Joe Unionv.Imagine & Create LLC dba Revive Brand Co.

Trademark Trial and Appeal Board

Dec 17, 2019

91237355 (T.T.A.B. Dec. 17, 2019)

Mailed: December 17, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
————
Joe Union

v.

Imagine & Create LLC d/b/a Revive Brand Co.
___

Opposition No. 91237355
___

Delphine James of the Law Office of Delphine James PLLC
for Joe Union.

Imagine & Create LLC d/b/a Revive Brand Co., pro se.
______
Before Cataldo, Adlin and Lynch,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Imagine & Create LLC d/b/a Revive Brand Co. seeks registration of
WAKE UP AND WIN, in standard characters, for “hats; t-shirts; graphic t-shirts;
short-sleeved t-shirts.”1 In his notice of opposition, Joe Union alleges prior use and
registration of the mark shown below

1 Application Serial No. 87417972, filed April 19, 2017 under Section 1(a) of the Trademark
Act, based on asserted first use dates of March 31, 2017.
This Opinion is Not a
Precedent of the TTAB
Opposition No. 91237355
2

for clothing and other products, including “shirts,” “t-shirts” and “headwear” for
“babies, adults, children of all ages, men and women.”2 As grounds for opposition,
Opposer alleges that use of Applicant’s mark would be likely to cause confusion with
Opposer’s mark. In its answer, Applicant denies the salient allegations in the notice
of opposition, and asserts “affirmative defenses” which are in fact merely
amplifications of its denials.
I. The Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
the file of Applicant’s involved application. In addition, Opposer introduced:
A notice of reliance on the files of his pleaded registration
and the involved application; and Applicant’s’ initial
disclosures and responses to Opposer’s discovery requests.3
7 TTABVUE.4

2 Registration No. 5456342, issued May 1, 2018. The registration includes this description of
the mark: “The mark consists of the number ′2′ as the main focus with the words ′I Woke Up′
through the middle of the number ′2′ and the word ′Win′ being under the number ′2′.”
3 Opposer’s notice of reliance also includes his own initial disclosures and responses to
Applicant’s document requests, but only the inquiring or receiving party may introduce these
types of materials by notice of reliance. We have therefore not considered these materials.
Trademark Rule 2.120(k)(5), 37 C.F.R. § 2.120(k)(5).
4 Citations to the record reference TTABVUE, the Board’s online docketing system. The
number preceding “TTABVUE” corresponds to the docket entry number(s), and any
Opposition No. 91237355
3
The testimony declaration of Opposer’s customer Freeman
Wyche III (“Wyche Dec.”). 8 TTABVUE 2-3.
Opposer’s own testimony declaration, and the exhibits
thereto (“Union Dec.”). Id. at 7-11.5

Applicant did not take any testimony or submit any other evidence, but both parties
filed trial briefs.6
II. Standing and Priority
Opposer’s pleaded registration establishes its standing. 7 TTABVUE 7. 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). And because Applicant has not counterclaimed to cancel
Opposer’s registration, priority is not at issue with respect to the mark and goods
identified therein.
III. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. Du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth

number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the
cited materials appear.
5 Opposer also submitted a “Notice of Filing” of seven additional declarations, but in fact none
of those declarations were included with Opposer’s evidentiary submissions during his
testimony period. 8 TTABVUE 4-5. While Opposer attached additional evidence to his
Amended Trial Briefs, (12 TTABVUE 13-40 and 13 TTABVUE), apparently including some
of the additional declarations, any evidence not previously submitted during Opposer’s
testimony period is untimely and has not been considered. Trademark Rule 2.121(a), 37
C.F.R. § 2.121(a).
6 We have not considered the evidence attached to Applicant’s Trial Brief for the reason set
forth in footnote 5.
Opposition No. 91237355
4
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed.
Cir. 2004) (referring to these as “two key considerations”); Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”). Opposer
bears the burden of establishing that there is a likelihood of confusion by a
preponderance of the evidence. Cunningham, 55 USPQ2d at 1848. We consider the
likelihood of confusion factors about which there is evidence or argument. Du Pont,
177 USPQ at 567-68. See also Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127
USPQ2d 1797, 1800 (Fed. Cir. 2018) (“Not all of the Du Pont factors are relevant to
every case, and only factors of significance to the particular mark need be
considered.”) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257,
1259 (Fed. Cir. 2010)).
A. The Goods, Channels of Trade and Classes of Consumers
Opposer’s “shirts,” “t-shirts” and “headwear” for “babies, adults, children of all
ages, men and women” encompass Applicant’s t-shirts and hats. Therefore, the goods
are identical or legally identical. Because the goods are identical, we must presume
that the channels of trade and classes of purchasers are as well. 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
Opposition No. 91237355
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entitled to rely on this legal presumption in determining likelihood of confusion);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
The legal identity of the goods and their overlapping channels of trade and classes
of purchasers not only weigh heavily in favor of finding a likelihood of confusion, but
also reduce the degree of similarity between the marks necessary to find a likelihood
of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 94 USPQ2d
at 1260; In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
B. The Marks
We consider the marks “in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
(quoting du Pont, 177 USPQ at 567). Here, while the marks have similarities and
differences, when considered in their entireties, we find that the similarities outweigh
the differences. Indeed, the essence of the parties’ marks is the same – both begin
with WAKE/WOKE UP, and end with WIN, and convey the idea of awakening and
then winning.
More specifically, WAKE UP and WOKE UP look similar, as they differ by only
one letter. Furthermore, although Opposer’s mark begins with “I,” which appears
before “WOKE UP,” the “I” is merely the subject, while the verb is “WOKE UP.” Thus,
the past tense “I WOKE UP” is the first part of Opposer’s mark, while the present
tense of the same verb, “WAKE UP,” is the first part of Applicant’s mark. Cf. Presto
Opposition No. 91237355
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Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often
the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”); see also, Palm Bay Imports Inc., 73 USPQ2d at 1692;
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992). Furthermore, both marks end with “WIN.”
While the “I” in Opposer’s mark is absent from Applicant’s, Opposer’s mark
includes a large “2” (which will be understood as meaning “to” in this context), and
Applicant’s mark includes “and,” these differences are insignificant, especially
because in total these three differences consist of only five characters. Despite the
prominence of the “2” because of its size, we find that it does not dominate Opposer’s
mark because in this context it is the phonetic equivalent of the term “to” in the
infinitive verb form “to win.” We have not ignored the stylization of Opposer’s mark,
but because Applicant seeks registration of its mark in standard characters, its mark
could be displayed in a manner similar to Opposer’s mark. In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012).7
The marks also sound quite similar, given that WOKE UP and WAKE UP sound
almost identical and each mark ends with the identical term WIN. Moreover, when
Opposer’s mark is pronounced, it will not be apparent that the term “to” is displayed

7 Applicant points out that Opposer’s description of its pleaded mark indicates that the
number “2” is the mark’s “main focus.” 7 TTABVUE 89. While we have considered this
description, which is “illuminative of shade and tone in the total picture confronting” us, at
the same time, “[u]nder no circumstances, may a party’s opinion, earlier or current, relieve
the decision maker of the burden of making his own ultimate conclusion on the entire record.”
Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153 (CCPA
1978). Here we find that the term “2/to” does not sufficiently distinguish Opposer’s mark from
Applicant’s such that confusion is unlikely.
Opposition No. 91237355
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as its phonetic equivalent “2.” The terms the marks do not share, “I,” “2/to” and “AND”
are also insignificant to how the marks sound, as these terms are so short.
Finally, the marks convey essentially the same meaning. In each, the motivational
message is to awaken and prevail. See 8 TTABVUE 7 (Union Dec. p. 1) (“I observed a
huge need of positivity and encouragement in the world today and My overall goal
when I started and trademarked I Woke Up 2 Win was to give the world a gleaming
glimpse hope (sic) and a message that no matter what or where you’re from you can
overcome any obstacles in life as long as ‘You Woke Up’.”). The term WAKE UP in
Applicant’s mark is merely the present tense of the term WOKE UP in Opposer’s
mark, 8 TTABVUE 11, and while the “2” in Opposer’s mark is different than the term
“and” in Applicant’s mark, given its context, the “2” will be interpreted as “to,” which
in the context of the parties’ marks is essentially similar to the transitional “and” in
Applicant’s mark. That is, none of these differences impacts the marks’ essential
meanings, which remain to awaken and prevail. Applicant’s argument that confusion
is unlikely because Opposer’s mark is a “past tense sentence (a completed action)”
while Applicant’s mark “is an imperative sentence giving a direct command,” 14
TTABVUE 4, is not well taken. The different tenses do not result in the marks having
different connotations; in each the message is awakening and prevailing, whether
previously or currently.
We therefore find the marks to be more similar than dissimilar.8

8 Applicant’s argument that there has been no actual confusion is not well taken, because
there is no evidence supporting it, or any evidence regarding the extent of use of the parties’
Opposition No. 91237355
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IV. Conclusion
Because the goods are identical or legally identical, and presumed to travel in the
same channels of trade to the same classes of consumers, and the marks are similar,
confusion is likely.

Decision: The opposition is sustained on Opposer’s likelihood of confusion claim
under Section 2(d) of the Trademark Act, and registration of Applicant’s mark is
refused.

marks. Therefore, we cannot gauge whether or the extent to which there has been an
opportunity for confusion to occur if it were likely to occur. See Nina Ricci S.A.R.L. v. E.T.F.
Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The absence of any
showing of actual confusion is of very little, if any, probative value here because (1) no
evidence was presented as to the extent of ETF’s use of the VITTORIO RICCI mark on the
merchandise in question in prior years ….”); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-
27 (TTAB 1984). This factor is neutral.