Décor Suzhou NYC co ltd

Trademark Trial and Appeal Board

Apr 13, 2017

No. 86649731 (T.T.A.B. Apr. 13, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 13, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Decor Suzhou NYC co ltd
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Serial No. 86649731
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Jungjin Lee of Lee Lee & Associates P C for Decor Suzhou NYC co ltd.

Janice L. McMorrow, Trademark Examining Attorney, Law Office 115 (Daniel
Brody, Managing Attorney).
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Before Mermelstein, Shaw, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Decor Suzhou NYC co ltd (“Applicant”) filed an application for registration on the
Principal Register of the mark shown below for “Dresses; Footwear; Jeans; Knit
tops; Pants; Scarves; Shirts; Skirts; Sweaters; Sweatshirts,” in International Class
25:1

1 Application Serial No. 86649731 was filed on June 3, 2015 under Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), stating April 1, 2012 as the date of first use of the mark
and July 18, 2012 as the date of first use of the mark in commerce. The design in the mark
is described as “a drawing of a wave.”
Serial No. 86649731

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The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
in connection with Applicant’s goods, so resembles the registered mark shown below
as to be likely to cause confusion, or to cause mistake, or to deceive.

The cited mark is registered for “Beach coverups; Coverups; Swimwear,” in
International Class 25.2 When the refusal was made final, Applicant appealed to
this Board and filed a request for reconsideration. The Examining Attorney denied

2 Reg. No. 3902510, issued January 11, 2011; Section 8 affidavit accepted; Section 15
affidavit acknowledged. The description of the mark in the registration is, “The mark
consists of the word ‘SURFSIDE’ in stylized form with a single flower representing the dot
in the letter ‘I’. The wording appears on a solid background with a design of flowers and
leaves.” Color is not claimed as a feature of the mark.
Serial No. 86649731

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the request for reconsideration and this appeal proceeded. Applicant and the
Examining Attorney have filed briefs.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
(a) The marks.
We first consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005). “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). 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). While we consider each mark in
its entirety, 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 that our
ultimate conclusion rests upon a comparison of the marks in their entireties. In re
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National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). “Indeed,
this type of analysis appears to be unavoidable.” Id.
The marks resemble each other in appearance, sound and meaning to the extent
that each mark includes the initial term SURFSIDE. Although the additional term
SUPPLY in Applicant’s mark is a point of difference in appearance, sound and
meaning, this word has little distinctiveness in the field of commercial goods.3 The
marks also differ in appearance because of the differently stylized lettering of their
wording and the differences between the wave design in Applicant’s mark and the
flower and leaf design in Registrant’s mark. However, we generally give less weight
to the style and design elements of a mark than to the wording, because the
wording would be used by consumers to request the goods. In re Dakin’s Miniatures,
Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also Sweats Fashions Inc. v. Pannill
Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc.
v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). In any

3 The word “supply” means:
e : items or a quantity (as provisions, clothing, arms, or
raw material) available for use, exploitation, or
development or esp. set aside to be dispensed at need :
STORES, STORE … 5 : something that contains, delivers,
maintains, or regulates a supply <~ line> <~ depot> …
WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993) p. 2297. The Board may take
judicial notice of dictionary definitions. Univ. of Notre Dame du Lac v. J.C. Gourmet Food
Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
The Examining Attorney has also submitted copies of 10 registrations of clothing
trademarks that include the term SUPPLY, in which the registrant has disclaimed the
exclusive right to use SUPPLY. Office Action of September 12, 2016 at 4-26. Such
registrations show that the term has a meaning in the trade and is therefore weaker as an
indicator of source. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1674-5 (Fed. Cir. 2015).
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event, customers would find the stylized presentation of SURFSIDE in Registrant’s
mark immediately legible and would appreciate its similarity to the differently
stylized wording SURFSIDESUPPLY in Applicant’s mark. Applicant’s contention
that the design elements of its own mark create a masculine commercial impression
as opposed to the “flowery, feminine” impression of Registrant’s mark is not
persuasive. There is nothing about either mark that is inherently gender-specific,
nor is there any evidence to demonstrate otherwise.
Although the two marks have some differences in appearance, we find that those
differences are outweighed by the marks’ similarities in appearance, sound, and
meaning and that overall the two marks create similar commercial impressions. We
find that the du Pont factor of the similarity or dissimilarity of the marks weighs in
favor of a finding of likelihood of confusion.
(b) The goods.
We next consider the similarity or dissimilarity of the goods as identified in the
application and the cited registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014); Octocom
Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). We need not consider whether each of Applicant’s identified goods
is related to Registrant’s goods; for purposes of a du Pont analysis, it is sufficient if
likelihood of confusion is found with respect to use of an applicant’s mark in
connection with any good or service in a particular International Class. See Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
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(CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB
2007). Applicant cautions that it would be an error to deny it registration merely
because the goods of Applicant and Registrant are “in the same general field” or
because “a term may be found which encompasses the goods” of both.4
The identifications of goods do not, on their face, overlap. However, the Examining
Attorney contends that Applicant’s “dresses” and Registrant’s “coverups” “can be
the same goods”; and that Applicant’s “scarves” “can be used as cover ups.”5
Evidence of record supports the Examining Attorney’s contention. Webpages from
show items that have the appearance of dresses and that are
identified as “Cover-Up Dress,” “Cover-Up Maxi Dress,” and “Convertible Cover-Up
Dress.”6 Similarly, webpages from show items identified as “Laddder-
Back Maxi Dress Cover-Up” [sic], “Tie-Dyed Handkerchief Hem Cover-Up Dress,”
“Peasant Dress Cover-Up,” “Swing Dress Cover-Up,” “Canopy Cover-Up Dress,” and
“Lattice-Back Cover-Up Dress.”7 See also web pages from ,
demonstrating various ways to tie a scarf so that it “can double as a beach cover-up,
also known as a ‘sarong’ or ‘pareo’ ….”8
The goods discussed above are similar in nature to the extent that they are
articles of women’s apparel and the evidence shows that they serve similar
purposes, may be used as substitutes for each other, and may even be considered

4 Applicant’s brief, 12 TTABVUE 23.
5 Examining Attorney’s brief, 14 TTABVUE 10.
6 Office Action of September 12, 2016 at 54-55.
7 Id. at 77, 79-81.
8 Id. at 40-49.
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the same type of clothing. This is sufficient to persuade us that at least some of
Applicant’s goods are commercially related to some of Registrant’s goods.
Applicant’s contention that its goods differ because they “are marketed to men who
love the surf and beach” is unavailing. Neither Applicant’s nor Registrant’s
identification of goods is limited to items intended for sale to either men or women,
and Applicant’s goods clearly include clothes that are traditional women’s apparel,
including “dresses” and “skirts.” We find that the du Pont factor of the similarity or
dissimilarity of the goods weighs in favor of a finding of likelihood of confusion.
(c) Customers.
There is little direct evidence regarding the classes of customers for the goods at
issue. However, all of the goods are common apparel items that would be offered to
ordinary consumers. Although Applicant’s advertisements describe its goods as “a
brand for men who love the beach” and “men who have outgrown their favorites
from their past,”9 that characterization is too narrow, because Applicant’s identified
goods are not limited to apparel for men, and actually include apparel for women as
well. We must assume that the goods of both Applicant and Registrant are available
to all classes of customers for those goods, see Paula Payne Products Co. v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77-78 (CCPA 1973), and clearly both
sets of goods would typically be offered to a wide range of ordinary consumers, both
male and female. We conclude that these customer classes overlap.

9 Applicant’s response of February 15, 2016 at 14.
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We must also consider Applicant’s and Registrant’s goods to include all goods of
the type identified. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co.,
719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013). The identifications at issue
in this case are not limited to particularly expensive goods. In fact, the evidence
shows that at least some of the identified goods are quite modest in price. See, e.g., a
beach dress offered for $14.99, a cover up offered for $10.76 - $12.36, and Fringe Top
Bikini Swimwear offered for $10.00 - $15.99.10 Customers would use only ordinary
care in selecting such goods. Accordingly, we find that the du Pont factor of the
conditions of sale and the buyers to whom sales are made favors a finding of
likelihood of confusion.
(d) Trade channels.
The Examining Attorney has submitted evidence to show that dresses and
coverups are offered side-by-side on the Nordstrom’s website;11 that dresses and
swimwear are offered together on the website;12 and that dresses,
skirts, swimwear and coverups are offered together on the Macy’s website.13 As we
assume that the goods of Applicant and Registrant move in all channels of trade
normal for the identified goods, see Paula Payne Products Co., 177 USPQ at 77-78,
the evidence of record is sufficient to confirm that the various apparel items of

10 Office Action of September 12, 2016 at 35.
11 Id. at 54-63.
12 Id. at 65-67.
13 Id. at 74-81.
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Applicant and Registrant move through the same trade channels. Therefore, the du
Pont factor of trade channels favors of finding of likelihood of confusion.
(e) Absence of actual confusion.
Applicant contends that its mark has been in use since 2012 in coexistence with
Registrant’s mark, without any reported confusion.14 This contention is not
supported by any evidence regarding the extent to which Applicant has used and
promoted its mark, or the extent of use of Registrant’s mark. On this record we
cannot determine whether there have been meaningful opportunities for actual
confusion to occur in the marketplace. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). “A showing of actual confusion would of
course be highly probative, if not conclusive, of a high likelihood of confusion. The
opposite is not true, however. The lack of evidence of actual confusion carries little
weight, especially in an ex parte context.” In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (internal citation omitted). The
uncorroborated and unsworn statement of counsel in Applicant’s brief is of no
evidentiary value. Accordingly, the du Pont factor of the length of time during and
conditions under which there has been contemporaneous use without evidence of
actual confusion is neutral.

14 Applicant’s brief, 12 TTABVUE 25.
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(f) Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. The marks are
similar in commercial impression; the goods are related and are marketed to the
same classes of customers through the same channels of trade. Overall, we find that
Applicant’s mark, as used on Applicant’s goods, so resembles the cited registered
mark as to be likely to cause confusion or mistake or to deceive.
Decision: The refusal under Section 2(d) is affirmed.