Gagandeep S. Arora

Trademark Trial and Appeal Board

May 22, 2018

No. 87035279 (T.T.A.B. May. 22, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: May 22, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Gagandeep S. Arora
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Serial No. 87035279
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Francis J. Ciaramella of Law Offices of Rick Ruz, PLLC,
for Gagandeep S. Arora.
Clinton Johnson, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Kuhlke, Bergsman and Hightower,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Gagandeep S. Arora (“Applicant”) seeks registration on the Principal Register of
the mark KING JAMES in standard characters for goods ultimately identified as
“Athletic apparel, namely, pants, jackets, footwear, hats and caps; Baseball caps and
hats; Sports caps and hats; Headgear, namely, hats, caps, snow caps, beanies,
headbands; Toboggan hats, pants and caps,” in International Class 25.1

1 Application Serial No. 87035279 was filed on May 12, 2016, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.

Serial No. 87035279
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with the identified goods, so resembles
the mark KING JAMES ACTIVEWEAR in standard characters (ACTIVEWEAR
disclaimed), registered on the Principal Register for “T-shirts,” in International Class
25,2 as to be likely to cause confusion, mistake or deception.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for reconsideration
the Board resumed the appeal and briefs were filed. We affirm the refusal to register.
I. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis
Ind., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Even within the du
Pont list, only factors that are “relevant and of record” need be considered. 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

2 Registration No. 3972356, issued on June 7, 2011, combined declaration of use and
incontestability under Sections 8 & 15 accepted and acknowledged.
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analysis, two key considerations are the similarities between the marks and the
similarities between the goods. See 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 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., 303 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
A. Similarity of the Goods/Channels of Trade/Consumers
With regard to the goods, channels of trade and classes of consumers, we must
make our determinations based on the goods as they are identified in the application
and cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Octocom Sys., Inc.
v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990). “This factor considers whether ‘the consuming public may perceive [the
respective goods of the parties] as related enough to cause confusion about the source
or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d
1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press Inc., 62
USPQ2d at 1004).
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As noted above, Applicant’s identified goods, “Athletic apparel, namely, pants,
jackets, footwear, hats and caps; Baseball caps and hats; Sports caps and hats;
Headgear, namely, hats, caps, snow caps, beanies, headbands; Toboggan hats, pants
and caps,” are very closely related to Registrant’s “T-shirts.” The record evidence
shows the close relationship between various types of athletic apparel (pants, jackets,
footwear, hats) and t-shirts. The Examining Attorney submitted printouts from
several different companies that sell Applicant’s and Registrant’s types of goods
under the same mark. See, e.g., Sept. 2, 2016 Office Action at 43-54 (Nike website
(http://store.nike.com)); Mar. 24, 2017 Office Action at 66-99 (Under Armour website
(https://www.underarmour.com)).3 In addition, the Examining Attorney submitted
several third-party registrations for the same or similar goods as those of both
Applicant and Registrant under the same mark. See, e.g., Reg. No. 4845528 for the
mark FITBIT for shirts, t-shirts, tank tops and hats; Reg. No. 5031419 for the mark
AMONG THE DEAD for, inter alia, beanies, footwear, hats, jackets, pants and t-
shirts; Reg. No. 5031486 for the mark GEAUX-GIRL for, inter alia, athletic apparel,
namely, shirts, pants, jackets, footwear; hats; and t-shirts.4 In re Aquamar, Inc., 115
USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988)) (third-party registrations may serve to suggest
that the goods are of a type that may emanate from a single source).

3 All citations to the prosecution history for the application are to the TSDR (Trademark
Status and Document Retrieval) database. See TBMP § 1203.01 (June 2017).
4 Sept. 2, 2016 Office Action at 4-42; Mar. 24, 2017 Office Action at 27-65.
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Because there are no limitations as to channels of trade or classes of purchasers
in either the application or cited registration, we must presume that Applicant’s and
Registrant’s goods would move in all normal channels of trade and are available to
all classes of purchasers for such goods. See, e.g., Levi Strauss & Co. v. Abercrombie
& Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re
Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read
any restrictions or limitations into the registrant’s description of goods.”). In view of
the close relationship of the goods, it is likely that they will travel in identical, or at
least overlapping, trade channels and be purchased by the same classes of consumers.
In addition, the printouts of web pages discussed above from several websites that
offer various types of athletic apparel, headgear and t-shirts at the same online stores
support this finding.5
In view of the above, these du Pont factors favor a finding of likelihood of
confusion.
B. Fame of the Registered Mark
Applicant argues that “there is no evidence that the cited registration is famous
or has acquired secondary meaning within the marketplace….” 7 TTABVUE 5.
However, in the context of ex parte proceedings an examining attorney is not expected
to submit evidence regarding the fame of the cited mark. In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1086 (TTAB 2016); In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB

5 See Sept. 2, 2016 Office Action; Mar. 24, 2017 Office Action.
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2006); see also TMEP § 1207.01(d)(ix) (Oct. 2017) (“Because of the nature of the
evidence required to establish the fame of a registered mark, the Board normally does
not expect the examining attorney to submit evidence as to the fame of the cited mark
in an ex parte proceeding.”). See also In re Davey Prods. Pty Ltd., 92 USPQ2d 1198,
1204 (TTAB 2009). We find this du Pont factor to be neutral.
C. The number and nature of similar marks in use on similar goods.
Applicant submitted “several third party registrations and applications, which
incorporate the term KING or JAMES” in support of its position that the mark KING
JAMES is weak. This evidence does not move the dial in any measurable way. First,
registrations are not evidence of use in the marketplace. AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) (“The
existence of these registrations is not evidence of what happens in the market place
or that customers are familiar with them nor should the existence on the register of
confusingly similar marks aid an applicant to register another likely to cause
confusion, mistake or to deceive.”). Active third-party registrations may be relevant
to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly
used that the public will look to other elements to distinguish the source of the goods
or services. See, e.g., In re i.am.symbolic, 123 USPQ2d at 1751; Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters.
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015). However, most of
these third-party registrations submitted by Applicant have only one element in
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Registrant’s mark, and consequently have little to no value in evaluating the strength
or weakness of the KING JAMES portion of Registrant’s mark. The only one that
contains both elements, JAMES KINGDOM, presents a very different connotation
and commercial impression. As noted by the Examining Attorney, “[t]he fact that
applicant is unable to provide even one third party registration consisting of both the
terms, ‘KING’ and ‘JAMES’ in effect supports and reinforces the point that the cited
mark is very strong.” 9 TTABVUE 9.
We find this du Pont factor neutral.
D. Similarity/Dissimilarity of the Marks
Under this factor, we compare Applicant’s and Registrant’s 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 focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem.
Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon,
102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). Because the goods are athletic wear and t-shirts without any
restrictions or limitations as to price point or classes of consumers, the average
customer is an ordinary consumer of the respective goods.
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The beginning of Registrant’s mark, KING JAMES ACTIVEWEAR, is identical to
the entirety of Applicant’s mark KING JAMES. The additional word ACTIVEWEAR
in Registrant’s mark is at minimum merely descriptive of the goods, and is
appropriately disclaimed. ACTIVEWEAR is defined as “clothing designed to be worn
for sports, exercise, and outdoor activities.”6 The addition of this highly descriptive
term to Registrant’s mark does not serve to distinguish it from Applicant’s KING
JAMES mark. See In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016)
(addition of GROUP to BARR GROUP insufficient to distinguish it from registered
mark BARR); see also In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 750-51
(Fed. Cir. 1985) (“in articulating reasons for reaching a conclusion on the issue of
confusion, 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 consideration of the marks in their entireties.”). The dominance
of KING JAMES in Registrant’s mark is “reinforced by its location as the first [term]
in the mark.” In re Integrated Embedded, 120 USPQ2d at 1513 (citing Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin, 73 USPQ2d at 1692).
We find the marks, taken in their entireties, to be highly similar in appearance,
sound, connotation and commercial impression.
This du Pont factor weighs in favor of a likelihood of confusion.

6 ENGLISH OXFORD LIVING DICTIONARIES (https://en.oxforddictionaries.com) Mar. 24, 2017
Office Action at 23.
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E. Length of Overlap, Actual Confusion, Extent of Potential Confusion
Applicant’s argument that there is no evidence of actual confusion is not
persuasive. First, the subject application is based on intent to use and there is no
evidence of any overlap in use or opportunities in which confusion could occur. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir.
2000); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
Second, the absence of actual confusion is entitled to little weight, especially in an ex
parte context. See Majestic Distilling Co., 65 USPQ2d at 1205 (“uncorroborated
statements of no known instances of actual confusion are of little evidentiary value”).
See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973)
(stating that self-serving testimony of applicant’s corporate president’s unawareness
of instances of actual confusion was not conclusive that actual confusion did not exist
or that there was no likelihood of confusion).
Applicant’s unsupported and speculative statement that “any potential confusion
between the respective marks would be de minimis,” has no weight.
Accordingly, these du Pont factors are considered neutral.
II. Balancing of Factors
When we consider that the goods are closely related, the channels of trade and
consumers overlap, and the marks are similar, we find that confusion is likely.
Decision: The refusal to register Applicant’s mark is affirmed.