Manhattan International Trade Inc. and Pure & Simple Concepts Inc (joined as plaintiffs)v.Industrie IP Pty Limited

Trademark Trial and Appeal Board

May 11, 2018

No. 91216270 (T.T.A.B. May. 11, 2018)

Mailed: May 11, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
______

Trademark Trial and Appeal Board
————
Manhattan International Trade Inc. and Pure & Simple Concepts Inc.

v.

Industrie IP Pty Limited
___

Opposition No. 91216270
___

Thomas D. Rosenwein of Rosenwein Law Group
for Manhattan International Trade Inc. and Pure & Simple Concepts Inc.

Bryan M. Friedman and Andrew R. Nelson of Friedman Stroffe & Gerard PC
for Industrie IP Pty Limited.
______

Before Cataldo, Adlin and Masiello, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Industrie IP Pty Limited (“Applicant”) seeks registration of the mark shown below

This Opinion is not a
Precedent of the TTAB
Opposition No. 91216270
2
(with FINEST QUALITY GARMENT MAKERS INDUSTRIE, TURN OF THE
CENTURY CLOTHING and EST 1999 disclaimed) for: “Clothing, namely, shirts,
pants, jeans, coats, jackets, denim pants, denim jackets, denim jeans, swimsuits,
athletic trunks, shorts, underwear, socks, t-shirts, dresses, skirts, blouses, coveralls,
belts, footwear and headwear” in International Class 25; and “retail clothing store
services” in International Class 35.1 In their notice of opposition, Manhattan
International Trade Inc. (“MIT”) and Pure & Simple Concepts Inc. (“PSC”)
(collectively “Opposers”)2 allege prior use and registration of a purported “family” of
marks for clothing which all share the term INDUSTRY, and that use of Applicant’s
mark would be likely to cause confusion with, and dilute,3 Opposers’ marks,
specifically:

1 Application Serial No. 85881059, filed March 20, 2013 as an intent-to-use application under
Sections 1(b) and 44(d) of the Trademark Act, 15 U.S.C. §§ 1051(b) and 1126(d). The basis
was subsequently amended to Section 44(e), 15 U.S.C. § 1126(e), based on Australian
Registration No. 1546618. The application includes this description of the mark: “The mark
consists of the words ‘FINEST QUALITY GARMENT MAKERS INDUSTRIE TURN OF THE
CENTURY CLOTHING EST 1999’ stacked with a line on the outside of ‘EST 1999’ and the
phrase ‘TURN OF THE CENTURY CLOTHING’. There is a design line separated by two
hammers creating an ‘X’ between the words ‘FINEST QUALITY’ and ‘GARMENT
MAKERS’.”
2 The notice of opposition in fact refers to one unnamed “Opposer,” in singular form, and the
ESTTA coversheet for the notice of opposition identifies a single opposer, comprising both
MIT and PSC, rather than listing MIT and PSC separately as co-opposers. In any event, there
is no question that Opposers filed the notice of opposition jointly, MIT assigned each of
Opposers’ pleaded marks and registrations to PSC while this case was pending (Reel/Frame
5802/0974), and we hereby join PSC as a plaintiff/co-opposer.
3 The ESTTA coversheet for the notice of opposition asserts that the grounds for opposition
also include deceptiveness and false suggestion of a connection. However, the allegations in
the notice of opposition, including those in Paragraph 7 thereof, do not state a claim under
either ground. Cf. Bos. Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1593 (TTAB
Opposition No. 91216270
3
Reg. No. Mark Goods
2118102 INDUSTRY BY WORK WEAR (typed)
(WORK WEAR disclaimed)
all mens, women's, boys'
and girls' wearing
apparel, namely, shirts,
pants, blazers, jackets,
vests, skirts, shorts,
jeans, sweaters and T-
shirts, together with all
accessories, namely,
belts, socks, ties,
underclothing, caps and
hats4
2326074
(UNION MADE PRODUCT disclaimed)
All men's, women's, boys'
and girls' wearing
apparel, namely, shirts,
pants, blazers, jackets,
vests, skirts, shorts,
jeans, sweaters and T-
shirts, together with all
accessories, namely,
belts, socks, ties,
underclothing, caps and
hats5
2403592 INDUSTRY GIRL (typed) (GIRL
disclaimed)
All Women's and girls'
wearing apparel, namely,
shirts, pants, blazers,
jackets, vests, skirts,
shorts, jeans, sweaters
and T-shirts, together
with all accessories,
namely, belts, socks, ties,
underclothing, caps and
hats6

2008) (false suggestion) and U.S. West Inc. v. BellSouth Corp., 18 USPQ2d 1307, 1313 (TTAB
1990) (deceptiveness). Opposers did not pursue these claims, they were waived, and have not
been considered.
4 Issued December 2, 1997; renewed.
5 Issued March 7, 2000; renewed.
6 Issued November 14, 2000; renewed.
Opposition No. 91216270
4
Reg. No. Mark Goods
2446522
(SUPPLY CO. disclaimed)
All men's, women's, boys',
girls' and children's
wearing apparel namely,
shirts, pants, blazers,
jackets, vests, skirts,
shorts, jeans, sweaters
and T-shirts, together
with all accessories,
namely, belts, socks, ties,
underclothing, caps and
hats7
2723120 men's, women's, boys',
girls' and children's
wearing apparel namely,
shirts, pants, blazers,
jackets, vests, skirts,
shorts, jeans, sweaters, T-
shirts, underclothing and
lingerie, together with all
accessories, namely,
belts, socks, ties, caps and
hats8
2859863 All men's, women's, boys',
girls' and children's
wearing apparel namely,
shirts, pants, blazers,
jackets, vests, skirts,
shorts, jeans, sweaters, T-
shirts, underclothing,
underwear, lingerie,
brassieres, panties,
hosiery, pantyhose,
camisoles, sleepwear, and
footwear, together with
all accessories, namely,
belts, socks, ties, caps and
hats9

7 Issued April 24, 2001; renewed.
8 Issued June 10, 2003; renewed.
9 Issued July 6, 2004; renewed.
Opposition No. 91216270
5
In its answer, Applicant denies the salient allegations in the notice of opposition and
asserts a number of “affirmative defenses” which it did not pursue or prove at trial
and which are accordingly waived. Miller v. Miller, 105 USPQ2d 1615, 1616 n.3
(TTAB 2013); Baroness Small Estates Inc. v. Am. Wine Trade Inc., 104 USPQ2d 1224,
1225 n.2 (TTAB 2012).
I. Motion to Amend
Even though their only properly pleaded claims are likelihood of confusion and
dilution, Opposers assert in their Trial Brief, for the first time, that an additional
issue to be decided is whether Applicant had a bona fide intention to use its mark at
the time it filed the involved application. 23 TTABVUE 8, 18-20. In its Trial Brief,
Applicant “objects” to consideration of a claim of no bona fide intent to use because it
was not pleaded or tried by implied consent. 24 TTABVUE 12. In response, on the
same day they filed their Trial Reply Brief, Opposers for the first time filed a motion
for leave to amend the notice of opposition to add a claim of no bona fide intent to use,
and that motion is now contested. 28-30 TTABVUE.
The motion for leave to amend is denied. It is much too late, coming almost four
months after the trial ended, and after briefing was complete. Black & Decker Corp.
v. Emerson Elec. Co., 84 USPQ2d 1482, 1486-87 (TTAB 2007) (denying motion for
leave to amend to add claim of no bona fide intent to use filed four days after trial
ended, in large part because “applicant has had no opportunity to present evidence
on this issue to refute or explain the testimony on which opposer relies in support of
this ground”). In any event, the basis for the proposed new claim is Opposers’ own
(Mr. Rozenwald’s) testimony, regarding a trade show that took place at least eight
Opposition No. 91216270
6
months before Opposers filed their motion for leave to amend, and prior to trial. 14
TTABVUE 473-74 (Rosenwald Tr. 24-28). Opposers’ delay in seeking leave to amend
is neither explained nor excusable in the face of the prejudice Applicant would suffer
if the amendment was allowed. Black & Decker Corp., 84 USPQ2d at 1486-87. Indeed,
the trial is over. Furthermore, as Applicant points out, the alleged facts on which the
proposed new claim is based occurred well over one year after Applicant’s filing date,
and according to Opposers themselves, do not even relate to the mark in question.
That Applicant used a mark which Opposers allege is not the same as the involved
mark well over a year after filing the application to register the involved mark is
irrelevant to whether Applicant had a bona fide intention to use the involved mark
more than a year earlier.10
II. The Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
the file of Applicant’s involved application. In addition, Opposers introduced:
A Notice of Reliance (“NOR”) on: their pleaded
registrations and the file histories therefor; two of
Applicant’s uninvolved and abandoned applications to
register marks including forms of the term INDUSTRY;
the testimonial deposition of Ted Rozenwald, President of
both Opposers, and the exhibits thereto; Opposers’ initial
disclosures and answers to Applicant’s interrogatories;11

10 Opposers point to no evidence that the issue was tried by implied consent, and the record
reveals it was not.
11 Interrogatory responses may be introduced only by the “inquiring party.” Trademark Rule
2.120(k)(5). Therefore, Opposer’s responses to Applicant’s interrogatories have been given no
consideration.
Opposition No. 91216270
7
and a Baptist World Aid Australia document entitled “The
Australian Fashion Report 2015 The Truth Behind the
Barcode.” 14 TTABVUE.12

A “Supplemental” NOR13 on: Applicant’s written responses
to Opposers’ interrogatories and document requests. 21
TTABVUE.

Applicant introduced:
NOR No. 1 on third-party registrations. 17 TTABVUE.

NOR No. 2 on Opposers’ written responses to Applicant’s
document requests; and e-mails between Opposers and
Applicant. 18 TTABVUE.14

NOR No. 3 on one of Applicant’s uninvolved registrations.
19 TTABVUE.

NOR No. 4 on Internet printouts. 20 TTABVUE.

III. Standing and Priority
Opposers’ pleaded registrations, 14 TTABVUE 2-453, establish their standing. See
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
1062 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d

12 Applicant’s objection to this Report, 24 TTABVUE 11, is sustained. The document is not
self-authenticating, was not authenticated and constitutes hearsay. Cf. Trademark Rule
2.122(e) and Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031 (TTAB 2010). Even if we had
considered the report, it would not change the outcome of this case.
13 While it is not clear whether Opposers intended this NOR to be part of their case in chief
(in which case it was late-filed after the September 9, 2015 close of Opposers’ testimony
period), or to be part of their rebuttal (in which case it was prematurely filed), it could have
been introduced during Opposers’ rebuttal period. Because Applicant failed to object to this
evidence, we have considered it. Cf. Of Counsel Inc. v. Strictly of Counsel Chartered, 21
USPQ2d 1555, 1556 n.2 (TTAB 1991).
14 The e-mails are not self-authenticating, were not authenticated and constitute hearsay. Cf.
Trademark Rule 2.122(e). Therefore, we have not considered them.
Opposition No. 91216270
8
1842, 1844 (Fed. Cir. 2000). Because Applicant has not counterclaimed to cancel any
of Opposers’ registrations, priority is not at issue with respect to the marks and goods
identified therein. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974).
IV. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods or 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 differences in the marks.”). Opposers bear the burden of establishing that there
is a likelihood of confusion by a preponderance of the evidence. Cunningham, 55
USPQ2d at 1848. We consider the likelihood of confusion factors about which there
is evidence or argument, and treat the remaining factors as neutral.
A. The Goods and Services
The parties’ goods, including shirts, pants and many other items of clothing, are
in-part identical. While Applicant’s retail clothing store services are not identical to
Opposers’ clothing products, retail clothing stores and the clothing sold therein are
obviously quite closely related. It is settled that retail store services may be related
Opposition No. 91216270
9
to the goods sold therein. See e.g. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988) (BIGGS for retail grocery and general merchandise
store services likely to be confused with BIGGS for furniture); In re Thomas, 79
USPQ2d 1021, 1024 (TTAB 2006) (finding “that consumers would be likely to believe
that jewelry on the one hand and retail stores selling jewelry on the other emanate
from or are sponsored by the same source if such goods and services are sold under
the same or similar marks”); In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992)
(finding “that store services and the goods which may be sold in that store are related
goods and services”). This factor weighs heavily in favor of finding a likelihood of
confusion.
Moreover, because the goods are in-part identical, we must presume that the
channels of trade and classes of purchasers for the goods are as well. 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); Am.
Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101
USPQ2d 1022, 1028 (TTAB 2011). And Applicant’s retail clothing stores could
obviously be a potential channel of trade for Opposers’ clothing.
The legal identity of the goods, close relationship of the goods and services, and
their overlapping channels of trade and classes of purchasers not only weigh heavily
in favor of finding a likelihood of confusion, but also reduce the degree of similarity
between the marks necessary to find a likelihood of confusion. In re Viterra, 101
Opposition No. 91216270
10
USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.
Cir. 2010); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
B. Opposers’ Alleged Family of Marks
Opposers allege that they own a “family” of marks for clothing products, each of
which includes the term INDUSTRY. 23 TTABVUE 14-16.
A family of marks is a group of marks having a recognizable
common characteristic, wherein the marks are composed
and used in such a way that the public associates not only
the individual marks, but the common characteristic of the
family, with the trademark owner. Simply using a series of
similar marks does not of itself establish the existence of a
family. There must be a recognition among the purchasing
public that the common characteristic is indicative of a
common origin of the goods.… Recognition of the family is
achieved when the pattern of usage of the common element
is sufficient to be indicative of the origin of the family. It is
thus necessary to consider the use, advertisement, and
distinctiveness of the marks, including assessment of the
contribution of the common feature to the recognition of the
marks as of common origin.

J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891-
92 (Fed. Cir. 1991) (internal citations omitted). More specifically,
in order to establish ownership of a family of marks it must
be shown by competent evidence “first, that prior to the
entry into the field of the opponent’s mark, the marks
containing the claimed ‘family’ feature or at least a
substantial number of them, were used and promoted
together by the proponent in such a manner as to create
public recognition coupled with an association of common
origin predicated on the ‘family’ feature; and second, that
the ‘family’ feature is distinctive (i.e. not descriptive or
highly suggestive or so commonly used in the trade that it
cannot function as the distinguishing feature of any party’s
mark).”

Opposition No. 91216270
11
Marion Labs. Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215, 1218-19 (TTAB
1988) (quoting Land-O-Nod Co. v. Paulison, 220 USPQ 61, 65-66 (TTAB 1983)). See
also TPI Holdings Inc. v. Trailertrader.comLLC, 126 USPQ2d 1409, 1420 (TTAB
2018).
Here, the substantive entirety of Opposers’ argument that they own a family of
INDUSTRY marks is as follows: “Opposers promote the family as shown by the
dedicated websites (manhattaninc.com and the branded website at
industryclothing.com) and marketing efforts via representatives, trade shows and the
like, as fully testified to by Opposers’ president. (Rozenwald Dep. pp. 16-22).” 23
TTABVUE 16. The only portions of the cited testimony which reference use of
multiple INDUSTRY marks follow:

Opposition No. 91216270
12

14 TTABVUE 471-72.
This testimony falls far short of establishing that Opposers own a family of
INDUSTRY marks. While Mr. Rozenwald makes clear that “hangtags,” “labels” and
“the branding on the garment[s]” all display the term INDUSTRY, it is far from clear
whether “at least a substantial number of” the pleaded INDUSTRY marks “were used
… together” on any particular item of clothing, or whether only one mark was used
on each item of clothing. Furthermore, there is absolutely no testimony or other
evidence that any of the pleaded INDUSTRY marks used on hangtags, labels,
“branding” or elsewhere were “promoted together,” much less “in such a manner as
to create public recognition coupled with an association of common origin predicated
on the ‘family’ feature.” Marion Labs., 6 USPQ2d at 1218. Similarly, the testimony
about “trade shows,” “social media,” “branding within the retail environment” and
Internet use does not address whether “at least a substantial number” of the specific,
pleaded INDUSTRY marks were used together, or promoted together, during trade
shows, on social media or the Internet or in the retail environment. The only evidence
Opposition No. 91216270
13
of record regarding Opposers’ websites15 does not show use of multiple INDUSTRY
marks:

20 TTABVUE 5. In short, if “at least a substantial number” of the pleaded
INDUSTRY marks were used together in a “corporate showroom,” on clothing, in
social media or elsewhere, this is not clear from the record, nor is there any evidence
that a substantial number of the pleaded INDUSTRY marks were promoted together.

15 Mr. Rozenwald mentioned two website URLs during his testimony, but this is not sufficient
to make the websites of record. Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121
USPQ2d 1477, 1188 n.59 (TTAB 2017); In re HSB Solomon Associates LLC, 102 USPQ2d
1269, 1274 (TTAB 2012); In re Planalytics Inc., 70 USPQ2d 1453, 1458 (TTAB 2004)
(“Information on websites is transitory and subject to change at any time at the owner’s
discretion.”).
Opposition No. 91216270
14
There is no evidence of public recognition, or “an association of common origin”
predicated on the shared term INDUSTRY.
Neither Opposers’ mere intention to create a family of marks, nor their ownership
of multiple registrations containing the family term, are sufficient in and of
themselves to establish that Opposers own a family of marks. Am. Standard Inc. v.
Scott & Fetzer Co., 200 USPQ 457, 461 (TTAB 1978): Consol. Foods Corp. v. Sherwood
Med. Indus. Inc., 177 USPQ 279, 282 (TTAB 1973); Witco Chem. Co., Inc. v.
Chemische Werke Witten G.m.b.H., 158 USPQ 157, 160 (TTAB 1968). In fact, where
a party arguing that it owns a family of marks fails to introduce testimony or other
evidence on the specific question of whether consumers recognize the family, the
party is typically unable to prove ownership of a family of marks. Colony Foods, Inc.
v. Sagemark, Ltd., 735 F.2d 1336, 222 USPQ 185, 186 (Fed. Cir. 1984) (“Colony failed
to establish, for example by a survey, that the term HOBO is used by the public in
connection with restaurant services to identify Colony exclusively”); White Heather
Distillers Ltd. v. The American Distilling Co., 200 USPQ 466, 470 (TTAB 1978) (“not
one shred of evidence has been submitted by opposer to show that the marks claimed
to comprise the ‘family’ or any distinctive feature of such marks have become known
to the relevant segment of the purchasing public as a result of sales and promotional
activities so as to create common exposure, and hence an association of common
ownership”); Am. Standard, 200 USPQ at 461; Champion Int’l Corp. v. Plexowood,
Inc., 191 USPQ 160, 162 (TTAB 1976) (“There is nothing in evidence to show the
nature and extent of use of opposer’s other ‘FLEX’ prefixed marks … much less that
Opposition No. 91216270
15
the various marks … have become familiar or known to the relevant segment of the
purchasing public …. This purchaser recognition factor, the salient consideration
necessary to achieve a ‘family of marks’, is noticeably lacking in this case.”). See also
Gen. Cable Corp. v. Republic Wire and Cable Corp., 327 F.2d 1019, 140 USPQ 487,
489 (CCPA 1964).
Furthermore, evidence must establish the extent of public exposure to the alleged
family. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1194 (TTAB 2007) (“None
of this material is evidence of public exposure to the marks, or in any event, of the
extent of public exposure to such marks.”). Evidence must also establish that
Opposers’ use of a substantial number of pleaded INDUSTRY marks “create the
commercial impression that [INDUSTRY] is the common feature of a family of
trademarks.” See Christian Broad. Network Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560,
1566 (TTAB 2007). It is not enough to merely use INDUSTRY with additional terms,
such as GIRL, UNION MADE PRODUCT or SUPPLY CO. Rather, Opposers must
show that their INDUSTRY marks will be recognized as commonly owned because of
that term. Eveready Battery Co., Inc. v. Green Planet Inc., 91 USPQ2d 1511, 1515
(TTAB 2009).16

16 Even in cases where the owner of multiple marks with a shared feature has significantly
higher sales than Opposers in this case, the failure to provide evidence of consumer
recognition of the alleged “family” of marks, or promotion of the members of the family
together, generally results in a finding that ownership of a family of marks was not
established. 14 TTABVUE 475-76 (Rozenwald Tr. 32-33); Polaroid Corp. v. Am. Screen
Process Equip. Co., 166 USPQ 151 (TTAB 1970); Moore Bus. Forms, Inc. v. Rogersnap Bus.
Forms, Inc., 163 USPQ 303 (TTAB 1969); Witco Chem., 158 USPQ at 157.

Opposition No. 91216270
16
Finally, as discussed immediately below, the alleged family term, INDUSTRY, is
conceptually and commercially weak for clothing. This reduces the likelihood that
even vigorous promotion would result in the requisite customer recognition. TPI
Holdings, 126 USPQ2d at 1428 (“we find –TRADER formative marks are so
commonly used by others that the shared –TRADER element in Petitioner’s marks
does not constitute a distinguishing feature. Petitioner cannot lay claim to a family
of marks based on the common trait in its marks, despite the evidence showing
Petitioner’s efforts to establish such a family of marks”); Marion Labs., 6 USPQ2d at
1218; Am. Standard, 200 USPQ at 461-62 (“it is obvious that the nature and
character of the claimed ‘family’ feature must be considered in this evaluation for a
‘family’ concept is bottomed on recognition of the common feature as the
distinguishing feature of each mark; and a descriptive or highly suggestive portion of
a composite mark is hardly likely to be the significant and origin-indicating feature”);
Witco Chem., 158 USPQ at 160. See also Servo Corp. of Am. v. Servo-Tek Prods. Co.,
Inc., 289 F.2d 955, 129 USPQ 352, 353 (CCPA 1961).
C. The Relative Strength of Opposers’ Pleaded Marks
Opposers allege not just that their pleaded INDUSTRY marks are strong, but that
they are famous for purposes of dilution. The evidence is to the contrary; Opposers’
marks are relatively weak, conceptually and commercially.
Indeed, Applicant has established that third-party marks and trade names
including variations of the term INDUSTRY are commonly used for clothing products
which fall within the parties’ identifications of goods. For example:
Opposition No. 91216270
17

Opposition No. 91216270
18

Opposition No. 91216270
19

Opposition No. 91216270
20

Opposition No. 91216270
21

20 TTABVUE 7, 9-14, 16, 18.
While Applicant has not presented specific evidence concerning the extent and
impact of these uses, it nevertheless presented “evidence of these marks being used
in internet commerce for clothing.” Jack Wolfskin Ausrustung Fur Draussen GmbH
& Co. KGAA v. New Millenium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129,
1136 (Fed. Cir. 2015); see also Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98
USPQ2d 1066, 1072 (TTAB 2011) (Internet printouts “on their face, show that the
public may have been exposed to those internet websites and therefore may be aware
of the advertisements contained therein”). We find this evidence “powerful on its face.
The fact that a considerable number of third parties use similar marks was shown,”
Juice Generation, Inc. v. GS Ents., LLC, 794 F.2d 1334, 115 USPQ2d 1671, 1674 (Fed.
Opposition No. 91216270
22
Cir. 2015), and Opposers did not contradict this showing with evidence. See also In re
Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1155 (TTAB 2012); In re Broadway
Chicken, Inc., 38 USPQ2d 1559, 1565-66 (TTAB 1996) (“Evidence of widespread third-
party use, in a particular field, of marks containing a certain shared term is
competent to suggest that purchasers have been conditioned to look to the other
elements of the marks as a means of distinguishing the source of goods or services in
the field.”); Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477, 1479
(TTAB 1987).17
Applicant also introduced a large number of third-party use-based Principal
Register registrations of INDUSTRY marks for clothing products identical to or
encompassed by those identified in Opposers’ pleaded registrations,18 including:
Mark Reg.
No.
Mark Reg.
No.

3755031 CAPTAINS OF INDUSTRY 3686552
COTTAGE INDUSTRY 4037356 INDUSTRY 654 3576883
INDUSTRY WHORE 4531643 LAUNDRY INDUSTRY 1969126
305 INDUSTRY
(INDUSTRY disclaimed)
4267801 INDUSTRY XPERIENCE
(INDUSTRY disclaimed)
4793878
POUND SAND INDUSTRY 4068398 STARK INDUSTRIES 4820547

17 Opposers’ sales of “Industry branded” goods, while not insignificant, are at the same time
not sufficient to establish fame or strength. 14 TTABVUE 475-76, 496 (Rozenwald Tr. 32-33,
114). Moreover, to the extent Opposers provided specific figures, they are not broken down
by particular mark or particular goods, and we therefore have no information about the levels
of sales or advertising of the goods sold under any of Opposers’ particular pleaded marks.
18 Several of the third-party registrations appear to be for marks shown to be in use by
Applicant’s Internet evidence.
Opposition No. 91216270
23
Mark Reg.
No.
Mark Reg.
No.
INDUSTRY 9 4238133 SALATHIEL’S DIRTY
WHITE INDUSTRIES
(INDUSTRIES disclaimed)
4809174
INDUSTRY HORROR 4341474 MISLED INDUSTRIES
(INDUSTRIES disclaimed)
4805085
CHALC INDUSTRY
(INDUSTRY disclaimed)
3073119

(INDUSTRIES disclaimed)
4835814

3826429 HOMEGROWN
INDUSTRIES
(INDUSTRIES disclaimed)
4761209
REPLICA INDUSTRY 3871671

(INDUSTRIES disclaimed)
4717560

(INDUSTRIES disclaimed)
4662246 KLOUD INDUSTRIES 4271382
ALPHA INDUSTRIES
(INDUSTRIES disclaimed)
4643776 HOLLUX INDUSTRIES
(INDUSTRIES disclaimed)
4261038

(IRISH and INDUSTRIES
disclaimed)
4618430

(INDUSTRIES disclaimed)
4467101
BENT INDUSTRIES
(INDUSTRIES disclaimed)
4608467 SIDEWALK INDUSTRIES
(INDUSTRIES disclaimed)
4451934
Opposition No. 91216270
24
Mark Reg.
No.
Mark Reg.
No.

CHAMBER INDUSTRIES
(INDUSTRIES disclaimed)
4596499 GNAR INDUSTRIES
(INDUSTRIES disclaimed)
4217451
TAINTED INDUSTRIES
(INDUSTRIES disclaimed)
4532960

(INDUSTRIES disclaimed)
4265573
ADDICTED INDUSTRIES
(ADDICTED disclaimed)
4637798 KNUCKLEUP
INDUSTRIES
(INDUSTRIES disclaimed)
4330209
UNEVEN INDUSTRIES 4480568
(INDUSTRIES disclaimed)
4283658
BATTLE TEK INDUSTRIES
(INDUSTRIES disclaimed)
4461427 GATS & TATS
INDUSTRIES
(INDUSTRIES disclaimed)
4111378
BLOCK INDUSTRIES 4456487 ABSTERGO INDUSTRIES
(INDUSTRIES disclaimed)
4127977
OBSCURE INDUSTRIES
(INDUSTRIES disclaimed)
3624250 DOIN DIRT INDUSTRIES
(INDUSTRIES disclaimed)
4376893
B-0-X INDUSTRIES
CLOTHING
(INDUSTRIES CLOTHING
disclaimed)
4390760

(INDUSTRIES disclaimed)
4226899

(INDUSTRIES disclaimed)
4059403

(INDUSTRIES disclaimed)
4116041
FOOD GANG INDUSTRIES
(INDUSTRIES disclaimed)
4176500 BUZZSAW INDUSTRIES
(INDUSTRIES disclaimed)
4046535
Opposition No. 91216270
25
Mark Reg.
No.
Mark Reg.
No.

3973099

(INDUSTRIES disclaimed)
3890138

(INDUSTRIES disclaimed)
3825286

(INDUSTRIES disclaimed)
4423440
BROOKLYN INDUSTRIES
(INDUSTRIES disclaimed)
3691224 SECTION 8 INDUSTRIES
(INDUSTRIES disclaimed)
3811658
SIX GEAR INDUSTRIES
(INDUSTRIES disclaimed)
3764411 LEWD INDUSTRIES
(INDUSTRIES disclaimed)
3962972
PETROL INDUSTRIES 4264909 CRWWND INDUSTRIES
(INDUSTRIES disclaimed)
3912230

(INDUSTRIES disclaimed)
3946802

4013010
LUCKY PUNK INDUSTRIES
(INDUSTRIES disclaimed)
3810391 MOYAINDUSTRIES
(INDUSTRIES disclaimed)
3935054

(INDUSTRIES disclaimed)
3742150

(INDUSTRIES disclaimed)
3736186
CHOCOLATE INDUSTRIES
(INDUSTRIES disclaimed)
3789515 COVETED INDUSTRIES
(INDUSTRIES disclaimed)
3835763
Opposition No. 91216270
26
Mark Reg.
No.
Mark Reg.
No.

(INDUSTRIES disclaimed)
3660819

(INDUSTRIES disclaimed)
3721207
COUNTERFEIT
INDUSTRIES
(INDUSTRIES disclaimed)
3622650 FIGHT INDUSTRIES
(INDUSTRIES disclaimed)
3747903

(INDUSTRIES disclaimed)
3709966

(INDUSTRIES disclaimed)
3716341

3640867 AFTER CLASS
INDUSTRIES
(INDUSTRIES disclaimed)
3747318
WARP SPEED INDUSTRIES
(INDUSTRIES disclaimed)
3640716

See 17 TTABVUE 1-284.
These third-party registrations tend to “show the sense in which [the term
INDUSTRY] is used in ordinary parlance.” Juice Generation, 115 USPQ2d at 1675
(quoting 2 McCarthy on Trademarks and Unfair Competition § 11:90 (4th ed. 2015))
(“‘[a] real evidentiary value of third party registrations per se is to show the sense in
which … a mark is used in ordinary parlance’). ‘Third party registrations are relevant
to prove that some segment of the composite marks which both contesting parties use
has a normally understood and well recognized descriptive or suggestive meaning,
Opposition No. 91216270
27
leading to the conclusion that that segment is relatively weak.” Id. In short,
INDUSTRY and variations thereof are minimally distinctive in this field. Tektronix,
Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976);
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USQ2d 1458, 1471 (TTAB
2014).
Furthermore, while we recognize that none of the 75 registrations listed above
establish “the specific extent and impact” of any actual use of the registered marks,
and that some of the registrations have likely been cancelled since the trial ended,
the sheer volume of registrations here is large enough that this evidence, in
combination with the third-party use evidence, is “powerful on its face.” See Jack
Wolfskin, 116 USPQ2d at 1136 and Juice Generation, 115 USPQ2d at 1674-75. It
would be improper for us to “too quickly dismiss[] the significance of this evidence.
Jack Wolfskin, 116 USPQ2d at 1136; see also Juice Generation, 115 USPQ2d at 1675
(improper in analogous circumstances to insist “on specifics as to the third-party
use”). We should also point out that in addition to the 75 third-party Principal
Register registrations listed above, Applicant introduced eight Supplemental
Register registrations for INDUSTRY marks for clothing: REPLICA INDUSTRY
(Reg. No. 3871671); (Reg. No. 4565833) (INDUSTRIES disclaimed);
IMPERFUCT INDUSTRIES (Reg. No. 4416181) (INDUSTRIES disclaimed);
KALIFORNIA INDUSTRIES (Reg. No. 4196092); VELVET INDUSTRIES (Reg. No.
3735493) (INDUSTRIES disclaimed); STARK INDUSTRIES (Reg. No. 4127017)
(INDUSTRIES disclaimed); FIGHT INDUSTRIES (Reg. No. 3747903)
Opposition No. 91216270
28
(INDUSTRIES disclaimed); and SIN CITY INDUSTRIES (Reg. No. 3779654)
(INDUSTRIES disclaimed).19 By virtue of being on the Supplemental Register, these
registrations constitute additional evidence that INDUSTRIES is not particularly
distinctive in this field. Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252,
1255-56 (TTAB 2012); Perma Ceram Enters. Inc. v. Preco Indus., Ltd., 23 USPQ2d
1134, 1137 n.11 (TTAB 1992). Moreover, out of the total of 83 Principal and
Supplemental Register registrations identified herein, 60 include disclaimers of
INDUSTRY or INDUSTRIES, also evidencing that these terms have been considered
nondistinctive. See Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107
USPQ2d 1750, 1762 (TTAB 2013), aff’d mem., 565 Fed. Appx. 900 (Fed. Cir. 2014)
and Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc. 89 USPQ2d 1844, 1851
(TTAB 2008)
In short, the widespread third-party use and registration of
INDUSTRY/INDUSTRIES marks for clothing establishes that this element of
Opposers’ pleaded marks is both conceptually and commercially weak. We find that
Opposers have not established ownership of a family of marks in which INDUSTRY
or variations thereof are the family component.

19 In addition, Applicant owns a Supplemental Register registration, albeit not use-based,
for RAGTRADER INDUSTRIE, with INDUSTRIE disclaimed, for clothing goods identical to
those identified in Opposers’ pleaded registrations (Reg. No. 4486583). 19 TTABVUE 5-6.
Opposition No. 91216270
29
D. Similarity of the Marks
Because Opposers have not established ownership of a family of marks, we must
determine whether there is a likelihood of confusion between Applicant’s mark and
any one of Opposers’ pleaded marks. Citigroup Inc. v. Capital City Bank Grp., Inc.,
94 USPQ2d 1645, 1657 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed.
Cir. 2011) (“opposer has not established that it had a family of marks prior to
applicant’s first use of its mark. Therefore, the likelihood of confusion analysis will
be based solely on the use of the individual marks in opposer’s registrations”). Here,
if we find confusion likely between the mark in Opposers’ Registration No. 2723120
(the “‘120 Registration”), shown on the left, and Applicant’s involved mark, shown
below on the right

we need not consider the likelihood of confusion between Applicant’s mark and
Opposers’ other pleaded marks. On the other hand, if we find no likelihood of
confusion between Applicant’s mark and the mark in Opposer’s pleaded ‘120
Registration, we would not find confusion between Applicant’s mark and Opposers’
other pleaded marks, which are less similar to Applicant’s mark in overall commercial
impression. In re Max Capital Grp., 93 USPQ2d at 1245. We therefore focus on the
mark in the ‘120 Registration.
Opposition No. 91216270
30
We begin by accepting Opposers’ argument that the doctrine of foreign equivalents
should apply to the term INDUSTRIE in Applicant’s mark. That term is the French
word for “industry” (and is pronounced the same). 14 TTABVUE 473 (Rozenwald Tr.
23-24); 21 TTABVUE 44 (Applicant’s Response to Int. No. 29). Moreover, “French is
a common foreign language spoken by an appreciable segment of the population.” In
re Thomas, 79 USPQ2d at 1024. Thus we find that this element of Applicant’s mark
is identical to the literal portion of Opposers’ mark in meaning and sound, and almost
identical in appearance.20 Were this the only element of Applicant’s mark, we would
find it confusingly similar to Opposers’ mark, notwithstanding the conceptual and
commercial weakness of Opposers’ mark.
However, we must consider the marks “in their entireties as to 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, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). When we do so, the many differences
between the marks easily outweigh their similarity.
Indeed, the term INDUSTRIE in Applicant’s mark is but one of its 12 literal terms,
all of which are disclaimed. It is subsidiary to at least the term GARMENT MAKERS,
which precedes (appears above) it and is written in bold type, while INDUSTRIE is

20 Even if we did not apply the doctrine of foreign equivalents, we would find INDUSTRIE
and INDUSTRY quite similar.
Opposition No. 91216270
31
not. Furthermore, the design elements of the two marks are quite different, having
essentially nothing in common.21
While the term INDUSTRIE is more prominent than some of the literal elements
of Applicant’s mark, it is far from prominent enough for confusion to occur, when
consumers are so used to seeing the terms INDUSTRY and INDUSTRIES used by so
many third-parties which offer identical clothing products. In short, Applicant’s mark
will be perceived as just one more of the many INDUSTRY/INDUSTRIES marks for
clothing. “The weaker an opposer’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.
See also Sure-Fit Prods. Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295,
297 (CCPA 1958); Couch/Braunsdorf, 110 USPQ2d at 1476-78 (finding, based on this
principle, “that the mark PERKSPOT is sufficiently different from the marks PERKS
and PERKSCARD to avoid a likelihood of confusion” even though the marks were
used for legally identical services); Plus Prods. v. Natural Organics, Inc., 204 USPQ

21 As Applicant points out, Opposers argued during prosecution of their application to
register that their mark was unlikely to be confused with the registered marks
or INDUSTRYGEAR.COM for in-part identical clothing products and retail
clothing store services, respectively, because “the marks share little or no similarity insofar
as the elements of appearance, sound, connotation and commercial impression are
concerned.” 14 TTABVUE 367, 429. See generally Juice Generation, 115 USPQ2d at 1675
(“Although estoppel based on prosecution of an application has played a more limited role for
trademarks than for patents … we have recognized that such comments have significance as
‘facts “illuminative of shade and tone in the total picture confronting the decision maker.’’’”)
(citations omitted).

Opposition No. 91216270
32
773, 779-80 (TTAB 1979) (allowing registration of NATURE’S PLUS for vitamins
despite prior registration of PLUS for vitamins given coexistence of a number of
registrations containing PLUS for similar goods). As the Federal Circuit stated in
analogous circumstances:
Jack Wolfskin’s evidence demonstrates the ubiquitous use
of paw prints on clothing as source identifiers. Given the
volume of evidence in the record, consumers are
conditioned to look for differences between paw designs
and additional indicia of origin to determine the source of
a given product. Jack Wolfskin’s extensive evidence of
third-party uses and registrations of paw prints indicates
that consumers are not as likely confused by different,
albeit similar looking, paw prints.

Jack Wolfskin, 116 USPQ2d at 1136. This factor weighs heavily against finding a
likelihood of confusion.
E. Balancing the Factors
Although the goods and services and channels of trade are identical or quite
closely related, and there is therefore a lower threshold for establishing similarity
between the marks and, ultimately, likelihood of confusion, the marks in this case
are too different, and the single term they have in common is too weak, for confusion
to be likely.
It seems both logical and obvious to us that where a party
chooses a trademark which is inherently weak, he will not
enjoy the wide latitude of protection afforded the owners of
strong trademarks. Where a party uses a weak mark, his
competitors may come closer to his mark than would be the
case with a strong mark without violating his rights. The
essence of all we have said is that in the former case there
is not the possibility of confusion that exists in the latter
case.

Sure-Fit Prods., 117 USPQ at 297. Opposers’ Section 2(d) claim is dismissed.
Opposition No. 91216270
33
V. Dilution
As indicated in connection with Opposers’ likelihood of confusion claim, Opposers
failed to establish that their marks are strong, which a fortiori means that their
marks are not famous for dilution purposes. Coach Servs. Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1724 (Fed. Cir. 2012). This precludes a
finding of dilution. 15 U.S.C. § 1125(c)(1); Coach Servs., 101 USPQ2d at 1723-24 (“to
prevail on a dilution claim under the TDRA, a plaintiff must show that: (1) it owns a
famous mark that is distinctive …”); Omega SA (Omega AG) (Omega Ltd.) v. Alpha
Phi Omega, 118 USPQ2d 1289, 1296 (TTAB 2016). Accordingly, Opposers’ Section
43(c) claim is also dismissed.

Decision: The opposition is dismissed.