Michael J. Mattioli

Trademark Trial and Appeal Board

Apr 27, 2015

No. 85470198 (T.T.A.B. Apr. 27, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Michael J. Mattioli
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Serial No. 85470198
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Stephen Lesavich, PhD of Lesavich High-Tech Law Group, P.C.,
for Michael J. Mattioli
David C. Reihner, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_____

Before Taylor, Mermelstein and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Michael J. Mattioli (“Applicant”) seeks registration on the Principal Register of
the mark LOL LIDZ (in standard characters, “LIDS” disclaimed) for goods
ultimately identified as
“headwear, namely foam novelty hats” in International
Class 25.1

1 Application Serial No. 85470198 was filed on November 11, 2011, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark, when used in connection with Applicant’s goods, so
resembles the previously registered standard character mark L.O.L. for
Clothing, namely, t-shirts, sweat shirts, knit tops,
sweaters, jeans, shorts and hats in International Class 25
as to be likely to cause confusion, mistake, or deception of prospective consumers.2
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. We affirm the refusal to register.
I. Preliminary Matters
Before proceeding to the merits of the refusal, we address several examination
irregularities.
In the February 29, 2012 Office Action, the Examining Attorney required a
disclaimer of the descriptive word “LIDS” apart from the mark as shown, and an
amendment to the identification of goods, which originally had included the
indefinite word “clothing.”3 Although Applicant, in his July 25, 2012 Response,
complied with both requirements, the Examining Attorney did not address the
status of the requirements in either the July 30, 2012 Notice of Suspension or the
February 6, 2014 Office Action. See TMEP § 713.02.

2 Registration No. 3825175, issued July 27, 2010.
3 Though Applicant asserts examination error in the requirement that he amend the word
“clothing” in his identification of goods (App. Br. at 18), we confirm that the word “clothing”
is by itself indefinite and therefore unacceptable as an identification of goods. However,
“clothing” followed by the word “namely” and then a listing of the particular articles of
clothing, as in the cited registration, is acceptable.
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In the August 12, 2014 Final Office Action, the Examining Attorney stated that
the requirements had been “withdrawn.” The use of the word “withdrawn” rather
than “satisfied” was incorrect. See TMEP § 714.04. The Examining Attorney’s
inaccurate terminology caused unnecessary confusion to Applicant’s attorney, who
included extensive arguments in Applicant’s Appeal Brief regarding the
requirement for a disclaimer of “LIDS” (App. Br. at 13-15, 4 TTABVUE 14-15).4
Specifically, Applicant argues that the Examining Attorney erred when he “forced”
Applicant to disclaim “LIDS,” accepted the “forced disclaimer,” withdrew “the
requirement for the forced disclaimer” and “then made refusal arguments based on
another word, LIDZ, which was never actually disclaimed by the Appellant and not
the subject of any disclaimer.” App. Br. at 14, 4 TTABVUE 15 (emphasis in
original).
If Applicant believed that the requirement for a disclaimer of LIDS was
unwarranted, Applicant could have declined the request to enter it, and could have
argued the propriety of the requirement on appeal. In any event, if a disclaimer of a
descriptive but misspelled term in a mark is appropriate, as we find that it is in this
case, it is proper to require an applicant to disclaim the word in its correct spelling.
See In re Omaha Nat’l Corp., 819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir.
1987); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009); In re Newport Fastener
Co., 5 USPQ2d 1064, 1067 n.4 (TTAB 1987). The disclaimer requirement having

4 Citations to Applicant’s and the Examining Attorney’s briefs in this opinion also include
citations to the TTABVUE docket entry number, and the electronic page number where the
argument appears. TTABVUE is the Board’s electronic docketing system.
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been satisfied, the disclaimer of “LIDS” remains of record and is not an issue on
appeal.5
Further, in Applicant’s Brief, Applicant’s attorney stated that the Examining
Attorney had called him on July 18, 2014 “and provided a dissertation as to why the
Appellant’s mark was not entitled to registration. The Examining Attorney tried to
convince the Appellant not to continue.” App. Br. at 6, 4 TTABVUE 7. There is no
notation in the file that any telephone communication occurred between Applicant’s
attorney and the Examining Attorney on that date. If, in fact, such communication
occurred, the Examining Attorney was required to enter a Note to the File listing
the issues that were discussed. See TMEP § 709.04. This is so because “[t]he action
of the Office will be based exclusively on the written record,” 37 CFR § 2.191, and
all relevant communications, including informal communications, must be made
part of the record. See TMEP § 709.04.
II. Applicable Law
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See

5 The Examining Attorney initially required a disclaimer of “LIDS” because it is merely
descriptive of hats. However, in the August 12, 2014 Final Office Action and in his brief, the
Examining Attorney asserted that “LIDS” is a generic name for Applicant’s goods. Ex. Atty.
Br. at 7, 6 TTABVUE 7. We might have viewed this imprecision as a minor error if it only
had occurred in the August 12, 2014 Final Office Action, but the Examining Attorney
repeated the genericness argument in his Brief, even after Applicant pointed out the
discrepancy between the initial and final actions in Applicant’s Brief. See App. Br. at 13, 4
TTABVUE 14. Consistency in the discussion of the disclaimer requirement would have
helped avoid unnecessary collateral arguments in the briefing of the appeal.
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also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See
Federated Foods, Inc. v. Fort Howard 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. Relatedness of the Goods, Channels of Trade and Conditions of
Purchase
We begin with the du Pont factors of the relatedness of the goods, channels of
trade and conditions of purchase. We base our evaluation on the goods as they are
identified in the application and registration. Stone Lion Capital Partners, LP v.
Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
Because the Examining Attorney focused his discussion on the “hats” identified
in the cited registration, we shall do the same. In this case, the “hats” identified in
the registration encompass the “headwear, namely foam novelty hats” identified in
the application. See In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006),
citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (unrestricted and broad
identifications are presumed to encompass all goods of the type described). Further,
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because Registrant’s identification of goods is not restricted as to channels of trade
or classes of purchasers, the goods identified in the registration must be deemed to
travel in the all channels of trade normal for such goods, such as hat shops, and be
sold to the all classes of purchasers, including ordinary consumers seeking novelty
hats. Viterra, 101 USPQ2d at 1908 (absent restrictions in an application or
registration, the identified goods are “presumed to travel in the same channels of
trade to the same class of purchasers.”), quoting Hewlett-Packard, 62 USPQ2d at
1001. See also Stone Lion, 110 USPQ2d at 1161; In re Linkvest, 24 USPQ2d 1716,
1716 (TTAB 1992). In other words, there is nothing to prevent Applicant from
offering for sale his foam novelty hats through the same trade channels and to the
same purchasers who buy Registrant’s hats, and vice-versa. See In re Anderson, 101
USPQ2d 1912, 1920 (TTAB 2012). Further, because of the nature of the goods, they
will be purchased by the public at large who, with particular regard to novelty hats,
will not exercise more than ordinary care in their purchasing decisions.
Applicant argues that the goods identified in the application and registration
are, in fact, different, move in different channels of trade, are marketed differently,
are targeted to different purchasers who exercise different levels of care, and are
priced differently. Specifically, Applicant contends that his foam novelty hats are
inexpensive, humorous items, similar to the Wisconsin “Cheese Head” hat, which
appeals to the unsophisticated, mostly male, clientele -- “someone who would
actually wear a foam cheese head or other foam hat.” (App. Br. at 23), and “[t]he
Applicant speculates that most women would not be caught ‘dead’ wearing the
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Applicant’s product. Even at [a] sporting event or party!” July 15, 2012 Response to
Office Action (emphasis in original). On the other hand, according to Applicant,
Registrant sells “sophisticated high end clothing” that appeals to celebrities,
primarily female (App. Br. at 23).6
We cannot consider these purported limitations on the scope of Applicant’s or
Registrant’s goods because no such limitations are reflected in the application or
cited registration. In considering the scope of the application and registration, we
are bound by the identifications in the application and registration themselves and
not to extrinsic evidence about Applicant’s or Registrant's goods. See Stone Lion,
110 USPQ2d at 1162; Hewlett-Packard, 62 USPQ2d at 1004; Octocom, 16 USPQ2d
at 1787; In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008). As discussed
above, the word “hats” in Registrant’s identification of goods includes all varieties of
hats, without limitation. Therefore, based on the identification of goods in the
application and registration, Registrant’s goods (“hats”) include Applicant’s goods
(“foam novelty hats”). Applicant’s arguments regarding purported differences
between the actual goods, channels of trade, customers, and purchasing conditions
are irrelevant.

6 Applicant also suggests that Registrant is not using L.O.L. for hats as Applicant “cannot
find any information about the [R]egistrant selling any kind of hats or headwear at all.”
App. Br. at 11, 4 TTABVUE 12. To the extent Applicant claims that Registrant has
abandoned its mark for “hats,” the argument constitutes an impermissible collateral attack
on the registration. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35
(Fed. Cir. 1997). In an ex parte proceeding, we have no discretion to limit or ignore a cited
registration.
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The du Pont factors of the similarity of the goods, channels of trade and the
conditions of purchase favor a finding of likelihood of confusion.
B. Comparison of the Marks
We next consider the similarity or dissimilarity of Registrant’s mark L.O.L. and
Applicant’s mark LOL LIDZ. We must compare the marks in their entireties as to
appearance, sound, connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005), quoting du Pont, 177 USPQ at 567. “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).
The focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In comparing the marks, we are mindful that where, as here, the goods are
closely related, the degree of similarity necessary to find likelihood of confusion
need not be as great as where there is a recognizable disparity between the goods.
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108
Serial No. 85470198
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(TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84
USPQ2d 1323, 1325 (TTAB 2007).
While we view the marks in their entireties, it is well-settled that one feature of
a mark may be more significant than another, and it is not improper to give more
weight to this dominant feature in determining the commercial impression created
by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). Applicant argues that LIDZ is the dominant element in his mark LOL
LIDZ. App. Br. at 17, 4 TTABVUE 18. We disagree. In this case, LOL is the
dominant and most significant feature of Applicant’s mark, not only because it
appears in the initial position of the mark, see Palm Bay, 73 USPQ2d at 1692, but
also because it has stronger source-identifying significance than the term LIDZ.
Indeed, the term “LIDZ” is merely a misspelling of the word “LIDS,” which is a
slang term for hats,7 and appropriately has been disclaimed in its correct spelling.
See In re Omaha Nat’l Corp., 2 USPQ2d at 1861; In re Carlson, 91 USPQ2d at 1203;
In re Newport Fastener Co., 5 USPQ2d at 1067 n.4. Descriptive or disclaimed8

7 Printout from attached to February 29, 2012 Office
Action.
8 Applicant argues that the Examining Attorney improperly dissected the applied-for mark
and erred in considering Applicant’s disclaimer of LIDZ (in its correctly spelled “LIDS”
form), because “disclaimer[s are] irrelevant in determining any likelihood of confusion.”
App. Br. at 14-15, 4 TTABVUE 15-16, quoting 3 MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION §19:72 (4th Ed.). Applicant is correct that a disclaimer itself has no
effect on consumer perception of the disclaimed term or of the mark as a whole. However, a
disclaimed term is usually weak and discounted in the analysis of likelihood of confusion
not because it is disclaimed, but because of why it is disclaimed. Most disclaimed matter is
disclaimed because it is descriptive, and descriptive terms have little or no source-
identifying function. The case law is clear that disclaimed or descriptive terms contribute
Serial No. 85470198
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matter typically is less significant or less dominant when comparing marks. See
Cunningham v. Laser Golf Corp., 55 USPQ2d at 1846, quoting National Data, 224
USPQ at 752 (“Regarding descriptive terms, this court has noted that the
descriptive component of a mark may be given little weight in reaching a conclusion
on the likelihood of confusion.”); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d
1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the
mark’s commercial impression.”).
Applicant’s mark LOL LIDZ and Registrant’s mark L.O.L. are similar in
appearance and sound in that the dominant element of Applicant’s mark, LOL, is
virtually identical to the entirety of Registrant’s mark L.O.L. Moreover, the letters
“LOL” are a recognized abbreviation of many things, including the wording
“laughing out loud,”9 which signifies a reaction to something humorous. The
inclusion of periods in Registrant’s mark L.O.L., if noticed at all, reinforces the
appearance of L.O.L. as an acronym or abbreviation with the same recognized
meaning as “LOL.” Use of the identical letters “LOL” in each mark results in marks

little, if any, source identifying capacity to a mark. The case law is equally clear that a
proper likelihood of confusion analysis should focus on those elements in marks that do
contribute to source identification.
9 Definition of “LOL” retrieved from based on THE AMERICAN
HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (2011). The Board may take judicial
notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co.,
213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 85470198
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with similar commercial impressions when used on the identified goods, connoting
crazy or “funny-looking” hats.
We also note that although LOL and L.O.L. might have significance when used
on hats, especially foam novelty hats, there is no evidence of third-party trademark
use of the term (with or without periods) in connection with similar goods.
Registrant’s mark L.O.L. therefore does not appear to be weak or diluted with
respect to hats or similar goods, and Applicant does not argue otherwise.
Applicant argues, without support, that “a large number of tech savvy
consumers would actually view the [R]egistrant’s mark as, ‘L’ dot ‘O’ dot ‘L.’ Such an
interpretation creates a whole new and different commercial impression of the
[R]egistrant’s mark, suggesting something related to technology or the Internet and
not clothing.” App. Br. at 17, 4 TTABVUE 18. This argument is unpersuasive
because the meaning or connotation of Applicant’s and Registrant’s marks must be
determined in relation to the identified goods, and not in a vacuum. As discussed
above, Registrant’s “hats” encompass Applicant’s “foam novelty hats.” Registrant’s
mark L.O.L. and Applicant’s mark LOL LIDZ therefore share the same humorous
connotation when applied to the goods identified in the application and registration.
In addition, there is no reason to believe that consumers would verbalize the periods
in Registrant’s mark. Common punctuation rarely changes the connotation of a
term. Cf. Duopross Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247,
103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (use of exclamation point does not change
impression of descriptive mark). In any event, it is settled that for purposes of the
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likelihood of confusion analysis, there is no correct way to pronounce a trademark.
See, e.g., Viterra, 101 USPQ2d at 1912 (upholding the Board’s affirmance of a
Section 2(d) refusal to register XCEED for agricultural seed based on a likelihood of
confusion with the registered mark X-SEED and design, SEED disclaimed, for
identical goods).
Next, Applicant contends that Registrant uses the cited mark “in a graphical
shield … with a large additional graphic in a very fancy font that blends into the
graphical shield.” App. Br. at 12, 4 TTABVUE 13. However, Registrant’s mark is in
standard characters. As such, the rights associated with the mark reside in the
wording and not in any particular display. Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445,
1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB
1988). Moreover, we are limited to comparing the marks as they are shown in the
cited registration and in Applicant’s application, and Registrant’s actual use of the
mark is not relevant to this analysis.
Finally, Applicant lists twelve precedential Board decisions which found no
likelihood of confusion where the marks purportedly “include marks with identical
formative words that are at least as close as, or are closer in appearance, sound
connotation and commercial impression than Appellant’s mark and the
[R]egistrant’s mark and ignored by the Examining Attorney.” App. Br. at 19-20, 4
TTABVUE 20-21. Suffice it to say that the fact that different conclusions were
reached on different records, with different marks and different goods, has no
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bearing on our decision herein. It has been noted many times that each case must
be decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some
characteristics similar to [applicant’s] application, the PTO’s allowance of such prior
registrations does not bind the Board or this court.”); In re Merrill Lynch, Pierce,
Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987).
In view of the foregoing, we find that when Applicant’s mark LOL LIDZ and
Registrant’s mark L.O.L. are compared in their entireties, they are sufficiently
similar in appearance, sound, connotation and commercial impression that, if
applied to closely related goods, confusion would be likely to occur. As such, this du
Pont factor also favors a finding of likelihood of confusion.
C. Conclusion
When we consider the record and the relevant likelihood of confusion factors,
and all of Applicant’s arguments relating thereto, including those arguments not
specifically addressed herein, we conclude that consumers familiar with
Registrant’s “hats” offered under the mark L.O.L. would be likely to believe, upon
encountering Applicant’s mark LOL LIDZ for “headwear, namely foam novelty
hats” that the goods originated with or are somehow associated with or sponsored
by the same entity.
Decision: The Section 2(d) refusal to register is affirmed.