Fifty-Six Hope Road Music Limitedv.Sandal Factory, Inc.

Trademark Trial and Appeal Board

Mar 8, 2019

No. 91212582 (T.T.A.B. Mar. 8, 2019)

This Opinion is Not a
Precedent of the TTAB

Hearing: March 7, 2019 Mailed: March 8, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Fifty-Six Hope Road Music Limited
v.
Sandal Factory, Inc.
_____

Opposition No. 91212582
_____

Jill M. Pietrini and Paul A. Bost of Sheppard Mullin Richter & Hampton LLP,
for Fifty-Six Hope Road Music Limited.
Sandal Factory, Inc. through its President Shawn Tolley.1
_____

Before Taylor, Bergsman and Heasley,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Sandal Factory, Inc. (Applicant) filed an application to register the mark GNARLY
MARLEY’S (in standard characters) for the goods and services listed below:
Apparel, namely, t-shirts, shirts, pants, shorts, and
dresses, in Class 25;

1 On March 4, 2019, Applicant’s counsel filed a request to withdraw as counsel for Applicant
because, inter alia, “Applicant determined that it would rest on its brief” and “it no longer
wished to incur legal fees in connection with this matter.” 94 TTABVUE 2. The request to
withdraw is in compliance with the requirements of Trademark Rule 2.19(b) and Patent and
Trademark Rule 11.116, and is accordingly granted. Also, we find that Applicant wishes to
proceed pro se.
Opposition No. 91212582
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Souvenirs and novelty goods, namely, ornamental novelty
buttons, badges, and pins, in Class 26; and
Retail store services featuring clothing, souvenirs, and
novelty gift items, in Class 35.2
Fifty-Six Hope Road Music Limited (Opposer) filed an opposition under Sections
2(a), 2(d) and 43(c) of the Trademark Act, 15 U.S.C. §§ 1052(a), (d), and 1125(c), on
the grounds that Applicant’s mark GNARLY MARLEY’S falsely suggests a
connection with Opposer, that Applicant’s mark GNARLY MARLEY’S is likely to
cause confusion with various registered and common law marks containing the name
“Marley” owned by Opposer, and that Applicant’s mark GNARLY MARLEY’S is likely
to dilute Opposer’s MARLEY marks. Opposer pled ownership of, inter alia, the
registration identified below:
• Registration No. 2349361 for the mark BOB MARLEY (typed drawing form)
for the goods listed below:
Incense, in Class 3;
Novelty license plate of nonprecious metal, in Class 6;
Plastic cases for beepers; magnets, in Class 9;
Jewelry; watches; medallions, in Class 14;
Greeting cards; stickers; stationery type portfolios; posters;
postcards; postcard books; songbooks; decals; trading
cards; calendars; novels; bookmarks, in Class 16;
Backpacks; fanny packs; wallets, tote bags, in Class 18;
Mugs, in Class 21;

2 Application Serial No. 85760798, filed October 23, 2012, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use
its mark in commerce.
Opposition No. 91212582
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Textile wall hangings, in Class 24;
T-shirts; thermal shirts; jackets; hats; caps; sweatshirts;
ties; bandanas, in Class 25; and
Ornamental cloth patches, in Class 26;3 and
In addition, Opposer alleged that it used the mark MARLEY for shirts and headwear
at least as early as February 2003.4
Applicant, in its Answer, denied the salient allegations in the Notice of Opposition.
I. Preliminary Issues
A. Whether Opposer may rely on the unpleaded registration for the mark
MARLEY for clothing?

Opposer seeks to rely on its unpleaded Registration No. 4394278 for the mark
MARLEY for “clothing, namely, shirts and headwear”5 as a basis for its pleaded
claims. The facts relating to this issue are set forth below:
1. Opposer alleges that it first used the mark MARLEY for clothing at least as
early as February 2003;6
2. On April 14, 2009, Opposer filed application Serial No. 77713973 to register

3 Registered May 16, 2000; renewed. Prior to November 2, 2003, “standard character”
drawings were known as “typed” drawings. Effective November 2, 2003, Trademark Rule
2.52, 37 C.F.R § 2.52, was amended to replace the term “typed” drawing with “standard
character” drawing. A typed mark is the legal equivalent of a standard character mark. See
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003,
‘standard character’ marks formerly were known as ‘typed’ marks….”).
4 Notice of Opposition ¶16 (1 TTABVUE 6).
5 26 TTABVUE 324.
6 Notice of Opposition ¶6 (1 TTABVUE 6); see also Registration No. 4394278 claiming first
use as February 2003 (26 TTABVUE 324).
Opposition No. 91212582
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the mark MARLEY for “clothing, namely, shirts and headwear”;7
3. On October 23, 2012, Applicant filed application Serial No. 85760798 for the
mark GNARLY MARLEY’S;
4. On May 21, 2013, Applicant’s application for GNARLY MARLEY’S was
published for opposition;
5. On May 23, 2013, Opposer filed an extension of time to oppose Applicant’s
application for the mark GNARLY MARLEY’S;8
6. On June 18, 2013, Opposer’s application to register the mark MARLEY for
“clothing, namely, shirts and headwear” was published for opposition;9
7. On September 3, 2013, Opposer’s application for the mark MARLEY for
“clothing, namely, shirts and headwear” registered as Registration No.
4394278;10
8. On September 16, 2013, Opposer filed a notice of opposition against the
registration of Applicant’s application for the mark GNARLY MARLEY’S.11
Opposer did not plead ownership of Registration No. 4394278 even though it
had issued on September 3, 2013, 13 days prior to the filing of the Notice of
Opposition.

7 26 TTABVUE 324.
8 1 TTABVUE 9.
9 26 TTABVUE 324.
10 Id.
11 1 TTABVUE.
Opposition No. 91212582
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9. On January 6, 2014, Opposer served Applicant with Opposer’s first set of
requests for admission which referred to Registration No. 4394278;12
10. On May 1, 2015, Opposer filed a notice of reliance on Registrations owned by
Opposer, including Registration No. 4394278 for the mark MARLEY for
“clothing, namely, shirts and headwear” “and relies on them as grounds for its
claims of likelihood of confusion, likelihood of dilution, and false suggestion of
a connection;”13
11. On June 23, 2015, Applicant moves to strike various exhibits in Opposer’s
notice of reliance including “unpleaded registrations that were ostensibly the
subject of pending applications … when the notice of opposition was filed;”14
12. In opposition to Applicant’s motion to strike, Opposer argues that Applicant
has been aware of Opposer’s intent to rely on its registration for the mark
MARLEY for clothing since the filing of the Notice of Opposition because
Opposer alleged that it first used the mark MARLEY on clothing at least as
early as February 2003,15 and that Opposer propounded numerous requests for
admission specifically relating to this registration, and attached a copy of the
TESS and TARR pages for this registration to the requests for admission;16

12 26 TTABVUE 98-99, 121 and 139-144.
13 26 TTABVUE 5, 9, and 324.
14 30 TTABVUE 7. As noted above, the USPTO registered MARLEY (Registration No.
4394278) 13 days before Opposer filed the Notice of Opposition.
15 32 TTABVUE 7-8.
16 32 TTABVUE 8.
Opposition No. 91212582
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13. In an order dated November 10, 2015, the Board denied Applicant’s motion to
strike without addressing the fact that Opposer did not plead, nor move to
amend its pleading, to include Registration No. 4394278.
Applicant also argues Opposer did not plead ownership of
its Registrations attached as Exhibits 19-23, 26, 42 [the
MARLEY registration at issue] and 53-58, and thus they
are not admissible under Notice of Reliance. Pursuant to
Trademark Rule 2.122(d)(2) “a registration owned by any
party may be made of record in the proceeding by … filing
a notice of reliance.” Unpleaded registrations, and
registrations and applications not subject of the
proceeding, may be considered for “whatever probative
value” they may lend to Opposer’s showing under the
appropriate factors in its case, and whether they have
probative value is left to final decision. See FujiFilm
SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234,
1236 (TTAB 2014).17
14. Opposer, in its brief, treated Registration No. 4394278 as if it were a pleaded
registration.
To establish priority, Opposer must prove “proprietary
rights in its pleaded mark that are prior to defendant’s
rights in the challenged mark.” TBMP § 309.03(c)(A);
Herbko International Inc. v. Kappa Books, Inc., 64 USPQ2d
1375, 1378 (Fed. Cir. 2002). Here, Opposer has pleaded and
made of record, and Applicant has not contested the
validity of, its ownership of numerous federal registrations
including the term MARLEY predating the filing date of
the Application and any date of first use on which
Applicant can rely.18

17 34 TTABVUE 12.
18 Opposer’s Brief, p. 13 (59 TTABVUE 22).
Opposition No. 91212582
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15. Applicant, in its brief, treated Registration No. 4394278 as if it were properly
of record.19
Our case law is clear that an unpleaded registration may not be used as a basis
for a party’s opposition. See UMG Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1045
n.12 (TTAB 2009); Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 USPQ2d 1572,
1576 n.4 (TTAB 2008) (opposer may not rely upon an unpleaded registration in
support of its claims; it must seek leave to amend the petition for cancellation to rely
on the registration); Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1634 (TTAB
2007) (unpleaded registration given no consideration where applicant not given fair
notice of opposer’s reliance on registration that issued after filing of complaint);
Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1929
n. 18 (TTAB 2006) (“evidence regarding the unpleaded mark or registration . . . will
not be considered.”).
When Opposer filed its Notice of Opposition, it knew full well what registrations
it owned. If it wished to rely on a likelihood of confusion claim based, in part, on a
registration for MARLEY for “clothing, namely, shirts and headwear,” it should have
pled the registration in its original Notice of Opposition or, at a minimum, sought
leave to amend its Notice of Opposition after it served its first set of requests for
admission that referred to the registration. Just because Opposer pleaded common
law use of the mark MARLEY for clothing and referred to it in requests for admission,

19 Applicant’s Brief pp. 3-4 (67 TTABVUE 10-11) (“Opposer, between its pled registrations
and Notice of Reliance, made of record the following 39 registrations for or including the term
‘MARLEY.’”).
Opposition No. 91212582
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Opposer’s actions prior to trial gave Applicant no reason to believe that Opposer
intended to rely on its MARLEY registration for “clothing, namely shirts and
headwear,” especially when Opposer pleaded numerous registrations containing the
name “Marley.” Applicant is not required to divine Opposer’s intention.
The Board, in its November 10, 2015 order, denied Applicant’s motion to strike
Opposer’s notice of reliance on Registration No. 4394278 because an unpleaded
registration may be introduced through Trademark Rule 2.122(d)(2), 37 C.F.R.
§ 2.122(d)(2) (“a registration owned by any party may be made of record in the
proceeding by … filing a notice of reliance.”) and be considered for “whatever
probative value” they may lend to Opposer’s case.20 The Board cited as authority
FujiFilm SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d at1236. In FujiFilm, the
Board held that “[w]hile an unpleaded registration cannot be used as a basis for the
opposition, it, like third-party registrations, may be considered for ‘whatever
probative value’ it may lend to opposer’s showing under the du Pont factors in its case
in chief,” and did not strike the registration because the probative value of the
registration would not be determined until trial. Id. (citing Safer, Inc. v. OMS Invs.,
Inc., 94 USPQ2d 1031, 1035 (TTAB 2010)). In Safer, Applicant used Opposer’s
unpleaded registration for the mark DEER-OFF to show that Opposer disclaimed the
exclusive right to use the word “Deer.” Likewise, in this case, while Opposer’s
unpleaded registration may not be used as a basis for its claims, though not
particularly probative, it may be used in the manner of a third-party registration

20 34 TTABVUE 12.
Opposition No. 91212582
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(e.g., to show the strength of Opposer’s marks or the scope of use of the MARLEY
marks for dilution purposes, etc.). Thus, the Board did NOT admit Registration No.
4394278 for any purpose but in accordance with the holding in FujiFilm and Safer.
Finally, because Applicant objected to the introduction of Registration No.
4394278 on the ground that it was not a pleaded registration, we cannot find that the
registration applied to the claims and was tried by implied consent pursuant to Fed.
R. Civ. P. 15(b). Implied consent to the trial of an unpleaded issue can be found only
where the nonoffering party (1) raised no objection to the introduction of evidence on
the issue, and (2) was fairly apprised that the evidence was being offered in support
of the issue. See Morgan Creek Prods. Inc. v. Foria Int’l Inc., 91 USPQ2d 1134, 1138
(TTAB 2009). The issue of whether an issue was tried by consent is basically one of
fairness, id. at 1139, and based on the facts recounted above, we find that Opposer
did not act fairly and that Applicant was not aware that Opposer intended to rely on
Registration No. 4394278 until Opposer filed its notice of reliance. This is especially
true in this case where Opposer pleaded ownership of numerous “Marley”
registrations, had the ability to advise Applicant that it intended to rely on
Registration No. 4394278 when it filed its Notice of Opposition, and it also had the
opportunity to amend the Notice of Opposition before trial commenced.
We will not consider Registration No. 4394278 as basis for any of Opposer’s claims
and, therefore, Opposer must rely on its common law use of MARLEY for “clothing,
namely, shirts and headwear.”

Opposition No. 91212582
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B. Exhibits attached to the briefs.

Both parties attached exhibits to their briefs. As we have often stated, exhibits or
attachments to briefs are of little or no use in a Board proceeding. The Board sets
trial periods during which the parties may submit evidence by filing notices of
reliance or by taking testimony. Evidence submitted outside of the trial periods —
including that attached to briefs – is untimely, and will not be considered. See
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 704.05(b)
(2018) (and cases cited therein). Conversely, evidence that was timely filed during
the parties’ trial periods need not and should not be resubmitted. See ITC Entm’t
Group Ltd. v. Nintendo of Am. Inc., 45 USPQ2d 2021 (TTAB 1998). Thus, while
exhibits to briefs are not explicitly prohibited by the Trademark Rules, the Board will
usually ignore them, because they comprise either untimely evidence or unnecessary
copies of timely evidence.
Parties to Board cases seem to be under the impression that attaching previously-
filed evidence to a brief (and citing to the attachments, rather than to the original
testimony or notices of reliance) is a courtesy or a convenience to the Board. It is
neither. When considering a case for final disposition, the entire record is readily
available to the panel. Because we must determine whether such attachments are
properly of record, Trademark Rule 2.123(l), citation to the attachment requires
examination of the attachment and then an attempt to locate the same evidence in
the record developed during trial, requiring more time and effort than would have
Opposition No. 91212582
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been necessary if citations were directly to the trial record. See Life Zone Inc. v.
Middleman Group Inc., 87 USPQ2d 1953, 1955 (TTAB 2008).
The parties should instead cite to the record using the TTABVUE docket entry
number and the electronic page number where the document or testimony appears.
For material or testimony that has been designated confidential and that does not
appear on TTABVUE, the TTABVUE docket entry number where such material or
testimony is located should be included in any citation. See Turdin v. Trilobite, Ltd.,
109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
C. Opposer’s second set of requests for production of documents.

Opposer sought to introduce through a notice of reliance Opposer’s second set of
requests for production of documents, to which Applicant purportedly never
responded.21 Opposer argues that “the Board should enter an adverse inference
against Applicant that if the requested documents were produced, they would not be
favorable to Applicant.”22 We will not draw any adverse inferences from Applicant’s
purported failure to respond to Opposer’s second set of requests for production of
documents for two reasons. First, as Opposer noted in its notice of reliance, while
documents produced in response to document production requests generally cannot
be made of record via a notice of reliance, 37 C.F.R. § 2.120(k)(3)(ii) and TBMP
§ 704.11, written responses to document production requests indicating that no
responsive documents exist may be submitted via a notice of reliance. See

21 26 TTABVUE 5 and 263-270.
22 26 TTABVUE 5.
Opposition No. 91212582
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ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1038, n.7 (TTAB 2012). Thus,
a response to a request for production of documents may be submitted via a notice of
reliance only for the limited purpose of proving that no documents exist.
Second, if a party fails to respond to a request for production of documents, the
party seeking discovery may file a motion for an order to compel production. 37 C.F.R.
§ 2.120(f). A motion to compel discovery must be filed before the day of the deadline
for pretrial disclosures for the first testimony period as originally set or reset. Id.
Opposer elected not file a motion to compel discovery and, therefore, Opposer waived
its right to complain that Applicant did not respond to Opposer’s second set of
requests for production of documents.
We will not draw any adverse inferences from Applicant’s failure to respond to
Opposer’s second set of requests for production of documents.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the application file at issue. The parties introduced the following
testimony and evidence:
A. Opposer’s testimony and evidence.
1. Notice of reliance on the following items:
a. Applicant’s responses to Opposer’s interrogatory Nos. 1-7, 9, 11, 13, 15,
16, 18, 21, 22, and 27;23

23 26 TTABVUE 30-46.
Opposition No. 91212582
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b. Applicant’s supplemental responses to Opposer’s interrogatory Nos. 2,
3, 5, 7, 13, 16, 17, 19 and 27, including documents identified as APP 0001
through APP 0020 and APP 0023 through APP 0026 (designated
confidential);24
c. Applicant’s further supplemental responses to Opposer’s interrogatory
Nos. 7, 16, and 17;25
d. Applicant’s responses to Opposer’s second set of interrogatories Nos. 1-
6;26
e. Applicant’s responses to Opposer’s first set of requests for admission
Nos. 59, 76, 79-81, 84, 87, 118, 119, and 127-130;27
f. Applicant’s supplemental responses to Opposer’s first set of requests for
admission Nos. 91, 95, 99, 171-172, 175-176, and 178-182;28
g. Applicant’s further supplemental responses to Opposer’s first set of
requests for admission Nos. 62-63;29
h. Applicant’s responses to Opposer’s second set of requests for admission
Nos. 1, 5, 8, 9, 10-13, 15, 17, 19, 22, 24, 26 and 27;30

24 26 TTABVUE 48-76 and 25 TTABVUE.
25 26 TTABVUE 79-81.
26 26 TTABVUE 91-95.
27 26 TTABVUE 167-178.
28 26 TTABVUE 169-188.
29 26 TTABVUE 191-194.
30 26 TTABVUE 210-220.
Opposition No. 91212582
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i. Applicant’s responses to Opposer’s first set of requests for production of
documents Nos. 15, 28, 35-40, 42, 44, 46, 62, 63, and 74 for the purpose
of indicating that no responsive documents exist. See ShutEmDown
Sports Inc. v. Lacy, 102 USPQ2d at 1038 n.7;31
j. Applicant’s supplemental responses to Opposer’s first set of requests for
production of documents Nos. 9, 20, 41, 48, 49, 61 and 64, for the purpose
of indicating that no responsive documents exist;32
k. Copies of registrations owned by Opposer, pleaded and not pleaded,
printed from the USPTO electronic database showing current status and
title upon which Opposer intends to prove its claims of likelihood of
confusion, likelihood of dilution, and false suggestion of a connection;33
l. Copies of applications for marks containing the name “Marley” filed by
Opposer which were not pleaded in the Notice of Opposition and upon
which Opposer intends to prove its claims of likelihood of confusion,
likelihood of dilution and false suggestion of a connection;34 and
m. Documents in Application Serial No. 85150251 for the mark ONE LOVE
ONE OCEAN filed by Sunkissed Enterprises, Inc. purportedly to show
Applicant’s efforts to associate its goods and services with Opposer;35

31 26 TTABVUE 239-255.
32 26 TTABVUE 257-261.
33 26 TTABVUE 272-360.
34 26 TTABVUE 362-400.
35 26 TTABVUE 402-421.
Opposition No. 91212582
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2. Testimony deposition of Shawn Tolley, Applicant’s President;36
3. Testimony deposition of Robert A. Parks, President of Sunkissed
Enterprises, Inc., a screen printing company;37
4. Testimony deposition of Doreen Crujeiras, an employee at Bob Marley
Music, a management agent for Opposer;38
5. Testimony deposition of Pete A. D’Auria, Chief Financial Officer of Bravado
International Group, an entertainment merchandising business and
Opposer’s licensee;39
6. Testimony deposition of Michael Conley, a former part owner of Zion
Rootswear, a licensee of Opposer that sold t-shirts, head wear, hooded
sweatshirts, decals, incense, tapestries, and other things that fit with
music, musicians and entities;40 and
7. Rebuttal notice of reliance on documents in other proceedings before the
Board purporting to rebut Applicant’s evidence of third-party use.41
B. Applicant’s testimony and evidence.
1. Notice of reliance on the following items:

36 75 TTABVUE. The portions of the Tolley deposition designated confidential are posted at
76 TTABVUE.
37 77 TTABVUE. The portions of the Parks deposition designated confidential are posted at
78 TTABVUE.
38 79-80 TTABVUE. The portions of the Crujeiras deposition designated confidential are
posted at 86 and 87 TTABVUE.
39 83 TTABVUE. The portions of the D’Auria deposition designated confidential are posted at
84 TTABVUE.
40 85-87 TTABVUE.
41 55 TTABVUE.
Opposition No. 91212582
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a. Copies of third-party registrations containing the name “Marley”;42
b. Excerpts from the prosecution history files of some of the third-party
registrations;43
c. Copies of applications from U.S. Alcohol and Tobacco Tax and Trade
Bureau online registry for alcoholic beverages label approvals
containing the name “Marley”;44
d. Wikipedia entries for individuals or places with the name “Marley”;45
e. News articles referring to “Marley Station”;46 and
f. Excerpts from websites showing third-party use of “Marley”;47 and
2. Applicant’s revised notice of reliance on Applicant’s responses to Opposer’s
written discovery introduced purportedly to make not misleading
Applicant’s answers to Opposer’s written discovery.48
III. Standing
Standing is a threshold issue in every inter partes case. See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). To
establish standing in an opposition or cancellation proceeding, a plaintiff must prove

42 38 TTABVUE 13-130.
43 38 TTABVUE 132-283 and 39 TTABVUE 2-328.
44 39 TTABVUE 330-337.
45 40 TTABVUE 4-61.
46 40 TTABVUE 63-78.
47 40 TTABVUE 79-157.
48 49 TTABVUE.
Opposition No. 91212582
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that it has “both a ‘real interest’ in the proceedings as well as a ‘reasonable’ basis for
its belief of damage.” See Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
Opposer has established its standing by properly introducing into evidence copies
of its pleaded registrations.49 See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); N.Y. Yankees P’ship v. IET Prods. & Servs.,
Inc., 114 USPQ2d 1497, 1501 (TTAB 2015). Applicant, in its brief, does not contest
that Opposer has standing.
IV. Priority
Because Opposer’s pleaded registrations are of record, priority is not at issue with
respect to the goods and services identified therein. Mini Melts, Inc. v. Reckitt
Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).
We turn now to whether Opposer has proven that it has made prior use of
MARLEY for clothing, a necessary element of any claim under Section 2(d). Opposer
must establish proprietary rights in its pleaded common-law mark that precede
Applicant’s actual or constructive use of its involved mark. See Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Larami Corp.
v. Talk to Me Programs Inc., 36 USPQ2d 1840, 1845 (TTAB 1995). In other words,
because unregistered marks are not entitled to the presumptions established under

49 26 TTABVUE 272-360.
Opposition No. 91212582
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Sections 7(b)-(c) of the Trademark Act, 15 U.S.C. §§ 1057(b) and (c), it is Opposer’s
burden to demonstrate that it owns a trademark that was used prior to Applicant’s
first use of its mark and not abandoned. Life Zone Inc. v. Middleman Grp. Inc.,
87 USPQ2d 1953, 1959 (TTAB 2008).
Applicant may rely on the filing date of its application, October 23, 2012, as its
constructive date of first use or, in the alternative, an earlier date of actual use. In
this regard, Opposer elicited testimony from Shawn Tolley, Applicant’s President,
that Applicant first used the mark GNARLY MARLEY’S in connection with the retail
store services as early as October 15, 2011.50 Accordingly, Applicant’s priority date
for its retail store services is October 15, 2011 and, in the absence of testimony, its
priority date for the goods in Classes 25 and 26 is October 23, 2012.
Michael Conley, a former owner of Zion Rootswear, a licensee and partner of
Opposer, testified that Zion Rootswear sold products bearing MARLEY standing
alone since 2003.
Q. Did any of Zion Rootswear’s licensed products
included the name “Marley,” standing alone?
A. Yes.
Q. Do you know when the first time was that Zion
Rootswear offered a product bearing the name
“Marley,” standing alone?

50 Tolley Testimony Dep., pp. 75-78 and Exhibits 4 and 5 (75 TTABVUE 78 and 256-57).
Although Mr. Tolley testified that he believed GNARLY MARLEY’S was first used October
20, 2011, Exhibit 5, a store receipt, is dated October 15, 2011. The precise date, October 15
or October 20, does not change our decision.
Opposition No. 91212582
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A. Yes. It would have been our spring and summer
offering of 2003, which would have been mid to late
February.
Q. And how do you know that?
A. Just from doing this throughout the years, and our
catalogues came out pre-spring and summer and
pre-holiday.51
Two examples of licensed products displaying MARLEY as a mark from the 2003 Zion
Rootswear catalog are reproduced below:
52

53

51 Conley Testimony Dep., pp. 17-18 and Exhibit 84 (85 TTABVUE 18-19 and 125-152).
52 Conley Testimony Dep. Exhibit 84 (85 TTABVUE 131).
53 Conley Testimony Dep. Exhibit 84 (85 TTABVUE 134).
Opposition No. 91212582
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Opposer has used MARLEY on t-shirts and hats since 2003 and, therefore, has
priority for those goods.
V. 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 likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“du Pont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 135
S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each du Pont
factor that is relevant or for which there is evidence of record. See M2 Software, Inc.
v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006);
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)
(“While we have considered each factor for which we have evidence, we focus our
analysis on those factors we find to be relevant.”). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340,
71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”); see also In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
Opposition No. 91212582
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evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 64 USPQ2d
at 1380).
A. Similarity or dissimilarity and nature of the goods and services.
As noted above, Applicant is seeking to register its mark for the goods and services
listed below:
Apparel, namely, t-shirts, shirts, pants, shorts, and
dresses, in Class 25;
Souvenirs and novelty goods, namely, ornamental novelty
buttons, badges, and pins, in Class 26; and
Retail store services featuring clothing, souvenirs, and
novelty gift items, in Class 35.
Opposer has used its MARLEY mark in connection with t-shirts and has
registered BOB MARLEY for t-shirts, thermal shirts, and sweatshirts.54 Thus, the
clothing products are in part identical.55

54 ”Shirts,” as identified in Applicant’s application, is broad enough to encompass Opposer’s
identified “thermal shirts” and “sweatshirts.” 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.’”).
55 Under this du Pont factor, Opposer need not prove, and we need not find, similarity as to
each and every product listed in the description of goods. It is sufficient for a refusal based
on likelihood of confusion that relatedness is established for any item encompassed by the
identification of goods in a particular class in the application. Tuxedo Monopoly, Inc. v. Gen.
Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Inter IKEA Sys. B.V. v.
Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); General Mills Inc. v. Fage Dairy Processing
Indus. SA, 100 USPQ2d 1584, 1588 n.1 (TTAB 2011), judgment set aside on other grounds,
110 USPQ2d 1679 (TTAB 2014).
Opposition No. 91212582
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Opposer has registered BOB MARLEY for ornamental cloth patches, which
Shawn Tolley, Applicant’s President, has testified are the same thing as ornamental
novelty badges.
Q. What’s an ornamental badge - - or ornamental
novelty badge?
* * *
A. A patch, a patch that you attach to a bomber jacket
or if you played sports in high school and you
lettered that patch that you sew on. Or if you’re in
the Boy Scouts, or Cub Scouts or Girl Scouts, those
are the patches that are sewn on to the garments.
Q. Okay. And is the material that the patch is made out
of, fabric?
A. Yes - - if you are asking what I am thinking of, yes.56
An example of Opposer’s BOB MARLEY patches displayed in the 2003 Zion
Rootswear catalog are reproduced below:57

56 Tolley Testimony Dep., pp. 87-88 (75 TTABVUE 87-88).
57 Conley Testimony Dep. Exhibit 84 (85 TTABVUE 133).
Opposition No. 91212582
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Thus, Applicant’s ornamental novelty badges and Opposer’s ornamental cloth
patches are the same.
Applicant’s retail store services in the field of clothing, souvenirs, and novelty gift
items include many of Opposer’s products. In this regard, Shawn Tolley, Applicant’s
President, testified that it is not uncommon for a company to use a name for a retail
store and sell products under that same name.58 Likelihood of confusion may result
from the use by different parties of the same or similar marks for goods, on the one
hand, and in connection with services that deal with those goods on the other. See In
re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988)
(applicant’s general merchandise store services includes the sale of furniture which
applicant does, in fact, sell); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006)
(jewelry and jewelry store services are inherently related goods and services); In re
Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992) (“there is no question that store
services and the goods which may be sold in that store are related goods and services
for the purpose of determining likelihood of confusion.”). In fact, Applicant has
purchased BOB MARLEY licensed products from Opposer’s licensee, Zion Rootswear,
including clothing products, wristbands, stickers, patches, necklaces.59
We find that Applicant’s goods are identical to Opposer’s goods and that
Applicant’s services are related to Opposer’s goods.

58 Tolley Testimony Dep., p. 114 (75 TTABVUE 114).
59 D’Auria Testimony Dep., pp. 82-83, 84-87 (confidential), and 90-97 (Confidential) and
Exhibit 78 (Confidential) (83 TTABVUE 74-75 and 84 TTABVUE 4-11 and 51-67); Tolley
Testimony Dep., pp. 110-111 (75 TTABVUE 110-111).
Opposition No. 91212582
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B. Established, likely-to-continue channels of trade and buyers to whom sales are
made.

Because Applicant’s “apparel, namely, t-shirts, shirts, pants, shorts, and dresses”
and “souvenirs and novelty goods, namely, ornamental novelty buttons, badges, and
pins” are in part identical to Opposer’s BOB MARLEY t-shirts and shirts and
ornamental cloth patches, we presume that the channels of trade and classes of
purchasers are the same. See Viterra, 101 USPQ2d at 1908 (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 purchasers are
considered to be the same); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039,
1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health
Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
With respect to the channels of trade and classes of consumers for Applicant’s
retail store services, Opposer sells its products through its licensees to retail stores
such as Applicant’s retail store.
Q. Where does Bravado sell its licensed Bob Marley
products, through what channels?
A. We sell it through the retail channel, and that retail
channel is what we would consider our marts, mass
market, Walmart K-Mart. We also sell it mid-tier,
which would be Target, Kohl's. We sell it at
independent specialty shops, which would be in your
malls, Hot Topic, Spencer Gifts, and then we sell it
to mo[m] and pop accounts, and we also sell it to a
bunch of what we would call direct to consumer
outlets similar to ourselves, so Amazon, there is a
company called Old Glory that does online sales to
Opposition No. 91212582
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consumers, and then obviously direct to consumers
through our website.
Q. And included in the mom-and-pop stores are any
surf-related or beach-related stores included in that?
A. Yes.
Q. And what about gift stores that sell more touristy
type items?
A. Yes.60
As previously noted, Applicant purchases BOB MARLEY licensed products from
Opposer’s licensee, Zion Rootswear, including clothing products, wristbands, stickers,
patches, necklaces.61 Accordingly, Opposer’s products are offered through the same
channels of trade and to the same classes of consumers as Applicant’s retail store
services.
C. The conditions under which purchases are made.
Because neither Opposer’s identifications of goods, nor Applicant’s identifications
of goods or services, have any restrictions or limitations as to channels of trade,
classes of consumers, quality, or price, we must treat the goods and services as
including inexpensive as well as more costly products, and the retail stores as
including “mom and pop” shops as well as prestigious, exclusive stores, and therefore
presume that purchasers for these goods and services include ordinary consumers
who may buy inexpensive clothing, souvenirs, and novelties on impulse. See Stone

60 D’Auria Testimony Dep., pp. 75-76 (83 TTABVUE 71-72).
61 D’Auria Testimony Dep., pp. 82-83, 84-87 (confidential), and 90-97 (Confidential) and
Exhibit 78 (Confidential) (83 TTABVUE 74-75 and 84 TTABVUE 4-11 and 51-67); Tolley
Testimony Dep., pp. 110-111 (75 TTABVUE 110-111).
Opposition No. 91212582
- 26 -
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1163-64 (Fed. Cir. 2014) (recognizing Board precedent requiring consideration of the
“least sophisticated consumer in the class”). See also In re Sailerbrau Franz Sailer,
23 USPQ2d 1719, 1720 (TTAB 1992) (finding that not all purchasers of wine may be
discriminating because while some may have preferred brands, “there are just as
likely to be purchasers who delight in trying new taste treats.”).
D. Strength of Opposer’s MARLEY and BOB MARLEY marks, including the
number and nature of similar marks in use on similar goods and services.

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
marketplace recognition of the mark. See 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).”); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-
72 (TTAB 2011) (the strength of a mark is determined by assessing its inherent
strength and its commercial strength); Tea Bd. of India v. Republic of Tea Inc.,
80 USPQ2d 1881, 1899 (TTAB 2006); 2 J. Thomas McCarthy, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 11:83 (5th ed. June 2018 update) (“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 use.”).
Opposition No. 91212582
- 27 -
1. The inherent strength of the registered BOB MARLEY and MARLEY marks.
Wikipedia.org describes “Marley” as “an English-language surname.”62 Opposer
proffered no countervailing meaning. Accordingly, “Marley” is primarily merely
surname and Opposer’s common law MARLEY trademark is not inherently
distinctive.63 See In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652,
653 (Fed. Cir. 1985):
The statute in Section 2(e)(3) (15 U.S.C. §1052(e)(3))64
reflects the common law that exclusive rights in a surname
per se cannot be established without evidence of long and
exclusive use which changes its significance to the public
from a surname of an individual to a mark for particular
goods or services. The common law also recognizes that
surnames are shared by more than one individual, each of
whom may have an interest in using his surname in
business, and by the requirement for evidence of
distinctiveness, in effect, delays appropriation of exclusive
rights in the name. See 1 J. Gilson, Trademark Protection
and Practice §2.08 (1982). The statute, thus, provides a
period of time, as under the common law, to accommodate
the competing interests of others. An analysis of similar
considerations in connection with geographic terms can be
found in In re Nantucket, Inc., 677 F.2d 95, 102-04, 213
USPQ 889, 895-96 (CCPA 1982) (Nies, J., concurring).

62 40 TTABVUE 4. Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY
(2019) defines “Marley” as “Robert Nesta (“Bob”), 1945-81, Jamaican reggae singer, guitarist,
and songwriter: popularizer of Rastafarianism.” See also Merriam-Webster.com (“Definition
of Marley: Bob 1945-81 Robert Nesta Marley Jamaican singer and songwriter”);
ENCYCLOPAEDIA BRITANNICA (listing Bob Marley and Jacob Marley, a fictional character
who is the deceased business partner of Ebenezer Scrooge in “A Christmas Carol,” by Charles
Dickens). The Board may take 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), and information from
encyclopedias. B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d
1719, 1721 (Fed. Cir. 1988) (“dictionaries and encyclopedias may be consulted”).
63 We note Applicant’s third-party registrations including the name “Marley” and evidence of
third-party use of the name “Marley.”
64 Now Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 2(e)(4).
Opposition No. 91212582
- 28 -
On the other hand, Opposer’s BOB MARLEY mark is registered on the Principal
Register without a claim of acquired distinctiveness. Because BOB MARLEY has
been registered, it is entitled to a presumption of validity by Section 7(b) of the
Trademark Act, 15 U.S.C. § 1057(b), and “moreover, in the absence of a Section 2(f)
claim in the registration, that the mark is inherently distinctive for the goods.” Tea
Bd. of India, 80 USPQ2d at 1899.
2. The commercial strength of Opposer’s BOB MARLEY and MARLEY marks.
Market strength is the extent to which the relevant public recognizes a mark as
denoting a single source. Tea Bd. of India, 80 USPQ2d at 1899.
There is no dispute that Bob Marley is famous.65
Bob Marley, in full Robert Nesta Marley, (born
February 6, 1945, Nine Miles, St. Ann, Jamaica—died May
11, 1981, Miami, Florida, U.S.), Jamaican singer-
songwriter whose thoughtful ongoing distillation of early
ska, rock steady, and reggae musical forms blossomed in
the 1970s into an electrifying rock-influenced hybrid that
made him an international superstar.
* * *
Although his songs were some of the best-liked and most
critically acclaimed music in the popular canon, Marley
was far more renowned in death than he had been in life.
Legend (1984), a retrospective of his work, became the best-
selling reggae album ever, with international sales of more
than 12 million copies.66

65 Applicant’s response to Opposer’s request for admission Nos. 38, 42, and 87 (26 TTABVUE
173, 181, and 183).
66 Robert Nesta Marley, ENCYCLOPAEDIA BRITANNICA (2018) (britannica.com).
Opposition No. 91212582
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Bob Marley’s fame as a musician positively affects the sale of BOB MARLEY and
MARLEY branded merchandise.
Q. What is your understanding of why consumers buy
apparel related to Bob Marley?
A. They love Bob Marley. They love his music. It’s a
great fit.
Q. And Zion Rootswear also produces and sells T-shirts
and other apparel bearing the image of other
musicians; correct?
A. Yes.
Q. In your experience, is there a connection between
one’s fame as a musician and the popularity of the
products associated with that musician?
A. Yes.
Q. And what is that connection?
A. People love their music icons, their bands, and they
kind of want to advertise and let other people know
that they like them.67
The licenses for the sale of BOB MARLEY and MARLEY branded products have
been profitable.
Q. And was the license, Zion Rootswear, obtained from
Fifty-Six Hope Road a good property for Zion
Rootswear?
A. Fantastic property for Zions Rootswear. Yes.
Q. And how so?

67 Conley Testimony Dep., p. 49-50 (85 TTABVUE 50-51); see also D’Auria Testimony Dep.,
pp. 74-75 (83 TTABVUE 70-71) (“It’s a way for a fan, in this case consumer, to express their
like for Bob Marley, their association with his lifestyle. You know, it’s a way for a consumer
to relate back to the musician.”).
Opposition No. 91212582
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A. Hugely recognizable. Everybody knows who Bob
Marley is, and being the exclusive person for that
was very good for our reputation and for the
company.
Q. And in your experience as part owner of Zion
Rootswear, how would you characterize the demand
for Bob Marley related goods?
A. Huge.
Q. And how did the demand for Bob Marley related
goods compare to your other licensed properties; for
example, Johnny Cash, Jimi Hendrix, Miles Davis?
A. I would say Bob Marley was about probably 70
percent of Zion Rootswear business. It was one of
those what we call evergreen licenses. It was
timeless. He would have fans from 12 to 70 years
old.68
Bob Marley related products are the largest selling products for Zion Rootswear
in terms of dollars and units.69 For purposes of perspective, Zion Rootswear also
represents Willie Nelson, the Grateful Dead, Elvis Presley, and James Brown.70
Michael Conley testified that when he owned Zion Rootswear, it never sold less
than $1 million of “Bob Marley related goods” per year and there were some years
where the gross revenue of “Bob Marley related goods” was significantly higher for
example in excess of $10,000,000.71 Revenues for 2013 and 2104 have exceeded

68 Conley Testimony Dep., p. 48 (85 TTABVUE 49); See also Conley Testimony Dep., p. 13 (85
TTABVUE 14); D’Auria Testimony Dep., p. 37 (84 TTABVUE 18) (“we have made, you know,
a couple million dollars each on those properties”).
69 D’Auria Testimony Dep., p. 126 (83 TTABVUE 102).
70 Conley Testimony Dep., p. 9 (85 TTABVUE 10).
71 Conley Testimony Dep., p. 49 (85 TTABVUE 50). Conley formed Zion Rootswear with his
brothers and Opposer in 1999 and the Conleys sold their share in 2012. Conley Testimony
Opposition No. 91212582
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$10,000,000.72 The advertising expenditures for Opposer’s MARLEY branded
products in 2013 and 2014 are not impressive.73 In assessing the probative value of
this testimony, we take into consideration that Mr. Conley did not testify that the
revenues and advertising expense were limited to sales and advertising in the United
States.
The evidence establishes that Opposer’s MARLEY trademarks are commercially
strong marks.
3. The number and nature of similar marks in use on similar goods and services.
Although Applicant did not introduce evidence of third-party use, it introduced
third-party registrations containing the name “Marley.”74 The Federal Circuit has
held that “extensive evidence of third-party use and registrations is ‘powerful on its
face,’ even where the specific extent and impact of the usage has not been
established.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015)
(citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1674 (Fed. Cir. 2015)). However, in this case, the third-party registrations do not
persuade us that MARLEY is a weak mark.

Dep., pp. 7, 10, 51 (85 TTABVUE 8, 11, 52); D’Auria Testimony Dep., pp. 99-100
(83 TTABVUE 79-80).
72 D’Auria Testimony Dep., p. 79-80 (84 TTABVUE 24-25) (confidential). The number of units
of Marley branded products sold have been commensurate with the revenues. D’Auria
Testimony Dep., p. 79 (84 TTABVUE 24) (confidential).
73 D’Auria Testimony Dep., p. 78 (84 TTABVUE 23).
74 38 TTABVUE 13-130.
Opposition No. 91212582
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First, many of the third party registrations include registrations for the names of
“CEDELLA MARLEY” owned by Cedella Marley, an individual, “ZIGGY MARLEY”
owned by David Nesta Marley aka Ziggy Marley, an individual, “THE MARLEY
BROTHERS” owned by Ky-Mani Ronald Marley, Damien Robert Nesta Marley,
Julian Ricardo Marley, Stephen Robert Nesta Marley, and David Nesta Marley, all
individuals who Applicant concedes are “members” of Opposer, but who are not
Opposer itself.75 At a minimum, the third-party registrations owned by Opposer’s
members have been registered with Opposer’s knowledge and consent.
Second, the remainder of the registrations are for marks that are distinguishable
or for marks registered for goods or services unrelated to Opposer’s goods and
services. For example:
• Registration No. 4190574 for the mark CHRISTOPHER MARLEY for “art
galleries”;76
• Registration No. 3137677 for the mark MARLEY STATION and design for
“shopping center services”;77 and

75 Applicant’s Brief, pp. 17-18 (67 TTABVUE 24-25).
76 38 TTABVUE 54.
77 38 TTABVUE 63. This registration was cancelled effective April 7, 2017. A cancelled or
expired registration has no probative value other than to show that it once issued and it is
not entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act. In Re
Ginc UK Limited, 90 USPQ2d 1472, 1480 (TTAB 2007); see also Action Temp. Servs. Inc. v.
Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“a cancelled
registration does not provide constructive notice of anything.”); In re Hunter Publ’g Co., 204
USPQ 957, 963 (TTAB 1979) (cancellation “destroys the Section [7(b)] presumptions and
makes the question of registrability ‘a new ball game’ which must be predicated on current
thought.”).
Opposition No. 91212582
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• Registration No. 1075173 for the mark MARLEYS for “fresh apples.”78
See In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (the third-party
registrations are of limited probative value because the goods identified in the
registrations appear to be in fields which are far removed from the goods at issue);
see also Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572,
19 USPQ2d 1424, 1430 (Fed. Cir. 1991) (“None of the third party marks and uses of
ACE made of record are nearly as closely related to the activities of the parties as the
virtually identical uses of the parties are to each other.”); Key Chemicals, Inc. v. Kelite
Chemicals Corp., 464 F.2d 1040, 175 USPQ 99, 101 (CCPA 1972) (“Nor is our
conclusion altered by the presence in the record of about 40 third-party registrations
which embody the word “KEY”. The great majority of those registered marks are for
goods unrelated to those in issue, and there is no evidence that they are in continued
use. We, therefore, can give them but little weight in the circumstances present
here”); SBS Products Inc. v. Sterling Plastic & Rubber Products Inc., 8 USPQ2d 1147,
1149 n.6 (TTAB 1988) (“[E]ven if evidence of such third-party use were submitted, it
would be of no aid to respondent herein where the third-party usage was for goods
unrelated to either petitioner’s skin care products or respondent's stuffing box
sealant”).
Considering the record as a whole, including evidence pertaining to both inherent
and commercial strength, we find that Opposer’s marks are appropriately placed on
the “strong” side of the “‘spectrum from very strong to very weak.’” Joseph Phelps

78 38 TTABVUE 69.
Opposition No. 91212582
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Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734
(Fed. Cir. 2017) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059,
1063 (Fed. Cir. 2003)); Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d
1043, 1059 (TTAB 2017) (“The commercial strength of Petitioner’s TAO mark
outweighs any conceptual weakness.”). Opposer’s MARLEY trademarks are entitled
to a broad scope of protection.
E. Similarity or dissimilarity of the marks.
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. 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); see also Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d
1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); San Fernando Elec. Mfg. Co. v. JFD
Elec. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests.
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353
(Fed. Cir. 1992).
Opposition No. 91212582
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Applicant’s mark is GNARLY MARLEY’S. The word “Gnarly” is an adjective
defined, inter alia, as a slang term for “cool, good.”79 Notwithstanding Shawn Tolley’s
testimony to the contrary,80 the adjectival “Gnarly” modifies “Marley’s.”81 Thus, the
name “Marley” is the dominant part of Applicant’s mark because “Gnarly” describes
a quality of “Marley’s,” as adjectives are designed to do. There is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, such as a common dominant element, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Viterra, 101
USPQ2d at 1908). We focus on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. See
L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012). Because the goods and
services are at issue are clothing, souvenir and novelty goods, and retail store services

79 Merriam-Webster.com. See also ROGET’S 21ST CENTURY THESAURUS (3rd ed. 2013)
(adjective for cool, excellent).
80 Tolley Testimony Dep., p. 45 (75 TTABVUE 45).
81 An “adjective” is defined as
any member of a class of words that modify nouns and pronouns,
primarily by describing a particular quality of the word they are
modifying, as wise in a wise grandmother, or perfect in a perfect
score, or handsome in He is extremely handsome. Other terms,
as numbers (one cup; twelve months), certain demonstrative
pronouns (this magazine; those questions), and terms that
impose limits (each person; no mercy) can also function
adjectivally, as can some nouns that are found chiefly in fixed
phrases where they immediately precede the noun they modify,
as bottle in bottle cap and bus in bus station.
Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019).
Opposition No. 91212582
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in the field of clothing and souvenir and novelty goods, the average purchaser is an
ordinary consumer.
In this regard, consumers are apt to shorten GNARLY MARLEY’S to MARLEY’S.
For example,
• In a January 26, 2015 email from Applicant to Zion Rootswear, Applicant’s
employee transmitted an order for “marley’s”;82 and
• In an invoice dated October 12, 2011, Key Largo Canvas Products referred to
GNARLY MARLEY’S as “Marley’s.”
Fabricate and install New Backlit type awning over the
new Marley’s Store front.83
“[U]sers of language have a universal habit of shortening full names – from haste or
laziness or just economy of words. Examples are: automobile to auto; telephone to
phone; necktie to tie; gasoline service station to gas station.” In re Abcor Dev. Corp.,
588 F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich, concurring).
[C]ompanies are frequently called by shortened names,
such as Penney’s for J.C. Penney’s, Sears for Sears and
Roebuck (even before it officially changed its name to Sears
alone), Ward’s for Montgomery Ward’s, and Bloomies for
Bloomingdales.

82 D’Auria Testimony Dep. Exhibit 82 (84 TTABVUE 79). This exhibit is improperly
designated confidential because it does not contain any trade secret or commercially sensitive
information. Accordingly we disregard the confidential designation. Trademark Rule 2.116,
37 C.F.R. § 2.116(g), (“The Board may treat as not confidential that material which cannot
reasonably be considered confidential, notwithstanding a designation as such by a party.”).
83 25 TTABVUE 4. This invoice was improperly designated confidential because it does not
contain any trade secret or commercially sensitive information.
Opposition No. 91212582
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Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992).
See also Big M Inc. v. The U.S. Shoe Corp., 228 USPQ 614, 616 (TTAB 1985) (“we
cannot ignore the propensity of consumers to often shorten trademarks and, in the
present case, this would be accomplished by dropping the ‘T.H.’ in referring to
registrant’s stores [T.H. MANDY].”).
The significance of the shared name “Marley” is significant because Applicant,
intentionally or unintentionally, has associated itself with Bob Marley. As noted
above, Applicant has purchased BOB MARLEY licensed products from Opposer’s
licensee, Zion Rootswear, including clothing products, wristbands, stickers, patches,
and necklaces.84 It stretches credulity to contend that at least some consumers in
GNARLY MARLEY’S retail store purchasing MARLEY t-shirts or BOB MARLEY
products are not going to believe that there is an affiliation, connection or association
as to the origin, sponsorship, or approval of the goods and services.
In addition, Applicant has sold its own t-shirts featuring the caricature of an
individual with dreadlocks and smoking marijuana in close connection with its
GNARLY MARLEY trademark. The t-shirt design is reproduced below:85

84 D’Auria Testimony Dep., pp. 82-83, 84-87 (confidential), and 90-97 (Confidential) and
Exhibit 78 (Confidential) (83 TTABVUE 74-75 and 84 TTABVUE 4-11 and 51-67); Tolley
Testimony Dep., pp. 110-111 (75 TTABVUE 110-111).
85 Applicant’s supplemental response to Opposer’s interrogatory No. 2 (26 TTABVUE 48 and
57).
Opposition No. 91212582
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Bob Marley, a Rastafarian,86 is known for, inter alia, his dreadlocks and for smoking
marijuana.87 The combination of GNARLY MARLEY’S and the Rastafarian indicia,
including smoking marijuana, emphasize the reference to Bob Marley. Trade dress
may provide evidence of whether a word mark projects a confusingly similar
commercial impression. See Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d
350, 22 USPQ2d 1453, 1458 (Fed. Cir. 1992); Specialty Brands, Inc. v. Coffee Bean
Distribs., Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984). Accordingly, some
consumers are likely to mistakenly believe that GNARLY MARLEY’S is an addition
to already extensive BOB MARLEY product line.
We find that Applicant’s mark GNARLY MARLEY’S is similar to Opposer’s BOB
MARLEY and MARLEY marks in their entireties in terms of appearance, sound,
meaning, and commercial impression.

86 Crujeiras Testimony Dep., p. 59 (79 TTABVUE 60). Dreadlocks are an important part of
the Rastafarian culture because Rastafarians do not believe in cutting their hair. Id. at p. 64
(70 TTABVUE 65).
87 Parks Testimony Dep., pp. 67-68 (77 TTABVUE 68-69); Tolley Testimony Dep. pp. 120-121
(75 TTABVUE 120-121); Crujeiras Testimony Dep., pp. 64-65, 77, 79 (79 TTABVUE 65-66,
78, 79); D’Auria Testimony Dep., pp. 15-16 (83 TTABVUE 16-17).
Opposition No. 91212582
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F. The nature and extent of any actual confusion.
As noted above, Applicant began using its mark in October 2011. Thus, by the end
of trial, there had been five years of concurrent use of the parties’ marks. Neither
party introduced any testimony or evidence regarding any reported instances of
confusion. However, the absence of any reported instances of confusion is meaningful
only if the record indicates appreciable and continuous use by Applicant of its mark
for a significant period of time in the same markets as those served by Opposer under
its marks. Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660
(TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words, for the
absence of actual confusion to be probative, there must have been a reasonable
opportunity for confusion to have occurred. Barbara’s Bakery Inc. v. Landesman,
82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the absence of actual
confusion depends upon there being a significant opportunity for actual confusion to
have occurred); Red Carpet Corp. v. Johnstown Am. Enters. Inc., 7 USPQ2d 1404,
1406-1407 (TTAB 1988); Central Soya Co., Inc. v. N. Am. Plant Breeders, 212 USPQ
37, 48 (TTAB 1981) (“the absence of actual confusion over a reasonable period of time
might well suggest that the likelihood of confusion is only a remote possibility with
little probability of occurring”).
Opposition No. 91212582
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“Applicant’s only retail store is located at 1913 Overseas Hwy., Islamorada,
Florida.”88 The GNARLY MARLEY’S retail store is approximately 1200 square feet.89
“The GNARLY MARLEY’S Goods are offered for sale and/or will be offered for sale at
Applicant’s GNARLY MARLEY’S retail stores.”90 Applicant does not have a
GNARLEY MARLEY website, nor does in advertise its GNARLY MARLEY’S goods
or services on its Sandal Factory website.91 Applicant’s GNARLY MARLEY’S
customers are tourists that shop at the GNARLY MARLEY’S retail store while
visiting the Florida Keys.92
Because Applicant’s GNARLY MARLEY’S goods are sold primarily to tourists who
visit its one retail GNARLY MARLEY’S store located in Islamorda in the Florida
Keys, there has not been a reasonable opportunity for confusion to have occurred.
This is especially true because Applicant’s GNARLY MARLEY’S goods, clothing,
souvenirs, and novelty gift items, are not the type of products consumers are going to
complain about if there is a problem.
We find the nature and extent of any actual confusion to be a neutral factor.

88 Applicant’s supplemental response to Opposer’s interrogatory No. 16 (26 TTABVUE 80).
89 Tolley Testimony Dep., p. 43 (TTABVUE 43).
90 Applicant’s response to Opposer’s interrogatory No. 16 (26 TTABVUE 52); Tolley
Testimony Dep., p. 108 (75 TTABVUE 108) (“Q. Are the Gnarley Marley T-shirts sold at any
retail outlet other than the Gnarly Marley store? A. No.”).
91 Tolley Testimony Dep., p. 109 (75 TTABVUE 109).
92 Tolley Testimony Dep., p. 104 (75 TTABVUE 104).
Opposition No. 91212582
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G. Analyzing the factors.
We have concentrated our analysis on the du Pont factors of the similarity or
dissimilarity of the marks, the similarity or dissimilarity and nature of the goods or
service, the established, likely-to-continue channels of trade and purchasers to whom
sales have been made, the strength of Opposer’s marks, and the nature and extent of
any reported instances of actual confusion. That is not to say that we have ignored
the evidence and argument with respect to any other factors. On the contrary, we
have considered all the arguments and evidence that pertain to all the du Pont
factors. However, in reaching our findings of fact and conclusion of law, the factors
that we have not expressly discussed do not outweigh the factors that we have
discussed. Each factor may, from case to case, play a dominant role. du Pont,
177 USPQ at 567. As noted above, “[t]he likelihood of confusion analysis considers all
DuPont factors for which there is record evidence but ‘may focus … on dispositive
factors, such as similarity of the marks and relatedness of the goods.’” In re
i.am.symbolic, LLC, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books,
Inc., 64 USPQ2d at 1380).
Because the marks are similar, the goods are in part identical and Applicant’s
services are related to Opposer’s products, the goods and services are offered in the
same channels of trade to the same classes of consumers, we find that Applicant’s
mark GNARLY MARLEY for the identified goods and services is likely to cause
confusion with Opposer’s registered mark BOB MARLEY for, inter alia, t-shirts,
Opposition No. 91212582
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thermal shirts, sweatshirts, and ornamental cloth patches and Opposer’s common
law mark MARLEY for shirts.
Accordingly, the opposition is sustained under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground of likelihood of confusion.
Because we have sustained the opposition on the ground of likelihood of confusion,
we need not decide the dilution and false suggestion of a connection claims. We have
“discretion to decide only those claims necessary to enter judgment and dispose of the
case,” as our “determination of registrability does not require, in every instance,
decision on every pleaded claim.” Multisorb Tech., Inc. v. Pactive Corp., 109 USPQ2d
1170, 1171-72 (TTAB 2013) (citing Am. Paging Inc. v. Am. Mobilphone Inc.,
13 USPQ2d 2036, 2039-40 (TTAB 1989)), aff’d, 923 F.2d 869, 17 USPQ2d 1726 (Fed.
Cir. 1990) (non-precedential).
Decision: The opposition is sustained under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d).