BambuLife, LLC

Trademark Trial and Appeal Board

Sep 22, 2017

No. 86933850 (T.T.A.B. Sep. 22, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: September 22, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re BambuLife, LLC
_____

Serial No. 86933850
_____

Andy W. Morgan of Morgan Law Group, PC,
for BambuLife, LLC.
John Schmidt, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
_____

Before Quinn, Kuczma and Larkin,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
BambuLife, LLC (“Applicant”) seeks registration on the Principal Register of the
mark for:
Clothing, namely, pants, slacks, t-shirts, dress shirts, ties,
polo shirts, dresses, socks, hats, caps, shorts, swim trunks,
swim suits, bikinis, sweaters, jackets, underwear, blouses,
gloves, scarves, head bands, coats, pull overs, sweat suits,
sweat shirts, sweat pants, sneakers, shoes, boots, slippers,
tank tops, halter tops and skirts, all of the foregoing made
using bamboo either wholly or in combination with other
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materials of which bamboo will comprise a substantial part
in International Class 25.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing Registration No.
1930040 for “BAMBU” (a typeset2 mark) for “T-shirts, sweatshirts and hats” in
International Class 25, owned by Bambu Sales, Inc. (“Registrant”), as a bar to
registration.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Preliminary Issues
Before proceeding to the merits of the refusal, we address the materials attached
to the Brief of Appellant as Exhibits A-D. For the reasons set forth below, these

1 Application Serial No. 86933850 was filed on March 9, 2016, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. “The mark consists of the literal element of the mark which is comprised of
the word bambulife, written in lower case letters, with bambu appearing in block letters and
life appearing in cursive. Each instance in which the letter b appears in the mark, the vertical
line comprising the letter is drawn to look like a stalk of bamboo with one bamboo styled joint
appearing in the middle of the line. The first appearance of the letter b has three bamboo
shaped leaves that appear to be attached to the left side of the uppermost half of the vertical
line that comprises the letter. The letter u has a bamboo leaf shaped accent extending from
the top left side of the letter pointing upward and angled toward the right.” Color is not
claimed as a feature of the mark.
2 The mark depicted in Registration No. 1930040 is a typed drawing. Prior to November 2,
2003, “standard character” drawings were known as “typed” drawings. A mark depicted as a
typed drawing is the legal equivalent of a standard character mark. In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012); ProMark Brands Inc. v. GFA Brands,
Inc., 114 USPQ2d 1232, 1236 n.5 (TTAB 2015); Trademark Manual of Examining Procedure
(TMEP) § 807.03(i) (April 2017).

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materials have not been considered. Exhibit A contains a copy of a webpage dated
4/26/2016 featuring a photo of a t-shirt bearing the mark BAMBU previously
submitted as an attachment to the May 3, 2016 Response to Office Action, and an
image of Applicant’s mark. Exhibit B is a copy of a page from Registrant’s website
dated 4/3/2017 entitled Company History, which appears to be a later-dated version
of an attachment to the May 3, 2016 Response to Office Action at 8. Exhibit C shows
images of two webpages from Registrant’s website dated 4/3/2017; an earlier dated
copy of the top image was filed as an attachment to the May 3, 2016 Response to
Office Action at 9. Exhibit D is duplicative as it was previously submitted with the
May 3, 2016 Response to Office Action at 10.
Re-submitting materials which were previously submitted is unnecessary. In re
Allegiance Staffing, 115 USPQ2d 1319, 1323 (TTAB 2015) (practice of attaching to
appeal brief copies of the same exhibits submitted with responses is discouraged); In
re Thor Tech Inc., 85 USPQ2d 1474, 1475 n.3 (TTAB 2007) (“[t]o the extent the
material may simply be duplicative of matter submitted during examination, it is
already of record as part of the application file, and its submission with the briefs was
unnecessary”). Accordingly, the duplicate materials attached to Applicant’s brief have
not been considered.3
In addition, as set forth in Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), the
record in the application should be complete prior to the filing of an appeal. See In re

3 However, to the extent that any of the unconsidered duplicate materials were the same as
what was submitted during the prosecution of Application Serial No. 86933850, they have
been considered.
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Fiat Grp. Mktg. & Corp. Commc’ns S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014);
Trademark Board Manual of Procedure (TBMP) §§ 1203.02(e) and 1207.01 (June
2017). The images contained in the Exhibits that were not previously made of record
are untimely and therefore not part of the record for this case. Thus, the Board will
not consider this additional evidence submitted after the appeal was filed.
II. Likelihood of Confusion
Our determination of likelihood of confusion under § 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to the factors bearing on the
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976). In addition, we address the similarity of the likely to
continue trade channels, conditions under which and buyers to whom sales are made,
i.e., “impulse” vs. careful, sophisticated purchasing, and the extent of potential
confusion. We have considered all of the arguments and evidence of record, including
any matters not explicitly discussed.
A. The similarity or dissimilarity and nature of the goods, channels of
trade and classes of consumers
We first consider the du Pont factor involving the similarity or dissimilarity of
Applicant’s goods to the goods in the cited registration. The goods need not be
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identical or directly competitive to find a likelihood of confusion. Rather, they need
only to be related in some manner or the conditions surrounding their marketing are
such that they would be encountered by the same purchasers under circumstances
giving rise to the mistaken belief that the goods come from a common source. See
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722
(Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
Inasmuch as Registrant’s T-shirts, sweatshirts, and hats encompass Applicant’s
T-shirts, sweatshirts and hats “made using bamboo either wholly or in combination
with other materials of which bamboo will comprise a substantial part” the goods are
legally identical-in-part. Applicant’s attempt to limit the scope of its goods by adding
the language, “made using bamboo either wholly or in combination with other
materials of which bamboo will comprise a substantial part” does not obviate a
finding that the goods are identical. Because the cited registration is silent as to the
material composition of the goods, it is presumed to encompass T-shirts, sweatshirts
and hats made of all materials, including bamboo. See Octocom Sys. Inc. v. Houston
Computers Serv. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
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. . . .”); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir.
Serial No. 86933850

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1983) (“[W]here the likelihood of confusion is asserted with a registered mark, the
issue must be resolved on the basis of the goods named in the registration and, in the
absence of specific limitations in the registration, on the basis of all normal and usual
channels of trade and methods of distribution.”). Thus, Registrant’s actual use of its
mark and whether its clothing items actually contain environmentally conscious
materials is not relevant.
Applicant’s remaining clothing goods are closely related to Registrant’s T-shirts,
sweatshirts, and hats. Decisions regarding likelihood of confusion in the clothing field
have found many different types of apparel to be related goods. See, e.g., Cambridge
Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (CCPA
1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v.
Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to
neckties); In re Melville Corp., 18 USPQ2d at 1388 (women’s pants, blouses, shorts
and jackets related to women’s shoes); In re Mercedes Slacks, Ltd., 213 USPQ 397,
398-99 (TTAB 1982) (hosiery related to trousers).
Third-party website evidence offering a wide range of clothing goods for sale
confirms the relatedness of the goods. For example, Nike’s website offers swimming
trunks, socks, and jackets along with a range of other clothing goods including tops
and t-shirts, hoodies, pants and shorts bearing the Nike swoosh design trademark4;
the Ann Taylor website offers t-shirts, hats, pants, blouses, tops, and many other

4 See May 17, 2016 Office Action at 15-17 http://store.nike.co/us/en_us/pw/mens-surf-
swim wear/7puZnmv; http://store.nike.com/us/en_us/pw/mens-socks/7puZpco; http://
store.nike.co m/us/en_us/pw/mens-jackets-vests/7puZobr?ipp=106.
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articles of similar clothing5; the Levi website offers Levi’s brand shirts, pants, shorts,
jackets, sweatshirts and t-shirts6; and Macy’s department store offers Calvin Klein
brand t-shirts, shoes, shirts, underwear, pants and a range of other clothing items.7
This website evidence offering goods for sale from third-party clothing manufacturers
confirms that the types of clothing goods identified in both the application and the
cited registration are sold under the same mark in the same trade channels to the
same purchasers. Therefore, Applicant’s and Registrant’s non-identical goods are
considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods.
Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91
USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Additionally, the Examining Attorney submitted a representative sample of third-
party registrations of marks for the same types of goods as those of both Applicant
and Registrant showing that the articles of clothing of both Applicant and Registrant
are the kinds of goods that emanate from a single source under a single mark.8 See

5 See May 17, 2016 Office Action at 18-20 http://www.anntaylor.com/sale-knits-tees/cat
490002; http://www.anntaylor.com/hats/cat2600066; http://www.anntaylor.com/pants/
cata000014.
6 See May 17, 2016 Office Action at 14, http://www.levi.com/US/en_US/category /men
/clothing.
7 See April 5, 2016 Office Action at 24-32 http://www1.macys.com/shop/mens-clothing/
mens-calvin-klein/Pageindex.Productsperpage/12.All?id=28169.
8 See evidence from the USPTO’s X-Search Database submitted with the May 17, 2016 Final
Office Action at 26-54. For example, Registration No. 4290887 for the mark KING LIFE
QUEEN LOVE includes shirts, pants, hats, beachwear and other clothing goods; Registration
No. 4544740 for the mark SUN’S OUT, BUNS OUT includes baseball caps and hats, caps
with visors, hooded sweatshirts, dresses, t-shirts, pants, bathing suits and other clothing
goods; Registration No. 4570997 for the mark THRASHER includes t-shirts, sweatshirts,
beachwear, coats, and other clothing goods; Registration No. 4494566 for the mark WITH
YOU EVERYWHERE includes hats, sweatshirts, dresses, sweaters, sweatpants, and other
clothing goods; Registration No. 4898986 for the mark Flying Finn Fash and Design including
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In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
Based on the products shown on Registrant’s website, Applicant argues that
Registrant uses its mark on clothing in an ornamental manner and only to raise
brand awareness of Registrant’s other products, namely its tobacco rolling paper.9
According to Applicant, “this would be paradoxical to the target consumer for
Applicant’s products, who would be one who is environmentally conscious and looking
to lead a healthy lifestyle and embodies the same through the purchase of sustainable
products.”10 Since Registrant is in the cigarette rolling industry, Applicant contends,
Registrant’s clothing likely does not contain environmentally conscious material.
Thus, Applicant concludes that the marks, when applied to the goods and when
viewed by the target consumers, would have distinctly different commercial
impressions.11 Even if Registrant uses its mark only to raise brand awareness of its
other products, this does not reduce the similarities of the goods because the

shirts, t-shirts, underwear, sweatshirts, coats, sweaters, socks and other clothing goods;
Registration No. 4880355 for the mark B and Design including men’s and unisex t-shirts,
pants, tank tops, beach hats, caps, dresses, shorts and other clothing goods; Registration No.
4894848 for the mark HISU HISU and Design including sweatshirts, shirts, jeans,
sweatpants, hats, caps, sneakers and other clothing goods; Registration No. 4913534 for Bad
Monkey and Design including t-shirts, sweaters, sweatshirts, jackets, pants, dresses and
other clothing goods; Registration No. 4955453 for URTH including shirts, sweatshirts, t-
shirts, dresses, skirts and other clothing goods. Since Registration No. 4788467 was issued
based on a foreign trademark registration and was not issued based on use of the mark, it
was not considered.
9 Brief of Appellant p. 7 (7 TTABVUE 8).
10 Brief of Appellant p. 8 (7 TTABVUE 9).
11 Brief of Appellant pp. 7-8 (7 TTABVUE 8-9).
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limitations that Applicant notes are not reflected in Registrant’s registration. The
Board is constrained to consider the question of likelihood of confusion on the basis
of the goods identified in Applicant’s application and Registrant’s registration. See
e.g., Stone Lion Capital Partners, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir.
2014); Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722; Paula
Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Moreover, the goods
are considered to be the identified goods of every type, available to any purchaser in
all of the normal trade channels for such goods. In re Melville Corp., 18 USPQ2d at
1388; McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989); RE/MAX
of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964-65 (TTAB 1980).
Applicant contends, however that because its clothing is made from bamboo, this
is a difference in material composition that renders the trade channels and the classes
of consumers for Applicant’s and Registrant’s goods dissimilar.12 Here, Registrant’s
goods have no restrictions as to channels of trade or classes of purchasers. Absent any
restrictions in an application and/or registration, the identical and highly related
goods are presumed to travel in the same channels of trade to the same class of
customers. See In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1005 (Fed. Cir. 2002)); American Lebanese Syrian Associated Charities Inc. v.
Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); In re Yawata Iron

12 Brief of Appellant pp. 8-9 (7 TTABVUE 9-10).
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& Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same).
In view of the foregoing, the du Pont factors regarding the similarity of the goods,
trade channels and purchasers, all favor a finding of likelihood of confusion.
B. The similarity or dissimilarity of the marks as to appearance, sound,
meaning and commercial impression
We now turn to the du Pont factor focusing on the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, meaning and commercial
impression.13 Viterra, 101 USPQ2d at 1908 (quoting du Pont, 177 USPQ at 567).
Where the goods of Applicant and Registrant are identical and closely related as they
are in this case, the degree of similarity between the marks required to support a
finding of likelihood of confusion is not as great as would be required with diverse
goods. Viterra, 101 USPQ2d at 1908; Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238,
73 USPQ2d 1350, 1354 (Fed. Cir. 2004); In re J.M. Originals Inc., 6 USPQ2d 1393,
1394 (TTAB 1987).

13 Applicant’s argument on p. 3 of its Brief (7 TTABVUE 4) that “[s]imilarity in one respect –
sight, sound, or meaning – does not support a finding of likelihood of confusion, even where
the goods or services are identical or closely related” is an incorrect statement of the law.
Similarity as to one factor alone may be sufficient to support a holding that the marks are
confusingly similar, taking into account all of the relevant facts of a particular case. In re
Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009); In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); TMEP
§ 1207.01(b)(i).
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To the extent that Applicant’s mark and the cited mark BAMBU begin
with the identical term “bambu,” when comparing the marks in their entireties, they
are similar in sound and appearance. Further, “bambu” is the prominent feature and
dominant portion of Applicant’s mark given its location as the first part of the mark,
where it is the first word to be viewed and to be articulated when pronouncing the
mark. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most
prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in
the mark and the first word to appear on the label); Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers must first notice the identical lead word); Presto
Prods., Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often
the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”).
Turning to the meaning and commercial impression of the marks, both marks
begin with the misspelled term “bambu,” which is similar in appearance and identical
in sound to “bamboo.” Bamboo is defined as “any of various usually woody, temperate
or tropical plants chiefly of the genera Arundinaria, Bambusa, Dendrocalamus,
Phyllostachys, or Sasa in the grass family…” and includes “fabric or yarn
manufactured from these plants.”14 The first term in each of the marks, the identical

14 May 17, 2016 Final Office Action at 21, American Heritage® Dictionary of the English
Language, Fifth Edition copyright © 2015 by Houghton Mifflin Harcourt Publishing
Serial No. 86933850

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misspelled word “bambu,” immediately evokes bamboo, and gives both marks the
same strong connotations in relation to fabric for clothing because clothing made from
bamboo is desirable as an environmentally friendly choice.15
Applicant argues that the Examining Attorney improperly dissected its mark by
focusing on the shared term “bambu” and that doing so minimizes the importance of
the additional term “life” in Applicant’s mark, which obviates the similarities
between the marks.16 Marks must be compared in their entireties and should not be
dissected; however, the individual components of a mark may be weighed to
determine its overall commercial impression. Stone Lion Capital Partners, 110
USPQ2d at 1161 (“[Regarding the issue of confusion,] there is nothing improper in
stating that ... 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.”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985)). Greater weight is often given to the dominant feature when determining
whether marks are confusingly similar. See Nat’l Data, 224 USPQ at 751.
Applicant’s mark is presented as a single word, using two different
stylized fonts to differentiate the term “bambu” from the word “life.” Thus, Applicant

Company https://ahdictionary.com/word/search.html?q=bamboo&&submit.x=46&&submi
t.y=18.
15 May 17, 2016 Final Office Action at 22, http://eartheasy.com/wear_bamboo_clothing.htm
eartheasy Bamboo Clothing: “Bamboo fiber is a revolutionary new fabric that has
unparalleled advantages, including strength, versatility and luxurious softness … Bamboo
fibre is made by pulping the grass until it separates into thin threads of fibre, which can be
spun for weaving into cloth….”
16 Brief for Appellant pp. 4-5 (7 TTABVUE 5-6).
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argues that its mark and the cited mark are visually different due to the addition of
the word “life” and the bamboo design elements, which give Applicant’s mark the
distinct impression that bamboo is a key component of Applicant’s goods.17 The fonts
in Applicant’s mark create a visual difference and separation between the two words
such that consumers will readily perceive them as two distinct terms despite the
mark being presented as a single word. Not only is the first word of Applicant’s and
Registrant’s marks identical, but the marks both utilize the novel misspelling of
“bambu,” suggesting the tropical plant bamboo. Thus, when confronted with the
marks of Applicant and Registrant in the context of clothing, consumers will likely
see Applicant’s mark as another product offering of Registrant based on the marks’
shared use of the novel misspelling of bamboo as “bambu.”
While Applicant’s mark contains the additional word “life,” that does not diminish
the overall similarities between the marks. Applicable definitions define “life” as “a
manner of living” and “the activities and interests of a particular area or realm.”18
Thus, “life” merely accentuates “bambu,” the first term in Applicant’s mark, resulting
in Applicant’s mark being suggestive of an environmentally friendly life.
Further, “life” is used by some third-party clothing providers to suggest that their
clothing is appropriate for a certain type of existence that also may lead consumers

17 Brief of Appellant p. 6 (7 TTABVUE 7).
18 May 17, 2016 Final Office Action at 10, The Free Dictionary http://www.thefreedictionary
.com/life, definition number 10.
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to conclude that BAMBU and identify a single source of clothing items,
especially those emphasizing an environmentally friendly life.19
Applicant contends that the use of “life” in its mark accentuates and conjures a
specific image and expectation in the mind of the consumer.20 While that may be, the
“life” portion of its mark will not likely be perceived by consumers as identifying a
different source of the clothing. The Examining Attorney submits third-party
registrations for marks containing the word “LIFE” registered for clothing,
contending that consumers are accustomed to encountering marks that end in
“LIFE,” which are used to suggest a particular lifestyle. See for example, U.S.
Registration Nos. 4538208 for BARN LIFE, 4074542 for BAY LIFE, 4865279 for
BEACH LIFE, and 4641462 for CHROME LIFE, registered for various types of
clothing.21 As a result, the Examining Attorney argues, consumers will perceive
“BAMBU” and as identifying a single source of clothing goods because
emphasizes an environmentally friendly life and tells consumers to live the
“BAMBU” way.

19 May 17, 2016 Final Office Action at 11, 12, 13 saltlife.com: http://www.salt
life.com/mens/mens-tops/mens-tops-tees.html/: clothing featuring fishing and surfing and
other activities related to the ocean and ocean enjoying life; farmlife.com:
http://yourfarmlife.com/mens-apparel/: clothing featuring tractors and other subject
related to farming and the farming life; Thuglife-store.com: http://www.thuglife-
store.com/en/Clothing/Men/?force_sid=dbdan49835ib471hvj9pt404d4: clothing featuring
“Thug Life” and other “streetwear” related to urban and hip hop culture.
20 Brief for Appellant p. 5 (7 TTABVUE 6).
21 December 6, 2016 Denial of Request for Reconsideration, at 5-15. Registration No. 3887023
(at 3-4) has been cancelled for failure to file the declaration of use under § 8 of the Trademark
Act, 15 U.S.C. § 1058, and so it has not been considered.
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While there is no explicit rule that marks are similar where an applicant’s mark
contains the whole of the mark in the cited registration, the fact that the cited
registered mark is incorporated in full in Applicant’s mark increases the similarity
between the two marks, especially when the addition of “life” in Applicant’s mark
does not change the overall meaning of the marks caused by the shared term “bambu”
in a way that would distinguish between the sources of Applicant’s and Registrant’s
goods. Adding a term to a registered mark, as in this case, generally does not obviate
the similarity between the compared marks nor does it overcome a likelihood of
confusion under § 2(d). See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD confusingly similar);
Wella Corp, v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA
1977) (CALIFORNIA CONCEPT similar to registered mark CONCEPT); Coca-Cola
Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA
1975) (BENGAL and BENGAL LANCER and design confusingly similar); Lilly
Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (THE
LILLY and LILLI ANN confusingly similar); In re Toshiba Med. Sys. Corp., 91
USPQ2d at 1269 (TITAN and VANTAGE TITAN confusingly similar); In re El Torito
Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (MACHO and MACHO COMBOS
confusingly similar).
Applicant’s mark also contains subtle design elements of stylized bamboo stalks
making up part of the letters “b” in , and small bamboo leaves to the right
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of the first “b” and another leaf-shaped design over the letter “u.”22 These design
elements reinforce the meaning of the term “BAMBU” in the mark by bringing to
mind actual bamboo stalks and leaves, and calling attention to that term in the mark.
Therefore, these elements do not obviate the similarities between the marks. For a
composite mark containing both words and a design, the word portion is usually more
likely to indicate the origin of the goods because it is more likely to be impressed upon
a purchaser’s memory and to be used when requesting the goods. Bond v. Taylor, 119
USPQ2d 1049, 1055 (TTAB 2016) (citing Viterra, 101 USPQ2d at 1908, 1911); Joel
Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013)
(citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)).
Therefore, these additional design elements do not obviate the similarities between
the marks.
Registrant’s mark is in typed form. A mark in typed form, i.e., standard
characters, may be displayed in any lettering style including a style identical to
Applicant’s using bamboo stalks to form letters as well as using a stylized cursive
font; the rights reside in the wording or other literal element and not in any particular
display or rendition. Thus, a mark presented in stylized characters with a design
element generally will not avoid likelihood of confusion with a mark in standard
characters because the marks could be presented in the same manner of display. See,
e.g., Viterra, 101 USPQ2d at 1909; Squirtco v. Tomy, 216 USPQ at 939 (“the argument

22 Applicant describes the leaf shape design as: “The letter u has a bamboo leaf shaped accent
extending from the top left side of the letter pointing upward and angled toward the right.”
See n.1 above.
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concerning a difference in type style is not viable where one party asserts rights in
no particular display”). See also Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115
USPQ2d 1816, 1823 (TTAB 2015) (a standard character mark “could be used in any
typeface, color, or size, including the same stylization actually used . . . [in Applicant’s
mark], or one that minimizes the differences or emphasizes the similarities between
the marks.”).
While some differences exist between the marks in their entireties23, Applicant’s
mark and the cited registered mark are substantially similar in sound, appearance
and commercial impression, inasmuch as they begin with, or are solely comprised of,
the identical dominant term BAMBU. Neither the word “life” nor the minor design
elements in Applicant’s mark create a strong enough impression to distinguish the
source of the goods. Thus, the marks of Applicant and Registrant are similar.
III. Conditions under which purchasers to whom sales are made, i.e., “impulse”
vs. careful, sophisticated purchasing
Applicant also argues that purchasers looking for clothing do not make impulsive
decisions. Therefore, it contends, the purchasers of its goods, as sophisticated

23 Based on the differences in the marks’ names, appearance and consumer focus, Applicant
argues that purchasers coming in contact with the two brands will know the goods are from
different sources or have a strong reason to question that the two are from the same source
in light of their differences.23 Inasmuch as the goods of both parties are legally identical-in-
part based on the broad identification of goods in Registrant’s registration, and as such, travel
in the trade channels to the same class of purchasers, the extent of potential confusion is not
highly unlikely or de minimis as Applicant asserts. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000).

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consumers of clothing, will be discerning and thus, it is highly unlikely that there will
be confusion between Applicant’s and Registrant’s goods.24
There is nothing in the record establishing that purchasers of clothing containing
bamboo exercise greater care in their purchase of such goods other than the usual
care taken in purchasing clothing. Moreover, 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, e.g., Stone Lion Capital Partners, 110 USPQ2d at 1163-64; Top
Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Thus,
even discerning and sophisticated clothing consumers are likely to be confused
between the sources of the goods when offered under marks with an identical spelling
of the dominant element of both marks, BAMBU.
IV. Conclusion
The first term and dominant feature in both Applicant’s mark and the
mark BAMBU in the cited Registration is “BAMBU,” and the marks are similar in
sound, appearance, meaning and overall commercial impression when considered in
their entireties. The high degree of similarity between Applicant’s mark
and the cited mark BAMBU taken together with the legally identical and closely
related nature of the goods creates a likelihood that consumers will be confused as to
the source of the respective goods.

24 Brief of Appellant p. 9 (7 TTABVUE 10).
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Decision: The refusal to register Applicant’s mark under § 2(d) of the
Trademark Act is affirmed.