Family Dollar IP Co.

Trademark Trial and Appeal Board

Dec 4, 2015

No. 86118090 (T.T.A.B. Dec. 4, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: December 4, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Family Dollar IP Co.
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Serial No. 86118090
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Trevor P. Schmidt of Hutchison PLLC,
for Applicant.
Deborah E. Lobo, Trademark Examining Attorney, Law Office 109,
Dan Vavonese, Managing Attorney.
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Before Bucher, Taylor and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Family Dollar IP Co. (“Applicant”) seeks registration on the Principal Register of
the mark JUST BE (in standard characters) for, in relevant part:
Sleepwear, namely, pajamas, nightgowns, sleep shirts,
sleep sets, robes, chemises, sleep pants, sleep shorts,
camisoles, underwear, namely, bras, panties, slips,
shapewear, namely, control brief, control camisole, and
thigh slimmer; thermal underwear; footwear, namely,
shoes, sandals, slippers, socks and hosiery; clothing,
namely, sweaters, tops, bottoms, jeans, pants, shirts,
skirts, shorts, dresses, capris, belts, t-shirts, blouses, and
jumpers; outerwear, namely, jackets, coats and gloves;
activewear, namely, athletic shirts, shorts and pants;
Serial No. 86118090
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headgear, namely, hats, visors and caps; scrubs not for
medical purposes; scarves; headbands; headscarves, in
International Class 25.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
of a likelihood of confusion with the mark JUST B, previously registered on the
Principal Register (in standard characters) for “clothing, namely, men’s coats, suits,
jackets, slacks and sweaters; women’s coats, suits, jackets, skirts, blouses, dresses
and sweaters; boys’ sweaters, coats, jackets, pants; girls [sic] coats, skirts, pants,
blouses, and sweaters; ponchos, boleros, shorts, pajamas, and scarves,” in
International Class 25.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Assignment
Before proceeding to the merits of the refusal, we note that on July 5, 2015, after
filing its appeal brief, Applicant submitted an assignment of the subject application
from Family Dollar Stores of Michigan, Inc. to Family Dollar IP Co.3 Section
10(a)(1) of the Trademark Act, 15 U.S.C. § 1060(a)(1), provides in part that:

1 Application Serial No. 86118090 was filed on November 13, 2013, based on Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. The application also identifies goods in International Classes 10, 14, 18, 21,
and 26, which are not before us.
2 Registration No. 3589461, issued March 17, 2009; Section 8 declaration as to the Class 25
goods accepted March 17, 2015.
3 Recorded by the Assignment Recordation Branch at Reel/Frame 5569/0642.
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. . . no application to register a mark under section
1051(b) of this title shall be assignable prior to the filing
of an amendment under section 1051(c) of this title to
bring the application into conformity with section 1051(a)
of this title or the filing of the verified statement of use
under section 1051(d) of this title, except for an
assignment to a successor to the business of the applicant,
or portion thereof, to which the mark pertains, if that
business is ongoing and existing.
Applicant has not amended its application to allege use of its mark in commerce.
However, the trademark assignment Applicant filed states that “the Assignee [ ] is
the wholly owned subsidiary of the Assignor and is the successor to the ongoing and
existing business to which the marks pertain.” Therefore, we find that the
assignment is not prohibited under Trademark Act Section 10.
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. 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.”).
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A. Similarity of the Goods, Channels of Trade, and Classes of Customers
We first address the similarity of the goods, channels of trade, and classes of
customers, the second through fourth du Pont factors. It is not necessary that the
goods be identical or even competitive to support a finding of likelihood of confusion.
Rather, it is sufficient that the goods are related in some manner, or that the
circumstances surrounding their marketing are such that they would be
encountered by the same persons in situations that would give rise, because of the
marks, to a mistaken belief that they originate from the same source or that there is
an association or connection between the sources of the goods. In re Thor Tech Inc.,
90 USPQ2d 1634, 1635 (TTAB 2009). The greater the degree of similarity between
the marks, the lesser the degree of similarity between the goods necessary to
support a finding of likelihood of confusion. In re Opus One Inc., 60 USPQ2d 1812,
1815 (TTAB 2001).
There is significant overlap between the types of clothing listed in the cited
registration and Applicant’s identification of goods; both include coats, jackets,
sweaters, skirts, blouses, dresses, pants, shorts, pajamas, and scarves. Thus, the
goods are identical in part, and the second du Pont factor strongly favors a finding
of 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 cited registration, we presume that Registrant’s
goods move in all channels of trade normal for such goods and are available to all
potential classes of ordinary consumers. See Citigroup Inc. v. Capital City Bank
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Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump
Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). Moreover, because the goods
described in the application and the cited registration are identical in part, we must
presume that the channels of trade and classes of purchasers are the same for those
goods. See American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research
Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); 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 and fourth du Pont factors
strongly support a conclusion that confusion is likely between Applicant’s mark and
the cited marks.
B. Similarity of the Marks
We turn next to the first 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.” 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. 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
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purchaser, who normally retains a general rather than a specific impression of
trademarks. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424,
1430 (TTAB 2013).
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. In re Nat’l Data, 224 USPQ at 751.
When, as here, marks would appear on goods that are legally identical, “the
degree of similarity necessary to support a conclusion of likely confusion declines.”
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108
(TTAB 2007).
The cited mark is JUST B. Applicant’s mark is JUST BE. The marks are
identical except for the “e” at the end of Applicant’s mark. We find the marks to be
phonetically identical4 and highly similar in appearance. The incorporation of B and

4 “B” has several dictionary definitions and is pronounced “bē.” See Merriam-Webster online
dictionary (2015) (m-w.com). The Board may take judicial notice of dictionary definitions,
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BE, respectively, may yield some difference between the connotations of the two
marks. Viewed in their entireties, however, we find the marks to be highly similar
in overall commercial impression. The first du Pont factor therefore also supports a
finding that conclusion is likely.
C. Number and Nature of Similar Marks in Use on Similar Goods
Applicant argues that Registrant’s mark is weak and entitled only to a narrow
scope of protection because third parties have used and registered marks
incorporating phonetically identical marks for related goods. This argument
pertains to the sixth du Pont factor, the number and nature of similar marks in use
on similar goods.
Nearly all of the marks Applicant identifies contain distinguishing matter in
addition to JUST BE or JUST B and thus are less similar to the registered mark
than is Applicant’s mark. Only two apparent common-law uses lacking
distinguishing verbiage, both for clothing-related services, are of record: JUST B for
two prom dress and formalwear stores in Northampton and Springfield,
Massachusetts;5 and arguably JUST B BOUTIQUE, combining JUST B with the

including online dictionaries that exist in printed format or have regular fixed editions. In
re C.H. Hanson Co., 116 USPQ2d 1351, 1355 n.10 (TTAB 2015). Standard pronunciation for
“b” thus is identical to the word “be.” We are not persuaded by Applicant’s argument that
consumers would pronounce B in the cited mark as “buh”; nor do we find it likely that
consumers would verbalize JUST B as “just letter b.” Appeal Brief at 10, 8 TTABVUE 11.
5 July 21, 2014 Response to Office Action, Exhibit B, at 38-41 (from justbprom.com and
Google Maps); February 18, 2015 Response to Office Action, Exhibit A, at 32-33 (from
justbprom.com).
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generic BOUTIQUE for a women’s clothing store in Staten Island, New York.6
There is no evidence, however, concerning consumer familiarity with these marks,
such as how long or widespread has been their use. Where the record includes no
evidence about the extent of third-party uses, the probative value of such evidence
is minimal. Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557,
1561 (Fed. Cir. 2001). On the facts before us, two third-party uses are insufficient
for us to find that the cited mark JUST B is weak.
Finally, Applicant argues that Registrant “acknowledged his mark was entitled
to a limited scope of protection” during prosecution.7 Applicant made of record
responses to Office actions submitted by Registrant during prosecution of the cited
registration in which Registrant argued against 2(d) refusals based on other marks,
particularly JUST B BY BONNIE CLEVERING.8 Although Registrant did make
arguments concerning “the common nature of the phrase JUST B,” Registrant’s
arguments also concerned “[t]he widespread use and hence, ready distinguishability
of JUST B coupled with additional words.” (emphasis added).9 Registrant did not
argue that confusion would be unlikely between his mark and JUST BE alone.
We do not construe Registrant’s arguments during ex parte prosecution
conclusive on the issue of the strength of his mark. See Top Tobacco L.P. v. North

6 July 21, 2014 Response to Office Action, Exhibit B, at 42 (Facebook screen print);
February 18, 2015 Response to Office Action, Exhibit A, at 9-17 (from shoptiques.com/
boutiques/just-b-boutique).
7 Appeal Brief at 9, 8 TTABVUE 10; see also id. at 15, 8 TTABVUE 16.
8 July 21, 2014 Response to Office Action, Exhibits C and D, at 44-73.
9 Id. at 64, 72.
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Atlantic Operating Co., 101 USPQ2d 1163, 1172 (TTAB 2011). Rather, we have
considered Registrant’s earlier arguments to be “illuminative of shade and tone in
the total picture confronting the decision maker.” Interstate Brands Corp. v.
Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978); see also
Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271,
1281 (TTAB 2009) (same), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010).
Based on the evidence of record, we find the sixth du Pont factor to be neutral.
We also note that, even if Applicant had established the cited mark to be weak, it
nonetheless would be entitled to protection from registration by a subsequent user
of a confusingly similar (here, highly similar) mark for identical goods. King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974);
In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010).
III. Conclusion
We have carefully considered all evidence of record and Applicant’s arguments,
even if not specifically discussed, as they pertain to the relevant du Pont factors. We
treat any du Pont factors for which there is no record evidence as neutral.
In view of our findings under the critical first two du Pont factors that the marks
are highly similar and the identified goods are identical in part, and considering
also that the goods move in the same channels of trade to the same customers, we
find that Applicant’s mark is likely to cause confusion with the mark in cited
Registration No. 3589461 when used in association with Applicant’s goods in
International Class 25.
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Decision: The refusal to register Applicant’s mark JUST BE is affirmed as to
the goods in International Class 25. The application will proceed in due course to
notice of allowance as to the five remaining classes of goods.