Kenny Robinson

Trademark Trial and Appeal Board

May 10, 2018

No. 87046406 (T.T.A.B. May. 10, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: May 10, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Kenny Robinson
_____

Serial No. 87046406
_____

Phillip Thomas Horton of the Law Office of Phillip Thomas Horton for Kenny
Robinson.

Brian P. Callaghan, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
_____

Before Cataldo, Shaw and Coggins,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Kenny Robinson (“Applicant”) seeks registration on the Principal Register of the
mark MY FAMILY FIRST in standard characters for “hats; jackets; pants; shirts;
socks,” in International Class 25.1
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used in connection

1 Application Serial No. 87046406, filed on May 23, 2016, is based on Applicant’s allegation
of a bona fide intent to use the mark in commerce, pursuant to Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
Serial No. 87046406
- 2 -
with Applicant’s goods, so resembles the following marks, issued to the same entity:
FAMILY FIRST, in standard characters, for “men’s, women’s and children’s clothing,
namely, shirts and t-shirts,” in International Class 25,2 and for
“men’s, women’s and children’s clothing, namely, sweatshirts, t-shirts,” in
International Class 25,3 as to be likely to cause confusion.
When the refusal was made final, Applicant appealed. Applicant and the
Examining Attorney filed briefs. We affirm the refusal to register.
I. Evidentiary Objections
Before proceeding to the merits of the refusal, we address an evidentiary matter.
In his brief on Appeal, Applicant submitted for the first time a list of third-party
registrations containing the formative terms “FAMILY” and/or “FIRST,” obtained
from the Trademark Electronic Search System (TESS), and a dictionary definition of
the term “MY,” obtained from Dictionary.com.4 The Examining Attorney objects to
the evidence on the ground of untimeliness.
Regarding the list of third party registrations, Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d), provides in relevant part “[t]he record in the application should be

2 Registration No. 4183512, issued July 31, 2012.
3 Registration No. 4335068, issued May 14, 2013. The description of the mark reads: “The
mark consists of ‘FAMILY FIRST’ and the design of five pairs of hands crossing over each
other with fingers crossed in a hopeful gesture extending outward.”
4 4 TTABVUE 15–22.
Serial No. 87046406
- 3 -
complete prior to the filing of an appeal. Evidence should not be filed with the Board
after the filing of a notice of appeal.” Insofar as the Examining Attorney has timely
objected in his brief to Applicant’s late-filed list of third-party registrations, the
objection is sustained and the list submitted concurrently with Applicant’s appeal
brief has been given no consideration. See e.g., In re Fiat Grp. Mktg. & Corp.
Commc’ns S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014).
Regarding the dictionary definition, the Board may take judicial notice of
definitions from dictionaries, including online dictionaries that exist in printed
format or have regular fixed editions. See In re Cordua Rests. LP, 110 USPQ2d 1227,
1229 n.4 (TTAB 2014) aff’d 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); TBMP
§ 1208.04 (June 2017). We therefore overrule the objection and take judicial notice of
Applicant’s proffered dictionary definition.
II. Likelihood of confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the goods and the similarities between the marks. 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.”).
Serial No. 87046406
- 4 -
We confine our analysis to Registration No. 4183512 for the mark FAMILY
FIRST, in standard characters, because it is the mark most likely to support a finding
of likelihood of confusion. If the refusal cannot be affirmed on the basis of this
registered mark, it could not be affirmed on the basis of the other cited mark. See,
e.g., In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
The similarity or dissimilarity of the goods, trade channels, and classes of
consumers.
We start our analysis with the second and third du Pont factors and look at the
relationship between the goods at issue, the channels of trade in which they travel
and the classes of consumers. We base our evaluation on the goods as they are
identified in the application and registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys.,
Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990).
Applicant’s goods are “hats; jackets; pants; shirts; socks,” and Registrant’s goods
are “men’s, women’s and children’s clothing, namely, shirts and t-shirts.” The goods
are in part identical inasmuch as both identify “shirts.” Furthermore, Applicant’s
broadly-worded “shirts” encompasses Registrant’s “t-shirts.” See In re Linkvest S.A.,
24 USPQ2d 1716, 1716 (TTAB 1992). Applicant’s remaining goods, “hats; jackets;
pants; [and] socks,” are related to Registrant’s goods because, as established by the
third-party registrations made of record by the Examining Attorney, they are clothing
Serial No. 87046406
- 5 -
articles that may emanate from a single source under a single mark.5 See In re
Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
Turning to the trade channels and classes of consumers, because the goods are in
part legally identical and unrestricted as to trade channels, we must also presume
that these particular goods travel in the same ordinary trade and distribution
channels and will be marketed to the same potential consumers. See 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
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); Am. Lebanese Syrian Associated Charities Inc. v. Child
Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). Accordingly, these du
Pont factors weigh in favor of finding a likelihood of confusion.
Sophistication of Purchasers
The fourth du Pont factor considers the “conditions under which and buyers to
whom sales are made, i.e., ‘impulse’ v. careful, sophisticated purchasing.” Du Pont,
177 USPQ at 576. Applicant claims that consumers of the respective goods are

5 Office Action of September 11, 2016, pp. 10–54; Office Action of April 6, 2017, pp. 15–44.
Serial No. 87046406
- 6 -
sophisticated and therefore able to distinguish the source of Applicant’s goods from
those of Registrant:
Traditionally, consumers of these goods are sophisticated
insofar as the consumer can tell the difference between the
personal ownership and responsibility of putting their
family before others versus the Registrant’s general idea
that a family should be first.
As such, consumers exercise sufficient care in the purchase
of the respective goods or services that clearly would
minimize any potential for a likelihood of confusion as
between the respective trademarks.6
The Examining Attorney responds that consumers are unlikely to devote the level of
care suggested by Applicant, particularly because both marks create similar
commercial impressions:
[C]onsumers are not likely to extrapolate the connotations
of “personal ownership and responsibility of putting their
family before others” versus the “general idea that a family
should be first” from the marks FAMILY FIRST and MY
FAMILY FIRST. Instead, consumers of clothing are more
likely to understand that FAMILY FIRST and MY
FAMILY FIRST both refer to their own families being the
priorities of their life.7
Applicant’s argument is not persuasive. As stated above, we are bound by the
respective identifications of goods. Octocom, 16 USPQ2d at 1787 (“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.”). For the clothing
goods at issue, including the identical shirts listed in both Applicant’s and

6 Applicant’s Br., p. 12, 4 TTABVUE 13.
7 Examining Attorney’s Br., p. 14, 7 TTABVUE 14.
Serial No. 87046406
- 7 -
Registrant’s identifications of goods, we may assume that these can be relatively low
priced items, highly accessible to the average consumer, and would not be purchased
with a great deal of care or require purchaser sophistication, which increases the
likelihood of confusion. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894,
1899 (Fed. Cir. 2000) (“When products are relatively low-priced and subject to
impulse buying, the risk of likelihood of confusion is increased because purchasers of
such products are held to a lesser standard of purchasing care”) (citations omitted).
See also Brown Shoe Co., Inc. v. Robbins, 90 USPQ2d 1752 (TTAB 2009) (clothing
items would not be purchased with a great deal of care or require purchaser
sophistication). We deem this du Pont factor to favor finding a likelihood of confusion.
The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
Next, we consider the similarity of the marks. In comparing the marks we must
consider their 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, 1692 (Fed. Cir. 2005). The emphasis of our analysis must be on the
recollection of the average purchaser who normally retains a general, rather than
specific, impression of trademarks. Although we consider the mark as a whole, “in
articulating reasons for reaching a conclusion on the issue of confusion, there is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark . . . .” In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Serial No. 87046406
- 8 -
Applicant’s mark is MY FAMILY FIRST whereas Registrant’s mark is FAMILY
FIRST. We find the identical phrase “FAMILY FIRST” to be the dominant portion of
both marks, in appearance, sound, connotation and commercial impression. FAMILY
FIRST suggests the importance of putting “family” before other concerns. The word
“MY” in Applicant’s mark is subordinate to FAMILY FIRST because it simply
narrows the focus of Applicant’s mark to the “family” of the prospective consumer.
Applicant nevertheless argues that the marks are sufficiently different so as to
avoid a likelihood of confusion:
In the instant case, there is a difference in meaning and
appearance. Applicant’s mark implies a sense of personal
ownership and closeness with one’s family. The
Registrant’s mark takes a general approach and idea on
family issues and implies no sense of ownership. The
additional wording of “my” changes the meaning and
appearance of the mark to negate any confusion a
consumer would have.8
We disagree. We find the marks are highly similar because Applicant has simply
added the word “MY” to the entirety of Registrant’s mark without changing the
connotation or commercial impression. In other words, Registrant’s broad concept of
FAMILY FIRST encompasses Applicant’s more narrowly defined MY FAMILY
FIRST. But both marks still suggest the importance of putting “family” before other
concerns.
Adding a term to a registered mark generally does not obviate the similarity
between the compared marks, as in the present case, nor does it overcome a likelihood

8 Applicant’s Br., p. 9, 4 TTABVUE 10.
Serial No. 87046406
- 9 -
of confusion under Section 2(d). See. e.g., Stone Lion Capital Partners, 110 USPQ2d
at 1161 (affirming the Board’s finding that applicant’s mark STONE LION CAPITAL
incorporated the entirety of the registered marks LION CAPITAL and LION, and
that the noun LION was the dominant part of both parties’ marks); Coca-Cola
Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA
1975) (finding BENGAL and BENGAL LANCER and design confusingly similar).
In sum, when we consider the marks in their entireties, we find them to be highly
similar in terms of appearance, sound, connotation and commercial impression. This
du Pont factor weighs in favor of a finding of a likelihood of confusion.
Conclusion.
We have considered all of the arguments and evidence of record, including any not
specifically discussed herein, and all relevant du Pont factors. We find that
Applicant’s mark so resembles the cited registered mark as to be likely to cause
confusion, mistake or deception as to the source of Applicant’s goods under Section
2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s mark, MY FAMILY FIRST, is
AFFIRMED.