Mystic B.V.

Trademark Trial and Appeal Board

Sep 18, 2018

No. 79195133 (T.T.A.B. Sep. 18, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 18, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mystic B.V.
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Serial No. 79195133
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Michele S. Katz of Advitam IP LLC
for Mystic B.V.

Edward Fennessy, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Acting Managing Attorney.
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Before Mermelstein, Wellington, and Lynch,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Mystic B.V. (“Applicant”) seeks registration on the Principal Register of the mark:

for “clothing for watersports namely swimsuits, rash guards, long johns; sporting
shoes for watersports, rains shoes, neoprene boots, neoprene shoes, watersport
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helmets; rain coats, thermal underwear, windsurf jackets, kite pants, spray tops
clothing and wetsuits” in International Class 25.1
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark
MYSTIC in standard characters for “clothing, namely, shirts” in International Class
25.2
After the Examining Attorney made the refusal final, Applicant filed a request for
reconsideration and appealed. The Examining Attorney denied the reconsideration
request, and the appeal proceeded. The appeal has been briefed.
For the reasons set forth below, we affirm the refusal to register.
I. Evidentiary Objection
Applicant submitted, as exhibits to its appeal brief, an internet printout and
copies of third-party registrations. In his brief, the Examining Attorney objects to
these exhibits because they were not submitted during prosecution of the involved
application. Applicant filed a reply brief, but did not address this objection.
The evidentiary record in an application should be complete prior to the filing of
an appeal. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); Trademark Trial and
Appeal Board Manual of Procedure (TBMP) §§ 1203.02(e), 1207.01 (June 2018);
Trademark Manual of Examining Procedure (TMEP) § 710.01(c) (Oct. 2017). The

1 Application Serial No. 79195133 was filed under Section 66(a) of the Trademark Act, 15
U.S.C. § 1141f(a), based on a request for extension of protection of International Registration
No. 1316704.
2 Registration No. 2658677 issued December 10, 2002; renewed.
Serial No. 79195133
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proper procedure for an applicant or examining attorney to introduce evidence after
an appeal has been filed is to submit a written request with the Board to suspend the
appeal and remand the application for further examination. See Trademark Rule
2.142(d), 37 C.F.R. § 2.142(d). See also TBMP § 1207.02 and authorities cited therein.
As a result, the Examining Attorney’s evidentiary objection is sustained, and the
evidence Applicant submitted for the first time with its appeal brief is untimely and
will not be considered.
We turn now to the merits of this appeal.
II. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); 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.”).
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A. Similarity of the Marks
We compare the marks and MYSTIC “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imps., 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 test assesses not
whether the marks can be distinguished in a side-by-side comparison, but rather
whether their overall commercial impressions are so similar that confusion as to the
source of the goods and services offered under the respective marks is likely to result.
Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB
2012).
Applicant’s mark comprises a design element and the word MYSTIC. Although
there is no per se rule, it is often the case that the word portion of a word-and-design
mark is dominant because consumers will use the word, rather than the design, to
refer to and call for the goods. See In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987) (if
a mark comprises both a word and a design, then the word is normally accorded
greater weight because it would be used by purchasers to request the goods or
services). See also CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
1983) (“in a composite mark comprising a design and words, the verbal position of the
mark is the one most likely to indicate the origin of the goods to which it is affixed.”).
We find that to be the case here. Although it appears first in Applicant’s mark, the
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design element is physically smaller than the word MYSTIC, and cannot be vocalized
or easily described. There is no argument or evidence that the design portion of
Applicant’s mark would have any significance to consumers; thus, this design will
likely be viewed as a fanciful image preceding MYSTIC. Applicant asserts that its
mark should not be dissected; we agree that we must consider the marks in their
entireties, but as it has been frequently noted, “in articulating reasons for reaching a
conclusion on the issue of confusion, 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.” In re Detroit Athletic Co., --- F.3d ---, 2018 WL 4288981 *4 (Fed. Cir. Sept.
10, 2018) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985)); see also Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1161 (Fed. Cir. 2014).
Applicant’s mark is similar in appearance to the mark in the cited registration.
Because the cited mark is registered in standard characters, it is not limited “to any
particular font style, size, or color.” Trademark Rule 2.52(a). As such, we must
consider it to cover the Registrant’s use of MYSTIC in any stylization, including
stylization identical to that in Applicant’s drawing. See Citigroup Inc. v. Capital City
Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258‒59 (Fed. Cir. 2011).
Applicant’s mark includes a design element absent from the cited mark. But as noted,
MYSTIC is the dominant element of Applicant’s mark. Considering Applicant’s mark
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in its entirety, we find it similar in appearance to Registrant’s mark, notwithstanding
the presence of a design element.
As to the meaning or connotation of the marks, the term MYSTIC is arbitrary with
respect to goods identified in the involved application and cited registration.3 Thus,
any meaning or connotation that consumers may attribute to the term would likely
be the same in either mark.
Accordingly, we find the involved marks are very similar in appearance, identical
in sound and would likely be understood in the same manner. This du Pont factor
weighs in favor of likely confusion.
B. Alleged Weakness of the Term Mystic
Applicant argues that its mark is “distinguishable from the cited mark due in part
to the common use of MYSTIC in third party marks.”4 However, there is no evidence
of record to support the contention that Registrant’s mark is commercially weak.
Therefore, the factor involving any weakness of the cited mark, or a common element
of the marks, based on the number and nature of similar marks in use on similar
goods (the sixth du Pont factor) is neutral. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1845 (“the obligation to consider a factor does not arise
in a vacuum and only arises if there is evidence of record relating to that factor”).

3 The term “mystic” is defined as either “a person who practices or believes in religious
mysticism” or, as an adjective, “of mysteries, or esoteric rites or doctrines.” Webster’s New
World College Dictionary (4th ed. 2010). 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, 596
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
4 11 TTABVUE 13.
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Further, as noted, the word MYSTIC has no apparent meaning relevant to the goods
at issue. We therefore consider the Registrant’s mark inherently strong as a source
indicator. See In re FCA US LLC, 126 USPQ2d 1214, 1224 (TTAB 2018).
C. The Goods
Applicant’s and Registrant’s goods need not be “competitive or intrinsically
related” to find a likelihood of confusion. Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1737 (Fed. Cir. 2017). “Instead,
likelihood of confusion can be found ‘if the respective products are related in some
manner and/or if the circumstances surrounding their marketing are such that they
could give rise to the mistaken belief that they emanate from the same source.’” Coach
Servs., 101 USPQ2d at 1722 (internal citations omitted). In analyzing the second du
Pont factor, we look to the identifications in the application and cited registration.
See Stone Lion Capital Partners, 110 USPQ2d at 1162; Octocom Sys., Inc. v. Hous.
Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
The Examining Attorney notes that Registrant’s goods are shirts and then goes
on to argue that:5
Applicant’s goods are thus similar in nature to the registrant’s goods in
that they consist of clothing and, in particular, “tops,” both of which
broadly encompass the registrant’s goods, namely, shirts.

We find the record somewhat unclear as to the above reasoning because
Applicant’s goods are not described simply as “clothing” or “tops.” Rather, the
application’s identification of goods includes, in pertinent part, “clothing for

5 13 TTABVUE 9.
Serial No. 79195133
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watersports namely …” “spray tops.” It cannot be said that, on their face, Applicant’s
goods explicitly encompass Registrant’s goods, or vice-versa. The Examining Attorney
has not pointed to evidence showing that a “spray top” necessarily is a shirt, as
opposed to, for example, a jacket. Thus, the record does not support a finding that
“shirts” include (or are encompassed by) “clothing for watersports” or “spray tops.”
The Examining Attorney, however, submitted evidence showing the relatedness
of Registrant’s shirts and Applicant’s watersport-related clothing.6 Specifically, the
Examining Attorney attached printouts from third-party websites showing use of six
different marks (Athleta, Body Glove, Lululemon, Ripcurl, Ron Jon, and Roxy) on or
in connection with both shirts and watersport apparel, such as swimwear, wetsuits,
rash guards, etc. For example, the following are some excerpts from the submitted
printouts:
7 and 8

6 5-9 TTABVUE (attached to Office Action denying request for consideration issued on
February 21, 2018).
7 7 TTABVUE 9.
8 Id. at 12.
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9 and .10
This third-party use evidence is probative because it shows that consumers are
accustomed to encountering goods such as Applicant’s watersport-related goods and
Registrant’s shirts being sold under the same marks.
The also record includes numerous (over one hundred) use-based third-party
registrations that include both Applicant’s watersport-related goods, e.g., swimsuits,
wetsuits, and sun-protective clothing, as well as Registrant’s shirts.11 These third-
party registrations, based on use in commerce suggest that the listed goods may
emanate from the same source. In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5
(TTAB 2015); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993);

9 9 TTABVUE 6.
10 Id. at 4.
11 5-7 TTABVUE. Several of the registrations are less probative of the relatedness of the
goods because their identifications are extensive and cover other unrelated goods;
nevertheless, the sheer number of registrations, including many that have shorter
identifications that include Applicant’s and Registrant’s goods, is impressive and persuasive.
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In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864
F.2d 149 (Fed. Cir. 1988) (mem.).
The established relatedness of the involved goods weighs in favor of finding a
likelihood of confusion.
D. Trade Channels and Classes of Consumers
Turning to the trade channels and consumers, the relatedness evidence discussed
above also demonstrates that the involved goods are featured together on the same
websites, and would be encountered by the same consumers. For example, the same
consumer seeking to buy an Athleta-brand women’s rash guard shirt may also
purchase an Athleta-brand tee shirt for women on the same website. Applicant’s
arguments that its goods and Registrant’s goods are, in fact, offered in different and
particular marketplaces, even if supported by evidence, is misplaced because, as our
primary reviewing court has pointed out:
[t]he 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 sales of the goods are directed.

Octocom Syst., 16 USPQ2d at 1787; see also Detroit Athletic Co., at *6(“[t]he relevant
inquiry in an ex parte proceeding focuses on the goods and services described in the
application and registration, and not on real-world conditions”) (citing In re
i.am.symbolic, llc, 866 F.3d 1315, 1325 (Fed. Cir. 2017)).

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Applicant’s contentions that its goods are “specialty items that are going to be sold
in specialty stores”12 and that Registrant’s shirts are sold “in around the casinos of
Mystic Lake, Minnesota” are trade channel limitations that are not reflected in either
the application or the cited registration. Without such trade channel restrictions, we
must presume the goods will be offered in all normal trade channels for such goods,
such as websites that feature watersport apparel and tee shirts. See i.am.symbolic,
123 USPQ2d at 1750 (“In the absence of meaningful limitations in either the
application or the cited registrations, the Board properly presumed that the goods
travel through all usual channels of trade and are offered to all normal potential
purchasers.”).
Accordingly, the du Pont factors involving the channels of trade through which
the goods may be found and the classes of customers weigh in favor of finding a
likelihood of confusion.
III. Conclusion
We find confusion is likely in light of our findings that Applicant’s and Registrant’s
marks are overall very similar and will be used on related goods that travel in the
same channels of trade to the same classes of customers.
Decision: The refusal to register Applicant’s mark is affirmed.

12 11 TTABVUE 12.