In re Detroit Athletic Co.

1. Jun 2000The club applies

   The Detroit Athletic Club files DETROIT ATHLETIC CLUB (Serial 76062393) for Class 25 clothing — athletic uniforms, coats, golf shirts, hats, jackets, sweatshirts, T-shirts, and more — with ATHLETIC CLUB disclaimed. The registration also covers Class 41 athletic club services, but the §2(d) refusal would turn on the Class 25 clothing goods.

2. Jul 2002The cited mark registers

   DETROIT ATHLETIC CLUB issues on the Principal Register as Reg. No. 2590532 — the registration the examining attorney would later cite. It is unrestricted as to channels of trade and classes of purchasers.

3. May 2015The shop applies

   Detroit Athletic Co. ("DACo") files DETROIT ATHLETIC CO. (Serial 86625093) in standard characters for Class 35 retail services featuring sports-team clothing and apparel.

4. The refusal§2(d) refusal

   After a non-final refusal, DACo disclaims ATHLETIC CO. and amends to seek the Supplemental Register; the examining attorney maintains the Section 2(d) refusal over DETROIT ATHLETIC CLUB. The amendment bought nothing on confusion — §2(d) likelihood of confusion bars registration on the Supplemental Register as well.

5. Jun 2, 2017TTAB affirms

   The Board affirms the refusal (No. 86625093, 2017 WL 2876815), finding the marks similar, the goods and services related, the trade channels overlapping, and the lack of actual confusion of little weight in an ex parte case.

6. Sep 2018Federal Circuit affirms (precedential)

   In a precedential opinion by Judge O'Malley (with Reyna and Hughes), the court affirms every contested DuPont factor and the Board's balancing. "AFFIRMED."

The "two prongs" are a teaching shorthand: §2(d) is formally the multi-factor DuPont balancing test (thirteen factors), and any factor can control. This case is squarely a prong-one (marks) case, though it also resolved relatedness and channels on the evidence. The court's dominance principle traces back through Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874 (Fed. Cir. 1992) and 4 McCarthy on Trademarks § 23:42, and the "consumers notice the lead word first" point quotes Palm Bay Imports v. Veuve Clicquot, 396 F.3d 1369 (Fed. Cir. 2005). The companion rule — that disclaimed or descriptive words are given less weight but cannot be ignored outright — comes from Shen Mfg. Co. v. Ritz Hotel, 393 F.3d 1238 (Fed. Cir. 2004) and In re National Data Corp., 753 F.2d 1056 (Fed. Cir. 1985).

These are the two factors that usually decide §2(d), but the governing standard is the full 13-factor DuPont likelihood-of-confusion test — any factor can control on the right record.

“Indeed, in view of the marks' structural similarity, the lead words are their dominant portion and are likely to make the greatest impression on consumers. ... This likeness weighs heavily in the confusion analysis, and the Board did not err in so finding.”

This case is far more often a sword for the examiner than a shield for the applicant — it is cited to affirm refusals where the lead words match. The realistic applicant use is defensive: distinguish it by showing your marks differ at the front, not just at a disclaimed tail. If your lead words are in fact identical, do not try to fight Detroit Athletic Co. head-on; pivot to a different factor (relatedness of the goods, a crowded field weakening the cited mark, sophisticated purchasers) instead of arguing the marks are dissimilar.

• •It is usually the examiner's case, not yours. The holding affirmed a refusal on the strength of shared lead words. If your client's lead words match the cited mark's, this case cuts against you — citing it will not help.
• •Lead-word dominance is the headline, but this is a full DuPont opinion — it also decided relatedness of goods/services and overlapping trade channels (on substantial evidence) and the actual-confusion factor. It is authority that retail services for apparel are related to apparel goods, and that an unrestricted registration is presumed to span all normal channels. Cite it for those propositions too — just don't reach for it to argue your goods are different.
• •A disclaimer does not erase a word. The case forecloses the tempting argument that you can simply ignore a disclaimed term. Disclaimed words still count in the whole-mark comparison; they just carry less weight.
• •Real-world distinctions don't travel in an ex parte refusal. "We're a store, they're a club" and "different class" arguments failed here because the comparison runs on the identifications as written, not the parties' actual businesses. And watch for unrestricted cited registrations — you cannot beat relatedness or channels by describing how the registrant narrowly sells in the real world.
• •Lack of actual confusion is nearly worthless ex parte. Don't build a response around "no one has been confused" — in an ex parte refusal that argument carries little weight because the registrant cannot respond, and the court here also found the applicant's specific proof too thin to matter.
• •Dominance is fact-specific. The lead words dominated here because of the marks' structural similarity and weak tails. Where a so-called lead word is itself weak, generic, or part of a crowded field, the dominance presumption can break down.

In our corpus, In re Detroit Athletic Co. is one of the more frequently cited Section 2(d) precedents, and it shows up on both sides of the refusal — examiners invoke it to support refusals, and applicants cite it while trying to distinguish their marks. We do not publish a registration rate for applications that cite it, and the raw citation count would be misleading if we did: the case surfaces precisely in confusion fights where the marks already share lead words, which are among the hardest §2(d) refusals to overcome. Frequency of citation reflects how often the lead-word fact pattern arises, not the strength of any one position. The case does not win or lose a response; the underlying similarity of the marks does.

Live USPTO records in GleanMark — click through for full prosecution history.