Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE SMITH AND MEHAFFEY
Serial No. 74/213,737
June 16, 1994
David J. Cho
Trademark Examining Attorney
Law Office 10
(Ronald Sussman, Acting Managing Attorney)
Before Seeherman, Hohein and Hairston
Administrative Trademark Judges
Opinion by Seeherman
Administrative Trademark Judge
Smith and Mehaffey, a partnership, applied to register ROAD KILL CATERING as a trademark for t-shirts, sweatshirts and aprons. [FN1] The application was originally refused registration on two grounds: 1) the term did not function as a trademark, but would be perceived as ornamental matter, and 2) that it was likely to cause confusion with a previously registered mark. Applicant thereupon amended its application to seek registration pursuant to the provisions of Section 2(f) of the Trademark Act, and the refusal based on the first ground was withdrawn.
Applicant has now appealed the refusal of registration made pursuant to Section 2(d) of the Act, 15 U.S.C. 1052(d). Specifically, registration has been refused on the ground that applicant's mark so resembles the mark ROAD KILL CLUB OF AMERICA and design, shown below, and registered on the Supplemental Register for t-shirts, sweatshirts and pullovers, [FN2] that it is likely to cause confusion or mistake or to deceive.
Preliminarily, we must discuss an objection that the Examining Attorney has raised. With its brief applicant submitted information regarding certain third-party registrations and applications which appear to have been taken from a private company's trademark data base. The Examining Attorney has objected to this material as being untimely.
We agree. Trademark Rule 2.142(d) provides that
the record in the application should be complete prior to the filing of an appeal. The Trademark Trial and Appeal Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed. After an appeal is filed, if the appellant or the examiner desires to introduce additional evidence, the appellant or the examiner may request the Board to suspend the appeal and to remand the application for further examination.
Because applicant first submitted this evidence with its appeal brief, it is untimely. [FN3]
In its reply brief applicant has explained the relevance of third-party registrations, and why they should be considered in determining likelihood of confusion. Applicant misses the point. While we agree that third-party registrations are relevant, the Examining Attorney's objection is that applicant failed to timely file this evidence.
This brings us to the issue of likelihood of confusion. Both applicant's application and the cited registration are, in part, for the same items, namely t-shirts and sweatshirts. 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. Applicant's argument that its goods are marketed, inter alia, by mail order and at festivals and therefore do not travel in the channels of trade which are normally associated with clothing is unavailing because, since the identification is unrestricted as to channels of distribution, we must consider the goods to travel in all channels appropriate for goods of this type. See In re Elbaum, 211 USPQ 639 (TTAB1981); In re Optica International, 196 USPQ 775 (TTAB1977).
*2 Turning to the marks, we begin with the premise that "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). As is obvious, the common element in the two marks is the term "ROAD KILL." The Examining Attorney asserts that this term is the dominant element of both marks, while applicant argues that when the marks are compared in their entireties the other portions of the marks are sufficient to distinguish them.
Both applicant and the Examining Attorney recognize the well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood 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. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.Cir.1985).
We agree with applicant that the words CATERING in applicant's mark, and CLUB OF AMERICA in the registered mark have different meanings, and also that the design portion is a large and very noticeable element of the registered mark. However, these differences in the marks do not serve to distinguish them, such that consumers would assume that the marks indicate separate sources for the t-shirts and sweatshirts which both applicant and registrant sell. This is because the commercial impression of both marks, that of a comedic use of ROAD KILL, is the same. "Road kill" refers to "the body of an animal killed on a road by a motor vehicle." [FN4] This is obviously an unusual term to be used in respect of clothing, and therefore it stands out in both marks, and will be the focus of consumers' attention. [FN5] Moreover, although the concept of dead animals is not inherently funny, in both marks the concept is transformed into a humorous subject. Both marks also treat "road kill" in the same way, i.e., as food; in applicants' mark ROAD KILL CATERING it is clearly intended to describe the food that is catered, while in the registered mark the vulture is shown with a knife and fork on top of an "animal crossing" sign, clearly awaiting the arrival of a car which will provide its next meal.
Because of these similarities in the marks, we find that, when they are used in connection with the identical goods of t-shirts and sweatshirts, consumers are likely to believe that the goods emanate from the same source. Although consumers may well note the differences in the marks, they will assume that the differences indicate variant marks of a single source, rather than identify separate sources for the t-shirts and sweatshirts.
In reaching this conclusion, we have kept in mind that the cited mark is registered on the Supplemental Register. Applicant argues that the scope of protection to which the registrant's mark is entitled is narrower than a mark registered on the Principal Register, and that under this standard applicant's mark is sufficiently dissimilar from the cited registration to avoid confusion. Applicant points to the following language in 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 19.09[d], (3d. ed. 1992) pp. 19-67 and 19-68:
*3 Thus, it appears appropriate to adopt a different test of likelihood of confusion in such conflicts such that a cited Supplemental Registration will preclude registration on the Principal Register only of marks that are substantially identical and used on substantially identical goods or services.
Although applicants have viewed the above-quoted language as setting forth the test to be applied, it is, in fact, only a suggestion; it has not been adopted as a rule of law. The Court in In re The Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA1978), specifically stated that "[n]o reason exists, however, for the application of different standards to registrations cited under § 2(d)." The Court went on to point out, though, that "the level of descriptiveness of a cited mark may influence the conclusion that confusion is likely or unlikely." This is the same standard that is applied in determining likelihood of confusion when the mark involved is registered on the Principal Register: the descriptiveness or suggestiveness of a mark or portion of a mark may result in what is sometimes termed a more narrow scope of protection. Because in most cases marks are registered on the Supplemental Register because they are descriptive, the scope of protection accorded to them has been consequently narrow, so that likelihood of confusion has normally been found only where the marks and goods are substantially similar.
The cited mark in the case before us presents a different situation from the Supplemental Register registrations which were considered in the cases cited by applicant and by Professor McCarthy. Clearly, there is nothing descriptive about registrant's ROAD KILL CLUB OF AMERICA and design with respect to clothing. It appears that this mark was placed on the Supplemental Register not because it was descriptive, but because, as occurred in the examination of applicant's own mark prior to the making a claim of acquired distinctiveness, the Examining Attorney was of the opinion that it would be perceived as ornamentation on the shirts, rather than as a trademark. Because the cited mark is not descriptive, we see no basis for treating it as a descriptive mark in terms of the likelihood of confusion analysis.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/213,737, filed October 21, 1991, and asserting first use and first use in commerce on June 1, 1987.
FN2. Registration No. 1,632,038, registered on the Supplemental Register January 15, 1991.
FN3. Moreover, the Board will not consider copies of a search report or information taken from a private company's data base as credible evidence of the existence of the registrations listed therein. In re Hub Distributing, Inc., 218 USPQ 284 (TTAB1983). In order to make registrations of record, soft copies of the registrations themselves, or the electronic equivalent thereof, i.e., printouts of the registrations taken from the electronic records of the Patent and Trademark Office's own data base, must be submitted. See, Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB1992).
FN5. We realize that applicant, relying on the third-party applications and registration data submitted with its brief, has argued that ROAD KILL marks have been adopted by various entities for clothing. However, as noted above, these applications and registrations are not of record, and our decision, obviously, must be based on the record before us.