Evan Kanner

Trademark Trial and Appeal Board

Mar 9, 2017

No. 86818158 (T.T.A.B. Mar. 9, 2017)

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB

Mailed: March 9, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re Kanner
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Serial No. 86818158
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Michael E. Zall, Esq.
for Evan Kanner.

Amy Alfieri, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
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Before Quinn, Kuhlke, and Shaw,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Evan Kanner (“Applicant”) filed an application to register on the Principal
Register the mark TREAD LIGHTLY (in standard characters) for “beanies; clothing,
namely, T-shirts, hoodies, hats, shirts, beanies; graphic T-shirts; Henley shirts;
hooded sweat shirts; long-sleeved shirts; T-shirts” in International Class 25.1
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

1 Application Serial No. 86818158, filed November 12, 2015 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intention to use the mark in
commerce.
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applied to Applicant’s goods, so resembles the previously registered mark shown
below

(BABY disclaimed) for “hats; jackets; pajamas; pants; shirts; shoes; socks; wearable
blankets in the nature of blankets with sleeves” in International Class 252 as to be
likely to cause confusion. The registration includes a statement that the English
translation of “shinobi” in the mark is “ninja.”
When the refusal was made final, Applicant appealed. Applicant and the
Examining Attorney filed briefs.
The Examining Attorney maintains that the involved marks are likely to create
a similar commercial impression in the minds of consumers, given that they share
the identical wording TREAD LIGHTLY. Further, according to the Examining
Attorney, Applicant’s goods are subsumed within Registrant’s identification of goods.
Applicant, in his brief, “concedes that, although not identical, the goods of
Applicant’s Mark overlap with the goods of the Cited Mark.” 4 TTABVUE 7. As to the
marks, however, Applicant contends that the Examining Attorney “relies on an
inappropriate dissection of the cited mark word element Tread Lightly from the rest

2 Registration No. 4139856, issued May 8, 2012. The following statements appear in the
registration: “The mark consists of wording ‘SHINOBI BABY’ in stylized lettering with a
ninja star and heart for the letter ‘o’ in ‘SHINOBI’ and ‘SHINOBI FEET TREAD LIGHTLY’
in smaller stylized lettering. Color is not claimed as a feature of the mark.”
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of the complicated design mark, which includes a prominent design feature, other
word elements, and an overall stylized presentation.” 4 TTABVUE 11.
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 the 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). Moreover, any one
factor may control a particular case. M2 Software, Inc. v. M2 Commc’ns, Inc., 450
F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006). In the present case, neither
Applicant nor the Examining Attorney introduced any evidence during prosecution
of the application.3

3 Applicant, in his brief, referred to a Wikipedia listing for the word “ninja” (the webpage
itself was not submitted). Evidence submitted after the appeal may be considered by the
Board, despite its untimeliness, if the Examining Attorney does not object to the new
evidence, and discusses the new evidence or otherwise affirmatively treats it as being of
record. See In re Sadoru Group Ltd., 105 USPQ2d 1484, 1485 (TTAB 1484); TBMP § 1207.03
(Jan. 2017). The Examining Attorney did not treat the evidence as being of record.
Accordingly, we decline to consider it. Further, because Wikipedia entries are continuously
subject to change via collaborative user input, the Board does not take judicial notice of
definitions from Wikipedia. In re Jimmy Moore LLC, 119 USPQ2d 1764, 1768 (TTAB 2016).
Nevertheless, we have taken judicial notice of the meaning of the same word, “ninja,” as
shown by an acceptable source (see infra). The Examining Attorney, for her part, requested
that the Board take judicial notice of dictionary definitions regarding certain terms in the
identifications of goods. 6 TTABVUE 14-20. 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), including online dictionaries that
exist in printed format or regular fixed editions. In re White Jasmine LLC, 106 USPQ2d 1385,
1392 n.23 (TTAB 2013) (judicial notice taken of definition from Merriam-Webster Online
Dictionary). Accordingly, the request is granted.
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With respect to the second du Pont factor regarding the similarity of 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). Likelihood of confusion must be found if there
is likely to be confusion with respect to any item that comes within the identification
of goods in the application and cited registration. See Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple
Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
Applicant’s and Registrant’s goods are identical to the extent that both include
“hats” and “shirts,” and the remaining clothing items otherwise are closely related.
Given the identity of the goods in part, and the lack of restrictions in the application
and registration, we presume that the goods travel through the same channels of
trade (e.g., clothing stores) and are offered to the same potential purchasers (e.g.,
ordinary consumers). See In re Yawata Iron & 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); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028
(TTAB 2011); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). 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,
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the Board was entitled to rely on this legal presumption in determining likelihood of
confusion).
As to conditions of sale, there is nothing in the respective identifications of goods
to indicate a price point for the clothing. Thus, the clothing is presumed to include
items at all price points, including inexpensive clothing. See In re i.am.symbolic, llc,
116 USPQ2d 1406, 1413 (TTAB 2015). Ordinary consumers would be expected to
exercise nothing more than ordinary care in purchasing clothing items which can be
relatively inexpensive; indeed, such items may even be purchased on impulse. “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. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1899 (Fed. Cir. 2000); Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984).
The identity of the goods, trade channels and purchasers, as well as the conditions
of sale are factors that weigh in favor of a finding of a likelihood of confusion.
This bring us to a consideration of the first du Pont factor dealing with the
similarity of the marks. We must compare the marks TREAD LIGHTLY and
in their entireties as to appearance, sound, connotation and
commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting In
re E. I. du Pont de Nemours & Co., 177 USPQ at 567). “The proper test is not a side-
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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) (citation omitted). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. See Inter
IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014). “[S]imilarity is
not a binary factor but is a matter of degree.” In re St. Helena Hosp., 774 F.3d 747,
113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting In re Coors Brewing Co., 343 F.3d
1340, 68 USPQ2d 1059 (Fed. Cir. 2003)).
In comparing the marks, we are mindful that where, as here, the goods are
identical in part, the degree of similarity between the marks necessary to find
likelihood of confusion need not be as great as where there is a recognizable disparity
between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992); United Global Media Grp., Inc. v. Tseng, 112
USPQ2d 1039, 1049 (TTAB 2014); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104,
1108 (TTAB 2007).
Although identical goods are involved, the marks in their entireties are so
different that confusion is unlikely to occur in the marketplace. As to appearance,
Registrant’s mark is clearly dominated by the wording SHINOBI BABY (that
includes a heart within a star design), which is prominently displayed in large,
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stylized type, towering above the remainder of the mark below. The marks are
substantially dissimilar in appearance, notwithstanding the common TREAD
LIGHTLY element. In the cited mark, this wording is the very last portion of six
words divided into two lines, with the words TREAD LIGHTLY merely being part of
a sentence, SHINOBI FEET TREAD LIGHTLY, appearing in small letters. In sum,
Registrant’s mark clearly is dominated by the wording SHINOBI BABY, which
prominently appears in much larger size than the remainder of the mark, of which
TREAD LIGHTLY is only a portion thereof. In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985) (Although marks must be considered in their
entireties, it is settled that one feature of a mark may be more significant than
another, and it is not improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.).
Given the presence of SHINOBI BABY in the cited mark, the marks sound
completely different, but for the last two words of the cited mark. In remembering
and calling for Registrant’s goods, it is likely that consumers will focus on the
dominant portion SHINOBI BABY; the Examining Attorney has not given any reason
why consumers would ever use the SHINOBI FEET TREAD LIGHTLY portion when
calling for the goods. See Palm Bay Imps., Inc., 73 USPQ2d at 1692; L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012) (“purchasers in general are inclined
to focus on the first word or portion in a trademark”); Presto Prods., Inc. v. Nice-Pak
Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark
which is likely to be impressed upon the mind of a purchaser and remembered.”).
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As to meaning, the wording “tread lightly” means “to proceed carefully.”
(www.merriam-webster.com). As indicated in the registration, the English
translation of the word “shinobi” is “ninja,” which in turn means “a person trained in
ancient Japanese martial arts and employed especially for espionage and
assassinations.” Id.4 The prominent role that the word SHINOBI plays in
Registrant’s mark, including in the portion SHINOBI FEET TREAD LIGHTLY, gives
the mark an added meaning, namely that a “ninja baby” moves carefully or quietly
so as to sneak up or surprise someone.5 As noted above, the wording TREAD
LIGHTLY in Registrant’s mark is used just as part of a sentence to describe the action
of a “ninja baby,” rather than as a source identifier. On the other hand, Applicant’s
mark, comprised entirely of TREAD LIGHTLY, is likely to be perceived in the manner
of how the wording is commonly used and understood in the English language, that
is, as meaning “to proceed carefully.” The context of the wording is not indicated in
Applicant’s mark, so it may be perceived in a variety of ways, as for example, to go
forward carefully in your actions or speech, or to be careful to not impact your
environment in a negative way, etc. The notion of a “ninja baby” is completely absent
in Applicant’s mark. Thus, the marks convey different meanings.
Given the significant differences referenced above, the marks, when considered
in their entireties, engender very different overall commercial impressions. See In re

4 The Board takes judicial notice of the dictionary definitions of “tread lightly” and “ninja.”
5 In saying this, we note that neither Applicant nor the Examining Attorney took into account
that the word SHINOBI is Japanese, and considered whether American consumers would
even know that “Shinobi” translates into “ninja” in English. However, whether SHINOBI is
translated to “ninja” is not dispositive; the prominent role played by the word SHINOBI in
Registrant’s mark serves to distinguish it from Applicant’s mark.
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Nat’l Data Corp., 224 USPQ at 750-51 (“The basic principle in determining confusion
between marks is that the marks must be compared in their entireties … It follows
from that principle that likelihood of confusion cannot be predicated on dissection of
a mark, that is, on only part of a mark.” (citations omitted)). See also Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1134-35 (Fed. Cir. 2015).
In view of the substantial differences between the marks, this du Pont factor
weighs heavily against likelihood of confusion. Moreover, we find this factor to be
dispositive, in that even with the other relevant du Pont factors weighing in favor
of finding likelihood of confusion, this factor of the dissimilarities of the marks
simply outweighs the other factors. See Oakville Hills Cellar, Inc. v. Georgallis
Holdings, LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1290 (Fed. Cir. 2016) (“a single du
Pont factor may be dispositive in a likelihood of confusion analysis, especially when
that single factor is the dissimilarity of the marks”); Odom’s Tenn. Pride Sausage, Inc.
v. FF Acquisition, LLC, 600 F.3d 1343, 93 USPQ2d 2030, 2032 (Fed. Cir. 2010)
(“[E]ven if all other relevant du Pont factors were considered in [opposer’s] favor, as
the Board stated, the dissimilarity of the marks was a sufficient basis to conclude that
no confusion was likely.”); Champagne Louis Roederer S.A. v. Delicato Vineyards, 148
F.3d 1373, 47 USPQ2d 1459, 146-61 (Fed. Cir. 1998) (“[O]ne du Pont factor may be
dispositive in a likelihood of confusion analysis, especially when that single factor is
the dissimilarity of the marks.”); Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21
USPQ2d 1142, 1144-45 (Fed. Cir. 1991) (“We know of no reason why, in a particular
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case, a single du Pont factor may not be dispositive,” holding that “substantial and
undisputed differences” between two competing marks justified a conclusion of no
likelihood of confusion); Keebler Co. v. Murray Bakers Prods., 866 F.2d 1386, 9
USPQ2d 1736, 1739 (Fed. Cir. 1989) (agreeing with the Board that the “more
important fact for resolving the issue of likelihood of confusion … is the dissimilarity
in commercial impression between the marks”). Rather than consider Registrant’s
mark in a piecemeal fashion as done by the Examining Attorney, we have considered
it as a whole and, in doing so, find that the differences between this cited mark and
Applicant’s mark are substantial, and certainly sufficient to distinguish the marks.
In reaching our decision in this appeal, we have kept in mind that there is no per
se rule governing likelihood of confusion cases involving wearing apparel. See In re
British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984). Indeed, as often said, each case
must be determined on the particular facts. See, e.g., In re St. Helena Hosp., 113
USPQ2d at 1087. Under the facts of this case, because of the very different
appearance, sound, meaning and commercial impression of the marks, we find that
confusion is not likely between them, even when used in connection with identical
clothing items.
Decision: The refusal to register is reversed.