Jo-Ann Stores, LLCv.Hibaly Inc.

Trademark Trial and Appeal Board

Sep 30, 2019

91244549 (T.T.A.B. Sep. 30, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 30, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Jo-Ann Stores, LLC
v.
Hibaly Inc.
_____

Opposition No. 91244549
_____

Donna P. Gonzales, Timothy J. Feathers, and David R. Barnard of Stinson Leonard
Street LLP, for Jo-Ann Stores, LLC.

David Chen, President of Hibaly Inc, appearing pro se.
_____

Before Cataldo, Shaw, and Coggins,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
Hibaly Inc. (“Applicant”) seeks registration on the Principal Register of the
composite mark for:
shirts, tank tops, blouses, sweatshirts, sweaters, jackets,
dresses, skirts, pants, leggings, shorts, pajamas, panties,
briefs, bras, hosiery, socks, footwear, hats, scarves,
headbands, in International Class 25.1

1 Application Serial No. 87851799 was filed on March 27, 2018, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1052(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as June 29, 2013. The application contains the
Opposition No. 91244549
- 2 -
Jo-Ann Stores, LLC (“Opposer”) opposes the registration of Applicant’s mark on
the ground of priority and likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), based on common law rights in the mark JO-ANN and
variations thereof, and ownership of several registrations for marks comprising or
including the term JO-ANN or JOANN.2 Among Opposer’s pleaded registrations is
Registration No. 5545216 for the mark JOANN (in standard characters) for “online
and retail store services featuring” an extensive list of items including “apparel . . .
bridal apparel . . . fashion apparel, [and] . . . shoes” in Class 35.3
Applicant denies the salient allegations of the notice of opposition.4
I. Accelerated Case Resolution
The parties agreed to try this case via the Board’s Accelerated Case Resolution
(“ACR”) procedure.5 Specifically, they agreed to forego a traditional trial, and to
proceed on the summary judgment model of ACR, in which each party may submit a
brief with accompanying evidentiary submissions. In addition to stipulating to
certain facts and the use of limited evidence,6 their stipulation provides that “[t]he

following descriptions and statements: The mark consists of Stylized writing of “J. Ann” in a
rectangular shape; Color is not claimed as a feature of the mark; The Name “J. ANN” does
not identify a living individual.
2 Notice of Opposition, 1 TTABVUE. Opposer also alleged dilution by blurring; however,
because Opposer did not pursue this claim in its ACR brief, it is deemed waived. Swatch AG
(Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463, 1465 n.3 (TTAB 2013),
aff’d, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015).
3 Registration No. 5545216 issued August 21, 2018, on the Principal Register. See Notice of
Opposition ¶ 14, and Exhibit 7 (1 TTABVUE 12, 75-82).
4 Answer, 4 TTABVUE.
5 See Stipulation, 9 TTABVUE, clarified and approved by the Board, 10 TTABVUE.
6 Stipulation §§ I(1-5), II(3)(b), (9 TTABVUE 2-4); Order ¶ ¶ 1-5, 9-10 (10 TTABVUE 2-3).
Opposition No. 91244549
- 3 -
Board may resolve any genuine disputes of material facts that may be found to exist
based on the record.”7 See generally Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601,
1602 (TTAB 2018) (describing summary judgment ACR model); TRADEMARK TRIAL
AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 702.04(b) (2019).
The case is fully briefed. As in a traditional Board proceeding, the burden of proof
remains with Opposer, which must establish its case by a preponderance of the
evidence. TBMP § 702.04(a). As noted above, under the terms of the stipulation the
Board may resolve any and all issues of material fact in the course of issuing a final
ruling. See TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1411
(TTAB 2018); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016) (“In order to take
advantage of any form of ACR, the parties must stipulate that the Board may resolve
any genuine disputes of material fact in the context of something less than a full
trial.”). See generally TBMP §§ 528.05(a)(2), 702.04, 705.
II. The Record and Evidentiary Matters
The parties stipulated that the only evidence they would rely on would be:
• The pleadings (including any exhibits and attachment thereto);

• Opposer’s pleaded registrations, including, if attached to an ACR brief, any
documents in the file histories for the registrations; and

• Applicant’s Opposed Application, including all documents in the file history
for the application.8

7 Order ¶ 12, 9 TTABVUE 3.
8 Stipulation § II(3)(b), (9 TTABVUE 3); Order ¶ 9 (10 TTABVUE 3).
Opposition No. 91244549
- 4 -
Accordingly, the record consists of:
• The pleadings (including Opposer’s pleaded registrations attached to the
Notice of Opposition);

• The file of opposed Application Serial No. 87851799;

• The parties’ ACR stipulation, including stipulations of fact;9 and

• A specimen supporting a Combined Declaration of Use and Incontestability
under Sections 8 & 15 in one of the pleaded registrations, submitted with
Opposer’s ACR brief.10

Applicant attached to its ACR brief several photos of “samples of the products we
sell carrying the J. Ann brand.”11 Opposer did not specifically object to this evidence,
but included a general statement that “[t]he Board should disregard any of
Applicant’s arguments related to actual use of its mark because Applicant failed to
provide any evidence to support such allegations.”12 Inasmuch as the photographs do
not fall within the limited admissible evidence of the stipulation, Opposer generally
objected to Applicant’s arguments of actual use, and it is well settled that we must
compare the marks as depicted in the application and the registration, not as actually
used, see, e.g., In re Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214 (TTAB 2001)
(“[I]n Board proceedings, likelihood of confusion is determined independent of the

9 Stipulation, 9 TTABVUE 2-5; clarification Order, 10 TTABVUE.
10 Exhibit A attached to Opposer’s brief, 11 TTABVUE 19-20.
11 Brief, unnumbered p. 3, Exhibit A; 12 TTABVUE 4, 7-9.
12 Reply Brief, pp. 4-3, 13 TTABVUE 7-8.
Opposition No. 91244549
- 5 -
context of actual usage.”), we will not consider Applicant’s photographs submitted
with its brief.13
For efficiency, we focus on Opposer’s pleaded Registration No. 5545216 for the
mark JOANN in standard characters for retail services featuring, inter alia, apparel,
in Class 35. We consider the mark and services in this registration most relevant to
the likelihood of confusion analysis. See In re Max Capital Grp. Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).
III. Standing and Priority
Opposer must prove standing by showing a real interest in the outcome of the
proceeding and a reasonable basis for believing that it would suffer damage if the
mark is registered. See 15 U.S.C. § 1063; Empresa Cubana Del Tabaco v. Gen. Cigar
Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). The parties have
stipulated to Opposer’s title and the status of Opposer’s pleaded registrations,14
including Registration No. 5545216, which establishes Opposer’s standing. See Coach
Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed.
Cir. 2012); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000).
Because the parties have stipulated to Opposer’s pleaded Registration No.
5545216, Section 2(d) priority is not an issue in this case as to the mark and the
services covered by that registration. See Top Tobacco LP v. N. Atl. Op. Co., 101

13 In any event, consideration of the photographs would not change the outcome of this
decision.
14 Stipulation § I(1-2), (9 TTABVUE 2-3); Order ¶¶ 1-2 (10 TTABVUE 1).
Opposition No. 91244549
- 6 -
USPQ2d 1163, 1169 (TTAB 2011) (citing King Candy, Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 82 USPQ 108 (CCPA 1974)). See also Massey Junior Coll., Inc. v.
Fashion Inst. of Tech., 492 F.2d 1399, 181 USPQ 272, 275 n.6 (CCPA 1974) (“prior
use need not be shown by a plaintiff relying on a registered mark unless the defendant
counterclaims for cancellation.”); Itel Corp. v. Ainslie, 8 USPQ2d 1168, 1169 (TTAB
1988) (“[B]ecause of the existence of opposer’s valid and subsisting registration, it
need not prove prior use as to the services recited therein”).
IV. 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 “DuPont factors”); 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.”’ See Cai v. Diamond Hong, Inc., 901 F.3d 1367,
127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d
1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); M2 Software, Inc. v. M2 Commc’ns,
Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within DuPont list,
only factors that are “relevant and of record” need be considered). Two key
considerations are the similarities between the marks and the similarities between
the goods and/or services. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d
1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
Opposition No. 91244549
- 7 -
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); In re FabFitFun, Inc., 127
USPQ2d 1670, 1672 (TTAB 2018).
A. The Similarity or Dissimilarity and Nature of the Goods and Services
This DuPont factor concerns the “similarity or dissimilarity and nature of the
goods or services as described in an application or registration . . . .” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159
(Fed. Cir. 2014). The analysis of this factor is premised on the identifications of goods
or services in the application and the cited registration. Id. at 1161-63; Octocom Sys.,
Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990). Relatedness may be shown on the basis of those identifications alone, without
resort to extrinsic evidence. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002).
“[L]ikelihood of confusion can be found ‘if the respective products [and services]
are related in some manner and/or if the circumstances surrounding their marketing
are such that they could give rise to the mistaken belief that they emanate from the
same source.”’ Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler,
83 USPQ2d 1715, 1724 (TTAB 2007)). It is well established that goods can be related
to services, particularly where the services involve the goods in some manner. See,
e.g., Hewlett-Packard, 62 USPQ2d at 1004-05.
Opposer’s pleaded Registration No. 5545216 is registered for “online and retail
store services featuring” an extensive list of items including “apparel . . . bridal
Opposition No. 91244549
- 8 -
apparel . . . fashion apparel, [and] . . . shoes.” Applicant seeks to register its mark for
“shirts, tank tops, blouses, sweatshirts, sweaters, jackets, dresses, skirts, pants,
leggings, shorts, pajamas, panties, briefs, bras, hosiery, socks, footwear, hats,
scarves, headbands.” Applicant characterizes Opposer as “a fabric and craft store.”15
However, as noted above, our analysis of this DuPont factor is premised on the
identification of services in the pleaded registration, which is not limited to the sale
of fabric and crafts but includes apparel.
Apparel is “clothing, especially outer garments; attire.”16 Some of the apparel
products that Opposer sells through its retail store services may include the specific
apparel goods for which Applicant seeks registration. Although Applicant “believe[s]
that none of [its] products are found nor look similar to those sold in [Opposer’s]
stores,”17 Opposer’s “apparel” featured in its retail stores is broad enough to
encompass sale of Applicant’s specific apparel goods. Cf. In re Hughes Furniture
Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded
identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified
‘residential and commercial furniture.”’). Further, logic dictates that retail store
services are related to products commonly sold in that particular retail store. See In

15 Brief, unnumbered p. 3, 12 TTABVUE 4.
16 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, www.ahdictionary.
com/word/search.html?q=apparel (accessed September 27, 2019). The Board may take
judicial notice of dictionary definitions, including online dictionaries that exist in printed
format. Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374
(Fed. Cir. 2018); In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d,
823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
17 Brief, unnumbered p. 3, 12 TTABVUE 4.
Opposition No. 91244549
- 9 -
re Detroit Athletic Club Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018)
(sports apparel retail services are related to clothing); Genesco Inc. v. Martz, 66
USPQ2d 1260, 1268 (TTAB 2003) (applicant’s identified clothing items are
commercially related to opposer’s services of retail and mail order sales of various
clothing items); In re U.S. Shoe Corp., 229 USPQ 707, 708 (TTAB 1985) (retail
women’s clothing store services and clothing are related to uniforms); see also Wet
Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1639-40 (TTAB 2006) (“It is settled
that the likelihood of confusion may result from the use by different parties of the
same or similar marks in connection with goods, on the one hand, and services which
deal with or are related to those goods, on the other.”).
We find that Applicant’s “shirts, tank tops, blouses, sweatshirts, sweaters, jackets,
dresses, skirts, pants, leggings, shorts, pajamas, panties, briefs, bras, hosiery, socks,
footwear, hats, scarves, headbands” are closely related to Opposer’s retail stores
services featuring apparel. Accordingly, this DuPont factor weighs in favor of finding
that there is a likelihood of confusion.
B. Channels of Trade and Classes of Consumers
Where, as here, the identifications of goods and services describe goods and
services broadly, and there is no limitation as to the nature, type, channels of trade,
or class of purchasers, it is presumed that the services in Opposer’s pleaded
Registration No. 5545216 (which are not limited to fabric and craft stores, as
Applicant argues) and the apparel products in Applicant’s application encompass all
goods and services of the type described, that they are offered in all channels of trade
Opposition No. 91244549
- 10 -
normal for these goods and services, and that they are available to all classes of
purchasers for the described goods and services. See Citigroup Inc. v. Capital City
Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Paula Payne
Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973); Kalart
Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139, 140 (CCPA 1958); In re
Integrated Embedded, 120 USPQ2d 1504, 1515 (TTAB 2016); In re Linkvest S.A., 24
USPQ2d 1716 (TTAB 1992). Under these circumstances, Applicant’s apparel
products are the types of goods that would be sold in Opposer’s retail stores to
Opposer’s customers.
We find that the channels of trade and classes of consumers are the same.
Accordingly, this DuPont factor weighs in favor of finding that there is a likelihood of
confusion.
C. The Conditions under Which Sales Are Made
Because Opposer is rendering retail store services which include apparel without
any restrictions as to channels of trade, classes of consumers, price points, or quality,
and Applicant’s description of goods does not include any restrictions as to channels
of trade, classes of consumers, price points, or quality, we must presume that
purchasers for the parties’ goods and services include ordinary consumers who may
not exercise a high degree of purchasing care. See Stone Lion Capital Partners v. Lion
Capital, 110 USPQ2d at 1163-64 (recognizing Board precedent requiring
consideration of the “least sophisticated consumer in the class”); In re Sailerbrau
Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992) (finding that all purchasers of
Opposition No. 91244549
- 11 -
wine may not be discriminating because while some may have preferred brands,
“there are just as likely to be purchasers who delight in trying new taste treats.”).
Accordingly, this DuPont factor weighs in favor of finding that there is a likelihood of
confusion.
D. Similarity or Dissimilarity of the Marks
Finally, we compare the parties’ marks “in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay Imps. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting DuPont, 177 USPQ at 567). The test assesses not whether the marks
can be distinguished in a side-by-side comparison, but rather whether their overall
commercial impressions are so similar that confusion as to the source of the goods or
services offered under the respective marks is likely to result. Coach Servs., 101
USPQ2d at 1721; see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB
2012). Similarity in any one of the elements of sound, appearance, meaning, or
commercial impression suffices to support a determination of likelihood of confusion.
See Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA
1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely
to cause confusion”); In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (“Similarity
in any one of these elements may be sufficient to find the marks confusingly similar.”).
In comparing the marks, we are mindful that where, as here, the goods and
services are closely related, the degree of similarity necessary to find likelihood of
confusion need not be as great as where there is a recognizable disparity between the
Opposition No. 91244549
- 12 -
goods and services. Coach Servs., 101 USPQ2d at 1721; Century 21 Real Estate Corp.
v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen
Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007). The proper focus is on the
recollection of the average customer, who retains a general rather than specific
impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d
1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438
(TTAB 2012); see also In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085
(Fed. Cir. 2014) (“[M]arks must be considered in light of the fallibility of memory”)
(citation, internal quotation marks, and ellipsis omitted). Because Opposer is
rendering retail store services which include apparel and Applicant’s description of
goods include various apparel items, the average customer is an ordinary consumer.
Opposer’s mark is JOANN in standard characters, and Applicant’s mark is
.
Applicant argues that its mark “is in stylized writing inside a rectangular shape.
The font type, design and appearance are totally different from that of [Opposer’s] . . .
registered trademark[].”18 However, because Opposer’s mark is in standard
characters, it may be displayed in the same font or stylization as the wording in
Applicant’s mark. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed.
Cir. 2012).

18 Brief, unnumbered p. 2, 12 TTABVUE 3.
Opposition No. 91244549
- 13 -
Applicant’s mark resembles Opposer’s mark because the stylized lettering “J.Ann”
in Applicant’s mark may be viewed as “JoAnn.” Specifically, the period after the “J”
is round like an “o” and may be perceived as a small “o.” Although Applicant argues
that “[t]he absence of the letter ‘O’ in” its mark “totally differentiates how it is
pronounced as compared to” Opposer’s mark JOANN,19 we note that Applicant’s mark
may be pronounced as “jay ann” if the period is perceived as such, or, it may be
pronounced as “jo ann” if the period is perceived as a small “o”. As to commercial
impression, the marks are similar to the extent that each conveys the impression of
a name. Moreover, J.Ann could be considered a shortened version of JOANN. See In
re Mighty Leaf Tea, 94 USPQ2d at 1259 (“ML is likely to be perceived as a shortened
version of ML MARK LEES when used on the same or closely related skin care
products.”).
Here, the marks have similarities and differences. We find that when the marks
are considered in their entireties, the similarities outweigh the differences; they are
more similar than dissimilar. Accordingly, this DuPont factor weighs in favor of
finding that there is a likelihood of confusion.
E. Summary of Likelihood of Confusion
We have considered all of the arguments and evidence of record, and all relevant
DuPont factors. We have found that the marks at issue are similar; Applicant’s
various apparel items are closely related to Opposer’s retail stores services featuring
apparel; the channels of trade and classes of consumers are the same; and purchasers

19 Brief, unnumbered p. 3, 12 TTABVUE 4.
Opposition No. 91244549
- 14 -
for the parties’ goods and services include ordinary consumers who may not exercise
a high degree of purchasing care. In view thereof, the relevant factors favor a finding
of a likelihood of confusion.
V. Decision
The opposition to registration of the mark of Application Serial No.
87851799 is sustained on the ground of likelihood of confusion under Section 2(d),
and registration to Applicant is refused.