EZ, Inc.

Trademark Trial and Appeal Board

Dec 6, 2017

No. 86137343 (T.T.A.B. Dec. 6, 2017)

Mailed: December 6, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re EZ, Inc.
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Serial No. 86137343
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Michael Clerkin of Clerkin, Sinclair & Mahfouz, LLP,
for EZ, Inc.
Doritt Carroll, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
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Before Kuhlke, Hightower, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant EZ, Inc. seeks to register on the Principal Register the mark
EUROPAPI in standard characters for “hats, jackets, shirts, sweat shirts,
wristbands” in International Class 25.1 The application also identifies goods in
Class 18 that are not involved in this appeal.

1 Application Serial No. 86137343 was filed on December 6, 2013, based on Applicant’s
allegation under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), of first use anywhere
and use in commerce since June 15, 2010.
This Opinion Is Not a
Precedent of the TTAB

Serial No. 86137343
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The Trademark Examining Attorney has refused registration of the Class 25
goods under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark, as applied to the Class 25 goods identified in the application,
so resembles the previously registered mark PAPI as to be likely to cause confusion,
to cause mistake, or to deceive. The Examining Attorney cited three registrations for
the mark PAPI in standard characters, all registered on the Principal Register to the
same owner, for the following goods in International Class 25:
1. “Wearing apparel for men, namely, T-shirts, hats, undergarments, jogging
suits, warm up pants, sweat shirts, sweat shorts, swimwear, bathing suits,
beach and bathing coverups, tops, knit shirts, polo shirts, pullovers, vests,
tank tops, athletic footwear.”2
2. “Hosiery, socks, ties, underwear, boxers, briefs, neckties, loungewear,
pajamas, nightwear, robes, sleep pants, sleep shorts, baseball caps,
swimsuits, undershirts, shirts, zippered sweatshirts.”3
3. “Footwear; shoes, sandals; active wear, namely, shirts and shorts;
formalwear, namely, socks; pants, shorts, sleepwear, hats, belts, and
athletic wear, namely, T-shirts, shorts, warm-up pants, athletic support
underwear and swimsuits.”4
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. The appeal is fully briefed.
We affirm the refusal to register.

2 Registration No. 2161178, issued June 2, 1998; renewed. The mark PAPI is in typeset form.
Before Nov. 2, 2003, standard character drawings were known as typed drawings. A typed
mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (Oct. 2017).
3 Registration No. 3660872, issued July 28, 2009; §§ 8 and 15 combined declaration accepted
and acknowledged March 26, 2015. The registration contains the following translation
statement: “The English translation of ‘PAPI’ in the mark is papa.”
4 Registration No. 4292533, issued Feb. 19, 2013. The registration contains the following
translation statement: “The foreign wording in the mark translates into English as papa.”
Serial No. 86137343
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I. Evidentiary Objection
We first address the Examining Attorney’s objection to evidence Applicant
submitted for the first time with its appeal brief. 6 TTABVUE 6. As the Examining
Attorney correctly argues, evidence submitted with an appeal brief is untimely.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“The record in the application should
be complete prior to the filing of an appeal.”); see also, e.g., In re Jimmy Moore LLC,
119 USPQ2d 1764, 1767 (TTAB 2016). We therefore sustain the objection and have
given no consideration to the exhibits attached to Applicant’s appeal brief.
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. 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,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, 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, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the goods
and differences in the marks.”).
A likelihood of confusion may be found with respect to a particular class based on
any item within the identification of goods for that class. Tuxedo Monopoly, Inc. v.
Gen. Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Serial No. 86137343
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A. Similarity of the Goods, Channels of Trade, and Classes of Customers
We begin by considering the second and third du Pont factors, the similarity of the
goods, channels of trade, and classes of customers.
The Class 25 goods identified in the application are “hats, jackets, shirts, sweat
shirts, wristbands.” Applicant’s hats, shirts, and sweat shirts are identical or legally
identical to goods identified in each of the cited registrations. Specifically,
Registration No. 2161178 identifies “wearing apparel for men, namely, T-shirts, hats
. . . sweat shirts . . . knit shirts, polo shirts.” The goods identified in Registration
No. 3660872 include the identical “shirts” and legally identical “zippered
sweatshirts.” And Registration No. 4292533 covers “hats,” “active wear, namely,
shirts,” and “athletic wear, namely, T-shirts.” Applicant’s more broadly identified
hats, shirts, and sweat shirts encompass those of Registrant’s referenced goods that
are identified more narrowly (e.g., men’s hats, T-shirts, and zippered sweatshirts).
See, e.g., 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.’”). Thus,
goods identified in the application and each cited registration are identical or legally
identical, and the second du Pont factor weighs heavily in favor of finding a likelihood
of confusion.
Because there are no limitations as to channels of trade or classes of purchasers
in the description of goods in the subject application and the cited registrations, we
presume that Applicant’s and Registrant’s goods move in all channels of trade normal
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for such goods and are available to all potential classes of ordinary consumers. See
Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722
(Fed. Cir. 2012); In re Integrated Embedded, 120 USPQ2d 1504, 1515 (TTAB 2016).
Moreover, because goods described in the application and the cited registrations are
legally identical, we must presume that the channels of trade and classes of
purchasers are the same. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1518-
19 (TTAB 2016); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in
determining likelihood of confusion). In our likelihood of confusion analysis, these
findings under the third du Pont factor also strongly support a finding that confusion
is likely.
Applicant argues that its goods, unlike Registrant’s, are aimed at motorcycle
enthusiasts. See Appeal Brief at 6-8, 4 TTABVUE 10-12. The application, however, is
not restricted to clothing marketed to motorcyclists or traveling through channels of
trade directed to motorcyclists. We must look to the goods as identified in the involved
application and cited registrations, not to extrinsic evidence of actual use. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014); In re Tapco Int’l Corp., 122 USPQ2d 1369, 1374 (TTAB 2017). For
these reasons, Applicant’s arguments concerning its target customers are not
persuasive.
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B. Third-Party Use of PAPI-Formative Marks
Applicant argues that the cited mark PAPI should be afforded only a narrow scope
of protection because it “is frequently used as a trademark for clothing in the clothing
industry.” Appeal Brief at 5, 4 TTABVUE 9. This contention pertains to the sixth
du Pont factor, the “number and nature of similar marks in use on similar goods.” Id.,
177 USPQ at 567.
Applicant references three registrations for the marks BIG PAPI, DULCE PAPI,
and PAPI DOMINO. Appeal Brief at 5, 4 TTABVUE 9. Applicant did not make these
registrations of record. The Examining Attorney argues in her brief that they have
all been cancelled, 6 TTABVUE 5, and Applicant agrees that all three registrations
expired in 2015. Reply Brief at 1, 7 TTABVUE 4.
The Board does not take judicial notice of registrations in Office records. In re
Jonathan Drew Inc., 97 USPQ2d 1640, 1644 n.11 (TTAB 2011). Cancelled and expired
registrations, moreover, are not evidence of any presently existing rights in the mark
shown, or that it was ever used. TBMP § 704.03(b)(1)(A) & n.24 (June 2017). Because
there is no record evidence of any third-party use or existing registrations of marks
comprising PAPI for clothing, we find the sixth du Pont factor to be neutral and
accord the cited mark PAPI the normal scope of protection for inherently distinctive
marks.
C. Similarity of the Marks
We next consider the du Pont likelihood of confusion factor focusing on “‘the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
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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 du Pont, 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., 101
USPQ2d at 1721 (citation omitted). We focus on the recollection of the average
consumer – here, an ordinary apparel purchaser – who retains a general rather than
a specific impression of trademarks. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089
(TTAB 2016).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis is not predicated on dissecting the marks into
their various components. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). On the other hand, 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 the ultimate conclusion rests on a consideration of the marks in
their entireties. Nat’l Data, 224 USPQ at 751.Where, as here, the marks would
appear on goods that are identical and legally identical, the degree of similarity
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necessary to support a conclusion of likely confusion declines. Viterra, 101 USPQ2d
at 1908; In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016).
The cited mark, PAPI, is subsumed within Applicant’s mark, EUROPAPI, which
adds only the prefix EURO-. While there is no rule that likelihood of confusion
automatically applies where Applicant’s mark encompasses Registrant’s entire mark,
here, the fact that the registered mark is subsumed by Applicant’s mark increases
the similarity between the two. See, e.g., Wella Corp. v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (finding CALIFORNIA CONCEPT
marks substantially similar to prior mark CONCEPT); see also In re Mighty Leaf Tea,
601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (affirming decision finding
applicant’s mark ML similar to registered mark ML MARK LEES); In re Toshiba
Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (finding applicant’s mark
VANTAGE TITAN confusingly similar to registered mark TITAN).
In addition, the Examining Attorney submitted evidence that clothing that
originates in Europe or is European in style is offered in the United States and
referred to with the prefix EURO-. This evidence includes:
• Children’s clothing offered under the mark EURO CLUB in New York;5
• A Yelp.com listing for a men’s and women’s clothing store in Washington,
DC called “Euro Style”;6
• Listings in U.S. dollars for “Discount Euro Style Clothes” on the website
DHgate.com;7

5 November 29, 2016 Final Office Action at TSDR 2-6.
6 Id. at TSDR 19-22.
7 Id. at TSDR 23-30.
Serial No. 86137343
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• “Euro Style T-Shirts & Tees” offered on CafePress.com;8 and
• European clothing offered under the marks EURO-STYLE PLUS and
EuroStyle+ in Rockford, IL.9
This evidence demonstrates that consumers are likely to believe that Applicant’s
goods offered under the EUROPAPI mark are European or European-style variations
of Registrant’s line of PAPI products. It also shows that EURO- has descriptive
significance in association with clothing, lending more significance to the distinctive
term shared between Applicant’s mark and the cited mark, PAPI. Therefore,
although Applicant’s mark and the cited mark differ somewhat in sound and
appearance, these differences are outweighed by the similarities in overall
commercial impressions of the two marks. We find that the first du Pont factor weighs
in favor of a finding that confusion is likely.
D. Consumer Sophistication
Finally, we address Applicant’s contention that its customers are sophisticated,
specifically seeking apparel related to motorcycle enthusiasts. See Appeal Brief at 7,
4 TTABVUE 11. This argument concerns the fourth du Pont factor, the “conditions
under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful,
sophisticated purchasing.” Id., 177 USPQ at 567.
There is no record evidence that the types of apparel identified in both the subject
application and cited registrations (hats, shirts, and sweat shirts) are expensive or

8 Id. at TSDR 42-49.
9 Id. at TSDR 55-59.
Serial No. 86137343
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sold only to discriminating customers (or, as noted supra, only to motorcycle
enthusiasts). Rather, clothing items such as hats, shirts, and sweat shirts are
commonly inexpensive and subject to impulse purchase. The fourth du Pont factor
does not weigh against a finding that confusion is likely.
III. Conclusion
We have considered all of the arguments and evidence of record, including any not
specifically discussed, as they pertain to the relevant du Pont likelihood of confusion
factors. To the extent that any other du Pont factors for which no evidence was
presented by Applicant or the Examining Attorney may nonetheless be applicable,
we treat them as neutral.
We have found that Applicant’s mark is similar to the cited mark, which is
inherently distinctive, and that goods identified in the subject application and cited
registrations are identical or legally identical and travel through the same channels
of trade to the same classes of customers. There is no evidence that any du Pont factor
weighs against a finding that confusion is likely. We find that Applicant’s mark
EUROPAPI is likely to cause confusion with the mark PAPI in cited Registration
Nos. 2161178, 3660872, and 4292533 when used in association with the goods
identified in the application in International Class 25.
Decision: The refusal to register Applicant’s mark in Class 25 is affirmed. The
subject application will proceed to publication in due course as to the goods identified
in Class 18 only.