Leon M. Kornegay

Trademark Trial and Appeal Board

Sep 25, 2018

No. 85914615 (T.T.A.B. Sep. 25, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 25, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kornegay
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Serial No. 85914615
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Leon M. Kornegay, pro se.

Charles L. Jenkins, Jr., Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
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Before Taylor, Heasley, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Leon M. Kornegay (“Applicant”) seeks registration on the Principal Register of the
mark shown below

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for goods identified (as amended) as “Athletic apparel, namely, shirts, pants, jackets,
footwear, hats and caps, athletic uniforms, shoes, shorts, skirts, sweaters, tights,
athletic tops and bottoms for runners and yoga,” in International Class 25.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it
so resembles the registered standard character mark B.WEAR GIRL for “Clothing,
namely, dresses, skirts, blouses, shorts, shirts, pants, jackets, and sweaters,” in
International Class 25,2 as to be likely, when used in connection with the goods
identified in Applicant’s application, to cause confusion, to cause mistake, or to
deceive.
After the Examining Attorney made the refusal final, Applicant filed a Request
for Reconsideration in which he purported to withdraw a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). The
Request for Reconsideration was denied, and Applicant appealed. Applicant and the
Examining Attorney have filed briefs.3 We affirm the refusal to register.

1 Application Serial No. 85914615 was filed on April 25, 2013 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s allegation of a bona fide
intention to use the mark in commerce. Applicant has disclaimed the exclusive right to use
“WEAR” apart from the mark as shown.
2 Registration No. 4843607 issued on November 3, 2015. The registrant has disclaimed the
exclusive right to use “GIRL” apart from the mark as shown.
3 Following the filing of Applicant’s brief, the Examining Attorney requested remand of the
application to permit him to reissue the final refusal to register to include three other
registrations that he had cited during examination of the application, but had omitted from
the final refusal. 6 TTABVUE 2-3. The Board granted his request, 7 TTABVUE, and he issued
a new final refusal citing the three additional registrations, but the Board subsequently noted
that Applicant had objected to the Examining Attorney’s remand request and found that
Applicant’s objection was well-taken. The Board vacated its remand order, and forwarded the
application file to the Examining Attorney for the preparation of his brief. 9 TTABVUE 1-2.
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I. Record on Appeal
The record on appeal includes the following:
1. A definition of the word “apparel” from Yahoo! Education
(education.yahoo.com), made of record by the Examining Attorney;4
2. A definition of the word “wear” from The American Heritage Dictionary
(ahdictionary.com), made of record by the Examining Attorney;5
3. Third-party registrations of marks for one or more of the goods identified in
Applicant’s application and one or more of the goods identified in the cited
registration, made of record by the Examining Attorney;6 and
4. Internet webpages offering one or more of the goods identified in Applicant’s
application and one or more of the goods identified in the cited registration,
made of record by the Examining Attorney.7
II. Analysis of Likelihood of Confusion Refusal
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under § 2(d) is based on an

Accordingly, only the original final refusal based on Registration No. 4843607 is before us on
this appeal.
4 August 20, 2013 Office Action at 15-16. Examination of the application was suspended
between September 22, 2013 and May 16, 2016 pending disposition of the application that
matured into Registration No. 4843607.
5 February 13, 2017 Office Action at 2-5.
6 October 2, 2017 Office Action at 5-109.
7 Id. at 110-194.
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analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). We consider each du Pont factor that is relevant and
for which there is record evidence. See, e.g., M2 Software, Inc. v. M2 Commc’ns, Inc.,
450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA
Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015). Two key factors in every § 2(d)
case are the similarity or dissimilarity of the marks and the similarity or dissimilarity
of the goods or services, because 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
Before turning to our du Pont analysis, we must address certain statements and
arguments made by Applicant in his brief.8 The portion of Applicant’s brief captioned
“ARGUMENTS,” 4 TTABVUE 7,9 begins with the heading “THE MARKS OF THE
PARTIES ARE CONFUSINGLY SIMILAR AND THE SERVICES OF THE PARTIES
ARE CLOSELY RELATED SUCH AS THE LETTER ‘B’ AND THE WORD WEAR
[sic] THAT THERE EXISTS A LIKELIHOOD OF CONFUSION UNDER SECTION
2(d) OF THE TRADEMARK ACT.” Subsequent pages contain sub-sections that
appear under the headings “THE MARKS ARE CONFUSINGLY SIMILAR” and

8 We do not address other portions of the brief that discuss amendments to allege use, use in
commerce, acquired distinctiveness, and other matters that are not germane to this appeal.
9 The brief begins with an introductory paragraph and pages from the Trademark Status &
Document Retrieval (“TSDR”) database regarding the involved application. 4 TTABVUE 2-7.
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“THE GOODS ARE HIGHLY SIMILAR,” and that advance various arguments,
discussed below, supporting a finding of a likelihood of confusion on the basis of the
two key du Pont factors. Id. at 10-11.
The penultimate paragraph in Applicant’s brief is captioned “CONCLUSION –
(CONCESSION).” It reads as follows:
Considered in their entireties, the applicant’s mark and the
registrant’s mark are sufficiently similar in appearance
and commercial impression such that, when used in
connection with highly similar goods, consumers are likely
to be confused as to the source of those goods.
Consequently, the refusal to register the applicant’s design
mark on the basis of Section 2(d) of the Trademark Act, 15
U.S.C. Section 1052(d) on the ground that the mark is
likely to cause confusion with the cited registration should
be affirmed.
Id. at 13.
This paragraph expressly urges the Board to affirm the refusal to register. We
note, however, that the final paragraph of Applicant’s brief (also captioned
“CONCESSION”) includes the statements that “the applicant’s design mark should
register on the basis of Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d)
on the ground that the mark is not inherently distinctive” and that “the applied for
mark has been in use in commerce by applicant indicating registration should be
affirmed.” Id. Accordingly, notwithstanding Applicant’s putative concession of the
appeal, and our inability to follow Applicant’s arguments against the refusal, we will
assume that Applicant controverts it, and we will determine whether the Examining
Attorney carried his burden of showing a likelihood of confusion under § 2(d). See In
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re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1084 (Fed. Cir. 2014) (“The
PTO bears the burden of showing that a mark should not be registered”).
A. Similarity or Dissimilarity of the Goods, Channels of Trade, and
Classes of Consumers
The second du Pont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration,” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159
(Fed. Cir. 2014), while the third du Pont factor “considers ‘[t]he similarity or
dissimilarity of established, likely-to-continue trade channels.’” Id. at 1161. The
analysis of these factors is premised on the identifications of goods in the application
and in the cited registration. Id. at 1161-63; Octocom Sys., Inc. v. Houston Computs.
Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re FabFitFun,
Inc., 127 USPQ2d 1670, 1672 (TTAB 2018). “[L]ikelihood of confusion can be found ‘if
the respective goods are related in some manner and/or if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that they 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)).
The goods identified in Applicant’s application are “Athletic apparel, namely,
shirts, pants, jackets, footwear, hats and caps, athletic uniforms, shoes, shorts, skirts,
sweaters, tights, athletic tops and bottoms for runners and yoga.” The goods
identified in the cited registration are “Clothing, namely, dresses, skirts, blouses,
shorts, shirts, pants, jackets, and sweaters.” We need not find similarity as to each
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and every item listed in the identification of goods to affirm the refusal. It is sufficient
if there is a likelihood of confusion with respect to any item encompassed by the
identification of goods in a particular class in the application. Tuxedo Monopoly, Inc.
v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re
i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d, 866 F.3d 1315, 123
USPQ2d 1744 (Fed. Cir. 2017); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734,
1745 (TTAB 2014).
Applicant acknowledges that “the registration uses broad wording to describe the
goods and this wording is presumed to encompass all goods of the type described.” 4
TTABVUE 11. The goods identified in the registration as “shorts,” “shirts,” “pants,”
“jackets,” and “sweaters” do not contain any restrictions or limitations as to their type
or nature, and those goods must be deemed to encompass the particular type of
“shorts,” “shirts,” “pants,” “jackets,” and “sweaters” within the category of “athletic
apparel” in the application. The particular “shorts,” “shirts,” “pants,” “jackets,” and
“sweaters” identified in the application are thus legally identical to their more general
counterparts in the cited registration.10 See In re i.am.symbolic, llc, 127 USPQ2d
1627, 1629 (TTAB 2018); FabFitFun, 127 USPQ2d at 1672; In re Jump Designs LLC,
80 USPQ2d 1370, 1374 (TTAB 2006). The partial legal identity of these goods causes

10 Given the legal identity of these goods, “there is no need for us to further consider the
relatedness of the goods,” FabFitFun, 127 USPQ2d at 1672, but the Examining Attorney also
made of record third-party registrations and Internet webpages showing that one or more of
the other goods identified in the application and one or more of the goods identified in the
registration may emanate from the same source. October 2, 2017 Office Action at 5-194. This
evidence is probative of the relatedness of these goods. In re Aquamar, Inc., 115 USPQ2d
1122, 1126 (TTAB 2015).
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this du Pont factor to weigh heavily in favor of a finding of a likelihood of confusion.
See, e.g., Aquamar, 115 USPQ2d at 1126 n.5.
In addition, as Applicant acknowledges, 4 TTABVUE 11, “[w]e 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 customers, because the goods are . . . 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,” i.am.symbolic, 127 USPQ2d at 1629
(citing In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).
The third du Pont factor also supports a finding of a likelihood of confusion.
B. Similarity or Dissimilarity of the Marks
The first du Pont factor considers “‘the similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connotation and commercial impression.’”
Palm Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting 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) (citing In re
White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)). “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., 101
USPQ2d at 1721 (quotation omitted). “The proper focus is on the recollection of the
average customer, who retains a general rather than specific impression of the
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marks.” In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018).11
Because the goods are legally identical in part, “the degree of similarity between the
marks necessary to find likelihood of confusion need not be as great as where there
is a recognizable disparity between the goods.” In re Bay State Brewing Co., 117
USPQ2d 1958, 1960 (TTAB 2016). See also Coach Servs., 101 USPQ2d at 1721;
Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d
1061, 1064 (Fed. Cir. 2012) (“Where the goods are identical, the appearance of a mark
of similar sound, appearance, or connotation is more likely to cause confusion than if
the goods are significantly different”).
As Applicant acknowledges, “the applied-for mark consists of the literal element
‘B WEAR.’” Id. That literal element is very similar in appearance to the cited
standard character mark B.WEAR GIRL because the design feature of Applicant’s
mark consists solely of the disparity in the size of its literal elements and their
relative positioning:12

11 The average customer for the subject goods is an ordinary consumer of clothing items,
including athletic apparel.
12 Even if we considered the design element of Applicant’s mark to be significant, it is well
settled that “[i]n the case of a composite mark containing both words and a design, ‘the verbal
portion of the mark is the one most likely to indicate the origin of the goods to which it is
affixed.’” Viterra, 101 USPQ2d at 1908 (quoting CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 200 (Fed. Cir. 1983)). The literal elements of Applicant’s mark would necessarily
be used to refer to and order the goods. See, e.g., Bay State Brewing, 117 USPQ2d at 1961;
L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2008).
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Moreover, because the cited B.WEAR GIRL mark is a standard character mark, “we
must consider that the literal elements of the mark (the words and the letter [B.])
may be presented in any font style, size or color, including the same font, size and
color as the literal portions of Applicant’s mark.” Aquitaine Wine, 126 USPQ2d at
1186. Thus, we must assume that the cited mark could be displayed with the letter
B. appearing in the same very large font and the words WEAR and GIRL appearing
in the same very small font as in Applicant’s mark, and in the same relative positions
as their counterpart elements in Applicant’s mark. Id. We find that the marks are
very similar in appearance.
Applicant does not address the similarity of the marks in sound, and we agree
with the Examining Attorney that the marks “will clearly be pronounced the same”
because “when purchasers call for the goods using B WEAR and B.WEAR GIRL, they
will do so using an identical sound term . . . .” 10 TTABVUE 8. We find that the marks
are very similar in sound.
With respect to connotation and commercial impression, we agree with the
Examining Attorney that the “marks contain the same word play: the letter B
combined with the word WEAR evokes the idea of ‘B’-brand clothing, while at the
same time calling to mind the phonetically similar word ‘beware,’” and that the
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“addition of the descriptive wording GIRL in registrant’s mark does not significantly
alter this double entendre.” 10 TTABVUE 7. As Applicant acknowledges, 4
TTABVUE 12-13, the marks must be considered in their entireties, but “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 feature of a mark, provided the ultimate conclusion rests on consideration
of the marks in their entireties.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). We find that the B.WEAR element of the cited mark is its
dominant portion because it is the first portion of the mark, see Aquitaine, 126
USPQ2d at 1185 (citing Palm Bay Imps., 73 USPQ2d at 1692 and Presto Prods. v.
Nice-Pak Prods., 9 USPQ2d 1895, 1897 (TTAB 1988)), and because the word GIRL
has little, if any, source-identifying capacity in the context of “dresses, skirts, blouses,
shorts, shirts, pants, jackets, and sweaters,” and has been disclaimed. Id.; see also In
re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); Bay
State Brewing, 117 USPQ2d at 1960-61. Indeed, the cited mark B.WEAR GIRL could
be viewed simply as the identifier of a variant of Applicant’s B WEAR line of athletic
apparel that is directed to young women, and the applied-for mark could be viewed
as the identifier of a broader line of goods sold by the owner of the B.WEAR GIRL
mark. We find that the marks are very similar in connotation and commercial
impression.
Keeping in mind the fallibility of average consumers’ memories, while differences
exist between the respective marks, we find that they are substantially similar in
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appearance, sound, connotation and commercial impression when considered in their
entireties. The first du Pont factor thus supports a finding of a likelihood of confusion.
C. Conclusion
All of the relevant du Pont factors support a finding of a likelihood of confusion.
Applicant’s use of the applied-for mark is likely to cause consumers of his goods to
believe mistakenly that they originate with, or are sponsored or authorized by, the
owner of the cited B.WEAR GIRL mark.
Decision: The refusal to register under Section 2(d) is affirmed.