JKL IP Company, LLCv.C.W.F. Children Worldwide Fashion

Trademark Trial and Appeal Board

Aug 17, 2018

No. 92064111 (T.T.A.B. Aug. 17, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 17, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

JKL IP Company, LLC
v.
C.W.F. Children Worldwide Fashion
_____

Cancellation No. 92064111
_____

Mark B. Garred of Stetina Brunda Garred & Brucker,1
for JKL IP Company, LLC.
Maurice B. Pilosof of the Law Firm of Maurice B. Pilosof, Esq.,
for C.W.F. Children Worldwide Fashion.
_____

Before Wolfson, Greenbaum and Pologeorgis,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
C.W.F. Children Worldwide Fashion (“Respondent”) owns a registration on the
Principal Register for the mark BILLYBANDIT (in standard characters) for
Leather and imitation leather; leather goods, namely, key
cases, briefcases, hat boxes; camping, hiking, beach and
travel bags; animal skins; trunks and suitcases; umbrellas,
parasols and walking sticks; suitcases; handbags; travel
bags; backpacks, wheeled bags; garment bags for travel;

1 The record has been updated to reflect Petitioner’s substitution of counsel on July 17, 2018,
after this case was fully briefed. 18 TTABVUE.
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vanity bags and cases, sold empty; toiletry bags and cases,
sold empty; satchels; tote bags; shoulder bags; baby-
changing bags; bags and sling bags for carrying infants;
school bags; tag holders of leather or imitation leather for
luggage; purses; wallets; leather credit card cases, in
International Class 18, and
Children's clothing, namely, pants, underclothing, suits,
shorts, trousers, shirts, t-shirts, sweaters, waistcoats,
pullovers, jackets, coats, raincoats, parkas, socks, bathing
suits, swimsuits, dressing gowns, gloves, neckties, scarfs,
belts, bandanas, neckerchiefs, headbands, baby bibs, not of
paper, teddies, hosiery, footmuffs, not electrically heated,
tights, babies' pants, scarves, skirts, layettes, pajamas,
dresses; Children's headgear, namely, hats and caps, in
International Class 25.2
JKL IP Company, LLC (“Petitioner”) seeks to cancel Respondent’s registration
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting priority
and a likelihood of confusion with its marks BELLY BANDIT (in standard characters,
BELLY disclaimed) and BB BELLY BANDIT and design (BELLY disclaimed),
registered on the Principal Register for various clothing and foundation garments as
set forth below:
• Registration No. 3624235 for the mark for
“Stomach wrap in the nature of a supportive foundation
garment made of elastic, durable nylon, spandex, neoprene,
cotton, polyester and bamboo fabric used around the
midsection to keep the stomach in, and also used to reduce
post pregnancy swelling, assist weight loss, support the

2 Registration No. 4783863 issued on August 4, 2015, based on a request for extension of
protection of International Registration No. 1212933, registered June 12, 2014 with a claimed
priority date of February 10, 2014, filed under Section 66(a) of the Trademark Act, 15 U.S.C.
§ 1141(f).
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midsection after surgery, and create a slimming effect, in
International Class 25.3
• Registration No. 3650521 for the mark BELLY BANDIT for
“Stomach wrap in the nature of a supportive foundation
garment used around the midsection to reduce post pregnancy
swelling, assist weight loss, support the midsection after
surgery, and create a slimming effect, in International Class
10;4
• Registration No. 4560153 for the mark
and Registration No. 4560148
for the mark , both for “Clothing, namely, maternity
bands; Maternity clothing, namely, belts and bands;
Maternity leggings, namely, leggings featuring built-in
maternity bands; Maternity lingerie, in International Class
25;5 and
• Registration No. 4772060 for the mark BELLY BANDIT for
“Clothing and undergarments, namely, tops, bottoms, bras,
tank tops, tights, leggings, body shapers, sleepwear,
loungewear, foundation garments, and lingerie; shapewear,
namely, foundation undergarments, compression
undergarments not for medical use, compression bands not for
medical use, compression tops, compression bottoms,

3 Issued May 19, 2009 from an application filed March 4, 2008. Section 8 affidavit accepted;
Section 15 affidavit acknowledged. The description of the mark states: “The mark consists of
a sheriff badge with the stylized text ‘BB BELLY BANDIT.’ The text ‘BB’ is in the background
and are shown back to back.” Color is not claimed as a feature of the mark, and the stippling
is for shading purposes only.
4 Issued July 7, 2009 from an application filed December 16, 2008. Section 8 affidavit
accepted; Section 15 affidavit acknowledged.
5 Both registration issued July 1, 2014 from applications filed November 19, 2013. The
descriptions of the marks are summarized as follows: The marks consist of an outline of a
stylized flower with two capital letter “B”s positioned back-to-back centered inside the flower
outline. In Registration No. 4560153, the word ‘Belly’ is positioned to the left of the flower
outline and the word ‘Bandit’ is positioned to the right of the flower outline. In Registration
No. 4560148, the words ‘Belly Bandit’ are positioned centered below the flower outline, with
the word ‘Belly’ appearing above the word ‘Bandit.’”
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compression tank tops, compression bras; Maternity clothing,
namely, nursing tops, nursing tanks, maternity belts and
maternity bands; Maternity leggings, namely, leggings
featuring built-in maternity bands; Maternity lingerie;
Maternity sleepwear; athletic tops and bottoms for yoga; yoga
pants; and yoga shirts, in International Class 25;6
Petitioner also asserts that it has made common law use of BELLY BANDIT “in
connection with goods and services at least as early as May 2008.” 1 TTABVUE 5,
Petition to Cancel, ¶ 6.
Respondent, in its answer, admitted that Petitioner “is listed in the [USPTO’s]
public records as the owner of” each of the pleaded registrations, 7 TTABVUE 4, ¶¶ 7-
11, and otherwise denied the salient allegations in the petition to cancel, including
the allegations set forth in ¶ 6.
I. The Record
The record consists of the pleadings and, by operation of Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), the file of Respondent’s involved registration.
Petitioner filed a Notice of Reliance on (1) TSDR printouts of Petitioner’s five
pleaded registrations, and for the marks HIP BANDIT and BOSOM BANDIT (neither
of which was pleaded) also owned by Petitioner, and (2) Internet printouts from
Petitioner’s website and social media accounts, third-party commercial websites
showing Petitioner’s goods, Respondent’s goods, and goods of the type identified in
Petitioner’s pleaded registrations and Respondent’s involved registration, and Google
search results for “billybandit.” Petitioner also submitted the testimony affidavit of

6 Issued July 14, 2015 from an application filed October 27, 2014.
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Jodi E. Caden, the managing member of Petitioner, with exhibits that appear to be
identical to those submitted simultaneously under Notice of Reliance.7
Respondent submitted no testimony or other evidence, and only Petitioner filed a
brief. Nonetheless, Petitioner, as plaintiff in this proceeding, must prove its standing
and its claim of priority and likelihood of confusion by a preponderance of the
evidence. See Cerveceria Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989).
II. Standing
Petitioner has established its standing by properly introducing into evidence its
pleaded registrations. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Respondent does not dispute
Petitioner’s standing.
III. Priority
In a cancellation proceeding in which both parties own registrations, the
petitioner must prove priority of use. See Brewski Beer Co. v. Brewski Bros., Inc., 47
USPQ2d 1281 (TTAB 1998).

7 There was no need for Petitioner to submit the same exhibits under Notice of Reliance as
they were properly made of record as exhibits to Ms. Caden’s testimony.
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A. Priority Based on Pleaded Registrations
Petitioner may rely on the filing dates of the underlying applications for the
pleaded registrations as constructive use dates for purposes of priority. M.C.I. Foods,
Inc. v. Bunte, 96 USPQ2d 1544, 1550 (TTAB 2010); see also J.C. Hall v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435, 437 (CCPA 1965). In addition, because
Respondent’s mark was registered under Trademark Act § 66(a), 15 U.S.C. § 1141(f),
Respondent is entitled to the constructive use date of its filing (February 10, 2014,
based on priority from International Registration No. 1212933), 15 U.S.C.
§ 1141(f)(b).
Respondent has not claimed or proven a priority date earlier than February 10,
2014. With the exception of Registration No. 4772060, the filing dates of the
applications that matured into Petitioner’s pleaded registrations precede February
10, 2014. Petitioner therefore has established priority by virtue of constructive use as
to Registration Nos. 3624235 and 3650521, which identify stomach wraps in the
nature of foundation garments, and Registration Nos. 4560153 and 4560148, which
identify maternity clothing, namely, belts, bands, leggings, and lingerie.
However, Petitioner has not established by virtue of constructive use priority as
to the non-maternity clothing identified in Registration No. 4772060. Moreover, none
of Petitioner’s pleaded registrations identify goods in International Class 18.
Petitioner therefore must establish prior common law use of its BELLY BANDIT
marks on Class 18 goods and non-maternity clothing before Respondent’s priority
date of February 10, 2014.
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B. Priority Based on Common Law Use
Construing Petitioner’s common law claim, as set forth in paragraph 6 of the
petition to cancel (and repeated above), to cover baby-changing bags and other items
identified in the Class 18 goods set forth in Respondent’s registration, as well as non-
maternity specific clothing,8 Petitioner has not proven priority through its asserted
common law use of its pleaded marks on such goods.
With respect to the Class 18 goods, Ms. Caden testified that “[t]he trademark Belly
Bandit is currently used for the Labor & Delivery Bag, sold by Petitioner,” referencing
Exhibit 29, which is a photograph of said bag, and that “Petitioner is currently in the
process of expanding its use of its trademarks, specifically Belly Bandit, to include
related items, such as diaper bags, vanity bags, toiletry bags, tote bags, baby-
changing bags, and bags and sling bags for carrying infants.”9 As Ms. Caden attested
to these statements on November 28, 2017, her use of the term “currently” cannot
reasonably be read to include a date prior to Respondent’s priority date of February
10, 2014, and there is no other testimony or evidence concerning Petitioner’s priority
with respect to any Class 18 goods. Petitioner’s Section 2(d) claim against the Class
18 goods identified in Respondent’s registration therefore fails, and is dismissed.
Ms. Caden did not directly address Petitioner’s common law use of its pleaded
marks on non-maternity specific clothing, stating only that “Petitioner’s mark ‘Belly

8 We consider Petitioner’s common law claim even though it is vague, because Respondent
did not file a motion for a more definite statement, or seek to clarify the claim in any other
way.
9 Caden Test., 15 TTABVUE 11, ¶¶ 66 and 67, respectively.
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Bandit’ has been in use in commerce continuously since May 11, 2008.”10 She also
testified that “Petitioner is currently in the process of expanding its use of its
trademarks to include related items, such as infant, baby, and toddler clothing.”11
This testimony echoes her testimony concerning Petitioner’s current use and
intended expansion to various bags, discussed above, and is not probative for the
same reason. Ms. Caden’s other use-related testimony concerns the channels of trade
through which and customers to whom Petitioner’s and Respondent’s identified goods
are offered for sale, and is not relevant to our inquiry concerning Petitioner’s priority
claim based on common law use.12
“Oral testimony, if sufficiently probative, is normally satisfactory to establish
priority of use.” Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 144
USPQ 430, 432 (CCPA 1965). “In this regard, oral testimony should be clear,
consistent, convincing, and uncontradicted.” Productos Lacteos Tocumbo S.A. de C.V.
v. Paleteria La Michoacana, Inc., 98 USPQ2d 1921, 1922 (TTAB 2011). Although
uncontradicted, Ms. Caden’s testimony is neither sufficiently probative nor clear, and
Petitioner did not present any other testimony or evidence concerning its common
law use of its pleaded marks for non-maternity clothing (or any clothing, for that
matter).

10 Id. at 2, ¶ 2.
11 Id. at 11, ¶ 68.
12 We discuss this testimony and the related documentary evidence below, when we address
the parties’ channels of trade.
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Although Petitioner did not prove its priority based on common law use, as noted
above it is entitled to rely on the constructive use dates of Registration Nos. 3624235,
3650521, 4560153 and 4560148, which identify stomach wraps in the nature of
supportive foundation garments, and maternity clothing, namely, belts, bands,
leggings, and lingerie. The remainder of this decision will address the Section 2(d)
claim only as it pertains to these specific goods vis-à-vis the Class 25 goods identified
in Respondent’s registration.
IV. Likelihood of Confusion
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., 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 discuss below these and other relevant factors.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant and of
record” need be considered).
In this case, we have focused our Section 2(d) likelihood of confusion findings and
decision on the pleaded marks in Registration No. 4560153 for
and Registration No. and 4560148 (the
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“BELLY BANDIT design marks”), both for “Clothing, namely, maternity bands;
Maternity clothing, namely, belts and bands; Maternity leggings, namely, leggings
featuring built-in maternity bands; Maternity lingerie” in International Class 25,
because the identified goods are more similar to Respondent’s various children’s
clothing than are the “stomach wraps in the nature of supportive foundation
garments” that are “used around the midsection to … reduce post pregnancy swelling,
assist weight loss, support the midsection after surgery, and create a slimming effect”
identified in Registration Nos. 3624235 and 3650521. If we do not find a likelihood of
confusion on the basis of the previously registered BELLY BANDIT design marks,
we would not find a likelihood of confusion as to the other pleaded marks registered
for less similar goods. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516
(TTAB 2016); In re Max Capital Grp., Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. Similarity of the Marks
We compare Respondent’s standard character mark BILLYBANDIT and
Petitioner’s pleaded BELLY BANDIT design marks in their entireties for similarities
and dissimilarities in appearance, sound, connotation and commercial impression.
Stone Lion, 110 USPQ2d at 1160. “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).
Further, marks “‘must be considered … in light of the fallibility of memory ….’” In re
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St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting
San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196
USPQ 1 (CCPA 1977)). The proper 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 (TTAB 1975). “[S]imilarity is not a binary factor but
is a matter of degree.” St. Helena Hosp., 113 USPQ2d at 1085 (quoting In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003)).
Petitioner’s BELLY BANDIT design marks are similar to Respondent’s
BILLYBANDIT mark because the literal terms BELLY BANDIT and BILLYBANDIT
are similar in structure: both start with the letter “B” followed by a vowel and the
letters “LLY”; both consist of two words and four syllables; and both end in the word
BANDIT. The literal terms differ only in the presence of the letter “I” in place of the
letter “E” in Respondent’s mark, and the absence of a space in the middle of
Respondent’s mark. These differences in appearance are relatively minor, especially
since they are embedded in the middle of the literal terms, and would not result in
appreciable differences in pronunciation. Moreover, the slight differences are
overshadowed by the alliteration and shared cadence of the literal terms.
Although the design element in Petitioner’s marks constitutes an additional point
of difference between Petitioner’s marks and Respondent’s mark, we accord this
difference little weight. It is well-settled that the word portion in a composite mark
is more likely to indicate the origin of the goods because the literal portion is what
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consumers use when referring to or requesting the goods. Bond v. Taylor, 119
USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra, 671 F.3d 1358, 101 USPQ2d
1905, 1908, 1911 (Fed. Cir. 2012)). We also find the design element in Petitioner’s
mark less prominent than the wording.
We acknowledge that some consumers might notice the slight differences between
Petitioner’s marks and Respondent’s mark, and thus form different commercial
impressions of them, with Respondent’s mark connoting a boy named “Billy,” a
connotation Petitioner’s marks do not share. Nonetheless, when the marks are viewed
in their entireties, we find them more similar than they are different, and resolve this
du Pont factor in favor of a finding of likelihood of confusion.
B. Similarity of the Parties’ Goods and Channels of Trade

We turn next to the du Pont factors involving the relatedness of the goods, and
the similarity of established, likely to continue channels of trade. We base our
evaluation on the goods as they are identified in Petitioner’s and Respondent’s
registrations. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1171 (Fed. Cir. 2014); Octocom Sys. Inc. v. Hous. Computs. Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
With respect to the goods, it is settled that the respective goods need not be
identical or even competitive in order to find that they are related for purposes of our
likelihood of confusion analysis. The respective goods need only be “related in some
manner and/or if the circumstances surrounding their marketing [be] such that they
could give rise to the mistaken belief that the goods emanate from the same source.”
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Coach Servs., 101 USPQ2d at 1722; see also In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Petitioner’s goods are identified as maternity clothing, namely, belts, bands,
leggings featuring built-in maternity bands, and lingerie, and Respondent’s goods are
identified as various items of children’s clothing and headgear. None of the goods
identified in Petitioner’s registrations is identical (verbatim or legally) to any of the
goods identified in Respondent’s registration, and the goods are not related on their
face other than in the general sense that they are all items of clothing. However, “the
facts in each case vary and the weight to be given each factor may be different in light
of the varying circumstances; therefore, there can be no rule that certain goods (e.g.,
all clothing products) are per se related, such that there must be a likelihood of
confusion from the use of similar marks in relation thereto.” H.D. Lee Co. v.
Maidenform Inc., 87 USPQ2d 1715, 1723 (TTAB 2008). Petitioner presented no
testimony or evidence demonstrating that maternity-specific clothing and children’s
clothing and headgear are sufficiently related that consumers would expect them to
emanate from the same source under the same mark. Rather, Ms. Caden’s testimony
and the supporting marketplace evidence demonstrate only that maternity-specific
clothing and children’s clothing may be sold in Nordstrom’s, Target, BuyBuyBaby,
Babies“R”Us, Toys“R”Us, and Nieman Marcus,13 to some of the same purchasers,14
but not that they are sold under the same brands in such retail outlets.

13 Caden Test., 15 TTABVUE 8-10, ¶¶ 46-53, 57, and Exhibits 18-26, 15 TTABVUE 84-123.
14 Caden Test., 15 TTABVUE 10, ¶¶ 60-61.
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Based on this record, the third du Pont factor, the similarity or dissimilarity of
established, likely-to-continue trade channels, supports a finding that confusion is
likely, but the second du Pont factor, the similarity or dissimilarity and nature of the
goods, does not support such a finding.
V. Conclusion
As discussed above, Petitioner did not establish priority with respect to the Class
18 goods identified in Respondent’s registration. Consequently, Petitioner’s likelihood
of confusion claim fails with respect to Class 18.
As to the Class 25 goods identified in Respondent’s registration, we have carefully
considered all of the arguments and evidence of record as they pertain to the relevant
du Pont factors. We find that although the marks are more similar than they are
different, and the identified goods are offered in some of the same channels of trade
to some of the same consumers, Petitioner has not shown that the identified goods
are sufficiently related that when consumers who are familiar with Petitioner’s goods
encounter Registrant’s goods, they are likely to become confused, mistaken or
deceived as to the source of origin of the goods.
The Federal Circuit has instructed that a single du Pont factor may be dispositive
in any particular case. Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d
1142, 1145 (Fed. Cir. 1991). We find the second du Pont factor dispositive here. See,
e.g., North Face Apparel Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217, 1230-34
(TTAB 2015) (dismissing opposition as to classes of goods and services for which
opposer did not establish relatedness to its goods); Itel Corp. v. Ainslie, 8 USPQ2d
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1168, 1171 (TTAB 1988) (dismissing opposition in which marks were identical but
opposer filed to prove relatedness of the goods and services). Because Petitioner has
not met its burden to establish prior common law use or that its identified maternity
clothing items are similar or related to Respondent’s identified Class 25 goods,
Petitioner has not carried its burden to establish, by a preponderance of the evidence,
that Respondent’s mark BILLYBANDIT is likely to cause consumer confusion when
used in association with the Class 25 goods identified in Respondent’s registration.
Decision: The petition to cancel is dismissed in its entirety.