2d 719, 184 USPQ 34 (CCPA 1974) [DUET for prepared alcoholic cocktails, some of which contained brandy, and DUVET for French brandy and liqueurs not confusingly similar]. See also, TMEP §1207.01(a)(iv) ["there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto"].
  • There is no requirement for goods to be found related that all or even a majority of the sources of one product must also be sources of the other product. Therefore, evidence showing only that the source of one product may not be the source of another product does not aid applicant in its attempt to rebut the evidence.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • Applicant's evidence does not consist of third-party registrations issued for the same or similar marks to different parties for the goods of applicant and registrant. It simply consists of registrations that list one of applicant's goods but do not include any goods that are in the cited registration, or registrations that list one of the goods in the cited registration but do not include any of applicant's identified goods. We give this evidence much less weight. There is no requirement for goods to be found related that all or even a majority of the sources of one product must also be sources of the other product. Therefore, evidence showing only that the source of one product may not be the source of another product does not aid applicant in its attempt to rebut the evidence of the examining attorney.
  • There is no requirement that either applicant or registrant also be the source of the other's goods before the goods can be held to be related.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • "There is no requirement that either applicant or registrant also be the source of the other's goods before the goods can be held to be related. See Recot, 54 USPQ2d at 1898 (citations to record omitted): ""The Board found that the FIDO LAY dog treats were not identical or closely related to the FRITO-LAY human snacks, and further found that none of Recot's collateral or licensed goods were related to dog treats. The Board declined to consider the lay testimony of both parties' witnesses that several companies produce and sell both pet and human foods, because it deemed the evidence of no persuasive value. The Board erred when it refused to consider the lay evidence that several large companies produce and sell both pet and human food in deciding whether a consumer would reasonably believe that FIDO LAY dog treats originated from the same source as FRITO-LAY human snacks."""
  • Third party registrations cannot justify the registration of another confusingly similar mark.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • "We note that "the third party registrations relied on by applicant cannot justify the registration of another confusingly similar mark." Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). See also Curtice-Burns, Inc. v. Northwest Sanitation Products, Inc., 530 F.2d 1396, 189 USPQ 138 (CCPA 1976): ""[A]ppellant relies on Hunt [Foods and Industries, Inc. v. The Gerson Stewart Corp., 367 F.2d 431, 151 USPQ 350 (1966)] to show that the facts here as to the parties' marks and products parallel those in Hunt, which is not the case, on which precedential basis we are asked to find likelihood of confusion, as we did in Hunt. We said in Industrial Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (CCPA 1973), as we shall evidently have to continue saying ad nauseam: ""As we have said innumerable times, prior decisions on other marks for other goods are of very little help one way or the other in cases of this type. Each case must be decided on its own facts and the differences are often subtle ones."""" Accord In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) ("Even if some prior registrations had some characteristics similar to Nett Designs' application, the PTO's allowance of such prior registrations does not bind the Board or this court")."
  • Third-party Internet evidence may support a finding that applicant's goods and registrant's goods are related for purposes of the second du Pont factor.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Further supporting a finding that applicant's goods and registrant's goods are related for purposes of the second du Pont factor is the Trademark Examining Attorney's third-party Internet evidence (attached to her denial of the request for reconsideration).
  • Third-party registrations can be used by examining attorneys to suggest that the goods are related because the same party has registered a common mark for the goods at issue in a likelihood of confusion case.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • As we indicated above, third-party registrations can be used by examining attorneys to suggest that the goods are related because the same party has registered a common mark for the goods at issue in a likelihood of confusion case.
  • Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may 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.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • "Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may 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." In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). See also In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001).
  • This factor concerns the onsideration of the relationship between applicant's and registrants' goods and services.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • We now look at the next factor, which involves consideration of the relationship between applicant's and registrants' goods and services.
  • Traveling bags and both all-purpose tote bags and sport bags can be used for similar purposes and are therefore, to some extent, competitive products.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • Finally, the applicant and the registrant have also identified closely related goods: applicant has listed all-purpose tote bags and sport bags and the registration includes traveling bags. Traveling bags and both all-purpose tote bags and sport bags can be used for similar purposes and are therefore, to some extent, competitive products.
  • When marks are used on identical goods, the marks do not have to be as similar, to support a conclusion that confusion among consumers is likely, as they would have to be if the goods were different.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • When marks are used on identical goods, the marks do not have to be as similar, to support a conclusion that confusion among consumers is likely, as they would have to be if the goods were different. See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) ("When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.").
  • When the marks are substantially identical, it is only necessary that there be a viable relationship between the goods or services to support a finding of likelihood of confusion.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • When the marks are substantially identical, as they are here, it is only necessary that there be a viable relationship between the goods or services to support a finding of likelihood of confusion. In re Concordia Int'l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
  • Where the mark is identical to the cited registered mark, the degree of relatedness between the respective goods that is necessary to support a finding that the goods are related under the second du Pont likelihood of confusion factor is less than it would be if the marks were not identical; there need be only a viable relationship between the respective goods.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • As noted above, in cases such as this where the applicant's mark is identical to the cited registered mark, the degree of relatedness between the respective goods that is necessary to support a finding that the goods are related under the second du Pont likelihood of confusion factor is less than it would be if the marks were not identical; there need be only a viable relationship between the respective goods.
  • Where there are no specific limitations and nothing in the inherent nature of the mark or goods that restricts the usage, the TTAB cannot improperly read limitations into the registration.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • Because there are no restrictions in applicant's description of goods, applicant's wallets and handbags encompass registrant's wallets and handbags made of leather and imitations of leather. In addition, applicant's luggage encompasses registrant's luggage trunks. See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) ("There is no specific limitation and nothing in the inherent nature of Squirtco's mark or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board, thus, improperly read limitations into the registration"); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ 211 USPQ 639, 640 (TTAB 1981).
  • While classification is for the administrative convenience of the USPTO, nevertheless, a properly identified term would not include goods outside the international class.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • FOOTNOTE 4 "While classification is for the administrative convenience of the USPTO, we would not assume that a properly identified term would include goods outside the international class. Otherwise, we would have to assume that goods identified as "mufflers" may be related to items of clothing and automobile parts. TMEP § 1402.03 (5th ed. rev. September 2007) ("If the meaning of such a term can be understood when read in association with the title of the class in which it is placed, and if the term is otherwise satisfactory, the examining attorney need not require amendment to further qualify the term. For example, ‘mufflers' in the clothing class would not require further modification to indicate that articles of clothing are intended, rather than automotive mufflers")."
  • While third-party registrations are not evidence that the marks are in use or that the public is familiar with them, registrations based on use in commerce may serve to suggest that the products listed in the registrations are of a type that may emanate from a single source.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • FOOTNOTE 27 "Applicant proffered the third-party registrations to explain the meaning of the word "fit" in connection with clothing and to show that opposer's mark ONE TRUE FIT is a weak mark. (Applicant's notice of reliance, p. 2). Opposer objected to the third-party registrations on the ground that they are not relevant because applicant failed to introduce any corroborating evidence that the marks are in use and therefore have any effect in the marketplace. (Opposer's Brief, Appendix, p. A6). Opposer's objection is overruled. While third-party registrations are not evidence that the marks are in use or that the public is familiar with them, registrations based on use in commerce may serve to suggest that the products listed in the registrations are of a type that may emanate from a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785- 1786 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Accordingly, the third-party registrations are admissible, and we may consider the third-party registrations for whatever probative value they may have. 28 We have not included the entire description of goods for each of the registrations. Only the goods found in applicant's application and opposer's registration are listed. In addition, we note that Nike, Inc. owns both the DRI-FIT (Reg. No. 2571314) and THERMA-F.I.T. (Reg. No. 1839775) registrations."
  • Case Findimg: Clothing goods of the parties were in part identical and in part different.
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003)
      • We specifically find that applicant's various clothing items and opposer's various clothing items are in part identical (i.e., "socks" and "hosiery") and are otherwise related (e.g., applicant's jackets, pants and Tshirts and opposer's shoes and belts). See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re Apparel Ventures, Inc., 229 USPQ 225 (TTAB 1986).
  • The TTAB Board does not take judicial notice of status changes in third-party applications made of record.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • FOOTNOTE 3 "Applicant proffered two additional instances wherein an application was "allowed" over an existing registration. The applications are evidence of nothing more than that they were filed, and there is no indication that either application matured into a registration; the Board does not take judicial notice of status changes in third-party applications made of record."
  • The proper inquiry is not whether the goods could be confused, but whether the source of the goods is likely to be confused.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • The proper inquiry is not whether the goods could be confused, but whether the source of the goods is likely to be confused. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).
  • Where a term for a particular product has multiple meanings, the International Class may be used to determine the particular meaning.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • Where a term for a particular product has multiple meanings, the International Class may be used to determine the particular meaning.
  • It is sufficient if likelihood of confusion is established for any item encompassed by the identification of goods in the application.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • It is sufficient if likelihood of confusion is established for any item encompassed by the identification of goods in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981).
  • The issue is not whether purchasers would confuse the services, but rather whether there is a likelihood of confusion as to the source of the services.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • The issue, of course, is not whether purchasers would confuse the services, but rather whether there is a likelihood of confusion as to the source of the services. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
  • Although applicant deleted "restaurant services" from the applications' recitations, the remaining casino, gaming, hotel and bar services are closely related to registrant's restaurant services.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • Accordingly, although applicant deleted "restaurant services" from the applications' recitations, the remaining casino, gaming, hotel and bar services are closely related to registrant's restaurant services.
  • In view of the foregoing, we find the term "trailers" in the description of goods for the cited registration encompasses the terms travel trailers and fifth wheel trailers in applicant's description of goods.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • In view of the foregoing, we find the term "trailers" in the description of goods for the cited registration encompasses the terms travel trailers and fifth wheel trailers in applicant's description of goods. Accordingly, the goods are related.
  • The goods are related where the evidence shows that the goods in the application and the goods in the cited registration are used for overlapping purposes and that they are purchased by the same entities for use in the same facilities.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • Thus, the evidence shows that the goods in the application and the goods in the cited registration are used for overlapping purposes and that they are purchased by the same entities for use in the same facilities. Accordingly, we conclude that the respective goods are related.
  • Moreover, the greater the degree of similarity between the applicant's mark and the registered mark, the lesser the degree of similarity between the applicant's goods and registrant's goods that is required to support a finding of likelihood of confusion.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • Moreover, the greater the degree of similarity between the applicant's mark and the registered mark, the lesser the degree of similarity between the applicant's goods and registrant's goods that is required to support a finding of likelihood of confusion. In re Opus One, Inc., 60 USPQ2d at 1815; In re Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
  • Third-party registrations which individually cover a number of different items which are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed goods are of a type which may emanate from the same source.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • Third-party registrations which individually cover a number of different items which are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed goods are of a type which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d at 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
  • Because the TTAB may not read any restrictions or limitations into the registrant's description of goods, applicant's third-party registrations submitted to show that different entities have registered the same or similar marks for trailers and recreational vehicles have little probative value because none of those registrations is for trailers per se.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • Because we may not read any restrictions or limitations into the registrant's description of goods, applicant's third-party registrations submitted to show that different entities have registered the same or similar marks for trailers and recreational vehicles have little probative value because none of those registrations is for trailers per se.
  • Since the TTAB can cancel registrations in whole or in part, applicant could have sought to restrict the description of goods in the cited registration by filing a partial petition to cancel the cited registration and alleging that the proposed restriction will avoid a likelihood of confusion and that registrant is not using the mark on the products being excluded from the registration.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • FOOTNOTE 11 "Applicant was not without a remedy. Section 18 of the Trademark Act of 1946 gives the Board the equitable power to cancel registrations in whole or in part, "restrict the goods or services identified in an application or registration," or to "otherwise restrict or rectify . . . the registration of a registered mark." 15 U.S.C. §1068; Trademark Rule 2.133(b). See also TBMP §309.03(d)(2d ed. rev. 2004) and cases cited therein. Accordingly, applicant could have sought to restrict the description of goods in the cited registration to "industrial and commercial trailers sold to professional purchasers" and excluding recreational vehicles by filing a partial petition to cancel the cited registration and alleging that the proposed restriction will avoid a likelihood of confusion and that registrant is not using the mark on the products being excluded from the registration. Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co., 34 USPQ2d 1266, 1271 (TTAB 1994)."
  • Case Finding: This is far different from what applicant asserts we should do (i.e., interpret the word "trailers" in the registered mark to be "industrial and commercial trailers sold to professional purchasers" because registrant also lists dump trailers and truck bodies in its description of goods.)
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • This is far different from what applicant asserts we should do (i.e., interpret the word "trailers" in the registered mark to be "industrial and commercial trailers sold to professional purchasers" because registrant also lists dump trailers and truck bodies in its description of goods). We have no authority to read any restrictions or limitations into the registrant's description of goods.11
  • In the context of likelihood of confusion, it is sufficient if likelihood of confusion is found with respect to use of the mark on any item that comes within the description of goods in the application or registration.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • FOOTNOTE 4 "In the context of likelihood of confusion, it is sufficient if likelihood of confusion is found with respect to use of the mark on any item that comes within the description of goods in the application or registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007)."
  • Where applicant's and opposer's products are broadly identified without any restrictions or limitations as to type, channels of trade or classes of consumers, we must assume that both goods encompass all types and that they are sold in the same channels of trade and to the same classes of consumers.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • Both applicant's and opposer's clothing products are broadly identified without any restrictions or limitations as to the type of clothing, channels of trade or classes of consumers. Therefore, we must assume that both applicant's and opposer's clothing encompass all types of clothing, and, as discussed more fully below, that they are sold in the same channels of trade and to the same classes of consumers.
  • Even technically trained purchasers who are extremely familiar with expensive machinery may be confused when similar marks are used with respect to the same goods.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • The Board has stated, "Even technically trained purchasers who are extremely familiar with expensive machinery may be confused when similar marks are used with respect to the same goods. See Wm. K. Stamets Company v. The Metal Products Company, 176 USPQ 92 (TTAB 1972)." In re N.A.D. Inc., 221 USPQ 1115, 1118 (TTAB 1984). See also In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986).
  • Case Finding: While we acknowledge that the goods in question are relatively complex and expensive and that the potential purchasers are relatively sophisticated in their fields, we conclude that the level of care which would attend the purchases is not sufficient to preclude a likelihood of confusion under the totality of the circumstances in this case.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • While we acknowledge that the goods in question, both applicant's goods and those identified in the cited registration, are relatively complex and expensive and that the potential purchasers are relatively sophisticated in their fields, we conclude that the level of care which would attend the purchases is not sufficient to preclude a likelihood of confusion under the totality of the circumstances in this case.
  • The TTAB must analyze the similarity or dissimilarity and nature of the goods based on the description of the goods set forth in the application and the registration at issue.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • Likewise, in this case, we must also analyze the similarity or dissimilarity and nature of the goods based on the description of the goods set forth in the application and the registration at issue. In other words, we may not limit or restrict the trailers listed in the cited registration based on extrinsic evidence. Therefore, we must construe registrant's trailers as encompassing travel trailers and fifth wheel trailers.10
  • A multiple-class application can be viewed as a series of applications for registration of a mark in connection with goods or services in each class, combined into one application.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • In this case, consideration of the issue of whether the goods and services are related or not leads to different results in our analysis of likelihood of confusion. Therefore, we discuss the classes separately. G & W Labs. Inc. v. GW Pharma Ltd., 89 USPQ2d 1571, 1574 (TTAB 2009)("[A] multiple-class application can be viewed as a series of applications for registration of a mark in connection with goods or services in each class, combined into one application ..").
  • As the Court explained in Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981), "Here, appellant seeks to register the word MONOPOLY as its mark without any restrictions reflecting the facts in its actual use which it argues on this appeal prevent likelihood of confusion. We cannot take such facts into consideration unless set forth in its application."
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • As the Court of Customs and Patent Appeals, the predecessor of our primary reviewing court, explained in Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981): "Here, appellant seeks to register the word MONOPOLY as its mark without any restrictions reflecting the facts in its actual use which it argues on this appeal prevent likelihood of confusion. We cannot take such facts into consideration unless set forth in its application."
  • The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed. Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)(citations omitted).
  • Where applicant's mark is virtually identical to the registrant's mark, there need only be a viable relationship between the goods to find that there is a likelihood of confusion.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • Where, as in this case, the applicant's mark is virtually identical to the registrant's mark, there need only be a viable relationship between the goods to find that there is a likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) ("even when the goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source"); In re Concordia International Forwarding Corp., 222 USPQ2d at 356.
  • Once definitions of the goods were established, the TTAB determines the issue of likelihood of confusion based on the description of goods in the application and registration, even if the definitions resulted in a broad scope of goods.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • FOOTNOTE 10 "We properly used the dictionary definitions (i.e., extrinsic evidence) to determine the definitions for the type of trailers, recreational vehicles, travel trailers, and fifth wheel trailers listed in the description of goods. In re Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990). Once those meanings were established, we determined the issue of likelihood of confusion based on the description of goods in the application and registration, even if the definitions resulted in a broad scope of goods."
  • With respect to the goods, the question of likelihood of confusion must be determined on the basis of the goods set forth in the application and opposer's registrations, rather than on what any evidence may show those goods to be.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • Applicant argues that "[t]he logo design represents, identifies and symbolizes 'Cuban Heritage' and 'Cuban Culture' in clothing that is directed to the Cuban Community in the United States or the entire world."9 However, with respect to the goods, the question of likelihood of confusion must be determined on the basis of the goods set forth in the application and opposer's registrations, rather than on what any evidence may show those goods to be. Canadian Imperial Bank of Commerce v. Well Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
  • When products are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion is increased because purchasers of such products are held to a lesser standard of purchasing care.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • It is also important to consider that t-shirts and many of the other casual, everyday items of wearing apparel identified in applicant's application are relatively inexpensive and are therefore likely to be purchased by consumers on impulse, and without a great deal of care. This is a factor that increases the likelihood of confusion. See Recot, supra at 1899 ("When products are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion is increased because purchasers of such products are held to a lesser standard of purchasing care.").
  • The fact that goods are found in different classes has no bearing on the question of likelihood of confusion.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • FOOTNOTE 19 "Applicant argues that use of LIFE ZONE with a different class of goods or services cannot be relevant. While we do not reach the merits of this case, this is an incorrect statement of law. "The fact that goods are found in different classes has no bearing on the question of likelihood of confusion." In re Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992). Although the relationship (if any) of the goods and services is an important factor, see In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (factor #2), their classification is not."
  • The goods in the application and the cited registration need not be identical to find a likelihood of confusion under Trademark Act Section 2(d). They need only be related in such a way that the circumstances surrounding their marketing would result in relevant consumers mistakenly believing that the goods originate from or are associated with the same source.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • Next, we consider whether the goods of the parties are related. The goods in the application and the cited registration need not be identical to find a likelihood of confusion under Trademark Act Section 2(d). They need only be related in such a way that the circumstances surrounding their marketing would result in relevant consumers mistakenly believing that the goods originate from or are associated with the same source. On-Line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
  • Third-party registrations, showing that many entities have adopted a single mark for use on goods of the type listed in applicant's application and in the cited registration serve to suggest that the listed goods and/or services are of a type which may emanate from a single source.
    • In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010)
      • With respect to the du Pont factor of the similarity of the goods, the examining attorney has submitted a significant number of third-party registrations showing that many entities have adopted a single mark for use on goods of the type listed in applicant's application and in the cited registration....These third-party registrations, which individually cover a number of different items and which are based on use in commerce, serve to suggest that the listed goods and/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).
  • Discussion of third-party registrations that do not support applicant's contention for two reasons.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • The third-party registrations do not support applicant's contention for two reasons. First, none of the registrations are for trailers per se. Therefore, there are no registrations for trailers and recreational vehicles, including travel trailers or fifth wheel trailers. Second, the fact that both types of trailers are listed in the registrations (commercial or industrial trailers and recreational vehicles) does not necessarily mean that the registrants regard them as different products. It may be that the registrants want to be clear that the specific types of trailers are covered by their registrations.
  • It is not necessary that these goods be identical or even competitive to support a finding of likelihood of confusion. Rather, it is sufficient that the goods are related in some manner, or that the circumstances surrounding their marketing are such, that they would be encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief that they originate from the same source or that there is an association or connection between the sources of the goods.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • It is not necessary that these goods be identical or even competitive to support a finding of likelihood of confusion. Rather, it is sufficient that the goods are related in some manner, or that the circumstances surrounding their marketing are such, that they would be encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief that they originate from the same source or that there is an association or connection between the sources of the goods. See In re Opus One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Melville Corp., 18 USPQ2d 1386, 1387 (TTAB 1991).
  • The conclusion that a term would clearly include items classified in more than one class and is therefore unacceptable as indefinite should not be drawn unless unreasonable, in light of the commercial relationships between all the goods or services identified in the application.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • For example, if the applicant identifies its goods as "mufflers," in Class 25 (the clothing class), an Examining Attorney would not require further modification to indicate that articles of clothing are intended, rather than automotive mufflers. See In re Paper Doll Promotions Inc., 84 USPQ2d 1660, 1665 (TTAB 2007), citing TMEP §1402.03 ("the conclusion that a term would clearly include items classified in more than one class [and is therefore unacceptable as indefinite] should not be drawn unless unreasonable, in light of the commercial relationships between all the goods or services identified in the application").
  • Third-party registrations are probative to the extent they show that the goods and services listed therein are of a kind that may emanate from a single source.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • With regard to applicant's "rental of construction machines," this identification necessarily includes rental of registrant's "excavators." The record supports a finding of relatedness between registrant's goods and applicant's rental services for such goods. Specifically, the record includes several thirdparty registrations for "excavators" and "rental of construction equipment" under a single mark. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) (third-party registrations probative to the extent they show that the goods and services listed therein are of a kind that may emanate from a single source).
  • Case Finding: Because the identification of goods in opposer's registration is not limited to specific types of personal and gaming computers or to specific channels of trade, it must be presumed that opposer's computers encompass computers which would use applicant's computer software for use in computers for the transmission, storage and playback of audio and video content.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • Opposer has registered its VOODOO mark for, inter alia, "personal and gaming computers" and applicant seeks registration of its VUDU mark for, inter alia, "computer software for use in computers for the transmission, storage and playback of audio and video content."4 Because the identification of goods in opposer's registration is not limited to specific types of personal and gaming computers or to specific channels of trade, it must be presumed that opposer's computers encompass computers which would use applicant's computer software for use in computers for the transmission, storage and playback of audio and video content.
  • Insofar as the services are concerned, it is not necessary that the respective services be competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective services are related in some manner, and/or that the conditions and activities surrounding the marketing of the services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originated from the same producer.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • Insofar as the services are concerned, it is not necessary that the respective services be competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective services are related in some manner, and/or that the conditions and activities surrounding the marketing of the services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originated from the same producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
  • A comparison between registrant's restaurant services and applicant's casino and gaming services and hotel and bar services.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • The comparison at issue here is between registrant's "restaurant services" and applicant's "casino and gaming services" and "hotel and bar services." At the outset of consideration of this factor we note that applicant's original recitation of services included "restaurant services"; in response to the Section 2(d) refusal, applicant deleted these services from his recitation. Further, registrant's services are not limited and thus must be construed to encompass all types of restaurant services, including stand-alone restaurants as well as restaurants that may be located within a hotel or casino. See In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
  • Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may 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.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • We find that the third-party registration evidence, on balance, weighs in favor of the examining attorney's position. "Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may 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." In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff'd, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
  • The likelihood of confusion is determined on the basis of the goods as they are identified in the application and registration at issue.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • The likelihood of confusion is determined on the basis of the goods as they are identified in the application and registration at issue. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re William Hodges & Co., Inc., 190 USPQ 47, 48 (TTAB 1976). See also Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) ("The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed").
  • Disucssion of types of goods using the RED SOX mark.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • The goods identified in the application, which include tshirts, jerseys and sweatshirts, are identical to the items of clothing on which opposer uses its stylized RED SOX mark. Furthermore, because there are no restrictions in the application, we must presume that applicant's clothing will be sold, not just over the Internet as applicant seems to argue, but in all the normal channels of trade for such goods, including the department stores and sporting goods stores where opposer's clothing bearing the RED SOX stylized mark is sold; and that applicant's clothing will reach all the usual purchasers, including ordinary consumers who are also among the purchasers for opposer's clothing. See Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990);
  • It is acceptable and appropriate for an applicant to use a broad description of goods.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • Second, it is acceptable and appropriate for an applicant to use a broad description of goods. Applicants frequently use broad terms to identify the goods or services in an application. . . . The requirement for use or a bona fide intent to use is not necessarily violated by broad identifying terms. When a mark is used on a number of items that make up a homogeneous group, a term that identifies the group as a whole would be understood as encompassing products of the same general type that are commercially related.
        As long as a broad term identifies the goods or services that are intended to be covered with reasonable certainty, it will be reasonable, from a commercial viewpoint, to consider that the mark has been used for all the related goods or services that fall in the designated group.
        TMEP §1402.03 (5th ed. 2007).
In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010) In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010) In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010) In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010) In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009) UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009) In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009) In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009) In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009) Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009) In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009) In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009) Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009) Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009) In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009) In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008) The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008) In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008) Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008) Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008) 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007) Apple Computer v.  TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007) Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007) Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007) In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007) In re Association of the United States Army, Serial No. 76578579, (TTAB 2007) In re Chica, Inc., Serial No. 76627857, (TTAB 2007) In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007) In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007) In re The W.W. Henry Company, L.P., Serial No. 78401595, (TTAB 2007) Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007) Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007) L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007) Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007) Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007) Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007) Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007) Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007) ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007) Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007) The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007) The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007) The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007) The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007) Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007) Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, Opposition No. 91150925, (TTAB 2007) Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006) Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006) Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006) In re Big Pig, Inc., Serial No. 78249582, (TTAB 2006) In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006) In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006) In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006) In re Mark Thomas, Serial No. 78334625, (TTAB 2006) Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006) National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006) Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006) Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006) Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006) Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006) Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006) Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005) DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005) Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004) Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004) Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003) In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003) The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003) INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002) Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002) In re Comexa Ltda., Serial No. 75/396,043, (TTAB 2001) In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001) The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001) The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001) In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999) Grand Total
In re Thor Tech, Inc., 90 USPQ2d 1634 (TTAB 2009) 1
G & W Labs. Inc. v. GW Pharma Ltd., 89 USPQ2d 1571 (TTAB 2009) 1
In re La Peregrina Ltd., 86 USPQ2d 1645 (TTAB 2008) 1
Miss Universe L.P., LLLP v. Community Marketing Inc., __USPQ2d__ (TTAB 2007) 1
B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500 (TTAB 2007) 1
In re Association of the United States Army, 85 USPQ2d 1264 (TTAB 2007) 2
In re Omega SA, 404 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) 1
In re Paper Doll Promotions Inc., 84 USPQ2d 1660 (TTAB 2007) 1
Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393 (TTAB 2007) 1
Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881 (TTAB 2006) 1
Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB 2004) 1
Nautilus Group Inc. v. ICON Health and Fitness Inc., 71 USPQ2d 1173 (Fed. Cir. 2004) 1
Shen Manufacturing Co. Inc. v. The Ritz Hotel Limited, 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) 5
Genesco Inc. v. Martz, 66 USPQ2d 1260 (TTAB 2003) 2
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003) 1
Bose Corp. v. QSC Audio Prods., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002) 2
Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) 7
Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002) 4
In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214 (TTAB 2001) 2
In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001) 6
Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001) 1
In re Infinity Broadcasting Corporation, 60 USPQ2d 1214 (TTAB 2001) 1
In re Nett Designs Inc., 236 F.3d 1339, 957 USPQ2d 1564 (Fed. Cir. 2001) 1
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) 2
Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000) 1
On-Line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000) 1
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000) 4
Hasbro Inc. v. Clue Computing Inc., 66 F. Supp.2d 117, 52 USPQ2d 1402 (D. Mass. 1999), aff'd, 232 F.3d 1, 56 USPQ2d 1766 (1st Cir. 2000) 2
In re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999) 1
In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998) 1
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997) 1
In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994) 5
In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994) 1
Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co., 34 USPQ2d 1266 (TTAB 1994) 1
Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993) 5
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993) 15
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993) 4
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2 14698 (Fed. Cir. 1992) 21
Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992) 2
In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992) 2
Jockey International Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) 1
Societe Des Produits Nestle v. Casa Helvetia Inc., 982 F.2d 633, 25 USPQ2d 1256 (1st Cir. 1992) 1
The American Angus Association v. Sysco Corp., 829 F.Supp. 807, 25 USPQ2d 1683 (W.D.N.C. 1992) 1
In re Sailerbrau Franz Sailer, 23 USPQ2d 1719 (TTAB 1992) 1
In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991) 16
J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991) 4
In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990) 5
Octocom Services Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990) 24
G. H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d 1292, 16 USPQ2d 1635 (Fed. Cir. 1990) 1
Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989) 3
McDonald's Corp. v. McKinley, 13 USPQ2d 1895 (TTAB 1989) 3
Miss Universe Inc. v. Pitts, 714 F.Supp. 209, 14 USPQ2d 2004 (W.D. La. 1989) 1
Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069 (TTAB 1989) 1
Bureau National Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) 1
In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988) 1
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988) 11
In re Pollio Dairy Products Corp., 8 USPQ2d 2012 (TTAB 1988) 1
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) 19
Edison Brothers Stores Inc. v. Cosmair Inc., 651 F.Supp. 1547, 2 USPQ2d 1013 (S.D.N.Y. 1987) 1
In re Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987) 4
In re Apparel Ventures Inc., 229 USPQ 225 (TTAB 1986) 1
In re Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986) 2
In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49 (Fed. Cir. 1986) 1
International Telephone & Telegraph Corp., 197 USOQ 910 (TTAB 1986) 1
Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445 (TTAB 1986) 1
Fortunoff Silver Sales Inc. v. Norman Press Inc., 225 USPQ 863 (TTAB 1985) 1
In re Loew's Theatres Inc., 749 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) 1
In re Quadram Corp., 228 USPQ 863 (TTAB 1985) 3
Mason Engineering & Designing Corp. v. Mateson Chemical Corp., 225 USPQ 956 (TTAB 1985) 1
Freedom Savings and Loan Association v. Fidelity Bankers Life Insurance Company, 224 USPQ 300 (TTAB 1984) 1
In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) 3
In re Martin's Famous Pastry Shoppe Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) 6
In re Rexel Inc., 223 USPQ 830 (TTAB 1984) 5
In re Unilever Limited, 222 USPQ 981 (TTAB 1984) 1
Seligman & Latz Inc. v. Merit Mercantile Corporation, 222 USPQ 720 (TTAB 1984) 1
Specialty Brands Inc. v. Coffee Bean Distributors Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984) 1
Seaguard Corporation v. Seaward International Inc., 223 USPQ 48 (TTAB 1984) 1
In re N.A.D. Inc., 221 USPQ 1115 (TTAB 1984) 1
Bonaventure Associates v. Westin Hotel Co., 218 USPQ 537 (TTAB 1983) 1
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983) 2
In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983) 4
In re Fesco Inc., 219 USPQ 437 (TTAB 1983) 1
In re Jewelmasters Inc., 221 USPQ 90 (TTAB 1983) 1
In re The Summit Hotel Corporation, 220 USPQ 927 (TTAB 1983) 1
Plus Products v. Star-Kist Foods Inc., 220 USPQ 541 (TTAB 1983) 1
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983) 6
Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) 2
Toys R Us v. Lamps R Us, 219 USPQ 340 (TTAB 1983) 1
In re Concordia International Forwarding Corp., 222 USPQ 352 (TTAB 1983) 2
In re Elbaum, 211 USPQ 639 (TTAB 1981) 7
Tuxedo Monopoly Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981) 4
Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980) 1
In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978) 15
Interstate Brands Corp. v. Celestial Seasonings Inc., 576 F.2d 926, 198 USPQ 151 (CCPA 1978) 1
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590 (TTAB 1978) 1
In re International Telephone & Telephone Corp., 197 USPQ 910 (TTAB 1978) 3
General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690 (TTAB 1977) 2
Federated Foods Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976) 2
In re William Hodges & Co. Inc., 190 USPQ 47 (TTAB 1976) 3
Miss Universe Inc. v. Drost, 189 USPQ 212 (TTAB 1976) 1
Curtice-Burns, Inc. v. Northwest Sanitation Products, Inc., 530 F.2d 1396, 189 USPQ 138 (CCPA 1976) 1
Augusta National Inc. v. The Northwestern Mutual Life Ins. Co., 193 USPQ 210 (S.D. Ga. 1976) 1
Harvey Hubbell Inc. v. Tokyo Seimitsu Co., Ltd., 188 USPQ 517 (TTAB 1975) 1
Safety-Klean Corporation v. Dresser Industries Inc., 518 F.2d 1399, 186 USPQ 476 (CCPA 1975) 1
Acomb v. Polywood Plastics Corp., 187 USPQ 188 (TTAB 1975) 1
Dymo Industries Inc. v. Schramm Inc., 181 USPQ 540 (TTAB 1974) 1
Falk Corp. v. Toro Manufacturing Corp., 493 F.2d 1372, 181 USPQ 462 (CCPA 1974) 1
National Distillers and Chemical Corp. v. William Grant & Sons, Inc., 505 F.2d 719, 184 USPQ 34 (CCPA 1974) 1
AMF Inc. v. American Leisure Products Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973) 1
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) 1
Paula Payne Products Co. v. Johnson Publishing Co., 177 USPQ 76 (CCPA 1973) 9
Industrial Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (CCPA 1973) 1
American Optical Corporation v. Autotrol Corporation, 175 USPQ 725 (TTAB 1972) 2
Wm. K. Stamets Company v. The Metal Products Company, 176 USPQ 92 (TTAB 1972) 1
Palisades Pageants Inc. v. Miss America Pageant, 442 F.2d 1385, 169 USPQ 790 (CCPA 1971) 1
Catalina Inc. v. Catalina Cosmetics Corporation, 161 USPQ 55 (TTAB 1969) 1
Clairol Incorporated v. Topaz Hosiery Mills Inc., 161 USPQ 545 (TTAB 1969) 1
Foods and Industries, Inc. v. The Gerson Stewart Corp., 367 F.2d 431, 151 USPQ 350 (1966) 1
Kalart Co. v. Camera-Mart Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958) 1
In re Shoe Works, 6 USPQ2d 1890 (TTAB 198) 1
Grand Total 3 10 1 2 9 1 12 5 11 2 5 13 1 3 6 13 7 5 2 1 4 1 3 2 5 5 2 3 3 4 11 11 1 1 8 9 4 1 1 1 6 1 6 8 10 6 1 3 3 2 7 1 2 6 3 4 6 2 5 4 6 1 2 3 1 8 3 1 1 11 6 5 6 3 2 337
No Statutes Listed

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