Joshua F. Morell

Trademark Trial and Appeal Board

Dec 8, 2016

No. 86610019 (T.T.A.B. Dec. 8, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: December 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Joshua F. Morell
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Serial No. 86610019
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Joshua F. Morell, pro se.

Sung In, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
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Before Wellington, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Joshua F. Morell (“Applicant”) seeks to register on the Principal Register the
mark LOOPER in standard characters for goods ultimately identified as “Athletic
apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms;
athletic pants; athletic shirts; athletic shoes; baseball caps and hats; fashion hats;
golf shoes; hats; headbands; hooded sweat shirts; hooded sweatshirts; jackets; long-
sleeved shirts; men’s socks; pants; polo shirts; rain hats; rain jackets; rainproof
jackets; shirts; shoes; short-sleeved shirts; socks; sports jackets; sports shirts;
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sweaters; sweatshirts; t-shirts; track jackets; waterproof jackets and pants; wind
resistant jackets; wind shirts; wind-jackets” in International Class 25.1
The Trademark Examining Attorney refused registration of Applicant’s mark
pursuant to Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark so resembles the registered mark LOOPER in standard
characters for “leather goods – namely, purses, billfolds, belts and tool pouches; and
handbags made of imitation leather” in International Class 18,2 that, when used on
or in connection with Applicant’s identified goods, it is likely to cause confusion or
mistake or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. The Trademark Examining Attorney maintained the refusal to
register and denied the request for reconsideration. Thereafter, the appeal was
resumed and is now fully briefed.
We affirm the Section 2(d) refusal.
I. Applicable Law
We base our determination under Section 2(d) on 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) (“du Pont”). See

1 Application Serial No. 86610019, filed April 25, 2015, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
2 Registration No. 1120964 owned by Looper Law Enforcement LLC composed in part of
Barton and Lisa Looper; issued June 26, 1979 on the Principal Register; alleging 1938 as the
date of first use anywhere and as the date of first use in commerce; renewed. The registration
was partially cancelled with regard to the goods identified in International Classes 14 as
“watch straps” and 25 as “clothing belts.”
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also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis, however, 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 (Fed. Cir.
2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). These factors and others are discussed below. See M2 Software, Inc. v.
M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir. 2006) (even within du
Pont list, only factors that are “relevant and of record” need be considered).
A. The Marks

Commencing with the first du Pont factor, it is undisputed that Applicant’s and
Registrant’s marks are identical in sight and sound.3 See Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1692 (Fed. Cir. 2005) (the first du Pont likelihood of confusion factor involves an
analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression). Applicant, however,
argues that the marks engender different commercial impressions insofar as the
registered mark LOOPER denotes the surname in Registrant’s entity name whereas
the term “looper” when used in connection with Applicant’s goods constitutes a
reference to caddies or other assistants in the sport of golf.

3 Applicant conceded this point in his appeal brief. Applicant’s Brief, pp. 2-3; 7 TTABVUE 3-
4.
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In our view, this is not a situation where the same marks are used to identify
goods so dissimilar as to engender different commercial impressions. Compare In re
Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) (no likelihood of confusion found
between BOTTOMS UP for ladies’ and children’s underwear and BOTTOMS UP for
men’s suits, coats and trousers). We acknowledge that the registration certificate lists
Looper Law Enforcement, LLC as the current owner, and that Registrant’s limited
liability company is composed in part of two individuals who have the surname
“Looper.” However, there is no further evidence in the record regarding the surname
significance of that term, and the cited mark is registered on the Principal Register
without a claim of acquired distinctiveness under Trademark Act Section 2(f). We
must consider the likely possibility that consumers will be completely unaware of any
surname significance and will understand LOOPER as an arbitrary term in the
context of the goods. Furthermore, while Applicant asserts that “looper” is a term of
art in the sport of golf, he failed to submit any evidence in support of this contention.
But even if it were commonly understood, this is outweighed by the fact that the
marks are identical in sight and sound.
Based on the record before us, LOOPER is arbitrary in relationship to both
Applicant’s and Registrant’s identified goods, and does not project a different
connotation or commercial impression for Applicant’s goods than it does for
Registrant’s. Furthermore, because the mark is arbitrary in relationship to
Registrant’s identified goods, it is entitled to a wider scope of protection than less
distinctive, weaker, suggestive or descriptive marks. See In re Martin’s Famous
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Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (when word
marks are identical but neither suggestive nor descriptive of the goods, the first du
Pont factor weighs heavily against the applicant). Thus, because the marks are
identical in appearance, sound, connotation and commercial impression, the first du
Pont factor weighs heavily in favor of finding a likelihood of confusion. See, e.g., In re
i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015).
B. The Goods
The next step in our analysis is a comparison of the goods identified in Applicant’s
application vis-à-vis the goods identified in the cited registration, the second du Pont
factor. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled that
it is not necessary that the respective goods 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 services] emanate from the same source.” Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-
Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984);
In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). The issue is not whether
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purchasers would confuse the goods, but rather whether there is a likelihood of
confusion as to the source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434,
1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Applicant contends that by amending his original identification of goods to delete
“belts; belts for clothing” and replace with “non-leather belts for clothing” and “fabric
belts”, and then by ultimately deleting those amended goods, he successfully obviated
the likelihood of confusion refusal. In addition, Applicant argues that because leather
belts fall in International Class 18, the goods do not constitute items of clothing which
are classified in International Class 25. Applicant also maintains that because
Registrant allowed the previously included International Class 25 clothing item to be
cancelled under Section 8, the Examining Attorney “ignores the plain history of the
registration.” Reply Brief, p. 2; 10 TTABVUE 3. Lastly, Applicant points out that the
Examining Attorney submitted no evidence showing the relatedness of the goods.
Applicant’s amendments to the identification of goods and arguments fail to
overcome our finding that Applicant’s and Registrant’s goods are related, albeit in
part. We acknowledge that the Examining Attorney has submitted no evidence to
show that the goods are related and that the goods fall in two different international
classes. Nonetheless, Applicant’s “pants,” broadly identified without limitation, are
inherently related to Registrant’s “leather goods, namely… belts,” i.e. leather belts or
belts made of leather. That is to say, from their commonly understood meaning, it is
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not uncommon for “pants” and leather belts to be used together by consumers.4 The
fact that these goods fall in two different international classes is not dispositive;
classification is solely for the administrative convenience of the USPTO. See Section
30 of the Trademark Act, 15 U.S.C. §1112 (“The Director may establish a
classification of goods and services, for convenience of Patent and Trademark Office
administration, but not to limit or extend the applicant’s or registrant’s rights.”). In
addition, the fact that the cited registration no longer includes any International
Class 25 goods has no bearing on our analysis. The fact remains that from everyday
practical knowledge we can assume that consumers are aware that “pants” and
leather belts are complementary goods. A likelihood of confusion may be found with
respect to any item in a class that comes within the identification of goods in the
application and cited registration. Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90
USPQ2d 1393, 1398 (TTAB 2007). As such, the second du Pont factor also weighs in
favor of finding a likelihood of confusion.
C. Trade Channels
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. Applicant contends that Registrant does not have a direct web site
presence marketing its products; rather, Registrant sells its products via third-party

4 In light of our reasoning, we need not grant the Examining Attorney’s request to take
judicial notice of the dictionary definitions of “belt” submitted with his appeal brief.
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web sites advertising for sale leather pistol holders. Applicant states that he, by
contrast, intends to market his products via his own direct web site.
Applicant’s arguments and evidence are unavailing. Because the identifications
in the application and cited registration for the mark have no restrictions on channels
of trade, we must presume that the goods travel in all channels of trade appropriate
for such goods. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261,
1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Based on common knowledge we can
presume that the ordinary trade channels for “pants” and leather belts include retail
clothing stores, department stores, online retailers, as well as owner operated online
web sites. Thus, even if Registrant does in fact market its products in a single limited
trade channel, given the lack of trade channel restrictions in both the application and
registration, we must assume that the goods are marketed in all typical trade
channels. For this reason, we conclude that the relevant goods fall in overlapping
trade channels. As such, the third du Pont factor regarding the similarity or
dissimilarity of established, likely to continue trade channels also favors a finding of
likelihood of confusion.
II. Conclusion
After considering all of the evidence of record and arguments pertaining to the
du Pont likelihood of confusion factors, the first, second and third du Pont factors
discussed above favor a finding of likelihood of confusion. We treat as neutral any
du Pont factors for which there is no evidence of record. We therefore find that there
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is a likelihood of confusion between Applicant’s and Registrant’s identical marks for
the goods identified therein.
Decision: The Section 2(d) refusal is affirmed.