Offc Action Outgoing

Applicant:	WARRIOR LACROSSE, INC	:	BEFORE THE
Trademark:	SUPERSTAR (Stand. Char.)	:	TRADEMARK TRIAL
Serial No:	76467756	:	AND
Attorney:	Vincent Ilagen	:	APPEAL BOARD
Address:	ARTZ & ARTZ, P.C. 28333 Telegraph Road, Ste. 250 Southfield, MI 48034	:	ON APPEAL

EXAMINING ATTORNEY'S APPEAL BRIEF

INTRODUCTION

Applicant has appealed the examining attorney's final refusal to register SUPERSTAR in standard character form for "PROTECTIVE LACROSSE EQUIPMENT, NAMELY GLOVES." The application was refused on the grounds that there is a likelihood of confusion with Reg. Nos. 2616193 for JUNIOR SUPERSTAR (standard character) and Reg. No. 2144066 for SUPERSTAR (standard character) for "retail store services in the field of athletic footwear, clothing, equipment and related accessories” under Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d).

STATEMENT OF FACTS

On November 18, 2002, the Applicant, Warrior Lacrosse Inc., applied to register the mark, SUPERSTAR, on the Principal Register under Section 1(b) of the Trademark Act for “PROTECTIVE SPORTS EQUIPMENT, NAMELY, GLOVES.” The Applicant has since amended its identification to “PROTECTIVE LACROSSE EQUIPMENT, NAMELY, GLOVES.” The examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d) based on Registration Nos. 2616193 for JUNIOR SUPERSTAR (standard character) and Reg. No. 2144066 for SUPERSTAR (standard character) for "retail store services in the field of athletic footwear, clothing, equipment and related accessories.” On February 2, 2003 the examining attorney accepted the amended identification and issued a final refusal to register the mark under Section 2(d) of the Trademark Act. Applicant responded by the filing of the appeal herein.

ISSUE ON APPEAL

Whether the Applicant’s proposed mark SUPERSTAR is likely to cause confusion with the marks in Registration Nos. 2616193 and 2144066.

ARGUMENT

I. The Applicant’s Mark Is Highly Similar To The Mark In Registration No. 2616193.

The Applicant’s mark, SUPERSTAR, creates a likelihood of confusion when compared to the Registrant’s mark, JUNIOR SUPERSTAR.

A. The Marks Are Very Similar In Appearance, Meaning And Commercial Impression.

Under the likelihood of confusion analysis, the marks are compared for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).

The Applicant’s mark consists of the single term SUPERSTAR. The Registrant’s mark consists of the term SUPERSTAR and the term JUNIOR. The only differences in the marks is the “JUNIOR” term in Registrant’s mark. Applicant argues that the absence of the term JUNIOR in its mark renders the “. . . two marks substantially entirely different in sound and appearance.” Applicant’s Brief at page 4. However, even if this were true, the absence of the term does not render the marks “substantially entirely different in meaning.” SUPERSTAR means “A widely acclaimed star, as in movies or sports. . .” See Final Office Action Page 2. When JUNIOR is used in connection with the word SUPERSTAR, the two terms convey the impression of a youthful superstar or something intended for a youthful superstar or athlete. Id. “Junior” in JUNIOR SUPERSTAR, modifies the term “Superstar.” Therefore, JUNIOR describes the noun, SUPERSTAR. As a consequence, JUNIOR is the less dominant term. This is also evidenced by the disclaimer of this in the registration. The examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988). TMEP §1207.01(b)(viii). While the examining attorney cannot ignore a disclaimed portion of a mark and must view marks in their entireties, one feature of a mark may be more significant in creating a commercial impression. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986). Disclaimed matter is typically less significant or less dominant. In the instant matter, greater weight is given to the SUPERSTAR portion of the registered mark.

When JUNIOR is added to a mark like SUPERSTAR, it conveys the commercial impression and connation of a children’s secondary line of a primary SUPERSTAR house mark. Manufactures often call their children or secondary lines, their “Junior” lines. See webpages attached to Final Office action from www.togoemall.com, www.findarticles.com, and www.beautybuzz.com.

Consequently, under the 2(d) analysis of the parties marks, greater weight is given to the SUPERSTAR term in the Registrant’s mark. This term is identical to the Applciant’s mark. Thus, the marks are highly similar in meaning, appearance and commercial impression. As stated previously, similarity in anyone of these areas provides enough basis for a finding of likelihood of confusion.

B. The Goods In Applicant’s Mark And Reg. No. 2616193 Are Highly Related.

The appropriate analysis in likelihood of confusion refusals entails determining whether the Applicant’s and Registrant’s goods are related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).

Applicant argues that goods travel through different channels of trade. Applciant’s goods are gloves used for the playing of lacrosse. As such, the goods are clothing as well as sports equipment. The Trademark Trial and Appeal Board has held that different products in the sporting goods field are related under Section 2(d). In re New Archery Products Corp., 218 USPQ 670 (TTAB 1983); Trak Inc. v. Tran Inc., 212 USPQ 846 (TTAB 1981); A.G. Spalding & Bros. Inc. v. Bancroft Racket Co., 149 USPQ 391 (TTAB 1966). Because the Applicant and Registrant are marketing related goods under the same or similar marks, a likelihood of confusion exists in this case. With respect to Applicant’s argument that the goods travel in different channels of trade, neither the application nor the registration(s) contain any limitations regarding trade channels for the goods and therefore it is assumed that Registrant’s and Applicant’s goods are sold everywhere that is normal for such items, i.e., department stores and sporting goods stores. Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks. See Kangol Ltd. V. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). Although, the Applicant claims that the goods do not travel in the same channels of trade it has not provided any evidence to the contrary. The Applicant merely proffers the assertion. The examining attorney has attached evidence to the Final Office Action from various websites showing lacrosse gloves and goods of the same type identified in the registration in the same commercial setting. (See webpages attached to Final Office Action from www.dickssportinggoods.com, www.sportsauthority.com and others.)

The goods are highly related because both parties identify equipment used for playing sports. It should be emphasized again that the goods need only be related in some manner for a finding of the likelihood of confusion. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). TMEP §1207.01(a)(i). However, in this instance the goods can be found in the same channel of trade and are highly related.

C. The Sophistication Of Purchasers As To Goods Does Not Correlate As To Sophistication As To Source.

Applicant also asserts that “a reasonable person can understand the significant differences between the rules, the equipment and all other aspects of lacrosse and other sports.” Applicant’s Brief at page 4. However, the Applicant has not provided any evidence that supports this assertion. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983). The issue is not likelihood of confusion between the particular goods, but likelihood of confusion as to the source of those goods. See In re Rexel Inc., 223 USPQ at 831.

The web pages attached to Final Refusal illustrate that lacrosse gloves and other sports equipment are for sale through the same store’s website. Therefore, the parties’ goods can be found in the same channels of trade. This suggests, that purchasers, whether they are sophisticated or not, are accustomed to seeing these types of goods sold under the same mark and the Applicant has no basis for assuming that the purchasers might know that Applicant’s goods are not associated with Registrant’s goods. Under these circumstances, the ordinary purchaser would be likely to confuse goods found under the Applicant’s mark and goods found under the Registrant’s mark in the same setting. A discriminating purchaser is as susceptible to confusing the source of similar services and products marketed under similar marks as any other purchaser. In re Peebles Inc., 23 USPQ2d 1795 (TTAB 1992).

II. Applicant’s Mark Is Confusingly Similar To The Mark In Registration No. 2144066.

A. The Marks Are The Same.

The mark in Registration No. 2144066 is the standard character form of the term SUPERSTAR. Applciant’s mark is the standard character form of the mark SUPERSTAR. Thus the marks are identical in sound, meaning, appearance and commercial impression.

B. The Applicant’s Lacrosse Gloves And The Registrant’s Retail Services Are Highly Related.

The Applicant argues “. . .the two marks are used in connection with substantially different types of commerce.” Applicant’s Brief at Page 5. If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983). TMEP §1207.01(a). If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981). TMEP §1207.01(a). However, in the instant matter, the goods and service are highly related. Registrant’s stores could carry lacrosse gloves. Registrant’s recitation of services states that the services are “retail store services in the field of athletic footwear, clothing, equipment and related accessories.” Applicant argues that its mark is used in connection with “lacrosse equipment.” See Applicant’s Brief at page 5. It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973). Since the identification of the Registrant’s services is very broad, it is presumed that the registration encompasses all goods of the type described, including those in the Applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). TMEP §1207.01(a)(iii). In the instant matter, this means that Registrant’s broad identification of “athletic footwear, clothing, equipment and related accessories” would conceivably encompass lacrosse gloves. This broad recitation along with the website evidence showing lacrosse gloves sold in retail settings demonstrates not only high relatedness of the parties goods and services but also their extremely close commercial relationship. Consequently, the average consumer could be confused as to source in a commercial setting if Applciant’s mark were allowed to register.

CONCLUSION

When viewed with the either of the Registrants’ marks, the Applicant’s mark is likely to create confusion because its mark is highly similar in appearance, meaning and commercial impressions. The Applicant’s goods are related, and travel within similar channels of trade with the goods and service of registered marks. For the foregoing reasons, the refusal to register on the basis of Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d), should be affirmed.

Respectfully submitted,

/Shari L. Sheffield/

Shari Sheffield

Trademark Attorney

Law Office 110

571-272-9373

CHRIS A. F. PEDERSEN

Managing Attorney

Law Office - 110