Mappin & Webb Limitedv.M Webb, LLC

Trademark Trial and Appeal Board

Oct 23, 2015

No. 91213413 (T.T.A.B. Oct. 23, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Mappin & Webb Limited
v.
M Webb, LLC
_____

Opposition No. 91213413
_____

Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
for Mappin & Webb Limited.
Molly Buck Richard of Richard Law Group for M Webb, LLC.
_____

Before Kuhlke, Bergsman and Adlin,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
M Webb, LLC (“Applicant”) seeks registration on the Principal Register of the
mark M WEBB (in standard characters) for
Handbags, purses, wallets, tote bags, in Class 18; and
Women's apparel and accessories, namely, shirts, t-shirts,
pants, dresses, skirts, shorts, jackets, coats, sweaters,
lingerie, pajamas, robes, socks, hosiery, scarves, gloves,
hats, belts and footwear, in Class 25.1

1 Application Serial No. 85460569 was filed on October 31, 2011, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Opposition No. 91213413
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In its application, Applicant identified “M WEBB” as “‘Marissa Webb’ whose
consent(s) to register is made of record.”
Mappin & Webb (“Opposer”) filed a Notice of Opposition against the registration
of Applicant’s mark on the ground of likelihood of confusion, Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d). Opposer alleged prior use and
ownership of a prior-filed pending application for the mark MAPPIN & WEBB for,
inter alia, “jewelry,” in Class 14, and “leather articles, namely, wallets, credit card
holders and calling card holders, luggage tags, purses, trunks and travelling bags;
umbrellas, parasols and walking sticks; articles made of precious metals or coated
or plated therewith, namely, credit card holders and calling card holders,” in Class
18,2 and that Applicant’s mark so resembles Opposer’s mark as to be likely to cause
confusion.
Applicant, in its Answer, denied the salient allegations in the Notice of
Opposition.
On June 4, 2015, the parties filed a “Stipulation for Accelerated Case
Resolution,” or “ACR.” Specifically, the parties stipulated to the filing of testimony
by affidavit or declaration and that documents and things produced in response to

2 Application Serial No. 85350960, filed June 20, 2011. Opposer also filed an application to
register the mark MAPPIN & WEBB LONDON (standard character form) (Serial No.
85350965). Because the name “London” 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 Opposer’s MAPPIN & WEBB mark. That is, if confusion is likely
between those marks, there is no need for us to consider the likelihood of confusion with
MAPPIN & WEBB LONDON because if there is no likelihood of confusion between
Applicant's mark and MAPPIN & WEBB, then there would be no likelihood of confusion
with the mark MAPPIN & WEBB LONDON. See, e.g., In re Max Capital Group Ltd., 93
USPQ2d 1243, 1245 (TTAB 2010).
Opposition No. 91213413
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written discovery are authentic and may be submitted as exhibits to their ACR
briefs.3
I. Evidentiary Issue
The parties have lodged numerous evidentiary objections. None of the evidence
sought to be excluded is outcome determinative. Given this fact, coupled with the
number of objections, none of which warrant excluding the evidence, we see no
reason to discuss the specific objections. Suffice it to say, we have considered all of
the testimony and exhibits submitted. In doing so, we have kept in mind the various
objections raised by the parties, and we have accorded whatever probative value the
subject testimony and evidence merit.
In this regard, the Board is capable of weighing the relevance and strength or
weakness of the objected-to testimony and evidence, including any inherent
limitations. Given the circumstances herein, we choose not to make specific rulings
on each and every objection. As necessary and appropriate, we will point out in this
decision any limitations in the evidence or otherwise note that the evidence cannot
be relied upon in the manner sought. As noted above, while we have considered all
the evidence of record and the parties’ arguments, we do not rely on evidence not
discussed herein.

3 The parties reserved their right to object to documents on the grounds of hearsay,
competency, accuracy, relevance, and materiality.
Opposition No. 91213413
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II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application file. The parties submitted the
testimony and evidence listed below:
A. Stipulated Facts and Legal Conclusions
The parties stipulated to the following:4
1. Opposer has standing;
2. Opposer has priority;
3. Opposer does not have any stores in the United States;
4. “Opposer currently sells jewelry, watches, picture frames, glassware, gift
items, and cutlery at MAPPIN & WEBB stores in the UK and on its website at
www.mappinandwebb.com (which currently does not allow for shipment of goods
into the United States).”;
5. Opposer does not sell clothing; and
6. There are no reported instances of actual confusion.
B. Opposer’s testimony and evidence.
1. Testimony declaration of Elizabeth Leocardia Galton, Creative Director of the
Aurum Group Limited, with attached exhibits;5
2. Testimony declaration of Brian Duffy, CEO of the Aurum Group Limited;6

4 17 TTABVUE.
5 24 TTABVUE (public version) and 21 TTABVUE (confidential version). “Mappin & Webb
Limited is a subsidiary of the Aurum Group Limited, and is the owner of the MAPPIN &
WEBB trademarks, which it licenses to Aurum.” 24 TTABVUE 3.
6 23 TTABVUE (public version) and 20 TTABVUE (confidential version).
Opposition No. 91213413
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3. Testimony declaration of Morgan Smith, one of Opposer’s attorneys, who
introduced into evidence the following:7
a. Opposer’s applications;
b. Applicant’s responses to Opposer’s first set of interrogatories Nos. 3-6,
12 and 14;
c. Applicant’s responses to Opposer’s first set of requests for production of
documents;8
d. Applicant’s responses to Opposer’s first set of requests for admission
Nos. 1, 14, 15, 23, 24, 33, and 34;
e. Excerpts from third-party websites of companies that sell goods listed
in both parties’ applications;
f. Copies of use-based, third-party registrations covering goods in Classes
14 (jewelry), 18 (purses, wallets, travelling bags, and trunks) and 25 (clothing);
g. Excerpts from third-party websites of companies that have abbreviated
or shortened their names or whose names have been shortened by the public; and
h. Excerpts from online fashion publications discussing ensembles with
apparel, handbags and jewelry.
4. Rebuttal testimony declaration of Brian Duffy with attached exhibits;9 and

7 25 TTABVUE.
8 Responses to document production requests are admissible solely for purposes of showing
that a party has stated that there are no responsive documents. See City National Bank v.
OPGI Management GP Inc./Gestion OPGI Inc.,106 USPQ2d 1668, 1674 n.10 (TTAB 2013);
ShutEmDown Sports Inc. v. Lacy, 102USPQ2d 1036 at n.7 (TTAB 2012).
9 37 TTABVUE.
Opposition No. 91213413
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5. Rebuttal testimony declaration of Anna Naydonov, one of Opposer’s
attorneys, who introduced into evidence the following:10
a. An excerpt from the Cornelia Webb website (corneliawebb.com);
b. A printout from a 2012 Marie Claire article noting that Jane Fallon
wore Mappin & Webb jewelry at the Golden Globe Awards;
c. An article posted (July 5, 2015) on Glamour.com about the outfit Kate
Middleton wore for Princess Charlotte’s christening that noted she word a pendant
from Mappin & Webb; and
d. An excerpt from the allacronyms.com website for KFC and AMEX.
C. Applicant’s testimony and evidence.

1. Testimony declaration of Marissa Webb, Applicant’s President and majority
owner, with attached exhibits;11
2. Testimony declaration of Randy S. Kercho, President of Bedrock Brands I,
LLC, a holding company that invests in fashion and apparel brands, including
Applicant, with attached exhibits;12 and
3. Testimony declaration of David J. Diamond, one of Applicant’s attorneys, who
introduced into the evidence the following:13
a. Application Serial No. 85542114 for the mark MARISSA WEBB;
b. Opposer’s responses to Applicant’s first set of interrogatories;

10 38 TTABVUE.
11 29 TTABVUE.
12 30 TTABVUE.
13 31 TTABVUE.
Opposition No. 91213413
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c. Opposer’s responses to Applicant’s first request for admissions;
d. Opposer’s responses to Applicant’s first request for production of
documents;14
e. Copies of third-party registrations for marks including the name
“Webb,” in Classes 14, 18 and/or 25;15
f. Copies of registrations for marks including the name “Mappin,” in
Classes 14, 18 and/or 25;16
g. Excerpts from third-party websites showing marks including the name
“Webb” used for the sale of goods in Classes 14, 18 and/or 25;
h. Excerpts from third-party websites “showing various third-party
companies included on the 2015 Fortune 500 companies list (publicly available at
), whose names consist of compound surnames that have

14 See Note 8 supra.
15 Applicant also included third-party applications. We give the applications no
consideration because pending applications are evidence only that the applications were
filed on a certain date and they are not evidence of use of the marks. Nike Inc. v. WNBA
Enterprises LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Services Ltd. v.
Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003); In re Juleigh Jeans Sportswear,
Inc., 24 USPQ2d 1694, 1699 (TTAB 1992); Olin Corp. v. Hydrotreat, Inc., 210 USPQ 62, 65
n.5 (TTAB 1981); Merritt Foods Co. v. Americana Submarine, 209 USPQ 591, 594 (TTAB
1980).
16 Applicant also included a copy of a cancelled Registration No. 1270685 for the mark
MAPPIN PLATE. We give this registration no consideration because a cancelled
registration is evidence only that the registration issued, it is not evidence of any use of the
mark at any time, and it does not afford the owner any legal presumptions under Section
7(b) of the Trademark Act. See Anderson, Clayton and Co. v. Krier, 478 F.2d 1246, 178
USPQ 46, 47 (CCPA 1973) (statutory benefits of registration disappear when the
registration is cancelled); Kellogg Co. v. Western Family Foods, Inc., 209 USPQ 440, 442
(TTAB 1980).
Opposition No. 91213413
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been shortened or abbreviated to the first word or the first initials of each word,
either by the companies themselves or by the general public.”;17
i. Excerpts from third-party websites showing various third-party
fashion brands whose marks consist of two words separated by an ampersand (“&”)
or the word “and,” and which have been shortened or abbreviated to the first word
or the first initials of each word, either by the companies themselves or by the
general public.”;18
j. Excerpts from third-party websites “showing various third-party
fashion designers whose brands have been shortened or abbreviated to the
designer’s surname, either by the designers (or their companies) themselves or by
the general public.”;19
k. A document produced by Opposer that purportedly “illustrates the use
of solely the surname “Mappin” to identify Opposer through the following language:
“Mappin’s solve [sic] your gift problems . . . beautifully!”;20
l. The obituary of Princess of Monaco Grace Kelly published in The New
York Times on September 15, 1982; and
m. An excerpt from the Company Information page of Heathrow Airport
Holdings Limited.

17 31 TTABVUE 22.
18 31 TTABVUE 23.
19 31 TTABVUE 23.
20 31 TTABVUE 24.
Opposition No. 91213413
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III. Standing and Priority

The parties stipulated that Opposer has standing and priority.
IV. 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).
A. The similarity or dissimilarity and nature of the goods and services,
established, likely-to-continue channels of trade, and classes of consumers.
As noted above, Applicant is seeking to register its marks M WEBB (in standard
characters) for
Handbags, purses, wallets, tote bags, in Class 18; and
Women's apparel and accessories, namely, shirts, t-shirts,
pants, dresses, skirts, shorts, jackets, coats, sweaters,
lingerie, pajamas, robes, socks, hosiery, scarves, gloves,
hats, belts and footwear, in Class 25.
Opposer, relying only on its prior-filed application for MAPPIN & WEBB, is seeking
to register its mark for “jewelry” and “leather articles, namely, wallets, credit card
holders and calling card holders, luggage tags, purses, trunks and travelling bags;
umbrellas, parasols and walking sticks; articles made of precious metals or coated
or plated therewith, namely, credit card holders and calling card holders.”

Opposition No. 91213413
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1. Class 18
Both parties intend to use their marks to identify wallets and purses; therefore,
the Class 18 goods are in-part identical. It is sufficient for a finding of likelihood of
confusion that relatedness of the goods is established for any item encompassed by
the identification of goods in a class in the application. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Inter
IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); General Mills
Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1588 n.1 (TTAB
2011), judgment set aside on other grounds, 2014 WL 343267 (TTAB Jan. 22, 2014);
Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1397 (TTAB 2007).
Because the goods described in Class 18 of the applications are in part identical,
we must presume that the channels of trade and classes of purchasers are the same.
See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
(legally identical goods are presumed to travel in same channels of trade to same
class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721,
723 (CCPA 1968) (where there are legally identical goods, the channels of trade and
classes of purchasers are considered to be the same); United Global Media Grp., Inc.
v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022,
1028 (TTAB 2011).

Opposition No. 91213413
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2. Class 25
To prove that the goods of the parties are related, Opposer introduced excerpts
from 14 third-party websites showing third-parties advertising the sale of jewelry,
wallets or purses on the one hand, and clothing on the other under the same
mark.21 For example, Kate Spade, Gap, J CREW and AÉROPOSTALE offer both
types of goods. These websites further demonstrate that the goods move in the same
channels of trade.
Also, Opposer introduced copies of 48 third-party registrations for products
listed in both Opposer’s application and Applicant’s Class 25 application.22 Third-
party registrations which individually cover a number of different goods that are
based on use in commerce may have some probative value to the extent that they
serve to suggest that the listed goods are of a type which may emanate from the
same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786; In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Finally, Ms. Galton, Creative Director of the Aurum Group Limited, testified
that “[h]andbags, leather goods, and jewelry are often chosen to complement
clothing or complete a desired ‘look.’”23 See In re Melville, 18 USPQ2d 1386, 1388
(TTAB 1991) (“A woman's ensemble, which may consist of a coordinated set of

21 25 TTABVUE 75-577.
22 25 TTABVUE 580-744.
23 24 TTABVUE 34-35. Ms. Galton is responsible for, inter alia, advertising, marketing, and
sales. 24 TTABVUE 4. We find that by virtue of her work experience, Ms. Galton has
personal knowledge about the sales of jewelry, purses and wallets and, therefore, is
competent to testify that the products at issue are complementary. Fed.R.Evid. 602
(personal knowledge) and 701(a) and (b) (opinion testimony may be rationally based on the
witness’s perception and not based on scientific, technical or other specialized knowledge).
Opposition No. 91213413
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pants, a blouse and a jacket, is incomplete without a pair of shoes which match or
contrast therewith. Such goods are frequently purchased in a single shopping
expedition. When shopping for shoes, a purchaser is usually looking for a shoe style
or color to wear with a particular outfit. The items sold by applicant and registrant
are considered to be complementary goods.”).
In its brief, Applicant did not discuss the similarity or dissimilarity of the goods.
In fact, in its “Statement Of Issues” Applicant did not identify the similarity or
dissimilarity and nature of the goods or established, likely-to-continue channels of
trade as issues.24
In view of the foregoing, we find that Applicant’s clothing is related to Opposer’s
jewelry and leather products, that such products move in the same channels of
trade and are sold to the same classes of consumers.
B. The strength of Opposer’s mark, including the number and nature of similar
marks in use in connection with similar goods and services.
The sixth du Pont factor requires us to consider evidence pertaining to the
number and nature of similar marks in use on similar goods. “The purpose of a
defendant introducing third-party uses is to show that customers have become so
conditioned by a plethora of such similar marks that customers ‘have been educated
to distinguish between different such marks on the bases of minute distinctions.’”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005), quoting Veuve Clicquot

24 28 TTABVUE 8.
Opposition No. 91213413
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Ponsardin v. Palm Bay Imports, Inc., Opp'n No. 115,438, 2000 WL 21953664 (TTAB
Aug. 4, 2003). To show that Opposer’s mark is weak, Applicant introduced into
evidence excerpts from third-party websites advertising the goods listed in
Opposer’s applications under marks incorporating the surname “Webb.” The two
relevant websites are listed below:25
1. Cornelia Webb website (corneliawebb.com) advertising jewelry;26 and
2. David Webb website (davidwebb.com) advertising jewelry.27

25 Applicant introduced excerpts from the Webb Ellis website (rweshop.com and webb-
ellis.co.uk) advertising the sale of clothing and cufflinks but in pounds not dollars. 31
TTABVUE 148-153 and 155. Because there was no evidence indicating that these websites
are directed to American consumers or visited by American consumers, they have little
probative value. Also, we note that Applicant introduced a copy of Registration No. 4654656
registered on December 16, 2014 for the mark THE WEBB ELLIS CUP for clothing. 31
TTABVUE 101. However, that registration was based on Section 66(a) of the Trademark
Act, not use in commerce and it therefore has no probative value in showing that the WEBB
ELLIS trademark has been used in the United States. Applicant also introduced into
evidence Registration No. 3435362 for the mark WEBB ELLIS and design for rugby
clothing. 31 TTABVUE 113. However, as noted above, there is no evidence regarding its use
in the United States and, thus, there is nothing on which we can base a finding that United
States consumers are aware of the mark.
Likewise, we gave little consideration to the excerpt from the Migor Camiceria website
(“migor.it”) advertising WEBB & SCOTT clothing because it is an Italian website and there
is no evidence that it would be accessed by American consumers. 31 TTABVUE 157. The
English version of the website is directed to the U.K. market as indicated by the flag of the
United Kingdom. Applicant introduced a copy of Registration No. 3950102 for the mark
WEBB & SCOTT CO. and design for clothing. 31 TTABVUE 107. However, that
registration was based on Section 66(a) of the Trademark Act, not use in commerce and,
therefore, it has no probative value in showing that the mark has ever been used in the
United States.
Applicant also introduced an excerpt from the Gardner-Webb University website (gardner-
webb.edu) advertising educational services. 31 TTABVUE 143. There was no evidence
regarding the university’s sale of jewelry, purses, wallets, or clothing. Even if Applicant had
introduced a relevant excerpt, such evidence would have little probative value because
jewelry, purses, wallets, and clothing sold by universities are collateral merchandising
products promoting the schools and, as such, move in different channels of trade than the
products sold by the parties in this case.
26 31 TTABVUE 129-139. Although the Cornelia Webb website is of Swedish origin, it offers
prices in dollars facilitating sales to U.S. consumers.
Opposition No. 91213413
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Two examples of third-parties using the surname “Webb” as part of their marks do
not persuade us that the surname “Webb” is so widespread that minor differences
between the marks will enable consumers to distinguish them.
In determining the strength of a mark, we consider not only its commercial
strength, based on the marketplace recognition value of the mark, but also its
inherent strength based on the nature of the mark itself. See In re Chippendales
USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark's
strength is measured both by its conceptual strength (distinctiveness) and its
marketplace strength (secondary meaning).”); Couch/Braunsdorf Affinity, Inc. v. 12
Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014); Top Tobacco, L.P. v. North
Atlantic Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011); Tea Board of
India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 11:83 (4th ed. 2015) (“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.”).
Market strength is the extent to which the relevant public recognizes a mark as
denoting a single source. Tea Board of India v. Republic of Tea Inc., 80 USPQ2d at
1899. In other words, it is similar to acquired distinctiveness.
When applied to “jewelry” and “leather articles, namely, wallets, credit card
holders and calling card holders, luggage tags, purses, trunks and travelling bags;

27 31 TTABVUE 141.
Opposition No. 91213413
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umbrellas, parasols and walking sticks; articles made of precious metals or coated
or plated therewith, namely, credit card holders and calling card holders”, although
Opposer’s mark MAPPIN & WEBB is comprised of two surnames, it is inherently
distinctive. See In re Standard Elektrik Lorenz A.G., 371 F.2d 870, 152 USPQ 563,
566 (CCPA 1967) ((holding SCHAUB-LORENZ not primarily merely a surname);
TMEP § 1211.01(b)(i) (July 2015).
With respect to commercial strength, based on the record, Opposer’s mark
MAPPIN & WEBB has little, if any, commercial strength in the United States.28
The evidence below is illustrative:
1. Opposer does not have any stores in the United States that sell goods under
the mark MAPPIN & WEBB.”;29
2. “Opposer currently sells jewelry, watches, picture frames, glassware, gift
items, and cutlery at MAPPIN & WEBB stores in the UK and on its website at
www.mappinandwebb.com (which currently does not allow for shipment of goods
into the United States).”30 “U.S. customers may view Opposer’s products, including
but not limited to jewelry, watches, silverware, barware, and other gift items, on

28 Although Opposer asserts that it is not contending that its MAPPIN & WEBB mark is
famous, it introduced evidence ad nauseum of Opposer’s renown. Opposer contends that it
“offered evidence of its foreign sales/advertising to illuminate the brand’s history and plans
for the U.S. market expansion to demonstrate both its bona fide intent to use the MAPPIN
& WEBB Marks on the applied-for goods in the U.S. and its standing in this action,” (35
TTABVUE 6-7) even though the parties stipulated to Opposer’s standing prior to the
opening of trial and that Opposer’s bona fide intent to use its mark for the applied-for goods
in the U.S. was not at issue in this case. For purposes of completeness, we analyze the
commercial strength in the United States of Opposer’s mark.
29 17 TTABVUE 3.
30 17 TTABVUE 3.
Opposition No. 91213413
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Opposer’s website and contact [Opposer’s] showroom in the UK (via email or
through the Customer Service number posted on Opposer’s website for customers
outside the UK, including the U.S.), where a representative will help a U.S.
consumer complete the purchase of the item seen on Opposer’s website.”31 This
evidence does not describe a consumer friendly sales process conducive to
completing sales with U.S. consumers, much less indicate United States consumers’
familiarity with Opposer or its mark;
3. Although Opposer asserts that it has shipped products under the mark
MAPPIN & WEBB to customers in the U.S., it identified only one such sale:
For example, earlier this year, Opposer received inquiries
from customers located in the U.S. regarding the
MAPPIN & WEBB “Fortune” pendant worn by Katherine,
Duchess of York. At least one of these customers
purchased the “Fortune” pendant, which Opposer shipped
to the U.S.32
Also, “Opposer is aware that its Lizard Kelly handbag … has been offered on eBay,”
otherwise, Opposer admits that it has not sold any leather goods, including, inter
alia, wallets, purses, and travelling bags, in the United States in the past five
years.33 Finally, while Elizabeth Leocardia Galton testified as to Opposer’s global
sales, she did not offer any testimony regarding Opposer’s sales in the U.S.34

31 Opposer’s response to Applicant’s interrogatory No. 1; 31 TTABVUE 44. See also
Opposer’s response to Request for Admission No. 2 (“Opposer’s website is not currently
capable of automatically completing online transactions (including shipping) for consumers
in the U.S.”); 31 TTABVUE 66.
32 Opposer’s response to Applicant’s Interrogatory No. 1; 31 TTABVUE 45.
33 Opposer’s response to Applicant’s Request for Admission No. 4; 31 TTABVUE 67.
34 21 TTABVUE 6 (confidential).
Opposition No. 91213413
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4. Opposer advertises its MAPPIN & WEBB products “in national UK national
magazine titles, including Vogue, Harper’s Bazaar, Tatler, and Vanity Fair (which
also circulate in the United States), in addition to regional titles such as The Run
Wild Group and national and regional newspapers in the UK.”35 Opposer did not
provide any evidence as to the United States circulation figures for the UK versions
of the magazines.
5. Though Opposer advertises on FACEBOOK and TWITTER, there is no
evidence or testimony as to Opposer’s following in the United States;36 and
6. Opposer failed to offer any testimony or evidence regarding its advertising
expenditures in the United States.
In sum, the number and nature of similar marks in use in connection with
similar goods is neutral and while Opposer’s mark MAPPIN & WEBB is inherently
distinctive, based on the record, it has little commercial strength in the United
States.
C. The similarity or dissimilarity of the marks in their entireties in terms of
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 De Nemours & Co., 177
USPQ at 567. In a particular case, “two marks may be found to be confusingly
similar if there are sufficient similarities in terms of sound or visual appearance or

35 Opposer’s response to Applicant’s Interrogatory No. 3; 31 TTABVUE 47.
36 Opposer’s response to Applicant’s Interrogatory No. 3; 31 TTABVUE 47.
Opposition No. 91213413
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connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d
1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) (citation
omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1519
(TTAB 2009) (citing Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523,
526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound
alone is likely to cause confusion.”)).
In comparing the marks, we are mindful that where, as here, the goods are in
part identical and otherwise closely related, the degree of similarity necessary to
find likelihood of confusion need not be as great as where there is a recognizable
disparity between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992);
Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-
Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB
2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721. See also San Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed.
Opposition No. 91213413
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Cir. 1992). The proper focus is on the recollection of the average customer, who
retains a general rather than specific impression of the marks. L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); 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). Because the goods at issue are jewelry,
handbags, purses, wallets, tote bags, and clothing, without any restriction as to
channels of trade or classes of consumers, the average customer is an ordinary
consumer.
As noted above, Opposer’s mark is MAPPIN & WEBB and Applicant’s mark is M
WEBB. While both marks share the surname “Webb,” the prefix terms “MAPPIN”
and “M” incorporated into the respective marks are different. The issue is whether
MAPPIN & WEBB and M WEBB suggest a single same source.
Opposer contends that the marks are similar because “[b]oth marks begin with
the identical letter ‘M,’ followed by the identical element ‘Webb.’ And while
Applicant seeks to minimize the significance of same … the fact remains that the
entirety of Applicant’s mark is encompassed with the MAPPIN & WEBB Marks.”37
Indeed, the Board has previously recognized the practice in the fashion industry of
referring to surnames alone. See Polo Fashions, Inc. v. La Loren, Inc., 224 USPQ
509, 512 (TTAB 1984) (“Lauren” is a shorthand term for Ralph Lauren); Nina Ricci,
S.A.R.L. v. Haymaker Sports, Inc., 134 USPQ 26, 28 (TTAB 1962) (“While applicant
has never used ‘RICCI’ as a trademark, it is common knowledge that various

37 35 TTABVUE 11. See also 22 TTABVUE 26 and.
Opposition No. 91213413
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couturiers such as Christian Dior, Hubert de Givenchi, and Jacques Fath are
frequently referred to by their surname alone and, in this regard, it has been shown
by the record that both opposer corporation and applicant's designer are sometimes
identified as or referred to in the trade as ‘RICCI’.”). See also Nina Ricci S.A.R.L. v.
E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“the
Board has previously recognized the practice in the fashion industry of referring to
surnames alone”); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321,
1333 (TTAB 1992) (“companies are frequently called by shortened names, such as
Penney's for J.C. Penney's, Sears for Sears and Roebuck … , Ward's for Montgomery
Ward's, and Bloomies for Bloomingdale's); Big M. Inc. v. United States Shoe Corp.,
228 USPQ 614, 616 (TTAB 1985) (“[W]e cannot ignore the propensity of consumers
to often shorten trademarks and, in the present case, this would be accomplished by
dropping the ‘T.H.’ [in T.H. MANDY] in referring to registrant's stores.”).
Applicant, on the other hand, argues that Opposer’s mark is two surnames while
Applicant’s mark is a single person’s name.38 In this regard, the use of a single
consonant followed by a surname carries the meaning of an abbreviated first name,
and Applicant asserts that it is the diminutive name by which Marissa Webb is

38 28 TTABVUE 18. As the Board noted in Harry Winston, Inc. v. Bruce Winston Gem Corp.,
111 USPQ2d 1419, at 1447 (TTAB 2014), “[a] surname preceded by a given name is a
common, highly conventional combination of word elements.” However, Opposer’s mark
MAPPIN & WEBB does not fit that pattern because it is a combination of two surnames
and a mark must be considered in its entirety. In re Standard Elektrik Lorenz A.G., 371
F.2d 870, 152 USPQ 563, 566 (CCPA 1967).

Opposition No. 91213413
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known.39 Thus, Applicant concludes that the marks have different meanings and
engender different commercial impressions.
Although Applicant adopted the trademark M WEBB because it closely
resembled its principal’s personal name,40 there is no evidence that Marissa Webb is
referred to as M WEBB. Marissa Webb testified that “the MARISSA WEBB line
[has] enjoyed extensive unsolicited exposure in numerous U.S. media outlets and
nationally circulated magazines,41 but none of them refer to MARRISA WEBB as M
WEBB. In fact, when the exhibits attached to Marissa Webb’s declaration shorten
or abbreviate her name, they refer to Marissa Webb as Webb.42
Ms. Galton testified that Opposer has continuously used its MAPPIN & WEBB
marks in the United Kingdom since 1860.43 In all that time, Opposer has never
abbreviated its name to WEBB, M WEBB or M & WEBB. To the contrary, Opposer
has abbreviated the MAPPIN & WEBB marks as MW and placed the MW
monogram on some of its leather products44 and M&W on some of its precious metal
products.45 Like Applicant, Opposer has been featured in unsolicited editorials in

39 28 TTABVUE 18.
40 29 TTABVUE 3.
41 29 TTABVUE 5.
42 See for example, 29 TTABVUE 13 (“Pennsylvania-bred Webb”), 14 (“Look out for Webb’s
first collection in stores in fall 2015), 20 (“sequined shorts from Webb’s spring lookbook”).
43 24 TTABVUE 18.
44 24 TTABVUE 20.
45 24 TTABVUE 20. While we previously did not consider evidence of sales outside of the
United States in analyzing the commercial strength of Opposer’s mark or the effect of
foreign websites on U.S. consumers, we nevertheless find Opposer’s failure to abbreviate it
its name and mark as WEBB, M WEBB or M & WEBB, and Opposer’s failure to find any
Opposition No. 91213413
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various fashion magazines and blogs without any evidence that its name has been
shortened or abbreviated to WEBB, M WEBB or M & WEBB or variations thereof.
Even though after 150 years, neither Opposer nor the public shortens or
abbreviates MAPPIN & WEBB to WEBB, M WEBB or M & WEBB, Opposer
hypothesizes that consumers will shorten or abbreviate MAPPIN & WEBB to
WEBB, M WEBB or M & WEBB. In this regard, Opposer introduced 41 third-party
website excerpts “showing various third-party companies that have abbreviated or
shortened their name and/or whose names are abbreviated and/or shortened by the
general public.”46 The relevant excerpts are from companies whose names are
composed of two surnames. For example,
1. Abercrombie & Fitch has abbreviated its name to A&F and A & Fitch;47
2. Dolce & Gabbana has abbreviated its name to D&G;48

websites so abbreviating its mark as being probative of the likelihood that consumers will
shorten or abbreviate MAPPIN & WEBB to M WEBB.
46 25 TTABVUE 31. Brian Duffy, Chief Executive Office of the Aurum Group, licensee of
the MAPPIN & WEBB trademark, testified that even though Opposer has not abbreviated
MAPPIN & WEBB to WEBB, M WEBB or M & WEBB, “[t]here is, however, no magical
formula for abbreviating brand names in the fashion industry.” 37 TTABVUE 3.
47 25 TTABVUE 746-750.
48 25 TTABVUE 767. Although it is improper rebuttal evidence, Mr. Duffy testified that
Dolce & Gabbana has been abbreviated to D Gabbana and introduced supporting
documentation. 37 TTABVUE 5 and 71-98. Evidence that Dolce & Gabbana has been
abbreviated to D Gabbana should have been introduced as part of Opposer’s case-in-chief
because it supports Opposer’s prima facie case that consumers will construe MAPPIN &
WEBB as M WEBB. Evidence which should constitute part of an opposer's case in chief, but
which is made of record during the rebuttal period, is not considered when the applicant
objects.
Applicant is entitled to an opportunity to rebut, during its
testimony period, any testimony and evidence proffered in
support of the allegations in the notice of opposition. This
opportunity is foreclosed if opposer withholds the evidence
Opposition No. 91213413
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3. Hewlett Packard has abbreviated its name to HP;49
4. Metro-Goldwyn-Mayer abbreviated its name to MGM;50
5. Barnes & Noble has abbreviated its name to BN;51
6. Standard & Poor has abbreviated its name to S&P;52
7. Procter & Gamble has abbreviated its name to P&G;53 and
8. Sears, Roebuck & Company has abbreviated its name to Sears.54
Of the eight relevant companies whose names comprise multiple surnames,
there is evidence that four have relevant abbreviations: Abercrombie & Fitch (A &
Fitch on t-shirts and polo shirts), Proctor & Gamble (P Gamble), Dolce & Gabbana
(D Gabbana), and Hewlett Packard (H Packard). However, there is no evidence
regarding how extensively those abbreviations are used. For example, with respect
to the Abercrombie & Fitch website, the menu on the left-hand side of the website
identifies Abercrombie clothing, not A & Fitch clothing; the Proctor & Gamble

until its rebuttal testimony period, which is intended to be
limited to denials, refutations or explanations of applicant's
testimony and evidence. (Emphasis added).
General Electric Company v. Graham Magnetics Incorporated, 197 USPQ 690, 692 n.5
(TTAB 1977). However, because Applicant did not lodge an objection to Mr. Duffy’s rebuttal
declaration, we consider the evidence therein.
49 25 TTABVUE 821-824. Mr. Duffy introduced an excerpt from the fixya.com website
posted by an anonymous source referring to Hewlett Packard as H Packard. 37 TTABVUE
34.
50 26 TTABVUE 25-31.
51 26 TTABVUE 33-36.
52 26 TTABVUE 38-39.
53 26 TTABVUE 48-49. Mr. Duffy introduced an excerpt from the chestercountymoms.com
website referring to Procter & Gamble as P & Gamble. 37 TTABVUE 46.
54 26 TTABVUE 51.
Opposition No. 91213413
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abbreviation is posted on the Chestercountymoms.com website; and the Hewlett
Packard abbreviation is posted on the fixya.com website by an anonymous source.
While “D. Gabbana” appeared as a title on Pinterest.com, all of the numerous
photographs “pinned” by others were labelled as “Dolce & Gabbana,” “Dolce and
Gabbana,” or “Dolce Gabbana.”
Applicant introduced excerpts from 23 third-party websites from companies
“whose names consist of compound surnames that have been shortened or
abbreviated to the first word or the first initials of each word, either by the
companies themselves or the general public, and which have otherwise not been
submitted by Opposer into evidence.”55 See for example, Bristol-Myers Squibb
(Bristol-Myers),56 Archer Daniels Midland (ADM),57 and Goldman Sachs Group
(Goldman).58
Applicant also introduced excerpts from seven third-party fashion brand
websites “whose marks consist of two words separated by an ampersand (‘&’) or the
word ‘and,’ and which have been shortened or abbreviated to the first word or the
first initials of each word, either by the companies themselves or the general

55 31 TTABVUE 22.
56 31 TTABVUE 236-239. Mr. Duffy introduced an excerpt from thepharmaletter.com
website referring to Bristol-Myers Squibb as B-M Squibb in a headline for an article posted
online. 37 TTABVUE 53.
57 31 TTABVUE 189.
58 31 TTABVUE 211-214.
Opposition No. 91213413
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public.”59 See for example, Cutter & Buk (CB),60 Matt & Nat (MN),61 and Stella &
Bow (SB).62
After carefully considering the testimony and evidence, the record fails to
support Opposer’s contention that consumers will perceive M WEBB as a shortened
version or abbreviation of MAPPIN & WEBB. Unlike in the cases cited by Opposer,
in this case, after 150 years, there is no evidence that Opposer or anyone else
referred to Opposer as WEBB, M WEBB or M & WEBB. Moreover, the evidence
regarding abbreviations for similarly structured trademarks is unpersuasive based
on the relatively few relevant abbreviations and the obscure sources for some of
those abbreviations.
MAPPIN & WEBB is a mark comprised of two surnames: Mappin, a relatively
obscure surname, and Webb, a relatively common surname.63 Applicant’s mark M

59 31 TTABVUE 23.
60 31 TTABVUE 315. However, Brian Duffy testified that Kohl’s advertises a C-BUK
(Cutter & Buck) line of men’s clothing. 37 TTABVUE 4 and 16-18.
61 31 TTABVUE 341-343.
62 31 TTABVUE 345-351.
63 30 TTABVUE 8 and 35-58. According to the United States Census Bureau (census.gov)
tabulation of surnames occurring 100 or more times in the 2000 Census, Webb is the 137th
most common surname with 163,481 entries. Mappin did not make the top 1000 entries.
The 1000th entry was Cooke with 31,860 entries. Opposer objects to this evidence as
hearsay. 39 TTABVUE 11. The tabulation of surnames is an official record of the United
States Census Bureau and is admissible pursuant to Trademark Rule 2.122(e), 37 CFR §
2.122(e). The term “official records” as used in 37 CFR § 2.122(e) refers to the records of
public offices or agencies, or records kept in the performance of duty by a public officer.
TBMP § 704.07 (June 2015). In lieu of the actual “official record or a copy thereof,” the
notice of reliance or testimony may be accompanied by an electronically generated
document (or a copy thereof) which is the equivalent of the official record, and whose
authenticity is established under the Federal Rules of Evidence. See The Conde Nast
Publications, Inc. v. Vogue Travel, Inc., 205 USPQ 579, 580 n.5 (TTAB 1979).
Opposition No. 91213413
- 26 -

WEBB suggests one person. Based on the uniqueness of MAPPIN and the
familiarity of WEBB, consumers will not shorten or abbreviate Opposer’s mark to
WEBB, M WEBB or M & WEBB. Rather, consumers will likely focus their attention
on the MAPPIN element of the mark. The inclusion of the surname MAPPIN in
MAPPIN & WEBB distinguishes the marks MAPPIN & WEBB and M WEBB as
indicating different sources of goods.
This case differs from Nina Ricci S.A.R.L. V.E.T.F. Enterprises Inc., 889 F.2d
1070, 12 USPQ2d 1901 (Fed. Cir. 1989), where the Federal Circuit noted that “the
RICCI surname is a unifying name in Opposer’s marks and is the dominant and
significant part of opposer’ s marks in identifying its goods” and that the RICCI
mark had significant commercial strength. 12 USPQ2d at 1904. In this case,
Opposer’s mark has no commercial strength in the United States and the relatively
obscure surname MAPPIN in combination with the relatively common surname
WEBB is sufficient to distinguish the marks.
Also, we find that this case is distinguishable from Big M. Inc. v. The United
States Shoe Corporation, 228 USPQ 614 (TTAB 1985), where the Board found
MANDEE likely to cause confusion with T.H. MANDY. In that case, T.H. MANDY
and MANDEE both suggest one person and the inclusion of the initials “T.H.” in the
mark T.H. MANDY did not distinguish the marks; while in this case, MAPPIN &
WEBB suggest two persons because the mark is comprised of two surnames and,

Also, the Board may take judicial notice of census data. In re Aquamar, Inc., 115 USPQ
1122, 1127 n.6 (TTAB 2015); In re Tokutake Indus. Co., 87 USPQ2d 1697, 1700 n.1 (TTAB
2008).
Opposition No. 91213413
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thus, the inclusion of MAPPIN serves to distinguish the marks. As for the
propensity of consumers to shorten trademarks, in Big M, the Board found that
consumers would drop the “T.H.” from T.H. MANDY whereas, in the present case,
because of the uniqueness of the MAPPIN surname, consumers would be unlikely to
drop MAPPIN in favor of WEBB.
On balance, we find that MAPPIN & WEBB and M WEBB are more dissimilar
than similar in terms of appearance, sound, connotation and commercial
impression.
D. Balancing the factors.
Despite the fact that the marks are used on goods that are in part identical and
otherwise closely related, because the marks are dissimilar in their entireties, we
find that Applicant’s mark M WEBB for “handbags, purses, wallets, tote bags” and
“women's apparel and accessories, namely, shirts, t-shirts, pants, dresses, skirts,
shorts, jackets, coats, sweaters, lingerie, pajamas, robes, socks, hosiery, scarves,
gloves, hats, belts and footwear” is not likely to cause confusion with Opposer’s
marks MAPPIN & WEBB and MAPPIN & WEBB LONDON both for, inter alia,
“jewelry “and “leather articles, namely, wallets, credit card holders and calling card
holders, luggage tags, purses, trunks and travelling bags; umbrellas, parasols and
walking sticks; articles made of precious metals or coated or plated therewith,
namely, credit card holders and calling card holders.”
Decision: The opposition is dismissed.