Marco A. Calzada

Trademark Trial and Appeal Board

Dec 30, 2015

No. 86333449 (T.T.A.B. Dec. 30, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: December 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Marco A. Calzada
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Serial No. 86333449
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John K. Buche and Byron E. Ma of Buche & Associates PC
for Marco A. Calzada.
Kevin J. Crennan, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
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Before Lykos, Greenbaum and Adlin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On July 10, 2014, Marco A. Calzada (“Applicant”) filed an application to register
on the Principal Register the mark OFFROAD LIFE in standard characters for
“Decals; Stickers” in International Class 16 and “Footwear; Jackets; Shirts; Sports
caps and hats” in International Class 25. 1
The Trademark Examining Attorney refused registration of Applicant’s mark as
to both classes under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s mark so resembles the registered mark

1 Application Serial No. 86333449 filed under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a).
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LIVIN’ LIFE OFF-ROAD also in standard characters for “Decals” in International
Class 16, “Shirts, hat” in International Class 25, and “Retail store services featuring
clothing, and decals” in International Class 352 that, when used on or in connection
with Applicant’s identified goods, it is likely to cause confusion or mistake or to
deceive.
In an attempt to circumvent the refusal, Applicant amended the identification of
goods to “Decals and Stickers related to outdoor activities and sports” and “Clothing
related to outdoor activities and sports, namely, footwear, jackets, shirts, sports
caps and hats.” The Examining Attorney accepted the amendment but maintained
and made final the Section 2(d) refusal.
Applicant appealed and filed a request for reconsideration which was denied.
The appeal is now fully briefed. For the reasons set forth below, we affirm the
Section 2(d) refusal as to both classes of goods.
I. Applicable Law
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). 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 goods. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated

2 Registration No. 44632023, issued on January 7, 2014 on the Principal Register.
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Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
These factors and others as to which Applicant or the Examining Attorney
submitted argument or evidence are discussed below.
A. The Goods and Trade Channels

We commence our analysis with the second and third du Pont factors – a
comparison of the goods and established, likely-to-continue channels of trade. At the
outset we find that Applicant’s and Registrant’s goods are legally identical in part.
We must compare Applicant’s and Registrant’s respective goods as they are
identified in the application and the cited registration. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). Registrant’s broadly worded identification of
“Decals” in International Class 16 encompasses Applicant’s more narrowly
identified “Decals … related to outdoor activities and sports.” By the same token,
Registrant’s “shirts” in International Class 25 are unrestricted and therefore
include Applicant’s “shirts,” even though they are limited to “outdoor activities and
sports,” which is merely a subset of Registrant’s “shirts.” See, e.g., In re Hughes
Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant's broadly
worded identification of ‘furniture’ necessarily encompasses Registrant's narrowly
identified ‘residential and commercial furniture.’”). Thus, Applicant’s argument that
its decals and shirts are different because they are specifically designed for outdoor
activities and sports is futile.
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Because the goods are in part legally identical and unrestricted as to trade
channels, we must also presume that Applicant’s and Registrant’s identical
products in Classes 16 and 25 travel in the same ordinary trade and distribution
channels and will be marketed to the same potential consumers. See 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); 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); American Lebanese Syrian Associated
Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB
2011).3
Accordingly, the second and third du Pont factors both weigh in favor of finding
a likelihood of confusion. See Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be
found as to the entire class if there is likely to be confusion with respect to any item
that comes within the identification of goods or services in that class).4

3 We further add that the record shows that the ordinary trade channels for shirts as
identified in both the application and cited registration are clothing retailers (both in store
and online) such as Gap and Old Navy, which [if the evidence supports it] both offer outdoor
clothing. See October 22, 2014 Office Action (excerpts from www.gap.com and
www.oldnavy.com).
4 In view thereof, we need not address the similarities between Applicant’s goods and
Registrant’s services.
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B. The Marks

We now direct our attention to the first du Pont likelihood of confusion factor,
which involves an analysis of the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “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, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012) (citation omitted). Our analysis cannot be predicated on dissecting the
marks into their various components; that is, the decision must be based on the
entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co.,
667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark
should not be dissected and considered piecemeal; rather, it must be considered as a
whole in determining likelihood of confusion.”). Finally, we note that it is well-
settled that, where the goods are identical or legally identical, typically less
similarity between the marks is needed for us to find a likelihood of confusion. See,
e.g., Viterra, 101 USPQ2d at 1908; Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (“When marks
would appear on virtually identical goods or services, the degree of similarity
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necessary to support a conclusion of likely confusion declines.”).
Applicant points to the obvious visual differences between its mark OFFROAD
LIFE as compared to the cited mark LIVIN’ LIFE OFF-ROAD in format,
structure, and syntax. Applicant further asserts that each mark has a “stark”
difference in sound, given that Applicant’s mark is comprised of two words
commencing with OFFROAD whereas Registrant’s mark consists of three words
and begins with the slang term LIVIN’ meaning “living.” In addition, Applicant
maintains that the connotation and commercial impression of each mark is distinct
insofar as its mark portrays “a type of life or lifestyle, not the active participation of
living life off road” or “physically being off road.” Applicant’s Brief, p. 9; 4
TTABVUE 14. Applicant takes the position that the word “life” and term “livin’” in
the context of the two marks each engender their own unique meaning, given that
the word “life” has over 31 possible meanings according to the Merriam-Webster
Dictionary.
Applicant’s arguments are unconvincing. While Registrant’s and Applicant’s
respective marks look and sound slightly different, the meaning and commercial
impression is nearly identical. In the Merriam-Webster Dictionary, “off-road” is
defined “of, relating to, done with, or being a vehicle designed especially to operate
away from public roads,” and one commonly recognized definition of “life” is “a way
or manner of living.” (emphasis added).5 As this definition makes clear, the words
“life” and “living” (or slang thereof, “livin’”) are very close in meaning. The fact that

5 Merriam-Webster Dictionary (www.merriam-webster.com) submitted with November 26,
2014 Office Action.
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there are other commonly known definitions of the word “life” does not detract from
its significance here as a noun modified by the adjective “off road” or the
hyphenated version thereof. When considered as a whole, both marks evoke images
of an unconventional lifestyle that includes outdoor recreational activities such as
all-terrain vehicle (ATV) driving or mountain biking. Thus, although Applicant’s
and Registrant’s marks may have some recognizable differences in sight and sound
due to the transposition of shared terms and differences in initial terms, there are
striking similarities in connotation, and, ultimately, overall commercial impression.
See, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding
THE WINE SOCIETY OF AMERICA and design, for “wine club membership
services including the supplying of printed materials, sale of wines to members,
conducting wine tasting sessions and recommending specific restaurants offering
wines sold by applicant,” likely to be confused with AMERICAN WINE SOCIETY
1967 and design, for a newsletter, bulletin and journal of interest to members of the
registrant); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988)
(holding RUST BUSTER, with "RUST" disclaimed, for a rust-penetrating spray
lubricant likely to be confused with BUST RUST for a penetrating oil). We hasten to
add that the addition of the hyphen to “off road” in the cited mark is
inconsequential. See In re Sears, Roebuck and Co., 2 USPQ2d 1312, 1313 (TTAB
1987) (“[A]pplicant's mark ‘CROSS-OVER’ and registrant's mark ’CROSSOVER’ are
identical in sound, and are also identical in appearance but for the inclusion in
applicant's mark of a hyphen, which, for purposes herein, is of no legal
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significance.”). The first du Pont factor therefore also weighs in favor of finding a
likelihood of confusion.
C. The Number and Nature of Similar Marks in Use on Similar Goods
We will now consider the sixth du Pont factor, the relative strength or weakness
of the cited mark. “[T]he strength of a mark is not a binary factor” but rather
“varies along a spectrum from very strong to very weak.” Juice Generation, Inc. v.
GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015)
(internal citations omitted). “The weaker [the Registrant’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.” Id. at
1676 (internal citations omitted). See also Palm Bay Imps., 73 USPQ2d at 1693
(“Evidence of third-party use of similar marks on similar goods is relevant to show
that a mark is relatively weak and entitled to only a narrow scope of protection.”).
Applicant argues that the cited mark LIVIN’ LIFE OFF-ROAD is entitled to a
narrow scope of protection because the term “off-road” is diluted and commercially
weak in connection with the identified goods and services. In support thereof,
Applicant has made of record two use-based third-party registrations, one of which
has been cancelled for failure to file a Section 8 affidavit and therefore is of no
probative value,6 and the other for the mark OFF ROAD MAFIA (standard
characters) for “Button-front aloha shirts; Camp shirts; Dress shirts; Golf shirts;
Knit shirts; Night shirts; Open-necked shirts; Pique shirts; Polo shirts; Shirt fronts;

6 Registration No. 3554115 for the mark QUAD OFF-ROAD for t-shirts cancelled on July
31, 2015.
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Shirt yokes; Shirts; Shirts for suits; Short-sleeved or long-sleeved t-shirts; Short-
sleeved shirts; Sleep shirts; Sport shirts; Sports shirts; Sports shirts with short
sleeves; Sweat shirts; T-shirts; Wind shirts” in International Class 25 with a
disclaimer of “OFF ROAD.”7
As we have often stated, because third-party registrations of marks are not
evidence that the registered marks are in use, they are of limited probative value
for demonstrating weakness of the marks. See In re Mighty Leaf Tea, 601 F.3d 1342,
94 USPQ2d 1257, 1259 (Fed. Cir. 2010). However, third-party registrations may be
used to show that a term has a meaning or significance in the same way that
dictionaries are used. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693, 694 (CCPA 1976). See also The Institut National des Appellations D'Origine v.
Vintners International Co. Inc., 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (“third
party registrations show the sense in which the word is used in ordinary parlance
and may show that a particular term has descriptive significance as applied to
certain goods or services.”) (internal citations omitted). See also Juice Generation,
115 USPQ2d at 1675. Indeed, “[t]hird 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, leading
to the conclusion that that segment is relatively weak.” Id. (citing Tektronix, Inc. v.
Daktronics, Inc., supra.). We cannot find, however, based on the existence of a single
third-party registration incorporating the term “off road” for various types of shirts

7 Registration No. 3845550, issued September 7, 2010.
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that Registrant’s mark as a whole is descriptive or suggestive to such an extent that
it deserves less protection.8
Applicant also submitted with its request for reconsideration a listing of third-
party registrations obtained from the Trademark Electronic Search System
(“TESS”) USPTO database for marks containing the words “LIFE” or “LIVING” as
further support that Registrant’s mark is weak or diluted. This mere listing,
however, is insufficient to make the referenced third-party registrations of record.
See In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In
re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002). See also
Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 1208.02
(2015). The Examining Attorney did not object to the listing on the basis that it is
not a proper way to make third-party registrations of record. Nonetheless, we
cannot deem the Examining Attorney to have waived any objection to this document
by failing to advise Applicant of the insufficiency, since at the point that Applicant
filed the list he no longer had an opportunity to add evidence to the record. See In re
1st USA Realty Professionals Inc., 84 USPQ2d at 1583. In view thereof, this list has
not been considered.9 Accordingly, we deem the sixth du Pont factor neutral.
II. Conclusion
After considering all of the evidence of record and arguments pertaining to the

8 In any event, the third-party registration does not include decals.
9 Even if we were to consider the list of third-party registrations, it has virtually no
probative value since it does not show the goods or services for which the marks were
registered. See In re 1st USA Realty Professionals Inc., 84 USPQ2d at 1583. Hence our
determination regarding the sixth du Pont factor would remain the same.
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du Pont likelihood of confusion factors, the first, second and third du Pont factors
discussed above favor a finding of likelihood of confusion, and the sixth factor is
neutral. As noted above, the goods and trade channels are in part legally identical,
and the marks are similar in connotation and commercial impression, despite slight
differences in sound and appearance. We treat as neutral any du Pont factors for
which there is no evidence or argument of record.
Accordingly, we find that there is a likelihood of confusion between Applicant’s
mark OFFROAD LIFE for “Decals and Stickers related to outdoor activities and
sports” in International Class 16 and “Clothing related to outdoor activities and
sports, namely, footwear, jackets, shirts, sports caps and hats” in International
Class 25 and Registrant’s mark LIVIN’ LIFE OFF-ROAD also in standard
characters for “Decals” in International Class 16, “Shirts, hat” in International
Class 25.
Decision: The Section 2(d) refusal to register Applicant’s mark as to both
International Classes 16 and 25 is affirmed.