Hulleon Records, Inc.v.Josephine Ann Huffman

Trademark Trial and Appeal Board

Apr 19, 2013

No. 91204553 (T.T.A.B. Apr. 19, 2013)

BUO Mailed: April 19, 2013

Opposition No. 91204553

Hulleon Records, Inc.

v.

Josephine Ann Huffman

Before Holtzman, Wellington and Kuczma, Administrative
Trademark Judges.

By the Board:
Josephine Ann Huffman (“applicant”) seeks to register
the mark JUST US CHICK’S (in standard character format),
for:
anorak; bathing suits; bathing trunks; beach
coverups; beach footwear; beach shoes; beachwear;
belts; belts for clothing; bikinis; blazers;
blouses; body suits; boots; boxing shorts; bras;
brassieres; bustiers; caps; cardigans; clogs;
coats; coverups; dresses; evening gowns; flip
flops; footwear; gloves; hats; head scarves; head
wear; headwear; heels; hosiery; jackets; jeans;
lingerie; mittens; neckerchiefs; negligees;
nightgowns; pajamas; panties; pants; parkas;
raincoats; robes; sandals; sandals and beach
shoes; scarves; shawls; shirts; shoes; shorts;
shoulder scarves; ski wear; skirts; slacks;
slips; socks; sport coats; sport shirts; suits;
sweaters; swimming caps; swimming caps; t-shirts;
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91204553

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trousers; turbans; undergarments; underpants;
undershirts; underwear; and vests.1

Hulleon Records, Inc. (“opposer”) filed its notice of
opposition to registration of this mark on the ground of
likelihood of confusion under Trademark Act Section 2(d),
15 U.S.C. § 1052(d). In support of its claim, opposer
alleges its prior use and registration of five pleaded
registrations for the following marks – JUSTUS BOYZ2, JUSTUS
GIRLZ and JUSTUS, for, in pertinent part:
caps, hats, jackets, jerseys, shirts, shorts,
sweatshirts, t-shirts, and underwear.

Opposer attached to its notice of opposition copies of
printouts from the USPTO website evidencing the status and
title of its pleaded registrations, all of which are valid
and subsisting and owned by opposer. Trademark Rule
2.122(d)(1).
Applicant denied most of the salient allegations set
forth in the notice of opposition, but admitted that a
portion of her goods “are the same or similar to goods
offered by Opposer under its JUSTUS Marks.” See Notice of
Opposition and Answer, ¶ 8. Applicant asserts that there

1 Application Serial No. 85190597, filed December 3, 2010, based
upon applicant’s bona fide intent to use the mark in commerce.

2 Three of opposer’s registrations share the JUSTUS BOYZ mark-
U.S. Reg. Nos. 2833343, 2835493 and 2835494. The other two are
U.S. Reg. Nos. 2978608 and 3903798.

Opposition No. 91204553

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is no likelihood of confusion “because, inter alia,
Applicant’s mark and the pleaded marks of Opposer are not
confusingly similar.” Answer, ¶ 11.
Opposer’s Motions
This case now comes up for consideration of opposer's
fully briefed motions, filed December 7, 2012, in a single
paper: (1) motion for leave to file an amended notice of
opposition asserting a claim that applicant lacked the
requisite bona fide intent to use her mark on the date the
subject application was filed, and (2) motion for summary
judgment on that claim and on its claim of likelihood of
confusion.
A. Motion for Leave to Amend Notice of Opposition
Applicant’s contention that the Board should not
consider opposer’s motion because opposer’s motion was
filed with a dilatory purpose is not well taken. There is
no evidence of record to indicate any bad faith or dilatory
motive on the part of opposer in filing this motion.
Further, the amendment of pleadings may be permitted at any
stage of a proceeding, even after judgment has been
entered. See Fed. R. Civ. P. 15(a) and (b); Nextel
Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393,
1399 (TTAB 2009).
Opposition No. 91204553

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In any event, applicant has addressed the merits of
opposer’s claim that applicant lacked a bona fide intent to
use her mark in her response brief. Therefore, opposer’s
motion for leave to file an amended notice of opposition is
GRANTED.
Accordingly, opposer’s amended notice of opposition
is accepted and made of record and is now opposer’s
operative pleading. Fed. R. Civ. P. 15(a)(1)(A).
B. Motion for Summary Judgment
A motion for summary judgment is a pretrial device
intended to save the time and expense of a full trial when
the moving party is able to demonstrate, prior to trial,
that there is no genuine dispute of material fact, and that
it is entitled to judgment as a matter of law. See Fed. R.
Civ. P. 56(a). See also Celotex Corp. v. Catrett, 477 U.S.
317 (1986); Opryland USA Inc. v. Great Am. Music Show Inc.,
970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); and Sweats
Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560,
4 USPQ2d 1793 (Fed. Cir. 1987). The evidence must be
viewed in a light favorable to the non-moving party, and
all reasonable inferences are to be drawn in the non-
movant's favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc.,
987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993);
Opryland USA, supra.
Opposition No. 91204553

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Further, in considering whether summary judgment is
appropriate, the Board may not resolve genuine disputes as
to material facts. Rather, the Board may only ascertain
whether any material fact is genuinely disputed. See
Lloyd's Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods,
Inc. v. Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.
Cir. 1992).
When a moving party's motion for summary judgment is
supported by evidence sufficient to indicate that there can
be no genuine dispute as to any material fact and that the
moving party is entitled to judgment, the burden shifts to
the non-moving party to demonstrate the existence of at
least one genuine dispute as to a material fact that
requires resolution at trial. The non-moving party may not
rest on the mere allegations of its pleadings and
assertions, but must designate specific portions of the
record or produce additional evidence showing the existence
of a genuine dispute as to a material fact for trial.
Consequently, factual assertions, without evidentiary
support, are insufficient to defend against a motion for
summary judgment. See Hornblower & Weeks Inc. v.
Hornblower & Weeks Inc., 60 USPQ2d 1733, 1739 (TTAB 2001)
(“applicant has produced no evidence, or raised any
expectation that at trial it could produce evidence”); S &
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L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221,
1225 n.9 (TTAB 1987).
1. Likelihood of Confusion
To prevail on summary judgment on its claim of
likelihood of confusion, opposer must establish that there
is no genuine dispute that it has standing to maintain this
proceeding; that it owns registrations or has priority of
use; and that contemporaneous use of the parties'
respective marks on their respective goods would be likely
to cause confusion, mistake or to deceive consumers. See
15 U.S.C. § 1052(d); Hornblower & Weeks, Inc., 60 USPQ2d at
1735.
• Standing
Opposer’s claim of ownership of its five registrations
and submission of status and title copies of those
registrations is sufficient to establish its standing in
this matter. See, e.g., Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Research in
Motion Ltd. v. Defining Presence Mktg. Group Inc., 102
USPQ2d 1187, 1190 (TTAB 2012). As a matter of law there is
no genuine dispute as to the material fact that opposer has
standing to oppose registration of the involved
application. See Indus. Adhesive Co. v. Borden, Inc., 218
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USPQ 945 (TTAB 1983); A.R.A. Mfg. Co. v. Equip. Co., Inc.,
183 USPQ 558 (TTAB 1974).
• Priority
To the extent opposer relies on the registrations it
has made of record, priority is not an issue. King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974).
• Likelihood of Confusion
The U.S. Court of Customs and Patent Appeals in In re
E.I. du Pont De Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973), listed thirteen factors that are relevant in a
likelihood of confusion analysis. However, “[n]ot all of
the du Pont factors are relevant to every case, and only
factors of significance to the particular mark need be
considered.” In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94
USPQ2d 1257, 1259 (Fed. Cir. 2010). For purposes of our
likelihood of confusion analysis, we focus on opposer’s
pleaded registration for the mark JUSTUS GIRLZ vis-à-vis
the applied-for mark JUST US CHICK’S.
Contrary to applicant’s assertions, opposer has
presented evidence probative of the similarity of the marks
and the similarity of the goods in the nature of admissions
made by applicant in her pleading and discovery responses,
and by opposer’s registrations.
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Specifically, applicant has admitted that certain
goods identified in her application are the same or similar
to those listed in opposer’s pleaded registrations,
including the registration for JUSTUS GIRLZ. We may find
that there is a likelihood of confusion when only one item
in a class of goods is commercially similar to a party's
goods. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981);
see also Research in Motion Ltd. v. Defining Presence Mktg.
Group Inc., 102 USPQ2d 1187, 1194 (TTAB 2012) (“Likelihood
of confusion must be found if there is likely to be
confusion with respect to any item that comes within the
identification of goods in the application.”). That is, if
likelihood of confusion is found with respect to any item
within a particular class, that finding applies to the
entire class at issue.
Both opposer and applicant list caps, hats, jackets,
shirts, shorts, and t-shirts in their respective
identifications of goods. Therefore, as a matter of law
there can be no genuine dispute regarding the relatedness
of the goods.
Because the goods are in part identical and otherwise
closely related, and because neither party’s identification
of goods contains any limitations with respect to consumers
Opposition No. 91204553

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or channels of trade, we presume that those goods, at
least where identical, move in the same channels of trade
and are sold to the same classes of consumers.3 See Genesco
Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the
in-part identical and in-part related nature of the
parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and
purchasers, these clothing items could be offered and sold
to the same classes of purchasers through the same channels
of trade.”).
We now turn to the du Pont factor involving the degree
of similarity between the respective marks. In this
regard, we initially note that where the goods of an
applicant and registrant are identical, as is the case in
this proceeding, the degree of similarity between the marks
required to support a finding of likelihood of confusion is
not as great as in the case of diverse goods. See In re
Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908

3 When determining the relevant trade channels and purchasers of the
parties’ goods, we do not consider the parties’ actual channels of
trade or actual customers. Instead, we look to the usual channels of
trade and potential purchasers for goods of the type listed in the
parties’ respective identification of goods. In re Smith and Mehaffey,
31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally
identical, they must be presumed to travel in the same channels of
trade, and be sold to the same class of purchasers”); see In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even
though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in
determining likelihood of confusion).
Opposition No. 91204553

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(Fed. Cir. 2012) (citing Century 21 Real Estate Corp. v.
Century Life of Am., 970 F.2d 874, 877, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992)).
As further explained, we find no genuine dispute of
material fact that the applied-for mark, JUST US CHICK’S,
and the registered mark, JUSTUS GIRLZ, are overall very
similar. The connotation and commercial impression created
by each mark is extremely similar, if not the same,
inasmuch as each mark begins with the term JUST[]US
followed by a term that is the phonetic or defined
equivalent of the word “girls.” The marks are likewise
very similar in sound and appearance due to the inclusion
of the initial term JUST[]US.
Applicant spends a great deal of her argument on the
alleged dissimilar sounds of the first term in the marks at
issue – JUSTUS v. JUST US. Applicant alleges that opposer,
by presenting the term JUSTUS as a single compound word,
intended for the mark to be pronounced as “justice.”
Applicant’s Response Br., p. 7. However, opposer’s
intended pronunciation is inconsequential, as is
applicant’s asserted pronunciation. Indeed, it is well
settled that there is no correct pronunciation of a mark
because it is impossible to predict how the public will
pronounce a particular mark. See In re Viterra Inc., 101
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USPQ2d at 1912; Centraz Indus. Inc. v. Spartan Chem. Co.,
77 USPQ2d 1698, 1701 (TTAB 2006); TMEP §1207.01(b)(iv).
The undisputed fact is that applicant’s mark, JUST US
CHICK’S, and the registered mark, JUSTUS GIRLZ, both begin
with the term JUST[]US, and thus the initial term, could
clearly be pronounced identically.
As to the second element in each mark, the misspelling
of the word “girls” in opposer’s pleaded registration is
not significant. An intentional misspelling that is the
phonetic equivalent, and is easily recognized as the
correctly spelled word, is the legal equivalent of the
correctly spelled word. Cf. Nupla Corp. v. IXL Mfg. Co.,
114 F.3d 191, 196, 42 USPQ2d 1711, 1716 (Fed. Cir. 1997).
We have no doubt that in this context, potential consumers
would readily understand the term GIRLZ in opposer’s mark
to be the equivalent of the descriptive term “girls,” and
in fact, opposer’s registration includes a disclaimer of
“girls.” This descriptive term has little or no source-
identifying capability, and thus does not distinguish
opposer’s mark from applicant’s. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
With its opposition to the motion, applicant made of
record a definition of the term CHICK from the Merriam-
Opposition No. 91204553

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Webster online dictionary.4 Applicant’s Response Br.,
p. 10. The term “chick” is defined as slang for “girl.”
Thus, the additional term GIRLZ in the pleaded registration
creates a nearly identical connotation and commercial
impression between that mark and applicant’s mark.
Accordingly, where the two marks differ somewhat in
appearance and sound by virtue of the latter elements, we
note that they nevertheless share the same meaning. Cf.
Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 1336, 164
USPQ 301, 304 (CCPA 1970) (holding MISTER STAIN likely to
be confused with MR. CLEAN on competing cleaning products).
Overall, we find no genuine dispute of material fact
that the registered mark JUSTUS GIRLZ and applied-for mark
JUST US CHICK’S are highly similar.
There is no genuine dispute as to the aforementioned
du Pont factors. As to the remaining du Pont factors, they
are not at issue as neither party has raised them nor
submitted any evidence in relation to them. See
Cunningham, 55 USPQ2d at 1845 (“the obligation to consider
a factor does not arise in a vacuum and only arises if
there is evidence of record relating to that factor”).
Accordingly, there is no genuine dispute of material fact
that contemporaneous use of the marks JUST US CHICK’S and

4 www.merriam-webster.com/dictionary/chick.
Opposition No. 91204553

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JUSTUS GIRLZ, when used on identical and/or highly related
clothing goods, in the same trade channels to the same
classes of consumers, is likely to cause confusion as to
the source of said goods.
Based on the record before us, we do not find any
genuine factual dispute as to likelihood of confusion
between the parties’ marks. Applicant’s bald factual
assertions do not meet its burden of designating specific
portions of the record or producing additional evidence
sufficient to show the existence of a genuine dispute as to
a material fact for trial. Therefore, opposer’s motion for
summary judgment is GRANTED.5 Accordingly, judgment is
entered against applicant, the opposition is sustained, and
registration is refused to applicant.

5 In view of our finding for opposer on its claim of likelihood
of confusion, we need not reach the issue of lack of bona fide
intent to use the subject mark.