Live Roupas Esportivas Ltda

Trademark Trial and Appeal Board

Apr 8, 2016

No. 86196646 (T.T.A.B. Apr. 8, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: April 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Live Roupas Esportivas Ltda
_____

Serial Nos. 86196646 and 862303021
_____

Eric P. Gros-Dubois, Esq. of EPGD Attorneys at Law PA,
for Live Roupas Esportivas Ltda.
Katherine S. Chang, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
_____
Before Mermelstein, Gorowitz, and Pologeorgis.
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Live Roupas Esportivas Ltda (“Applicant”) seeks registration on the Principal
Register of the marks 2 (LIVE! CLOTHING stylized) and 3 (LIVE!
stylized) for

1 On June 10, 2015, the refusals in both applications were appealed. Prior to filing her brief,
the Examining Attorney requested that we consolidate these two appeals on the grounds that
they involve common issues of both fact and law. We hereby grant the request.
2 Application Serial No. 86196646 was filed on February 18, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
3 Application Serial No. 86230302 was filed on March 24, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Serial Nos. 86196646 and 86230302.
- 2 -

Clothing articles, namely, tops; sports bras; hoodies;
jackets; vests; shirts; t-shirts; tank tops; base layers;
blouses; pants; capris; tights; leggings; shorts; skirts;
dresses; swimwear; gloves; socks; bikinis in International
Class 25.
The Trademark Examining Attorney refused registration of Applicant’s mark
under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s marks so resemble the following registered marks as used in connection
with Applicant's identified goods and services, they are likely to cause confusion or
mistake or to deceive:
(LIVE stylized) for clothing
namely, T-shirts, sweatshirts, caps, hats, tank tops, and
jackets,4
LIVE! (in standard characters) for, in part, stores and
retail outlets featuring clothing,5 and
(LIVE! stylized) for, in part, retail
outlets featuring clothing.6
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the requests for
reconsideration, the appeals were resumed. We affirm the refusals to register.

4 Registration No. 2116106, registered November 25, 1997; renewed.
5 Registration No. 3225221, registered April 3, 2007; Section 8 accepted and Section 15
acknowledged.
6 Registration No. 3951123, registered April 26, 2011.
Serial Nos. 86196646 and 86230302.
- 3 -
I. Evidentiary Issue.
Before proceeding to the merits of the refusal, we address an evidentiary matter.
The Examining Attorney objects to the inclusion in Applicant’s brief of reference to
the website located at http://www.liveofficial.com.br, which was first mentioned by
Applicant in its brief. The Examining Attorney is correct in asserting that the record
in an application must be complete prior to appeal and thus, any evidence introduced
thereafter will not ordinarily be considered in the decision7 and that merely providing
a web address or hyperlink to Internet materials is insufficient to make the associated
webpages of record.8 As such, the Examining Attorney’s objections are sustained and
all references to the website located at http://www.liveofficial.com.br have not been
considered. We note that even if the webpages had been considered, it would not affect
the outcome herein.
II. Likelihood of Confusion.
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are 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

7 Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). Further, “evidentiary references made in
briefs but not supported by timely submissions may not be considered.” Trademark Trial and
Appeal Manual of Procedure (TBMP) § 1203.02(e) (2015). See In re the Procter & Gamble Co.,
105 USPQ2d 1119, 1120 (TTAB 2012) (Applicant withdrew references in its brief to third-
party registrations it inadvertently failed to attach to responses during examination).
8 In re Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013).
Serial Nos. 86196646 and 86230302.
- 4 -
similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We will separately analyze the potential likelihood of confusion between both of
Applicant’s applications and (1) Registration No. 2116106 for the mark
for “clothing namely, T-shirts, sweatshirts, caps, hats, tank tops,
and jackets,” which is owned by Action Front Unlimited; and (2) Registration Nos.
3225221 for the mark LIVE! (in standard characters) for services including “retail
stores and retail outlets featuring clothing” and Registration No. 3951123 for the
mark for services including retail outlets featuring clothing, both
owned by Live! Holdings, LLC.
Registration No. 2116106 for the mark .
Similarity or dissimilarity of the goods, the channels of trade and the
class of customers.
We start our analysis with the second and third du Pont factors, the similarity of
the goods, the channels of trade, and the class of customers. When determining the
relationship between the goods,
[i]t is well settled that the issue of likelihood of confusion
between applied-for and registered marks must be
determined on the basis of the goods as they are identified
in the involved application and cited registration, rather
Serial Nos. 86196646 and 86230302.
- 5 -
than on what any evidence may show as to the actual
nature of the goods, their channels of trade and/or classes
of purchasers.
In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). See also Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161-1162 (Fed. Cir. 2014).
In both applications, Applicant’s goods are identified as “clothing articles, namely,
tops; sports bras; hoodies; jackets; vests; shirts; t-shirts; tank tops; base layers;
blouses; pants; capris; tights; leggings; shorts; skirts; dresses; swimwear; gloves;
socks; bikinis.” The goods in the cited registration are identified as: “clothing namely,
T-shirts, sweatshirts, caps, hats, tank tops, and jackets.” “Applicant concedes that
the goods in the current application and the goods in the cited applications are related
as the identifications set forth in the registrations are virtually the same.” Appeal
Brief, 10 TTABVUE 19. Both the application and the registration include “jackets,”
“t-shirts,” and “tank tops.” Because these goods are legally identical, if we find there
is a likelihood of confusion as to these goods, it is not necessary to consider likelihood
of confusion with respect to the rest of the goods in the application. See, e.g., Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981) (If there is a likelihood of confusion involving any of the goods set forth in the
application and cited registration, the refusal applies to all of the goods in the same
class).
Applicant argues that the “indisputable differences [sic] in the purpose and
function of Applicant’s mark and the Cited Marks … precludes any and all foreseeable
confusion.” Appeal Brief, 10 TTABVUE 19. Applicant contends that the mark
Serial Nos. 86196646 and 86230302.
- 6 -
is used by the band Live to “promote their music ….” Applicant’s
contention about the use of the cited mark is irrelevant to this proceeding since we
are bound by the identification of goods which does not restrict the nature of the
goods, their channels of trade and/or classes of purchasers.9 Cf. In re i.am.symbolic,
LLC, 116 USPQ2d 1406, 1410 (TTAB 2015) (Language in identification of goods that
goods are “associated with William Adams, professionally known as ‘will.i.am” does
not impose “a meaningful limitation on Applicant’s goods in any fashion, most
especially with respect to either trade channels or class of purchasers.”)
Accordingly, we find the goods to be identical-in-part and otherwise closely
related. “[I]t is well established that, ‘absent restrictions in the application and
registration, [identical] goods and services are presumed to travel in the same
channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) quoting Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002). Therefore,
Applicant’s goods are presumed to be sold in the same channels of trade and to the
same customers.
Accordingly, the second and third du Pont factors strongly favor a finding of
likelihood of confusion.

9 Contrary to Applicant’s assertions that the purchasers are sophisticated, we find clothing
items, i.e. tank tops, t-shirts, and jackets, are purchased by ordinary purchasers.
Serial Nos. 86196646 and 86230302.
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Similarity or dissimilarity of the marks at issue.
We next determine the similarity or dissimilarity of the marks in their entireties,
keeping in mind that “[w]hen marks appear on virtually identical goods or services,
the degree of similarity necessary to support a conclusion of likelihood of confusion
declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992).
In comparing the marks we must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). While “the similarity or dissimilarity of the marks is determined based on the
marks in their entireties … 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 National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant’s marks are and , and Registrant’s mark is
. With respect to the marks and , the only
differences are the slightly different fonts used and the exclamation point in
Applicant’s mark. The dominant portion of each of the marks is the word “LIVE.” 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. In re
Serial Nos. 86196646 and 86230302.
- 8 -
Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009) (citing Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975)).
The addition of an exclamation point does not change the pronounciation of
Applicant’s mark, nor does it change the meaning of the identical word (LIVE) used
as a mark on identical goods. In re St. Helena Hosp., 113 USPQ2d 1082, 1085 (Fed.
Cir. 2014) (affirming the Board’s finding that TAKETEN and TAKE TEN! are
similar). Neither the slightly different fonts nor the exclamation point in Applicant’s
mark is sufficient to different the marks. As such, we find the marks to be highly
similar.
The only difference between Applicant’s marks and is the
addition of the generic word “clothing” in the mark . Likelihood of confusion
is not necessarily avoided between otherwise confusingly similar marks merely by
adding or deleting a house mark, other distinctive matter, or a term that is
descriptive or suggestive of the named goods or services; if the dominant portion of
both marks is the same, then the marks may be confusingly similar notwithstanding
peripheral differences. See e.g., Stone Lion Capital Partners, L.P. v. Lion Capital LLP,
110 USPQ2d at 1161. In this case the additional term is generic and as such, has
little or no trademark significance. In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d
1944, 1946 (Fed. Cir. 2004) (generic term of “nominal commercial significance” and
entitled to little weight in assessing similarity of marks).
Serial Nos. 86196646 and 86230302.
- 9 -
Accordingly, the marks and are identical but for the
generic word “CLOTHING,” the exclamation point and the minor differences in the
fonts, none of which significantly diminish the similarity of the marks in their
entireties. See id. at 1946 ("Viewed in their entireties with non-dominant features
appropriately discounted, the marks [GASPAR’S ALE for beer and ale and JOSE
GASPAR GOLD for tequila] become nearly identical.”).
As such, the first du Pont factor strongly favors a finding of likelihood of confusion.
The number and nature of similar marks in use on similar goods.
We look at the number and nature of similar marks in use on similar goods to
determine the strength of the marks at issue. Applicant contends that “customers
have become so conditioned by a plethora of similar marks that customers have been
educated to distinguish between different marks on the basis of minute distinctions.”
Appeal Brief, 10 TTABVUE 27. In support of its allegations, Applicant asserts that it
has used the mark on clothing in Brazil for more than ten years. Id. at 26.
Such use does not affect the strength of the cited marks in this proceeding since
Applicant’s use was not made in commerce that can be regulated by Congress. Only
use and reputation in or with the United States will be considered to establish rights
in the United States, which rights can be used to assess the strength of the mark at
issue.10 Applicant also alleges that it has conducted a third-party search of the

10 The scope of federal trademark jurisdiction is commerce that may be regulated by the U.S.
Congress. The types of commerce encompassed in this definition are interstate, territorial,
Serial Nos. 86196646 and 86230302.
- 10 -
USPTO’s Trademark Electronic Search System (TESS) for the term “LIVE” and
“clothing,” which yielded over 1,000 results. Id. In support of this allegation,
Applicant discusses the lists of search results submitted, which include the marks,
their application or registration number and a marker indicating the status (dead or
live).11 “We cannot determine from a mere listing like this the nature of the goods for
which these purported marks have been applied-for or registered and many of the
marks themselves appear to contain substantial additional matter.” Edom
Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1553 (TTAB 2012). Accordingly, the
lists of marks from the TESS database have little or no evidentiary value.
Even if the listed registrations and applications were of record, the relevant du
Pont factor requires consideration of the “number and nature of similar marks in use
on similar goods.” du Pont, 177 USPQ at 567 (emphasis added). Registrations are of
little use in that inquiry because they are not evidence of the use of the registered
marks or that customers are familiar with such marks so as to be accustomed to the
existence of the same or similar marks in the marketplace. AMF Inc. v. Am. Leisure
Prods., Inc., 474 F.2d 1407, 177 USPQ 268 (CCPA 1973). And while registrations are

and between the United States and a foreign country. "Territorial commerce" is commerce
within a territory of the United States (e.g., Guam, Puerto Rico, American Samoa, or the U.S.
Virgin Islands) or between the United States and a territory of the United States. Trademark
Manual of Examining Procedure (TMEP) § 901.03 (October 2015).
11 In its summary of the evidence, titled Applicant’s Evidence (Appeal Brief, 10 TTABVUE 9-
10), Applicant refers to Exhibit B November 11, 2014 Response to the Office Action. The
record reflects that the actual filing date of the response was November 24, 2014. Applicant
states that “Exhibit B: Includes copies of the trademark applications for the following
registered marks: BILLBOARD LIVE …” Id. There is no discussion about any of these
registrations nor the reason for their submission in Applicant’s Brief.
Serial Nos. 86196646 and 86230302.
- 11 -
of limited use, applications (like “dead” registrations) are of no use at all. Third-party
applications are evidence only of the fact that they have been filed. Interpayment
Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003).
Applicant also claims to have “provided evidence of extensive third-party use of
LIVE in trade names and service marks for clothing.”12 Appeal Brief, 10 TTABVUE
27. The only evidence of use discussed was labeled “Exhibit C,” which consists of two
yellow page listings for locations in the United States (www.yellowpages.com): (1)
“Live It Up” in Fairlawn, Ohio (the only business detail available consists of the
category of the business: “men’s clothing”; and (2) “Live Urban” in Cleveland, Ohio
(the only business details are the neighborhood, which is Buckeye-Shaker and the
category of the business: “men’s clothing, clothing stores”).13 Response to Office Action
dated November 24, 2014, TSDR 236-238. Two uses of names containing the word
“live,” without any evidence as to the nature and extent of such use, are insufficient
to establish any weakness of the word as a trademark. Thus, we find the sixth du
Pont factor to be neutral.
Conclusion.
Having considered all the evidence and argument on the relevant du Pont factors,
whether discussed herein or not, we find that Applicant’s marks are likely to cause

12 Applicant refers to “Exhibit B November 11, 2014 Response to the Office Action” as the
source of its extensive evidence. The correct reference would be to Exhibit C, which consists
of printouts of TESS database records for two registrations and the lists containing the
results of the TESS searches discussed above.
13 The third reference is to a store in Morley, Western Australia, which is not relevant to this
proceeding since it represents use in a foreign country, which is not relevant to this
proceeding. See: fn 11.
Serial Nos. 86196646 and 86230302.
- 12 -
confusion with the mark in the cited registration. Further, since there is a likelihood
of confusion between Applicant’s mark and the mark in Registration No. 2116106, it
is not necessary for us to determine whether there is also a likelihood of confusion
between Applicant’s marks and the marks in the other cited registrations,
Registration Nos. 3225221 for the mark LIVE! (in standard characters) for services
including “retail stores and retail outlets featuring clothing” and Registration No.
3951123 for the mark for services including retail outlets featuring
clothing. However, for the sake of completeness, we will consider the other cited
registrations.
Registration No. 3225221 for the mark LIVE! (in standard characters) and
Registration No. 3951123 for the mark
Both of the cited registrations are service mark registrations owned by Live!
Holdings, LLC. Because the stylization of the mark LIVE! in Registration No.
3951123 arguably contains an additional point of difference with Applicant’s marks,
we confine our analysis to the issue of likelihood of confusion between Applicant’s
marks and the cited registration for the mark LIVE! in standard character form. That
is, if confusion is likely between those marks, there is no need for us to consider the
likelihood of confusion with the cited registration for the mark with the stylized
lettering, while if there is no likelihood of confusion between Applicant’s mark and
the cited mark in standard characters, then there would be no likelihood of confusion
with the mark in stylized lettering. Cf. In re Max Capital Group Ltd., 93 USPQ2d at
Serial Nos. 86196646 and 86230302.
- 13 -
1245 (Because the design element in the cited MAX and design mark arguably
contains an additional point of difference with applicant's mark, we confine our
analysis to the issue of likelihood of confusion between applicant's mark and the cited
registration for MAX in typed drawing form. That is, if confusion is likely between
those marks, there is no need for us to consider the likelihood of confusion with the
cited mark for MAX with the dot design, while if there is no likelihood of confusion
between applicant's mark and MAX in typed form14, then there would be no likelihood
of confusion with the MAX and dot design mark.”)
Similarities or dissimilarities of the marks.
Starting with the first du Pont factor, we consider the appearance, sound,
connotation and commercial impression of the marks at issue. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
Applicant’s marks are and , and Registrant’s mark is LIVE!.
Registrant’s mark LIVE! (in standard characters) is virtually identical to Applicant’s
mark . The only difference is Applicant’s use of a slightly stylized font.
However, since Registrant’s mark is in standard character format, there is no claim
to any particular font style, color, or size of display and, thus, Registrant’s mark is

14 It is noted that prior to November 2, 2003, “standard character” drawings were known as
“typed” drawings. A typed mark is the legal equivalent of a standard character mark. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012)
Serial Nos. 86196646 and 86230302.
- 14 -
not limited to any particular presentation. See: Citigroup Inc. v. Capital City Bank
Group Inc., 637 F3d 1344, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011). Therefore,
Registrant can depict its mark in a font identical to that used by Applicant.
Further as discussed above, the word “CLOTHING” is generic and as such is of
little or no trademark significance. The addition of the generic word “clothing” in the
mark does not avoid likelihood of confusion, because the dominant portion
of both marks is the same, and the marks may be confusingly similar notwithstanding
peripheral differences. See, e.g., Stone Lion Capital Partners, L.P. v. Lion Capital
LLP, 110 USPQ2d at 1161
Accordingly, the marks and LIVE! are legally identical and the marks
and LIVE! are nearly identical. As such, the first du Pont factor weighs
heavily in support of a finding of likelihood of confusion.
Similarity or dissimilarity of the goods and services, the channels of
trade and the class of customers.
While the cited registration includes services in International Classes 35, 36, 41,
and 43, the relevant services consist of the following services in International Class
35: “retail stores and retail outlets featuring clothing.” As with our analysis above of
the relationship between Applicant’s goods and the goods in cited Registration No.
2116106, the relationship between the goods and services at issue here is determined
by the identification of goods in Applicant’s application and the recitation of services
Serial Nos. 86196646 and 86230302.
- 15 -
in the cited registration “rather than what the evidence may show as to the actual
nature of the goods [and services], their channels of trade and/or classes of
purchasers.” In re Total Quality Group Inc., 51 USPQ2d at 1476; Stone Lion Capital
Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1161-1162. Thus, we compare
Applicant’s clothing with Registrant’s retail stores and retail outlets featuring
clothing.
While there is no per se rule, it is often held that confusion is likely where one
entity uses a mark for goods and another uses the same or a similar mark for a retail
store that sells such goods. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025, 1026 (Fed. Cir. 1988) (general merchandise stores and furniture); The Wet Seal,
Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1640, (TTAB 2007) (women’s clothing
stores and cosmetics). See also, J. Thomas McCarthy, Trademarks and Unfair
Competition § 24:25 (2016) (“[w]here 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.”).
To establish that Applicant’s goods are related to Registrant’s services, the
Examining Attorney submitted copies of thirteen use-based third-party registrations
owned by different entities, each of which includes both clothing and retail store
services featuring clothing, which serve to suggest that the goods and services are of
a kind that may emanate from a single source. Third-party registrations which
individually cover a number of different items and which are based on use in
commerce may have some probative value to the extent that they serve to suggest
Serial Nos. 86196646 and 86230302.
- 16 -
that the listed goods and/or services are of a type which may emanate from a single
source. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.6 (TTAB 2015); see also
In re RiseSmart Inc., 104 USPQ2d 1931, 1934-1935 (TTAB 2012); In re Infinity Broad.
Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); and In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-86 (TTAB 1993). These registrations include the following,
which were attached to the Denial of Request for Reconsideration Office July 2,
2015:15
• Registration No. 4571078 -
Goods and services: clothing, namely, hats, caps,
visors, gloves, mittens, scarves, belts, ties, socks,
tights, hosiery, stockings, shoes, boots, slippers,
blouses, shirts, camisoles, tops, tank-tops, t-shirts,
sweatshirts, pullovers, sweaters, blazers, jackets,
coats, dresses, skirts, skorts, capris, jeans, shorts,
pants, sweatpants, underwear, bras, panties, slips,
teddies, nightgowns, pajamas, sleep shirts,
bathrobes, lingerie, beach cover-ups, swimwear,
rainwear in International Class 25 and
retail and online retail store services in the field of
clothing and accessories in International Class 35
Owner: The Wet Seal, LLC
(TSDR pp. 4-5);
• Registration No. 4760980 – THE GYPSY SPUR
Goods and services include: shirts, tee shirts,
nightshirts, sweatshirts, hats and caps in
International Class 25 and
retail store services and on-line retail store services
featuring women's clothing, boots, home décor
articles, vases, baskets, pictures, picture frames,
lamps, jewelry, and gifts in International Class 35
Owner: The Gypsy Spur, L.L.C.
TSDR pp. 13-14;

15 All references to documents submitted during examination are to the Trademark Status
and Document Retrieval (TSDR).
Serial Nos. 86196646 and 86230302.
- 17 -

• Registration No. 4756854 – WHO HAS MORE FUN
THAN US? … WE DO!
Goods and services: clothing, namely, t-shirts in
International Class 25 and
Retail store services featuring food, shirts,
flashlights, key chains, pins, bandanas, hair wraps,
magnets, sweatshirts, calendars, advertising,
uniforms, hats, leather, jewelry, clothing; online
retail store featuring food, shirts, flashlights, key
chains, pins, bandanas, hair wraps, magnets,
sweatshirts, calendars, advertising, uniforms, hats,
leather, jewelry, clothing in International Class 35
Owner: Bentley’s Saloon, LLC
TSDR pp. 16-17;
• Registration No. 4753085 – RUE+
Goods and services: Clothing, namely, jackets, knit
tops, sweaters, blouses, shirts, T-shirts, skirts,
pants, shorts, dresses, jeans, sleepwear, and
underwear in International Class 25 and retail
clothing store services; distributorships in the field
of clothing in International Class 35
Owner: Rue Services Corporation
TSDR pp. 19-20; and
• Registration No. 4764563 – BRINY
Goods and services: clothing, namely, shirts,
sweaters, jackets, vests, skirts, dresses, jeans,
shorts, sleepwear, socks, undergarments,
swimwear, hats and shoes in International Class 25
and retail store services featuring clothing and
accessories in International Class 35
Owner: Simon Peter Sawan Cox
TSDR pp. 41-42.

The Examining Attorney also submitted website evidence of use of a single mark
in connection with both clothing and retail stores featuring clothing, for example,
• Banana Republic - (www.bananrepublic.gap.com)
Denial of Request for Reconsideration dated July 2,
2015 TSDR 47-48;
Serial Nos. 86196646 and 86230302.
- 18 -
• French Connection – (www.frenchconnection.com)
Denial of Request for Reconsideration dated July 2,
2015 TSDR 49-50;
• Guess – (shopguess.com) Denial of Request for
Reconsideration dated July 2, 2015 TSDR 51-52;
• J. Crew - Denial of Request for Reconsideration
dated July 2, 2015 TSDR 53-54;
• Juicy Couture – (www.juicycouture.com) Denial of
Request for Reconsideration dated July 2, 2015
TSDR 55-57; and
• L.L. BEAN (www.llbean.com) Denial of Request for
Reconsideration dated July 2, 2015 TSDR 58-59.
In an attempt to disprove the relevance of this evidence, Applicant referred to the
following registrations for the same marks registered in both International Classes
25 and 35:
• Registration Nos. 2933053 for BANANA REPUBLIC
in International Class 35 and 1347489 for BANANA
REPUBLIC in International Class 25;
• Registration No. 3081564 for FRENCH
CONNECTION in International Class 35 and
0995877 for FRENCH CONNECTION in
International Class 25;
• Registration Nos. 2408468 for GUESS? in
International Class 35; and 2380188 for GUESS? in
International Class 25;
• Registration Nos. 2351667 for J.CREW in
International Class 35 and 1308888 for J. Crew in
International Class 25;
• Registration Nos. 2351667 for JUICY COUTURE in
International Class 35 and 2348674 for JUICY
COUTURE in International Class 25; and
Serial Nos. 86196646 and 86230302.
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• Registration Nos. 2621531 for L.L. Bean in
International Class 35 and 1155711 for L.L. BEAN
in International Class 25.
Request for Reconsideration dated June 10, 2105, TSDR p.6.; See also: Appeal Brief,
10 TTABVUE 21. Applicant argues that these registrations establish that a company
using its marks “both for retail services in Class 35 and as an identifier of source for
clothing in Class 25, registers the mark in both classes.” Id. This is inapposite.
Trademark rights in the United States are based on use and registration is not
mandatory. To establish a relationship between retail clothing store services and
clothing, the issue is not whether Registrant offers both goods and service but rather
whether both retail clothing store services and clothing come from the same source
and are identified by the same mark. Applicant’s argument proves that they are.
Further, since neither Applicant’s identifications of goods nor Registrant’s
recitations of services restrict either the channels of trade or the class of customers,
we may assume that Applicant’s goods could be sold in any usual channels of trade –
including Registrant’s retail stores and to the same customers, ordinary purchasers.
Accordingly, the second and third du Pont factors favor a finding of likelihood of
confusion.
Conclusion.
Having considered all the evidence and argument on the relevant du Pont factors,
regarding likelihood of confusion between the applications at issue and Registration
Nos. 3225221 for the mark LIVE! (in standard characters) for services including
“retail stores and retail outlets featuring clothing,” whether discussed herein or not,
Serial Nos. 86196646 and 86230302.
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we find that Applicant’s marks are likely to cause confusion with the mark in the
cited registration.

Decision: The refusals to register Applicant’s marks, and , are
affirmed. Applications Serial Nos. 86196646 and 86230302 will be abandoned in due
course.