MassDrop, Inc.

Trademark Trial and Appeal Board

May 28, 2020

87869354 (T.T.A.B. May. 28, 2020)

Mailed: May 28, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
————
In re MassDrop, Inc.
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Serial No. 87869354
_____
Richard M. Assmus, Kristine M. Young and Madelaine M. Thomas
of Mayer Brown LLP for MassDrop, Inc.

Pauline Ha, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____
Before Zervas, Adlin and Lebow, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant MassDrop, Inc. seeks registration of DROP, in standard characters, for
“belts for clothing; leather belts; jeans; denim jeans; blue jeans; baseball caps and
hats; clothing, namely, t-shirts, long sleeve t-shirts, sweatshirts, sweaters, jackets;
clothing for men, namely, tops, bottoms, headwear, footwear; sneakers; all of the
foregoing excluding gloves and not specifically for skiing or snowboarding” in
International Class 25.1 The Examining Attorney refused registration under Section

1 Application Serial No. 87869354, filed April 9, 2018 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on an alleged bona fide intent to use the mark in commerce.
This Opinion is Not a
Precedent of the TTAB
Serial No. 87869354
2
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark
so resembles an identical registered mark (DROP in typed form) for, inter alia, “gloves
for use in skiing and snowboarding,”2 also in International Class 25, that use of
Applicant’s mark in connection with Applicant’s goods is likely to cause confusion.
After the refusal became final, Applicant appealed and filed a request for
reconsideration which was denied. The appeal is fully briefed.
I. Evidentiary Objection
The Examining Attorney’s objection to evidence attached to Applicant’s Appeal
Brief which was not previously made of record is sustained. Trademark Rule 2.142(d)
(“The record in the application should be complete prior to the filing of an appeal.”).3
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each du Pont factor about
which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two

2 Registration No. 2508470, issued November 20, 2001; renewed.
3 We hasten to add that if the list of third-party registrations provided in the body of
Applicant’s Appeal Brief is accurate, and the underlying registrations had been timely
introduced, our ultimate decision on the merits would be the same. Indeed, as the Examining
Attorney points out, the third-party registrations on which Applicant seeks to rely are
apparently not for the mark DROP alone, which is the mark at issue in this case.
Serial No. 87869354
3
key considerations are the similarities between the marks and the similarities
between the goods. 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 Marks
The marks are identical in appearance, sound, meaning and commercial
impression, because there is no substantive difference between marks in standard
characters and marks in typed form. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly were
known as ‘typed’ marks, but the preferred nomenclature was changed in 2003 to
conform to the Madrid Protocol … we do not see anything in the 2003 amendments
that substantively alters our interpretation of the scope of such marks”). Applicant
does not argue that the marks are different in any way. This factor not only weighs
heavily in favor of finding a likelihood of confusion, but also reduces the degree of
similarity between the goods required to support a finding of likelihood of confusion.
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time
Warner Ent. Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One
Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).
B. The Goods, Channels of Trade and Classes of Consumers
Applicant’s suggestions to the contrary notwithstanding, the goods need not be
identical or even competitive in order to find a likelihood of confusion. Rather, the
question is whether the goods are marketed in a manner that “could give rise to the
Serial No. 87869354
4
mistaken belief that [the] goods emanate from the same source.” Coach Services Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also
Hewlett-Packard Co. v. Packard Press Inc., 227 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002) (“Even if the goods and services in question are not identical, the
consuming public may perceive them as related enough to cause confusion about the
source or origin of the goods and services.”); Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1898 (Fed. Cir. 2000) (“even if the goods in question are different from,
and thus not related to, one another in kind, the same goods can be related in the
mind of the consuming public as to the origin of the goods”); Kohler Co. v. Baldwin
Hardware Corp., 82 USPQ2d 1100, 1109 (2007).
Here, the Examining Attorney has established through Internet printouts that a
number of third parties use the same marks for ski gloves on the one hand and the
types of clothing Applicant intends to offer on the other. For example, DAKINE is
used for t-shirts such as those identified in the involved application, and snowsports
gloves, such as those identified in the cited registration:

Serial No. 87869354
5
September 10, 2018 Office Action TSDR 49-50. Similarly, the marks SMARTWOOL
and THE NORTH FACE are each used (by different owners) for ski gloves,
identified in the cited registration, and jackets, identified in the involved
application:

Serial No. 87869354
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Id. at 51-52, 55-56. The mark OUTDOOR RESEARCH is used for men’s footwear,
such as identified in the involved application, and ski gloves, such as identified in
the cited registration, while MARMOT is used for both sweaters, identified in the
involved application, and ski gloves, identified in the cited registration:

Id. at 53-54, 59-60. The marks COLUMBIA and SPYDER are each used (by different
owners) for ski gloves on the one hand and baseball caps or hats on the other:
Serial No. 87869354
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Id. at 63-66. The record includes numerous similar examples of third parties using
the same mark for goods identified in the involved application on the one hand, and
snowsport gloves as identified in the cited registration on the other, including:
OAKLEY (used for winter gloves and belts); GRENADE (used for snowboard gloves
and caps); ARC'TERYX (skiing, snowboarding and winter sports gloves and belts);
BACKCOUNTRY (ski gloves, men’s shorts, jackets); QUIKSILVER (ski gloves, denim
jeans, sweaters, t-shirts and belts); VOLCOM (ski and snowboard gloves, belts,
baseball hats, jackets, jeans, sweatshirts, t-shirts); CABELA’S (ski gloves, hats, men’s
denim jeans, long sleeve t-shirts); EDDIE BAUER (ski gloves, belts, sweatshirts,
men’s footwear); LL BEAN (ski gloves, belts, baseball caps, men’s jeans);
PATAGONIA (skiing and snowboarding gloves, baseball caps, men’s jeans, sweaters).
Serial No. 87869354
8
March 26, 2019 Office Action TSDR 6-7, 14-33. October 21, 2019 Denial of Request
for Reconsideration TSDR 5-45, 60-75.
The Examining Attorney also relies on a large number of use-based third-party
registrations showing that the same marks are registered in connection with ski or
snowboard gloves on the one hand and one or more of the goods identified in
Applicant’s involved application on the other, as follows:

Reg. No. 5536369

Reg. No. 5510848
HAND OUT

Reg. No. 5255927
SYNC
PERFORMANCE

Reg. No. 5484080

Reg. No. 5544063
RED RUM

Reg. No. 5511576
BARELOVE

Reg. No. 5433440
DEBRA
WEITZNER

Reg. No. 5463721

Reg. No. 5463844
CLIMIX

Reg. No. 5458708
ALPINE720

Reg. No. 5468980
SASSHOLE

Reg. No. 5544595
NAVISKIN

Reg. No. 5535111

Reg. No. 5540422

Reg. No. 5514624
SOPHISTICATED
SAVAGE

Reg. No. 5638536
HAPPY HERB

Reg. No. 5703813
GET AWKWARD

Reg. No. 5596408
YHIM

Reg. No. 5623343
BLIPPI

Reg. No. 5335209
SALTY STASH

Reg. No. 5704021

Reg. No. 5520891

Reg. No. 5493812

Reg. No. 5578409

Reg. No. 5688613
VODA

Reg. No. 5507058

Reg. No. 5572109
ONCE A
CHEERLEADER
NOW THE BOSS

Reg. No. 5599102

Reg. No. 5625771

Reg. No. 5693276
CREW 82

Reg. No. 5662976
SEVEN TIMES
SIX

Reg. No. 5594836
Serial No. 87869354
9
ASCENTIX

Reg. No. 5600044
FEWCHER

Reg. No. 5631506

Reg. No. 5661425

Reg. No. 5649339
KV+

Reg. No. 5702047
MARIA HARPER

Reg. No. 5703425
OVERWIT

Reg. No. 5852097

Reg. No. 5854200
BELGIUS

Reg. No. 5818137

Reg. No. 5871397

Reg. No. 5789761 Reg. No. 5722345
STZ

Reg. No. 5763390

Reg. No. 5869839
I AM NOT
INTIMIDATED

Reg. No. 5832189

Reg. No. 5881437

Reg. No. 5799736

Reg. No. 5832734

Reg. No. 5821095
SONEOME

Reg. No. 5862128
JAVDA

Reg. No. 5879036
DEVEMBR

Reg. No. 5873793

September 10, 2018 Office Action TSDR 8-48; March 26, 2019 Office Action TSDR 34-
119; October 21, 2019 Denial of Request for Reconsideration TSDR 76-132. “Third-
party registrations which cover a number of differing goods and/or services, and
which are based on use in commerce, although not evidence that the marks shown
therein are in use on a commercial scale or that the public is familiar with them, may
nevertheless have some probative value to the extent that they may serve to suggest
that such goods or services are of a type which may emanate from a single source.”
See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998).
Serial No. 87869354
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This evidence establishes that ski and snowboard gloves are related to many of
the specific clothing items identified in Applicant’s involved application.4 It also
establishes that ski and snowboard gloves move in the same channels of trade, to the
same consumers, as many of the specific clothing items identified in Applicant’s
involved application. Indeed, these goods are often sold under the same marks not
only on the same brand owner and specialty store websites, but in the same sections
of those websites.
In any event, neither Applicant’s nor Registrant’s identification of goods contains
any trade channel or consumer limitations. Therefore, we must presume that
Applicant’s and Registrant’s goods move in all channels of trade normal therefor,
which the evidence shows to be overlapping. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“An application
with ‘no restriction on trade channels’ cannot be ‘narrowed by testimony that the
applicant’s use is, in fact, restricted to a particular class of purchasers.’”); Citigroup
Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.

4 Applicant’s reliance on McGregor-Doniger, Inc. v. Drizzle Inc., 599 F.2d 1126, 202 USPQ 81
(2d Cir. 1979), an infringement case decided under what was then 2nd Circuit law (but has
since changed), is misplaced. There, unlike here, the marks were not identical and the Court,
unlike this Board, was entitled to and did consider the marketing “milieu” surrounding use
of the marks in question, which included use in connection with a house mark and “real
world” trade channel differences, among other considerations not relevant in ex parte Board
cases. This Board typically may consider only the drawings of the marks and identifications
of goods in the involved application and cited registration. Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting
Octocom Sys., Inc. v. Houston Comp. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990)); SCM Corp. v. Royal McBee Corp., 395 F.2d 1018, 158 USPQ 36, 37 n.4 (CCPA
1968).
Serial No. 87869354
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2011); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (goods
presumed to be “offered in all channels of trade which would be normal therefor”); In
re Elbaum, 211 USPQ 639, 640 (TTAB 1981).5 These factors therefore also weigh in
favor of finding a likelihood of confusion.
C. Consumer Sophistication and Care
Applicant argues that ski and snowboard glove consumers are “sophisticated” and
“very particular” about their purchases. While this may very well be true in many
cases, Registrant’s (and for that matter Applicant’s) identification of goods contains
no limitations as to price, or type of consumers. We must base our decision on the
“least sophisticated potential purchasers” for the goods, which as identified are not
necessarily “hi-tech” or “high end.” Stone Lion, 110 USPQ2d at 1162-63. Moreover,
we do not need evidence to know that there are different types of skiers and
snowboarders, some of whom are small children, first timers or spring
skiers/snowboarders who enjoy their sport most when it is above freezing, sometimes
substantially so. These potential purchasers and users of the goods do not necessarily
require the same types of gloves as, for example, racers or other athletes who compete

5 This is why Applicant’s citation of “real world” trade channel differences, 10 TTABVUE 10-
12, is irrelevant – the identified differences are not reflected in either Applicant’s or
Registrant’s identification of goods. In any event, the fact that Applicant “creates consumer
products with input from its members,” and “has hundreds of product offerings,” id.,
increases the likelihood of confusion. Indeed, when consumers learn that Applicant offers
products “chosen, created, or inspired by our enthusiast communities,” which include
products in fields as varied as “mechanical keyboards,” “quilting,” “watches,” “baking” and
“trading card games,” it would not be a stretch for them to assume that Applicant might also
offer ski or snowboard gloves. March 7, 2019 Office Action response TSDR 6. In fact, the
categories of products highlighted on Applicant’s website include “Men’s Apparel” and
“Outdoors.” Id.
Serial No. 87869354
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in brutal, unforgiving conditions. Similarly, purchasers of Applicant’s “t-shirts” and
“baseball caps” are not necessarily sophisticated or particular, as these are everyday
and typically inexpensive items. See e.g. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (quoting Gen.
Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011),
judgment set aside on other grounds, 2014 WL 343267 (TTAB 2014)). This factor is
neutral.
III. Conclusion
The marks are identical, the goods related and the channels of trade and classes
of consumers overlap. There is therefore a likelihood of confusion.

Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.