Dong-jun Moon

Trademark Trial and Appeal Board

Aug 9, 2017

No. 86553898 (T.T.A.B. Aug. 9, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 9, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Moon
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Serial No. 86553898
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Otto O. Lee and Kevin Viau of Intellectual Property Law Group LLP for Dong-jun
Moon.

Stephanie Rydland, Trademark Examining Attorney, Law Office 117 (Hellen Bryan
Johnson, Managing Attorney).
_____

Before Kuhlke, Masiello, and Pologeorgis, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Dong-jun Moon (“Applicant”) filed an application for registration on the Principal
Register of the mark LILFANT in standard characters for:
Bottles for beverages sold empty; Household containers
for foodstuffs; Cooking pots; Cups; Dishes; Frying pans;
Lunch boxes; Saucers; Table plates; Teapots, in
International Class 12.1

1 Application Serial No. 86553898 was filed on March 4, 2015 under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b), on the basis of Applicant’s alleged bona fide intention to
use the mark in commerce.
Serial No. 86553898

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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
LITTLEPHANT as to be likely to cause confusion, or to cause mistake, or to deceive.
The cited mark is registered in standard characters for goods in International
Classes 3, 9, 14, 16, 18, 20, 21, 24, 25, and 28, including, notably, the following:
Plastic and porcelain storage containers and boxes for
household and kitchen use; drinking glasses, namely,
tumblers; mugs; plates made of porcelain, clay, laminates
and plastic; bowls; trays, namely, meal trays and serving
trays; cake moulds; mats, not of paper, other than table
linen, namely, coasters; coffee services; dishes; cutting
boards for the kitchen; drinking bottles sold empty; food
boxes in the nature of bread boxes, sandwich boxes and
boxes for sugar, flour, pasta and dry foodstuff and lunch
boxes, in International Class 21.2
When the Examining Attorney made his refusal final, Applicant appealed to this
Board and filed a request for reconsideration. The Examining Attorney denied the
request for reconsideration and this appeal proceeded. The case is fully briefed.
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. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant and the Examining

2 Reg. No. 4697582, issued March 10, 2015.
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Attorney have also presented evidence and arguments regarding trade channels,
sophistication of customers, and the strength of the cited mark.
(a) The goods.
We first 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). The application and the registration both cover “dishes” and
“lunchboxes”; thus, to this extent, the goods at issue are identical. We also note that
the following goods of Applicant and Registrant are, essentially, identical goods
described in slightly different words:
Applicant’s Goods Registrant’s Goods
bottles for beverages sold empty drinking bottles sold empty
household containers for foodstuffs food boxes in the nature of bread boxes,
sandwich boxes and boxes for sugar,
flour, pasta and dry foodstuff

Plastic and porcelain storage containers
and boxes for household and kitchen use

cups mugs

We need not find similarity as to each and every product listed in the application
and registration. For purposes of our analysis, it is sufficient that relatedness be
established for any item encompassed by the identification of goods in a particular
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class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Accordingly, we find that the goods at
issue are identical in part and legally identical in part; and the du Pont factor
regarding the similarity or dissimilarity of the goods weighs in favor of a finding of
likelihood of confusion.
(b) Trade channels.
Because the parties’ goods are identical (or legally identical), in part, we must
presume that they move through the same channels of trade and are sold to the
same classes of purchasers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012); American Lebanese Syrian Associated Charities Inc. v. Child
Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
Applicant’s contention that Registrant’s goods are offered “primarily on
[Registrant’s] own website,” and that Applicant’s goods would never be found on
that website,3 is unavailing. There are no limitations as to channels of trade in the
identifications of goods in the registration and application, and we must therefore
presume that the goods move in all channels of trade that are normal for such
goods. See Octocom, 16 USPQ2d at 1787; Paula Payne Products Co. v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); In re Linkvest S.A., 24
USPQ2d 1716, 1716 (TTAB 1992). This presumption requires that we consider that
Applicant’s marked goods would be found in all trade channels appropriate to

3 Applicant’s brief at 16, 8 TTABVUE 17.
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dishes, lunch boxes, beverage bottles, food containers, and cups, including the
channels used by Registrant for marketing those same goods. The du Pont factor
relating to the similarity of trade channels favors a finding of likelihood of
confusion.
(c) Customers; conditions of sale.
Applicant argues that its goods, such as teapots and plates, “are of a collectible or
keepsake nature,” and that customers for such goods are likely to be “[s]ophisticated
purchasers who buy the products with great care [and] would unquestionably know
the source of the goods …”4 This contention is unpersuasive. Applicant’s
identification of goods is not limited to collectibles and keepsakes, but includes
within its scope all types of the goods identified and in all relevant price ranges.
Moreover, the identified goods are all common consumer goods that would be
purchased by ordinary consumers, who would exercise only an ordinary degree of
care in selecting the goods. We therefore find the du Pont factor of customer care
and conditions of sale to be neutral.
(d) The marks.
We next 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

4 Applicant’s brief at 17, 8 TTABVUE 18.
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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).
In appearance, the marks have some similarities: both begin with the letters LI-
and end with the letters –ANT, and each has an internal letter L. However,
Registrant’s mark is four letters longer than Applicant’s mark, and includes the
letters TT and EPH, which are absent from Applicant’s mark. Applicant’s mark also
includes the letter F, which is absent from Registrant’s mark.
In sound, the marks are similar because the sound of LIL resembles an elided
pronunciation of the word LITTLE, and because –PHANT and –FANT would likely
be pronounced the same.
With respect to meaning and connotation, neither mark is an actual word, so
neither has a literal meaning. The Examining Attorney argues that the initial
portions of the marks, LIL- and LITTLE-, have the same meaning, and has
submitted evidence to show that LIL is understood as follows:
“Lil” is a kind of prefix and is the short form of “little”. It
is often spelled with an apostrophe as “Lil’” or “Li’l.”5
*****
A term meaning “little.” Most commonly used by rappers
for their rap names.6
*****

5 Wikipedia entry for “Lil,” Office Action of June 11, 2015 at 11.
6 Definition of “lil” from Urban Dictionary, id. at 12.
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“Lil” is a common shorthand for “little” and may be used
in text messages, online chat, and other areas. “I have to
talk to my parents 4 a lil while, call u in a few mins.”7
The Examining Attorney does not, however, attempt to assign a specific meaning or
connotation to the mark as a whole. She argues:
As the wording “PHANT” or “FANT” is coined, and has no
defined meaning, the public creates its commercial
impression through the combination of the known and
identically defined wording “LIL” or “LITTLE” and the
identically pronounced “PHANT” and “FANT.” The sound
of the two marks significantly contributes to the
commercial impression of the two marks as the public is
looking at two coined marks, not marks with any
definable meaning, and must create a new idea of what
the marks mean.8
Applicant agrees that both marks “have no meaning,” but argues:
Applicant’s mark connotes an infant or child (by alluding
to “infant”) while the Cited Mark alludes to and connotes
“elephant,” the large land animal.9
*****
Considering the constituent elements of Applicant’s Mark,
the mark gives the impression of children’s products. The
LILFANT mark also alludes to the French “l’enfant”
meaning child, again emphasizing the impression of the
mark of relating to children. The Cited Mark … imparts
to consumers a playful elephant … due to use of the term
“PHANT.”10
*****

7 Online slang entry for LIL, PC.net, id. at 13.
8 Examining Attorney’s brief, 10 TTABVUE 7-8.
9 Applicant’s brief at 10, 8 TTABVUE 11.
10 Id. at 12, 8 TTABVUE 5.
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Applicant’s “FANT” gives the impression of children,
while “PHANT” appearing in the cited mark gives the
impression of an elephant.11
We find that customers would likely have difficulty assigning any particular
connotation to either mark, but instead would find both marks, LILFANT and
LITTLEPHANT, puzzling as to their derivation or intended meaning. We are not
persuaded by Applicant’s suggestion that customers would recognize a clear
distinction between the suggestive meanings of –PHANT and –FANT, as neither of
these terms, as used in the respective marks, clearly refers to either “elephant” or
“infant.”12 Although there are specific differences in the way the two marks are
spelled, we believe that the strong phonetic similarity between the marks will have
the effect of creating, among customers, similar overall commercial impressions.
The average purchaser normally retains a general rather than a specific impression
of trademarks and, therefore, 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); see also Johann Maria Farina Gegenuber Dem Julichs-Platz v. Chesebrough-
Pond, Inc., 470 F.2d 1385, 176 USPQ 199, 200 (CCPA 1972). This factor may be
especially significant where the marks at issue are coinages that do not convey a

11 Applicant’s reply brief at 4, 13 TTABVUE 5.
12 Words other than “elephant” and “infant” include the relevant phonemes, including
triumphant, sycophant, phantom, hierophant, fantasy, and infantry. We note that there is a
web page of Registrant that includes an image of an elephant. (Applicant’s response of
October 3, 2016 at 24.) However, we must compare Applicant’s mark to the cited mark as
registered. The registered mark does not include an image of an elephant, nor is it limited
to display with elephant imagery. See Kimberly Clark Corp. v. H. Douglas Enterprises, Ltd.,
774 F.2d 1144, 1147, 227 USPQ 541, 543 (Fed. Cir. 1985) (“It is settled, however, that a
distinction in trade dress cannot weigh against likelihood of confusion with respect to the
registration of a simple word mark … The reason is that such dress might well be changed
at any time; only the word mark itself is to be registered.”)
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clear meaning to the customer. Overall, 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.
(e) Strength of Registrant’s mark.
Applicant argues that “[t]he ‘LITTLE’ and ‘PHANT’ elements appearing in the
Cited Mark here are diluted due to a high number of similar third party marks in
use with similar goods”; and that therefore “the Cited Mark is entitled to just a
narrow scope of protection which does not encompass Applicant’s Mark.”13 The gist
of Applicant’s argument is that “the … common prefix appearing in the Cited Mark
is weak, and the remaining matter appearing in the subject marks i[s] sufficiently
different to avoid confusion …”14 Applicant introduced copies of third-party
registrations to show that the terms LITTLE, LIL, PHANT and FANT have been
registered numerous times.15 Third-party registrations can be used to show the
sense in which a term is used in ordinary parlance and may show that a particular
term has descriptive or suggestive significance as applied to certain goods or
services. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1675 (Fed. Cir. 2015); Institut Nat’l Des Appellations D'Origine v. Vintners
Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992). However, such
registrations are not evidence that the marks therein are in use on a commercial
scale or that the public has become familiar with them. See Smith Bros. Mfg. Co. v.

13 Applicant’s brief at 13-14, 8 TTABVUE14-15
14 Applicant’s reply brief at 3, 13 TTABVUE 4.
15 Applicant’s response of October 3, 2016 at 43-231.
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Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973).
The registered marks shown in this evidence include the following wording:
ORANGE ELEPHANT HUMBLE ELEPHANT VIGNE DE L’ENFANT
JESUS

LEXOFANT L’ENFANT LUNE LITTLE ME

LITTLE DEBBIE LITTLE KIDS LITTLE GIANT

LITTLE LILY LITTLE FINGERS LIL’ DIPPERS

LIL RINSER LITTLE SQUIRT LIL’ GRIPPER

LITTLEMISSMATCHED L’IL STOPPER LIL’ DINER

LIL’ SAUCY LIL SORBETS LITTLES HELP

LITTLE LEGENDS LIL’ MELON LITTLE WISHES

LITTLE SQUIRTS LIL BUBBY LITTLE LULU

L’IL HELPERS LIL’ DIGZ LIL’ STARLIGHT
LITTLE BIGFOOT LIL’ HOLSTER LITTLE PINE

LITTLE SPROUT LITTLE MAKERS LITTLE AMERICA

The above registered marks indicate that the diminutive terms LITTLE and LIL
(and its variants L’IL and LIL’) have been incorporated into trademarks in order to
create a favorable impression of small size or endearment. As such, we consider
these terms to be somewhat weak, in themselves, as source indicators. However, the
evidence discussed above does not effectively demonstrate the suggestiveness or
weakness of the terms PHANT and FANT. The few examples of use of these terms
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as components of the recognized words “elephant” and “enfant” do not indicate
anything regarding the source-indicating potential of the phonemes PHANT and
FANT. Among the registrations, there is only one example of use of FANT
otherwise than as a component of a recognized word (LEXOFANT); and a single
registered mark obviously does not indicate that its components are weak.
In any event, the question before us is not whether the component parts of
Registrant’s mark are entitled to a broad scope of protection, but whether
Registrant’s mark as a whole is entitled to a broad scope of protection. The fact that
the term LITTLE is somewhat weak does not demonstrate, in this case, that
Registrant’s mark LITTLEPHANT is weak. The combination of LITTLE (a known
word) with PHANT (a non-word) is incongruous, resulting in a fanciful, coined term
that has no meaning, i.e., the strongest kind of trademark. See Abercrombie & Fitch
Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 765-6 (2d Cir. 1976). As we
have remarked above, customers are likely to find Registrant’s mark puzzling and
may find it difficult or impossible to derive any literal meaning from it. The mark
also does not relate to Registrant’s goods in any descriptive way; nor is it suggestive
of any feature or quality of the goods. We find Registrant’s mark to be inherently
strong and entitled to a broad scope of protection.16

16 The cases cited by Applicant are distinguishable, as they involved prior marks that were
weak as a whole. Omaha Nat’l Bank v. Citibank (South Dakota), N.A., 633 F. Supp. 231,
229 USPQ 51 (D. Neb. 1986) (BANK IN A BILLFOLD suggestive as a whole of credit card
services); Nabisco Brands, Inc. v. Quaker Oats Co., 547 F. Supp. 692, 216 USPQ 770 (D.N.J.
1982) (CREAM OF WHEAT); Nutri/System, Inc. v. Con-Stan Industries, Inc., 809 F.2d 601,
1 USPQ2d 1809 (9th Cir. 1987) (NUTRI/SYSTEM suggestive as a whole of weight-loss
products and services). In In re Digirad Corporation, 45 USPQ2d 1841 (TTAB 1998), the
Board found DIGIRAD not likely to be confused with DIGIRAY, based upon findings of
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(f) Balancing the factors.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. The goods at
issue are legally identical and it is presumed that they travel through the same
channels of trade to the same class of customers. The marks are partly similar in
appearance, similar in sound, alike in their lack of literal meaning, and similar in
overall commercial impression. Although the marks are not identical, when marks
would appear on identical goods, the degree of similarity necessary to support a
conclusion of likely confusion declines. Bridgestone Americas Tire Operations LLC v.
Federal Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012). Registrant’s
mark is inherently strong and is entitled to a broad scope of protection. Overall, we
find that Applicant’s mark, in the context of Applicant’s identified 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.

unrelated goods, knowledgeable customers, differences in the marks, and weakness of the
cited registered mark as a whole.