Morgan Renegade, LLC

Trademark Trial and Appeal Board

Aug 5, 2019

87919926 (T.T.A.B. Aug. 5, 2019)

This Opinion is not a
Precedent of the TTAB
Mailed: August 5, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Morgan Renegade, LLC
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Serial No. 87919926
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Matthew B. Wenzlau of Wenzlau Law Group PLLC,
for Morgan Renegade, LLC.

John Sullivan, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____

Before Cataldo, Adlin, and Coggins,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Morgan Renegade, LLC, seeks registration on the Principal Register of
the mark MORGAN RENEGADE (in standard characters), identifying “audio and
video recordings featuring music and artistic performances” in International Class
9.1

1 Application Serial No. 87919926 was filed on May 14, 2018, based on Applicant’s assertion
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act. 15 U.S.C. § 1051(b). The application includes the following Name Portrait Consent: “The
name(s), portrait(s), and/or signature(s) shown in the mark identifies Tim Miller, whose
consent(s) to register is made of record.”

Serial No. 87919926
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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 of
likelihood of confusion with the cited registered mark
identifying, inter alia, “phonograph records, and video tapes featuring music” in
International Class 9.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Likelihood of Confusion

We base our determination of likelihood of confusion under Trademark Act Section
2(d) on an analysis of all of the probative facts in evidence that are relevant to the
factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. __, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019).
We have considered each DuPont factor that is relevant, and have treated other
factors as neutral. See 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

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.

2 Registration No. 2515534 issued on the Principal Register on December 4, 2001. Section 8
and 15 affidavits accepted and acknowledged. First Renewal. The registration also recites
“entertainment services, namely performances by a live musical band” in International Class
41.
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1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are relevant to every case,
and only factors of significance to the particular mark need be considered.”));
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)
(“While we have considered each factor for which we have evidence, we focus our
analysis on those factors we find to be relevant.”).
Varying weights may be assigned to each DuPont factor depending on the evidence
presented. 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”). Two key considerations are the
similarities between the marks and the relatedness of 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.”); In re
FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018).
A. The Goods, Channels of Trade, and Classes of Customers

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration,” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159
(Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s goods are “audio and
Serial No. 87919926
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video recordings featuring music and artistic performances” and Registrant’s goods
are “phonograph records, and video tapes featuring music.”
The Examining Attorney contends that the respective goods are legally identical,
inasmuch as “audio … recordings featuring music …” encompass “phonograph
records … featuring music.” Applicant offers little argument in opposition. We find
that Applicant’s audio recordings featuring music, without limitation as to the
physical or electronic media by which they are offered, e.g., discs, cassettes,
phonograph records or MP3 files, encompass the more narrowly identified
phonograph records featuring music in the cited registration. In other words,
Registrant’s phonograph records are subsumed under the more generally identified
audio recordings identified in the involved application. See In re Hughes Furniture
Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded
identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified
‘residential and commercial furniture.’”). As a result, the goods in the cited
registration are presumed to be included among the goods in the application and are,
in part, legally identical thereto. Because the goods in the application and cited
registration are legally identical in part, there is no need for us to further consider
the relatedness of the goods. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 938-39 (Fed. Cir. 1983) (holding that a single good from among several may
sustain a finding of likelihood of confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun
Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must
Serial No. 87919926
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be found if there is likely to be confusion with respect to any item that comes within
the identification of goods or services in the application).
The third DuPont factor concerns “[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.” Stone Lion Capital v. Lion Capital, 110 USPQ2d
at 1161 (quoting DuPont, 177 USPQ at 567). Inasmuch as the goods identified in the
application and the cited registration are, in part, legally identical, we must presume
that the channels of trade and classes of purchasers for these goods are the same. See
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); 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”); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to travel in the same channels of
trade, and be sold to the same class of purchasers”). See also Octocom Sys., Inc., 16
USPQ2d at 1787 (“The authority is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods set forth
in the application regardless of what the record may reveal as to the particular nature
of an applicant’s goods, the particular channels of trade or the class of purchasers to
which the sales of goods are directed.”).
We find that the in-part legal identity of the goods, and their overlapping channels
of trade and consumers weigh heavily in favor of likelihood of confusion.
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B. Strength of the Cited Mark / Number and Nature of Similar Marks
We next evaluate the strength of the registered mark and the scope of protection
to which it is entitled. The fifth DuPont factor is the “fame” or strength of the prior
mark, and the sixth factor is the number and nature of similar marks in use for
similar goods or services. Du Pont, 177 USPQ at 567. In determining strength of a
mark, we consider both inherent strength, based on the nature of the mark itself, and
commercial strength or recognition. In re Chippendales USA Inc., 622 F.3d 1346, 96
USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its
conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”).
Turning first to inherent strength, the term “renegade” is defined as “one who
rejects a religion, cause, allegiance, or group for another; a deserter; an outlaw; a
rebel.”3 Thus, we find on this record that at most
suggests a rebellious spirit often associated with musicians, and therefore is mildly
suggestive with regard to the recited goods. There is no evidence regarding the mark’s
commercial or marketplace strength.
In its brief, Applicant argues that
There is a reason the Examining Attorney offered only one conflicting
registration in his refusal of this Application: The USPTO has a
consistent history of allowing a wide variety of marks using the word

3 October 27, 2018 final Office Action at 5, retrieved from ahdictionary.com. Applicant
submitted a substantially similar definition from merriam-webster.com with its December
12, 2018 Request for Reconsideration at 9-10; 4 TTABVUE 9-10.
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“Renegade” in other class 009 filings, which is contrary to a finding of a
likelihood of confusion based on similarity of the marks.4

In support of its position that the cited mark is weak and entitled only to a limited
scope of protection, Applicant introduced into the record copies of three third-party
registrations issued on the Principal Register to two different entities for the
following RENEGADE(S) marks identifying various goods:5
Reg. No. 5429031 for the mark RENEGADES (standard characters),
identifying various interactive, gambling and computer game
software as well as various casino and gaming related services;”

Reg. Nos. 4927395 and 4927394, issued to the same entity, for the mark
RENEGADE in standard characters and stylized form, both identifying
“protective work gloves.”

The marks in these third-party registrations are essentially identical to the mark
in the cited registration. However, none of these third-party registrations identify
“phonograph records, and video tapes featuring music” or other musical sound
recordings related to those recited in the cited registration or, for that matter, “audio
and video recordings featuring music and artistic performances” identified in the
involved application. Rather, the marks in the third-party registrations all identify
products that are not closely related to the goods identified in the cited registration
or involved application. See In re I.AM.Symbolic, LLC, 866 F.3d 1315, 123 USPQ2d
1744, 1751 (Fed. Cir. 2017) (third-party registrations for identical marks reciting
unrelated goods not probative of weakness of mark).

4 7 TTABVUE 13.
5 Applicant’s December 12, 2018 Request for Reconsideration at 11-16.
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In addition, Applicant has submitted a list of 50 third-party applications and
registrations which consist of or include the word “renegade”6 retrieved from a search
of the USPTO’s Trademark Electronic Search System (TESS). The Examining
Attorney advised Applicant that the mere submission of a list of registrations does
not make them of record and instructed Applicant in how to make the third-party
registrations properly of record.7 As the Examining Attorney made clear, to make a
third-party registration of record, a copy of the registration, either a copy of the paper
USPTO record, or a copy taken from the electronic records of the Office, should be
submitted. See generally TBMP § 1208.02 (2019). See also, for example, In re Duofold
Inc., 184 USPQ 638 (TTAB 1974). Applicant did not provide copies of the listed
registrations as instructed. We exercise our discretion to consider the list of
registrations. However, a mere listing of third-party marks, without any
accompanying indication of the goods and/or services associated therewith, has little,
if any, probative value. See TBMP § 1208.02 and the authorities cited therein.
Further, pending applications are of no value inasmuch as they only show that they
have been filed. See, e.g., In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1159 (TTAB
2019) (cancelled registrations, abandoned applications, and pending applications are
not probative support for applicant’s argument of “consumer perceptions [of the
subject marks] in the marketplace”).

6 Id. at 17-18.
7 December 13, 2018 Denial of Request for Reconsideration at 6.
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As noted above, we find that the registered mark is mildly suggestive as applied
to the identified goods. There is no evidence of third-party use; moreover, there is
very limited evidence of third-party registrations of identical marks for unrelated
products. Cf. Juice Generation, Inc. v. GS Enters LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1674-75 (Fed. Cir. 2015); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135-36
(Fed. Cir. 2015). We therefore find that the registered mark is entitled to the normal
scope of protection to which somewhat suggestive marks are entitled. See Joseph
Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733,
1734 (Fed. Cir. 2017) (stating that likelihood of confusion fame varies along a
spectrum from very strong to very weak).
C. The Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1160; 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); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523,
526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound
alone is likely to cause confusion.”) (citation omitted).” In re Inn at St. John’s, LLC,
Serial No. 87919926
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126 USPQ2d 1742, 1746 (TTAB 2018). ). “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)
(internal quotation marks omitted). See also Mini Melts, Inc. v. Reckitt Benckiser
LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084,
1089 (TTAB 2016). Consumers may not necessarily encounter the marks in close
proximity and must rely upon their recollections thereof over time. In re Mucky Duck
Mustard, 6 USPQ2d at 1468.
Applicant’s applied-for MORGAN RENEGADE mark adopts the wording of the
stylized, registered mark in its entirety, adding the
preceding term MORGAN. “Marks have frequently been found to be similar where
one mark incorporates the entirety of another mark, as is the case here.” Coca-Cola
Bottling Co. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106
(CCPA 1975) (BENGAL is similar to BENGAL LANCER); Johnson Publ’g Co. v. Int’l
Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY is similar to EBONY DRUM);
In re S. Bend Toy Mfg. Co., 218 USPQ 479, 480 (TTAB 1983) (LIL’ LADY BUG is
similar to LITTLE LADY).” TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1115
(TTAB 2019). The fact that the registered mark is stylized is of no consequence here
inasmuch as Applicant seeks registration in standard characters and therefore we
must consider all reasonable presentations of that mark including in the same
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stylization found in Registrant’s mark. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000); (“Registrations with typed drawings
are not limited to any particular rendition of the mark and, in particular, are not
limited to the mark as it is used in commerce”); In re Cox Enterprises Inc., 82 USPQ2d
1040, 1044 (TTAB 2007) (“We must also consider that applicant’s mark, presented in
typed or standard character form, is not limited to any special form or style as
displayed on its goods.”).
As discussed above, “renegade” is defined, inter alia, as “rebel,” and suggests a
rebellious spirit. There is no evidence of record to suggest “renegade” would have a
different connotation as applied to the in-part legally identical goods in the involved
application and cited registration. The term MORGAN in the involved application
appears to be a given name of the coined name, MORGAN RENEGADE, adopted by
Applicant’s principal. Applicant acknowledges that “the word ‘Morgan’ refer[s] to an
individual’s name, thereby clarifying the overall impression and connotation as goods
and services from a particular individual….”8 As a result, Applicant’s mark appears
to connote a particular rebellious individual, MORGAN RENEGADE, while the
registered mark connotes a rebellious group or individual
in general.9 As a result, the marks are similar in connotation or meaning.

8 7 TTABVUE 12.
9 The term “morgan” has additional meanings, including a breed of horse. Applicant’s
December 12, 2018 Request for Reconsideration at 10; 4 TTABVUE 10. However, Applicant
does not contend this meaning is applicable to the applied-for mark.
Serial No. 87919926
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We acknowledge that the presence of “MORGAN” as the first term in Applicant’s
mark differentiates it visually and aurally from the registered mark. This point of
distinction, however, does not significantly diminish the strong similarities in
connotation and overall commercial impression engendered by these two marks.
Based upon the above analysis, we find that MORGAN RENEGADE is more similar
than dissimilar to the mildly suggestive mark in terms
of appearance, sound, connotation and commercial impression. As a result,
consumers encountering MORGAN RENEGADE and
could mistakenly believe the latter is a shortened variation on the applied-for mark
used to identify audio recordings emanating from a common source. See In re Bay
State Brewing Co., 117 USPQ2d 1958, 1961 (TTAB 2016) (citing In re Abcor Dev.
Corp., 588 F.2d 811 , 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring) (“the
users of language have a universal habit of shortening full names—from haste or
laziness or just economy of words”)).
This is particularly the case because, “[w]hen marks would appear on virtually
identical ... [goods or] services, the degree of similarity [of the marks] necessary to
support a conclusion of likely confusion declines.” See Century 21 Real Estate Corp. v.
Century Life of Am., 23 USPQ2d at 1700. See also ECI Division of E-Systems, Inc. v.
Environmental Comm’cns. Inc., 207 USPQ 443, 449 (TTAB 1980).
For these reasons, we find that the marks are similar. The first DuPont factor
thus also weighs in favor of finding a likelihood of confusion.
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D. Conditions of Purchase

Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont, 177 USPQ at 567.
The Applicant offers that buyers of these particular types of goods are
strategic in their purchases, as the marketing and packaging that
accompanies these products is tailored toward the demographics of the
consumers and the locations in which they would consume such
products/services.10

As the Examining Attorney correctly points out, however, Applicant has presented
no evidence that the relevant consumers are sophisticated or careful.11 Applicant’s
argument is predicated on its attorney’s assertion, which is not evidence. Cai v.
Diamond Hong, 127 USPQ2d at 1799 cited in Performance Open Wheel Racing, Inc.
v. U.S. Auto Club Inc., 2019 USPQ2d 20891, *8 n. 62 (TTAB 2019). There is nothing
in the nature of the goods that would imply that its purchasers are particularly
sophisticated or careful. See In re I-Coat Co., 126 USPQ2d 1730, 1739 (TTAB 2018).
In fact, the standard of care is that of the least sophisticated potential purchaser.
Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1163 cited in In re FCA US LLC,
126 USPQ2d 1214, 1222 (TTAB 2018) (“Board precedent requires our decision to be
based on the least sophisticated potential purchasers.”). In the absence of any evidence
relating to the degree of care purchasers exercise, the similarity of the marks and
relatedness of the goods outweigh Applicant’s assertion that purchasers are

10 7 TTABVUE 9.
11 Examining Attorney’s brief, 9 TTABVUE 9.
Serial No. 87919926
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sophisticated or careful in their purchases. See HRL Assocs., Inc. v. Weiss Assocs., Inc.,
12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) (similarities of goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods).
All in all, we have no basis to find that ordinary consumers would exercise more
than an ordinary degree of care. The fourth DuPont factor is neutral.
E. Actual Confusion
Under the seventh and eighth DuPont factors, we consider the nature and extent
of any actual confusion, in light of the length of time and conditions under which
there has been contemporaneous use of Applicant’s and Registrant’s subject
marks. DuPont, 177 USPQ at 567. Applicant argues that there is no evidence “as to
whether the public is confused, has been confused, or is likely to be confused as to the
marks.”12
As the Examining Attorney observes, however, the standard is likelihood of
confusion, not actual confusion.13 See In re Detroit Athletic Co., 903 F.3d 1297, 128
USPQ2d 1047, 1053 (Fed. Cir. 2018). “[U]ncorroborated statements of no known
instances of actual confusion are of little evidentiary value.” In re Guild Mortg. Co.,
912 F.3d 1376, 129 USPQ2d 1160, 1163 (Fed. Cir. 2019) (quoting Majestic Distilling,
65 USPQ2d at 1205). This especially holds true in an ex parte context, where there is
no chance for a registrant to show what opportunity for confusion there has been

12 7 TTABVUE 15.
13 9 TTABVUE 10.
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based on registrant’s use and advertising of its mark. See In re Opus One Inc., 60
USPQ2d 1812, 1817 (TTAB 2001); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198,
1204-05 (TTAB 2009). Moreover, Applicant seeks registration on an intent-to-use
basis, and has provided no evidence of actual use, so we cannot gauge the opportunity
for actual confusion to have occurred in the US marketplace. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); Primrose Ret.
Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039-40 (TTAB
2016).
Applicant’s assertion of lack of actual confusion thus carries no probative value.
The seventh and eighth DuPont factors are neutral.
F. 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
goods offered under its mark would be likely to believe, upon encountering
Applicant’s proposed mark, that the goods originated with or are associated with or
sponsored by the same entity.
Decision: The refusal to register Applicant’s proposed mark MORGAN
RENEGADE is affirmed under Section 2(d) of the Trademark Act.