Friday, July 12, 2013

Test Your TTAB Judge-Ability: Are "THE TEAM, THE TEAM, THE TEAM" And "TEAM" Confusable for Athletic Footwear?

Schembechler Enterprises sought to register the mark THE TEAM, THE TEAM, THE TEAM for various items of clothing, including athletic footwear and uniforms. Examining Attorney Kristina Morris refused registration on two grounds: (1) likely confusion with the registered mark TEAM for "athletic shoes and sandals for men and boys; dress shoes, sandals, and slippers for women and girls," and (2) as to athletic uniforms, mere descriptiveness. Applicant appealed. How do you think this came out? In re Schembechler Enterprises, LLC, Serial No. 85314616 (June 12, 2013) [not precedential].

Likelihood of Confusion: The goods in the application and registration overlap as to athletic footwear, and so the Board must presume that those goods travel through the same, normal channels of trade to the same classes of consumers. But what about the marks?

Of course, the proper test is not a side-by-side comparison. Moreover, since the goods are legally identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. The Board observed that applicant’s mark "simply repeats the entire prior registered mark three times and adds the definite article "the." "Mere repetition does not necessarily create a new and different meaning or commercial impression of a mark as compared to its separate components." And the article “the” has no significance as a source-identifier.

Schembechler argued that its mark creates a different overall commercial impression from that of the cited mark, relying on two existing registrations for the mark PIZZA!PIZZA! for “restaurant services” and “pizza for consumption on or off the premises.” The Board pointed out for the umpteenth time that it is not bound by the decisions of Examining Attorneys in other cases. "Each case must be decided on its own facts, based on the particular mark, the particular goods or services, and the particular record in each application. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)."

 The Board concluded that applicant's triple repetition, even considering the addition of the word “THE,” did not create a mark with a "different meaning or significantly different commercial impression from the cited registered mark TEAM." It found the marks to be similar in sight, sound, connotation, and commercial impression, and so it affirmed the Section 2(d) refusal.

Mere Descriptiveness: The Board reversed the mere descriptiveness refusal vis-a-vis applicant's "athletic uniforms," reasoning as follows:

Athletic uniforms are worn by teams. To our knowledge, there is no use or purpose for athletic uniforms other than to be worn by members of athletic teams. For that reason, applicant’s mark THE TEAM, THE TEAM, THE TEAM conveys no information about applicant’s athletic uniforms.

Read comments and post your comments here.

TTABlog comment: I don't understand the Board's reasoning as to the mere descriptiveness issue. Would the term BASEBALL not be descriptive of baseball gloves because there is no other use or purpose for a baseball glove?

Text Copyright John L. Welch 2013.


At 10:39 AM, Anonymous Susan said...

I am also confused by the quoted Board reasoning. I expected the last sentence ("For that reason...") to say '...conveys information about the purpose or use of applicant’s athletic uniforms.' Any insights?

At 4:49 PM, Anonymous Freiburger said...

I will suggest that what the Board meant was the mark doesn't "convey any [important] information" about the athletic uniforms. Taking a more extreme example, the hypothetical mark HUMAN might be said to describe the intended users of the athletic uniforms, but I think most would agree HUMAN would not be merely descriptive of the uniforms.

On the other hand, if the type of product is something that might be used by humans and, say, dogs (e.g., biscuits), then I would imagine both HUMAN and PET would be descriptive because both terms serve to provide important information about the intended users.


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