Innovative Brand Partners

Trademark Trial and Appeal Board

Jul 24, 2018

No. 87463123 (T.T.A.B. Jul. 24, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 24, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Innovative Brand Partners
_____
Serial No. 87463123
_____
Gene Bolmarcich of Law Offices of Gene Bolmarcich
for Innovative Brand Partners.

Paul Ferrer, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
_____
Before Taylor, Wolfson and Gorowitz,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Applicant, Innovative Brand Partners, seeks registration on the Principal
Register of the mark RILEY ROSE, in standard characters, for
Cases for spectacles and sunglasses; Cell phone auxiliary
cables; Cell phone covers; Cell phone cases; Cell phone
battery chargers; Cell phone battery chargers for use in
vehicles; Computer cases; Computer bags; Computer
carrying cases; Earphones and headphones; Sunglasses;
Serial No. 87463123
- 2 -
USB cables; USB cables for cellphones; Carrying cases for
cell phones; Head-clip cell phone holders
in International Class 9.1
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the mark RILEY, in
standard characters, for
Spectacles; protective glasses; sports glasses; cyclists’
glasses; sunglasses; optical glasses; ski glasses; shooting
eye glasses; anti-glare glasses; glasses frames; lenses for
eye glasses; dustproof eye glasses; magnifying glasses; 3D
spectacles; cases for spectacles 2
In International Class 9.
In the Final Office Action, the Examining Attorney maintained the refusal as to
the following goods only: “Cases for spectacles and sunglasses” and “Sunglasses.”
Following issuance of the Final Office Action, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Likelihood of Confusion
The 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. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic

1 Application Serial No. 87463123 was filed May 24, 2017, based on Applicant’s asserted bona
fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b). The name RILEY ROSE does not identify a particular living individual.
2 Registration No. 5097976 issued December 13, 2016.
Serial No. 87463123
- 3 -
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the relatedness of the goods or services. See In re Chatam Int’l Inc.,
380 F.2d 1340, 71 USPQ2d 1944 (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 effect of differences in the essential
characteristics of the goods and differences in the marks.”). We have considered each
relevant DuPont factor for which there is evidence or argument, and have treated any
other factors as neutral. See 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.”). Varying weights may be assigned to each DuPont factor depending on the
evidence presented. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (factors “may play more or less weighty roles in any
particular determination”).
A. Similarity of the Goods, Channels of Trade and Classes of Consumers
The goods which are the subject of the refusal are “cases for spectacles and
sunglasses” and “sunglasses.” Registrant’s goods include “cases for spectacles” and
“sunglasses.” These goods are identical. Applicant has not argued otherwise; indeed,
Applicant’s brief is silent on the issue. The Examining Attorney also submitted
Serial No. 87463123
- 4 -
evidence showing relatedness of sunglasses to cases for spectacles and sunglasses,
namely copies of use-based, third-party registrations showing that a single entity
uses the same mark on both types of goods,3 as well as Internet screenshots from Ray-
ban, Oakley, Gucci, and Maui Jim wherein each entity offers sunglasses and
sunglass/spectacle cases under the same mark.4 These third-party registrations and
uses demonstrate that these goods are of a kind that may emanate from a single
source under a single mark. See, e.g., 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)); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993).
Because the goods are identical, it is well-established that they are presumed to
travel in the same channels of trade and be rendered or offered to the same classes of
consumers. In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1005 (Fed. Cir. 2002) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed.
Cir. 1983) (“absent restrictions in the application and registration, goods and services
are presumed to travel in the same channels of trade to the same class of
purchasers.”).
As a result, the du Pont factors involving the identity of the goods, trade channels
and classes of consumers weigh heavily in favor of a finding of likelihood of confusion.

3 Third-party registrations attached to July 13, 2017 Office Action at TSDR 4-33 and to Final
Office Action at TSDR 2-31.
4 Internet evidence at Final Office Action TSDR 32-69.
Serial No. 87463123
- 5 -
B. Similarity of the Marks
We next address the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps. 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 test is not a side-by-side
comparison of the marks, but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted). See also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d
1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB
2016). Consumers may not necessarily encounter the marks in close proximity and
must rely upon their recollections thereof over time. In re Mucky Duck, 6 USPQ2d at
1468.
In comparing the marks, we are mindful that where, as here, the goods are
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the goods. See Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992) (“When marks would appear on virtually identical ... [goods], the
degree of similarity [of the marks] necessary to support a conclusion of likely
confusion declines”); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed.
Cir. 1993); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
Serial No. 87463123
- 6 -
Applicant’s mark is RILEY ROSE in standard characters. The cited mark is
RILEY, also in standard characters. Because of the shared term “RILEY,” the marks
bear a strong similarity in appearance and sound. While “it is well-established that
it is improper to dissect a mark, and that marks must be viewed in their entireties,”
Coach Services, 101 USPQ2d at 1721, “one feature of a mark may be more significant
than another, and it is not improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.” Id. (citing Leading
Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1905 (TTAB 2007); see
also In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)
(“[T]here 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.”). As the first term in
Applicant’s mark, “RILEY” is more likely to be impressed upon the mind of a
purchaser and remembered. “[I]t is often the first part of a mark which is most likely
to be impressed upon the mind of a purchaser and remembered.” Presto Products Inc.
v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988); see also Palm Bay
Imports 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because it is the first word in the mark and the first word to appear on
the label); Pfizer Inc. v. Cody John Cosmetics, Inc., 211 USPQ 64, 69 (TTAB 1981)
(“We agree with opposer’s third point that “CODY” is the dominant part of applicant’s
mark [CODY JOHN]. This is primarily because of the order of the two elements.
Thus, placement of the surname “CODY” before the given name “JOHN” adds
Serial No. 87463123
- 7 -
emphasis to the surname just as one’s surname is emphasized when it is indicated on
a form prior to the given name.”).
This dominant portion of Applicant’s mark is Registrant’s entire mark. While
there is no rule that likelihood of confusion automatically applies where one mark
encompasses another, in this case, as in many others, the fact that Registrant’s entire
mark is contained in Applicant’s mark increases the likelihood of confusion between
the two. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.
Cir. 2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES); In
re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (applicant’s CAREER IMAGE
marks similar to registered mark CREST CAREER IMAGES); In re Corning Glass
Works, 229 USPQ 65, 66 (TTAB 1985) (CONFIRM and CONFIRMCELLS confusingly
similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (MILTRON
and MILLTRONICS confusingly similar).
Applicant argues that the dissimilarity of the marks alone warrants a finding of
no likelihood of confusion. According to Applicant, “Riley” is a surname, but that
because “Rose” is a popular female middle name, when combined as “RILEY ROSE,”
the surname significance will not be perceived by consumers, resulting in marks that
are not confusingly similar. In support, Applicant submitted screenshots from four
websites (one article and three chat sites) addressing the question of whether the
name “Rose” is a popular girl’s name in the context of whether a parent should name
his or her daughter “Rose;”5 a copy of the Wikipedia entry for “RILEY,” identifying it

5 October 18, 2017 Response to Office Action, TSDR 7-10.
Serial No. 87463123
- 8 -
as “a surname of English or Irish origin”; and a copy of a Google hit list for a search
on the phrase “life of Riley” that gives truncated results of the phrase as meaning “a
luxurious or carefree existence.”6 Based on this evidence, Applicant argues that
Applicant’s Mark would clearly be seen as a female given
name (first and middle), whereas the Cited Mark would be
seen as a surname. Although Riley is a female given name
in Applicant’s Mark, this is only understood by consumers
because it is coupled with the very common middle name
‘Rose’. While there is no way to prove with evidence that
consumers are more likely to view ‘Riley’, when it appears
alone, as a surname than as a given name, Applicant would
invite the Board to take judicial notice of this fact based on
its own experience.7
Fed. R. Evid. 201 allows a court to judicially notice a fact that is not subject to
reasonable dispute because it is either generally known or “can be accurately and
readily determined from sources whose accuracy cannot reasonably be questioned.”
That consumers would perceive “Riley” as a surname rather than as a given name is
not the kind of fact that may be judicially noticed and we decline to do so here. Cf. In
re Hamilton Pharm., Ltd., 27 USPQ2d 1939, 1943 (TTAB 1993) (primary significance
of HAMILTON to the purchasing public is as a surname, despite the assertion that
the term has meaning as a given name). Nonetheless, even assuming that “Riley”
would be perceived as part of a given name when combined with “Rose,” and setting
aside the possibility that ROSE could itself be perceived as a surname, the meaning
and commercial impression of Applicant’s mark remains the same as the meaning
and commercial impression of Registrant’s mark, i.e., as a name. The addition of

6 Id. at 11-18.
75 TTABVUE 3.
Serial No. 87463123
- 9 -
ROSE merely emphasizes that RILEY is an individual’s name, rather than a place or
some other thing. See In re Chatam Int'l Inc. 380 F.3d 1340, 71 USPQ2d 1944, 1946
(Fed. Cir. 2004) regarding the mark JOSE GASPAR GOLD, stating:
With respect to JOSE, the Board correctly observed that
the term simply reinforces the impression that GASPAR is
an individual’s name. Thus, in accord with considerable
case law, the JOSE term does not alter the commercial
impression of the mark. See E & J Gallo Winery v. Gallo
Cattle Co., 967 F.2d 1280, 1291-92 [21 USPQ2d 1824] (9th
Cir. 1992) (affirming that GALLO and JOSEPH GALLO
are similar); Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc.,
889 F.2d 1070, 1073-74 [12 USPQ2d 1901] (Fed. Cir. 1989)
(holding that VITTORIO RICCI and NINA RICCI are
similar); John B. Stetson Co. v. Stephen L. Stetson Co., 85
F.2d 586, 587 (2d Cir. 1936) (holding that STEPHEN L.
STETSON and STETSON are similar)…. In sum, the first
name JOSE modifies the surname GASPAR and serves to
emphasize that GASPAR is a name.
For the above reasons, we find the marks to be similar in appearance, sound,
connotation and commercial impression. Consumers may well mistakenly assume
that the name RILEY is a shortened form of the name RILEY ROSE, or that
Applicant’s goods were members of a brand family of “RILEY” marks and that its
goods were an extension of Registrant’s line of sunglasses or spectacle cases.
The first DuPont factor weighs in favor of a finding that confusion is likely.
II. Conclusion
We have carefully considered all of the evidence of record, including any evidence
not specifically discussed herein. The overall similarity of the marks for identical
goods that move in identical channels of trade, reaching the same classes of
customers, renders confusion likely. We conclude that consumers who are aware of
Serial No. 87463123
- 10 -
Registrant’s RILEY mark for sunglasses and cases for spectacles, who later encounter
Applicant’s mark RILEY ROSE for sunglasses and cases for spectacles and
sunglasses, are likely to believe that the goods originate with or are associated with
or sponsored by the same entity.
Decision: The refusal to register Applicant’s mark under Trademark Act Section
2(d) is affirmed.