Henry-Lee and Company, LLC

Trademark Trial and Appeal Board

Oct 18, 2019

87470000 (T.T.A.B. Oct. 18, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 18, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Henry-Lee and Company, LLC
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Serial No. 87470000
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Jeffrey A. Pine of Patzik, Frank & Samotny Ltd.
for Henry-Lee and Company, LLC.

Odessa Bibbins, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
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Before Bergsman, Lynch, and English,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background
Henry-Lee and Company, LLC (“Applicant”) seeks registration on the Principal
Register of the mark DENIM SIX in standard characters for “clothing, namely, jeans,
jackets, pants, sweaters, blouses, dresses and tops, with all made in whole or
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substantially in part of denim” in International Class 25.1 The Examining Attorney
refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on
a likelihood of confusion with the registered mark SIX in standard characters for
“Clothing, namely, cotton, polyester and nylon pants, shirts, snow and outdoor jackets
and vests, fleece wear, namely, hooded sweatshirts, t-shirts, and sweatpants;
accessories, namely, knit hats, headwear, belts, footwear, namely, casual, sport and
skateboard shoes” in International Class 25.2 After the Examining Attorney made the
refusal final, Applicant requested reconsideration and appealed. Once the Examining
Attorney denied reconsideration, Applicant and the Examining Attorney submitted
their appeal briefs. For the reasons set forth below, we affirm the refusal to register.
II. Likelihood of Confusion
Our determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. duPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “DuPont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Two key
considerations are the similarities between the marks and the relatedness of the
goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (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

1 Application Serial No. 87470000 was filed May 31, 2017 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on an alleged intent to use the mark in commerce.
2 Registration No. 4970229 issued May 31, 2016.
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effect of differences in the essential characteristics of the goods and differences in the
marks.”). “[I]t is sufficient for finding a likelihood of confusion if relatedness is
established for any item encompassed by the identification of goods within a
particular class in the application.” In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5
(TTAB 2015); see also Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981).
A. The Goods, Trade Channels, and Classes of Consumers
In analyzing the second DuPont factor, we look to the identifications in the
application and cited registration. See Stone Lion Capital Partners v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v.
Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
The Examining Attorney asserts, and we agree, that Applicant’s denim clothing is
legally identical in part to the cotton clothing identified in the cited registration. The
evidence establishes that denim is a type of cotton, such that Registrant’s “…cotton…
pants, shirts, snow and outdoor jackets” encompass Applicant’s “jeans, jackets, pants
…and tops with all made in whole or substantially in part of denim.” See, e.g., In re
Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s
broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s
narrowly identified ‘residential and commercial furniture.’”); In re Linkvest S.A., 24
USPQ2d 1716, 1716 (TTAB 1992). We therefore reject Applicant’s argument that
denim versus cotton is a point of differentiation, and instead find that Applicant’s and
Registrant’s goods overlap in part and are in part legally identical.
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Because the goods in the cited registration are in part legally identical to
Applicant’s, and there are no restrictions or limitations in the respective
identifications, we presume that the goods travel through at least some of the same
channels of trade to the same classes of purchasers, considerations under the third
DuPont factor. See Am. Lebanese Syrian Assoc. Charities Inc. v. Child Health
Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011) (where the services were legally
identical, “the marketing channels of trade and targeted classes of consumers and
donors are the same”); 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).
Thus, the second and third DuPont factors weigh heavily in favor of likely
confusion.
B. The Strength of the Cited Mark
Before we turn to the similarity of the marks, we consider Applicant’s contention
that the cited mark is weak, as that will affect the scope of its protection. In
determining the strength of a mark, we consider both its inherent strength based on
the nature of the mark itself and its commercial strength, based on the marketplace
recognition value of the mark. See 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).”). The strength of a mark under the fifth DuPont factor rests on the extent
to which “a significant portion of the relevant consuming public . . . recognizes the
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mark as a source indicator.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings,
LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (citing Palm Bay Imps.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005)). This factor involves assessing the mark “‘along a
spectrum from very strong to very weak.’” Id. (internal citations omitted). Under the
sixth DuPont factor, proof of recent consumer exposure to third-party use of similar
marks in connection with similar goods may show commercial weakness of a mark,
so as to show that consumers generally distinguish among marks for clothing
consisting of or containing SIX based on minor distinctions. See Juice Generation, Inc.
v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Third-
party registrations for the relevant goods also may be considered “powerful” evidence
of conceptual weakness of a term.
To support its contention that the cited mark is weak, Applicant submitted
approximately 20 third-party registrations of marks that include the word SIX or
numeral 6 for clothing, arguing that because they coexist, consumers “can be expected
to distinguish between” Applicant’s mark and the cited mark.3 Applicant also
attached new evidence to its Brief, in the form of a screenshot from the ebay website

3 7 TTABVUE 61 (Applicant’s Brief). We find that other third-party registrations involving
goods and services quite different from the clothing goods at issue have no bearing on the
strength or weakness of the cited mark. See Omaha Steaks Int’l v. Greater Omaha Packing
Co., 908 F.3d 1315, 128 USPQ2d 1686 (Fed. Cir. 2018) (error to rely on third-party evidence
of similar marks for dissimilar goods, as Board must focus “on goods shown to be similar”);
In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (disregarding
third-party registrations for goods in other classes where the proffering party “has neither
introduced evidence, nor provided adequate explanation to support a determination that the
existence of I AM marks for goods in other classes, … support a finding that registrants’
marks are weak with respect to the goods identified in their registrations”).
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with an offer to sell a single pair of used V SIX jeans and a screenshot from the
Poshmark website showing an offer to sell a single pair of used INDIGO SIX jeans,
two of the third-party registered marks. However, we exclude the evidence pursuant
to Trademark Rule 2.142(d), which provides that “[t]he record in the application
should be complete prior to the filing of an appeal. Evidence should not be filed with
the Board after the filing of a notice of appeal.” 37 C.F.R. § 2.142(d). See also In re
Hollywood Lawyers Online, 110 USPQ2d 1852, 1856-57 (TTAB 2014) (refusing to
consider new evidence attached to the brief). Thus, the record includes no evidence of
third-party use relevant to show commercial weakness, only evidence of third-party
registrations that may bear on the conceptual strength of the cited mark.
Regarding conceptual strength, SIX used for clothing is arbitrary, as a “known
word used in an unexpected or uncommon way.” See Nautilus Grp., Inc. v. Icon Health
& Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173 (Fed. Cir. 2004) (defining an
arbitrary mark as a “known word used in an unexpected or uncommon way” and
observing that such marks are typically strong); see also Palm Bay Imps., 73 USPQ2d
at 1692 (arbitrary terms are conceptually strong trademarks). With one exception,4
the third-party marks all contain additional distinctive matter that distinguishes
them from the cited mark. Examples of these third-party marks include SUBJECT.6,

4 Registration No. 4587412 for the mark . We note that although Applicant submitted a
black-and-white copy of the TESS printout of this mark, the description notes that the mark
includes color and “consists of the white number ‘6’ within a green circle.” February 28, 2018
Response to Office Action at 32.
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EXIT 6, SOLOSIX, and CARBONSIX.5 The number of third-party registrations for
SIX or 6-formative marks pushes the cited mark somewhat away from the strong end
of the spectrum by showing that the various registrants and the USPTO relied on
other distinctive matter to distinguish the marks. See In re Hartz Hotel Services Inc.,
102 USPQ2d 1150, 1154 (TTAB 2012). Applicant’s mark, however, adds only the
generic or highly descriptive term DENIM. So while we agree that the third-party
registrations show that the cited mark is somewhat weak to coexist with other SIX
or 6-formative marks with the addition of another distinctive term, the record does
not establish that the cited mark is so weak that it can coexist with a mark that adds
only a generic or highly descriptive term. Applicant’s evidence “falls short of the
‘ubiquitous’ or ‘considerable’ use of the mark components present in [Juice Generation
and Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports,
S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015)].” In re i.am.symbolic, 123
USPQ2d at 1751; contrast Primrose Retirement Communities, LLC v. Edward Rose
Senior Living, LLC, 122 USPQ2d 1030 (TTAB 2016) (weakness found based on at
least 85 actual uses of ROSE-formative marks for similar services, eight similar
third-party registrations, expert testimony and other evidence regarding the common
nature of ROSE-formative marks in the industry, and testimony by opposer that it
did not vigorously enforce its mark).
Rather, we find that the cited mark is entitled to an ordinary scope of protection,
and consider this DuPont factor neutral.

5 February 28, 2018 Response to Office Action at 14, 18, 30, 34.
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C. Similarity of the Marks
We next compare DENIM SIX to SIX “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps., 73 USPQ2d at 1691
(quoting DuPont, 177 USPQ at 567). The test assesses not whether the marks can be
distinguished in a side-by-side comparison, but rather whether their overall
commercial impressions are so similar that confusion as to the source of the goods
offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom
Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). We also bear in mind
that, given the legally identical goods, “the degree of similarity necessary to support
a conclusion of likely confusion declines.” Century 21 Real Estate v. Century Life of
Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
We find the marks look and sound similar because of the identical term SIX that
dominates Applicant’s mark and is the entirety of the cited mark. Applicant’s mark
also includes the term DENIM. However, while, as Applicant contends, the first part
of a mark often dominates it, Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) and Palm Bay Imps., 73 USPQ2d at 1692, in this mark that
is not the case. The Examining Attorney has asserted and submitted evidence to show
that DENIM is generic. The record shows that “denim” is used in the clothing
marketplace to refer to a category of clothing made from denim fabric.6 While

6 E.g., March 28, 2018 Office Action at 8-9 (American Eagle website); November 13, 2018
Office Action at 2, 5 (Sierra Trading Post website); id. at 6 (Cotton:On website).
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Applicant disputes the genericness of DENIM, it disclaimed the term as at least
descriptive, diminishing its significance in the comparison of marks. See In re Dixie
Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re
Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985). We find
that DENIM in Applicant’s mark is generic or at least highly descriptive of
Applicant’s goods, and therefore, consumers are less likely to focus on it as source-
indicating. Thus, while Applicant’s mark, considered in its entirety, contains the
additional word DENIM that adds a visual and phonetic element not found in the
cited mark, we nonetheless find them similar overall in appearance and sound.
The connotations and commercial impressions also are similar because of the
common word SIX, and because DENIM describes Applicant’s goods, adding little to
the overall meaning and impression that would distinguish Applicant’s mark from
the cited mark. The record includes no evidence to suggest that the combination of
DENIM and SIX has any new or different meaning than its component parts. SIX is
the focus of the connotations and commercial impressions, rendering the marks
highly similar. See Nat’l Data Corp., 224 USPQ at 751 (“[I]n 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”); see also Stone Lion Capital Partners, 110 USPQ2d at 1161.
Consumers familiar with the cited SIX mark for clothing encountering the DENIM
SIX mark likely would assume it was Registrant’s line of denim clothing.
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Given their overall resemblance in sound, appearance, connotation and
commercial impression, we find DENIM SIX and SIX very similar. This factor weighs
in favor of a likelihood of confusion.
III. Conclusion
The overall similarity of the marks for legally identical goods that move in the
same channels of trade to the same classes of customers renders confusion likely.
Decision: The refusal to register Applicant’s mark is affirmed.