Michael Harlan Studio LLCv.Kari Vettese dba Marilyn Hatten

Trademark Trial and Appeal Board

Dec 1, 2020

91236083 (T.T.A.B. Dec. 1, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: December 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Michael Harlan Studio LLC
v.
Kari Vettese dba Marilyn Hatten
_____

Opposition No. 91236083
_____

Shaun P. Keough and Kenneth R.L. Parker of Parker Keough LLP,
for Michael Harlan Studio LLC.
Joshua S. Schoonover of Coastal Patent Law Group, P.C.,
for Kari Vettese dba Marilyn Hatten.
_____

Before Wellington, Wolfson, and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Applicant, Kari Vettese, dba Marilyn Hatten, seeks registration on the Principal
Register of the stylized mark for “women’s clothing, namely,
shirts, dresses, skirts, blouses” in International Class 25.1

1 Application Serial No. 87213550 was filed on October 24, 2016, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce. The description of the mark reads, “[t]he mark
consists of the golden yellow stylized letters ‘MH’ which share their center line connecting
the two letters together above the stylized wording ‘MARILYN HATTEN’ in golden yellow on
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Opposer, Michael Harlan Studio LLC, has opposed registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), claiming priority
and likelihood of confusion with its two marks listed below for clothing items, wallets,
handbags, tote bags, and luggage.2 The first mark, , is the subject of two
pending applications for registration on the Principal Register:3 one alleges use and
use in commerce since 2007 on “wallets, handbags, tote bags and luggage” in
International Class 18;4 the other alleges use and use in commerce since 2007 on
“clothing, namely, coats, jackets, scarves, and pants,” and a bona fide intent to use on
“clothing, namely tops, shirts, blouses, sweaters and bottoms” in International Class
25.5

a white rectangular background.” The colors golden yellow and white are claimed as a feature
of the mark.

2 Notice of Opposition, 1 TTABVUE, as amended, 8 TTABVUE. The amended Notice of
Opposition also asserted a claim that Applicant lacked a bona fide intent to use her applied-
for mark when she filed her intent-to-use application, but that claim was dismissed on
summary judgment. 28 TTABVUE.
3 Amended Notice of Opposition, 8 TTABVUE 12-19.
4 Application Ser. No. 87269597, filed on Dec. 15, 2016 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a).
5 Application Ser. No. 87269608, filed on Dec. 15, 2016 under Trademark Act Sections 1(a)
and 1(b), 15 U.S.C. § 1051(a), (b). The description of the mark reads, “[t]he mark consists of
the stylized capital letters M and H.” Color is not claimed as a feature of the mark.
Opposition No. 91236083
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The second mark, , is also the subject of two pending
applications for registration on the Principal Register:6 one alleges use and use in
commerce since 2007 on “wallets, handbags, tote bags and luggage” in International
Class 18;7 the other alleges a bona fide intent to use on “clothing, namely, coats,
jackets, scarves, tops, shirts, blouses, sweaters, pants and bottoms” in International
Class 25.8
Opposer alleges that its applications were suspended on the ground that there
may be a likelihood of confusion with the mark in Applicant’s application, which was
filed almost two months earlier than the filing dates of Opposer’s applications.9
Applicant, in her Answer, denied the salient allegations of the Amended Notice of
Opposition.10 The matter is fully briefed.
We focus our analysis on Opposer’s mark. If likelihood of confusion is
found as to this mark, it is unnecessary to consider the other mark. In re I-Coat

6 Amended Notice of Opposition, 8 TTABVUE 20-27.
7 Application Ser. No. 87269614, filed on Dec. 15, 2016 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a).
8 Application Ser. No. 87269621, filed on Dec. 15, 2016 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b). According to Opposer’s description of the mark, “[t]he mark consists
of multiple circular shapes forming an image of the back of a stingray with the stylized capital
letters M and H in the lower right hand corner.” Color is not claimed as a feature of the mark.
9 Amended Notice of Opposition ¶ 3, 8 TTABVUE 7-9.
10 Answer, 14 TTABVUE.

Opposition No. 91236083
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Company, LLC, 126 USPQ2d 1730, 1734 (TTAB 2018) (citing Max Capital Grp. Ltd.,
93 USPQ2d 1243, 1245 (TTAB 2010)). We find that Applicant’s mark poses a
likelihood of confusion with this mark, and sustain the opposition.
I. Entitlement to Statutory Cause of Action
To establish entitlement to a statutory cause of action under Sections 13 or 14 of
the Trademark Act, a plaintiff must demonstrate a real interest in the proceeding
and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v.
Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, 3 (Fed. Cir. 2020); see also
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058
(Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025 (Fed. Cir. 1999).11
Applicant points out that Opposer’s suspended applications “never progressed
through prosecution to a point of receiving an actual refusal. Therefore, the USPTO
has not resolved the issue of confusion.”12 Nonetheless, Opposer’s evidence that its
pending trademark applications have been suspended pending resolution of
Applicant’s subject Application demonstrates that Opposer has a real interest in the
outcome of this proceeding and a reasonable belief that it would be damaged by

11 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this
inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature,
our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain
equally applicable. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277,
4 (Fed. Cir. 2020) (“we discern no meaningful, substantive difference between the analytical
frameworks expressed in Lexmark and Empresa Cubana….”).
12 Applicant’s brief, 43 TTABVUE 13.
Opposition No. 91236083
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registration of Applicant’s mark, thus establishing its entitlement to bring and
maintain this proceeding.13 See RxD Media, LLC v. IP Application Dev. LLC, 125
USPQ2d 1801, 1807 (TTAB 2018). Moreover, “[a] claim of likelihood of confusion that
is not wholly without merit, including prior use of a confusingly similar mark, may
be sufficient to establish a reasonable basis for a belief that one is damaged.” DeVivo
v. Ortiz, 2020 USPQ2d 10153, 2 (TTAB 2020) (internal punctuation omitted).
Applicant allows that “Although Opposer’s claim lacks merit, Applicant does not
contest Opposer’s standing to bring it.”14
II. The Record

The record comprises the pleadings, the file of Applicant’s opposed Application
under Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), and the following:
Opposer’s Evidence:

 Testimony declaration of Michael Schwarz, Opposer’s owner;15
 Testimony declaration of Michael Griffin, who states that he “has assisted, and
continue[s] to assist, Michael Harlan Studio in various capacities from time to
time since Michael Harlan Studio began using its in 2007”;16
 Testimony declaration of Carol Muehling, owner of Patina boutique;17
 Testimony declaration of Stan Herman, owner of Stan Herman Studio, a
clothing design studio;18

13 30 TTABVUE 22-87.
14 Applicant’s brief, 43 TTABVUE 8.
15 29 TTABVUE 2 et seq.
16 Griffin decl. ¶ 2, 29 TTABVUE 147 et seq.
17 29 TTABVUE 150 et seq.
18 29 TTABVUE 199 et seq.
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 Testimony declaration of Bill Kerch, who states that he has been in the clothing
and fashion industry for 40 years, has known Michael Schwarz for 20 years
and has helped Michael Harlan Studio expand its network of retail partners;19
 Testimony declaration of Shaun Keogh, attorney for Opposer;20
 Opposer’s First Notice of Reliance, containing
o Applicant’s Responses to Requests for Admission;21
o Copies of USPTO application files for Opposer’s subject applications;22
o Third-party registrations;23
 Opposer’s Second Notice of Reliance on third-party registrations;24
 Opposer’s Third Notice of Reliance on third-party Internet web pages.25

Applicant’s Evidence

 Applicant’s First Notice of Reliance on May 25, 2016 Women’s Wear Daily
article about Opposer;26
 Applicant’s Second Notice of Reliance on New York Department of State entity
search document indicating that Opposer, Michael Harlan Studio LLC, was
formed on August 29, 2011;27
 Applicant’s Third Notice of Reliance on third-party registrations for MH-
formative marks in International Classes 25 and 30.28

19 Kerch decl. ¶¶ 2-3, 29 TTABVUE 203 et seq.
20 29 TTABVUE 207 et seq.
21 30 TTABVUE 10 et seq.
22 30 TTABVUE 22 et seq.
23 30 TTABVUE 88-118.
24 31 TTABVUE 1-26.
25 32 TTABVUE 2-20.
26 33 TTABVUE 2-7.
27 33 TTABVUE 9-12.
28 33 TTABVUE 14-124.
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Opposer’s Rebuttal Evidence

 Opposer’s Notice of Reliance containing evidence concerning some of the third-
party registrations Applicant introduced.29
III. Evidentiary Objections

Before proceeding to the merits, we address an evidentiary matter. Applicant’s
First Notice of Reliance contained a May 25, 2016 Women’s Wear Daily article
reporting that Opposer’s principal:
Michael Harlan has quietly launched a signature collection of accessories
and will add select clothing items this fall.
…
His collection of small leather goods, wallets, passport card cases, totes and
bags is now being sold exclusively at Patina, a Nantucket boutique ….

Having designed customized clothing over the years for select clients,
Harlan is developing double-faced cashmere coats for Patina’s fall
assortment.
…
This isn’t his first go-round in fashion, having sold a collection of
accessories made of exotic skins to Davis, a Sun Valley store, in 2008.30

Applicant contends that this Womens’ Wear Daily article is relevant because it
“goes to the issue of priority; namely, that Opposer lacks prior use of the mark, to the
truth and veracity of Opposer’s allegations in the Notice of Opposition.”31
Opposer objects that the article is inadmissible hearsay to the extent it is being
offered for the truth of the matter asserted.32 We agree. “[W]e consider Internet

29 38 TTABVUE 2-24.
30 May 25, 2016 Women’s Wear Daily, “Michael Harlan Debus Signature Accessories at
Patina on Nantucket” https://wwd.com/accessories-news/accessory-trends/michael-harlan-
debuts-accessories-at-patina-on-nantucket-10437475/ 33 TTABVUE 5-7.
31 Applicant’s First Notice of Reliance, 33 TTABVUE 2.
32 Opposer’s brief, 39 TTABVUE 13.
Opposition No. 91236083
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printouts and other materials introduced under a notice of reliance without
supporting testimony only for what they show on their face rather than the truth of
the matters asserted therein.” Spiritline Cruises LLC v. Tour Mgmt. Svcs., Inc., 2020
USPQ2d 48324, 2 (TTAB 2020); see Trademark Rule 2.122(e)(2), 37 C.F.R.
§ 2.122(e)(2). The objection is therefore sustained; the article will not be considered
for the truth of the matters asserted therein.
Opposer also argues that some of the MH-formative third-party registrations
Applicant introduced to show the weakness of Opposer’s MH marks have little or no
probative value.33 This goes to the weight of Applicant’s evidence, not its
admissibility. Id. We will therefore consider Applicant’s third-party registration
evidence for what it is worth, in light of Opposer’s countervailing evidence and
arguments purporting to undermine the probative weight of Applicant’s evidence
under the relevant DuPont factors.
IV. Likelihood of Confusion

“The Lanham Act provides national protection of trademarks in order to secure to
the owner of the mark the goodwill of his business and to protect the ability of
consumers to distinguish among competing producers.” Park ‘N Fly, Inc. v. Dollar
Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985). Consistent with these
purposes, Section 2(d) of the Lanham Act prohibits registration of a mark that so
resembles a mark previously used in the United States by another and not abandoned
as to be likely, when used on or in connection with the goods or services of the

33 Id.
Opposition No. 91236083
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applicant, to cause confusion, mistake, or deception. 15 U.S.C. § 1052(d).
A. Priority

To prevail on the ground of likelihood of confusion under Section 2(d) of the
Lanham Act, based on a previously used mark, it is Opposer’s burden to prove both
priority of use and likelihood of confusion by a preponderance of the evidence.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir.
2000). An opposer must prove that it has proprietary rights in the term it relies upon
to demonstrate likelihood of confusion as to source. See Otto Roth & Co. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981). It may establish its prior
proprietary rights in a trademark through ownership of a registration, through actual
use, or through use analogous to trademark use. T.A.B. Sys. v. PacTel Teletrac, 77
F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996), vacating Pactel Teletrac v. T.A.B. Sys.,
32 USPQ2d 1668 (TTAB 1994). Here, Opposer has not pleaded or submitted any
registrations, so it may rely on its asserted common law rights, which must precede
Applicant’s actual or constructive use of her mark. WeaponXPerformance Prods. Ltd.
v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1040-41 (TTAB 2018).
Applicant’s constructive use priority date is October 24, 2016, the filing date of
her Section 1(b) intent-to-use application. See Zirco Corp. v. Am. Tel. & Tel. Co., 21
USPQ2d 1542, 1544 (TTAB 1991) (“[T]here can be no doubt but that the right to rely
upon the constructive use date comes into existence with the filing of the intent-to-
use application and that an intent-to-use applicant can rely upon this date in an
opposition brought by a third party asserting common law rights”). Applicant
Opposition No. 91236083
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stipulates that she will rely on her constructive use date for purposes of priority.34
And she confirms in her brief, “Indeed, the Applicant is relying on her constructive
date of first use; i.e. October 24, 2016.”35
It is thus Opposer’s burden to demonstrate that it used prior to Applicant’s
constructive use date of October 24, 2016. See Exec. Coach Builders, Inc. v. SPV Coach
Co., 123 USPQ2d 1175, 1180 (TTAB 2017) (citing Otto Roth, 209 USPQ at 43);
Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1834 (TTAB 2013).
(“[O]pposer must prove by a preponderance of the evidence that its common law rights
were acquired before any date upon which applicant may rely.”). Oral testimony, if
sufficiently probative, is normally satisfactory to establish priority of use in a
trademark proceeding. Daniel J. Quirk, Inc. v. Village Car Co., 120 USPQ2d 1146,
1151 (TTAB 2016) (quoting Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d
127, 144 USPQ 430, 432 (CCPA 1965)). The testimony of a single witness with
personal knowledge of the facts may be sufficient to prove first use if it is clear,
convincing, consistent, uncontradicted, and sufficiently circumstantial to convince
the Board of its probative value. See Bass Pro Trademarks, LLC v. Sportsman’s
Warehouse, Inc., 89 USPQ2d 1844, 1856 (TTAB 2008).
Opposer’s principal, Michael Schwarz, testifies that:
Michael Harlan Studio and I, as Michael Harlan Studio’s predecessor-in-
interest, have used the mark in connection with the distribution

34 Board Order, 7 TTABVUE 6.
35 Applicant’s brief, 43 TTABVUE 9.
Opposition No. 91236083
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and sale of various clothing and related items, such as jackets, vests, and
tote bags, in the United States since at least as early as 2007 and have
used the mark in connection with the distribution and sale of
scarves, coats, wallets, handbags, tote bags, and luggage continuously in
the United States since at least as early as April 26, 2016. This mark has
appeared on sewn-in and sewn-on labels, product cards, look books, and
hangtags for the goods, as well as on Michael Harlan Studio’s website.36

He attaches examples of the Michael Harlan Studio’s use of the mark on or in
connection with shirts, blouses, pants, vests, jackets, coats, scarves, wallets,
handbags, tote bags, and luggage during the relevant time periods:
37

36 Michael Schwarz declaration ¶ 4, 29 TTABVUE 3.
37 Schwarz decl. ¶9, ex. A, 29 TTABVUE 4, 23-24.
Opposition No. 91236083
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38

He also attaches hangtags the Michael Harlan Studio “uses, and has used since
2011, in connection with pants it has offered for sale and with the distribution and
sale of shirts, vests, jackets, coats, scarves, handbags, and tote bags.”
39
He further explains that he began the Michael Harlan Studio as a sole
proprietorship in 2007, then converted it into a limited liability company on August
29, 2011, to which he assigned “all right, title, and interest that I possessed in and to
the mark to Michael Harlan Studio” that day.40

38 Schwarz decl. ¶9, ex. A, 29 TTABVUE 4, 17-19.
39 Schwarz decl. ¶ 11, ex. C, 29 TTABVUE 4, 54.
40 Schwarz decl. ¶¶ 2, 8, 29 TTABVUE 2-4.
Opposition No. 91236083
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He adds evidence of jackets and handbags bearing the mark that he sold
and sent to a gallery in Idaho in 2008:

41

41 Schwarz decl. ¶ 15, Ex. F, 29 TTABVUE 6, 81-84.

Opposition No. 91236083
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Carol Muehling, sole owner of the Patina boutique on Nantucket, declares that
she purchased clothing items such as scarves, a coat, wallets, and luggage from
Opposer from April 26 through October 3, 2016.42 For example:
43
Opposer adds corroborating testimony from others in the apparel business, such
as Michael Griffin, who has known Michael Schwarz for 17 years and has assisted
his Studio “since Michael Harlan Studio first started using its mark in
2007.”44 He corroborates the substance of Schwarz’s testimony and authenticates the
exhibits Mr. Schwarz attached.45 Stan Herman, owner of Stan Herman Studio, a
clothing design studio, avers that “I have known Michael Schwarz for 20 years and
understand what goods Michael Harlan Studio manufactures and how such goods are
offered for sale and sold to consumers.”46

42 Carol Muehling declaration ¶¶ 2, 9, 29 TTABVUE 150, 152.
43 Muehling decl. ex. A, 29 TTABVUE 157 (scarf).
44 Michael Griffin declaration ¶ 2, 29 TTABVUE 147.
45 Id. ¶¶ 3-4, 29 TTABVUE 147-48.
46 Stan Herman declaration ¶ 5, 29 TTABVUE 200.
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Mr. Herman states in his July 31, 2019 declaration:
Michael Schwarz and Michael Harlan Studio have been growing the
recognition of the mark for over 10 years and have maintained a
consistency in it that is needed to build recognition, and has gained such
recognition with articles in and a cover of WWD – the fashion industry’s
leading publication.47

Applicant raises issues, but adduces no evidence or legal arguments sufficient to
counter Opposer’s proof of priority. She variously argues that:
 “At best, the evidence of record offered by Opposer … merely provides
unsupported statements from Michael Schwartz regarding prior use and a
number of pictures and screenshots that do not indicate any date or proof of
use prior to Applicant’s constructive use date.”48

 “The dated checks evidence payment to Michael Schwartz in year 2007, but
there is nothing tracing these checks to any use involving the Opposer’s MH
Mark(s).”49

 “[T]he evidence shows that Opposer, Michael Harlan Studio LLC, was formed
August 29, 2011…. As such it is legally impossible for Opposer to prove its
allegation of use ‘as early as 2007’. … [If] Michael Schwarz used the Opposer’s
MH Marks, then at minimum, the Opposer’s pleadings are defective for failing
to properly name the plaintiff party….”50

 “Even if Michael Schwarz’s alleged commercial activity in 2007/2008 was
connected to use of the Opposer’s MH Marks, such was prima facie abandoned
because the next evidence in the record … shows commercial activity in year
2016, about eight years later…. Under 15 U.S.C. § 1127, ‘[n]onuse for 3
consecutive years shall be prima facie evidence of abandonment.’”51

 “The only evidence in the record that actually connects the Michael Harlan
Studio products with use in commerce is the publication from an objective and

47 Id. ¶ 6, 29 TTABVUE 200.
48 Applicant’s brief, 43 TTABVUE 11.
49 Id.
50 Id. at 10, citing New York Department of State entity search document indicating that
Opposer, Michael Harlan Studio LLC, was formed on August 29, 2011. 33 TTABVUE 9-12.
51 Id. at 11.
Opposition No. 91236083
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uninterested third party, Womens’ Wear Daily (WWD), which is a publication
relevant to the field of fashion, and within which author Rosemary Feitelberg
on May 25, 2016 wrote ‘Michael Harlan has quietly launched a signature
collection of accessories and will add select clothing items this fall’….”
Applicant argues that this is inconsistent with the testimony adduced by
Opposer that it or its principal, Michael Schwarz, launched his distribution
and sale of clothing items under the MH mark earlier.52

Applicant concludes: “None of the evidence of record sufficiently connects use of
the Opposer’s MH Mark(s) to any date that is prior to the Applicant’s constructive
use date. The only evidence of a date of use (the WWD publication) contradicts
everything that Opposer represents to this board concerning priority.”53
Despite Applicant’s speculation and protestations, we find that Opposer has
proven priority of use of its mark by a preponderance of the evidence.
“[E]vidence of priority is not to be considered piecemeal but rather, one should look
at the evidence as a whole, as if each piece of evidence were part of a puzzle which,
when fitted together, establishes prior use.” Quirk v. Village Car, 120 USPQ2d at
1150 (quoting West Florida Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d
1660, 1663 (Fed. Cir. 1994)) (internal punctuation omitted). Here, Mr. Schwarz’s
testimony, woven together with documentation and the testimony of others
knowledgeable in the apparel field, shows use of the mark on clothing and
accessories prior to Applicant’s October 24, 2016 constructive use date.

52 Id. at 11-12.
53 Id. at 12.
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Mr. Schwarz specifically testifies that “[t]he jackets and handbags identified in
the David Invoice and the vest Gallery Davis purchased in 2008 bore the mark
when I sent them to Gallery Davis.”54 He testifies that he assigned all right, title, and
interest in the MH marks to Opposer, Michael Harlan Studio LLC, upon its formation
on August 29, 2011.55 So Opposer is the proper party plaintiff.
Applicant had the burden of pleading and proving Opposer’s abandonment of its
prior common law rights. See, e.g., Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d
1387, 94 USPQ2d 1315, 1316 (Fed. Cir. 2010); Azeka Bldg. Corp. v. Azeka, 122
USPQ2d 1477, 1485 (TTAB 2017); cf. West Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d
1122, 31 USPQ2d 1660, 1666 (Fed. Cir. 1994) (stating, in cancellation proceeding
where registrant alleged that petitioner had abandoned its common-law mark: “The
abandonment allegation is, in effect, in the stance of a defense to a prior use assertion.
Under the facts of this case, the party asserting abandonment bears at a minimum a
burden of coming forth with some evidence of abandonment.”). Here, Applicant did
not plead the affirmative defense of abandonment. Moreover, the evidence does not
demonstrate “nonuse” of the mark between 2008 and 2016, or show that use was
discontinued without intent to resume. 15 U.S.C. § 1127. To the contrary, it shows
Opposer’s growth in goodwill and recognition of the mark during that same
period.56 And the Women’s Wear Daily article on which Applicant relies to show

54 Schwarz decl. ¶ 15, 29 TTABVUE 6.
55 Id. ¶8, 29 TTABVUE 4.
56 Herman decl. ¶ 6, 29 TTABVUE 200.
Opposition No. 91236083
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nonuse57 is inadmissible as hearsay, to the extent that it is offered for the truth of the
matter asserted. Spiritline Cruises, 2020 USPQ2d 48324, at 2. Hence, Applicant’s
abandonment argument fails.
Applicant might have undermined Opposer’s proof of priority with written
discovery requests, testimony, or cross-examination of Opposer’s witnesses, but she
proffers no evidence of this sort. In fact, she admits that she is “aware of no fact or
evidence that contravenes Opposer’s claim that it commenced use of Opposer’s Marks
at least before October 24, 2016.”58 Opposer’s testimony is thus uncontradicted by
Applicant. See Quirk v. Village Car, 120 USPQ2d at 1150 n. 20 (petitioner introduced
no evidence to cast doubt on accuracy of respondent’s evidence of prior use).
On the basis of the testimony and exhibits, we find that Opposer has established
priority in its mark for its clothing and accessory goods by a preponderance of
the evidence.59

57 May 25, 2016 Women’s Wear Daily, “Michael Harlan Debus Signature Accessories at
Patina on Nantucket” https://wwd.com/accessories-news/accessory-trends/michael-harlan-
debuts-accessories-at-patina-on-nantucket-10437475/ 33 TTABVUE 5-7.
58 Applicant’s response to Opposer’s Request for Admission no. 8, 30 TTABVUE 10.
59 Applicant also argues that Opposer failed to plead that it has priority under its
mark. Because we have focused on Opposer’s mark, this argument is moot. But if we
were to consider Opposer’s other mark, as well, we would find that the issue of priority was
indeed tried, either on the pleadings or by implied consent. See Fed. R. Civ. P. 15(b), made
applicable to Board proceedings by Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a). Hole in
One Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, 6 (TTAB 2020).
Opposition No. 91236083
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B. The DuPont Factors

We base our determination of likelihood of confusion under Section 2(d) on an
analysis of all of the probative facts of record. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). In assessing likelihood
of confusion, we consider each DuPont factor for which there is evidence and
argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed.
Cir. 2019). “Not all of the DuPont factors are relevant to every case, and only factors
of significance to the particular mark need be considered.” Zheng Cai v. Diamond
Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). Varying
weights may be assigned to each DuPont factor depending on the evidence presented
in a particular case. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more
or less weighty roles in any particular determination”). “In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods and services.” In re Chatam Int’l Inc., 380 F.3d 1340,
71 USPQ2d 1944, 1945 (Fed. Cir. 2004), cited in Ricardo Media Inc. v. Inventive
Software, LLC, 2019 USPQ2d 311355, 5 (TTAB 2019).
1. Similarity of the Goods
The second DuPont factor concerns the similarity or dissimilarity and nature of
the goods or services as described in an application or registration, or in this case, in
Opposition No. 91236083
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prior common law use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1159 (Fed. Cir. 2014).
This factor considers whether “the consuming public may perceive [the respective
goods and services of the parties] as related enough to cause confusion about the
source or origin of the goods and services.” In re St. Helena Hosp., 774 F.3d 747,
113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard
Press, Inc., 281 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.”)). “The goods need only be sufficiently related that consumers would be
likely to assume, upon encountering the goods under similar marks, that the goods
originate from, are sponsored or authorized by, or are otherwise connected to the
same source.” In re Davia, 110 USPQ2d 1810, 1815 (TTAB 2014) (citing Coach Servs.
v. Triumph Learning, 101 USPQ2d at 1722).
Opposer posits that “Here, the evidence of record supports the conclusion that the
goods listed in Applicant’s application – “[w]omen’s clothing, namely, shirts, dresses,
skirts, [and] blouses” – are closely and competitively related to the goods Opposer has
distributed and sold under the MH Marks, including vests, jackets, coats, scarves,
wallets, handbags, tote bags, and luggage.”60
Applicant does not dispute the similarity of the parties’ clothing goods. In fact, the
parties stipulate that their “goods in International Class 25 are similar and

60 Opposer’s brief, 39 TTABVUE 25.
Opposition No. 91236083
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overlap.”61 We approve this stipulation,62 noting that many different articles of
women’s clothing have been deemed related because they are complementary, and
may be matched in a coordinated ensemble. For example, in In re Melville Corp., 18
USPQ2d 1386 (TTAB 1991) the Board found women’s pants, blouses, shorts and
jackets related to women’s shoes:
A woman’s ensemble, which may consist of a coordinated set of 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.

Id. at 1388. See also In re Pix of America, Inc., 225 USPQ 691, 691 (TTAB 1985)
(“[T]he respective goods of the parties [shoes and outer shirts] are closely related
goods particularly when it is considered that persons who are fashion conscious,
especially women, are likely to purchase shoes at the same time as and as part of the
same shopping transaction as a purchase of outer garments, in order to have an
ensemble which is attractive from the standpoint of color, style, etc.”).
By the same token, Opposer’s prior common law use of its mark on accessory goods
includes handbags and tote bags, which are complementary to women’s clothing
items, and may be coordinated with those items as part of an ensemble. See Justin
Indus., Inc. v. D. B. Rosenblatt, Inc., 213 USPQ 968, 976 (TTAB 1981) (“we note that
opposer’s boots, belts, and handbags could be worn with applicant’s blazers and suits;

61 Board Order: Discovery Conference Held, 29 TTABVUE 211-212.
62 See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 705 (2020)
(“Subject to the approval of the Board, parties may enter into a wide variety of stipulations
concerning the admission of specified matter into evidence. … The use of stipulated evidence
normally results in savings of time and expense for all concerned.”)
Opposition No. 91236083
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… they might be bought on the same shopping trip to fashion a complete ensemble.”);
David Crystal, Inc. v. Crystal Handbags, 164 USPQ 362 (TTAB 1969) (concluding
that use of same mark on applicant’s handbags and opposer’s women’s dresses, suits
and coats is likely to cause confusion). Carol Muehling, who sells Opposer’s goods at
retail, concurs: “Indeed, women’s shirts and blouses are frequently placed in close
proximity to vests, coats, scarves, wallets, handbags, tote bags, and luggage in my
store, and the same consumer frequently purchases such items in combination during
a single shopping trip to Patina.”63
Opposer corroborates this relatedness with evidence of third parties offering
clothing items and accessories under the same brands, GUESS and GUCCI. For
example:
64

63 Muehling decl. ¶ 13, 29 TTABVUE 153-54. Accord Herman decl. ¶ 7, 29 TTABVUE 200.

64 Opposer’s third Notice of Reliance, www.Shop.Guess.com, www.Gucci.com, 8/5/2019, 32
TTABVUE.
Opposition No. 91236083
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“[I]t is settled that evidence of third-party use of the same mark for an applicant’s
identified goods and services (or similar goods or services) on the one hand, and an
opposer’s (or registrant’s) identified goods and services (or similar goods and services)
on the other, may establish a relationship between those goods and services.” Ricardo
Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, 3 (TTAB 2019) (citing
In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018)).
Opposer also submits over two dozen third-party registrations identifying Class
18 handbags, tote bags and the like, as well as Class 25 clothing items, both offered
under the same brand, such as GUESS, YVES SAINT LAURENT, FAIRE, J. CREW,
and SOUTH MOON UNDER.65 Such “third-party registrations may serve to suggest
that the parties’ goods and services are of a type which may emanate from a single
source.” DeVivo v. Ortiz, 2020 USPQ2d 10153, at 12 (citing Hewlett-Packard v.
Packard Press, 62 USPQ2d at 1004 (evidence that “a single company sells the goods
and services of both parties, if presented, is relevant to a relatedness analysis”); In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993)).
We find, accordingly, that Applicant’s identified goods are similar to, overlapping
with, and otherwise related to Opposer’s goods in Class 25 and Class 18. This DuPont
factor therefore weighs in favor of a likelihood of confusion.
2. Similarity of Channels of Trade
The third DuPont factor concerns “[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.” DuPont, 177 USPQ at 567.

65 Opposer’s first Notice of Reliance, 30 TTABVUE 88-118; Opposer’s second Notice of
Reliance, 31 TTABVUE.

Opposition No. 91236083
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Applicant argues that her clothing goods travel through different channels of
trade to different classes of consumers:
6. Opposer’s channels of trade are a boutique shop PATINA in Nantucket
and on its website (michaelharlan.com), whereas Applicant sells on its
website (marilynhatten.com). Because the website domains are sufficiently
distinct, consumers would not confusingly navigate to an unintended
channel of trade.

4. Opposer’s goods are priced much higher than Applicant’s goods ….

5. Opposer’s goods are purchased by a different consumer demographic
than purchasers of Applicant’s goods, primarily because of price point,
whereas the younger generation typically cannot afford Opposer’s goods.66

In the registration context, however, an applicant’s usage in the marketplace does
not define her channels of trade. Rather, “[t]he usages listed in the application—i.e.,
those goods on which the mark appears along with, if applicable, their channels of
distribution—are critical.” B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,
113 USPQ2d 2045, 2049 (2015) (quoting 3 J. McCarthy, TRADEMARKS AND UNFAIR
COMPETITION § 20:24 (explaining that if an application does not delimit any specific
trade channels of distribution, no limitation will be applied)). “The third DuPont
factor—like the second factor—must be evaluated with an eye toward the channels
specified in the application …, not those as they exist in the real world.” In re Detroit
Athletic, 128 USPQ2d at 1052.
In this case, the application places no limitations on Applicant’s trade channels of
distribution. Accordingly, we must presume that the identified goods travel through
all normal and usual trade channels for such goods, and that they are sold to all

66 Applicant’s brief, 43 TTABVUE 14.
Opposition No. 91236083
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classes of prospective purchasers for those goods. Stone Lion, 110 USPQ2d at 1161;
see also Coach Servs., 101 USPQ2d at 1723 (absent limitation, “goods are presumed
to travel in all normal channels ... for the relevant goods.”). Because Applicant’s goods
are similar to or overlapping with Opposer’s clothing goods, they could be offered to
consumers through the same channels of trade. Genesco Inc. v. Martz, 66 USPQ2d
1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of
the parties’ goods, and the lack of any restrictions in the identifications thereof as to
trade channels and purchasers, these clothing items could be offered and sold to the
same classes of purchasers through the same channels of trade”). And because
Applicant’s goods are related to and complementary with Opposer’s accessory goods,
such as handbags and tote bags, they may be expected to travel through all normal
channels of trade—such as clothing stores, department stores, and boutiques—to all
normal and usual classes of consumers—that is, purchasers of apparel and
accessories. In re Detroit Athletic, 128 USPQ2d at 1052.
A similar scenario arose in Justin Indus. v. Rosenblatt, where the parties had
complementary goods. There the Board stated:
we note that opposer’s boots, belts, and handbags could be worn with
applicant’s blazers and suits; they are sold through the same types of retail
outlets and, in fact, have already found their way into some of the same
retail outlets; they comprise items of wearing apparel that have been and
would be advertised and promoted in the same consumer and trade
journals and at the same trade shows; and they might be bought on the
same shopping trip to fashion a complete ensemble.

213 USPQ at 976.

Here, Applicant has admitted in the course of discovery that:

 The “goods identified in Applicant’s intent-to-use application (i.e.,
women’s shirts, dresses, skirts, and blouses) and jackets, coats, vests,
Opposition No. 91236083
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pants, and scarves are complementary goods, in that the same purchaser
in the same store frequently purchases such goods in a single shopping
expedition.”67

 Women’s clothing, such as shirts, dresses, skirts, and blouses, as well as
jackets, coats, vests, pants, and scarves, and wallets, handbags, tote bags,
and luggage are normally sold or offered for sale through online retail
storefronts.68

 Women’s clothing, such as shirts, dresses, skirts, and blouses, as well as
jackets, coats, vests, pants, and scarves, and wallets, handbags, tote bags,
and luggage are normally sold or offered for sale at brick-and-mortar
retail stores, such as boutiques.69

 consumers who purchase or use the goods identified in Applicant’s intent-
to-use application (i.e., women’s shirts, dresses, skirts, and blouses) also
purchase or use jackets, coats, vests, pants, and scarves, as well as
wallets, handbags, tote bags, and luggage.70

But when Applicant was asked to admit that the parties’ goods are sold through
the same channels of trade, she demurred: “Admit as to broad channels of trade such
as ‘online’; deny as to specific channels of trade such as www.MarilyHatten.com or
Instagram:@MarilynHatten.”71 However, the term “channels of trade” refers to “the
same type of distribution channel,” not “identical stores or agents.” Century 21 Real
Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992). Applicant’s unrestricted application would permit her to offer her clothing
goods by the same types of distribution channels Opposer uses: online retail stores

67 Applicant’s response to request for admission no. 19, 30 TTABVUE 12.
68 Applicant’s responses to request for admission nos. 27-29, 30 TTABVUE 14.
69 Applicant’s responses to request for admission nos. 30-32, 30 TTABVUE 14-15.
70 Applicant’s responses to request for admission nos. 33-34, 30 TTABVUE 15.
71 Applicant’s responses to request for admission nos.25-26, 20 TTABVUE 13-14.
Opposition No. 91236083
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and brick-and-mortar stores, such as department stores, boutiques, and similar
retailers.72
As for classes of consumers, Applicant admits that consumers who purchase or
use the goods identified in Applicant’s intent-to-use application (i.e., women’s shirts,
dresses, skirts, and blouses) also purchase or use jackets, coats, vests, pants, and
scarves, as well as wallets, handbags, tote bags, and luggage.73 Applicant’s attempt
to differentiate her goods from Opposer’s based on price is unavailing, as there are no
price restrictions qualifying the goods in her application. See In re Fabfitfun, Inc., 127
USPQ2d 1670, 1673 (TTAB 2018). Her prices could therefore range from low-cost to
high-cost items, mirroring Opposer’s prices.74
In sum, the conditions and activities surrounding marketing of these goods are
such that they could be encountered by the same persons under circumstances that
could give rise to the mistaken belief that they originate from or are in some way
associated with the same producer. Coach Servs., Inc. v. Triumph Learning, 101
USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)). The third DuPont factor weighs in favor of likelihood of confusion.
3. Similarity of Marks
Under the first DuPont factor, we determine the similarity or dissimilarity of
Opposer’s mark, , and Applicant’s mark, , in their

72 Schwarz decl. ¶ 30, 29 TTABVUE 10; Muehling decl. ¶ 14, 29 TTABVUE 154; Herman
decl. ¶ 10, 29 TTABVUE 201; Kerch decl. ¶8, 29 TTABVUE 205.
73 Applicant’s responses to request for admission nos. 33-34, 30 TTABVUE 15.
74 Schwarz decl. ¶¶ 35-37, 29 TTABVUE 10.
Opposition No. 91236083
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entireties, taking into account their appearance, sound, connotation and commercial
impression. DuPont, 177 USPQ at 567; Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
Applicant argues that there is “different stylization of MH (Applicants [sic] MH
has a solid M and a broken H, whereas Opposer’s MH has a broken M and a broken
H).”75
That, however, is inconsistent with Applicant’s discovery responses, in which she
admitted, in response to requests for admission, that:
REQUEST NO. 11: Admit that the MH component of Opposer’s Marks and
the Challenged Mark are similar in appearance.
Answer: Admit.
REQUEST NO. 12: Admit that the MH component of Opposer’s Marks and
the Challenged Mark are phonetically identical.
Answer: Admit.76
We agree with Opposer that (1) the “MH” prefix in Applicant’s mark is virtually
identical to Opposer’s mark, (2) Applicant’s mark incorporates the entirety of
Opposer’s mark as its dominant portion; and (3) Applicant’s use of her trade name
MARILYN HATTEN in her mark does not dispel the marks’ similarity.77
Under actual marketing conditions, consumers do not necessarily have the luxury
of making side-by-side comparisons between marks, and must instead rely upon their

75 Applicant’s brief, 43 TTABVUE 13.
76 30 TTABVUE 10-11.
77 Opposer’s brief, 39 TTABVUE 33.
Opposition No. 91236083
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imperfect recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259
(TTAB 1980). Given the great similarities in the marks’ MH components,78 members
of the purchasing public would not tend to scrutinize the minor stylistic differences
to which Applicant refers, or to recall such minute details or characteristics; rather,
they would retain a general impression of the marks. In re Information Builders Inc.,
2020 USPQ2d 10444, 6-7 (TTAB 2020).
Where one party’s mark incorporates the other party’s mark in its entirety, the
Board has found that the marks are similar. See In re Mighty Leaf Tea, 601 F.3d 1342,
94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to registrant’s
mark ML MARK LEES). In this case, the MH component forms the most prominent,
dominant part of Applicant’s mark. It is prominent because it is at the top of
Applicant’s mark, in large, boldface letters, see B.V.D. Licensing Corp. v. Rodriguez,
83 USPQ2d 1500, 1507-08 (TTAB 2007). And it is dominant because it is the first part
of the mark, the part that purchasers would notice first, making the greatest
impression. See In re Detroit Athletic, 128 USPQ2d at 1049.

78 Opposer explains the similarities between the marks’ MH components in great detail,
noting that: “In both marks:

i. the first letter is a sans-serif capital M with the middle “V” of the M dipping less
than half way to the bottom of the letter;
ii. the second letter is a sans-serif capital H with the left vertical line of the H
being shared right vertical line of the M;
iii. the H is located to the right of the M;
iv. the M and H are vertically aligned at their bases;
v. there are no more letters to the right of the H;
vi. all lines in both letters are straight (no curves);
vii. neither letter has any italics, outlining, or underlining; and
viii. the letters are not enclosed in a circle, box, or other shape.”
Opposer’s brief, 39 TTABVUE 28-29.
Opposition No. 91236083
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While we must consider the marks in their entireties, as purchasers or prospective
purchasers would see them, Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127
USPQ2d 1797, 1801 (Fed. Cir. 2018), one feature of a mark may make a greater
impression on these purchasers than another part, and it is appropriate to give more
weight to the dominant feature in determining the commercial impression made by
the mark. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)
(“There is nothing improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties. Indeed, this type of analysis
appears to be unavoidable”) quoted in TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d
1097, 1116 (TTAB 2019).
Applicant argues that the addition of her trade name, MARILYN HATTEN,
suffices to differentiate the marks.79 But this argument is unavailing. The name
appears in significantly smaller font, and is subordinate to the dominant MH
component atop Applicant’s mark. See In re I-Coat Company, LLC, 126 USPQ2d at
1736 (smaller script at bottom of mark did not significantly contribute to
distinguishing the marks). Moreover, the name appears to spell out the large,
boldface initials MH. As Opposer observes, Applicant’s mark could reasonably be

79 Applicant’s brief, 43 TTABVUE 13. Applicant also claims that the colors golden yellow and
white, which are claimed as a feature of her mark, distinguish it from Opposer’s marks. Id.
But Opposer’s MH mark is not limited to a particular color, either in its common law use—
where it has appeared in light or dark characters, with different backgrounds—or in
Opposer’s pending applications, where color is not claimed as a feature of the mark. So this
attempted distinction is also unavailing.
Opposition No. 91236083
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taken to convey “MH brand by Marilyn Hatten.”80 See In re Mighty Leaf Tea, 94
USPQ2d at 1260 (“consumers familiar with the registered mark [ML MARK LEES]
are likely to assume that applicant’s ML is merely a variation or shortened version of
the registered mark.”). Applicant’s trade name does not serve to avoid a likelihood of
confusion. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1201-02 (TTAB 2007).
“Considering the substantial similarities between the marks in this case, it seems
to us that a purchaser who sees one mark and later encounters the other is likely to
think, if the two marks are applied to the same or related goods and/or services, that
the second mark is the same mark he had seen earlier, or, if he realizes that there
are some differences in the marks, that the second is simply a slightly varied version
of the first, with both serving to indicate origin in the same source.” In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1468 (TTAB 1988). See also In re Collegian
Sportswear, Inc., 224 USPQ 174, 176 (TTAB 1984) (COLLEGIAN OF CALIFORNIA
and Design confusingly similar to COLLEGIENNE and Design); Wella Corp. v.
California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT with surfer logo men’s hair and cosmetic products
confusingly similar to CONCEPT for cold permanent wave lotion and neutralizer); cf.
In re Covalinski, 113 USPQ2d 1166, 1168 (TTAB 2014) (finding large, prominently
displayed letters predominate over mark’s literal elements).
For these reasons, we find that the parties’ marks are more similar than
dissimilar, and that the first DuPont factor favors a likelihood of confusion.

80 Opposer’s brief, 39 TTABVUE 31.
Opposition No. 91236083
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4. Third-Party Registrations for MH-formative Marks
In her third Notice of Reliance, Applicant adduces evidence of thirty (30) third-
party registrations or applications for MH-formative marks, most identifying goods
in Class 25:81
Reg. or App. No. | Mark | Examples of Pertinent Goods/Owner/Status
1. Reg. No. 2131739 for for shirts and hats, Cl. 25 (Michigan High
School Athletic Association).
2. Reg. No. 2100948 for for clothing, namely shirts, hats, shorts, vests, Cl. 25.
3. Reg. No. 3195479 for for hats, sweatshirts, T-shirts, Cl. 25 (Mount
Holyoke College Corp.).
4. Reg. No. 4553700 for for shirts, pants, jackets, gloves, Cl. 25.
5. Reg. No. 4594800 for for shirts, sweatshirts, hats Cl. 25
(Oakhurst Cinema).
6. Reg. No. 4594801 for for shirts, sweatshirts, hats, Cl. 25 (Oakhurst Cinema).
7. Reg. No. 3267597 for MHSAA for shirts and hats, Cl. 25 (Michigan High School Athletic
Association).
8. Reg. No. 3613682 for for clothing for wear in wrestling games; head wear;
breeches for sports; sports shirts; Cl. 25 (Lyke Paine Sports Gear).
9. Reg. No. 3624453 for for same clothing goods, Cl. 25 (same Registrant).
10. Reg. No. 3728296 for for hosiery, T-shirts, shirts, polo shirts, sweatshirts,
sweatpants Cl. 25, (Miami Heat Limited Partnership)

81 Applicant’s Third Notice of Reliance, ex. C, 33 TTABVUE 14-124.
Opposition No. 91236083
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11. Reg. No. 2874398 for MHI for bags, namely, all purpose athletic bags, Cl. 18, Sweat
shirts, T-shirts, Cl. 25 (Basis: Section 44(e); 8 and 15 filed).
12. Reg. No. 3853846 for for clothing, Cl. 25 (Cancelled).
13. Reg. No. 4234634 for MH26 for outdoor clothing, Cl. 25 (Cancelled).
14. Reg. No. 4171557 for MH INTIMATES for lingerie, robes, slippers Cl. 25 (Cancelled).
15. Reg. No. 4284852 for for athletic apparel, Cl. 25, (Cancelled).
16. Reg. No. 4616003 for for clothing, namely, sweaters, hoods, pants, suits, Cl. 25
(Basis: 44(e), declaration of use overdue, not filed).
17. Reg. No. 4722482 for for belts, caps,hats, socks, T-shirts, Cl. 25.
18. Reg. No. 4935120 for for swimwear, Cl. 25.
19. Reg. No. 86611655 for for belts made of leather, bikinis, bridesmaid dresses,
business wear Cl. 25.
20. Reg. No. 5276947 for for underwear, t-shirts, hats, short sleeved shirts, shorts,
athletic shorts, Cl. 25.
21. Reg. No. 5183178 for MHF APRONS for aprons, Cl. 25.
22. Reg. No. 5175105 for for children’s cloth eating bibs, clothing, namely,
folk costumes, down jackets, footwear, fur coats, Cl. 25.
23. Reg. No. 5227256 for for bathing trunks, camisoles, coats, dresses,
jackets, knit bottoms, Cl. 25.
24. Reg. No. 5489662 for for apparel, namely, shirts, sweat shirts, tank tops, pants,
athletic pants, leggings, tights, shorts, swimwear, coats, jackets Cl. 25.
25. U.S. Serial No. 87470519 for for hosiery, footwear, basketball shows,
basketball sneakers, T-Shirts, Cl. 25 (Memphis Basketball LLC) (Abandoned)
Opposition No. 91236083
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26. Reg. No. 5485980 for MH-LUCKY for business wear, namely, suits, jackets, trousers,
blazers, blouses, shirts, skirts Cl. 25.
27. U.S. Serial No. 87717731 for for hosiery, footwear, basketball shoes,
basketball sneakers, Cl. 25 (Miami Heat LP) (Basis: intent to use).
28. Reg. No. 3814875 for for pants, shirts, jackets, hats Cl. 25. (Cancelled).
29. Reg. No. 5801760 for for umbrellas, imitation leather, key cases, pocket
wallets, reusable shopping bags, Cl. 18.
30. U.S. Serial No. 87949832 for for golf shirts, hoodies, pants, polo shirts,
shoes, sweatshirts, T-shirts, Cl. 25 (Basis: intent to use; abandoned).

Applicant argues that, given the common use of the MH acronym, especially in
connection with clothing and fashion, “[t]he dominant portion as perceived by
consumers is therefore not the MH, which is so prevalent as to not achieve distinction,
but instead the dominant portion is the words MARILYN HATTEN, which is
distinguished from Opposer’s marks.”82 She concludes: “Opposer’s MH mark is very
weak and therefore should be afforded little protection, if any at all.”83
Opposer initially objects that “many of these registrations and applications have
limited or no probative value with respect to Applicant’s purported purpose for
submitting them.”84 We agree that some of the listed registrations or applications
may be disregarded. For example, four are cancelled registrations.85 See In re Kysela

82 Applicant’s brief, 43 TTABVUE 13.
83 Applicant’s brief, 43 TTABVUE 14.
84 Opposer’s brief, 39 TTABVUE 13.
85 Table Nos. 12-15 and 28, Reg. Nos. 3853846, 4234634, 4171557, 4284852, and 3814875.
Opposition No. 91236083
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Pere et Fils Ltd., 98 USPQ2d 1261, 1264 (TTAB 2011) (“‘dead’ or cancelled
registrations have no probative value at all.”) quoted in In re Inn at St. John’s, LLC,
126 USPQ2d 1742, 1745 (TTAB 2018) (“The existence of a cancelled
registration…does not tend to show that the cited mark is weak due to third-party
use.”) aff’d 777 Fed. Appx. 516 (Fed. Cir. 2019). Another three are merely
applications. “[P]ending applications are evidence only that the applications were
filed on a certain date; they are not evidence of use of the marks.” Id. And two of these
applications have been abandoned.86 Finally, one of the registrations issued under
the Paris Convention, Section 44(e), and its declaration of use is overdue.87 See In re
Mucky Duck, 6 USPQ2d at 1470, n.6 (registrations issued under Trademark Act § 44
“have very little, if any, persuasive value” for this purpose). These eight registrations
and applications may therefore be disregarded.
With respect to the remaining 22 registrations, Opposer contends that “(1)
Applicant did not submit any evidence of actual third-party use, so she cannot show
commercial weakness; (2) the ‘MH’ in Applicant’s example registrations is not
descriptive or suggestive, so Applicant cannot show conceptual weakness; and (3)
most of Applicant’s example registrations have little in common with Opposer’s mark
and therefore lack probative value.”88 We agree, and find accordingly that Applicant’s
third-party registration evidence does not weaken the scope of protection to which
Opposer’s MH mark is entitled.

86 Table Nos. 25, 27, 30, App. Ser. Nos. 87470519 (abandoned), 87717731 (intent to use), and
87949832 (intent to use; abandoned).
87 Table No. 16, Reg. No. 4616003 (basis: Section 44(e)).
88 Opposer’s brief, 39 TTABVUE 37.
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Under the sixth DuPont factor, we consider “[t]he number and nature of similar
marks in use on similar goods.” DuPont, 177 USPQ at 567. Third parties’ registration
and use of similar marks can bear on the strength or weakness of an opposer’s mark
in two ways: commercially and conceptually.
First, if a mark, or an element of a mark, is used extensively in commerce by a
number of third parties, that could undermine its commercial strength, as the
consuming public may have become familiar with a multiplicity of the same or similar
marks, and can distinguish among them based on minor differences. Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir.
2015). “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.”
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005), quoted in Jack Wolfskin Ausrustung
Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363,
116 USPQ2d 1129, 1136 (Fed. Cir. 2015). “The weaker [an opposer’s] mark, the closer
an applicant’s mark can come without causing a likelihood of confusion and thereby
invading what amounts to its comparatively narrower range of protection.” Juice
Generation, 115 USPQ2d at 1674.
But here, Applicant has not submitted evidence of third-party usage of any of the
marks in the third-party registrations and applications. The “existence of [third-
party] registrations is not evidence of what happens in the market place or that
customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d
1403, 177 USPQ 268, 269 (CCPA 1973) quoted in In re Inn at St. John’s, 126 USPQ2d
Opposition No. 91236083
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at 1746. That differentiates this case from cases such as Jack Wolfskin and Juice
Generation, in which evidence of commercial use was submitted. See Jack Wolfskin,
116 USPQ2d at 1136 (noting that third-party registrations were accompanied by
evidence of the marks in use in Internet commerce: “Jack Wolfskin presented
extensive evidence of third-party registrations depicting paw prints and evidence of
these marks being used in internet commerce for clothing”); Juice Generation, 115
USPQ2d at 1674 (acknowledging testimony of applicant’s founder concerning third-
party use of similar marks). In sum, “Applicant’s citation of third-party registrations
as evidence of market weakness is unavailing because third-party registrations
standing alone, are not evidence that the registered marks are in use on a commercial
scale, let alone that consumers have become so accustomed to seeing them in the
marketplace that they have learned to distinguish among them by minor differences.”
In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016).
Applicant fails to undermine the commercial or market strength of Opposer’s mark.
Second, third-party registrations may be relevant to show the sense in which a
mark is used in ordinary parlance; that is, an element common to both parties’ marks
may have a normally understood and well-recognized descriptive or suggestive
meaning, leading to the conclusion that that term is conceptually weak. Jack
Wolfskin,116 USPQ2d at 1136; see Institut National Des Appellations D’Origine v.
Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992). “However,
third-party registrations are relevant evidence of the inherent or conceptual strength
of a mark or term because they are probative of how terms are used in connection
with the goods or services identified in the registrations.” In re Morinaga, 120
Opposition No. 91236083
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USPQ2d at 1745. But here, as Opposer observes, the letters MH are neither
suggestive nor descriptive of clothing goods. They are, if anything, arbitrary or
fanciful. See Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 71 USPQ2d 1173, 1180
(Fed. Cir. 2004). Applicant does not undermine the conceptual strength of Opposer’s
mark.
Third, most of the third-party registered marks Applicant adduces include
additional wording, such as or , or
additional lettering such as and , or additional
style and design elements such as and , all of which
engender a different commercial impression from either party’s mark. In re
Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016).
In fact, of all the marks Applicant would have us consider, her own stylized mark,
, is the closest to Opposer’s stylized mark: . See
Palisades Pageants, Inc. v. Miss Am. Pageant, 442 F.2d 1385, 169 USPQ 790, 793
(CCPA 1971) (discounting the probative value of third-party registrations where
“appellant’s mark is closer to appellee’s than even the closest of the third-party
registrations”).” Therefore, Applicant’s cited third-party marks do not diminish the
distinctiveness of Opposer’s mark or its entitlement to protection against Applicant’s
mark. In re Information Builders Inc., 2020 USPQ2d 10444, 8 (TTAB 2020).
Opposition No. 91236083
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We add that even if we had found the distinctiveness of Opposer’s mark to be
somewhat diminished based on Applicant’s evidence, it would not change the result,
as even weak marks are entitled to protection against registration of similar marks
for similar or overlapping goods. King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 1401 182 USPQ 108, 109 (CCPA 1974); see also In re i.am.symbolic, 127
USPQ2d 1627, 1636 n.13 (TTAB 2018).
The sixth DuPont factor is therefore neutral.
5. Actual Confusion
Applicant asserts that “There has been no actual confusion between goods of the
parties.”89 The issue, however, is not whether the goods will be confused with each
other, but rather whether the public will be confused as to their source. In re Ox
Paperboard, LLC, 2020 USPQ2d 10878, 5 (TTAB 2020). Moreover, “the relevant test
is likelihood of confusion, not actual confusion.” In re Detroit Athletic, 128 USPQ2d
at 1053. And since the subject application is based on intent to use, not actual use,
there has been no meaningful opportunity for confusion to occur. Nike Inc. v. WNBA
Enters. LLC, 85 USPQ2d at 1202. So Applicant’s counsel’s assertion that there has
been no actual confusion between the goods of the parties is entitled to no weight. See
In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, 3 (TTAB 2020) (“Counsel’s
argument is no substitute for evidence.”) (internal punctuation omitted).
Accordingly, the seventh and eighth DuPont factors—which concern the nature
and extent of any actual confusion in light of the length of time and conditions under

89 Applicant’s brief, 43 TTABVUE 14.
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which there has been contemporaneous use of the parties’ subject marks—are
neutral.
V. Decision

When we consider the record and the relevant likelihood of confusion factors, and
all of the parties’ arguments and evidence relating thereto, we conclude that
consumers familiar with Opposer’s goods offered under its mark would be likely to
believe, upon encountering goods offered under Applicant’s mark, that the goods
originated with or are associated with or sponsored by the same entity. There is
therefore a likelihood of confusion under Section 2(d) of the Trademark Act. 15 U.S.C.
§ 1052(d).
The opposition to registration of the mark in Application
Serial No. 87213550 is sustained on the ground of likelihood of confusion under
Section 2(d), and registration to Applicant is refused.