1872 LLC

Trademark Trial and Appeal Board

Sep 23, 2021

88897035 (T.T.A.B. Sep. 23, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 23, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re 1872 LLC
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Serial No. 88897035
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Thomas L. Difloure of the Law Office of Thomas L. Difloure,
for 1872 LLC.

Douglas M. Lee, Trademark Examining Attorney, Law Office 129,
Pam Willis, Managing Attorney.
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Before Mermelstein, Shaw and Larkin,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
1872 LLC (“Applicant”) seeks registration on the Principal Register of the
standard character mark AXION for goods identified as “Belts for clothing; Footwear;
Headwear; Hoodies; Shirts; Shoes; Shorts; Socks; Sweatshirts; T-shirts; Jogging
pants,” in International Class 25.1

1 Application Serial No. 88897035 was filed on May 1, 2020, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a) based on a date of first use of the mark anywhere of
October 1, 2017, and a date of first use of the mark in commerce of October 7, 2017.
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the previously-registered mark AXEON LABS, also in
standard characters, for “Clothing, namely, hats, beanies, shoes, shirts, pants, coats,
hoodies, pull-overs, gloves; Athletic apparel, namely, hoodies, pants, shirts, shorts,
sports bras, gloves, shoes,” in International Class 25.2
When the refusal was made final, Applicant appealed. Both Applicant and the
Examining Attorney filed briefs. We reverse the refusal to register.
I. Evidentiary Matters
The Examining Attorney objects to internet web pages attached to or referenced
in Applicant’s appeal brief on the ground that the evidence was not properly
introduced prior to the appeal. The Examining Attorney’s objection to the evidence is
sustained. The record in an application should be complete prior to the filing of an
appeal. Trademark Rule 2.142(d), 37 CFR § 2.142(d). An exhibit attached to a brief
which was not made of record during examination is untimely, and generally will not
be considered. Id.; In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841,
1843 (TTAB 2012). Further, providing a web page address is not sufficient to
introduce the underlying webpages into the record. See In re ADCO Indus. – Techs.,
L.P., 2020 USPQ2d 53786, at *2 (TTAB 2020). Accordingly, we do not consider the
new material attached to or referenced for the first time with Applicant’s brief.

2 Registration No. 4609479, issued September 23, 2014. LABS is disclaimed.
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II. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (“DuPont”). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
We must consider each DuPont factor for which there is evidence and argument. See,
e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir.
2019). “Not all of the DuPont factors are relevant to every case, and only factors of
significance to the particular mark need be considered.” In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). There is no mechanical test for
determining likelihood of confusion and “each case must be decided on its own facts.”
DuPont, 177 USPQ at 567.
In any likelihood of confusion analysis, two key considerations are the similarities
between the goods and the similarities between the marks. See Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”).
The nature and similarity or dissimilarity of the goods, the established, likely-
to-continue trade channels, and the classes of purchasers.
We begin with the similarity of the respective goods. Applicant’s and Registrant’s
goods are, in part, legally identical inasmuch as both include footwear, headwear,
hoodies, shirts, and shorts. The fact that some of Registrant’s clothing articles are
specifically described as “athletic apparel” does not change the identical nature of the
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goods because Applicant’s clothing articles include no such limitation and must be
read to include all clothing articles, including Applicant’s more narrowly described
“athletic apparel.” See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137
(TTAB 2015) (“Applicant’s broadly worded identification of goods necessarily
encompasses Registrant’s narrowly identified goods). Applicant’s remaining goods,
belts for clothing, socks, sweatshirts, and jogging pants are closely related to
Registrant’s goods as well. Applicant does not argue otherwise.
We need not find similarity as to each and every good listed in Applicant’s
identification. It is sufficient for a refusal based on likelihood of confusion that
relatedness is established for any item encompassed by the identification of goods in
a particular class in the application. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a single good from among several
may sustain a finding of likelihood of confusion); Tuxedo Monopoly, Inc. v. Gen. Mills
Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion
must be found if there is likely to be confusion with respect to any item that comes
within the identification of goods in the application).
Because the goods are identical in part and without restriction, we must presume
that they are sold in all normal trade channels and to all normal classes of purchasers
for such goods. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1906 (Fed. Cir.
2012). Thus, we consider Applicant’s and Registrant’s trade channels and classes of
purchasers to be the same. In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
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721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade
and classes of purchasers are considered to be the same).
The DuPont factors regarding the similarity of the goods, channels of trade, and
classes of purchasers strongly favor a finding of a likelihood of confusion.
The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
We next consider and compare the appearance, sound, connotation and
commercial impression of the marks in their entireties. Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). The proper test regarding similarity “is not a side-by-side
comparison of the marks, but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.” Cai v. Diamond Hong,
Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(internal quotation marks and citation omitted)). “Similarity in any one of these
elements may be sufficient to find the marks confusingly similar.” In re Inn at St.
John’s, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 F. App’x 516 (Fed. Cir.
2019), (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)).
Moreover, the in-part identical nature of Applicant’s and Registrant’s goods
reduces the degree of similarity between the marks that is necessary for confusion to
be likely. See, e.g., Viterra, 101 USPQ2d at 1912; Mighty Leaf, 94 USPQ2d at 1260.
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Applicant’s mark is AXION. The registered mark is AXEON LABS. The
Examining Attorney argues that “Applicant’s mark ‘AXION’ and the first part of the
registered mark [“AXEON”] are essentially phonetic equivalents and thus sound
similar.”3 Although there is no “correct” pronunciation of a mark, Viterra, 101
USPQ2d at 1912, we agree that consumers are likely to verbalize AXION and AXEON
in a similar manner. Again, Applicant does not argue otherwise. “Slight differences
in the sound of similar marks do not avoid a likelihood of confusion.” In re Energy
Telecomms. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983). Similarity in sound alone
may be sufficient to support a finding that the marks are confusingly similar. In re
White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).
The presence of the term LABS in Registrant’s mark is less significant because it
comes after AXEON, and because it is likely to be perceived as an entity designation.
See Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“[I]t is often the first part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered.”); In re Dixie Rests., Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (affirming Board’s finding that the dominant
portion of the mark THE DELTA CAFE was DELTA, not the disclaimed generic term
CAFE).
In terms of appearance, both marks are in standard characters and the cited mark
could be displayed in any font, style, or typeface, including one that minimizes the
significance of the term LABS. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd.,

3 Examining Attorney’s Br., 6 TTABVUE 6.
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115 USPQ2d 1816, 1823 (TTAB 2015) (a standard character mark “could be used in
any typeface, color, or size, including . . . one that minimizes the differences or
emphasizes the similarities between the marks.”) (citing Citigroup Inc. v. Capital City
Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011)). Further,
given that both AXION and AXEON appear to be coined terms, their similar
pronunciation is likely to cause consumers to consider both marks to have similar
connotations and commercial impressions, however arbitrary.
In sum, we find that the marks are similar in sound, and likely to be perceived as
similar in appearance, connotation, and commercial impression. This DuPont factor
also favors a finding of likelihood of confusion.
Other Established Fact Probative of the Effect of Use.
Typically, similarity between the marks and similarity of the goods would suffice
to support a finding of a likelihood of confusion. However, in some instances, a single
additional DuPont factor is pivotal and outweighs these two key factors. Such is the
case here. The thirteenth and final DuPont factor allows for the consideration of any
additional probative facts to accommodate the need for flexibility in assessing each
unique set of facts. DuPont, 177 USPQ at 567.
Applicant claims ownership of Registration No. 5611178 for the mark,
, for “clothing, namely, shirts, t-shirts, shorts, sweatshirts, pullovers,
pants, jackets, coats, belts, socks, headwear and footwear,” in International Class 25.
This registration issued on November 20, 2018, prior to the filing date of the
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application that matured into the cited registration. In other words, applicant owns
a registration for a mark incorporating the same applied-for term, AXION, for in-part
identical goods. Applicant argues that because the USPTO failed to cite Applicant’s
earlier AXION mark against the cited mark, “it is arbitrary for AXEON LABS to now
be cited against AXION on the grounds of likelihood of confusion.”4
Cases involving prior registrations under the thirteenth factor customarily
consider whether substantially similar marks should be allowed to coexist on the
Register because of an applicant’s prior registration of a similar mark for the involved
goods or services. See, e.g., In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d
1790 (TTAB 2017) (finding composite mark including the words USA WARRIORS
ICE HOCKEY and NONE TOUGHER separated by a logo likely to cause confusion
with composite mark including the words USA HOCKEY despite applicant’s prior
registration of composite mark including the words USA WARRIORS ICE HOCKEY
and NONE TOUGHER separated by a logo); In re Strategic Partners Inc., 102
USPQ2d 1397 (TTAB 2012) (finding that applicant’s ownership of a prior registration
for a substantially similar mark for the same goods which had coexisted with the cited

4 Applicant’s Br, p. 1, 4 TTABVUE 7. We give no consideration to Applicant’s arguments that
Registrant’s mark should not have been granted registration and that Registrant’s mark is
not being used on the goods. These arguments are an impermissible collateral attack on the
validity of the cited registration, which we cannot entertain in the absence of a petition to
cancel. See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1363 (TTAB 2007) (Applicant in an ex
parte proceeding is not permitted to argue that a cited registration is unregistrable); Dixie
Rests., 41 USPQ2d at 1534-35 (“Dixie’s argument that DELTA is not actually used in
connection with restaurant services amounts to a thinly-veiled collateral attack on the
validity of the registration.”).
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registration for over five years was sufficient to “tip the scale in favor of applicant
and a finding of no likelihood of confusion.”).
When determining whether the coexistence of an applicant’s prior registration
with another party’s registration weighs against citing the latter registration in a
Section 2(d) refusal of the applicant’s mark, the examining attorney should consider:
(1) whether the applicant’s prior registered mark is the same as applicant’s mark or
is otherwise not meaningfully different; (2) whether the identifications of goods or
services in the application and the applicant’s prior registration are identical or
identical in relevant part; and (3) the length of time the applicant’s prior registration
has coexisted with the registration being considered as the basis for the Section 2(d)
refusal. Strategic Partners, 102 USPQ2d at 1400; TMEP § 1207.01. The duration of
coexistence is not dispositive as to whether a Section 2(d) refusal should issue;
instead, this factor should be considered together with all the other relevant DuPont
factors. See id.; cf. Inn at St. John’s, 126 USPQ2d at 1748 (finding that applicant’s
earlier registration of a partially similar mark was a neutral factor in the Section 2(d)
analysis, because the mark in the application was more similar to the cited registered
mark than applicant’s previously registered mark); USA Warriors Ice Hockey
Program, 122 USPQ2d at 1793 (distinguishing Strategic Partners and finding that
the three and-a-half year coexistence of applicant’s prior registration and the cited
registration was a relevant consideration but did not cause the thirteenth factor to
outweigh the other relevant DuPont factors).
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The Examining Attorney argues that Strategic Partners is inapplicable because
Applicant’s prior registration has coexisted on the Principal Register with the cited
registration for less than eighteen months. We emphasize, however, that a holistic
review of the record and our case law require us to base our decision and rationale on
more than just the length of time the cited mark, post-registration, has coexisted with
Applicant’s prior registration.
In Strategic Partners, the applicant’s mark, ANYWEAR in stylized form, was
substantially similar to the mark in its prior registration, ANYWEARS. In this case,
Applicant’s standard character mark, AXION, does not differ meaningfully from the
literal portion of the mark in Applicant’s prior registration, , for partially
identical articles of clothing, because consumers are generally more inclined to focus
on and remember the word portion of a composite mark. In re Aquitaine Wine USA,
LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citation omitted); see also Palm Bay, 73
USPQ2d at 1692 (consumers are generally more inclined to focus on the first word of
a mark).
We acknowledge that prior decisions and actions of other trademark examining
attorneys are not binding on the USPTO or the Board. See In re Davey Prods. Pty.
Ltd., 92 USPQ2d 1198, 1206 (TTAB 2009); USA Warriors Ice Hockey Program, 122
USPQ2d at 1793 & n.10. Notwithstanding the USPTO’s allowance of the cited
registration over Applicant’s prior registration, we do not hold that we are bound by
a decision, made by the involved examining attorney that there was no likelihood of
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confusion between the cited AXEON LABS mark and the mark in Applicant’s prior
registration. Instead, we conclude that under the particular circumstances of this
case, where: (1) Applicant owns a prior registration for a substantially similar mark
covering goods nearly identical to those in the involved application; and (2) the
examining attorney who examined the cited registration did not refuse registration
of that mark based on a likelihood of confusion with the mark in Applicant’s prior
registration, we give the fact that no likelihood of confusion was found due weight in
our analysis as support for our ultimate conclusion, based on all of the DuPont factors,
that, as in Strategic Partners, confusion is unlikely. Thus, although the first, second,
and third DuPont factors weigh in favor of finding a likelihood of confusion, we find,
as in Strategic Partners, that the thirteenth DuPont factor tips the scale and
outweighs them all, making confusion unlikely under the specific facts of this case.
See Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376, 119
USPQ2d 1286, 1290 (Fed. Cir. 2016) (“[A] single DuPont factor may be dispositive in
a likelihood of confusion analysis[.]”) (citation omitted); Champagne Louis Roederer
S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998)
(“[O]ne DuPont factor may be dispositive in a likelihood of confusion analysis[.]”).
Conclusion
After considering all of the evidence and arguments, we find that despite the
similarity of the marks in sound, appearance, connotation, and commercial
impression; the legal identity of the goods; and the consequent legally identical
channels of trade, confusion is not likely. The fact that the USPTO permitted the
cited registration to issue over Applicant’s prior registration for a substantially
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similar mark and in-part identical goods, buttresses our ultimate conclusion that
there is no likelihood of confusion between Applicant’s AXION mark and the AXION
LABS mark.

Decision: The refusal to register Applicant’s mark is reversed.