Naked Brand Group, Inc.v.Badih Khamis

Trademark Trial and Appeal Board

Oct 23, 2018

No. 91224783 (T.T.A.B. Oct. 23, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 23, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Naked Brand Group, Inc.
v.
Badih Khamis
_____

Opposition No. 91224783
_____

Michael J. Leonard and Christopher D. Olszyk, Jr. of Fox Rothschild LLP,
for Naked Brand Group, Inc.
Badih Khamis, pro se.
_____

Before Cataldo, Greenbaum and Coggins,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Badih Khamis (“Applicant”) seeks registration on the Principal Register of the
mark NAKED UNDERNEATH (in standard characters) for
Clothing, namely, Underwear, Bath robes, Shirts, T-Shirts,
Sweaters, Pants, in International Class 25.1

1 Application Serial No. 86063139 was filed on September 12, 2013, based upon Applicant’s
allegation 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), and pursuant to Section 44(d) of the Trademark Act, 15
U.S.C. § 1126(d). Canadian Registration TMA900355 issued on April 7, 2015 from an
application that was filed on September 12, 2013. The filing bases are now Trademark Act
Sections 1(b) and 44(e), 15 U.S.C. § 1126(e).
Opposition No. 91224783
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Naked Brand Group, Inc. (“Opposer”) opposes registration pursuant to Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting priority and a likelihood of
confusion with its NAKED2 and NAKED-formative marks,3 all in standard characters
and registered on the Principal Register for various clothing, including underwear,
robes, tops, tank tops and T-shirts, in International Class 25. Opposer also asserts
that it has made prior common law use of those marks in connection with the same
or similar clothing. For purposes of this proceeding, Opposer’s claim of common law
rights is unnecessary, and we have not considered it in making our decision.
Applicant, in his answer, denied the salient allegations in the Notice of
Opposition.4
I. Evidentiary Issue
Applicant attached to his brief the Affidavits of Elie Sfeir, a director at Universal
Linens in Canada, and Patrick Khamis, Applicant’s former partner in a Canadian
business operating under the name Linen Depot Direct. 31 TTABVUE 22 and 24,
respectively. In its reply brief, Opposer objects because Applicant did not identify the
affiants as witnesses in his Initial or Pre-trial Disclosures, and because Applicant did

2 Reg. No. 3669650 issued on August 18, 2009; Section 8 and 15 Affidavits have been
accepted/acknowledged.
3 We list the NAKED-formative marks below, where we explain why we focus on Reg. No.
3669650.
4 We construe Applicant’s multiple statements that he adopted his mark in good faith as
amplifications of his denials of the salient allegations in the notice of opposition.
Applicant also filed a counterclaim to cancel Reg. No. 3669650 on grounds that the term
NAKED is generic. 10 TTABVUE. On April 11, 2016, the Board granted as conceded
Opposer’s motion to dismiss the counterclaim. 16 TTABVUE.
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not file the affidavits during his testimony period. 32 TTABVUE 9-12. The objection
is sustained on both grounds.
Under Trademark Rule Trademark Rule 2.121(e), 37
C.F.R. § 2.121(e), where testimony has been presented by affidavit, but was not
covered by an earlier pretrial disclosure, the adverse party may file a motion to strike
the testimony. In addition, under Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a), a
party may not submit a testimony affidavit outside of its assigned testimony period,
except by stipulation of the parties approved by the Board, or on motion granted by
the Board, or by order of the Board. None of the exceptions apply.
We add that consideration of the affidavits would not have affected our decision
because the witnesses testified only concerning Applicant’s purported use of his mark
from 1995-2008. Such use, if any, has no bearing on the issue before us, which is
whether there is a likelihood of confusion between Applicant’s mark and Opposer’s
pleaded registered marks under Section 2(d) of the Trademark Act.
II. Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of Applicant’s application.
A. Opposer submitted a Notice of Reliance (23 TTABVUE) on:
1. printouts from the Trademark Status & Document Retrieval (TSDR) database
showing the current status and title of Opposer’s pleaded registrations for the
NAKED and NAKED-formative marks;
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2. Applicant’s responses to Opposer’s interrogatories and document requests
(with accompanying production); and
3. the testimony affidavits5 of:
a. Joel Primus, Opposer’s President (with accompanying exhibits), and
b. Carole Hochman, Opposer’s CEO, Chief Creative Officer and Chairwoman.
B. Applicant submitted a Notice of Reliance (26 TTABVUE) on:
1. printouts from the TSDR database of Applicant’s applications for NAKED
UNDERNEATH for various bedding and LINEN DEPOT for assorted bed and
bath items;
2. certified copies of Applicant’s Canadian registrations for NAKED
UNDERNEATH (Reg. No. TMA900355) and WESTMOUNT POLO, and
Canadian Trademark Application for LINEN DEPOT DIRECT;
3. printouts from the WhoIs Go Daddy Domains Canada database showing the
domains nakedunderneath.ca, linendepotdirect.ca and linendepotdirect.com
are registered to Applicant’s brother, Patrick Khamis; and
4. Applicant’s testimony affidavit, with accompanying exhibits including:

5 Both parties submitted testimony affidavits under notice of reliance. Testimony affidavits
and declarations are not admissible by notice of reliance and should be submitted separately.
Compare Trademark Rule 2.125(a), 37 C.F.R. § 2.215(a), and Trademark Rule 2.122(g), 37
C.F.R. § 2.122(g). Nonetheless, the parties’ affidavits are considered to be of record for
purposes of our determination herein because they were filed during the appropriate
testimony periods.
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a. printouts from the Trademark Electronic Search System (TESS) of three
pairs of third-party registrations for marks that share a common term other
than NAKED;
b. screenshots of bedding products (none of which bear Applicant’s NAKED
UNDERNEATH mark) offered on the Canadian Groupon website; and
c. screenshots of T-shirts bearing slogans that include the word “naked,” such
as “Laundry Today or Naked Tomorrow” and “I’m Naked Under These
Clothes”).
III. Standing and Priority
Because Opposer properly made its pleaded registrations of record, and they are
valid, subsisting, and owned by Opposer, Opposer has established its standing to
oppose registration of Applicant’s mark, and priority of use is not in issue with respect
to the goods identified in those registrations vis-à-vis the applied-for mark.6 See
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058
(Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999);
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982);
King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Applicant does not dispute Opposer’s standing or priority.

6 This finding does not apply to Reg. No. 3974743 for the NAKED-formative mark, NAKED
ATHLETICS, which was cancelled on January 12, 2018 under Section 8.
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IV. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 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 Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). We discuss below these and other relevant factors.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant and of
record” need be considered); see also In re i.am.symbolic, llc, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers
all DuPont factors for which there is record evidence but ‘may focus … on dispositive
factors, such as similarity of the marks and relatedness of the goods.’”) (quoting
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002)).
C. Focus on Reg. No. 3669650
For purposes of our likelihood of confusion analysis, we focus on the most relevant
pleaded registration, Reg. No. 3669650, for the standard character mark NAKED for
“T-shirts, tops, loungewear, pajamas, boxer shorts, undergarments, tank tops,
lingerie, bras, camisoles, chemises, nightgowns, peignoir sets, teddies, pajamas,
robes, bathrobes.” If we find a likelihood of confusion with this NAKED mark, we
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need not find it as to the other pleaded registrations, which include the NAKED-
formative marks NAKED BOUND, NAKED KISS, NAKED OBSESSION, NAKED
INNOCENCE, NAKED ATTRACTION, NAKED ECSTASY, NAKED FANTASY,
NAKED EROTICA, and NAKED LOVE, for “Women’s clothing, namely, caps, T-
shirts, tank tops, crop tops, dresses, skirts, pants, jeans, jackets, lingerie, bras,
underwear, thongs, boy shorts, bustiers, corsets, camisoles, chemises, nightgowns,
peignoirs, teddies, robes, bathing suits, and bikinis; men’s clothing, namely, caps, T-
shirts, tank tops, jeans, robes, underwear, boxer briefs, and bathing suits.”7 On the
other hand, if we do not find a likelihood of confusion with Opposer’s NAKED mark,
we would not find it as to the other NAKED-formative marks, which include
additional distinguishing elements.8 See In re I-Coat Co., LLC, 126 USPQ2d 1730,
1734 (TTAB 2018); In re Max Capital Grp., Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
D. Goods and Channels of Trade
We begin with the du Pont factors involving the relatedness of the goods and the
similarity of channels of trade. 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, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys.

7 Reg. Nos. 4392513-4392521, respectively, all issued on August 27, 2013, with minor
differences in four of the identifications: NAKED BOUND (Reg. No. 4392513) does not
identify “boy shorts,” NAKED EROTICA (Reg. No. 4392520) also identifies “ties,” NAKED
FANTASY (Reg. No. 4392519) also identifies “jackets,” and NAKED INNOCENCE (Reg. No.
4392516) does not identify any “men’s clothing.” These differences do not affect the outcome
of the decision.
8 The other NAKED-formative marks are listed above, plus PLANET NAKED (Reg. No.
482252, which issued on September 29, 2015) for many of the same goods as the other
NAKED-formative marks, and now-cancelled Reg. No. 3974743 for NAKED ATHLETICS.
Opposition No. 91224783
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Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990).
Applicant’s application identifies “clothing, namely, underwear, bath robes, shirts,
T-shirts, sweaters [and] pants,” and Opposer’s registration identifies “T-shirts, tops,”
“boxer shorts, undergarments,” “lingerie, bras, camisoles,” “robes [and] bathrobes.”
To the extent indicated, the parties’ goods are identical or legally identical in part,
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.’”), and the
“pants” identified in the application are worn together with, and thus closely related
to, many of the items identified in the registration.
Given the identity/legal identity of the goods in part, and the lack of restrictions
in the application and registration as to channels of trade and classes of purchasers,
we presume that the goods will travel through the same channels of trade (e.g., brick-
and-mortar and online retail clothing stores) and that they will be offered to the same
potential purchasers (e.g., ordinary consumers). See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to
travel in same channels of trade to same class of purchasers); see also Stone Lion, 110
USPQ2d at 1161; In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723
(CCPA 1968) (where there are legally identical goods, the channels of trade and
classes of purchasers are considered to be the same).
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Applicant concedes that “Applicant shares a few items that may be similar” to
those of Opposer, but argues that the goods “are not related to the same concept”
because his goods are “related to bedding and not to other clothing,” and “the goods
are not close in proximity because the Opposer sells a wider range of products.” 31
TTABVUE 15. Applicant also argues that the goods and customers would differ
because “Opposer’s clients are high end shoppers, looking for a higher class and/or
quality of goods with a sports celebrity-based reference. The Applicant’s customers
would be online consumers that purchase competitively priced bedding on deal
websites.” Id. Applicant’s attempts to differentiate his goods and channels of trade
are not relevant to our likelihood of confusion determination. As stated above, we
must compare the goods as they are identified in the application and registration,
and neither identification is limited in any way, e.g., to a particular price point or
intended consumer. For the same reason, Applicant’s stated intention to limit his
goods to “t-shirts and boxers” (id. at 17) is not relevant.9
These du Pont factors strongly favor a finding of likelihood of confusion.
E. Conditions of Sale
Next, we consider the conditions under which the goods are likely to be purchased,
e.g., whether on impulse or after careful consideration, as well as the degree, if any,

9 Applicant did not file a motion to amend his identification of goods to limit them to “t-shirts
and boxers.” See Trademark Rule 2.133(a), 37 C.F.R. § 2.133(a). In any event, Opposer does
not consent to such amendment: “‘t-shirts and boxers’ are goods prominently listed in
Opposer’s registrations … and not surprisingly, are goods of greatest concern to Opposer.
Thus, this offer of compromise and agreement to narrow Applicant’s focus and intent is in
direct conflict with Opposer’s rights and are precisely the goods that have triggered the need
for this Opposition.” 32 TTABVUE 7.
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of sophistication of the consumers. “Purchaser sophistication may tend to minimize
likelihood of confusion. Conversely, impulse purchasers of inexpensive items may
tend to have the opposite effect.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691, 1695 (Fed. Cir. 2005).
Again, because we are bound by the identifications of goods in the application and
pleaded registration, and because neither identification is restricted as to price, we
must presume that Applicant’s goods and Opposer’s goods are marketed to all
ordinary consumers of clothing, including the general public. Ordinary consumers of
these goods are likely to exercise only ordinary care, and given the lack of price
restrictions in the identifications, may buy the identified goods on impulse. See Recot
Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) (“When
products are relatively low-priced and subject to impulse buying, the risk of likelihood
of confusion is increased because purchasers of such products are held to a lesser
standard of purchasing are.”).
Accordingly, this factor favors a finding of a likelihood of confusion.
F. The similarity or dissimilarity of the marks
Under this du Pont factor, we compare the marks NAKED and NAKED
UNDERNEATH in their entireties for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Stone Lion, 110 USPQ2d at 1160-61.
“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
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the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1721 (Fed. Cir. 2012) (quotation omitted). The marks “‘must be considered …
in light of the fallibility of memory ….’” In re St. Helena Hosp., 774 F.3d 747, 113
USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD
Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper focus
is on the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. See St. Helena Hosp., 113 USPQ2d at 1085;
Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40
(CCPA 1971). Moreover, in comparing the marks, we are mindful that where, as here,
Applicant’s goods are identical/legally identical to Opposer’s goods in part, 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. Bridgestone Ams. Tire Operations
LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Century
21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992).
Our analysis cannot be predicated on dissection of the involved marks. Stone Lion,
110 USPQ2d at 1161. Rather, we are obliged to consider the marks in their entireties.
Id.; see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233,
234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”). Nonetheless, 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
Opposition No. 91224783
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the ultimate conclusion rests on a consideration of the marks in their entireties. Stone
Lion, 110 USPQ2d at 1161.
The marks NAKED and NAKED UNDERNEATH are similar because they share
the term NAKED, which means “being without clothing or covering; nude.”10 When
applied to the underwear/undergarments identified in the application and
registration, NAKED suggests that the goods are so lightweight and breathable that
you feel like you are not wearing them. Opposer promotes this connotation on its
website:
Naked was founded on one basic desire: to create a new
standard for how products worn close to the skin fit, feel
and function. We have spent years developing designs and
fabrics that feel like nothing else. Like you are wearing
nothing at all. So you feel how you want to feel: free,
unencumbered and empowered. We know because that’s
how we feel when we wear them. We are naked.
Hochman Aff., 32 TTABVUE 324, ¶ 18 (citing website).
Applicant contends “the meaning of both brands is extremely different,” and
asserts that his NAKED UNDERNEATH mark “states a fact, basically saying that,
yes, one is wearing something and is nude under that garment or bedding article.
Opposer’s brand is stating a feeling of absence of clothing, the lightness of the fabric,
whereas, the Applicant is stating a reality.” 31 TTABVUE 15. We see no such
distinction. Applicant’s addition of the term UNDERNEATH to NAKED reinforces

10 The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016). We take judicial notice of this
dictionary entry from dictionary.com, based on the RANDOM HOUSE UNABRIDGED
DICTIONARY (2018), accessed October 20, 2018.
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the suggestion of the feeling of nakedness under your clothing, rather than changing
the meaning of the word NAKED. Cf. Lever Bros. Co. v. Barcolene Co., 463 F.2d 1107,
174 USPQ 392 (CCPA 1972) (the additional word CLEAR in ALL CLEAR changes
the meaning of the single word ALL.). Thus, the marks are similar in meaning.
The placement of the term NAKED in the lead position in Applicant’s mark
highlights the importance of that term. See Palm Bay, 73 USPQ2d at 1692 (“Veuve”
is the most prominent part of the mark VEUVE CLICQUOT because “veuve’ is the
first word in the mark and the first word to appear on the label); Century 21 Real
Estate, 23 USPQ2d at 1700 (upon encountering the marks, consumers will first notice
the identical lead word).
In addition, while there is no rule that a likelihood of confusion is present where
one mark encompasses another, in this case, as in many others, the fact that
Applicant’s mark includes the entirety of Opposer’s mark increases the similarity
between the two. See, e.g., Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 194
USPQ 419, 422 (CCPA 1977) (finding CALIFORNIA CONCEPT marks substantially
similar to prior mark CONCEPT); Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v.
Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975)
(applicant’s mark BENGAL LANCER for club soda, quinine water and ginger ale is
likely to cause confusion with BENGAL for gin).
Finally, we note that Applicant’s NAKED UNDERNEATH mark and Opposer’s
NAKED mark are registered in standard characters and thus not limited to any
particular depiction. The rights associated with a standard character mark reside in
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the wording and not in any particular display. In re RSI Sys. LLC, 88 USPQ2d 1445,
1448 (TTAB 2008); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB
1988). We must consider the standard character marks “regardless of font style, size,
or color,” Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1258‒59 (Fed. Cir. 2011), including iterations emphasizing the shared term
NAKED.
We find that NAKED and NAKED UNDERNEATH are similar in sound,
appearance, meaning and overall commercial impression, taking into account the
identity/legal identity of many of the goods. The addition of the suggestive term
UNDERNEATH in Applicant’s mark is not sufficient to distinguish it from Opposer’s
NAKED mark, but more likely to be viewed as identifying a variation or extension of
clothing lines offered by the source identified as NAKED. See, e.g., In re Toshiba Med.
Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (holding VANTAGE TITAN for MRI
diagnostic apparatus, and TITAN for medical ultrasound device, likely to cause
confusion, noting that the marks are more similar than they are different and that
the addition of applicant’s “product mark,” VANTAGE, to the registered mark would
not avoid confusion). Although we have focused on Opposer’s registration for the
mark NAKED, the fact that Opposer has registered numerous variations of this mark
(e.g., NAKED FANTASY, NAKED KISS, NAKED OBSESSION) for clothing,
including many items that are identical or legally identical to Applicant’s identified
clothing, confirms this conclusion.
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The similarity between the marks also weighs in favor of a finding of likelihood of
confusion.
G. Strength of Opposer’s NAKED mark
As noted above, the Board dismissed Applicant’s counterclaim to cancel Opposer’s
registration for the NAKED mark on the ground that NAKED is generic for the
identified clothing. Now, Applicant essentially argues that Opposer’s NAKED mark
is weak because it is not a “created name” or “fabricated word” like L’Oreal and Frito-
Lay, which are “not common words found in the dictionary.”11 This argument is not
persuasive.
While NAKED is suggestive of Opposer’s identified clothing (for the reasons we
discussed in the previous section), and thus not as conceptually strong as an arbitrary
term, the record does not support a finding that Opposer’s NAKED mark is weak or
diluted for clothing. Applicant submitted photographs of several individuals wearing
T-shirts with slogans containing the word NAKED, such as “Laundry Today or Naked
Tomorrow” and “Irish You Were Naked,” but as Opposer points out, Applicant did not
reference or introduce the photos in his Affidavit, the photos do not reference use in

11 In presenting these arguments, Applicant cites to two infringement cases in the federal
courts where the courts denied motions for preliminary injunction. See 31 TTABVUE 13-14.
The cases have not been reported in any official reporter, and clearly were issued as non-
precedential. In any event, as Opposer explains, they are distinguishable because the
elements necessary to prevail in a motion for a preliminary injunction and in a federal
infringement action are different from what is required in a Section 2(d) likelihood of
confusion case at the TTAB. They also are factually distinguishable from our case although
they involve pairs of marks with common elements: one found different portions of each pair
to be dominant, and the other found the common element to be descriptive. See 32 TTABVUE
5-6.
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the United States and we cannot infer such use, especially where Applicant submitted
two Canadian trademark registrations and made many references in his brief and
Affidavit to his purported use in Canada, and the slogans appear to be used in an
ornamental, non-trademark manner.
There is no other evidence of third-party use or registration of similar marks on
similar goods. Cf. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1675 (Fed. Cir. 2015) (weakness shown by at least 26 third-party uses
and registrations containing the same phrase for the same services); 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) (third-party weakness evidence
characterized as “voluminous”). And, while Opposer does not plead or argue that its
NAKED mark is famous for clothing,12 Opposer’s witness Joel Primus testified about
Opposer’s sales and marketing of NAKED-branded clothing in North America over
the past few years, and its partnership with Dwayne Wade, a well-known sports
figure, which began in 2015. Primus Aff., 23 TTABVUE 222-24, ¶¶ 16-20. He also
testified about Opposer’s enforcement actions. Id. at 226-27, ¶¶ 25-28.
On this record, we find that Opposer’s NAKED mark is a suggestive mark, and
Applicant has not established that it is weak or diluted. We therefore find the sixth

12 Applicant conflates strength with fame, arguing that Opposer’s sales are insufficient to
support a finding of fame, and that Opposer’s mark is not strong because it is not as famous
as some designer marks, such as Tommy Hilfiger and Calvin Klein. 31 TTABVUE 14. In any
event, because Opposer opposed registration of Applicant’s mark on the ground of likelihood
of confusion and not dilution, it is not necessary for Opposer to demonstrate, inter alia, that
its NAKED mark is famous.
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du Pont factor neutral, and accord Opposer’s NAKED mark a normal scope of
protection.
H. Conclusion
Having considered all the evidence and arguments bearing on the relevant du
Pont factors, we conclude that the identified goods include identical/legally identical
and closely related goods that will move through the same channels of trade to the
same classes of purchasers, the marks are highly similar, and Opposer’s NAKED
mark is entitled to a normal scope of protection. Ultimately, we find Applicant’s mark
NAKED UNDERNEATH is likely to cause confusion with Opposer’s NAKED mark
when used in association with the identified goods.
Decision: The opposition is sustained.