Facton Ltd., G-Star Raw C.V., and G-Star Inc.v.CTS Wholesale, LLC

Trademark Trial and Appeal Board

Oct 2, 2013

No. 91203141 (T.T.A.B. Oct. 2, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
October 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Facton Ltd., G-Star Raw C.V., and G-Star Inc.
v.
CTS Wholesale, LLC
_____

Opposition No. 91199733
Opposition No. 91203141
_____

Laura Popp-Rosenberg of Fross Zelnick Lehrman & Zissu, P.C. for Facton Ltd.,
G-Star Raw C.V., and G-Star Inc.

John E. Russell of Allmark Trademark for CTS Wholesale, LLC.
_____

Before Bergsman, Wellington and Adlin, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

CTS Wholesale, LLC (“applicant”) filed intent-to-use applications to register
the mark GSTER, in standard character form (Serial No. 85114667), and GSTER
(stylized), shown below (85361259), both for “sunglasses,” in Class 9.

Opposition No. 91199733
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Facton Ltd., G-Star Raw C.V., and G-Star Inc. (“opposers”) opposed the
registration of applicant’s marks on the ground of likelihood of confusion under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d). Opposers pleaded
ownership of registrations for the mark G-STAR. The most pertinent registration
for purposes of these proceedings is Registration No. 3264258 for the mark G-STAR,
in typed drawing form, for, inter alia, “spectacles; sunglasses, sunglass accessories,
namely, head straps and sunglass retainers to restrain sunglasses from movement,
eyeglass cases, and sunglass cases,” in Class 9.1 Because opposers attached to the
notices of opposition copies of the pleaded registrations printed from the electronic
database records of the USPTO showing current status and title, the pleaded
registrations are of record. See 37 CFR § 2.122(d)(1).
Applicant, in its answers, denied the salient allegations in the notices of
opposition.
The parties stipulated to resolving these proceedings using the Board’s
accelerated case resolution (“ACR”) procedure, and are commended for doing so.2 As
part of their ACR stipulation, the parties agreed that documents produced in
response to a request for production of documents are authentic and may be

1 Issued July 17, 2007 based on an application filed under Section 44(e) of the Trademark
Act, 15 U.S.C. § 1126(e). Although opposer Facton Ltd. was required to file a declaration of
use by July 17, 2013, Section 8(a)(3) of the Trademark Act, 15 U.S.C. § 1058(a)(3), allows
opposer a six-month grace period immediately following the end of the six year expiration
period, or until January 17, 2014, to file the required declaration of use. The registration
will be cancelled only if opposer does not file a declaration of use before the end of the grace
period. See 37 CFR § 2.160(a). Accordingly, Registration No. 3264258 is valid.
2 TTABVue 11.
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introduced through a notice of reliance and that testimony may be introduce
through declarations or affidavits.
The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122, 37 CFR §2.122, the record includes the application files for applicant’s marks.
The record also includes the following testimony and evidence:
A. Stipulation of facts.3
1. Opposer Facton Ltd. is the owner of opposers’ pleaded registrations.
G-Star Raw C.V. is Facton Ltd.’s exclusive licensee for the marks in the pleaded
registrations. G-Star Inc. is G-Star Raw C.V.’s exclusive sub licensee in the United
States for the use of the marks in the pleaded registrations;
2. Opposers have used the mark G-STAR in commerce to identify
clothing, footwear, bags and accessories since at least as early as 1994;
3. Applicant did not use its GSTER mark to identify sunglasses prior to
August 2010;
4. The earliest priority date upon which applicant may rely is August 24,
2010, the filing date of its application Serial No. 85114667 for the mark GSTER, in
standard character form;
5. “The goods set forth in the Applications – namely, ‘sunglasses’ in
International Class 9 – are identical to the goods set forth in [opposers’]
Registrations Nos. 3,21,683 and 3,624,258 for the G-STAR mark”;4

3 TTABVue 18.
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6. “Applicant’s consumers for sunglasses under the GSTER mark are not
sophisticated, as that term is defined in trademark law.”
7. Neither party is aware of any instance of actual confusion.
B. Opposers' testimony and evidence.
1. Declaration of Richard Anthony Gomez II, sales manager of G-Star
USA LLC which is “part of the same group of companies as Opposers,” with
attached exhibits;5
2. Declaration of Gary Plunkett, licensing director of opposer G-Star Raw
C.V., with attached exhibits;6
3. Notice of reliance on printed publications and Internet printouts;7
4. Notice of reliance on third-party registrations;8
5. Notice of reliance on applicant’s responses to opposers’ requests for
admissions, interrogatories and document requests;9 and

4 Discovery was scheduled to close September 2, 2012 and the parties’ “deadline to agree on
joint stipulated facts” was set as October 2, 2013. (TTABVue 15 and 16). Registration No.
3214683 for the mark G-STAR (stylized) for, inter alia, “sunglasses” registered on March 6,
2007. This is one of opposers’ five pleaded registrations in addition to Registration No.
3264258 discussed above. On August 8, 2013, opposer Facton Ltd. filed a Section 8
declaration of use deleting sunglasses from the registration. Thus, by the time the parties
filed their stipulation of facts (October 2, 2013 (TTABVue 17) and October 10, 2013
(TTABVue 18)), applicant had the opportunity to take discovery regarding opposers’ use of
its mark on sunglasses and opposers had deleted sunglasses from Registration No.
3214683. Nevertheless, applicant did not seek to file a counterclaim to cancel opposers’
pleaded registration for sunglasses on the ground of nonuse or abandonment.
5 TTABVue 31 and 33.
6 TTABVue 25.
7 TTABVue 30.
8 TTABVue 28.
9 TTABVue 21 and 40.
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6. Notice of reliance on the definition of G-STAR from the Urban
Dictionary website (urbandictionary.com), the SoSlang website (SoSlang.com), the
Wiki Answers website (wiki.answers.com), and the Definition Of website (definition-
of.net).10
C. Applicant’s testimony and evidence.
1. Declaration of Kirk Bachelder, applicant’s principal member and
founder, with attached exhibits;11
2. Notice of reliance on printed publications and Internet websites;12 and
3. Notice of reliance on third-party registrations.13
Standing
Because opposer Facton Ltd. has properly made its pleaded registrations of
record, that opposer has established its standing. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). The
stipulation that G-Star Raw C.V. is Facton Ltd.’s exclusive licensee for the marks in
the pleaded registrations and that G-Star Inc. is G-Star Raw C.V.’s exclusive sub
licensee in the United States for the use of the marks in the pleaded registrations is
sufficient to establish standing for G-Star Raw C.V. and G-Star Inc.

10 TTABVue 39.
11 TTABVue 37.
12 TTABVue 37.
13 TTABVue 38.
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Priority
Because opposers’ pleaded registrations are of record, Section 2(d) priority is
not an issue in this case as to the marks and the goods covered by the registrations.
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974).
Likelihood of confusion
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. 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 Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the 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”). These factors, and any
other relevant du Pont factors in the proceedings now before us, will be considered
in this decision.
A. Similarity or dissimilarity of the goods, channels of trade and classes of
consumers.

The goods in opposers’ Registration No. 3264258 for the mark G-STAR
include sunglasses and, therefore, opposers’ goods and applicant’s goods are in part
identical. Because the goods described in the involved applications and opposers’
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registration are in part identical, we must presume that the channels of trade and
classes of purchasers are the same. See 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) (“Because
the goods are legally identical, they must be presumed to travel in the same
channels of trade, and be sold to the same class of purchasers.”). 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, the
Board was entitled to rely on this legal presumption in determining likelihood of
confusion).
Applicant argues that the goods of the parties move in distinct channels of
trade.14 However, the scope of the registration applicant seeks is defined by its
application (and not by its actual use); thus, it is the application (and not actual
use) that we must look to in determining applicant’s right to register:
The authority is legion that the question of registrability
of an applicant's mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant's goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed.
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990).

14 Applicant’s Brief, pp. 24-26 (TTABVue 37, pp. 25-27).
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Likewise, in considering the scope of the cited registration, we look to the
registration itself, and not to extrinsic evidence about the registrant’s actual goods,
customers, or channels of trade. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981),
citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA
1958). Accordingly, because there are no limitations as to channels of trade or
classes of purchasers in either applicant’s or opposers’ description of goods, it is
presumed that the goods move in all channels of trade normal for those goods, and
that they are available to all classes of purchasers for those goods. See Paula Payne
Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“What is more significant than appellee’s failure to limit the description of
goods to a particular channel of trade or market, is the absence of a limitation in
appellant’s registration which would exclude appellee’s market. … therefore, we
give full sweep to appellant’s registration description of goods and view the goods
and modes of distribution the same.”); Kalart Co. v. Camera-Mart, Inc., 119 USPQ
at 139; In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In view of the foregoing, we find that the goods are in part identical and,
therefore, we must presume that they move in the same channels of trade and are
sold to the same classes of consumers.
B. The conditions under which and buyers to whom sales are made (i.e.,
“impulse” vs. careful, sophisticated purchasing).

While the parties have stipulated that applicant’s customers are not
“sophisticated,” applicant argues that because opposers’ goods are expensive and
are being marketed to “a very ‘fashion conscious’ and sophisticated consumer base”
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who “are very likely to make careful decisions about the clothing items they
purchase and ultimately wear,” opposers’ customers “are very unlikely to be
confused by the respective marks.”15 However, as noted above, we cannot resort to
extrinsic evidence to restrict opposers’ trade channels or classes of consumers.
Likewise, we may not limit the prices of applicant’s or opposers’ goods if those
restrictions or limitations are not reflected in the description of goods. See In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that relevant
goods are expensive wines sold to discriminating purchasers must be disregarded
given the absence of any such restrictions in the application or registration).
Accordingly, for purposes of these proceedings, we find that the sunglasses
identified by both marks include all types of sunglasses, sold at all price points to
ordinary consumers who exercise ordinary care when purchasing sunglasses.
C. The number and nature of similar marks in use on similar goods.

The sixth du Pont factor requires us to consider evidence pertaining to the
number and nature of similar marks in use on similar goods. “The purpose of a
defendant introducing third party uses is to show that customers have become so
conditioned by a plethora of such similar marks that customers have been educated
to distinguish between different such marks on the bases of minute distinctions.”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005).

15 Applicant’s Brief, pp. 23-24 (TTABVue 37, pp. 24-25).
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Applicant argues that the term “Star” “is extremely commonplace in the
clothing field,” citing to over 40 registrations it introduced into evidence.16
However, opposers’ mark is G-STAR not “Star” and none of the registrations
applicant introduced into evidence is similar to opposers’ mark G-STAR. In fact,
only three registrations comprise letters and the word “Star”: (i) Registration No.
4030414 for the mark A-STARS; (ii) Registration No. 3535352 for the mark A-STAR
DENIM COMPANY; and (iii) Registration No. 3144038 E.C. STAR.
Moreover, absent evidence of actual use, third-party registrations have little
probative value because they are not evidence that the marks are in use on a
commercial scale or that the public has become familiar with them. See Smith Bros.
Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the
purchasing public is not aware of registrations reposing in the U.S. Patent and
Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La
Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). See also In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
[I]t would be sheer speculation to draw any inferences
about which, if any, of the marks subject of the third
party (sic) registrations are still in use. Because of this
doubt, third party (sic) registration evidence proves
nothing about the impact of the third-party marks on
purchasers in terms of dilution of the mark in question or
conditioning of the purchasers as to their weakness in
distinguishing source.

16 Applicant’s Brief, p. 21 (TTABVue 37, p. 22) and TTABVue 38, pp. 11-156.
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In re Hub Distributing, Inc., 218 USPQ at 286. See also Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to
strength of a mark, however, registration evidence may not be given any weight”).
Applicant also introduced into evidence screen shots from the ASTARS
website (astarswomen.com), B.Star website (bstarfashion.com), Big Star website
(buckle.com), Kill Star website (killstarclothing.com), the Little Star Clothing
FACEBOOK page (facebook.com), and the No Star website (nostarclothing.com).17
The third-party websites are not persuasive. First, as indicated above, opposers’
mark is G-STAR, not just STAR, and the third-party websites are for marks that
are not as similar to opposers’ mark G-STAR as GSTER. Second, the third-party
websites are not accompanied by any other evidence indicating the length of time
said marks have been in use, the degree of exposure, or the popularity of such
marks vis-a-vis the relevant purchasing public. See Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1693-94.
On this record, we cannot conclude that the third-party use of marks similar
to opposers’ G-STAR mark is so widespread as to “condition” the consuming public
that as a result of the mark G-STAR being widely used in connection with clothing
and sunglasses it should be accorded only a narrow scope of protection or exclusivity
of use.

17 TTABVue 37, pp. 88-93.
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D. The strength of opposers’ mark.
In determining the strength of a mark, we consider both its inherent strength
based on the nature of the mark itself and its commercial strength, based on the
marketplace recognition value of the mark. See Top Tobacco, L.P. v. North Atlantic
Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (“In assessing the
overall strength of Top's CLASSIC CANADIAN mark, we consider both its inherent
strength based on the nature of the mark itself and its commercial strength, based
on the marketplace recognition value of the mark); Tea Board of India v. Republic of
Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); McCarthy on Trademarks and
Unfair Competition § 11:83 (4th ed. 2013) (“The first enquiry focuses on the
inherent potential of the term at the time of its first use. The second evaluates the
actual customer recognition value of the mark at the time registration is sought or
at the time the mark is asserted in litigation to prevent another's [registration].”).
Market strength is the extent to which the relevant public recognizes a mark as
denoting a single source. Tea Board of India v. Republic of Tea Inc., 80 USPQ2d at
1899. In other words, it is similar to acquired distinctiveness.
1. Inherent strength.
Opposers’ mark is G-STAR used on clothing and sunglasses. According to the
Urban Dictionary (urbandictionary.com), G-STAR is a slang abbreviation for
“gangster.”18 Nevertheless, applicant argues that G-STAR is suggestive because

18 TTABVue 39, p. 5. See also the SoSlang website (SoSlang.com), the Wiki Answers
website (wiki.answers.com), and the Definition Of website (definition-of.net) (TTABVue 39,
pp. 7-11). We note that the parties stipulated that when opposers selected the mark G-
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“star” is the dominant portion of opposers’ mark, the word “star” is a part of
numerous third-party registrations for clothing, the word “star” connotes something
famous or special, and that opposers promote their products as having “star
quality.”19 We find that G-STAR as applied to clothing and sunglasses is fanciful or
arbitrary because it signifies nothing other than source. However, even assuming
arguendo that we found G-STAR suggestive, it would not follow that the mark’s
inherent strength obviates the likelihood of confusion of purchasers encountering G-
STAR and GSTER on identical products. Maytag Co. v. Luskin’s Inc., 228 USPQ
747, 750 (TTAB 1986). See also King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (“The likelihood of confusion is to be
avoided, as much between ‘weak’ marks as between ‘strong’ marks, or as between a
‘weak’ and a ‘strong’ mark.”).
2. Acquired strength.
Opposers have used the mark G-STAR in commerce to identify clothing,
footwear, bags and accessories since at least as early as 1994.20 As of November
2012, there are 15 franchised G-STAR RAW stores in 11 cities in the United States,
including New York City, Boston, Washington, D.C., Chicago, San Francisco, Los
Angeles and San Diego. Additionally, there are over 200 other retail stores selling

STAR, they did not intend for G-STAR to connote the term “gangster.” (TTABVue 18, p. 5).
However, what opposers intended may not be what the customers perceived, which is what
we are concerned with here.
19 Applicant’s Brief, pp. 22-23 (TTABVue 37, pp. 23-24).
20 Stipulation of facts (TTABVue 18).
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G-STAR products in the United States, including Nordstrom, Bloomingdale’s,
Kitson, DNA 2050, Universal Gear and Politix.21
Opposers’ sales revenues and units, as well as advertising expenditures, were
designated confidential so we may reference them in only general terms. These
figures indicate that opposers are operating a successful company.22 Opposers’
success is corroborated by the media attention opposers’ G-STAR brand has
garnered,23 including an article entitled “G Major” in the May 2009 Time Style &
Design supplement.24
While mindful that there is no evidence that opposers have used their G-
STAR mark to identify sunglasses, we find that opposers’ G-STAR mark is a strong
mark that has become recognized by the public, at least when used in connection
with clothing.
E. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.

We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In a particular case, any one of these
means of comparison may be critical in finding the marks to be similar. In re White
Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d

21 Gomez Declaration ¶12 (TTABVue 31, page illegible).
22 Gomez Declaration ¶¶ 16-18 (TTABVue 31, pages illegible).
23 TTABVue 32, pp. 143-254.
24 TTABVue 32, pp. 179-181.
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1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that where, as
here, the goods are in part identical, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there is a recognizable
disparity between the goods. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises
Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare
Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
Further, the test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial impression so that
confusion as to the source of the goods offered under the respective marks is likely
to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5,
1992). The proper focus is on the recollection of the average customer, who retains
a general rather than specific impression of the marks. Winnebago Industries, Inc.
v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Since the goods at issue are
sunglasses, we are dealing with ordinary consumers.
The fact that one of applicant’s marks is presented in an “Old English” font
does not avoid likelihood of confusion with opposers’ mark because opposers’ mark
is in standard character form and, therefore, it may be presented in the same font
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as applicant’s mark as shown below. See In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257, 1260 (Fed. Cir. 2010); Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 939 (Fed. Cir. 1983) (the argument concerning a difference in type style
is not viable where one party asserts rights in no particular display).
G-star
Therefore, we must assume that both parties may employ the same stylization or
display of the letters in the involved marks. Jockey International Inc. v. Mallory &
Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992).
We also disagree with applicant’s argument that the word “Star” is the
dominant element of opposers’ mark.25 First, we note that this argument is
inconsistent with applicant’s argument that the word “Star” “is extremely
commonplace in the clothing field,” citing to over 40 registrations it introduced into
evidence.26 If “Star” were a weak term in the clothing [or sunglass] field, then
consumers would look to the other elements of the mark to identify source.
Supporting the supposition that the letter “G” is the dominant element in opposers’
mark is the principal that consumers are generally more inclined to focus on the
first word, prefix or syllable in any trademark or service mark. See Palm Bay, 73
USPQ2d at 1692; see also L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB
2012) citing Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“it is often the first part of a mark which is most likely to be

25 Applicant’s Brief, p. 15 (TTABVue 37, p. 16).
26 Applicant’s Brief, p. 21 (TTABVue 37, p. 22) and TTABVue 38, pp. 11-156.
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17

impressed upon the mind of a purchaser and remembered” when making
purchasing decisions). Here, the first part of opposers’ mark and the first part of
applicant’s marks are the letter G, which is the part of the mark most likely to be
impressed upon the minds of consumers.
In any event, G-STAR and GSTER are similar in terms of appearance and
sound. The only difference between the marks is the letter “e” in applicant’s mark
in lieu of the letter “a” in opposers’ mark. Slight differences in marks do not
normally create dissimilar marks. In re Great Lakes Canning, Inc., 227 USPQ 483,
485 (TTAB 1985) (“Moreover, although there are certain differences between the
[marks’ CAYNA and CANA] appearance, namely, the inclusion of the letter ‘Y’ and
the design feature in applicant’s mark, there are also obvious similarities between
them. Considering the similarities between the marks in sound and appearance,
and taking into account the normal fallibility of human memory over a period of
time (a factor that becomes important if a purchaser encounters one of these
products and some weeks, months, or even years later comes across the other), we
believe that the marks create substantially similar commercial impressions”). See
also Hercules Inc. v. National Starch & Chemical Corp., 223 USPQ 1244, 1246
(TTAB 1984) (“it is a fundamental tenet of our trademark law that exact similitude
is not required to conclude that two marks are confusingly similar. Thus, when
there are small differences between the marks, the differences may be insignificant
in obviating the likelihood of confusion when compared to the marks’ overall
similarities”); United States Mineral Products Co. v. GAF Corp., 197 USPQ 301, 306
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Opposition No. 91199733
Opposition No. 91203141

19

therefore, consumers are “comparing GSTER to ‘G-STAR RAW.’”29 However,
opposers’ pleaded registration is for the mark G-STAR alone; not G-STAR RAW.
The registrability of an applicant’s mark is determined on the basis of how the
applicant’s mark and the opposers’ marks are set forth in their respective
application and registration. See Kimberly-Clark Corporation v. H. Douglas
Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541, 543 (Fed. Cir. 1985); Vornado, Inc.
v. Breuer Electric Mfg., Co., 390 F.2d 724, 156 USPQ 340, 343 (CCPA 1968) (“the
display of the mark in a particular style is of no material significance since the
display may be changed at any time as may be dictated by the fancy of the
applicant or the owner of the mark.”). Thus, it is irrelevant to the issue of likelihood
of confusion in these proceedings whether opposers use other words when they
display their mark.
F. Actual confusion.
Applicant argues that there have been no reported instances of actual
confusion. This is not surprising as opposers have not sold and are not selling
sunglasses.30 Accordingly, there have not been any meaningful opportunities for
confusion to have occurred. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992).

29 Applicant’s Brief, pp. 17-18 (TTABVue 37, pp. 18-19).
30 Opposers’ Brief, pp. 11-12 (TTABVue 22, pp. 12-13).
Opposition No. 91199733
Opposition No. 91203141

20

Even when we consider opposers’ use of its mark on clothing, there has been
little opportunity for confusion to have occurred. Applicant began using its mark
GSTER on sunglasses in January 2011.31 Since that time, applicant has sold only a
small number of sunglasses and expended a minimal amount on advertising.32
Moreover, those sunglasses that applicant has sold have been sold in channels of
trade that are different than the channels of trade in which opposers’ goods move.
According to applicant, it “specifically targets its wholesale sunglasses to vendors
who sell these sunglasses at venues such as gas stations, convenience stores, fairs
and festivals, and swap meets.”33 On the other hand, opposers’ products are more
upscale. They are sold in 15 franchised G-STAR RAW stores in 11 cities in the
United States, including New York City, Boston, Washington, D.C., Chicago, San
Francisco, Los Angeles and San Diego. Additionally, there are over 200 other retail
stores selling G-STAR products in the United States, including Nordstrom,
Bloomingdale’s, Kitson, DNA 2050, Universal Gear and Politix.34
In view of the foregoing, we find that the lack any reported instances of
actual confusion is a neutral factor.
G. Balancing the factors.
Because the marks are similar, the goods are identical and presumed to move
in the same channels of trade and be sold to the same classes of consumers, we find

31 Bachelder Dec. ¶ 12 (TTABVue 37, p. 42).
32 Id. Applicant submitted the Bachelder Declaration under seal and, therefore, we may
only refer to applicant’s sales and advertising expenditures in general terms.
33 Id. at ¶ 5 (TTABVue 37, p. 39).
34 Gomez Declaration ¶12 (TTABVue 31, page illegible).
Opposition No. 91199733
Opposition No. 91203141

21

that applicant’s mark GSTER and GSTER and design for “sunglasses” is likely to
cause confusion with opposers’ mark G-STAR for sunglasses.
Decision: The opposition is sustained and registration to applicant is
refused.