Mansell Construction Ltd.v.Susan Lu

Trademark Trial and Appeal Board

Aug 24, 2011

No. 91184771 (T.T.A.B. Aug. 24, 2011)

Mailed: August 24, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Mansell Construction Ltd.
v.
Susan Lu
_____

Opposition No. 91184771
to application Serial No. 77219548
filed on June 29, 2007
_____

James Michael Faier of Faier & Faier P.C. for Mansell
Construction Ltd.

Bradley M. Stohry of Ice Miller L.L.P. for Susan Lu
______

Before Walters, Bergsman, and Wolfson, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Susan Lu (“applicant”) filed an intent-to-use
application for the mark BEND SPORT COUTURE and design,
shown below:

THIS DECISION IS NOT A
PRECEDENT OF THE T.T.A.B.
2

for various items of “clothing,”1 in Class 25. No claim is
made to the exclusive right to use “SPORT COUTURE” apart
from the mark as shown.
Mansell Construction Ltd. (“opposer) has opposed the
registration of applicant’s mark on the grounds of priority
of use and likelihood of confusion under Section 2(d) of
the Trademark Act of 1946, 15 U.S.C. §1052(d).2
Specifically, opposer alleges prior use of the marks BENDY
and BENDYGIRL for women’s sports clothing, and that it is
the owner of applications for the marks BENDY (Serial Nos.
78342438 and 78529144) and BENDYGIRL (Serial No. 78342445),
for various goods and services, including clothing.
Opposer further alleges that applicant’s mark so resembles

1Application Serial No. 77219548; for “Clothing, namely, pants,
shirts, t-shirts, tank tops, tuniques, shorts, skirts, blouses,
slacks, jackets, parkas, coats, dresses, bathing suits, sweaters,
sweat shirts, neck scarves, ties, hosiery, socks and slippers;
footwear; headgear, namely, head bands, caps, hats and head
scarves; leather and imitation leather clothing, namely, coats,
parkas, jackets, blouses, skirts, t-shirts, tank tops, shorts,
pants, shirts, tuniques, footwear, slippers, head bands, caps,
hats and head scarves, sweat shirts and scarves; fur clothing,
namely, t-shirts, tuniques, sweaters, sweat shirts, jackets,
coats, fur hats and fur scarves; undergarments, namely,
underwear, bras, support bras and jog bras; gloves; belts;
textile nappies.”
2 In addition, opposer alleged that applicant’s mark is
disparaging and falsely suggests a connection with opposer under
Trademark Act § 2(a), 15 U.S.C. § 1052(a); and that applicant’s
mark is merely descriptive under Trademark Act § 2(e)(1), 15
U.S.C. § 1052(e)(1). Opposer did not pursue these claims at
trial or present arguments with regard thereto in its brief.
Accordingly, they are deemed waived. See SmithKline Beecham
Corp. v. Omnisource DDS, LLC, 97 USPQ2d 1300, 1301 n. 2 (TTAB
2010).
3

opposer’s marks as to be likely to cause confusion. Both
opposer’s application for the mark BENDY that includes
Class 25 and its application for the mark BENDYGIRL were
filed on December 17, 2003 based in part on opposer’s
intent to use the marks in commerce.3 In addition, opposer
filed its applications with claims to filing date priority
under Section 44(d) based on applications filed in the
United Kingdom on December 16, 2003. The United Kingdom
applications subsequently issued and opposer has retained
Section 44(e) as a filing basis.
Applicant denied the salient allegations in the notice
of opposition. After trial, both sides filed trial briefs
and opposer filed a reply brief.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b).
The parties stipulated to admit “true and correct”
copies of the following into evidence:4
1. A definition of “bendy” from www.dictionary.com;

3Inasmuch as Serial No. 78529144 for the mark BENDY for goods in
Classes 28 and 35 covers goods that are less similar to
applicant’s goods than those of Serial No. 78342438, we will
concentrate our discussion of the issue of likelihood of
confusion on the marks most similar to that of applicant, namely,
opposer’s mark BENDY in Class 25 and BENDYGIRL in Class 25.
4 Stipulation filed April 15, 2010.
4

2. Application file histories for opposer’s trademark
applications, Serial Nos. 78342438 (BENDY); 78343445
(BENDYGIRL); 78529144 (BENDY); and 77009000 (for BENDY and
design);5
3. Print-outs from applicant’s website
(www.bendsportcouture.com) and opposer’s website
(www.bendy.com/indexold);
4. Copies of “photographs and publications of a
sample of opposer’s goods using the mark BENDY”;
5. Opposer’s U.K. trademark registrations for BENDY
and BENDYGIRL;
6. Opposer’s responses to applicant’s
interrogatories;
7. Opposer’s responses to applicant’s first set of
requests for production of documents; and
8. Applicant’s responses to opposer’s first set of
interrogatories and requests for production of documents.
Opposer also introduced the testimony deposition on
written questions of Ian Mansell, its director and owner,
with attached exhibits.
Applicant introduced, under notice of reliance, copies
of documents identified in the parties’ stipulation (which

5Application Serial No. 77009000 was not pleaded in the notice
of opposition and has no bearing on our decision.

5

duplicate those submitted by opposer), a copy of “the UK
Intellectual Property Office’s records relating to UK
Trademark No. M900775 that applicant obtained for the mark
BEND SPORTS COUTURE,” and copies of third-party
registrations for marks in the clothing class that include
the word “bend.”
Standing
The evidence shows that opposer has used its marks in
the United States, and its likelihood of confusion claim is
not frivolous. In addition, while opposer’s trademark
applications for the marks BENDY and BENDYGIRL have not yet
registered, its applications are senior to applicant’s
application and provide opposer with an earlier
constructive use date than the constructive use date
applicant’s application provides to applicant. See the
discussion below.
This is sufficient to demonstrate that opposer has a
real interest in this proceeding and a reasonable belief
that it would be damaged by registration of applicant’s
mark. Therefore, opposer has standing.Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
189 (CCPA 1982).
6

Priority
To establish priority on a likelihood of confusion
claim brought under Trademark Act Section 2(d), a party
must prove that, vis-à-vis the other party, it owns “a mark
or trade name previously used in the United States … and
not abandoned….” Trademark Act § 2, 15 U.S.C. § 1052. A
party may establish its own prior proprietary rights in a
mark through ownership of a prior registration, actual use,
or through use analogous to trademark use, such as use in
advertising brochures, trade publications, catalogues,
newspaper advertisements and Internet web sites, which
create a public awareness of the designation as a trademark
identifying the party as a source. See Trademark Act §§
2(d) and 45, 15 U.S.C. §§ 1052(d) and 1127; T.A.B. Systems
v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir.
1996), vacating Pactel Teletrac v. T.A.B. Systems, 32
USPQ2d 1668 (TTAB 1994); and Otto Roth & Co. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981).
Priority is an issue in this case because opposer does not
own an existing registration upon which it can rely for
purposes ofa Section 2(d) likelihood of confusion analysis.
Cf. King Candy Co., Inc. v. Eunice King's Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
7

Applicant is entitled to rely upon a presumption of
use of her mark BEND SPORT COUTURE for clothing articles as
of June 29, 2007, the filing date of her application for
registration. Applicant may also rely on use analogous to
trademark use to prove her priority.Dyneer Corp. v.
Automotive Products plc,37 USPQ2d 1251 (TTAB 1995).
However, based on our review of the evidence, applicant has
not shown actual use or use analogous to trademark use
prior to the June 29, 2007 filing date of her application.
Applicant submitted, under notice of reliance and
pursuant to the parties’ stipulation, a copy of a document
entitled “Sales Analysis by Retail Product” for items sold
to “Cornelia Spa” in New York. While the document includes
the field: “date range: 12/11/2006 – 1/11/2008,” the
earliest date that can be ascribed to any listed item is
January 11, 2008, because none of the listed items include
actual sales dates. Thus, applicant has not shown that she
used her mark prior to June 29, 2007. See EZ Loader Boat
Trailers, Inc. v. Cox Trailers, Inc., 213 USPQ 597, 598 n.5
(TTAB 1982) (documentary evidence showed first use in 1977,
the month and day were unknown, therefore, the Board could
not presume any date earlier than the last day of the
proved period). See also Osage Oil & Transportation, Inc.
v. Standard Oil Co., 226 USPQ 905, 911 n.22 (TTAB 1985)
8

(evidence established first use in 1968-1969, therefore
December 31, 1969 is date of first use).
As to applicant’s pre-sales activity, the parties have
supplied, pursuant to their stipulation, “print outs from
applicant’s website at www.bendsportcouture.com.”6 The
earliest of these is Exhibit 6.9.5, dated November 7, 2006.
The print out, however, does not show use of the mark. The
only other print out that bears a date, Exhibit 6.1, is a
copy of pages from the magazine Elle, dated “Mars 2007.”7
Although the goods appear on the Elle pages together with
pricing information, the trademark does not appear. In
addition, applicant identified three advertisements that
were sent to approximately 10 U.S. retailers;in answer to
opposer’s Interrogatory No. 5, she states that one of the
advertisements was distributed “beginning May 18, 2007.”8
Taken cumulatively, these print outs and advertisement
do not show that the public would have become aware of
applicant’s mark in any meaningful way and are clearly
insufficient pre-sales use to qualify as use analogous to
trademark use. See T.A.B. Systems, 37 USPQ2d at 1881
(“Such an ‘analogous use’ opposition can succeed, however,

6Stipulation to Admit Materials into Evidence, paragraph 9.
7 There is possibly a day of the month included in the date, but
it is too small to be legible.
8 Applicant’s Response to Opposer’s First Set of Interrogatories
and Requests for Production of Documents, p. 6.
9

only where the analogous use is of such a nature and extent
as to create public identification of the target term with
the opposer’s product or service.”).The earliest date upon
which applicant is entitled to rely for priority purposes
is the filing date of her application, contingent upon its
registration.
Given these findings, opposer’s burden is to prove by
a preponderance of evidence that it used its mark in the
United States prior to June 29, 2007. Because applicant
has not alleged that opposer has abandoned its mark,
opposer need not show continuous use. SeeWest Florida
Seafood Inc. v. Jet Restaurant, Inc., 31 F.3d 1122, 31
USPQ2d 1660, 1665 (Fed. Cir. 1994) (“The governing statute
does not speak of ‘continuous use,’ but rather of whether
the mark or trade name has been ‘previously used in the
United States by another and not abandoned.’” (emphasis in
original)).
A. PRIORITY BASED ON OPPOSER’S APPLICATIONS.
Because the effective filing dates of opposer’s
applications for the marks BENDY and BENDYGIRL (12/16/03)
pre-date applicant’s filing date of June 29, 2007, opposer
is entitled to rely upon the filing dates for priority
purposes, contingent upon the ultimate issuance of a
registration of at least one of its pleaded applications.
10

As we explained in Larami Corp. v. Talk to Me Programs
Inc.:
Finally, we want to emphasize that, although in
Zirco9 (as in the case now before us) it was the
applicant for registration -- that is, the party
in the position of defendant -- who sought to
rely on the constructive use provisions of
Section 7(c) to defeat the opposer’s priority
claim, a party in the position of opposer may,
likewise, rely on the constructive use provisions
of Section 7(c) to establish its priority for
purposes of Section 2(d). An opposer may rely on
Section 7(c) to establish priority if it owns a
registration for the mark it is asserting under
Section 2(d) or if it has filed an application
for registration of that mark. We might put the
matter more simply by saying that in proceedings
before the Board the constructive use provisions
of Section 7(c) may be used both defensively and
offensively. (Of course, as we have noted,
Section 7(c) provides that any judgment entered
in favor of a party relying on constructive use -
- whether that party is in the position of
plaintiff or defendant in a Board proceeding --
is contingent upon the ultimate issuance of a
registration to that party.)

Larami Corp. v. Talk to Me Programs Inc., 36 USPQ2d 1840,
1845 n.7 (TTAB 1995); see also, Continental Specialties
Corp. v. Continental Connector Corp., 192 USPQ 449, 451
(TTAB 1976)(opposer’s reliance for priority on filing date
of its own pendingapplication is not evidence of proof of
use until it matures into a registration).
B. PRIORITY BASED ON OPPOSER’S FIRST USE OF ITS MARKS.

9Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d
1542 (TTAB 1991).

11

Should none of opposer’s pleaded applications issue to
registration, opposer will have to rely upon actual prior
use of its marks in the United States for priority. In
this regard, opposer may show either actual prior use of
its marks or rely upon “use analogous to trademark use,”
which use must be not only prior to the earliest date upon
which applicant may rely, but which must also have been
sufficient to create a public awareness of the marks prior
to such date. See Herbko Intern., Inc. v. Kappa Books,
Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002);
Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317,
1320, 209 USPQ 40, 43 (CCPA 1981).
To this end, opposer’s witness, Mr. Mansell, testified
that “we the opposers have provided documentary evidence to
these proceedings that our reliance on first in use [sic]
in the U.S. is on an eBay account with a start date of … 4
March 2006….”10 Upon review of Mr. Mansell’s testimony,
the March 4, 2006 date is only established as the date
opposer opened its eBay account, and not a date of first
use of the mark:
Q: What motivated you to decide to authorize filing
of this opposition?

A: … How is it that the Applicant has even stated on
their interrogatory that they had a first-in-use in

10Mansell Dep., p. 36.
12

the United States on the exact same day as I
registered my eBay account to get some U.S. in-use
activity? Refer Exhibit 400 Interrogatory Question 7,
swimwear by Applicant first-in-use 4 March 2006 versus
the Opposer showing the opening of an eBay account 4
March 2006 and stating that only sales prior to
opposition in the U.S. have been made through that
account.11

Mr. Mansell does not describe opposer’s alleged use of
either of its marks on eBay. Instead, opposer refers to
responses it submitted to applicant’s first set of
interrogatories and requests for production of documents as
evidence of such sales. Specifically, Mr. Mansell refers
to opposer’s responses to Interrogatory No. 1.
Interrogatory No. 1 asks opposer to “describe in
detail any actual use of Opposer’s mark in the United
States…” In response, opposer identifies eBay sales:
Initial physical test stock advertised as
physically buyable from all persons in the United
States from March 2006 via EBay. These were
offered worldwide for sale with specific shipping
reference to North and South America.

. . .

Of winning buyers that we located in the United
States were [sic] in States such as Zip codes:
IL 61073, MI 49071, TX 77065, NC 27565, AL 35976,
AZ 85042, AZ 85301. Generally UK buyers tended
to buy garments that were listed primarily to
achieve US sales. Total US dollar sales less
than $1,000 USD.

11Mansell Dep., pp. 41-42.
13

Although opposer states that sales were made to seven
specific zip codes in the United States, the only evidence
opposer supplies to support the statement are copies of 3
packing slips showing what appear to be sales that were
made to U.S. customers.12 The first, to zip code 35976 in
Alabama, took place May 15, 2008, and thus has no relevance
to the issue of priority. The second packing slip shows a
delivery of a “bendy T–like bench-pink-size-12-(initial
tester T),” to zip code 61073 in Illinois for “£2.51 GBP.”
The packing slip is undated. The third packing slip that
identifies a U.S. customer shows a delivery of a “BENDY ™ -
Designer T BNWT (6 US)(8-10UK)” to zip code 85301 in
Arizona, for “$5.06 USD.” This packing slip is also
undated.
Opposer’s document production also included a copy of
a webpage from “eBay.co.uk” showing that a BENDYGIRL shirt
was won at auction for “£3.20.”13 The webpage shows the
auction ended on March 7, 2006. However, there is no
indication as to who the buyer was, or whether he or she
was located in the United States or elsewhere. While not
conclusive on the question of whether the buyer was located
in the United States or not, Mr. Mansell testified that

12These documents were attached as “Plaintiff’s exhibit 350” to
opposer’s notice of reliance.
13Plaintiff’s exhibit 375 to opposer’s notice of reliance.
14

“[g]enerally UK buyers tended to buy garments that were
listed primarily to achieve US sales.”14 Moreover, the
website is shown as http://cgi.ebay.co.uk, which appears to
identify a U.K. website; the record does not establish that
this website was available to buyers in the U.S. No one
from the United States may have actually viewed this
webpage.
Additionally, opposer produced undated color
photocopies of models wearing shirts with the mark BENDY
across the front; undated copies of the shirts themselves
bearing the mark BENDY and Design on hangtags; undated
copies of web pages described as on-line “feedback from
buyers” (locations of buyers unknown); an undated copy of a
page from opposer’s website that shows only a model wearing
a shirt marked BENDY on the front, London’s Big Ben in the
background, a flag design and the words “BendyGirl Fashion
& Fitness;” a copy of an invoice from eBay Europe S.a.r.l.
to opposer dated 15 August 2007 that lists payments opposer
has made to eBay; copies of websites allegedly showing
third-party use of “bendy” in a descriptive manner; and
additional copies of websites bearing dates that post-date

14Opposer’s response to Interrogatory No. 1.
15

applicant’s filing date.15 Finally, there is a copy of a
document entitled “Customer Status,” which appears to be a
record of invoices from and payments to “Continental
Clothing Company Ltd.” by opposer. Opposer identifies this
document as a “requisition list from our UK supplier.”16
None of these show a date prior to the date upon which
applicant may rely for its date of first use.
While the oral testimony of a singlewitness may
suffice in proving priority, it must be sufficiently
probative, not be characterized by contradictions,
inconsistencies or indefiniteness, and carry a conviction
of accuracy and applicability. Powermatics, Inc. v. Glebe
Roofing Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA
1965); and Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d
1100, 1108-09 (TTAB 2007). Moreover, just as oral
testimony is strengthened by documentary evidence which
corroborates the dates of use, it is weakened by
documentary evidence which raises doubts as to the dates.
Here, opposer’s testimony and evidence is indefinite and
ambiguous. We find that the earliest date of actual use
upon which opposer may rely is May 15, 2008, the date of

15The documents listed in this paragraph were attached as
“Plaintiff’s exhibit 350” and “Plaintiff’s exhibit 375” to
opposer’s notice of reliance.
16 Opposer’s Responses to Applicant’s First Set of Requests for
Production of Documents,p. 9.
16

the sale to a customer in Alabama, which is after the
filing date of applicant’s application.
C. OPPOSER’S PRIORITY BASED ON USE ANALOGOUS TO TRADEMARK
USE.

We next consider whether opposer has shown that it can
claim priority on the basis of any use analogous to
trademark use. Before a prior use can become an analogous
use sufficient to create proprietary rights, a party must
show that such prior use was sufficient to create an
association in the minds of the purchasing public between
the mark and the goods. Malcolm Nicol & Co. v. Witco
Corp., 881 F.2d 1063, 11 USPQ2d 1638 (Fed. Cir. 1989). We
infer the fact of identification of the mark with the party
on the basis of indirect evidence regarding the party’s use
of the word or phrase in advertising brochures, catalogs,
newspaper ads, and articles in newspapers and trade
publications. T.A.B. Systems v. PacTel Teletrac, 77 F.3d
1372, 37 USPQ2d 1879, 1882 (Fed. Cir. 1996). In addition,
the “tacking” theory, under which use analogous to
trademark use operates, requires that actual technical
trademark use must follow within a commercially reasonable
period of time. Dyneer Corp. 37 USPQ2d at 1256; Evans
Chemetics, Inc. v. Chemetics International Ltd., 207 USPQ
695, 700 (TTAB 1980).
17

As proof of analogous use, Mr. Mansell identifies
Exhibit 7.1 as a “splash page or index page or front cover
of our initial website,” and describes its public
introduction: “I think that was about May or June or some
time around there in 2005 or maybe a bit earlier that
specific page we put up. Maybe April 2005.”17 While
Exhibit 7.1 (the splash page) shows the mark BENDYGIRL and
a model wearing a t-shirt with the word “bendy” across the
front, the splash page does not include a date, and given
the fact that elsewhere in his testimony Mr. Mansell stated
that United States sales were a result only of eBay
advertising which was not launched until March 2006, it is
unclear whether the splash page, even if circulated in the
United States, resulted in sales in the U.S. By itself, it
is insufficient to show priority through use analogous to
trademark use.
Mr. Mansell also identifies Exhibits 20.1, 20.2 and
20.3 as the front and back of an “advertising mailer”18 but
does not provide the date the mailer was mailed to any
prospective customers, the address for any recipients, or
the number of such customers. The Exhibits themselves are
undated and do not show to whom they were addressed. Even

17Mansell Dep., p. 27.
18 Mansell Dep., p. 25. The testimony is unclear as to whether
there were two such mailers, or only one.
18

taken together with the splash page, opposer has not shown
use analogous to trademark use.
Finally, opposer identifies “domain names” and eBay
advertisement “upgrades [that] tended to attract around 100
or more specific garment page detailed views”19 prior to
June 29, 2007. The record does not identify eBay
advertisement upgrades. With respect to the domain name
registrations, opposer identified them in response to
applicants’ Interrogatory No. 1, as follows:
Domain names: URL’s attached to the internet.
BENDY.COM since 20 Nov 2000. BENDYGIRL.COM 27
February 2003. BENDYGIRLS 29 March 2005.

Opposer introduced evidence of registration of only
one website, bendy.com. However, the date of creation of
that website cannot be determined from the registration
document. Moreover, none of the evidence submitted by
opposer shows any of its domain names being used as
trademarks. Domain names that function merely as addresses
are not registrable as trademarks. See In re Eilberg, 49
USPQ2d 1955, 1957 (TTAB 1998)(mark that “merely indicates
the location on the Internet where applicant’s Web site
appears” does not function as a service mark).

19Opposer’s Response To Applicant’s First Set Of Interrogatories,
p. 5.

19

In sum, we find that opposer has not used its mark
prior to June 29, 2007 in a manner analogous to trademark
use. Opposer’s use of its mark prior to applicant’s filing
date was not sufficient to create an association between
the marks and the goods in the mind of the relevant
purchasing public.
In conclusion, opposer may rely upon the filing dates
of its applications as constructive use dates, contingent
upon registration. If one of opposer’s applications
issues, then opposer has priority. The effective filing
dates of Application Serial No. 78342438, for the mark
BENDY including Class 25, and Application Serial No.
78342445 for the mark BENDYGIRL including Class 25, are
December 16, 2003. Should either application issue, then
opposer’s constructive use date will be December 16, 2003.
Should Application Serial No. 78529144 for the mark BENDY
in Classes 28 and 35 issue, then opposer’s constructive use
date will be December 8, 2004. If none of opposer’s
applications issues, then applicant has priority, based on
the filing date of her application, contingent upon her
application issuing to registration. We now turn to
whether there is a likelihood of confusion between the
marks.
20

Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 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 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”).
A. The strength of opposer’s mark.

We begin our determination by evaluating the strength
of opposer’s BENDY and BENDYGIRL marks. Applicant asserts
that the term “bend” (and by implication “bendy”) is weak
when used in the clothing field.20 In determining the
strength of a mark, we consider both its inherent strength
based on the nature of the mark itself and its

20Applicant’s Brief, p. 14.
21

commercialstrength, based on the marketplace recognition
value of the mark. SeeTea Board of India v. Republic of
Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition §
11:83 (4th ed.)(“The first enquiry focuses on the inherent
potential of the term at the time of its first use. The
second evaluates the actual customer recognition value of
the mark at the time registration is sought or at the time
the mark is asserted in litigation to prevent another’s
use.”)
We first address the strength of opposer’s marks in
terms of their inherent nature. The record includes
dictionary definitions of both “bend” and “bendy” that show
a connection between the mark and the quality of
flexibility.21 The definitions, however, do not show a
connection between the quality of flexibility and clothing.
Opposer’s witness, Mr. Mansell, describes applicant’s
website (Ex. 9 to his deposition) as including the
following statement from applicant: “BEND by definition
means flexibility. The clothing literally needs to stretch

21 Opposer submitted a print-out from dictionary.com, giving a
definition of “bendy” as “tending to bend; flexible or resilient”
and of “bend” as “to force (an object, esp. a long or thin one)
from a straight form into a curved or angular one.” Opposer’s
Notice of Reliance, Exhibit 3.2; Opposer’s response to
Applicant’s Request For Production Of Documents.
22

into the positions and styles you ask of it.”22While
applicant may intend to draw a connection between the word
“bendy” and clothing, there is nothing in the record that
shows that consumers have been educated by her statement to
think of stretchable clothing as “bend” or “bendy”
clothing. Later in his testimony, Mr. Mansell describes a
news article from 2008 titled “Madonna Busts A Bendy Yoga
Move For Louis Vuitton Ad” that states: “Madonna shows off
her flexibility in a bendy pose for Louis Vuitton’s Spring
2009 campaign.”23Again, the record does not support a
conclusion that this reference educated the public to
consider “bendy” as a descriptor for clothing. To further
this end, applicant has submitted copies of 17 third-party
applications or registrations for marks containing the term
“bend” for various items of clothing. We consider these 11
registrations and 6 applications as part of our
determination of whether “bendy” is inherently weak.
Prior to registration, a pending application has “no
probative value other than as evidence that the application
was filed.” Edwards Lifesciences Corp. v. VigiLanz Corp.,
94 USPQ2d 1399, 1403 n.4 (TTAB 2010), citing In re Phillips
Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002).

22Mansell Dep., p. 28.
23 Id.
23

Thus, we give no further consideration to the pending
applications. As for the 11 registrations, they have
limited probative value. None include the term “bendy” and
only six use the term “bend.” Of the six marks that use
the term “bend,” the closest in meaning to the idea of
flexibility are BEND OVER and BEND (stylized so that the
“D” is comprised of the design of a woman bent in the shape
of the letter). The connotation of “bend over” does not
suggest flexible clothing. The registration for BEND
(stylized) is registered for fabric and not for clothing.
Accordingly, we do not view the third-party
registrations as establishing that opposer’s mark is
inherently weak. To the contrary, nothing in the record
has established that either term, “bend” or “bendy,”
describe an aspect, or feature, of clothing or that
clothing is referred to descriptively as being bendy,
bendable, or having a bend. Along the Abercrombie & Fitch24
spectrum of distinctiveness of marks, opposer’s marks BENDY
and BENDYGIRL would be considered at least suggestive, if
not arbitrary, in connection with clothing.
With respect to the market strength of opposer’s mark,
opposer has not shown that its mark is commercially strong.

24SeeAbercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759, 764 (2d Cir. 1976)(identifying four different
categories of terms with respect to trademark protection:
generic, descriptive, suggestive, and arbitrary or fanciful).
24

Opposer admits that its U.S. sales have not exceeded
$1,000”25 and has submitted evidence of sales of less than
$25.00. Opposer claims advertising expenses “in excess of
$50,000”,26 but such figures include expenses unrelated to
the promotion of either the BENDY or BENDYGIRL trademark.
Suffice it to say, opposer fails to establish that its
sales or marketing activity has created an enhanced level
of customer recognition of its marks. Moreover, the third-
party registrations have little probative value in
determining the market strength of opposer’s marks because
applicant has not shown that any of the third-party marks
are in use on a commercial scale or that the public has
become familiar with them. SeeSmith Bros. Mfg. Co. v.
Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA
1973)(“The purchasing public is not aware of registrations
reposing in the Patent Office ….”) See also In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983) (“absent
evidence of actual use of the marks subject of the third-
party registrations, they are entitled to little weight on
the question of likelihood of confusion.”)

25 Mansell Dep., p. 48.
26Mansell Dep., p. 51.
25

Accordingly, while BENDY and BENDYGIRL may be
considered inherently strong, the evidence does not support
a conclusion that the marks are commercially strong.
B. The similarity or dissimilarity and nature of the
goods described in parties’ applications.

The goods are identical in-part. Both applicant and
opposer are seeking to register their mark for, inter alia,
pants, shirts, t-shirts, tank tops, shorts, skirts,
blouses, jackets, parkas, coats, dresses, bathing suits,
sweaters, sweat shirts, hosiery, socks and footwear. Thus,
opposer’s marks BENDY and BENDYGIRL in Class 25 and
applicant’s mark BEND SPORT COUTURE in Class 25 cover
similar goods.
C. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Because opposer does not own a registration for the
mark, we consider the channels of trade and classes of
purchasers of opposer as shown by the evidence it has
presented. As for applicant, because there are no
restrictions or limitations in the application, we presume
that applicant’s goods are sold through all the normal and
usual trade channels for such goods and that they are sold
to all the usual purchasers of such goods. Thus, we must
consider that applicant’s normal channels of trade are not
limited to only those she has identified, i.e., “specialty
26

shops, gyms, upscale department stores, and spas,”27 but
include any normal channels of trade such as clothing
stores, mass merchandisers and sales via the Internet
through eBay. See Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987)
Mr. Mansell testified that opposer’s “key market” is
“the whole United States”28 and that he has sold his goods
on-line through eBay. His targeted customers are “women
foremost, with girls and babies secondary.”29Applicant’s
targeted customers are also women.30 Applicant and
opposer’s trade channels and classes of consumers overlap.
D. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du
Pont, 177 USPQ at 567.In a particular case, any one of
these means of comparison may be critical in finding the

27Applicant’s response to Interrogatory No. 6.
28 Mansell Dep., p. 12.
29 Id.
30 Applicant’s Response to Interrogatory No. 8.
27

marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988). The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective
marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Winnebago Industries, Inc. v. Oliver & Winston, Inc.,
207 USPQ 335, 344 (TTAB 1980;Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Also, in comparing the marks, we are mindful that
where, as here, the goods are in part identical, the degree
of similarity necessary to find likelihood of confusion
need not be as great as where there is a recognizable
disparity between the services. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992); Schering-Plough HealthCare
Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB
2007); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104,
1108 (TTAB 2007).

28

1.) BENDY vs. BEND SPORT COUTURE
While the marks must be compared in their entireties
when analyzing their similarity or dissimilarity, there is
nothing improper in stating that for rational reasons, more
or less weight has been given to a particular feature of a
mark. In re National Data Corporation, 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). We may thus accord greater
weight to the literal element “bend” and less regard to the
stylization of the mark. In this regard, we note the
display of applicant’s mark is not so distinctive as to
distinguish it from opposer’s marks. Similarly, the words
“SPORT COUTURE,” which have been disclaimed and are
descriptive, are entitled to less weight in our analysis.
See Barbara’s Bakery, Inc. v. Barbara Landesman, 82 USPQ2d
1283, 1288 (TTAB 2007); Hilson Research Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423 (TTAB 1993).
The significance of the word “Bend” as the dominant
element of applicant’s mark is further reinforced by its
location as the first part of the mark. See Presto
Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“it is often the first part of a mark
which is most likely to be impressed upon the mind of a
purchaser and remembered”); see also Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689,
29

1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part
of the mark VEUVE CLICQUOT because “veuve” is the first
word in the mark and the first word to appear on the
label); Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992)(upon encountering the marks, consumers must first
notice the identical lead word).
In view of the foregoing, we find that the dominant
element BEND in applicant’s mark is similar in terms of
appearance and sound to opposer’s mark BENDY. Moreover,
the marks have essentially the same meaning. Dictionary
definitions provided by opposer for “bend” and “bendy” show
that both connote “flexibility.” Given the fact that the
word “BEND” is the dominant element of applicant’s
composite mark and a variation thereof, i.e., BENDY, is the
entirety of opposer’s mark, we find that applicant’s mark
is similar to opposer’s mark BENDY including Class 25 in
terms of appearance, sound, meaning and commercial
impression.
2.) BENDYGIRL vs. BEND SPORT COUTURE
Applicant’s mark is similar overall to opposer’s mark
BENDYGIRL in sight, sound, meaning and commercial
impression. Both marks start with the same four letters,
which gives them a similar appearance; in opposer’s mark,
30

“bendy” and “girl” naturally separate into two
distinguishable words, making the first term of each mark
the virtually identical word “bend” or “bendy.” These
first identical four letters of each mark (forming the word
“bend”) are more likely to be remembered by consumers than
the remainder of the mark. See Hercules Incorporated v.
National Starch and Chemical Corporation, 223 USPQ 1244,
1246 (TTAB 1984)(“In the case before us, considering the
marks NATROL and NATROSOL in their entireties, the clearly
dominant aspect of both marks is that the first four
letters and the final two are the same.”); see also Presto
Products,9 USPQ2d at 1897.
In pronunciation, both marks are comprised of three
syllables, giving them a similar cadence and inflection.
The connotation of “flexibility,” based on the dictionary
definitions of “bend” and “bendy,” is enhanced with respect
to the mark BENDYGIRL. The evidence shows a “bendy girl”
would be understood as referring to someone who is
flexible. See supra, “Madonna shows off her flexibility in
a bendy pose for Louis Vuitton’s Spring 2009 campaign,”31
and applicant’s statement, “BEND by definition means
flexibility. The clothing literally needs to stretch into

31 Id.
31

the positions and styles you ask of it.”32Both marks,
BENDYGIRL and BEND SPORT COUTURE, suggest flexibility.
Considering the marks in their entireties, as we must
do in evaluating their overall similarities and
dissimilarities, we bear in mind that “it is a fundamental
tenet of our trademark law that exact similitude is not
required to conclude that two marks are confusingly
similar.” Hercules Incorporated, 223 USPQ at 1246. Here,
the similarities of the marks, particularly in appearance
and connotation, outweigh their differences. We find that
applicant’s mark is similar to opposer’s mark BENDYGIRL in
terms of appearance, sound, meaning and commercial
impression.
E. Balancing the factors.
In view of the fact that the mark BEND SPORT COUTURE
is similar to the marks BENDY and BENDYGIRL and the goods
are in-part identical, and because the goods are considered
to move in overlapping channels of trade and be available
to the same classes of consumers, we find that applicant’s
registration of the mark BEND SPORT COUTURE is likely to
cause confusion with opposer’s marks BENDY and BENDYGIRL
for clothing (Class 25).

32Mansell Dep., p. 28.
32

DECISION: The opposition is sustained with respect to
opposer’s mark BENDY in Class 25 (application Serial No.
78342438) and opposer’s mark BENDYGIRL (Ser. No. 78342445)
contingent upon theirregistration.
When opposer’s markshave registered (or become
abandoned), opposer should promptly inform the Board, so
that appropriate action may be taken to terminate this
proceeding.
The time of filing an appeal or for commencing a civil
action will run from the date of the present decision. See
Trademark Rules 2.129(d) and 2.145.