IP Law Daily, TRADEMARK—TTAB: Registration of THE TEAM, THE TEAM, THE TEAM refused as confusingly similar to TEAM mark for class 25 clothing, (Jul 12, 2013)

By Mark Engstrom, J.D.

Schembechler Enterprises could not register the standard character mark THE TEAM, THE TEAM, THE TEAM, for clothing in International Class 25, because the mark was confusingly similar to the registered mark TEAM, for various types of footwear in the same Class, the Trademark Trial and Appeal Board has ruled (In re Schembechler Enterprises, LLC, June 12, 2013, Hightower, S.).

An examining attorney’s refusal to register the proposed mark was therefore affirmed based on a likelihood of confusion with the registered mark. The refusal was reversed, however, to the extent that the examining attorney had concluded that the mark was merely descriptive of “athletic uniforms,” one of the product types that the applicant had identified in its list of Class 25 goods. Because the refusal to register did not include the applicant’s use of the proposed mark in connection with goods in Internal Classes 9 and 16, the application proceeded to publication with respect to the applicant’s goods in those two classes.

Likelihood of Confusion

The Board focused its likelihood of confusion analysis on the similarity of the parties’ marks, goods, and channels of trade.

Similarity of marks. The proposed mark THE TEAM, THE TEAM, THE TEAM simply repeated the registered mark TEAM three times, each time adding the definite article THE. According to the Board, mere repetition of a mark did not necessarily create a new and different meaning or commercial impression. In addition, the definite article “the” was insignificant as a source identifier.

The applicant argued that its proposed mark created a different commercial impression than the mark in the cited registration. It relied on two existing registrations for the mark PIZZA!PIZZA! (one for “restaurant services” and one for “pizza for consumption on or off the premises”). The Board, however, was not bound by prior registrations because “each case [had to] be decided on its own facts, based on the particular mark, the particular goods or services, and the particular record in each application.”

The Board did not view the applicant’s triple repetition of the registered mark—taking into account the addition of “THE”—as creating a mark with a different meaning or a significantly different commercial impression from the registered mark. In the Board’s view, THE TEAM, THE TEAM, THE TEAM was similar to the registered mark TEAM in sight, sound, connotation, and commercial impression. Therefore, the first confusion factor supported the conclusion that confusion was likely, particularly because the applicant’s goods were legally identical to those that were identified in the cited registration.

Similarity of goods and channels of trade. The applicant’s Class 25 goods included “footwear” and “athletic footwear.” The Class 25 goods in the cited registration were “athletic shoes and sandals for men and boys; dress shoes, sandals, and slippers for women and girls.” The applicant’s “footwear” thus comprised all of the specifically identified registered goods. Accordingly, with respect to footwear, the Board presumed that: (1) the application encompassed all of the goods in the cited registration; (2) the applicant’s goods moved in all normal channels of trade; and (3) the applicant’s goods were available to all potential classes of ordinary consumers. Further, because the footwear described in the application was legally identical to the goods in the cited registration, the Board presumed that the parties’ channels of trade and classes of purchasers were the same.

Weight of evidence. The remaining confusion factors were not addressed by the parties and the Board treated them as neutral. Because the parties’ marks were similar, the parties’ goods were legally identical, and their goods moved to the same customers in the same channels of trade, the Board concluded that the proposed mark THE TEAM, THE TEAM, THE TEAM—when used in association with the applicant’s Class 25 goods—was likely to cause confusion with the registered mark TEAM.

Mere Descriptiveness

The examining attorney refused to register the applicant’s proposed mark for use with goods in International Class 25 because the mark was merely descriptive of the “athletic uniforms” that the applicant had identified in its list of goods. To the Board’s knowledge, there was “no use or purpose for athletic uniforms other than to be worn by members of athletic teams.” For that reason, the proposed mark THE TEAM, THE TEAM, THE TEAM conveyed no information about the applicant’s athletic uniforms. The examining attorney’s refusal to register the applicant’s mark for “athletic uniforms” was therefore reversed.

The case is Serial No. 85314616.

Attorneys: Timothy Edward Eagle (Varnum, LLP) for Schembechler Enterprises, LLC. Kristina Morris, Trademark Examining Attorney.

Companies: Schembechler Enterprises, LLC

Cases: Trademark USPTO