Justin Haggerty

Trademark Trial and Appeal Board

Mar 3, 2017

No. 86535608 (T.T.A.B. Mar. 3, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: March 3, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Haggerty
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Serial No. 86535608
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Justin M. Haggerty, appearing pro se

Mark S. Tratos, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
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Before Cataldo, Shaw and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Justin M. Haggerty (“Applicant”) seeks registration on the Principal Register of
the mark BOYLSTON (in standard characters) for “hats; jackets; socks; sweatshirts;
T-shirts; tank tops” in International Class 25.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the mark BOYLSTON TRADING CO. (in standard

1 Application Serial No. 86535608 was filed on February 15, 2015, based on an allegation of
use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming
September 2013 as both the date of first use and the date of first use in commerce.
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characters; TRADING CO. disclaimed) registered on the Supplemental Register for
“on-line retail store featuring clothing, footwear, watches, wallets, hats, bags,
undergarments, jewelry, and accessories” in International Class 35.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed and is now fully briefed. We affirm the
refusal to register.
I. Evidentiary Objections
We initially turn to certain evidentiary objections lodged by the Examining
Attorney regarding evidence presented by Applicant for the first time with his Appeal
Brief. The Examining Attorney objects to two images attached as exhibits to
Applicant’s Appeal Brief. The images appear to be a building sign showing the
tenants of a building at 334 Boylston Street. Additionally, the Examining Attorney
objects to references made by Applicant to certain trademarks that include the terms
“TRADING CO.” and “CLOTHING.” 3
It is well-settled that the record in an ex parte proceeding must be complete prior
to appeal. Trademark Rule 2.142(d); 37 CFR § 2.142(d). Exhibits that are attached to
a brief but not made of record during examination are untimely, and will not be

2 Registration No. 4165982, registered on June 26, 2012.
3 Applicant’s reference to 290 registered trademarks that include the phrase “TRADING CO.”
was apparently made to demonstrate that these marks are not used in association with the
sale of clothing while all of the referenced registered marks that include the term
“CLOTHING” are used in conjunction with the sale of clothing. See Applicant’s Appeal Brief,
8 TTABVUE 2.
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considered. See In re Fitch IBCA, Inc., 64 USP2d 1058, 1059 n.2 (TTAB 2002); see
also TBMP §§ 1203.02(e) and 1207.01 (January 2017). Similarly, references to lists of
marks that include certain terms that are discussed for the first time in an appeal
brief are also untimely. To the extent Applicant wished to introduce additional
evidence after his appeal had been filed, Applicant should have filed a written request
with the Board to suspend the appeal and remand the application for further
examination pursuant to Trademark Rule 2.124(d). Applicant did not do so.
Accordingly, we cannot consider the images or the references to trademarks that
include either the terms “TRADING CO.” or “CLOTHING,” submitted for the first
time with the appeal brief, as evidence in our analysis. In view thereof, the Examining
Attorney’s objections are sustained.4
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. 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,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between

4 We also note that Applicant’s Appeal Brief and Reply Brief do not meet the general
requirements for submissions to the Board specified in Trademark Rule 2.126. Specifically,
Applicant’s Appeal Brief and Reply Brief are not double-spaced and are not paginated. See
In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.2 (TTAB 2014), aff’d, 823 F.3d 594 (Fed.
Cir. 2016); Trademark Rules 2.126(b)(1) and (5), 37 C.F.R. § 2.126(b)(1) and (5).
Notwithstanding, we exercise our discretion to consider the briefs because it does not appear
that the contents therein would exceed the required page limitations had they been properly
formatted. Trademark Rule 2.142(b)(2), 37 C.F.R. § 2.142(b)(2).
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the goods and services. 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/or services] and differences in the marks.”).
A. Comparison of the Marks
We first address the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks 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). “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).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
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determining likelihood of confusion.”). On the other hand, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. In re Nat’l Data, 224 USPQ at 751.
Applicant’s mark is BOYLSTON, and the cited mark is BOYLSTON TRADING
CO. The sole difference between the marks is the inclusion of the disclaimed wording
“TRADING CO.” in the cited mark.
Applicant contends that the Examining Attorney improperly focused on the
element which is identical to both marks (the term BOYLSTON) while discounting
the importance of the disclaimed wording TRADING CO. in the cited mark. See
Applicant’s June 8, 2015, Response to Office Action. In Applicant's view, the addition
of TRADING CO. to Registrant's mark alters the connotation by evoking a retail
service. Id. Applicant's contends that consumers are less likely to attribute this
meaning to his single word mark BOYLSTON for various clothing items. Id.
Additionally, Applicant maintains that the wording “TRADING CO.” is not
descriptive of a “clothing brand,” and, therefore, its inclusion in the cited mark is
sufficient to differentiate the marks in connotation and commercial impression. Id.
In urging that we make a side-by-side comparison, Applicant misapprehends the
first du Pont factor analysis. “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
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LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading
Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)).
Furthermore, contrary to Applicant's assertion, there is nothing improper in stating
that, for rational reasons, more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on a consideration of the marks in
their entireties. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Keeping these principles in mind, we
observe that Applicant's and Registrant's marks are comprised, either in whole or in
part, of the term BOYLSTON. In addition, BOYLSTON is the first element in the
cited mark. “[I]t is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered” when making purchasing decisions.”
Palm Bay, 73 USPQ2d at 1692. See also Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9
USPQ2d 1895, 1897 (TTAB 1988). BOYLSTON is also likely to be accorded more
weight by consumers because the remaining wording TRADING CO. is, at a
minimum, descriptive of Registrant’s services as indicated by the disclaimer.5 As
such, TRADING CO. is less likely to make an impact in the minds of consumers. See
In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)
(disclaimed matter that is descriptive of or generic for a party’s goods is typically less

5 The Examining Attorney submitted internet evidence demonstrating that customers are
accustomed to seeing both retail store services and clothing brands that include the wording
“TRADING CO.” in the name of the retail store and the name of the clothing brand. See
August 24, 2016, Denial of Applicant’s Request for Reconsideration. Additionally, the
Examining Attorney submitted third party registrations for marks that include the term
“TRADING CO.” for clothing where the phrase “TRADING CO.” has been disclaimed. Id.
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significant or less dominant when comparing marks). See also In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 753 (Fed. Cir. 1985).
Moreover, Applicant’s argument that the inclusion of the term “TRADING CO.”
in the cited mark sufficiently differentiates the marks because this wording is not
descriptive of his identified goods is unavailing. The Examining Attorney submitted
evidence of multiple parties who use the wording “TRADING CO.” or “TRADING
COMPANY” as part of the brand name of their clothing line.6 The Examining
Attorney also submitted 14 third party registrations for marks that include the term
“TRADING CO.” that identify clothing goods and not retail store services in which
the phrase “TRADING CO.” was disclaimed.7 Instead, it is likely that Applicant’s
BOYLSTON mark could be perceived as a shortened version of Registrant’s
BOYLSTON TRADING CO. mark. See In re Mighty Leaf Tea, 94 USPQ2d at 1260-61
(affirming Board’s finding that applicant’s mark, ML, is likely to be perceived as a
shortened version of registrant’s mark, ML MARK LEES (stylized); In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J.,
concurring: “the users of language have a universal habit of shortening full names –
from haste or laziness or just economy of words”).

6 See August 24, 2016, Denial of Request for Reconsideration.
7 Id.
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Thus, when comparing the marks overall, we find that the involved marks are
similar in sound, appearance, connotation and commercial impression. In view of the
forgoing, the first du Pont factor favors a finding that confusion is likely.
B. Comparison of the Goods and Services
The next step in our analysis is a comparison of the goods identified in Applicant's
application vis-à-vis the services identified in the cited registration, the second du
Pont factor. See Stone Lion, 110 USPQ2d at 1161; Octocom Sys., Inc. v. Houston
Computers Servs. 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, 1004
(Fed. Cir. 2002). It is settled that it is not necessary that the respective goods and
services be identical or even competitive in order to find that they are related for
purposes of our likelihood of confusion analysis. The respective goods and services
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 goods [and
services] emanate from the same source.” Coach Servs., 101 USPQ2d at 1722 (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). Evidence of
relatedness may include news articles and/or evidence from computer databases
showing that the relevant goods and services are used together or used by the same
purchasers; advertisements showing that the relevant goods and services are
advertised together or offered by the same manufacturer or dealer; and/or copies of
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prior use-based registrations of the same mark for both Applicant's goods and the
services listed in the cited registration. In re Davia, 110 USPQ2d 1810, 1817 (TTAB
2014) (finding pepper sauce and agave related where evidence showed both were used
for the same purpose in the same recipes and thus consumers were likely to purchase
the products at the same time and in the same stores). The issue is not whether
purchasers would confuse the goods and services, but rather whether there is a
likelihood of confusion as to the source of these goods and services. L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830, 832
(TTAB 1984).
The Examining Attorney made of record numerous active third-party, used-based
registrations showing that the same entity has registered a single mark identifying
clothing items and online retail store services featuring clothing items. By way of
illustration, we note the following:8
BAOBOB COMPANY (Reg. No. 4726419) is registered for “T-shirts for
men, ladies and children, dresses, pants and skirts,” in International
Class 25 and “retail store services and online retail store services
featuring clothing,” in International Class 35;

DAIZED (Reg. No. 4730410) is registered for, among other things, “Hats,
sweatshirts, T-shirts,” in International Class 25 and “online retail store
services featuring T-shirts, sweatshirts, hats and stickers,” in
International Class 35;

THE MAGIC IS IN THE FABRIC (Reg. No. 4730433) is registered for
“Clothing, namely, headwear, footwear, tops, bottoms; Clothing,
namely, women’s undergarments that support and reshape the body;
Clothing, namely, T-shirts, shirts, cardigans, blouses, body suits, coats,
jackets, pants, skirts, dresses, belts, hats, scarves, gloves, kimonos,
muffs, suits, tunics, waistcoats, vests, sleepwear; denim clothing,

8 See May 21, 2015 and February 4, 2016, Office Actions.
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namely, jeans, skirts, shirts, hats, shorts, dresses, trousers, jackets and
coats; suede and leather clothing, namely, gloves, trousers, skirts,
jackets, coats, hats, belts, shirts, dresses, lingerie; linen clothing,
namely, dresses, trousers, jackets, shirts, blouses; knit wear, namely,
jerseys and heavy knitwear in the nature of sweaters and sweater
jackets; jumpsuits, shorts, sweatshirts, underwear, pajamas, lingerie,
corsets, bras, bustiers, body stockings, hot pants, camisoles, suspenders,
chemises, hosiery, thigh high stockings, garter belts, pantyhose,
leggings, tights, socks, stockings, long johns, singlets, swimwear,
bikinis, sarongs, ponchos, pullovers, bandanas, polo shirts, fake fur
jackets and coats, sweaters, hoods, anoraks, hooded sweaters, wind
resistant jackets, tank tops, slippers, neckwear, mittens, rainwear,
parkas, overalls, jogging suits, skiwear, masquerade costumes;
footwear, namely, flip flops, sandals, dress shoes, athletic shoes, boots,
sneakers,” in International Class 25 and “Retail and on-line retail store
services featuring general merchandise; Retail clothing store services,”
in International Class 35;

LAKE DEVIL (Reg. No. 4726884) is registered for “clothing, namely,
short-sleeved shirts, t-shirts, long-sleeved shirts, tank tops, pants, and
dresses,” in International Class 25 and “Online retail store services of
clothing, namely, short-sleeved shirts, t-shirts, long-sleeved shirts, tank
tops, pants, and dresses; online retail store services of lake and
swimming related articles, namely, insulated containers for beverage
cans,” in International Class 35;

TRUE RELIGION (Reg. No. 4723750) is registered for “Athletic pants;
Athletic shirts; Athletic shorts; Baby bibs not of paper; Baby bodysuits;
Baby bottoms; Baby tops; Baseball caps and hats; Bottoms; Boxer briefs;
Button down shirts; Denim jackets; Denims; Hooded sweatshirts;
Jackets; Jeans; Leather belts; Leather jackets; Leather pants; Lounge
pants; Pajamas; Pants; Scarves; Shirts; Shirts for infants, babies,
toddlers and children; Skirts and dresses; Sweat pants; Sweaters;
Sweatpants; Sweatshirts; Swim trunks; T-shirts; Tank tops; Tops;
Underwear; Vests; Visors; Women’s clothing, namely, shirts, dresses,
skirts, blouses,” in International Class 25 and “On-line retail store
services featuring clothing, jewelry, perfumes, accessories and leather
goods; Providing consumer product information relating to clothing,
jewelry, perfumes, accessories and leather goods.; Providing consumer
product information via the Internet; Retail store services featuring
clothing, jewelry, perfumes, accessories and leather goods,” in
International Class 35;

Serial No. 86535608
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MODERN. CASUAL. STYLE (Reg. No. 4739075) is registered for
“Clothing, namely, t-shirts, tops, bottoms, dresses, skirts, bras,
underwear, sleepwear, sweaters, pants, lingerie, jackets and leggings;
Footwear; Scarves,” in International Class 25 and “Retail store services
featuring t-shirts, tops, bottoms, dresses, skirts, bras, underwear,
sleepwear, scarves, sweaters, footwear, jackets, leggings, pants, lingerie;
On-line retail store services featuring t-shirts, tops, bottoms, dresses,
skirts, bras, underwear, sleepwear, scarves, sweaters, footwear, jackets,
leggings, pants, lingerie,” in International Class 35.

As a general proposition, although use-based third-party registrations alone are
not evidence that the marks shown therein are in use or that the public is familiar
with them, they nonetheless may have probative value to the extent they may serve
to suggest that the goods and services are of a kind that emanate from a single source.
See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck
Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
The Examining Attorney also submitted Internet evidence from clothing
manufacturers that sell directly to consumers via their own online e-commerce
websites. As example:9
Hanes (www.hanes.com) offering for sale men’s sweatshirts under the
Hanes trademark;

Dockers (www.dockers.com) offering for sale men’s slacks under the
Dockers trademark;

Stetson (www.stetson.com) offering for sale men’s Western hats under
the Stetson trademark;

9 See May 21, 2015 and February 4, 2016, Office Actions.
Serial No. 86535608
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L.L. Bean (www.llbean.com) offering for sale men’s jackets under the
L.L. Bean trademark;

Nike (www.nike.com) offering for sale, among other things, men’s tops,
T-shirts, polos, jerseys, pants shorts, surf and swim under the Nike
trademark;

Gap (www.gap.com) offering for sale, among other things, women’s,
men’s and children’s clothing under the GAP trademark;

J. Crew (www.jcrew.com) offering for sale, among other things,
women’s, men’s and children’s clothing under the J. Crew trademark;

Jos. A. Bank (www.josabank) offering men’s suits, dress shirts, sport
coats, pants, ties, sportswear, tuxedos, and shoe and accessories under
the Jos. A. Bank trademark;

Abercrombie & Fitch (www.ambercrombie.com ) offering men’s and
women’s clothing under the Abercrombie and Fitch trademark; and

Anthropologie (www.anthropologie.com) offering various women’s
clothing under the Anthropologie trademark.

This constitutes further evidence that consumers may expect to find both
Applicant’s clothing goods and Registrant’s online retail store services featuring
clothing as emanating from a common source under a single brand name. Although
we acknowledge that these marks may be viewed as house marks, the evidence still
demonstrates that the same consumers may encounter the involved goods and
services in the same context. As such, the involved goods and services are closely
related. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (finding
applicant's clothing items related to opposer's retail and mail order services in the
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field of clothing); see also 4 J. Thomas McCarthy, McCarthy on Trademarks & Unfair
Competition § 24:25 (4th ed. March 2017 Update) (“Where the services consist of retail
sales services, likelihood of confusion is found when another mark is used on goods
which are commonly sold through such a retail outlet.”).
Applicant dismisses the probative value of the website evidence, arguing that
while brands of clothing are available on that brand’s website, these brands of
clothing are also available through a number of other retailers, both physical and
online and, therefore, consumers would not be confused to see one brand of clothing
offered through the online or physical retail services of another brand.10 While
clothing items sold under a particular brand may be offered for sale in retail
establishments under a different brand name, this does not detract from the evidence
that demonstrates that entities provide clothing items and render online retail store
services selling those clothing items under the same mark.
In view thereof, we find that the goods identified in the application and the
services identified in the cited registration are closely related. Thus, the second du
Pont factor also weighs in favor of finding a likelihood of confusion.
C. Similarity of Trade Channels and Class of Purchasers
Applicant’s clothing items are not limited as to trade channels and thus could be
sold online which is where Registrant’s online clothing retail services are offered, as
stated in Registrant’s identification of services. There is no restriction in either
identification as to purchasers. See Octocom Sys., 16 USPQ2d at 1783 (“The authority

10 See June 8, 2015, Response to Office Action.
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is legion that the question of registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the application regardless of what
the record may reveal as to the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to which the sales of goods are
directed.”). Thus, the respective goods and services, as identified, would be provided
in the same or at least overlapping channels of trade to the same or overlapping
classes of purchasers, i.e. the general public. Accordingly, the third du Pont factor
also weighs in favor of finding a likelihood of confusion.
D. Nature and Extent of Any Actual Confusion
Applicant points to the absence of evidence of actual confusion, the seventh du
Pont factor, as weighing in his favor. A showing of actual confusion would of course
be highly probative, if not conclusive, of a likelihood of confusion. The opposite is not
true, however. The lack of evidence of actual confusion carries little weight. J.C. Hall
Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). The
issue before us is the likelihood of confusion, not actual confusion. Herbko Int’l Inc. v.
Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (actual
confusion not required). Further, any suggestion that there has been no actual
confusion between the marks based on the coexistence of Applicant’s mark and the
cited registration is entitled to little probative value in the context of an ex parte
appeal. In re Majestic Distilling Co., Inc., 65 USPQ2d at 1205. See also In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
Serial No. 86535608
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Applicant argues that there cannot be any actual confusion because Registrant is
purportedly no longer in business and is no longer using its BOYLSTON TRADING
CO. mark.11 The fact that Registrant may no longer be using its mark because it is
an allegedly defunct business does not mean that the cited registration is currently
invalid. Applicant’s argument is effectively an impermissible collateral attack on the
cited BOYLSTON TRADING CO. registration, which while appropriate for a petition
for cancellation based on abandonment or nonuse, is not appropriate or permissible
in this ex parte proceeding. In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534-35 (Fed. Cir. 1997) (“Dixie’s argument that DELTA is not actually used in
connection with restaurant services amounts to a thinly-veiled collateral attack on
the validity of the registration … the present ex parte proceeding is not the proper
forum for such a challenge.”); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385,
165 USPQ 515, 517 (CCPA 1970) (“[I]n the absence of a counterclaim for cancellation
under section 14 of the Act (15 U.S.C. 1064), it is not open to an applicant to prove
abandonment of the opposer’s registered mark; and appellant’s argument (upon
which it now stakes its appeal) that opposer no longer uses the registered mark ‘Come
Alive’ must be disregarded.”).
Applicant additionally argues, inter alia, that (1) since he is using his BOYLSTON
mark in close proximity to his name HAGGERTY, and (2) since his ownership of
various domain names that include the term BOYLSTON direct consumers to a
website that purportedly offers his BOYLSTON clothing items for sale, actual

11 See Applicant’s June 8, 2015, Response to Office Action.
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confusion cannot exist.12 Applicant’s argument that its mark is not confusingly
similar based on how it is used in the marketplace is also unavailing. We are
constrained to make our determination based on the applied-for mark and not on its
manner of use based on extrinsic evidence. In re Shell Oil Co., 26 USPQ2d 1687, 1690
n. 4 (Fed. Cir. 1993) (“Although Shell argues that its use of RIGHT-A-WAY would be
in association with other Shell trademarks, the proposed registration is not so
limited. Registrability is determined based on the description in the application, and
restrictions on how the mark is used will not be inferred.”).
Therefore, this du Pont factor is neutral.

D. Balancing the Factors
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Because we have
found that the marks at issue are similar and that Applicant’s identified goods are
related to Registrant’s services and that they would move in the same or overlapping
trade channels and are offered to the same class of purchasers, we conclude that
Applicant’s mark, as used in connection with the goods identified in the application,
so resembles the cited mark as to be likely to cause confusion or mistake, or to deceive
under Section 2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s BOYLSTON mark under Section
2(d) of the Trademark Act is affirmed.

12 See Applicant’s Appeal Brief, 8 TTABVUE 3.