Excelled Sheepskin & Leather Coat Corp. and Rogue Apparel Group, Inc.v.Rock & Rogue, LLC

Trademark Trial and Appeal Board

Sep 7, 2018

No. 91218390 (T.T.A.B. Sep. 7, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 7, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Excelled Sheepskin & Leather Coat Corp. and Rogue Apparel Group, Inc.
v.
Rock & Rogue, LLC
_____

Opposition No. 91218390
_____

Stephen L. Baker and John M. Rannells of Baker and Rannells PA,
for Excelled Sheepskin & Leather Coat Corp. and Rogue Apparel Group, Inc.
Kevin J. Keener of Keener & Associates PC,
for Rock & Rogue, LLC.
_____

Before Wellington, Greenbaum and Lynch,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Applicant, Rock & Rogue, LLC, seeks registration of the mark
for “Hats; Jackets; Pants; Shirts; Shorts; Sweatshirts:
Underwear,” in International Class 25 on the Principal Register.1

1 Application Serial No. 86161394 was filed on January 9, 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, with the following description of the mark: “The mark consists of the stylized
word “Rock” outlined in white and black followed by the lower case word “and” followed by
Opposition No. 91218390
- 2 -

Opposers, Excelled Sheepskin & Leather Coat Corp. and Rogue Apparel Group,
Inc., have opposed registration of Applicant’s mark on the ground that, as applied to
Applicant’s goods, the mark so resembles Opposers’ previously used and registered
ROGUE and ROGUE-formative marks for footwear and various clothing, including
jackets, shirts, and pants, as to be likely to cause confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d).2 By its answer, Applicant denies the salient
allegations.
I. Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of the application subject to the notice of
opposition.
In addition, Opposers submitted notices of reliance on (1) TSDR printouts of
Opposers’ four pleaded ROGUE and ROGUE-formative marks,3 (2) printouts from

the stylized word “Rogue” where the white letters are outlined in black and the letters “u”
and “e” are underscored.” Color is not claimed as a feature of the mark. The application also
identifies “Art galleries” in International Class 35, but they are not the subject of this
opposition.
2 Opposers’ claims of likelihood of confusion under Section 2(d) based on Opposers’ common
law use, and of deception and false suggestion of a connection with Opposers under Section
2(a) of the Trademark Act, 15 U.S.C. § 1125(a), are deemed waived because Opposers did not
pursue them at trial. See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba
Watermark Cruises, 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 F. App’x 900
(Fed. Cir. 2014).
3 14 TTABVUE. The pleaded marks are: (1) Reg. No. 2790074 for the mark ROGUE
LEATHER BY REILLY OLMES for “Men’s, women’s and children’s clothing made in whole
or in substantial part of leather, namely, coats, vests, shirts and pants” in International Class
25, issued on December 9, 2003, renewed; (2) Reg. No. 3260143 for the mark ROGUE for
“footwear” in International Class 25, issued on July 10, 2007, renewed; (3) Reg. No. 3346559
the mark ROGUE for “men’s, ladies’ clothing, namely, coats, jackets, vests, shirts and pants;
children’s clothing, namely, coats, jackets, vests, shirts” in International Class 25, issued on
December 4, 2007, renewed; and (3) Reg. No. 3945523 for the mark ROGUE STATE for
Opposition No. 91218390
- 3 -

the TESS and TTABVUE databases, with an accompanying chart, showing 22
oppositions and cancellations brought by Opposers against ROGUE-formative
marks,4 and (3) Applicant’s supplemental responses to two interrogatories concerning
Applicant’s use (or nonuse) of its mark.5
Applicant filed no testimony or other evidence.
II. Standing and Priority
Because Opposers have made their pleaded registrations properly of record,
Opposers have established their standing to oppose registration of Applicant’s mark,
and priority of use is not in issue with respect to the registered marks vis-à-vis the
applied-for mark. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982); and King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974).

“men’s, ladies’ and children’s clothing, namely, coats, jackets, vests, shirts and pants” in
International Class 25, issued on April 12, 2011, Section 8 Affidavit accepted, Section 15
Affidavit acknowledged. All of the marks are in standard characters or typed form. Prior to
November 2, 2003, “standard character” drawings were known as “typed” drawings. TMEP
§ 807.03(i) (October 2017).
4 17 TTABVUE (correcting 15 TTABVUE).
5 16 TTABVUE.
Opposition No. 91218390
- 4 -

III. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). We discuss below these and other relevant factors.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant and of
record” need be considered).
In this case, we have based our Section 2(d) likelihood of confusion findings and
decision only on Opposers’ pleaded Registration No. 3346559 for the standard
character mark ROGUE, identifying “men’s, ladies’ clothing, namely, coats, jackets,
vests, shirts and pants; children’s clothing, namely, coats, jackets, vests, shirts” in
International Class 25. If we do not find likelihood of confusion on the basis of this
previously registered mark, we would not find a likelihood of confusion as to the
others. See, e.g., In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB
2016); In re Max Capital Grp., Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. Similarity of the Parties’ Goods and Channels of Trade
We begin with the du Pont factors involving the relatedness of the goods and the
similarity of channels of trade. We base our evaluation on the goods as they are
Opposition No. 91218390
- 5 -

identified in the application and registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1171 (Fed. Cir. 2014); Octocom Sys.
Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990).
In this case, the broadly worded “jackets,” “pants,” and “shirts” in the application
encompass, and therefore are legally identical to, the “men’s, ladies’” and “children’s”
“jackets” and “shirts,” and the “men’s” and “ladies’” “pants” identified in the
registration. See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB
2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily
encompasses Registrant’s narrowly identified ‘residential and commercial
furniture.’”). We need not discuss the remaining goods identified in the application
because likelihood of confusion must be found if confusion is likely with respect to use
of the mark on any item that comes within a particular class in the identification of
goods in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981). Further, given the legal 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 that
they are offered to the same potential purchasers (e.g., ordinary consumers). See In
re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally
identical goods are presumed to travel in same channels of trade to same class of
purchasers); 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
Opposition No. 91218390
- 6 -

purchasers are considered to be the same). Applicant does not address these factors
in its brief.
The second and third du Pont factors strongly favor a finding of likelihood of
confusion.
B. Strength of Opposers’ ROGUE mark
“In determining strength of a mark, we consider both inherent strength, based on
the nature of the mark itself, and commercial strength or recognition.” Bell’s Brewery,
Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017) (citing
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476
(TTAB 2014)); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681,
1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).”). In this case,
we consider only the conceptual strength of Opposers’ ROGUE mark, as Opposers
submitted no evidence regarding the commercial strength of the mark.
As noted above, Applicant submitted no testimony or other evidence. Therefore,
there is no evidence that the term “rogue” is anything other than arbitrary as applied
to clothing, nor is there evidence of use by third parties of similar marks on similar
goods. Rather, Opposers introduced evidence reflecting their efforts to monitor and
block any perceived third-party attempts to register marks that include the term
ROGUE for clothing and other Class 25 goods.6

6 17 TTABVUE.
Opposition No. 91218390
- 7 -

We find that Opposers’ ROGUE mark is conceptually strong.
C. The similarity or dissimilarity of the marks
Despite the overlap in the identification of goods and the conceptual strength of
Opposers’ mark, we find that confusion is not likely because of the crucial differences
between the marks. In comparing the marks, we are mindful that “[t]he 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.” In
re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017),
(quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1721 (Fed. Cir. 2012)) (internal quotation omitted). The 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) (quoting San Fernando Elec. Mfg. Co.
v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper
focus is on the recollection of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See St. Helena Hosp., 113 USPQ2d
at 1085; Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39,
40 (CCPA 1971).
We acknowledge that Applicant’s mark includes the
term ROGUE, which is Opposers’ mark. Opposers’ ROGUE mark connotes a
Opposition No. 91218390
- 8 -

“knavish” or “playfully mischievous” person.7 By contrast, we read Applicant’s mark
as a unitary phrase that brings to mind the common term “rock and roll,” connoting
the well-known style of music, with the added nuance from the term “rogue” that
perhaps the music is mischievous or playful. Thus, the connotation of Applicant’s
mark as a musical reference is very different from Opposers’ mark as a reference to
a person or a quality. When the marks are considered in their entireties, we find the
overall connotation and commercial impressions quite different, and sufficient to
outweigh any similarities in appearance or sound based on the common element. See
In re Nat’l Data Corp., 224 USPQ 749, 750-51 (Fed. Cir. 1985) (“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.” (citation 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).
The additional wording in Applicant’s mark also creates a difference in
appearance and sound. Because we view Applicant’s
mark as a unitary phrase, we disagree with Opposers’ contention that ROGUE is the

7 We take judicial notice of these definitions of the term “rogue” from dictionary.com, based
on the RANDOM HOUSE UNABRIDGED DICTIONARY (2018), accessed September 6, 2018. The
Board may take previous judicial notice of dictionary definitions, including online
dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4
(TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
Opposition No. 91218390
- 9 -

dominant term in Applicant’s mark. In particular, while Opposers may be correct in
that “[t]he ROGUE portion of Applicant’s mark is reminiscent of a ransom note,” we
do not agree that “[t]he unusual and threatening stylization makes the ROGUE
portion jump out and dominate the mark as a whole.”8 Rather, both terms “ROCK”
and “ROGUE” appear in roughly equal size in Applicant’s mark, and in entirely
different and memorable fonts, such that even if we did not find Applicant’s mark to
be unitary, we would not find either term to dominate the other. Moreover, there is
nothing in the record to support a finding that Applicant’s mark would be perceived
as a variant of Opposers’ ROGUE mark, as Opposers contend.9
The authority is legion that “when marks would appear on virtually identical
goods or services, the degree of similarity necessary to support a conclusion of likely
confusion declines.” In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260
(Fed. Cir. 2010) (citing Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d
874, 23 USPQ2d 1698 (Fed. Cir. 1992)). However, in this case, Applicant’s mark is so
different from Opposers’ mark that even when they are used on in-part identical
goods, confusion is unlikely. “No mechanical rule determines likelihood of confusion,
and each case requires weighing of the facts and circumstances of the particular
mark.” Mighty Leaf Tea, 94 USPQ2d at 1259.
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

8 28 TTABVUE 11.
9 Id. at 12.
Opposition No. 91218390
- 10 -

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 DuPont 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, 1460 (Fed. Cir. 1998) (“[O]ne DuPont 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
case, a single duPont 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 Bakery 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 in this case is the
dissimilarity in commercial impression between the marks”). When we consider the
marks in their entireties, we find that the differences between Applicant’s mark and
Opposers’ mark are substantial, and certainly sufficient to distinguish them.
Opposition No. 91218390
- 11 -

D. Conclusion
Having carefully considered all of the evidence and arguments bearing on the
relevant du Pont factors, we conclude that Opposers have not carried their burden to
establish, by a preponderance of the evidence, that Applicant’s
mark so resembles Opposers’ registered ROGUE mark
as to be likely to cause confusion, mistake or deception, when used on the clothing
identified in the application and registration.
Decision: The opposition is dismissed.