John Vrana

Trademark Trial and Appeal Board

Jun 26, 2018

No. 86716357 (T.T.A.B. Jun. 26, 2018)

Mailed: June 26, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
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In re Vrana
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Serial No. 86716357
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Phillip Thomas Horton of The Law Office of Phillip Thomas Horton
for John Vrana

Steven M. Perez, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Kuhlke, Adlin and Gorowitz,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant John Vrana seeks a Principal Register registration for the mark SAY
IT LOUD! SCREAM IT PROUD!, in standard characters, for “polo shirts; shorts;
sweatpants; sweatshirts; t-shirts.”1 The Examining Attorney refused registration
under Section 2(d) of the Trademark Act on the ground that Applicant’s mark so
resembles the registered mark SAY IT LOUD!, in standard characters, for “baseball
caps and hats; sport shirts; sports jackets; sweat jackets; sweat pants; t-shirts; wind-
jackets”2 that use of Applicant’s mark in connection with Applicant’s goods is likely
to cause confusion. After the refusal became final, Applicant appealed and Applicant

1 Application Serial No. 86716357, filed August 6, 2015 under Section 1(b) of the Trademark
Act, based on an alleged intent to use the mark in commerce.
2 Registration No. 4913003, issued March 8, 2016.
This Opinion is Not a
Precedent of the TTAB
Serial No. 86716357
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and the Examining Attorney filed briefs.
I. Evidentiary Objection
The Examining Attorney’s objection to evidence Applicant submitted for the first
time with his Appeal Brief is sustained, because the evidence is untimely. Trademark
Rule 2.142(d).3
II. Likelihood of Confusion
Our determination under Section 2(d) is based on 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 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
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.”).
A. The Goods, Channels of Trade and Classes of Consumers
Turning first to the goods, they are in-part identical, because Applicant and
Registrant both offer sweatpants and t-shirts. Where, as here, Applicant’s and
Registrant’s goods are in-part identical, we must presume that the channels of trade
and classes of purchasers for those goods are also the same. See In re Viterra Inc., 671

3 We hasten to add that none of the evidence would have changed our ultimate decision had
it been considered.
Serial No. 86716357
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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); In
re Yawata Iron & Steel Co., 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 Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). We need not
go beyond our finding that Applicant’s and Registrant’s sweatpants and t-shirts are
identical; it is sufficient for a finding of likelihood of confusion if relatedness is
established for any item encompassed by the identification of goods in a particular
class. Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986 (CCPA 1981).4
The legal identity (in part) of Applicant’s and Registrant’s goods and their
overlapping channels of trade and classes of consumers not only weigh heavily in
favor of a finding of 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, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.
Cir. 2010); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).

4 Applicant concedes the “similarity of the goods.” 4 TTABVUE 11. In any event, the
Examining Attorney introduced numerous third-party registrations which suggest that goods
such as those identified in the involved application and cited registration may emanate from
the same sources. Office Action of June 7, 2017; In re Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1998). Similarly, the Examining Attorney introduced website printouts
which show that clothing items such as those identified in the involved application travel in
the same channels of trade as clothing items such as those identified in the cited registration.
Office Action of June 7, 2017.
Serial No. 86716357
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B. The Marks
The marks are similar “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). In fact, the first and dominant element of
Applicant’s mark is identical (including even the exclamation point) to the entirety of
Registrant’s mark. As a result, the marks look and sound similar and convey similar
meanings.
The shared phrase SAY IT LOUD! is the dominant element of Applicant’s mark
because it comes first. Presto 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
Imps., Inc., 73 USPQ2d at 1692; Century 21 Real Estate Corp. v. Century Life of Am.,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Furthermore, the second part
of Applicant’s mark, SCREAM IT PROUD! is not conceptually or otherwise separate
from the shared phrase SAY IT LOUD!, but is instead a mere continuation of, and
thus subordinate to, that shared phrase.
Applicant’s argument that SCREAM IT PROUD! “creates a new and unique idea
of being prideful with what you scream,” 4 TTABVUE 9, is not well-taken. In fact, the
marks convey essentially the same meaning and have essentially the same overall
commercial impression because SCREAM IT PROUD! does little more than further
exhort the listener to state “it” loudly (by not merely being loud, but by screaming).
As the Examining Attorney points out, SCREAM IT PROUD! is less significant than
Serial No. 86716357
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the shared phrase SAY IT LOUD! because SCREAM IT PROUD! merely “mimics the
structure and sound of the cited mark,” making SAY IT LOUD! more significant. 7
TTABVUE 8. In fact, while the idea of “being prideful with what you scream” is not
explicitly stated in Registrant’s mark, there is at least an implicit connection between
being proud and “saying it loud,” because pride may be expressed by speaking loudly,
just as listeners may infer a speaker’s pride in something she discusses loudly. As the
Examining Attorney argues, Applicant’s mark “alters the cited mark in a way which
is merely additive rather than transformative.” 7 TTABVUE 7. Thus, the marks are
quite similar in meaning and overall commercial impression, and are more than
similar enough in appearance and sound, to create confusion. Consumers familiar
with Registrant’s mark may even perceive Applicant’s mark as a modified version of
Registrant’s. This factor also weighs in favor of finding a likelihood of confusion.
III. Conclusion
The goods are legally identical and the marks are similar. Therefore, confusion is
likely.5

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.

5 To the extent Applicant maintains additional arguments he made during prosecution but
not in his Appeal Brief, the absence of confusion is not relevant because there is no evidence
that Applicant’s mark is in use, so there is no way to determine 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);
In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). There is also no evidence of
consumer sophistication or care, and in any event neither Applicant’s nor Registrant’s
identification of goods limits the class of customers therefor. Stone Lion Capital Partners,
L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162-63 (Fed. Cir. 2014).