Jessica Larson

Trademark Trial and Appeal Board

Feb 12, 2014

No. 85534998 (T.T.A.B. Feb. 12, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jessica Larson
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Serial No. 85534998
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Matthew H. Swyers of The Swyers Law Firm PLLC for Jessica Larson.

April K. Roach, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
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Before Kuhlke, Masiello and Hightower, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Jessica Larson, filed an application to register on the Principal
Register the mark JKAKA in standard characters for goods identified as
“Bandanas; Do rags; Hats; Head scarves; Headbands; Headwear; Jeans;
Sweatbands; Sweatshirts; T-shirts; Wristbands,” in International Class 25.1
Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used with the
identified goods, so resembles the registered mark KAKA in standard characters for

1 Application Serial No. 85534998, filed on February 6, 2012, based on allegations of first
use and first use in commerce in October, 2011, under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a).
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several clothing items, including caps, tops, polo shirts, shirts, sweat shirts, T-
shirts, head scarves, scarves, headwear, skullies, denims, jogging pants, sweat
pants, and skull caps in International Class 252 as to be likely to cause confusion,
mistake or deception.
When the refusal was made final, applicant appealed and briefs have been
filed.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in In re E. I. Du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to a consideration of the goods, channels of trade and class of
purchasers. We must make our determinations under these factors based on the
goods as they are recited in the registrations and application. See In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

2 Registration No. 3471692, issued on July 22, 2008.
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Applicant’s “hats, head scarves, headwear, jeans, sweatshirts and t-shirts”
are identical to registrant’s “sweat shirts, t-shirts, head scarves, headwear, jeans,
hats.” In addition, applicant’s “bandanas, do rags, headbands, sweatbands” are
encompassed by registrant’s “headwear.” The following items are defined as a type
of headwear:
Do rag - a scarf or kerchief worn as a head covering, often tied at the
nape of the neck

Sweat band - a band of material work around the head or wrist to
absorb sweat

Head band - a band worn around the head
American Heritage Dictionary of the English Language (2007) attached to the May
16, 2012 Office Action. The record includes evidence showing bandanas offered for
sale as headwear on a retail online shopping website.
http://www.midwestsports.com and http://www.sahalie.com attached to the May 16,
2012 Office Action. Thus, these goods are legally identical to registrant’s
“headwear.” Finally, the record also shows that applicant’s “wristbands” are related
to registrant’s types of clothing items. See, e.g., http://www.underarmour.com
(examples of use of the same mark for t-shirts and wristbands offered on the same
website) attached to May 16, 2012 Office Action.
Considering the channels of trade and classes of purchasers, because the
goods are identical, legally identical and otherwise closely related and there are no
limitations as to channels of trade or classes of purchasers in either the application
or cited registration, we must presume that applicant’s and registrant’s goods will
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be sold in the same channels of trade and will be bought by the same classes of
purchasers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012). See also Hewlett-Packard Co. v. Packard Press Inc., 62 USPQ2d 1001;
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) and In re
Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
Applicant’s arguments regarding the differences in the channels of trade and
“marketing” are not persuasive inasmuch as we must make our determination
based on the goods as identified, and here, the identifications of goods in the
registration and application are not limited by channels of trade or marketing.3 See
In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
In view of the above, the du Pont factors of the similarity of the goods, the
channels of trade and classes of purchasers favor a finding of likelihood of confusion.
With regard to the conditions of sale, again, because we are bound by the
description of goods in the application and registration and because the descriptions
of goods are not restricted as to price or channel of trade, the goods at issue must
include inexpensive as well as more expensive clothing and accessories and all
channels of trade and classes of consumers. The standard of care for our analysis is
that of the least sophisticated purchaser. Alfacell Corp. v. Anticancer, Inc., 71
USPQ2d 1301, 1306 (TTAB 2004). We further note that applicant’s asserted prices,

3 Applicant’s statement that registrant’s goods do “not currently appear to be marketed at
all,” implying that the owner of the cited registration has abandoned its trademark due to
nonuse, constitute an impermissible collateral attack on the cited registration and such
evidence and argument are not relevant in the context of an ex parte appeal. Dixie Rests.,
41 USPQ2d at 1534-35.
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ranging from $6.99 to $39.99, do not support a finding that the conditions of sale
require a higher level of care and knowledge that would obviate likely confusion.
As a general proposition, inexpensive goods may be purchased with less care,
which increases the likelihood of confusion. 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”). Moreover, even if purchasers are sophisticated or knowledgeable in a
particular field that does not necessarily mean that they are sophisticated or
knowledgeable in the field of trademarks or immune from source confusion.
Imagineering Inc. v. Van Klassens Inc., 53 F.3d 1260, 1265, 34 USPQ2d 1526, 1530
(Fed. Cir. 1995). Thus, despite the possibility that the purchasers of these types of
clothing items may exercise a certain amount of care to ensure they are purchasing
what they require, we find this factor also favors likely confusion.
We next consider the marks JKAKA and KAKA and compare them “in their
entireties as to appearance, sound, connotation and commercial impression.” 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.
We must also keep in mind that “when marks would appear on virtually identical
goods or services, the degree of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). When we consider the marks, we
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do so based on the average purchaser retaining a general rather than specific
impression of a mark. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB
2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Applicant’s mark JKAKA and registrant’s mark KAKA differ by only one
letter and, as such, are very similar in appearance. As to sound, it is well
established that there is no “correct” pronunciation of a mark because it is difficult
to predict how the public will pronounce a particular mark. Viterra Inc., 101
USPQ2d at 1912. It is possible for the mark to be pronounced, as applicant
suggests, “JA” “KAKA,” but it may also be pronounced “JAY” “KAKA.” In any
event, the difference in sound engendered by the addition of the “J” is not enough to
distinguish the marks in this case. There are no arguments regarding connotation
and nothing in the record to indicate that either mark has a particular meaning in
English. In view thereof, we find them to be arbitrary and without meaning; thus,
this element cannot serve to distinguish them. We find the marks to be quite
similar in overall commercial impression and, on balance, the similarities in the
marks outweigh their differences. Viterra Inc., 101 USPQ2d 1905.
Applicant argues that there are several similar marks registered for clothing
that serve to dilute registrant’s KAKA mark. Applicant has only submitted five
third-party registrations which have little weight in determining the strength of a
mark because they do not establish that the registered marks identified therein are
in actual use in the marketplace or that consumers are accustomed to seeing them.
See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269
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(CCPA 1973); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009).
Moreover, as the examining attorney noted, the marks in the five third-party
registrations, KAKASHI (translated as meaning scarecrow), KAKATOO (translated
as meaning delicious), KAKADU PET with design, TITIKAKA and CACOA, have
more points of difference with applicant’s mark, than registrant’s mark.
Applicant’s argument that there have been no known instances of actual
confusion is not persuasive. The contemporaneous use of applicant’s and
registrant’s marks for a period of approximately two years without actual confusion
is entitled to little weight. See Majestic Distilling Co., Inc., 65 USPQ2d at 1205
(“uncorroborated statements of no known instances of actual confusion are of little
evidentiary value”). See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ
528, 529 (CCPA 1973) (stating that self-serving testimony of applicant’s corporate
president’s unawareness of instances of actual confusion was not conclusive that
actual confusion did not exist or that there was no likelihood of confusion). The lack
of evidence of actual confusion carries little weight, J.C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965), especially in an ex
parte context. In any event, the record is devoid of probative evidence relating to
the extent of use of registrant’s mark (other than possibly to indicate no use) and,
thus, whether there have been meaningful opportunities for instances of actual
confusion to have occurred in the marketplace. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Accordingly, the du Pont
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factor of the length of time during and conditions under which there has been
contemporaneous use without evidence of actual confusion is considered neutral.
In conclusion, because the marks are similar, the goods are identical, legally
identical and otherwise closely related, and the channels of trade and consumers
are the same, confusion is likely between applicant’s mark KAKA and the mark
JKAKA in the cited registration.
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.