KC Investment Inc.

Trademark Trial and Appeal Board

Jan 16, 2020

87897588 (T.T.A.B. Jan. 16, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 16, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re KC Investment Inc.
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Serial No. 87897588
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Michael W. Schroeder of Reyes and Schroeder Associates PC for KC Investment Inc.

Kaile Reid, Trademark Examining Attorney, Law Office 123, Susan Hayash,
Managing Attorney.
_____

Before Thurmon, Deputy Chief Administrative Trademark Judge, Bergsman and
Pologeorgis, Administrative Trademark Judges.

Opinion by Thurmon, Deputy Chief Administrative Trademark Judge:
Applicant, KC Investment Inc., seeks registration on the Principal Register of the
mark DADDY GANG (in standard characters) for the following goods in International
Class 25:1
Clothing, namely, shirts, t-shirts, tank tops, polo shirts,
button down shirts, tops, baby tee shirts, sweaters,
sweatshirts, hooded sweatshirts, jackets, jerseys, coats,
sweat suits, bodysuits, dresses, bottoms, jeans, pants,
sweatpants, shorts, socks, robes, swimwear, activewear in
the nature of shirts, jackets, shorts and pants, rainwear,

1 Application Serial Number 87897588, filed on April 27, 2018, based on an alleged bona fide
intent to use the mark in U.S. commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
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sleepwear, pajamas, loungewear, underwear, leggings,
vests, gloves, scarves, layettes, shawls, sleep masks,
beanies, bandanas, hats, headbands and caps being
headwear; Footwear, namely, shoes, sneakers, flip flops,
sandals and boots; Children’s and infants’ cloth bibs and
aprons; Infant wear; Infant wearable blankets; Infant
sleepers.
The Examining Attorney refused registration under Section 2(d), 15 U.S.C. § 1052(d),
(likelihood of confusion) based on the registered mark GOOD DAD GANG for
“Clothing, namely, t-shirts, hats, sweat suits,” in International Class 25.2 The sole
issue before the Board in this appeal is whether there is a likelihood of confusion. The
appeal has been fully briefed. We affirm the refusal to register.
I. The Record and the Prosecution History
The Examining Attorney submitted evidence with the first Office Action of
dictionary definitions of the words “daddy,” “dad,” and “gang.”3 Relying on this
evidence, the marks and goods as shown in the application and cited registrations,
the Examining Attorney found a likelihood of confusion and refused registration

2 Registration Number 4817036, registered on the Principal Register on September 22, 2015,
based on an application filed January 26, 2015. The Examining Attorney also based the
Section 2(d) refusal on a second registered mark owned by the same registrant, i.e., GOOD
DAD GANG + design, for “Hats, T-shirts” in International Class 25 (Registration Number
5395552). As explained below, we rely only on the registered standard character mark in our
determination herein.
3 Office Action dated August 20, 2018 at 11-13. Page references to the application record are
to the downloadable .pdf version of the USPTO’s Trademark Status & Document Retrieval
(TSDR) system. References to the briefs, motions and orders on appeal are to the Board’s
TTABVUE docket system. Coming before the designation TTABVUE is the docket entry
number; and coming after this designation are the page references, if applicable.
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under Section 2(d). Applicant responded by arguing against the refusal and
submitting the following evidence:4
• records of 22 active third-party registrations of marks that include the word
“dad” for clothing goods in International Class 25;5
• Internet screen shots allegedly showing use of 19 marks that include the
word “dad” for clothing goods, where 17 of the 19 marks are also from the
group of registered “dad” marks identified by Applicant;
• records of 46 active third-party registrations of marks the include the word
“gang” for clothing goods in International Class 25;
• Internet screen shots allegedly showing use of 33 marks that include the
word “gang” for clothing, where 28 of the 33 marks are also from the group
of registered “gang” marks identified by Applicant; and
• registration records and Internet screen shots that allegedly show “a total
of (15) separate examples of pairs of coexisting live, federal registrations for
otherwise identical marks for use in connection with clothing goods in
International Class 25, that coexist on the Principal Register, with the only
difference being the inclusion of the dominant, first term GOOD.”6
The Examining Attorney did not object to Applicant’s evidence, but found that
Applicant’s arguments and evidence unpersuasive.7 The Section 2(d) refusal was

4 Response to Office Action dated October 12, 2018. Applicant submitted a corrected Response
to Office Action on October 24, 2018 to correct a typographical error in its October 12
submission. The corrected Response did not resubmit the evidence, but we conclude the
evidence is still of record as the correction related solely to the arguments submitted by
Applicant.
5 Applicant submitted records from the Trademark Electronic Search System (TESS) showing
the status and title, as well as other information, about each registration.
6 7 TTABVUE 25.
7 The Examining Attorney later objected when Applicant submitted a dictionary definition of
the word “connotation” with its appeal brief. We deem the objection moot because we can take
judicial notice of a dictionary definition and because the term connotation, as used when
comparing marks within the likelihood of confusion analysis, is already well-defined in the
precedents of this Board and our primary reviewing court.
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made final.8 Applicant requested reconsideration,9 but that request was denied and
this appeal followed.10
II. Applicable Law
We base our determination of likelihood of confusion under Trademark Act Section
2(d), 15 U.S.C. § 1052(d), on an analysis of all of the probative facts in evidence that
are relevant to the factors enunciated in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”), cited in B&B Hardware, Inc.
v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We
consider each du Pont factor for which there is evidence or argument. See, e.g., In re
Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
However, “each case must be decided on its own facts and the differences are often
subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387
(CCPA 1973).
Varying weights may be assigned to each du Pont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d

8 Office Action dated December 6, 2018.
9 Request for Reconsideration dated February 19, 2019. Applicant submitted additional
evidence with this Request that it argued showed the words “dad” and “daddy” are used in
different ways. Id. at 14-26.
10 Applicant filed two separate requests for reconsideration. The first one was filed on
February 19, 2019, prior to the filing of Applicant’s Notice of Appeal. The second request was
filed on the date the Notice of Appeal was filed, i.e., April 25, 2019. 4 TTABVUE. Both
requests were denied.
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1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less
weighty roles in any particular determination”). Two key considerations in most cases
are the similarities between the marks and the similarities between the goods 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 1156, 64 USPQ2d
1375 (Fed. Cir. 2002) (“The likelihood of confusion analysis considers all du Pont
factors for which there is record evidence but ‘may focus ... on dispositive factors, such
as similarity of the marks and relatedness of the goods.’“)).
III. Analysis
The Examining Attorney based the Section 2(d) refusal on two registered marks
owned by the same registrant.11 One mark is GOOD DAD GANG in standard
characters, and the second mark is shown below:
12
These two registrations cover similar clothing goods.

11 See registrations identified in n.2, supra.
12 Registration Number 5395552. The application for the mark contained the following
description: “The mark consists of the silhouette of a father, on the right hand side, holding
hands with his child, on the left hand side, where both of the figures are inside and thick-
bordered circle, which has the words ‘Good Dad Gang’ spaced out inside the top half of the
thick-bordered circle.”
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Where multiple registered marks are cited as the basis for a Section 2(d) refusal,
it is sufficient to affirm the refusal if there is a likelihood of confusion as to any of the
cited registered marks. See Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ2d
1913, 1917 (TTAB 2015). In this case, we limit our analysis to the standard character
GOOD DAD GANG mark cited by the Examining Attorney because “if we find a
likelihood of confusion as to this [cited] registration, we need not find it as to the
others.” Fiserv, 113 USPQ2d at 1917. References to the cited mark in the remainder
of this decision refer to the standard character mark GOOD DAD GANG.
A. Strength of the Cited Mark
The fifth du Pont factor, “[t]he fame of the prior mark (sales, advertising, length
of use),” and the sixth du Pont factor, the number and nature of similar marks in use
for similar goods, du Pont, 177 USPQ at 567, may be considered in tandem to
determine the strength of the cited mark and the scope of protection to which it is
entitled. Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB
2017). “In determining strength of a mark, we consider both inherent strength, based
on the nature of the mark itself, and commercial strength or recognition.” Bell’s
Brewery, 125 USPQ2d at 1345 (citing Couch/Braunsdorf Affinity, Inc. v. 12
Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014)); see also In re Chippendales
USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength
is measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”).
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In an ex parte appeal such as this, the owner of the cited registration is not a
party, and the Examining Attorney is under no obligation to demonstrate the
exposure or recognition of the cited mark in the marketplace. In re Integrated
Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016). For that reason, “in an ex parte
analysis of the DuPont factors for determining likelihood of confusion …, the ‘fame of
the mark’ [fifth] factor is normally treated as neutral when no evidence as to fame
has been provided.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”)
§ 1207.01(d)(ix) (Oct. 2018). Thus, because there is no evidence of record regarding
the fame of the cited mark, the fifth du Pont factor is neutral.
The sixth du Pont factor requires us to consider the number and nature of similar
marks in use on similar goods. du Pont, 177 USPQ at 567; Primrose Ret. Cmtys., LLC
v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016). Third-
party registrations and use of similar marks can bear on the strength or weakness of
a registrant’s mark in two ways: commercially and conceptually. First, if a mark, or
an element of a mark, is used extensively in commerce by a number of third parties,
that could undermine its commercial strength, as the consuming public may have
become familiar with a multiplicity of the same or similar marks, and can distinguish
them based on minor differences. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). “Evidence of third-party use of similar
marks on similar goods is relevant to show that a mark is relatively weak and entitled
to only a narrow scope of protection.” Palm Bay Imps., 73 USPQ2d at 1693, quoted in
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
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Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). “The weaker
[a registrant’s] mark, the closer an applicant’s mark can come without causing a
likelihood of confusion and thereby invading what amounts to its comparatively
narrower range of protection.” Juice Generation, 115 USPQ2d at 1674.
Second, if there is evidence that a mark, or an element of a mark, is commonly
adopted by many different parties, that may indicate the common element has some
non-source identifying significance that undermines its conceptual strength as an
indicator of a single source. Jack Wolfskin, 116 USPQ2d at 1136 (“[E]vidence of third-
party registrations is relevant to ‘show the sense in which a mark is used in ordinary
parlance,’ … that is, some segment that is common to both parties’ marks may have
‘a normally understood and well-recognized descriptive or suggestive meaning,
leading to the conclusion that that segment is relatively weak’”) (quoting Juice
Generation, 115 USPQ2d at 1674 (quoting 2 J. Thomas McCarthy, MCCARTTHY ON
TRADEMARKS AND UNFAIR COMPETITION§ 11:90 (5th ed. 2015))).
The Applicant and the Examining Attorney made arguments about the strength
of the cited GOOD DAD GANG mark. The Examining Attorney contends this mark
is “inherently strong for clothing goods,” because only four registered marks were
found that included the term “dad” or “daddy” together with the term “gang.”13 Two
of the four are owned by the Registrant and both are cited as the basis for the Section
2(d) refusal. The two remaining third-party registrations are hardly sufficient to show

13 10 TTABVUE 10.
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common use or registration of the wording “dad gang” or “daddy gang” or that such
wording is weak in relation to clothing items.
The Applicant, on the other hand, submitted evidence showing numerous third-
party registrations and use of the terms “dad” and “gang” separately for clothing.
Applicant’s argument is that each term is commonly used in marks for clothing and
therefore each term is weak when used in connection with such goods. Applicant then
argues that a combination of two weak terms also results in a weak mark. Though
Applicant has taken the mark apart to conduct this analysis, it is proper to consider
separately the distinctiveness of the different elements of a multi-element mark. See,
Juice Generation, 115 USPQ2d at 1674 (weak marks are less likely to be confused
with other similar marks) and In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1372 (Fed. Cir. 2004) (it may be proper to “ascertain the meaning of
each of the words or components that make up the entire mark” to determine whether
the mark is distinctive); In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513
(TTAB 2016) (same).
The evidence Applicant relies upon shows almost 20 “dad” marks registered and
apparently in use for clothing and almost 30 “gang” marks registered and apparently
in use for clothing. This evidence shows these individual terms are somewhat
commonly used in marks for clothing. But as the Examining Attorney notes, the
combination of “dad” or “daddy” with “gang” in a single mark for clothing is not
common. Accordingly, the evidence, taken as a whole, does not demonstrate that the
wording “dad gang” or “daddy gang” for clothing is weak. We find the GOOD DAD
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GANG mark is entitled to the normal scope of protection accorded inherently
distinctive marks.
B. Similarity of the Marks
We next compare the marks in their entireties as to appearance, sound,
connotation and commercial impression. du Pont, 177 USPQ at 567. “Similarity in
any one of these elements may be sufficient to find the marks confusingly similar.” In
re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola
Bottling 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.”)
(citation omitted).
The test is not whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are sufficiently similar in terms of
their overall commercial impression so that confusion as to the source of the goods or
services offered under the respective marks is likely to result. Cai v. Diamond Hong,
Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); Midwestern Pet Foods,
Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed.
Cir. 2012). The focus is on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because the goods at issue
are clothing, specifically t-shirts, hats, and sweat suits, the average purchaser is an
ordinary consumer.
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In comparing the marks, we are mindful, where as here, the goods are in part
identical, the degree of similarity to find the marks similar need not be as great as
where there is a recognizable disparity between the goods. See Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012);
Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992). See the discussion regarding the similarity or dissimilarity and
nature of the goods below.
The marks at issue here are similar in appearance and sound, and are similar in
connotation and commercial impression. The marks share the word “gang” and use
the similar terms “dad” and “daddy.” The visual and aural impressions made by these
marks, taken in their entireties, are similar. We agree with Applicant that there are
differences in the marks. The use of the word “good” as the first term in the registered
mark is a point of distinction and bears noting given that the first word of a multi-
word mark may be more noted and remembered by consumers. Palm Bay Imps., Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005); In re Integrated Embedded, 102 USPQ2d 1504,
1513 (TTAB 2016); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988)).
Laudatory terms are typically less distinctive and may create less of an impression
on consumers for that reason. In re Place, Inc., 76 USPQ2d 1467, 1468-69 (TTAB
2005) (“the courts of appeal and this Board have held that other marks which
arguably denote ‘high quality,’ ‘excellence’ and ‘superior quality’ are laudatory and
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thus merely descriptive”); Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115
USPQ2d 1816, 1824-25 (TTAB 2015) (“it is beyond dispute that descriptive or generic
terms … serve little source-identifying function”). The word “good” as used in the
cited mark is the first term, but it is also a laudatory term. These considerations pull
in different directions.
The word “good” as used in the registered mark may serve to modify the meaning
of the words “dad gang,” rather than conveying anything about the quality of the
clothing goods. Applicant argues, and offered some evidence in support, that the word
“gang” has negative connotations and that adding the word “good” to “gang” creates
a meaning contrary to the normal meaning of the word “gang.”14 There may be some
truth to this argument, but it ignores two other facts. First, gang is not solely defined
as a negative group or a group up to no good. The dictionary evidence also shows
neutral meanings of the word “gang.” Second, both marks include a word for father
just prior to gang. A gang of fathers may be less likely to be viewed as a negative
group. We again have considerations that pull in different directions, and we are left
with two marks that have similar meanings.
There is no separate evidence regarding the commercial impression created by
these marks, so we look collectively at the other types of similarity—sight, sound, and
meaning. We have found at least some degree of similarity in each of these forms,
and we, therefore, conclude the marks also create a similar commercial impression.
Thus, we find the marks DADDY GANG and GOOD DAD GANG are similar for

14 Response to Office Action dated October 12, 2018 at 15-18.
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likelihood of confusion purposes. The similarity of the marks, therefore, weighs in
favor of a finding that confusion is likely.
C. Similarity of Goods, Trade Channels, and Buying Conditions
“The authority 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.” Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014);
Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). We group these three du Pont factors because of the shared focus on the
identification of the goods.15
The goods are legally identical in part because the Application includes each of
the three specific types of clothing identified in the cited registration, that is, “t-shirts,
hats, sweat suits.” See Inter IKEA Sys. B.V. v. Akea, LLC, 110 U.S.P.Q.2D 1734, 1745
(TTAB 2014) (“In the context of likelihood of confusion, it is sufficient to find
likelihood of confusion as to the entire class if likelihood of confusion is found with

15 Our analysis here covers the second, third and fourth du Pont factors: “The similarity or
dissimilarity and nature of the goods or services as described in an application or registration
or in connection with which a prior mark is in use;” “The similarity or dissimilarity of
established, likely-to-continue trade channels;” and, “The conditions under which and buyers
to whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” du Pont 177
USPQ at 567.
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respect to use of the mark on any item in a class that comes within the description of
goods.”) (citing Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981) and Apple Computer v. TVNET.Net, Inc., 90
USPQ2d 1393, 1398 (TTAB 2007)). Thus, this du Pont factor favors a finding of
likelihood of confusion.
Because the goods in the application and the cited registration are in part identical
and there are no restrictions as to trade channels or classes of purchasers in either
the involved application or cited registration, we must presume that the channels of
trade and classes of purchasers at least in part are the same. In re i.am.symbolic, llc,
127 USPQ2d 1627, 1629 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (“We must presume that Applicant’s and
Registrant’s goods will be sold in the same channels of trade and will be bought by
the same classes of purchasers, because the goods are identical and legally identical
in part and there are no limitations as to channels of trade or classes of purchasers
in either the application or cited registration.”); see also Genesco Inc. v. Martz, 66
USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related
nature of the parties’ goods, and the lack of any restrictions in the identifications
thereof as to trade channels and purchasers, these clothing items could be offered and
sold to the same classes of purchasers through the same channels of trade”); In re
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the same channels of trade, and
be sold to the same class of purchasers”).
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Because the goods include t-shirts, hats, and sweat suits, products that may be
inexpensive and purchased on impulse, and because we are required to analyze the
conditions under which sales are made as including the “least sophisticated consumer
in the class,” Stone Lion Capital, 110 USPQ2d at 1163-64, we find that some relevant
consumers may not exercise a high degree of consumer care when making their
purchasing decision.
These three du Pont factors weigh heavily in favor of a likelihood of confusion
finding.
D. Conclusion
We have considered all du Pont factors for which there is evidence or argument
and find that confusion is likely. Every factor we considered weighs in favor of this
finding. Because we have found that (1) the marks at issue are similar; (2) Applicant’s
identified goods are identical in part to Registrant’s goods; (3) the goods are presumed
to move in similar or overlapping trade channels and that they would be offered to
the same or similar classes of purchasers; and (4) the Registrant’s mark is inherently
distinctive, we conclude that Applicant’s DADDY GANG mark, as used in connection
with its goods identified in its involved application, so resembles the cited mark
GOOD DAD GANG 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 based on Section 2(d) is affirmed.