H&M Hennes & Mauritz ABv.Undivided Design, LLC

Trademark Trial and Appeal Board

Mar 15, 2013

No. 91194864 (T.T.A.B. Mar. 15, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: March 15, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

H&M Hennes & Mauritz AB
v.
Undivided Design, LLC
_____

Opposition No. 91194864
to application Serial No. 77888150
_____

Mark I. Peroff and Alpa V. Patel of Manatt Phelps & Phillips
LLP for H&M Hennes & Mauritz AB.

Matthew M. Boley of Parsons Kinghorn Harris for Undivided
Design, LLC.
______

Before Cataldo, Gorowitz and Hightower, Administrative
Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On December 7, 2009, applicant, Undivided Design, LLC,
filed an application to register in standard characters on
the Principal Register the following mark:
UNDIVIDED
based upon an allegation of its bona fide intent to use this
designation in commerce on or in connection with “T-shirts”
in International Class 25.1

1 Application Serial No. 77888150.
Opposition No. 91194864
2
Registration has been opposed by H&M Hennes & Mauritz
AB (“opposer”). As grounds for opposition, opposer asserts
that it is the owner of the following two marks, previously
used and registered on the Principal Register:
DIVIDED
in typed or standard characters for goods including,
headwear; footwear; and clothing, namely, t-
shirts, shirts, cardigans, blouses, jackets,
pants, skirts, dresses, belts, hats, scarf,
gloves, tunics, knit wear, namely, heavy knitwear;
shorts, sweatshirts, underwear, lingerie, bras,
hot pants, suspenders, leggings, tights, socks,
swimwear, bikinis, bandanas, tank tops, slippers,
mittens,

in International Class 25;2 and

for goods and services including,
Clothing, namely trousers, T-shirts, coats,
jackets, cardigans, skirts, dresses, blouses,
overalls, underwear, jumpers, vests, fur coats and
jackets, pants, hoods, shorts, blazers, men's
suits, women's suits, evening gowns, tops, jeans,
belts, shoulder wraps, gloves, mittens, scarves,
ties, wraps, dressing gowns, night gowns, pajamas,
sleepwear, bathing suits, swimwear, bikinis,
socks, stockings, hats, caps, shawls, berets, and
veils; headwear; footwear

in International Class 25.3

2 Registration No. 2766051 issued on September 23, 2003. Section
8 affidavit accepted. This registration also recites goods in
International Classes 3, 14, and 18. Additional goods recited in
all three classes were deleted in applicant’s Section 8 filing.

3 Registration No. 3476969 issued on July 29, 2008. This
registration also recites services in International Class 35.
Opposition No. 91194864
3
Opposer argues that it has used the marks in its
pleaded registrations in connection with, inter alia, the
above listed goods since long prior to the filing date of
applicant’s involved application; that applicant’s mark,
when used on applicant’s goods so resembles opposer’s marks
for its recited goods as to be likely to cause confusion, to
cause mistake, and to deceive; and that opposer will be
damaged thereby.
Applicant’s answer consists of a general denial of the
allegations in the notice of opposition.
The record in this case consists of the pleadings and
the file of the involved application. Opposer also
submitted the testimony deposition, with accompanying
exhibits, of Mr. Jeffrey Miller, the Young Fashion and Denim
Merchandiser for opposer’s U.S. division. Opposer also
filed a notice of reliance upon the following: status and
title copies, file histories and assignment records of its
pleaded registrations; official records; copies of printed
articles and articles obtained from the internet.
Applicant did not take testimony or offer evidence
during its assigned testimony period.
Opposer and applicant filed main briefs on the case and
opposer filed a reply brief.
Opposer has designated portions of its trial testimony,
exhibits submitted with its notice of reliance, and brief as
Opposition No. 91194864
4
containing confidential information. In this decision, we
will endeavor to discuss information so designated only in
general terms.
Opposer’s Standing and Priority of Use
In its brief, applicant concedes opposer’s standing and
priority of use.4
Even absent such a concession, we find that because
opposer has properly made its pleaded registrations of
record, and further because opposer has asserted a plausible
likelihood of confusion claim, opposer has established its
standing to oppose registration of applicant’s mark. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Moreover, because opposer’s pleaded registrations are of
record, Section 2(d) priority is not an issue in this case
as to the marks and goods covered thereby. See King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue, even those not specifically discussed in
Opposition No. 91194864
5
this decision. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The Goods, Channels of Trade, and Classes of Consumers
The goods in the application and the cited registration
are, in part, identical. Applicant’s goods, t-shirts, are
fully encompassed within the goods identified in opposer’s
pleaded registrations. Opposer’s goods also include
additional items of casual apparel that are closely related
to applicant’s t-shirts, such as sweatshirts, jackets,
jeans, tights, hats and belts.
Because the goods are identical and/or closely related
and there are no restrictions as to their channels of trade
or classes of purchasers, we must assume that the goods are,
or will be, sold in all the normal channels of trade to all
the usual purchasers for such goods, and that the channels
of trade and the purchasers for applicant’s and opposer’s
goods would be the same. See Interstate Brands Corp. v.
McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000). Further, it
is well settled that purchasers of casual, low cost ordinary

4 Applicant’s brief, p. 2.
Opposition No. 91194864
6
consumer items are held to a lesser standard of purchasing
care and are more likely to be confused as to the source of
the goods. See Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir.
1984). For these reasons, we are not persuaded by
applicant’s arguments that opposer’s goods are only
available in its stores or internet website and are co-
branded with opposer’s H&M mark, whereas its own goods will
never be sold in these trade channels or be so co-branded.
Simply put, applicant may not impose limitations on
opposer’s trade channels or the manner in which it displays
the goods under its marks that are not present in opposer’s
registrations.
As a result, these du Pont factors favor a finding of
likelihood of confusion.
The Marks
Thus, we turn to the marks, keeping in mind that when
marks would appear on identical goods, as they do here, the
degree of similarity between the marks necessary to support
a finding of likely confusion declines. See Century 21 Real
Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992).
In making our determination under the first du Pont
factor, we consider whether applicant’s mark and opposer’s
marks are similar or dissimilar when viewed in their
Opposition No. 91194864
7
entireties in terms of appearance, sound, connotation and
overall commercial impression. See Palm Bay Imports, Inc.
v. Veuve Clicquot, 73 USPQ2d at 1692. The test, under the
first du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective
marks is likely to result. Because the involved goods would
be marketed to the general public, our focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Turning first to the strength of opposer’s DIVIDED
marks, we observe that these marks appear to be conceptually
strong inasmuch as there is no evidence of record that the
term “divided” possesses any meaning or significance in
relation to opposer’s goods. As such, DIVIDED appears to be
arbitrary as applied to the goods identified in opposer’s
registrations. Furthermore, there is no evidence of use by
third parties of similar marks on similar goods. In
addition, opposer has presented evidence that it vigorously
markets and polices its DIVIDED marks. As a result, and
contrary to applicant’s unsupported arguments, we find that
Opposition No. 91194864
8
the marks in opposer’s pleaded registrations are strong and
entitled to a broad scope of protection.
Turning now to a comparison of the parties’ marks, we
observe that applicant has added the prefix “UN” to
opposer’s pleaded DIVIDED and marks. Applicant
argues that, as a result, the parties’ marks “are complete
opposites in both connotation and common meaning.”5 We
agree with applicant and opposer’s deponent that applicant’s
mark connotes “wholeness and/or one-ness” and “elements that
are together, not separated.”6 This stands in direct
contrast to the connotation presented by the common meaning
attributable to opposer’s marks, namely, division or
separation. With regard to opposer’s mark, we
find that the line separating the upper and lower halves of
the word “divided” reinforces this meaning, rather than
creating an additional or separate connotation.
We note, however, that the meanings or connotations of
the parties’ marks are not wholly unrelated. This is not a
case in which, for instance, applicant’s mark connotes unity
and opposer’s marks connote the color blue. Rather, by
virtue of connoting exact opposites, the meanings of the
parties’ marks are related. Opposer’s marks connote
division and applicant’s mark connotes the diametrically

5 Id. 5.
6 Id.; Miller Testimony, p. 108-9.
Opposition No. 91194864
9
opposed concept of the absence of division. We find,
therefore, that the marks’ connotations are related inasmuch
as they express opposites of the same concept or idea.
Furthermore, it is settled that similarity in any one
of the elements of sound, appearance, meaning, or commercial
impression is sufficient to support a determination of
likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola
Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is
sufficient if the similarity in either form, spelling or
sound alone is likely to cause confusion”); and In re White
Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (“In appropriate
cases, a finding of similarity as to any one factor [sight,
sound or meaning] alone ‘may be sufficient to support a
holding that the marks are confusingly similar’”) (citations
omitted)). Therefore, even if the marks had different
meanings, it would not necessarily mean there was no
likelihood of confusion.
As for sound, the commonly recognized terms “divided”
and “undivided” comprising the parties’ marks are highly
similar in pronunciation, with the exception of the prefix
“un” in applicant’s mark. With regard to appearance, the
marks are more similar than dissimilar inasmuch as applicant
has incorporated the entirety of opposer’s marks and added
the prefix “un” to them. In addition, confusion is more
likely when, as here, an applicant’s mark incorporates the
Opposition No. 91194864
10
entire word portion of a previously registered mark. See,
e.g., In re Hyper Shoppes, Inc., 837 F.2d 463, 464-65, 6
USPQ2d 1025, 1026 (Fed. Cir. 1988); and Wella Corp. v.
California Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419,
422 (CCPA 1977).
As a result of the foregoing, we find that, when viewed
in their entireties, the parties’ marks are more similar
than dissimilar in appearance, sound and connotation and, as
discussed above, related in meaning or connotation. In view
thereof, this du Pont factor also favors a finding of
likelihood of confusion.
Actual Confusion
Applicant points out that there is no evidence of
actual confusion. However, it has often been recognized
that such evidence is very difficult to obtain. Lebanon
Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826,
1834 (TTAB 2012). Furthermore, inasmuch as there is no
evidence of record that applicant has commenced use of its
mark, there would appear to be little, if any, opportunity
for actual confusion to occur.
Summary
In view of the foregoing, we find that opposer has
established its standing to bring this proceeding; its
priority of use; and that a likelihood of confusion exists
between its marks and applicant’s mark, as used in
Opposition No. 91194864
11
connection with the parties’ in part identical and otherwise
related clothing goods.
DECISION: The opposition is sustained on the ground of
priority and likelihood of confusion, and registration to
applicant is refused.