Beda Alan Tirol

Trademark Trial and Appeal Board

Apr 4, 2016

No. 86268590 (T.T.A.B. Apr. 4, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: April 4, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Beda Alan Tirol
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Serial No. 86268590
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Matthew H. Swyers of The Trademark Company
for Beda Alan Tirol.
Cory Boone, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
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Before Taylor, Wolfson and Adlin,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Beda Alan Tirol (“Applicant”) seeks registration on the Principal Register of the
mark SWAP SEALED WITH A PRAYER (in standard characters) for “Clothing,
namely, t-shirts, shirts, jackets, shorts, pants, skirts, dresses, hats, caps, socks, belts,
and footwear” in International Class 25.1

1 Application Serial No. 86268590 was filed on May 1, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of
confusion with the mark SWAP (in standard characters, Reg. No. 3755768) for
“Clothing, namely, shirts” in Class 25.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Applicable Law

Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are 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). See
also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). We discuss the du Pont factors for which Applicant and the Examining
Attorney have presented evidence and arguments.
Relationship of the Goods, Channels of Trade and Classes of Purchasers
We first address the du Pont factor concerning the relatedness of the goods. It is
settled that in making our determination, we must look to the goods as identified in
the application vis-à-vis those recited in the cited registration. See Octocom Sys., Inc.
v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990). Here, the goods listed in the registration are “shirts.” Applicant’s goods include
“shirts” as well as “t-shirts.” Thus, the goods are in-part identical. The Examining
Attorney need not prove, and we need not find, similarity as to each and every product

2 Registered on the Principal Register on March 2, 2010.
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listed in Applicant’s description of goods. It is sufficient that we have found some of
the goods in Applicant’s application to be identical to Registrant’s goods. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981). In any event, Registrant’s “shirts” are also closely related to the additional
clothing items (“jackets, shorts, pants, skirts, dresses, hats, caps, socks, belts, and
footwear”) listed in Applicant’s application, and a likelihood of confusion may be
found based on these additional items. See, e.g., In re J.M. Originals Inc., 6 USPQ2d
1393, 1394 (TTAB 1987) (holding JM ORIGINALS for various items of apparel likely
to cause confusion with JM COLLECTABLES for sports shirts); In re Melville Corp.,
18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets
related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985)
(women’s shoes related to outer shirts).
Further, because the goods are in-part identical and in-part related, and are
broadly identified as to their nature and type, such that there is an absence of any
restrictions as to the channels of trade and no limitation as to the classes of
purchasers, we must assume that Applicant’s and Registrant’s channels of trade and
purchasers are also the same. American Lebanese Syrian Associated Charities Inc. v.
Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); Genesco Inc.
v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-
part related nature of the parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers, these clothing items could
be offered and sold to the same classes of purchasers through the same channels of
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trade.”). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion). Moreover, the goods are likely to be sold through the same
trade channels, e.g., online and brick and mortar clothing store retailers, to the same
classes of purchasers, i.e., ordinary consumers interested in purchasing wearing
apparel who exercise only average care in their selections.
The in-part identity of Applicant’s and Registrants’ goods, as well as the presumed
overlap in trade channels and purchasers, are factors that weigh heavily in favor of
finding a likelihood of confusion.
The Marks
We now turn to a consideration of the marks, keeping in mind that when marks
would appear on identical goods, as here, the degree of similarity necessary to support
a conclusion of likely confusion declines. Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). See also Shen Mfg.
Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004);
In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). To determine whether
the marks are confusingly similar, we consider the sound, appearance, meaning and
commercial impression of the marks in their entireties. Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014)
(“The similarity of the marks is determined by focusing on ‘the marks in their
entireties as to appearance, sound, connotation, and commercial impression.”)
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(quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F. 3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)). In a particular case, “two
marks may be found to be confusingly similar if there are sufficient similarities in
terms of sound or visual appearance or connotation.” In re Mr. Recipe, LLC (TTAB
2016) (quoting Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d
1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992)) (internal citation
omitted).
Registrant’s mark is the term “SWAP.” Applicant’s mark is the term “SWAP,”
which is apparently an acronym, followed by the phrase “SEALED WITH A
PRAYER.” Applicant’s mark incorporates the entirety of Registrant’s mark. The
addition of a term, or phrase, to a registered mark generally does not obviate the
similarity between the marks or overcome a likelihood of confusion under Section
2(d). See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir.
2010) (finding ML and ML MARK LEES confusingly similar); In re Code Consultants
Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (finding “CCI” logo with wording “Code
Consultants, Inc.” as trademark for fire prevention consultation services relating to
fire alarm and sprinkler designs likely to cause confusion with registrant’s collective
membership mark “CCI,” indicating membership in an organization of construction
inspectors); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (finding
CAREER IMAGE for women’s clothing and CREST CAREER IMAGES for uniforms
including items of women’s clothing confusingly similar).
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While a mark must be considered as a whole in determining likelihood of
confusion, it is well settled that one feature of a mark may be more significant than
another, and “[t]here 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.” In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“Indeed, this type of
analysis appears to be unavoidable.”). Here, the word “SWAP” is the dominant
portion of Applicant’s mark because it is the acronym for the phrase “SEALED WITH
A PRAYER” and because purchasers are generally inclined to focus on the first word
or portion in a trademark. 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 this identical lead word”); Presto Products, Inc. v. Nice-
Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a
mark which is likely to be impressed upon the mind of a purchaser and remembered”).
Moreover, the fact that each word in the phrase starts with one of the letters “s,” w,”
“a” or “p” as its initial letter reinforces the impression the word SWAP makes on
purchasers by redirecting their attention back to this first word/acronym. The marks
are thus similar in appearance and pronunciation.
Applicant, however, urges us to consider the manner in which Registrant’s mark
is used in commerce, arguing that the marks are dissimilar in meaning because of
the purported religious undertone of its mark and the purported political messaging
intended by Registrant with respect to its mark. Applicant contends that Registrant’s
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website is hosted at “www.shirtswithapurpose.com” and shows that the registered
mark is being used as an acronym for the phrase “Shirts With A Purpose.” Applicant’s
argument is unavailing because it is well established that, in contrast to an
infringement action where the court examines the visual appearance of the marks in
the context of actual use, in proceedings before the Board, only the drawing of the
mark is relevant. In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214 (TTAB
2001) (“in Board proceedings, likelihood of confusion is determined independent of
the context of actual usage”); see also Jim Beam Brands Co. v. Beamish & Crawford,
Ltd., 937 F.2d 729, 19 USPQ2d 1352 (2d Cir. 1991). For purposes of our
determination of the similarity or dissimilarity of the marks, we may not consider
extraneous matter that is not part of the cited mark as registered. The divergent
connotations of the marks are not apparent in the marks themselves, and to the
extent consumers may view the term “SWAP” in Registrant’s mark as an abbreviation
for anything, they could attribute the same meaning to it as they would to Applicant’s
mark, or could believe that Registrant’s mark is simply a shortened version of
Applicant’s mark, without the additional words explaining what each letter
purportedly stands for.
Viewing the marks as a whole, we find that Applicant’s mark is more similar to
than dissimilar from the mark in the cited registration in appearance, sound,
connotation and commercial impression. “SWAP” and “SWAP SEALED WITH A
PRAYER” share an identical term, which is the entirety of Registrant’s mark and the
most distinctive portion of Applicant’s mark. This common identical term in both
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marks results in close similarities while the presence of the additional phrase
“SEALED WITH A PRAYER” is not likely to distinguish the marks inasmuch as it
would merely indicate that Applicant’s goods may be that part of the SWAP line of
wearing apparel intended to allow its wearer to express a religious inclination.
As a result, we find that this du Pont factor also strongly favors a finding of
likelihood of confusion.
Conclusion
We have considered all of the du Pont factors for which Applicant and the
Examining Attorney have introduced evidence and arguments. The rest we treat as
neutral. After considering all of the evidence of record, including any evidence not
specifically discussed herein, and arguments pertaining to the du Pont likelihood of
confusion factors, we find the marks are similar, the goods are in-part identical, and
the channels of trade and classes of consumers are the same. In view thereof, we find
that Applicant’s mark, if used in association with the goods identified in the
application, is likely to cause confusion with the registered mark used in connection
with the goods recited in the registration.
Decision: The refusal to register Applicant’s mark is affirmed.