In Re: Detroit Athletic Co.
Opinion
Detroit Athletic Co. ("DACo") appeals from a decision of the Trademark Trial and Appeal Board affirming the Patent and Trademark Office's refusal to register DETROIT ATHLETIC CO. for sports apparel retail services. In that decision, the Board concluded that DACo's mark is likely to be confused with the third-party mark DETROIT ATHLETIC CLUB, registered for clothing goods.
See
In re Detroit Athletic Co.
, No. 86625093,
I. BACKGROUND
DACo is a "sports specialty shop" that sells souvenirs and apparel associated with Detroit professional sports teams. J.A. 85. Since at least 2004, DACo has been using the DETROIT ATHLETIC CO. mark in connection with its retail services.
In May 2015, DACo filed an application to register the standard character mark DETROIT ATHLETIC CO. on the Principal Register for "[o]n-line retail consignment stores featuring sports team related clothing and apparel; [r]etail apparel stores; [r]etail shops featuring sports team related clothing and apparel; [r]etail sports team related clothing and apparel stores."
*1302
Detroit Athletic
,
Thereafter, the examining attorney refused registration of the mark under Section 2(d) of the Lanham Act,
The Board affirmed, concluding that, "because the marks are similar, the goods and services are related, and the channels of trade and consumers overlap," consumers are likely to be confused by the marks.
Detroit Athletic Club
,
II. DISCUSSION
Under Section 2(d) of the Lanham Act, a mark may be refused registration if it "so resembles a mark registered in the Patent and Trademark Office[ ] ... as to be likely, when used on or in connection with the goods of the applicant, to cause confusion[.]"
In the Patent and Trademark Office-and in appeals therefrom-likelihood of confusion is determined by assessing the relevant factors set forth in
In re E. I. DuPont DeNemours & Co.
,
We address the Board's ruling with respect to each of these factors below.
A. Similarity or Dissimilarity of the Marks (Factor 1)
The first
DuPont
factor considers "[t]he similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression."
DuPont
,
As the Board noted, both marks consist of three words beginning with the identical phrase "Detroit Athletic" and ending with one-syllable "C" words (i.e., "Co." and "Club").
The identity of the marks' initial two words is particularly significant because consumers typically notice those words first.
See
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772
,
DACo nevertheless argues that the Board failed to consider the marks in their entireties and instead emphasized the similarity between the marks' first two words while downplaying the differences between their terminal words. According to DACo, the differences engendered by the words "Co." and "Club" would allow consumers to distinguish between the marks. We disagree on both counts. First, the Board reiterated that it was assessing the marks "in their entireties" and proceeded to do just that.
Detroit Athletic
,
Second, while it is true that the words "Co." and "Club" technically differentiate the marks, those words do little to alleviate the confusion that is likely to ensue. Both words are descriptive insofar as they merely describe the business form of the entity that owns the marks.
See
Goodyear's Rubber Mfg. Co. v. Goodyear Rubber Co.
,
Those words are therefore unlikely to change the overall commercial impression engendered by the marks.
See
Hewlett-Packard Co. v. Packard Press, Inc.
,
To be sure, the mere fact that "Co." and "Club" were disclaimed does not give one license to simply ignore those words in the likelihood of confusion analysis. "This is so because confusion is evaluated from the perspective of the purchasing public, which is not aware that certain words or phrases have been disclaimed."
Shen Mfg. Co. v. Ritz Hotel, Ltd.
,
But, "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."
Nat'l Data
,
This case is therefore distinguishable from
Juice Generation
, on which DACo relies. In that case, the Board found a likelihood of confusion between PEACE LOVE AND JUICE for juice bars and PEACE & LOVE for restaurants. That conclusion was predicated on the Board's declaration that the "dominant portion" of the former mark was "virtually identical" to the latter mark, and its conclusory statement that "the additional disclaimed word 'JUICE' ... do[es] not serve to sufficiently distinguish" the marks.
Finally, the record evidence shows that, regardless of whether "Co." and "Club" were disclaimed, they do not serve source-identifying functions. Several third-party registrations proffered by the examining attorney, for example, establish that many clubs, including the Detroit Athletic Club itself, are corporations. This evidence suggests that "Co." and "Club" are not mutually exclusive. Thus, as the Board noted, the fact that an entity does business as a club does not foreclose its existence as a corporation.
See
Detroit Athletic
,
*1306 Substantial evidence thus supports the Board's finding that the marks are similar.
B. Similarity or Dissimilarity and Nature of the Goods or Services (Factor 2)
The second
DuPont
factor considers "[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use."
DuPont
,
The services described in DACo's application relate to sports apparel and include "[o]n-line retail consignment stores featuring sports team related clothing and apparel; [r]etail apparel stores; [r]etail shops featuring sports team related clothing and apparel; [r]etail sports team related clothing and apparel stores." The clothing sold through those services is a subset of the goods described in the Detroit Athletic Club's registration, which include "[c]lothing, namely athletic uniforms, coats, golf shirts, gym suits, hats, jackets, sweat pants, sweat shirts, polo shirts, and T-shirts." Put another way, the Detroit Athletic Club's clothing goods are "very general" in nature and cover "all types of clothing," including the clothing sold through DACo's sports apparel retail services.
Detroit Athletic
,
Thus, while the goods and services are not identical, they substantially overlap, which weighs in favor of finding a likelihood of confusion.
See
Hewlett-Packard
,
Indeed, the record evidence shows that several third-party apparel retailers-i.e., Adidas, Hanes, Nike, and Puma-sell clothing bearing their own marks in addition to clothing bearing sports team names and logos. This evidence suggests that consumers are accustomed to seeing a single mark associated with a source that sells both its own branded clothing (as does the Detroit Athletic Club) as well as sports-teams-branded clothing (as does DACo).
See
Hewlett-Packard
,
*1307
In re Halo Leather Ltd.
, No. 2017-1849,
DACo objects to this analysis, pointing out that DACo's application describes
services
in International Class 35, while the Detroit Athletic Club's registration describes
goods
in International Class 25. But that difference does not alter our conclusion. Classification is solely for the "convenience of Patent and Trademark Office administration,"
DACo next argues that consumers would have little problem distinguishing between DACo's clothing store and the Detroit Athletic Club's private social club. While this may be true, it is largely irrelevant. The relevant inquiry in an ex parte proceeding focuses on the goods and services
described in the application and registration
, and
not
on real-world conditions.
See
In re i.am.symbolic, llc
,
The registration for the DETROIT ATHLETIC CLUB mark describes
clothing
, not social clubs. The relevant inquiry, therefore, is whether consumers would believe that the Detroit Athletic Club-in its capacity as a
seller of clothes
-owns, sponsors, supplies, or is otherwise affiliated with DACo, a clothing store of a similar name.
See
Coach Servs., Inc. v. Triumph Learning LLC
,
Substantial evidence therefore supports the Board's finding that the goods or services associated with each mark are similar.
C. Similarity of Trade Channels (Factor 3)
The third
DuPont
factor considers "[t]he similarity or dissimilarity of established, likely-to-continue trade channels."
DuPont
,
The registration contains no restrictions on the channels of trade or classes of customers. As a result, the Detroit Athletic Club's clothing is presumed to be sold in all normal trade channels to all the normal classes of purchasers.
See
i.am.symbolic
,
DACo argues that the Detroit Athletic Club sells clothing only to its club members and only in its gift shop located onsite. DACo contends that this fact would prevent confusion among the public at large. Even if true, this assertion is, once again, irrelevant. The third
DuPont
factor-like the second factor-must be evaluated with an eye toward the channels specified in the application and registration, not those as they exist in the real world.
See
i.am.symbolic
,
To the extent DACo objects to the breadth of the goods or channels of trade described in the Detroit Athletic Club's
*1309
registration, that objection amounts to an attack on the registration's validity, an attack better suited for resolution in a cancellation proceeding.
See
Substantial evidence therefore supports the Board's finding that the trade channels for each mark overlap.
D. Evidence of a Lack of Actual Confusion (Factor 8)
Finally, the eighth
DuPont
factor considers "[t]he length of time during and conditions under which there has been concurrent use without evidence of actual confusion."
DuPont
,
As an initial matter, the relevant test is
likelihood
of confusion, not
actual
confusion. Thus, while evidence that the consuming public was not actually confused is legally relevant to the analysis, it is not dispositive. This is particularly true in the context of an ex parte proceeding. Likelihood of confusion in this context can be established even in the face of evidence suggesting that the consuming public was not actually confused.
See
In re Majestic Distilling Co.
,
Further, DACo's evidence does not establish a lack of confusion. The customer affidavit on which DACo relies is just four sentences in length and states only that the customer had been purchasing clothing at DACo's store for the past sixteen years and understands that the word "Detroit" in DACo's name refers to Detroit sports teams rather than the location in which the clothing is made. J.A. 57. The affidavit does not, however, mention the DETROIT ATHLETIC CLUB mark, let alone suggest a lack of confusion between the two marks. The Internet search results and online reviews fare no better. The search results show that the two companies do not appear together in online searches but speak only to how the search engine's software processes the search terms. The online reviews reference consumers' experiences with one company or the other, but not both. Neither piece of evidence establishes a lack of consumer confusion in other, more commercially meaningful contexts.
Substantial evidence therefore supports the Board's finding that DACo's evidence purporting to show a lack of actual confusion was not sufficiently probative.
E. Balancing the Factors
The Board balanced the
DuPont
factors and concluded that, "because the marks are similar, the goods and services are
*1310
related, and the channels of trade and consumers overlap, ... confusion is likely between Applicant's mark DETROIT ATHLETIC CO. and the mark DETROIT ATHLETIC CLUB in the cited registration."
Detroit Athletic
,
DACo argues that the Board erred by not addressing all
DuPont
factors for which evidence was proffered. We disagree. It is well established that the Board need not consider every
DuPont
factor.
See
Citigroup Inc. v. Capital City Bank Grp., Inc.
,
We therefore conclude that the Board did not err in balancing the relevant DuPont factors.
III. CONCLUSION
We have considered DACo's remaining arguments and find them unpersuasive. Because substantial evidence supports each of the Board's factual findings, and those findings inevitably lead to the conclusion that DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB are likely to be confused, we affirm the Board's ruling.
AFFIRMED
COSTS
No costs.
The wording ATHLETIC CLUB is disclaimed.
Those factors are: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; (2) the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions under which and buyers to whom sales are made-i.e., "impulse" vs. careful, sophisticated purchasing; (5) the fame of the prior mark (sales, advertising, length of use); (6) the number and nature of similar marks in use on similar goods; (7) the nature and extent of any actual confusion; (8) the length of time during and conditions under which there has been concurrent use without evidence of actual confusion; (9) the variety of goods on which a mark is or is not used (house mark, "family" mark, product mark); (10) the market interface between applicant and the owner of a prior mark; (11) the extent to which applicant has a right to exclude others from use of its mark on its goods; (12) the extent of potential confusion-i.e., whether
de minimis
or substantial; and (13) any other established fact probative of the effect of use.
DuPont
,
The Board acknowledged that "the wording DETROIT ATHLETIC is itself conceptually weak" insofar as DETROIT is geographically descriptive and ATHLETIC is merely descriptive, but the Board nevertheless found that the identical wording at the beginning of the marks "lessens the possible influence of differing wording at the end."
Detroit Athletic
,
DACo attacks the third-party registrations, arguing that they use the terms "Co." and "Club" in ways contrary to the terms' common meanings. DACo cites to a laundry list of evidence that it alleges is more probative of how consumers would perceive the marks at issue. But the third-party registrations were proffered merely to show that "club" trademarks can be owned by corporations, which refutes DACo's claim that the word "Club" tells the consumer that one entity is a club, while "Co." conveys that the other entity is a corporation. Accordingly, DACo's arguments on this point are unpersuasive.
Reference
- Full Case Name
- In RE: DETROIT ATHLETIC CO., Appellant
- Cited By
- 18 cases
- Status
- Published