Dexter Joyner

Trademark Trial and Appeal Board

Aug 11, 2017

No. 86775096 (T.T.A.B. Aug. 11, 2017)

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB

Mailed: August 11, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re Joyner
________

Serial No. 86775096
_______

Eugene Beliy of Breanlaw, LLC
for Dexter Joyner.

Linda M. Estrada, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
_______

Before Quinn, Wolfson, and Gorowitz,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Dexter Joyner (“Applicant”) filed an application to register on the Principal
Register the mark shown below

Serial No. 86775096

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for “caps; hats; jackets; jeans; shorts; sweaters; T-shirts; tank tops” in International
Class 25.1 The application includes the following description of the special form mark:
“The mark consists of the stylized letters ‘NAF.’ Color is not claimed as a feature of
the mark.”
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, when
used in connection with Applicant’s goods, so resembles the previously registered
mark NAF NAF (in standard characters) for “leather and imitation leather goods,
namely, handbags, shoulder bags, game bags, namely, athletic bags, all-purpose sport
bags, bags and holdalls for sport clothing, wallets, change purses, pouches” in
International Class 182 as to be likely to cause confusion.3
When the Examining Attorney issued a final refusal, Applicant appealed and
requested reconsideration. The request for reconsideration was denied. Applicant and
the Examining Attorney filed briefs.
Applicant argues that the marks are different in appearance, stating that
Applicant’s mark utilizes a “highly stylized cursive script, which blends the individual

1 Application Serial No. 86775096, filed October 1, 2015 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), alleging first use anywhere and first use in commerce on January
1, 1983.

2 Registration No. 3671625, issued August 25, 2009; Section 8 declaration accepted. The
registration also includes goods in Classes 3 and 9, but the Examining Attorney did not base
the refusal on these goods.

3 The Examining Attorney also refused registration based on a second registration, which
was owned by the same Registrant. However, Registration No. 3249791 for the mark NAF
NAF (in standard characters) for clothing items was cancelled on December 17, 2015.
Accordingly, this refusal was deemed moot.
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letter-forming lines into each other”; and that his stylized mark “is deliberately more
difficult to read than a standard character mark, as some of the letters resemble
others, and consumers may consequently infer that the letters J, M, or E have some
significance in addition to N, A, and F.” 4 TTABVUE 7-8. Applicant further contends
that the marks are different in sound, with the element of repetition in the cited mark
being central to how it would be spoken. According to Applicant, his mark is an
abbreviation for “Navidad Arabian Farm,” and acts as a secondary source of the cattle
brand used in connection with his farm. Applicant also points to the differences
between the goods, which he contends are non-competitive and non-related. In
support of his arguments, Applicant submitted one of his business cards, and a
webpage from Registrant’s website. (July 21, 2016 Response to Office Action).
Applicant also introduced a printout of the results of a search retrieved from the
Trademark Electronic Search System (TESS). (October 25, 2016 Request for
Reconsideration).
The Examining Attorney maintains that both marks feature the letters NAF as
the dominant literal element and, because the cited registration shows the mark in
standard characters, Registrant’s mark could be presented in the same manner of
display. As to sound, the Examining Attorney asserts that Applicant has merely
deleted the repeated term, and that while the marks sound differently to that extent,
this slight difference is insufficient to distinguish the marks. As to the goods, the
Examining Attorney contends that clothing and leather bags are related and
commonly move in the same trade channels. In support of the refusal, the Examining
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Attorney submitted copies of third-party registrations (August 20, 2016 Office
Action); and portions of third-party websites (January 23, 2016 and August 20, 2016
Office Actions, and November 29, 2016 Denial of Request for Reconsideration).
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). 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). Each case must be
decided on its own facts and any one du Pont factor may play a dominant role in the
determination of likelihood of confusion. Champagne Louis Roederer S.A. v. Delicato
Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460-61 (Fed. Cir. 1998).
As to the second du Pont factor regarding the similarity of the goods, the goods
do not have to be identical or even competitive for confusion to be likely. “[L]ikelihood
of confusion can be found ‘if the respective goods 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.’” 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)). “The goods
need only be sufficiently related that consumers would be likely to assume, upon
encountering the goods under similar marks, that the goods originate from, are
sponsored or authorized by, or are otherwise connected to the same source.” In re
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Davia, 110 USPQ2d 1810, 1815 (TTAB 2014) (citing Coach Servs., Inc.). See Recot,
Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven
if the goods in question are different from, and thus not related to, one another in
kind, the same goods can be related in the mind of the consuming public as to the
origin of the goods.”). The issue here, of course, is not whether purchasers would
confuse the goods, 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).
In comparing the goods, we must look to the goods as identified in the application
and the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (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). Applicant’s
identification of goods reads “caps; hats; jackets; jeans; shorts; sweaters; T-shirts;
tank tops”; Registrant’s goods are identified as “leather and imitation leather goods,
namely, handbags, shoulder bags, game bags, namely, athletic bags, all-purpose sport
bags, bags and holdalls for sport clothing, wallets, change purses, pouches.”
Where, as here, there are no limitations in the identification of goods in either
the application or the cited 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
Serial No. 86775096

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(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).
Although Applicant’s clothing items and Registrant’s leather and imitation
leather goods are specifically different, the record includes evidence that they are
related, complementary goods for purposes of the likelihood of confusion
determination. 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) (finding women’s shoes and women’s pants, blouses, shorts and jackets
complementary because shoes must match or contrast with an ensemble, and such
goods are frequently purchased in a single shopping expedition). The Examining
Attorney’s evidence bearing on the relatedness of the goods includes copies of several
subsisting, use-based third-party registrations, which individually cover, under the
same mark, the types of goods in Classes 18 and 25 involved herein. These goods
include clothing items, such as jackets, jeans, shorts and shirts on the one hand, and
handbags, wallets and the like on the other. The registrations include the following:
Reg. No. 2308468 for GUESS?; Reg. No. 3986483 for LIZ LUXE; Reg. No. 3086192 for
DKNY DONNA KARAN NEW YORK; Reg. No. 4118271 for TALBOTS Reg. No.
4264948 for BLOCK HEADWEAR and design; Reg. No. 4342683 for EDDIE BAUER;
Reg. No. 4559716 for MARC BY MARC JACOBS; Reg. No. 4935633 for J. CREW and
design; Reg. No. 4990272 for VELVET BY GRAHAM & SPENCER; and Reg. No.
Serial No. 86775096

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4745262 for TOMMY HILFIGER and design. (August 20, 2016 Office Action). “Third-
party registrations which cover a number of differing goods and/or services, and
which are based on use in commerce, although not evidence that the marks shown
therein are in use on a commercial scale or that the public is familiar with them, may
nevertheless have some probative value to the extent that they may serve to suggest
that such goods or services are of a type which may emanate from a single source.” In
re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d
149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
86 (TTAB 1993).
The Examining Attorney also introduced portions of third-party websites of
online retailers showing that the same retailer sells both clothing and handbags,
wallets and the like under the same mark, allowing consumers to complete their
fashion ensemble in one shopping visit: landsend.com; jcrew.com; llbean.com;
ralphlauren.com; bananarepublic.com; toryburch.com; luckybrand.com; oldnavy.com;
anntaylor.com; stetson.com; levi.com; ae.com; abercrombie.com; and coach.com.
(January 23, 2016 and August 20, 2016 Office Actions, and November 29, 2016 Denial
of Request for Reconsideration).
We recognize that some of the third-party evidence involves fashion designer
names or fashion house brand names, but this is not surprising given the nature of
the goods herein. Nevertheless, the totality of the evidence shows that clothing,
leather/imitation leather handbags, wallets and the like may emanate from the same
entity under the same mark.
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Applicant dismisses the Examining Attorney’s evidence bearing on the
relatedness of the goods by way of a TESS summary. The search results consist of
two lists: one identifying “161863 records” purporting to contain marks in
International Class 25 only; and the second identifying “15761” records” of marks
allegedly registered in both International Class 25 and International Class 18. Both
lists contain only the registration number, mark, and status of the registration
(“live”), and each list contains 17 non-overlapping registrations.4 Applicant’s
argument goes as follows (he refers to the lists as evidence from “the USPTO X-Search
database”):
There is no substantial overlap between these classes of
goods. Applicant [submitted] evidence from the USPTO X-
Search database showing that dual-use registrations for
goods in both IC 025 and 018 account for only 15,761 of all
161,863 registrations for goods in IC 025, an overlap of less
than ten percent. Only a very small percentage of
registrants using a mark for goods in IC 025 also use the
mark for goods in IC 018. Indeed, the small number of such
dual-use registrations compared to the overwhelming
number of total registrations suggests that it is very
uncommon for goods in both classes to share the same
trademark. Thus, the degree of overlap between the
sources of goods in IC 025 and 018 is de minimis and goods
associated with Applicant’s mark and the registered Mark
are not sufficiently related to support a finding of likelihood

4 The Examining Attorney objected to this evidence because Applicant only submitted a
representative list of registrations, without also submitting the actual third-party
registrations. We recognize that to make a registration properly of record, a copy of the
registration, and not just a list such as applicant's submission, must be filed. See In re Dos
Padres Inc., 49 USPQ2d 1860, 1861 n. 2 (TTAB 1998); In re Wada, 48 USPQ2d 1689, n.2
(TTAB 1998), aff'd., 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999). However, under the
circumstances of this case, including the point Applicant is attempting to establish by way of
the TESS summary numbers (as opposed to the registrations themselves), it is not necessary
that the registrations be of record. Accordingly, we have considered the TESS listings for
whatever probative value they may have. In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261,
1264, n.6 (TTAB 2011).
Serial No. 86775096

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of confusion.
4 TTABVUE 11

We have considered this evidence but find that it is not persuasive of a different
result. A ten percent overlap, accounting for over 15,000 instances when clothing and
leather goods are listed under the same mark, constitutes more than merely a de
minimis situation. Cf. In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059,
1063-64 (Fed. Cir. 2003) (it is uncommon for restaurants and beer to share the same
trademark, pointing to evidence showing that “even if all brewpubs, microbreweries,
and regional specialty breweries featured restaurant services, those establishments
would constitute only about 18 one-hundredths of one percent of all restaurants”).
Based on the record, we find that the goods are sufficiently related and
complementary to a degree that, if sold under similar marks, there is likely to be
confusion among consumers.
Under the third du Pont factor, we determine the similarity or dissimilarity of
the trade channels in which the respective goods are or would be marketed. Because
there are no limitations or restrictions as to trade channels or classes of purchasers
in either the application or the cited registration, we presume that the goods are
marketed in all normal trade channels for such goods and to all normal classes of
purchasers of such goods. See, e.g., Coach Servs., Inc., 101 USPQ2d at 1722. These
trade channels would include both brick-and-mortar stores, and online retail stores
featuring fashion items (as shown by the Examining Attorney’s evidence), including
clothing and leather accessory bags. Further, the same classes of purchasers,
including ordinary consumers, would buy these goods. Thus, the goods travel in the
Serial No. 86775096

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same trade channels to the same classes of purchasers. Accordingly, this du Pont
factor weighs in favor of a finding of likelihood of confusion.
As to conditions of sale, there is no indication in the identifications of goods as to
the price point of either Applicant’s clothing or Registrant’s leather and imitation
leather goods. Thus, the goods are presumed to include such goods that are relatively
inexpensive. “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., 54 USPQ2d at 1899;
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.
With respect to the first du Pont factor regarding the similarity of the marks, we
must compare the marks in their entireties as to appearance, sound, connotation and
commercial impression. Palm Bay Imps. Inc., 73 USPQ2d at 1691 (quoting In re E. I.
du Pont de Nemours & Co., 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., 101
USPQ2d at 1721 (citation omitted). It is not a necessary prerequisite for a finding of
likelihood of confusion that marks be found similar in all respects, that is, in sight,
sound, meaning and commercial impression; a likelihood of confusion may be found
principally on similarity in one or two of these. See, e.g., In re Sarkli, Ltd., 721 F.2d
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353, 220 USPQ111, 113 (Fed. Cir. 1983) (“the [USPTO] may reject an application ex
parte solely because of similarity in meaning of the mark sought to be registered with
a previously registered mark”); Coach Servs., Inc., 96 USPQ2d at 1608-09 (“The
similarity of the marks in regard to one of these factors can be critical to a finding of
similarity.”), aff’d, 101 USPQ2d 1713.
The appropriate emphasis is on the recollection of the average customer, who
normally retains a general rather than a specific impression of trademarks or service
marks. Spoons Restaurants, Inc. v. Morrison, Inc., 23 USPQ2d 1735, 1741 (TTAB
1991) (citations omitted), aff’d., No. 92-1086 (Fed. Cir. June 5, 1992). See Franklin
Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981); Inter
IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014). As previously
stated, the average purchasers include ordinary consumers who buy clothing,
handbags and the like.
Because the cited mark is presented in standard characters, Registrant is not
limited to any particular depiction of its mark. Cunningham v. Laser Golf Corp., 222
F.3d 943, 950, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); In re Cox Enters., 82 USPQ2d
1040, 1044 (TTAB 2007). The rights associated with its mark in standard characters
reside in the literal letters and not in any particular display. In re White Rock
Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009). Thus, Registrant is entitled to
all depictions of its standard character mark regardless of the font style, size, or color,
and not merely “reasonable manners” of depicting such mark. See In re Viterra Inc.,
671 F.3d 1358, 1364-65, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012); Citigroup Inc. v.
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Capital City Bank Group, Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir.
2011). Therefore, Applicant cannot, by presenting its mark in special form, avoid
likelihood of confusion with the cited mark that is registered in standard characters
because the registered mark presumably could be used in the same manner of display.
See, e.g., Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir.
1983); In re RSI Sys., LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Melville Corp.,
18 USPQ2d at 1388; In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB
1988).
Accordingly, even recognizing that Applicant’s letter mark is highly stylized,
nevertheless we are constrained by case law to find that the marks are similar in
appearance because the cited mark may be used in the same manner of display;
simply put, both marks share the letters NAF. Further, the marks are similar in
sound (whether the letters are spoken individually as an abbreviation or collectively
as an acronym), both comprising the letters NAF, with a repetition of the same sound
in the cited mark; when the identical portion is repeated, the marks NAF and NAF
NAF are still very similar in sound. See In re Viterra Inc., 101 USPQ2d at 1912.
A significant point raised by Applicant is, of course, the highly stylized nature of
the letter combination comprising Applicant’s mark and its impact on the commercial
impression of the mark. To our eye, Applicant’s mark is likely to be readily perceived
as comprising letters, even though the mark may be discerned as a representation of
letter combinations other than NAF. However, it is more likely than not, and
certainly within the realm of reason, that consumers will see the letters NAF in
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Applicant’s mark, which is how Applicant describes his mark. The mark appears in
the style of a cattle brand, and with the description of the mark, Applicant himself
considers the letters NAF to be readily discernable within his mark. Because
Applicant has specified the letters NAF, it is likely that customers of his clothing will
also perceive the letters NAF.5 Indeed, as Applicant acknowledges, the letter
combination comprises an acronym for the name of his farm, Navidad Arabian Farm.
In this connection, we note Applicant’s business card as shown below (July 21, 2016
Response to Office Action):

Thus, Applicant himself, being in the best position to know, describes his mark
as the letters NAF, and not any of the other letter combinations that may be
perceived; moreover, the letters form an acronym for the name of his farm. Although

5 In saying the above, we recognize the guidance set forth on this point in TMEP § 808.02
(April 2017):
A description cannot be used to restrict the likely public
perception of a mark. A mark’s meaning is based on the
impression actually created by the mark in the minds of
consumers, not on the impression that the applicant states the
mark is intended to convey. However, an examining attorney
may defer to the applicant’s phrasing of a description, so long as
the description is accurate and complete. For example, if an
element in a mark could reasonably be characterized in more
than one way, the examining attorney should accept the
applicant’s selection of one characterization over the other in the
description.
In the present case, there is no doubt that Applicant’s description of his mark as the letters
NAF is “accurate and concise.”
Serial No. 86775096

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certainly not conclusive of the likely perception among consumers of the commercial
impression of Applicant’s mark, Applicant’s own description of his mark, coupled with
how it may be actually encountered by purchasers, is of some significance in
determining the likelihood of confusion with Registrant’s mark. As our primary
reviewing court has stated:
Ordinarily, for a word mark we do not look to the trade
dress, which can be changed at any time. Vornado, Inc. v.
Breuer Electric Mfg. Co., 390 F.2d 724, 156 USPQ 340, 342
(CCPA 1968). But the trade dress may nevertheless
provide evidence of whether the word mark projects a
confusingly similar commercial impression.

Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1458
(Fed. Cir. 1992). See Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d
669, 223 USPQ 1281, 1284 (Fed. Cir. 1984). In the present case, the mark as shown
on the business card would readily generate a commercial impression to the effect
that the letters are NAF, thereby producing a likelihood that buyers would assume a
common source for Applicant’s clothing and Registrant’s leather/imitation leather
goods. Although Applicant’s mark has a meaning relating to the name of Applicant’s
farm, there is no evidence to suggest an inherent or apparent meaning of the cited
mark.
The similarities in appearance and sound outweigh any difference in the marks’
meanings. These similarities result in marks that engender similar overall
commercial impressions. The similarity of the marks is a factor that weighs in favor
of a finding of likelihood of confusion.
Serial No. 86775096

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We also note, under the sixth du Pont factor, that the number and nature of
similar marks in use on similar goods may play a role in the likelihood of confusion
determination. However, in this regard, the record is devoid of evidence of any third-
party uses or registrations of the same or similar marks in the fashion field,
specifically with respect to handbags and the like, and clothing. See In re Mr. Recipe,
LLC, 118 USPQ2d 1084, 1088-89 (TTAB 2016) (comparing insufficient evidence (one
third-party registration) with situations involving a “considerable” or “extensive”
number of such registrations, citing Jack Wolfskin Ausrustung Fur Draussen GmbH
& Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129,
1135-36 (Fed. Cir. 2015) and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1674 (Fed. Cir. 2015)).
We have considered all of the evidence made of record pertaining to the likelihood
of confusion factors, as well as all of the arguments related thereto, including any
evidence or arguments not specifically discussed in this opinion. Because the marks
are similar, the goods are related, the channels of trade and consumers are identical,
and the goods are subject to impulse purchase, we find, after considering the relevant
du Pont factors, that confusion is likely between the marks. Lastly, to the extent that
any of the points raised by Applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior registrant. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); In re Martin’s Famous
Pastry Shoppe, Inc., 223 USPQ at 1290-91.
Serial No. 86775096

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We conclude that consumers familiar with Registrant’s leather and imitation
leather handbags, wallets and the like sold under the mark NAF NAF in standard
characters are likely to mistakenly believe, upon encountering Applicant’s mark
for clothing items, that the goods originate from or are associated with or
sponsored by the same entity.
Decision: The refusal to register is affirmed.