’47 Brand, LLCv.Contrast Imports, Inc.

Trademark Trial and Appeal Board

Aug 25, 2017

No. 91223256 (T.T.A.B. Aug. 25, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 25, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

’47 Brand, LLC
v.
Contrast Imports, Inc.
_____

Opposition No. 91223256
_____

Lisa M. Tittemore, Brandon T. Scruggs, and Sharona H. Sternberg
of Sunstein Kann Murphy & Timbers LLP
for ’47 Brand, LLC.

W. E. Whittington, Esq. and Michael J. Weins, Esq.
for Contrast Imports, Inc.
_____

Before Quinn, Cataldo, and Bergsman,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Contrast Imports, Inc. (“Applicant”) filed an application to register on the
Principal Register the mark shown below

Opposition No. 91223256

2

for “jewelry made in whole or significant part of silver” in International Class 14.1
The number “47” is disclaimed apart from the mark.
’47 Brand, LLC (“Opposer”) opposed registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used
in connection with Applicant’s goods, so resembles Opposer’s previously used and
registered 47 and FORTY SEVEN marks for sports apparel, clothing, headwear and
related products as to be likely to cause confusion.
Applicant, in its answer, denied the salient allegations of likelihood of confusion.
Evidentiary Record
The record comprises the pleadings; the involved application; and trial testimony,
with related exhibits, taken by each party.2 Also of record are printouts of Opposer’s
pleaded registrations and applications, copies of third-party registrations, Applicant’s
responses to certain of Opposer’s discovery requests, portions of a discovery
deposition, with related exhibits, taken of Applicant, and excerpts of third-party
websites, all introduced by way of Opposer’s notice of reliance. For its part, Applicant
filed a notice of reliance on official records, Opposer’s responses to certain of
Applicant’s discovery requests, and portions of a discovery deposition it took of

1 Application Serial No. 86537975, filed February 18, 2015 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intention to use the mark in
commerce. The application includes the following statements: “The mark consists of ‘47’ in
the center of a circle and a smaller circle intersecting the first circle. Color is not claimed as
a feature of the mark.”

2 Portions of Opposer’s testimony are designated “confidential,” more specifically, factual
details regarding Opposer’s use of its mark (e.g., sales revenue, advertising expenditures, and
the like).
Opposition No. 91223256

3

Opposer. On rebuttal, Opposer submitted a second notice of reliance, pursuant to
Trademark Rule 2.120(j)(5), on excerpts of a discovery deposition taken of Opposer by
Applicant, and Opposer’s own responses to certain of Applicant’s discovery requests,
all introduced purportedly in fairness so as to make not misleading what was offered
by Applicant. Both parties filed briefs, with portions of Opposer’s brief designated
“confidential.”3
Opposer owns four registrations, as follows:
47 (in standard characters) for “athletic uniforms; baby bibs not of paper; baseball
caps and hats; bottoms; caps; cardigans; ear bands; ear muffs; gloves; hats; headwear;
jackets; jeans; jerseys; mittens; pants; pullovers; shirts; shorts; socks; sweaters;
sweatpants; sweatshirts; tank tops; tops; track jackets; track pants; underwear” in
Class 25.4
FORTY SEVEN (in standard characters) for “athletic uniforms; baby bibs not of
paper; baseball caps and hats; bottoms; caps; cardigans; ear muffs; ear bands; gloves;
hats; headwear; jackets; jeans; jerseys; mittens; pants; pullovers; shirts; shorts; sweat
pants; sweaters; sweatshirts; tank tops; tops; track jackets; track pants; underwear”
in Class 25.5

3 In this decision, we will endeavor to discuss truly confidential testimony and evidence only
in general terms as necessary to support our findings.

4 Registration No. 4277350, issued January 15, 2015.

5 Registration No. 4239368, issued November 6, 2012.
Opposition No. 91223256

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(“BRAND” disclaimed) for “athletic uniforms; baby bibs not of paper; baseball caps
and hats; bottoms; caps; cardigans; ear muffs; ear bands; gloves; hats; headwear;
jackets; jeans; jerseys; mittens; pants; pullovers; shirts; shorts; socks; sweat pants;
sweaters; sweatshirts; tank tops; tops; track jackets; track pants; underwear;
footwear” in Class 25;6 “cloth pennants; felt pennants” in Class 24, and “socks” in
Class 25.7
Applicant also pleaded ownership and made of record application Serial No.
86480084 (filed December 15, 2014) to register the special form mark for several
goods that are the same as the clothing items listed in its registrations; in this
application, a fourth request for an extension of time to file a Statement of Use has
been granted. Notwithstanding that a Statement of Use has not been filed, Joseph
Keane, Opposer’s chief operating officer, testified regarding Opposer’s common law
rights in this mark. While the mark appeared in Opposer’s catalogs dating back to
2008, it began to be used in connection with goods “in at least 2014.” 22 TTABVUE

6 Registration No. 4223433, issued October 9, 2012. The registration includes the following
statements: “The mark consists of concentric circles in which a stylized ‘’47’ appears in the
center circle. The outer ring of the circle contains the words ‘FORTY SEVEN BRAND’ and
two dots. Color is not claimed as a feature of the mark.”

7 Registration No. 5146899, issued February 21, 2017. The registration includes the following
statements: “The mark consists of concentric circles in which a stylized ‘’47’ appears in the
center circle. The outer ring of the circle contains the words ‘FORTY SEVEN BRAND’ and
two dots. Color is not claimed as a feature of the mark.”

Opposition No. 91223256

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32-33. More specifically, the mark was used for “stationery, stickers, backpacks,
athletic uniforms, baseball caps and hats, bottoms, caps, cardigans, ear bands,
earmuffs, gloves, headwear, jackets, jerseys, mittens, pants, pullover shirts, shorts,
socks, sweaters, sweatpants, sweatshirts, tank tops, tops, track jackets, underwear.”
22 TTABVUE 32.
Standing
Standing is a threshold issue that must be proven by the plaintiff in every
inter partes case. Any person who believes it is or will be damaged by registration of
a mark has standing to file a notice of opposition. Trademark Act Section 13, 15
U.S.C. § 1063. Our primary reviewing court has enunciated a liberal threshold for
determining standing, namely that a plaintiff must demonstrate that it possesses a
“real interest” in a proceeding beyond that of a mere intermeddler, and “a reasonable
basis for his belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quotation omitted), cert. denied,
135 S. Ct. 1401 (2015). A “real interest” is a “direct and personal stake” in the outcome
of the proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed.
Cir. 1999). A claim of likelihood of confusion that “is not wholly without merit,”
including prior use of a confusingly similar mark, may be sufficient. Lipton Indus.,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Opposer’s ownership of its pleaded registrations, which are valid and subsisting,
supports a finding that Opposer’s claim of priority and likelihood of confusion “is not
Opposition No. 91223256

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wholly without merit.” We find Opposer established its standing. Moreover, Applicant
does not dispute Opposer’s standing.
Priority
In view of Opposer’s ownership of valid and subsisting registrations of its 47 and
FORTY SEVEN marks, Opposer’s priority is not in issue with respect to the goods
identified in those registrations. King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974). Further, Opposer has established prior
common law rights in its mark for goods, as specifically indicated above, that
are identical or similar to the ones listed in its registrations.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on likelihood of confusion. In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Opposer
must establish that there is a likelihood of confusion by a preponderance of the
evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848
(Fed. Cir. 2000). In any likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). Varying weights may be assigned to each du Pont factor depending on the
evidence presented. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
Opposition No. 91223256

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1687-88 (Fed. Cir. 1993). The relevant du Pont factors in this proceeding are
discussed below.
Of Opposer’s four pleaded registrations, we focus our attention on Registration
No. 4277350 for the mark 47, in standard characters, for “athletic uniforms; baby bibs
not of paper; baseball caps and hats; bottoms; caps; cardigans; ear bands; ear muffs;
gloves; hats; headwear; jackets; jeans; jerseys; mittens; pants; pullovers; shirts;
shorts; socks; sweaters; sweatpants; sweatshirts; tank tops; tops; track jackets; track
pants; underwear.”8 We also focus on Opposer’s special form mark , for which
Opposer has prior common law rights. We do this because of the pleaded marks, these
two are the most likely to support a finding of likelihood of confusion. That is, if
confusion is likely between either of these marks and the applied-for mark, there is
no need for us to consider the likelihood of confusion with Opposer’s other registered
marks, while if there is no likelihood of confusion between either of these two marks
and Applicant’s mark, then there would be no likelihood of confusion with Opposer’s
other marks. See, e.g., Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ2d 1913,
1917 (TTAB 2015); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).

8 In its briefs on the case, Opposer contends that it owns a family of 47 marks. Opposer's
contention is not well taken given the lack of evidence relating to the purported family of
marks. The mere fact of registration of several marks incorporating 47 does not in itself prove
that a family of marks exists. Polaroid Corp. v. Richard Mfg. Co., 341 F.2d 150, 144 USPQ
419, 420 (CCPA 1965); Trek Bicycle Corp. v. Fier, 56 USPQ2d 1527, 1529 (TTAB 2000);
Consolidated Foods Corp. v. Sherwood Medical Indus., Inc., 177 USPQ 279, 282 (TTAB 1973).

Opposition No. 91223256

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Similarity of the Marks
We first turn to consider this du Pont factor, and compare Applicant’s mark
to Opposer’s mark 47 in standard characters, and Opposer’s special form mark .
The marks must be considered in their entireties as to appearance, sound,
connotation and commercial impression. Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). “The proper test 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.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citation omitted). The marks “‘must be considered … in light of the fallibility of
memory ….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir.
2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565
F.2d 683, 196 USPQ 1 (CCPA 1977)). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB
2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Since the
goods are clothing and jewelry without any restrictions or limitations as to price or
trade channels, the average purchaser is an ordinary consumer.
Opposition No. 91223256

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The entirety of Opposer’s registered mark is the number 47 in standard character
form; Opposer’s common law mark in special form is ’47 inside a circle. Applicant’s
mark is the number 47 accompanied by two circle designs, one bigger than the other.
Applicant attempts to distinguish the marks on the bases of the presence of the circles
in its mark and the disclaimer of 47; in this regard, Applicant asserts that
“Applicant’s 47 is placed within a symbol which is a standard representation of an
atom, and 47 is the element number for silver in the periodic table.” 33 TTABVUE
18.9
Although marks must be considered in their entireties, it is settled that one
feature of a mark may be more significant than another, and it is not improper to give
more weight to this dominant feature in determining the mark’s commercial
impression. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985) (“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. Indeed, this type of
analysis appears to be unavoidable.”).
In general, when wording (including a number) and a design comprise the mark,
as in the case of Applicant’s mark, then the wording is normally accorded greater
weight because the wording is likely to make an impression upon purchasers, would
be remembered by them, and would be used by them to request the goods and/or
services. CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in

9 Dominique Mintz, Applicant’s owner and president, stated that the larger circle represents
an atom, the smaller circle an electron, and 47 the atomic weight of silver. 26 TTABVUE 12.
Opposition No. 91223256

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a composite mark comprising a design and words, the verbal portion of the mark is
the one most likely to indicate the origin of the goods to which it is affixed”); Joel Gott
Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430-31 (TTAB 2013); In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). See also Giant Food, Inc.
v. Nation’s Food Serv., Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). In
Applicant’s mark, the literal portion 47 dominates over the circle designs, and it is
the number portion, even though disclaimed, that is entitled to greater weight in our
assessment of whether confusion is likely. It is well established that a disclaimer is
of no legal significance in determining likelihood of confusion, rather, the disclaimed
matter must be considered. See Kellogg Co. v. Pack ‘Em Enters, Inc., 14 USPQ2d 1545,
1549 n.10 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991);
Glamorene Products Corp. v. Boyle-Midway, Inc., et. al., 188 USPQ 145 (SDNY 1975).
This dominant literal portion is identical to the entirety of Opposer’s mark in
standard characters, and to the literal portion of Opposer’s special form mark (with
the apostrophe, as well as the circle, in Opposer’s mark not altering the appearance
or sound of the mark in any meaningful manner). See Pinocchio’s Pizza Inc. v. Sandra
Inc., 11 USPQ2d 1227, 1228 (TTAB 1989) (“the marks are virtually identical, the only
difference being the insignificant inclusion of an apostrophe”). This similarity results
in marks that are highly similar in appearance and identical in sound.
As to meaning, Opposer’s advertising reveals that its founders came to the United
States in 1947, and the apostrophe in Opposer’s special form mark suggests that year;
Applicant’s television infomercial advertising emphasizes that 47 is the atomic
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number for silver. Further, as noted above, Applicant contends that the circles in its
mark have meaning, namely the large circle represents an atom, while the small
circle represents an electron. There is no evidence of record, however, shedding light
on the likelihood that consumers would even be aware of any of these meanings of
the parties’ marks. In point of fact, Ms. Mintz does not expect a purchaser of
Applicant’s jewelry to know that 47 is the atomic number of silver, unless the
purchaser saw Applicant’s television infomercial. 21 TTABVUE 176. The meanings
intended by the parties are revealed only through the additional information
conveyed by them to consumers separate from the marks themselves. Thus, we find
it is just as likely that each of the marks standing alone would be perceived as
arbitrary, with no inherent or apparent meaning. See In re National Data, 224 USPQ
at 751 (“The public is unaware of what words have been disclaimed during
prosecution of the trademark application at the PTO.”). In any event, a mark must
be regarded as a whole, including any disclaimed matter, in evaluating similarity to
other marks; a disclaimer “cannot affect the scope of protection to which another’s
mark is entitled” (emphasis in original)). Id.; see also Giant Food, Inc., 218 USPQ at
395 (“disclaimed portions of the mark must be considered in determining the
likelihood of confusion”). See generally TMEP § 1213.09 (2017) (“A refusal of
registration under § 2(d) may not be avoided by disclaiming the mark of another.”).
The ordinary geometric circles that serve as backgrounds for the number 47 in
Applicant's mark and Opposer’s special form mark are not sufficiently distinctive to
change the commercial impression conveyed by each of these mark as a whole. In re
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Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Kysela
Pere et Fils Ltd., 98 USPQ2d 1261, 1267 (TTAB 2011) (“[C]ertainly the oval designs
in the marks are merely background … and do not make a strong commercial
impression.”) (citation omitted). See In re Morinaga Nyugyo Kabushiki Kaisha, 120
USPQ2d 1738, 1742-43 (TTAB 2014). Again, there is no indication on this record of
the extent to which consumers of Applicant’s goods would recognize the significance
of the circle design in relation to products made of silver. We find that each of
Opposer’s marks and Applicant’s mark, when considered in their entireties, are
identical in sound and similar in appearance, and that the marks standing alone are
likely to be perceived as having no readily discernable meanings. The similarities in
appearance and sound outweigh any perceived difference in meaning, resulting in
marks that engender similar overall commercial impressions. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014). In view thereof, the du Pont factor of the similarity of the marks favors a
finding of likelihood of confusion.
Strength of Opposer’s Mark
The fame of a mark is not “an all-or-nothing measure” when considered in the
context of likelihood of confusion. Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734-35 (Fed. Cir. 2017). Rather,
likelihood of confusion fame “varies along a spectrum from very strong to very weak.”
Palm Bay Imps. Inc., 73 USPQ2d at 1694 (quoting In re Coors Brewing Co., 343 F.3d
1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)). In examining the strength of
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Opposer’s mark, the applicable viewpoint is that of the relevant market, that is, of
consumers of like products. Id. (“[A] mark’s renown within a specific product market
is the proper standard.”). The “stronger” or more “well known” a plaintiff’s mark, the
greater the likelihood that use or registration for even minimally related products
will cause confusion. “The stronger the mark, the more likely it is that encroachment
on it will produce confusion.” Champions Golf Club v. Champions Golf Club, 78 F.2d
1111, 38 USPQ2d 1161, 1164 (6th Cir. 1996). As noted by the Seventh Circuit:
What is intended by references to “strong” and “weak”
marks is the effect of such marks upon the mind of the
consuming public. A mark that is strong because of its fame
or uniqueness, is more likely to be remembered and more
likely to be associated in the public mind with a greater
breadth of products and services than is a mark that is
weak because relatively unknown or very like similar
marks or very like the name of the product.

James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 192 USPQ 555, 563 (7th
Cir. 1976). Similarly, the Restatement observes the following:
The distinctiveness or “strength” of a mark measures its
capacity to indicate the source of the goods or services with
which it is used. The greater the distinctiveness of the
mark, the greater the likelihood that prospective
purchasers will associate the same or a similar designation
found on other goods, services, or businesses with the prior
user. “Strong” marks that have a high degree of
distinctiveness are thus protected against the use of
similar marks on a wider range of goods or services than
are “weak” designations that have less distinctiveness or
market recognition.

Restatement Third, Unfair Competition § 21, comment i (1995). See generally, 2 J.T.
McCarthy, McCarthy on Trademarks and Unfair Competition, § 11:73 (Author’s Note:
Opposition No. 91223256

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“The Federal Circuit uses the term ‘fame’ instead of ‘strength.’”; § 24:49 (4th ed. June
2017).
The commercial strength of a mark may be measured indirectly by the volume of
sales of and advertising expenditures for the goods identified by the marks, the length
of time those indicia of commercial awareness have been evident, widespread critical
assessments, notice by independent sources of the goods, and the general reputation
of the goods. In re Mr. Recipe, 118 USPQ2d 1084, 1086 (TTAB 2016) (citing Bose Corp.
v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305-06, 1309 (Fed. Cir.
2002).
Opposer introduced evidence that its mark 47 is “well known,” specifically in “the
sporting goods industry for hats, apparel such as shirts, and accessories.” 29
TTABVUE 8; 76-81. The mark appears on packaging and in advertising, including
print, digital and television, as well as on the storefronts of its brick and mortar
locations. The mark is also publicized on Opposer’s website and through social media,
including Facebook, Instagram, Snapchat and YouTube. 22 TTABVUE 48, 59, 62, 67-
70. Opposer has licensing relationships that allow it to sell goods bearing the marks
owned by the four major professional sports leagues in the United States, namely the
National Football League (NFL), Major League Baseball (MLB), the National
Basketball Association (NBA), and the National Hockey League (NHL). 22
TTABVUE 18. Opposer also has licensing arrangements with hundreds of colleges,
vacation resorts, and professional sports tournaments (tennis and golf), as well as
selling its own line of products bearing its 47 marks alone. 22 TTABVUE 76-77; 25
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TTABVUE 76. Opposer has promoted its goods through consumer promotions, such
as a contest to win a Super Bowl trip, and through product placement with athletes
and celebrities wearing the goods. 22 TTABVUE 59-60, 62, 64-65.
As indicated earlier, Opposer’s sales and advertising numbers are confidential,
but suffice it to say that they are substantial, with total sales in the hundreds of
millions of dollars, and commensurate advertising costs in the tens of millions of
dollars. 23 TTABVUE 9; 11.
Based on the record, it would appear that the primary strength and notoriety of
Opposer’s mark 47 is in the field of apparel related to sports, such as hats and caps
bearing the name/logo of a professional or collegiate sports team. Such items
commonly are integrated with casual attire, often by sports fans representing their
favorite team. We find that Opposer’s 47 marks are commercially strong in the sports-
related clothing field.
Insofar as conceptual strength is concerned, the record is devoid of any evidence
showing third-party uses or registrations of similar marks for similar goods. Cf. Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015); Juice Generation,
Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Thus,
Opposer’s 47 marks are conceptually strong.
In view of the above, the commercial and conceptual strengths of Opposer’s 47
marks weigh in favor of a finding of likelihood of confusion. See In re Morinaga
Nyugyo, 120 USPQ2d at 1744-45.
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Similarity of the Goods
“[I]t is not necessary that the products of the parties be similar or even
competitive to support a finding of likelihood of confusion.” Coach Servs., Inc., 101
USPQ2d at 1722 (citing 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)). Instead, likelihood of confusion can be found “if the respective products are
related in some manner and/or if the circumstances surrounding their marketing are
such that they could give rise to the mistaken belief that they emanate from the same
source.” Id. The issue here, of course, is not whether purchasers would confuse
clothing and jewelry, but rather whether there is a likelihood of confusion as to the
source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012);
In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Each case must be decided on its own
facts. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
We must look to the goods as identified in each application and the goods in the
cited registration. See Stone Lion Capital Partners, 110 USPQ2d at 1162 (quoting
Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990)); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
Accordingly, we compare Applicant’s “jewelry made in whole or significant part of
silver” to Opposer’s “athletic uniforms; baby bibs not of paper; baseball caps and hats;
bottoms; caps; cardigans; ear bands; ear muffs; gloves; hats; headwear; jackets; jeans;
jerseys; mittens; pants; pullovers; shirts; shorts; socks; sweaters; sweatpants;
sweatshirts; tank tops; tops; track jackets; track pants; underwear.” Where, as here,
there are no limitations in the identification of goods in either the application or the
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pleaded registration, we must presume that the identified goods encompass all goods
of the nature and type described therein. See, e.g., Levi Strauss & Co. v. Abercrombie
& Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); Mini
Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1471 (TTAB 2016); In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
We find that Applicant’s jewelry is related to Opposer’s clothing items. Although
the evidence is hardly overwhelming, Opposer introduced four live, use-based third-
party registrations showing that a single entity registered the same mark for both
jewelry and clothing items: ARDEN B and design (Reg. No. 2879970); Interlocking
Heart Design (Reg. No. 4407020); V and design (Reg. No. 4911048); and AMERICAN
EAGLE (Reg. No. 3545443). 21 TTABVUE 105-136. As a general proposition,
although use-based third-party registrations alone are not evidence that the marks
shown therein are in use or that the public is familiar with them, they nonetheless
may have probative value to the extent they may serve to suggest that the goods are
of a kind that emanate from a single source. See In re Infinity Broad. Corp., 60
USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988).
Some consumers may buy jewelry and clothing in the same purchase transaction.
22 TTABVUE 125-26. Jewelry and clothing may be complementary when worn
together, with the goal of presenting oneself in a desired, stylish manner; thus, these
goods are related to the extent that they are part of an overall fashion picture. Indeed,
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sports-related apparel, such as a cap or shirt, may be worn as part of a casual
ensemble. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289, 1290 (Fed. Cir. 1984) (“[C]omplementary use has long been recognized as a
relevant consideration in determining a likelihood of confusion.”); In re Davia, 110
USPQ2d at 1815-1818. See also In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB
1991). Although stated in a case decided fifty years ago (even pre-dating du Pont), the
Board’s words are just as accurate today: “jewelry and women’s wearing apparel are
sold and promoted through the same channels of trade to the same classes of
purchasers, they are displayed and worn together, [and] they may be purchased at
the same time for coordinated wardrobes.” David Crystal, Inc. v. Dawson, 156 USPQ
573, 574 (TTAB 1967).
We have made our finding on this du Pont factor without giving weight to
Opposer’s showing that it has sold “bracelets.” Opposer currently sells socks under
the mark 47, and included with the socks is a black silicone “bracelet” or wristband
also bearing the mark.10 22 TTABVUE 53-55; 137-38. Although the sales figures are
confidential, Opposer has enjoyed some success with this combination. 22 TTABVUE
56-57. These goods, as encountered by consumers, are shown below.

10 Opposer refers to the wristband as a “bracelet” throughout its testimony and briefs, with
Mr. Keane testifying that Opposer’s goods fall within Opposer’s definition of “jewelry”
(“ornamental objects that are worn on the body for personal adornment, such as bracelets,
rings, or necklace, especially when made of precious metals or set with gems, and not
including keychains”).
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19

22 TTABVUE 352. Sales began “somewhere in February [2015].” 22 TTABVUE 50,
55-56; 25 TTABVUE 62. Thus, it is unclear that this use began prior to the filing date
of Applicant’s application on February 18, 2015.
In sum, we find that the similarity of Applicant’s jewelry and Opposer’s clothing
is a factor that weighs in favor of a likelihood of confusion.
Similarity of Trade Channels and Purchasers
Neither Opposer’s identification of goods nor Applicant’s identification contains
any limitations regarding trade channels and classes of purchasers, so we must
presume that the parties’ goods travel through all usual trade channels and are
offered to all normal potential purchasers. Stone Lion Capital Partners, 110 USPQ2d
at 1161-62. Insofar as trade channels are concerned, Opposer sells its goods in major
retail department stores, sports stadium stores, college bookstores, and other retail
outlets, including its own brand store. 22 TTABVUE 18-19, 254. Opposer also has
sold its goods online and through Home Shopping Network on television. As Opposer
has shown, these retail outlets also sell various jewelry items. 22 TTABVUE 88-90,
95-97. At the Souvenir Store on Yawkey Way near Fenway Park in Boston, Opposer
sells, through a sister company, various jewelry items in a glass case adjacent to
where hats and wearing apparel bearing Opposer’s mark 47 is sold. 22 TTABVUE 83,
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20

88, 97-106, 405-10. Certain third-party websites, including those controlled by the
major professional sports leagues, offer Opposer’s goods along with silver jewelry
such as bracelets. 22 TTABVUE 83-84, 117-21; 23 TTABVUE 18-20, 22-24, 26-28, 30-
32. An example is shown below.

23 TTABVUE 18-20, 22-24.
Applicant sells all of its jewelry to EVINE, primarily a television shopping
network, who then sells the jewelry through its programs. 21 TTABVUE 165-66, 173-
74. EVINE also offers a variety of clothing items and hats produced by third parties.
21 TTABVUE 197, 201; 22 TTABVUE 108-09.
Based on the legal presumption and the evidentiary record, we conclude that the
parties’ goods travel in the same trade channels, including television shopping
programs. To the extent that Applicant attempts to distinguish the trade channels
based on actual differences in the marketplace, this is misplaced. As often stated,
“authority is legion that the question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set forth in the application
regardless of what the record may reveal as to the particular nature of an applicant’s
goods, the particular channels of trade, or the class of purchasers to which sales of
the goods are directed.” Octocom Sys., Inc., 16 USPQ2d at 1787.
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21

As for purchasers, the relevant class would include, as noted earlier, ordinary
consumers. 21 TTABVUE 174, 176; 22 TTABVUE 124-25.
Accordingly, we find that the parties’ goods travel in the identical trade channels
to the identical class of purchasers. This weighs in favor of a likelihood of confusion.
Conditions of Sale
There is no indication in the identifications of goods as to the price point of either
Applicant’s jewelry or Opposer’s clothing. To reiterate, while Applicant’s goods may
be handmade sterling silver jewelry designed by Applicant, and thus at a higher price
point than costume jewelry, there is nothing in Applicant’s identification to reflect
this fact. Thus, the goods are presumed to include such goods that are relatively
inexpensive. Indeed, Ms. Mintz indicated that she does not expect that buyers of
Applicant’s jewelry “do careful research” in making their purchasing decision. 21
TTABVUE 175-76. “When products are relatively low-priced and subject to impulse
buying, the risk of likelihood of confusion is increased because purchasers of such
products are held to a lesser standard of purchasing care.” Recot Inc. v. M.C. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984).
Thus, the du Pont factor of the conditions of sale weighs in favor of a finding of a
likelihood of confusion.
Lack of Actual Confusion
Applicant points to the absence of any actual confusion. Applicant’s assertion,
essentially confirmed by Opposer, that the parties are unaware of any instances of
Opposition No. 91223256

22

actual confusion between the marks is entitled to very little weight. First, it is not
necessary to show actual confusion in order to establish likelihood of confusion.
Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. (2002); Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d
1840, 1842-43 (Fed. Cir. 1990), aff’g HRL Associates, Inc. v. Weiss Associates, Inc., 12
USPQ2d 1819 (TTAB 1989). Second, the marks have been in contemporaneous use
for only a short time, since approximately September 2015. Thus, the opportunity for
actual confusion to have occurred in the marketplace is minimal. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). Accordingly,
the eighth du Pont factor, the length of time during and conditions under which there
has been contemporaneous use of the marks without evidence of actual confusion, is
neutral.
Conclusion
We have considered all of the evidence made of record pertaining to the likelihood
of confusion issue, as well as all of the arguments related thereto, including any
evidence or arguments not specifically discussed in this opinion.11

11 As referenced earlier, several of Applicant’s arguments are based on actual use of the marks
and the realities of the marketplace but, as Opposer is quick to point out, such facts often are
not probative in inter partes Board proceedings involving the issue of likelihood of confusion.
As stated by the Federal Circuit:
It was proper, however, for the Board to focus on the application
and registrations rather than on real-world conditions, because
“the question of registrability of an applicant's mark must be
decided on the basis of the identification of goods set forth in the
application.” This is so “regardless of what the record may reveal
as to the particular nature of an applicant's goods, the particular
channels of trade or the class of purchasers to which sales of the
goods are directed.” Even assuming there is no overlap between
[the parties’] current customers, the Board correctly declined to
Opposition No. 91223256

23

Because each of Opposer’s marks is similar to Applicant’s mark, Opposer’s 47
marks are strong, the goods are related, the channels of trade are the same or similar,
the classes of consumers are identical, and the goods are subject to impulse purchase,
we find, under the relevant du Pont factors, that confusion is likely between the
marks.
We conclude that consumers familiar with Opposer’s clothing sold under the
mark 47 in standard characters and the mark are likely to mistakenly believe,
upon encountering Applicant’s mark for jewelry made in whole or significant
part of silver, that the goods originate from or are associated with or sponsored by
the same entity.
Decision:
The opposition is sustained, and registration to Applicant is refused.

look beyond the application and registered marks at issue. An
application with “no restriction on trade channels” cannot be
“narrowed by testimony that the applicant's use is, in fact,
restricted to a particular class of purchasers.” The Board thus
properly found [the applicant’s] application and [the opposer’s]
registrations covered the same potential purchasers and
channels of trade. (citations omitted).
Stone Lion Capital Partners, 110 USPQ2d at 1162. See TBMP § 102.01 (June 2017) (“The
Board is empowered to determine only the right to register.”).