Indigo Star, Inc. and H2d Properties, Inc.v.Patti’s Enterprises, L.L.C.

Trademark Trial and Appeal Board

Apr 7, 2014

No. 91202190 (T.T.A.B. Apr. 7, 2014)

Mailed: April 7, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Indigo Star, Inc. and H2d Properties, Inc.

v.

Patti’s Enterprises, L.L.C.
_____

Opposition No. 91202189
Opposition No. 91202190
(Consolidated)
_____

Kathryn Jennison Schultz of Jennison Schultz PC for Indigo
Star, Inc. and H2d Properties, Inc.

Thomas J. Keuler of Denton & Keuler for Patti’s Enterprises,
L.L.C.
______

Before Cataldo, Wellington, and Wolfson,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Patti’s Enterprises, L.L.C. (“applicant”) seeks
registration of the mark The Pink Tractor (in standard
characters)1 and the following mark:

1 Serial No. 85226411, filed on January 26, 2011, alleging first
use in commerce on September 1, 2009, under Trademark Act Section
1(a), 15 U.S.C. § 1051(a).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91202189 and 91202190

2
2
Applicant seeks registration for both marks in
connection with “retail store services featuring a wide
variety of women’s clothing, apparel, footwear, fashion
accessories, and jewelry” in International Class 35.
Opposer, H2d Properties, Inc. (“H2d”), filed notices of
opposition against registration of applicant’s marks based
on a likelihood of confusion, within the meaning of Section
2(d) of the Act, 15 USC §1052(d). H2d pleaded ownership of
the following two previously registered marks:

Registration No. 2163561 (The wording BRAND and JEANS, which
appear in smaller lettering, have been disclaimed) for:
“men’s, women’s, children’s clothing, namely, jeans,
overalls, dresses, vests, jackets, shirts, skirts, tops and
tee shirts” in International Class 25;3 and

Tractor (in standard characters)
Registration No. 3791799 for:

2 Serial No. 85226668, filed on January 26, 2011, alleging first
use in commerce on September 1, 2009, under Trademark Act Section
1(a), 15 U.S.C. § 1051(a).
3 Issued on June 9, 1998; renewed.
Opposition Nos. 91202189 and 91202190

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“women's, girls' and infant clothing, namely, jeans, pants,
shorts, skirts, overalls, shortalls, skirtalls, tops,
jackets, vests, coats, sweaters, sweat suits, sweat pants,
sweat shirts, t-shirts, leggings and leg warmers” in
International Class 25.4

H2d submitted copies from the Office TARR electronic
database of the two pleaded registrations with the notices
of opposition.
Applicant filed answers to the notices of opposition
admitting that it has “not used prior to September 1, 2009”
the applied-for trademarks for the services recited in each
application. Answers, Para. 7. Applicant otherwise denied
the remaining salient allegations of the complaints.
The opposition proceedings have been consolidated (see
Board order dated March 5, 2012).
In response to a motion filed by H2d, the Board
acknowledged that Office records reflect an assignment of
ownership of the pleaded registrations from H2d to Indigo
Star, Inc. (“Indigo”) and joined Indigo as a party opposer
(see Board order dated May 10, 2013). H2d and Indigo are
hereinafter referred to collectively as “opposers.”
Only opposers presented evidence at trial and filed a
trial brief. While there is no indication that applicant
actively defended its application, other than by filing an
answer and consenting to extension requests, we are
cognizant of the burden that remains with opposers, namely,

4 Issued on May 25, 2010.
Opposition Nos. 91202189 and 91202190

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establishing their pleaded case (in this case, their
standing and Section 2(d) ground of opposition) by a
preponderance of the evidence. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).
The evidence of record in these consolidated
proceedings consists automatically of the files of
applicant’s involved applications and the pleadings. In
addition, the electronic copies of the pleaded registrations
are of record. Finally, opposers submitted a notice of
reliance on copies of requests for admissions they served on
applicant. Applicant did not respond to the admission
requests; they are therefore deemed admitted pursuant to
Fed. R. Civ. P. 36(a)(3). In pertinent part, these
admissions include:
13. That TRACTOR is the dominant portion of Applicant’s
Applied-for Marks.

14. That third parties have used the same trademark in
connection with their retail clothing store services and
the clothing sold in the retail clothing store.

15. That the color pink is associated with clothing for
girls.

Because the pleaded registrations are of record, and
having established the assignment thereof from H2D to
Indigo, we find that opposers have established their
standing to oppose registration of applicant’s marks. See
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
Opposition Nos. 91202189 and 91202190

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1024, 213 USPQ 185 (CCPA 1982). See also Cunningham, 55
USPQ2d at 1844.
In addition, Section 2(d) priority is not an issue in
this case as to the individual marks and goods covered by
the pleaded registrations because said registrations are of
record. See King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
We now turn our attention to the likelihood of
confusion analysis.
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In considering the evidence of record in
these consolidated proceedings, we keep in mind that “[t]he
fundamental inquiry mandated by §2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods [and services] and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We first consider the du Pont factors regarding the
similarity or dissimilarity of the marks. Our focus is on
whether the marks are similar in sound, appearance, meaning,
and commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
Opposition Nos. 91202189 and 91202190

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USPQ2d 1689 (Fed. Cir. 2005). In making our comparison, we
focus on opposers’ standard character TRACTOR mark because
it bears the strongest resemblance to applicant’s marks due
to its lack of stylization, additional wording or design.
In comparing applicant’s proposed marks, we find
opposers’ previously registered mark, TRACTOR, is the
dominant element in applicant’s marks, THE PINK TRACTOR
(with and without design). Applicant has admitted this
much. See Admission No. 13. It has not been shown that the
term “tractor” has any significance with regard to clothing
or retail clothing services; thus, the registered mark must
be considered arbitrary and strong. This is not to say we
have ignored the elements in applicant’s marks not found in
the registered mark, including the term PINK or the stylized
border and tractor design portion in one of applicant’s
marks. However, as to the term PINK in applicant’s mark,
applicant admits that the color pink is associated with
girls’ clothing and thus it is suggestive in connection with
both applicant’s recited retail services featuring women’s
clothes. Also, with respect to the design portions, we have
long held that in the case of a mark consisting of words and
a design, the words are normally given greater weight
because they would be used by consumers to request the
products or services. In re Dakin's Miniatures, Inc., 59
USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions
Opposition Nos. 91202189 and 91202190

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Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also Sweats
Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4
USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v.
Nation's Food Service, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983). Furthermore, the design of a tractor in
the mark in application Serial No. 85226668 serves to
reinforce the word “tractor” therein.
In sum, we find the parties’ marks to be overall more
similar than dissimilar, given that applicant has
incorporated the entirety of opposers’ TRACTOR mark as part
of its marks. We further find that the additional elements
found in applicant’s marks do not outweigh or overcome this
similarity. Accordingly, this du Pont factor weighs in
favor of finding a likelihood of confusion.
We turn now to the similarity or dissimilarity of the
applicant’s retail women’s apparel store services and
opposers’ recited apparel goods that includes women’s
apparel items. We also consider their respective trade
channels and classes of purchasers.
We initially point out that, based on the descriptions
of the goods and services, applicant’s retail store services
featuring a “wide variety” of women’s apparel must be
presumed to encompass the sale of all of opposer’s
specifically-listed women’s apparel items, i.e., jeans,
pants, shorts, skirts, overalls, shortalls, skirtalls, tops,
Opposition Nos. 91202189 and 91202190

8
jackets, vests, coats, sweaters, sweat suits, sweat pants,
sweat shirts, t-shirts, leggings and leg warmers. In other
words and because there are no limitations on the trade
channels, we must consider the possibility that opposers’
goods would be found in retail stores such as applicant’s.
In addition, applicant has admitted that third parties use
the same trademark in connection with their retail clothing
stores and the clothing sold in the retail clothing stores.
See Admission No. 15. With the above mind, we must consider
the possibility that consumers will encounter opposers’
TRACTOR-branded clothing in applicant’s THE PINK TRACTOR
(with and without design) retail stores and that the
consumers are not unaccustomed to seeing the same trademark
being used on clothing and for retail clothing stores.
Accordingly, the aforementioned du Pont factors involving
the similarity or dissimilarity of the goods, trade channels
and classes of purchasers all favor finding a likelihood of
confusion. There is no evidence of record to suggest that
any of the du Pont factors favor a finding of no likelihood
of confusion.
In summary, we find that the involved marks are
similar, the respective services and goods are related, and
opposers’ goods will be marketed in the same channels of
trade to the same classes of consumers, namely, women
shopping for various apparel items. While there is no per
Opposition Nos. 91202189 and 91202190

9
se rule, we have often held that confusion is likely where
one entity uses a mark for goods and another uses the same
or a similar mark for a retail store that sells such goods.
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025, 1026 (Fed. Cir. 1988) (general merchandise stores and
furniture); The Wet Seal, Inc. v. FD Management, Inc., 82
USPQ2d 1629, 1640, (TTAB 2007) (women's clothing stores and
cosmetics). See also, J. Thomas McCarthy, Trademarks and
Unfair Competition §24:25 (2013) (“[w]here the services
consist of retail sales services, likelihood of confusion is
found when another mark is used on goods which are commonly
sold through such a retail outlet.”). Ultimately in this
case, upon weighing all of the relevant du Pont factors for
which there is evidence or arguments, we find that
applicant’s use of THE PINK TRACTOR, with and without the
design, in connection with retail store services featuring a
variety of women’s apparel is likely to cause confusion with
opposers’ registered mark, TRACTOR, for women’s jeans,
pants, shorts, skirts, overalls, shortalls, skirtalls, tops,
jackets, vests, coats, sweaters, sweat suits, sweat pants,
sweat shirts, t-shirts, leggings and leg warmers.
Decision: The consolidated oppositions are sustained
and registration to applicant is refused with respect to
both applications.