No. 91212768 (T.T.A.B. Sep. 28, 2017)

INTS It Is Not The Same, GmbHv.Disidual Clothing, LLC

Trademark Trial and Appeal BoardSep 28, 2017

No. 91212768 (T.T.A.B. Sep. 28, 2017)

Mailed: September 28, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ INTS It Is Not The Same, GmbH v. Disidual Clothing, LLC _____ Opposition No. 91212768 _____ John S. Egbert, Michael S. Swartz and Kevin S. Wilson of Egbert Law Offices PLLC for INTS It Is Not The Same, GmbH. Danielle K. Johnson, Gregory J. Chinlund and James E. Griffith of Marshall Gerstein & Borun LLP for Disidual Clothing, LLC. ______ Before Bergsman, Ritchie and Lykos, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: On January 30, 2013, Disidual Clothing, LLC (“Applicant”) filed an application to register the mark DISIDUAL in standard characters on the Principal Register for, as amended, “[a]pparel, namely, t-shirts, tank-tops, shorts, hats, jackets, sweatshirts, hooded sweatshirts, beanies, socks, pants, THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91212768 - 2 - dresses, swimsuits, knit face masks, gloves, belts” in International Class 25.1 The application was filed under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging June 1, 2010 as the date of first use anywhere and in commerce. By way of its amended notice of opposition, INTS It Is Not The Same, GmbH (“Opposer”) opposes the registration of Applicant’s mark on the grounds of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on Opposer’s previously used and registered DESIGUAL marks as well as prior common law use. 44 TTABVUE 3-10.2 Opposer pleaded ownership of multiple registrations, including Registration No. 2088319 for the mark DESIGUAL & Design, shown below, for “clothing, namely footwear and headwear” in International Class 25,3 1 Application Serial No. 85836544. As originally filed, the application identified the goods as “apparel.” In his initial review, the Examining Attorney stated that “[t]he identification of goods is indefinite and must be clarified because items of apparel must be specified.” June 5, 2013 Office Action. Applicant complied with this requirement in its June 13, 2013 Response to Office Action. 2 For the citations to the record in the Board’s online docketing system throughout the decision, the number preceding “TTABVUE” corresponds to the docket entry number; the number(s) following “TTABVUE” refer to the page number(s) of that particular docket entry. See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). 3 Registered August 12, 1997, based on an application filed under Trademark Act Section 1(a), alleging March 17, 1995 as the date of first use anywhere and in commerce; renewed. According to the translation statement, “[t]he English translation of ‘DESIGUAL’ is ‘unequal, uneven, or different.’” Opposition No. 91212768 - 3 - and Registration No. 3737499 for the stylized mark displayed below on the Principal Register for “[r]eady-made clothing for women, men and children, namely, pants, shorts, shirts, T-shirts, jackets, blouses, skirts, dresses; footwear; headgear, namely, hats and caps” in International Class 25.4 Opposer also asserted claims of nonuse, abandonment and fraud pertaining to the following goods in the application: belts, gloves, dresses and knit face masks.5 44 TTABVUE 10-13. 4 Registered January 12, 2010, under Trademark Act Section 44(e) based on foreign registration no. 2769646 (Spain) which expired September 4, 2017. The translation statement reads: “The foreign wording in the mark translates into English as unequal.” A combined Sections 8 and 15 declaration was timely filed on June 24, 2015 and accepted by the Office on July 29, 2015, alleging October 14, 2009 as the date of first use anywhere and in commerce. The registration also includes goods in International Classes 3, 9 and 18. 5 The operative notice of opposition and answer in this case was filed August 12, 2016 and August 25, 2016 following the close of discovery and two days prior to the opening of Opposer’s first testimony period. 44, 45 TTABVUE. Opposition No. 91212768 - 4 - In its answer to the amended notice of opposition, Applicant denied the salient allegations with regard to Opposer’s Section 2(d) claim but admitted, in essence, that Applicant did not use the DISIDUAL mark on belts, gloves, dresses and knit face masks as of the application filing date. Answer Paragraph Nos. 1, 14, 15, 17, 19-21, 24-27, and 29. Applicant also asserted the affirmative defense of failure to state a claim upon which relief can be granted and argued this affirmative defense as to Opposer’s nonuse, abandonment and fraud claims in its brief.6 Fed. R. Civ. P. 12(h)(2)(C) made applicable to Board proceedings under Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a), provides that failure to state a claim upon which relief can be granted may be raised at trial. The better practice would have been to challenge the sufficiency of the amended notice of opposition by motion under Fed. R. Civ. P. 12(b)(6) prior to trial. In any event, we have reviewed the amended notice of opposition and find that Opposer has properly pleaded claims of nonuse, abandonment and fraud. See Bell Atlantic Corp. v. Twombly, 550 U.S. 554, 570 (2007) and Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (plausibility standard applies to all federal civil claims). As such, Applicant’s affirmative defense cannot form the basis for dismissal of these claims. 6 Applicant’s affirmative defense of laches was not pursued in its brief and is therefore waived. See Alcatraz Media v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 Fed. Appx. 900 (Fed. Cir. 2014). We further note that laches is unavailable as an affirmative defense against a claim of fraud. Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 USPQ2d 1572, 1575 n.3 (TTAB 2008). Opposition No. 91212768 - 5 - In addition, Applicant counterclaimed to cancel Opposer’s Registration No. 2088319 on the ground of abandonment.7 Opposer denied the salient allegations therein. 9, 20 TTABVUE. I. The Record8 The record includes the pleadings and, pursuant to Trademark Rule 2.122, 37 C.F.R. § 2.122, Applicant’s application file and the registration file for Opposer’s registration against which Applicant has asserted a counterclaim for cancellation. Opposer submitted with its notice of opposition copies of its pleaded registrations obtained from the U.S. Patent and Trademark Office’s (“USPTO”) Trademark Status and Document Retrieval (“TSDR”) database (thereby making them of record pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1).9 Opposer took no testimony but instead submitted under notices of reliance the following: Applicant’s Answers to Opposer’s Requests for Admissions and Applicant’s Supplemental Responses to Opposer’s Requests for Production (Opposer’s Second Notice of Reliance, Exhibits F-G); 7 The materials submitted in “Exhibit A” with Applicant’s counterclaim are not part of the trial record. See generally TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE TBMP § 702.02 (“Introduction of Evidence”). 8 For the citations to the record in the Board’s online docketing system throughout the decision, the number preceding “TTABVUE” corresponds to the docket entry number; the number(s) following “TTABVUE” refer to the page number(s) of that particular docket entry. See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). 9 Opposer’s re-submission of its pleaded registrations under its first notice of reliance was superfluous. Opposition No. 91212768 - 6 - Printouts from Opposer’s website (Opposer’s Third Notice of Reliance, Exhibit H); Printouts from third-party websites purporting to demonstrate that Opposer sells a broad range of products contained in International Classes 3, 9, 18, 5, 24, 25, 35, and 39 (Opposer’s Fourth Notice of Reliance, Exhibits I-M); and Printouts from third-party websites purporting to show Opposer’s use of the composite mark in Registration No. 2088319 (Opposer’s Fifth Notice of Reliance, Exhibits N-R). 47-49, 52 TTABVUE. Applicant took the testimony of its founder and President, Brendan Pape, (“Pape Deposition”) and submitted the deposition transcript and exhibits. 51 TTABVUE. Applicant also submitted under a single notice of reliance the following: Printouts from Applicant’s website (Exhibit A); Printouts from Applicant’s Facebook page (Exhibit B); Applicant’s First and Second Set of Interrogatories, First Request for Production of Documents and Opposer’s responses thereto (Exhibit C); Printouts from third-party websites describing Opposer’s DESIGUAL brand (Exhibit D); Printouts from online publications describing Opposer’s products and marketing (Exhibit E); Third-party registrations for marks ending in -UAL for clothing (Exhibit F); Printouts from online publications and third-party websites describing the pronunciation of Opposer’s DESIGUAL Marks (Exhibit G); Printed publications describing the meaning and translation of Opposer’s DESIGUAL Mark (Exhibit H); Opposition No. 91212768 - 7 - Printouts from Opposer’s website (Exhibit I); and Printouts from YouTube showing Opposer’s advertising and pronunciation of Opposer’s DESIGUAL Marks (Exhibit J). 50 TTABVUE. Opposer’s claims and Applicant’s counterclaim are briefed.10 II. Standing Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). The U.S. Court of Appeals for the Federal Circuit, has enunciated a liberal threshold for determining standing, namely that a plaintiff must demonstrate that it possesses a “real interest” in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his belief of damage.” Empresa Cubana Del Tabaco 111 USPQ2d at 1062 (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). A “real interest” is a “direct and personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026. Opposer has demonstrated through the USPTO database printouts made of record with its notice of opposition that it is the owner of its pleaded registrations and that the registrations are valid and subsisting. Because Opposer’s registrations are of record, Opposer has established its standing. See 10 In reaching our decision, we have not considered any statements made by either party in their briefs that are unsupported by evidence properly in the record. See, e.g., Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1725 n.7 (TTAB 2010). See also TBMP § 704.06(b). Opposition No. 91212768 - 8 - Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Ind., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). III. Applicant’s Motion to Amend On June 30, 2016, Applicant filed an unconsented motion to amend the identification of goods in its application to delete the following four apparel items: belts, gloves, dresses and knit face masks. 41 TTABVUE. The Board deferred consideration of the amendment until final decision. 43 TTABVUE. In its motion, Applicant argued that two days prior to trial, Opposer sought, and was granted leave by the Board, to amend the notice of opposition to add the additional claims of nonuse, abandonment and fraud, and that the newly added claims pertain to the specific items Applicant now seeks to delete. Applicant contended that the amendment would “alter and simplify the arguments and presentation of evidence” and would obviate the need for trial on Opposer’s nonuse, abandonment and fraud claims. Motion to Amend p. 4; 41 TTABVUE 4. Our precedent is clear that if an application is filed under Section 1(a) of the Trademark Act and there was no actual use of the applied-for mark on some of the goods identified in the application on or before the filing date of the application, the application will not be held void in its entirety, provided the mark was used on some of identified goods as of filing date. Grand Canyon West Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1697-98 (TTAB 2006). In filing Opposition No. 91212768 - 9 - its motion to amend to delete the goods that Opposer alleges were not in use as of the application filing date, Applicant has essentially agreed to accept judgment as to those goods on Opposer’s nonuse claim. See id. (Board granted applicant’s motion to amend identification to delete certain services and granted opposer’s motion for partial summary judgment its nonuse claim as to those services). Applicant’s admissions in its answer, coupled with the trial record, corroborate this finding. See Joh. Vaillant K.G. v. State Stove and Manufacturing Co. Inc., 171 USPQ 433, 437 (TTAB 1971) (“This Board and other tribunals have permitted an amendment to an application involved in an opposition proceeding where the amendment sought to restrict the identification of goods in a particular manner as disclosed by the record adduced by the moving party and when the other party was deemed not to be unjustly prejudiced thereby.”). In view thereof, Applicant’s motion to amend is granted to delete belts, gloves, dresses and knit face masks from the identification of goods. The operative identification of goods for the involved application is now “[a]pparel, namely, t-shirts, tank-tops, shorts, hats, jackets, sweatshirts, hooded sweatshirts, beanies, socks, pants, swimsuits.” Opposer’s nonuse claim is sustained to the extent that judgment is entered against Applicant on the ground that Applicant did not make use of its mark in connection with belts, gloves, dresses and knit face masks prior to or on the application filing date. Opposition No. 91212768 - 10 - Opposer’s abandonment claim pertains only to the four apparel items that have now been deleted from the application. If we were to decide Opposer’s abandonment claim on the merits and if Opposer were to prevail, the remedy would be identical to the remedy for Opposer’s nonuse claim. Accordingly, this claim is dismissed as moot. However, “fraud cannot be cured merely by deleting from the [application] those goods … on which the mark was not used at the time of the signing of a use-based application … .” G&W Laboratories Inc. v. GW Pharma Ltd., 89 USPQ2d 1571, 1573 (TTAB 2009) (internal citations omitted). See also Grand Canyon West Ranch, 78 USPQ2d at 1698 n.5. Accordingly, we shall decide Opposer’s fraud claim on the merits, infra. IV. Section 2(d) Claim First we consider Opposer’s Section 2(d) claim, focusing on Opposer’s registered mark for the goods identified in Registration No. 3737499 pleaded and made of record. In our view, this the mark in this registration, when viewed in relation to its corresponding identified goods, is most likely to support a likelihood of confusion claim. If Opposer could prevail on its Section 2(d) claim on this registrations, then consideration of others would be unnecessary; and if Opposer could not, then consideration of other less relevant registrations would not assist Opposer. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). A. Priority Priority is not at issue in view of Opposer’s ownership of the valid and Opposition No. 91212768 - 11 - subsisting registration noted above for the goods identified therein. See King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). B. Likelihood of Confusion We base our determination under Section 2(d) on 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) (“du Pont”). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “Not all of the DuPont 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, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). With this principle in mind, we proceed with our analysis. 1. Fame First, we consider the du Pont factor of the fame of Opposer’s mark. Fame, if it exists, of the prior mark plays a dominant role in likelihood of confusion cases featuring a famous mark. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, supra. Fame for likelihood of confusion purposes may be measured indirectly by the volume of sales and advertising expenditures of the goods sold under the mark, for example, and other factors such as length of time of use of the mark, widespread critical assessments, notice by independent sources of the products identified by the marks, and the general reputation of the products and services. Bose Corp. Opposition No. 91212768 - 12 - v. QSC Audio Products, Inc., 63 USPQ2d at 1308. Because of the extreme deference accorded to a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, it is the duty of the party asserting fame to clearly prove it. Lacoste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009); Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007). Opposer does not argue that its mark is famous but rather that it is “well- known to consumers.” Opposer’s Brief, p. 14; 54 TTABVUE 21. Opposer submitted excerpts from its website to show that its products have been sold in the United States for over twenty years, and that, in 2010, Opposer’s goods resulted in “an annual turnover of 450 million euros and over 15,000,000 garments sold at over 8,800 points of sale in 72 countries,” including the United States. Id. See also Opposer’s Third Notice of Reliance, Ex. H; 49 TTABVUE 6- 10. Aside from the fact that this evidence constitutes hearsay and has not been authenticated by testimony, Opposer’s evidence has little probative value because it provides sales figures for only a single year, and furthermore does not break down the data for sales which occurred in the United States. This evidence cannot establish fame, or for that matter that Opposer’s mark is “well-known” in the United States in connection with the identified goods. This du Pont factor Opposition No. 91212768 - 13 - therefore is neutral. 2. The Goods and Trade Channels We now turn to a comparison of the goods identified in Applicant’s application vis-à-vis the goods identified in Opposer’s Registration No. 3737499. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston Computers Serv. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also, Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). As amended, Applicant’s identification is “[a]pparel, namely, t-shirts, tank-tops, shorts, hats, jackets, sweatshirts, hooded sweatshirts, beanies, socks, pants, swimsuits;” Opposer’s identification is “[r]eady-made clothing for women, men and children, namely, pants, shorts, shirts, T-shirts, jackets, blouses, skirts, dresses; footwear; headgear, namely, hats and caps.” Despite the different prefatory language in each identification, the involved application and Opposer’s registration include goods that are identical, at least in part (t-shirts, shorts, hats, jackets and pants). Clearly, the term “apparel” is sufficiently broad to encompass “ready-made clothing for women, men and children.” This du Pont factor therefore weighs in favor of finding a likelihood of confusion. Because the goods are identical in part, and neither Opposer’s registration nor the involved application contain any limitations on the channels of trade and classes of purchasers, we must presume that the channels of trade and Opposition No. 91212768 - 14 - classes of purchasers are the same for these identical goods. See Stone Lion, 110 USPQ2d at 1161; In re Yawata Iron & Steel Co., Ltd., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). See also 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). As such, the du Pont factor regarding the similarity or dissimilarity of established, likely to continue trade channels also favors a finding of likelihood of confusion. 3. Lack of Actual Confusion Next we consider the length of time during and conditions under which there has been concurrent use without evidence of actual confusion. Applicant argues that the coexistence of Applicant’s and Opposer’s marks in overlapping geographic locations since June 2010 without any instances of actual confusion weighs in favor of finding no likelihood of confusion. According to the record, although Applicant’s primary means of sales now is business-to-consumer (“B2C”) via Applicant’s online store, both Opposer and Applicant have sold and continue to sell their apparel items via traditional brick and mortar retail clothing stores in the Seattle, Washington and Encinitas, California areas. See Pape Deposition at 18:4-22:14 and Ex. 1, 51 TTABVUE 22-26, 55-56; Opposition No. 91212768 - 15 - Applicant’s Notice of Reliance, Ex. I (search results from Opposer’s store locator); 50 TTABVUE 198-216.11 “The absence of any reported instances of confusion is meaningful only if the record indicates appreciable and continuous use by applicant of its mark for a significant period of time in the same markets as those served by opposer under its marks. In other words, for the absence of actual confusion to be probative, there must have been a reasonable opportunity for confusion to have occurred.” Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011). The record shows that both parties have sold their products in two distinct overlapping trading areas, meaning that there has been a reasonable opportunity for actual confusion to have occurred. This du Pont factor therefore weighs in favor of finding no likelihood of confusion. 4. The Marks We now analyze the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imports, 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 11 Opposer did not object to Applicant’s discussion of its evidence that was introduced via Notice of Reliance in Applicant’s brief but rather responded with counterarguments in its Reply Brief. Opposition No. 91212768 - 16 - 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) (internal citation omitted). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In this case, because the relevant goods are clothing, including t-shirts, shorts, hats, jackets and pants, the average purchaser is an ordinary consumer. Applicant’s DISIDUAL mark and Opposer’s stylized mark share some properties. In terms of appearance, both marks are single-term marks comprised of eight letters. Each commence with the similar letter strings “disi- ” or “desi-”, and each end with the same letter string of “-ual.” The similarities however stop there. The second and fifth letters are distinct – “I” versus “E” and “I” versus “G.” Another notable distinction is the presentation of the letter “S” as backwards in Opposer’s mark. As to sound, Applicant’s DISIDUAL mark is comprised of four syllables. The record shows that DESIGUAL is a Spanish word with a known pronunciation comprised of three syllables with an emphasis on the third: desiˈɣwal in phonetic notation, or dezzy-GWAL when spelled out in phonetic U.S. English. Applicant’s Notice of Reliance, Exhibit G; 50 TTABVUE 154, 158, 160, 163, 164, 170, 174. When a mark is a recognized word, even in a foreign language, the Opposition No. 91212768 - 17 - principle that there is no correct pronunciation of a mark does not apply. See In re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227 (CCPA 1969) (“There is no correct pronunciation of a trademark that is not a recognized word.”). Compare StonCor Grp., Inc. v. Specialty Coatings, Inc., 111 USPQ2d 1649, 1651 (Fed. Cir. 2014) (“‘STON’” is not a word in English. Neither party argues that ‘STON’ is a word in any other language. Where a trademark is not a recognized word and the weight of the evidence suggests that potential consumers would pronounce the mark in a particular way, it is error for the Board to ignore this evidence entirely and supply its own pronunciation.”). DISIDUAL, on the other hand, is a coined, fanciful term likely to be pronounced “di-SID-jew-uhl” with an emphasis on the second syllable, similar to the word “individual.” Even when we factor in consumers who are unfamiliar with Spanish, DISIDUAL and DESIGUAL are likely to be pronounced differently: that is, consumers are unlikely to pronounce DESIGUAL as “di-SIG-jew-uhl. In view of the foregoing, we find that the marks are therefore different in sound. With respect to connotation and commercial impression, the record shows that Applicant’s founders created the coined mark DISIDUAL by merging the phrase “distinct individual” to project the “one-word meaning” of “nonconformist.” Pape Deposition at 23:8-24:9; 51 TTABVUE 27-28. By contrast, as evidenced by the translation statement on the registration and corroborated by the record, Opposer’s mark “desigual” is Spanish for “unequal.” Entry for “desigual” from Merriam-Webster SpanishCentral.com Opposition No. 91212768 - 18 - (www.spanishcedntral.com) Applicant’s Notice of Reliance Ex. H; 50 TTABVUE 184. “[T]here is no question that Spanish is a common, modern language.” In re La Peregrina Ltd., 86 USPQ2d 1645, 1648 (TTAB 2008). See also In re Aquamar, Inc., 115 USPQ2d 1122, 1127 (TTAB 2015). We must therefore assume that an appreciable segment of the U.S. marketplace understands Spanish, and may indeed be capable of distinguishing the marks based solely on meaning and commercial impression. That being said, we must also consider those consumers unfamiliar with Spanish who may perceive Opposer’s brand name as a coined or fanciful mark. However, based on the differences in appearance and sound, even non-Spanish-speaking consumers unfamiliar with the English translation of “desigual” will likely be able to distinguish the marks. We therefore find that the du Pont factor regarding the similarity of the marks does not weigh in favor of finding a likelihood of confusion. 5. Conditions of Purchase Lastly, we consider the conditions under which the goods are likely to be purchased, e.g., whether on impulse or after careful consideration, as well as the degree, if any, of sophistication of the consumers. Purchaser sophistication or degree of care may tend to minimize likelihood of confusion. Conversely, impulse purchases of inexpensive items may tend to have the opposite effect. Palm Bay, 73 USPQ2d at 1695. Opposition No. 91212768 - 19 - The identifications in the application and registration consists of apparel items at no specified price point. We cannot assume that these items are rendered to different classes of buyers in different marketing contexts at different prices. Rather, we must assume that the types of buyers overlap to include both the sophisticated fashionista as well as the ordinary bargain hunter. Ordinary consumers are likely to exercise only ordinary care, and given the lack of price restrictions in the identifications, may even buy inexpensive clothing items on impulse. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) (“When products are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion is increased because purchasers of such products are held to a lesser standard of purchasing care.”). Accordingly, this factor weighs in favor of finding a likelihood of confusion. 6. Balancing the du Pont Factors Any of the du Pont factors may play a dominant role. du Pont, 177 USPQ at 567. In the present case, the record shows no instances of actual confusion in two separate geographic markets, despite the fact that the goods are in part identical and marketed to the same consumers exercising only ordinary care in the same trade channels. This reinforces our finding that the marks are dissimilar in their entireties, both with regard to consumers familiar and unfamiliar with Spanish. We therefore find that Opposer has failed to prove likelihood of confusion by a preponderance of the evidence. Accordingly, Opposition No. 91212768 - 20 - Opposer’s Section 2(d) claim is dismissed. V. Fraud Directing our attention to Opposer’s fraud claim, it is well established that fraud in procuring a trademark registration or renewal occurs only when an applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO. In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009). A party seeking cancellation of a trademark registration for fraudulent procurement bears a heavy burden of proof. Id. at 1939 (citing W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 377 F.2d 1001, 153 USPQ 749, 750 (CCPA 1967)). Indeed, “the very nature of the charge of fraud requires that it be proven ‘to the hilt’ with clear and convincing evidence. There is no room for speculation, inference or surmise and, obviously, any doubt must be resolved against the charging party.” Id. (quoting Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981)). As emphasized in Bose: Subjective intent to deceive, however difficult it may be to prove, is an indispensable element in the analysis. Of course, “because direct evidence of deceptive intent is rarely available, such intent can be inferred from indirect and circumstantial evidence. But such evidence must still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent requirement.” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 [88 USPQ2d 1001] (Fed. Cir. 2008). When drawing an inference of intent, “the involved conduct, viewed in light of all the evidence … must indicate sufficient culpability to require a finding of intent to deceive.” Kingsdown, 863 F.2d at 876. Bose, 91 USPQ2d at 1941. Opposition No. 91212768 - 21 - In light of the record evidence and Applicant’s admissions in its answer, there is no question that Applicant made false statements that its DISIDUAL mark was in use in commerce in connection with belts, gloves, dresses and knit face masks as of the application filing date. False statements regarding use of a mark are material. See Nationstar Mortgage LLC v. Mujahid Ahmad, 112 USPQ2d 1361 (TTAB 2014) (citing Hachette Filipacchi Presse v. Elle Belle LLC, 85 USPQ2d 1090, 1093 (TTAB 2007)). Thus, the pivotal issue is whether Opposer has shown that Applicant had the requisite intent to deceive the USPTO. Opposer, relying solely on the false statements of use in the application, urges the Board to find that Applicant knowingly intended to deceive the USPTO. The testimony of Applicant’s founder, Brendan Pape, shows otherwise. He stated that he was unaware that when the original identification of goods was narrowed from “apparel” to “[a]pparel, namely, t-shirts, tank-tops, shorts, hats, jackets, sweatshirts, hooded sweatshirts, beanies, socks, pants, dresses, swimsuits, knit face masks, gloves, belts” that the DISIDUAL mark had to be in use in connection with each newly identified item as of the application filing date and claimed dates of use. Pape Deposition at 32:13-33:3, 51 TTABVUE 36- 37. He further testified that he had no prior experience filing a trademark application and that he was unfamiliar with the rules of practice. Id. at 33:4- 15; 51 TTABVUE 37. Such conduct does not rise to the level of intent to deceive required to show fraud, but rather suggests an inadvertent error based on a Opposition No. 91212768 - 22 - misunderstanding of the filing requirements for a use-based trademark application. See, e.g., Rogers Corp. v. Fields Plastics & Chemicals, Inc., 176 USPQ 280, 283 (TTAB 1972), aff’d, 181 USPQ 169 (CCPA 1974) (where opposer alleged fraud because applicant has never used the mark on some of the goods listed in the application, the Board found that the applicant had not committed fraud even though the identification of goods included some proposed, rather than actual, uses of the mark).12 “There is no fraud if a false misrepresentation is occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive.” Bose, 91 USPQ2d at 1942 (internal citation omitted). In addition, “the mere filing of the signed applications does not provide an inference of an intent to deceive.” Daniel J. Quirk, Inc. v. Vill. Car Co., 120 USPQ2d 1146, 1154 (TTAB 2016) (citing Kemin Indus., Inc. v. Watkins Prods., Inc., 192 USPQ 327, 329 (TTAB 1976) (the wording of the oath in terms of a 12 Although Rogers was decided prior to Bose, it remains relevant because the Board applied the same standard for scienter: Fraud, within its onerous connotation, implies some intentional deceitful practice or act designed to obtain something that the party practicing such deceit would not otherwise have been entitled. To relate this to the concept of fraud upon the Patent Office, it signifies a willful withholding from the Patent Office by an applicant or registrant of material information or facts which, if transmitted and disclosed to the examiner, would have resulted in the disallowance of the registration sought. To put it another way, a person seeking registration is under a duty to not knowingly make any misleading or inaccurate statement in affidavits forming a part of the application for registration. (internal citations omitted). Rogers, 176 USPQ at 283. Opposition No. 91212768 - 23 - “belief” of applicant “preclude[s] a definitive statement by the affiant that could be ordinarily used to support a charge of fraud.”)). In sum, we find that Opposer has failed to prove “‘to the hilt with clear and convincing evidence” (Bose, 91 USPQ2d at 1939 (citations omitted)) that Applicant fraudulently obtained the Office’s approval to register its applied-for mark. “[A]bsent the requisite intent to mislead the PTO, even a material misrepresentation would not qualify as fraud under the Lanham Act warranting cancellation.” Bose, 91 USPQ2d at 1940 (citing King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 212 USPQ 801 (CCPA 1981)). Such is the case here. Accordingly, Opposer’s fraud claim is dismissed. VI. Applicant’s Counterclaim to Cancel Registration No. 208831913 Lastly, we consider Applicant’s counterclaim to cancel Registration No. 2088319 for the mark DESIGUAL & Design for “clothing, namely footwear and headwear” in International Class 25 on the ground of abandonment. Applicant, as plaintiff in the counterclaim, must show by a preponderance of evidence that the registered mark has been abandoned. Cerveceria Centroamerica, S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309-10 (Fed. Cir. 1989). 13 By virtue of its position as defendant in the instant opposition proceeding and Opposer’s proof of ownership of its pleaded registration, Applicant possesses the requisite standing. See Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1502 (TTAB 2005) (citing Ohio State Univ. v. Ohio Univ., 51 USPQ2d 1289, 1293 (TTAB 1999)). Opposition No. 91212768 - 24 - Section 14 of the Trademark Act, 15 U.S.C. § 1064, provides for the cancellation of a registration at any time if the registered mark has been abandoned. Section 45 of the Trademark Act, 15 U.S.C. § 1127 provides, in pertinent part, that a mark is abandoned [w]hen its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for three consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of that mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. See, e.g., Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1417 (TTAB 2016). As explained by the U.S. Court of Appeals for the Federal Circuit: A showing of a prima facie case creates a rebuttable presumption that the trademark owner has abandoned the mark without intent to resume use. The burden then shifts to the trademark owner to produce evidence that he either used the mark during the statutory period or intended to resume use. The burden of persuasion, however, always remains with the [challenger] to prove abandonment by a preponderance of the evidence. Crash Dummy Movie LLC v. Mattel Inc., 601 F.3d 1387, 94 USPQ2d 1315, 1316 (Fed. Cir. 2010) (internal citations omitted). Abandonment is a question of fact. See Stock Pot Rest., Inc. v. Stockpot, Inc., 737 F.2d 1576, 222 USPQ 665, 667 (Fed. Cir. 1984). Applicant, who has the burden of proof, focuses on the purported deficiencies of the specimens submitted in connection with the registration’s Trademark Act Sections 8 and 15 declarations of use and incontestability (filed February 3, 2003) and subsequently with its Trademark Act Sections 8 and 9 Opposition No. 91212768 - 25 - declaration of use and renewal (filed October 25, 2006). Based on these allegedly faulty specimens, Applicant postulates that Opposer’s registered mark may have never been in use in commerce connection with the identified goods. Essentially Applicant requests that the Board undertake a re- examination of the registration file. This is impermissible. See Phonak Holding AG v. ReSound GmbH, 56 USPQ2d 1057, 1059 (TTAB 2000). Moreover, to the extent, if any, that the specimens are deficient for examination purposes, this does not constitute evidence of abandonment of a trademark. Applicant also cites to allegations made in its counterclaim that “[a]n extensive search of INTS’s website desigual.com in 2013 generated no results showing the mark in connection with footwear and headwear.” Applicant’s Brief, p. 30, 55 TTABVUE 36 and Counterclaim ¶ 9 and Ex. A, 9 TTABVUE 11- 165. Assertions made in Applicant’s counterclaim cannot be considered as evidence on its behalf; such allegations must be established by competent evidence during the time for taking testimony. See Saul Zaentz, 95 USPQ2d at 1725 n.7 (assertions in answer not evidence unless supported by evidence introduced at trial or except as admission against interest). See also Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d 1545, 1547 n.6 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). Similarly, “[s]tatements in a brief cannot take the place of evidence.” In re Simulations Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975). See also Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008). The search results of Opposition No. 91212768 - 26 - Opposer’s website submitted with Applicant’s counterclaim are not part of the record. That being said, even if we were to consider the evidence and determine that it established that Opposer discontinued use of its registered mark in connection with the identified goods in 2013, nonuse for a single year falls short of the statutorily required three-year consecutive time period to establish a prima facie case of abandonment. Nor can we infer from this evidence that Opposer discontinued use of the mark without an intent to resume use. Applicant further states that “Opposer has had ample opportunity during this proceeding to provide evidence showing use of the mark on the goods in the registration and has not done so.” Applicant’s Brief, pp. 30-31; 55 TTABVUE 36-37. Specifically, Applicant maintains that it requested documents showing current use and current sales of the mark with headwear and footwear, and Opposer produced none, and that Opposer also avoided answering Applicant’s interrogatory regarding Registration No. 2088319. See Applicant’s Notice of Reliance, Ex. C; 50 TTABVUE 58-59 and 66; Disidual’s Answer to Revised First Amended Notice of Opposition; 45 TTABVUE 18. Aside from the fact that Applicant’s argument amounts to an improper shift in the burden of proof, Opposer’s responses to these two discovery requests fail to establish abandonment. In Applicant’s document requests, Applicant presented Opposer with the following document request: Document Request No. 5: Produce all documents that record, refer to, or relate to Opposer’s use of the mark shown in U.S. Registration No. 2,088,319 in connection with “clothing namely footwear and headwear” between 1998 and the present. Opposition No. 91212768 - 27 - Although Opposer objected to this document request on several grounds, it did provide a response and produce relevant documents. See Applicant’s Notice of Reliance, Ex. C; 50 TTABVUE 66. With regard to interrogatories, Applicant posed none of the type typically propounded in cases involving an abandonment claim. Rather, Applicant’s only interrogatory request with regard to Registration No. 2088319 consisted of the following interrogatory: Interrogatory No. 8: Describe in detail the facts supporting the following statement submitted in Opposer’s Section 8 Declaration of Use on February 3, 2013 for the mark shown in U.S. Registration No. 2,088,319: “The owner has used the mark in commerce for five consecutive years after the date of registration, or the date of publication under Section 12(c), and is still using the mark in commerce on or in connection with all goods and/or services listed in the existing registration.” Id.; 50 TTABVUE 58-59. After interposing multiple objections, Opposer responded that its Section 8 Declaration of Use on February 3, 2013 for the mark shown in the registration did not contain the quoted language because that language was contained in the Section 15 Declaration of Incontestability filed by Opposer on February 3, 2003. Id.; 50 TTABVUE 59. Thus, contrary to Applicant’s contention, Opposer did not avoid responding to Applicant’s interrogatory. In its supplemental interrogatories served September 15, 2015, Applicant had a second opportunity to request additional information regarding Opposer’s use of its registered mark, but did not do so. Because a trademark owner’s certificate of registration is “prima facie evidence of the validity of the registration” and continued use of the registered Opposition No. 91212768 - 28 - mark, the burden of proof is placed upon those who seek cancellation. Cerveceria Centroamericana, 13 USPQ2d at 1309. Applicant has failed to show by a preponderance of the evidence nonuse of the registered mark on footwear or headwear for three consecutive years, nor has it otherwise met its burden of showing that Opposer had no intent to resume use of the mark. As a result, Opposer was under no obligation to submit evidence to either rebut Applicant’s evidence of nonuse or to demonstrate its intention to resume use of the mark, such as by evidence to explain any nonuse. Accordingly, Applicant’s counterclaim is dismissed. Decision: Opposer’s nonuse claim is sustained but only as to the following items of apparel: belts, gloves, dresses and knit face masks. Opposer’s abandonment claim is dismissed as moot. Opposer’s Section 2(d) and fraud claims are dismissed. Applicant’s counterclaim to cancel Opposer’s Registration No. 2088319 on the ground of abandonment is dismissed.