The US Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision sustaining the US Patent and Trademark Office’s refusal to register the mark DETROIT ATHLETIC CO. based on a likelihood of confusion. In Re: Detroit Athletic Co.Case No. 2017-2361 (Fed. Cir. Sept. 10, 2018) (O’Malley, J).

Since 2004, Detroit Athletic Co. (DACo) has used the mark DETROIT ATHLETIC CO. for its sports specialty shops that sell apparel and souvenirs related to Detroit’s professional sports teams. In May 2015, DACo applied to register the mark DETROIT ATHLETIC CO. for “online retail consignment stores featuring sports team related clothing and apparel; retail apparel stores; retail shops featuring sports team related clothing and apparel; retail sports team related clothing and apparel stores.” The examining attorney refused registration based on a likelihood of confusion with the registered mark DETROIT ATHLETIC CLUB for clothing, owned by a private sports club of the same name. The TTAB affirmed the refusal, concluding that consumers would likely confuse the marks based on the similarity of the marks, the relatedness of the goods and services, and the channels of trade. DACo appealed the TTAB’s decision to the Federal Circuit, which reviews TTAB legal determinations without deference and factual findings for substantial evidence.

The Federal Circuit addressed the TTAB’s decision with respect to the following factors.

Similarity of the Marks

The Federal Circuit found that substantial evidence supported the TTAB’s determination that the marks were nearly identical in sound, appearance and commercial impression. Both marks consisted of three words, the first two of which were identical. DACo argued that the TTAB failed to consider the differences between the words “Co.” and “Club,” but even if it had, the Court concluded that those descriptive terms would not alleviate confusion, because they do not serve any source-identifying function. Because consumers typically notice the initial words of a mark first, the TTAB did not err in placing more weight on the identity of the dominant portions of the marks, the Court explained.

Similarity of the Goods 

The Federal Circuit agreed with the TTAB’s finding that the clothing identified in the DETROIT ATHLETIC CLUB registration encompassed the clothing sold in DACo’s shops as identified in its registration. The Court therefore agreed that the goods substantially overlapped, and cited evidence of third-party clothing retailers selling clothing bearing their own marks in addition to clothing bearing logos of professional sports teams. DACo argued that this analysis was incorrect because it was seeking to register retail services, while the Detroit Athletic Club’s registration was for goods. The Court rejected this argument, noting that “confusion may be likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods, on the other.”

DACo also argued that a consumer could easily distinguish between DACo’s clothing store and the Detroit Athletic Club’s private social club. But as the Court noted, that was not the inquiry: the inquiry focused on the goods and services identified in the application and registration at issue. Detroit Athletic Club’s registration only identified clothing, with no limitation on where the clothing was sold.

Similarity of Trade Channels

The Federal Circuit also agreed that the Detroit Athletic Club’s clothing was of the type that would be sold through DACo’s specialty sports stores. Detroit Athletic Club’s registration did not include a restriction on the channels of trade, so the TTAB rightfully presumed that the clothing would be sold in all normal trade channels. DACo again argued that Detroit Athletic Club sells clothing only to its members and only in its gift shop located at the club, but the Court rejected this argument as irrelevant. The Court reminded DACo that the inquiry focused on the channels specified in the application, not those in the real world.

Balancing these factors, the Federal Circuit agreed that there was substantial evidence to support a finding of a likelihood of confusion and affirmed the TTAB’s decision.