One Piece Jump In AS

Trademark Trial and Appeal Board

Jan 2, 2013

No. 85219203 (T.T.A.B. Jan. 2, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
January 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re One Piece Jump In AS
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Serial Nos. 85219191 and 85219203
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Julie C. Jennings of Senniger Powers LLP for One Piece Jump In AS.

Seth A. Rappaport, Trademark Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).
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Before Seeherman, Bergsman, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
One Piece Jump In AS filed applications to register on the Principal Register
the mark ONEPIECE, in standard character form,1 and the mark OnePiece Jump
In and design set forth below:2

1 Application Serial No. 85219191, filed under Trademark Act § 1(b), 15 U.S.C. §1051(b), on
January 17, 2011.
2 Application Serial No. 85219203, filed under Trademark Act § 1(b), 15 U.S.C. §1051(b), on
January 17, 2011.
Serial Nos. 85219191 and 85219203

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In each case, registration of the mark is sought for the following goods and services:
Clothing, namely, sweatshirts, sweatpants, hooded
sweatsuits, coats, jackets, footwear, sneakers, sandals,
slippers, headgear, namely, hats, caps, hoods, beanies, in
International Class 25;
Retail store services and wholesale store services in the
field of clothing and accessories, in International Class 35.
Application No. 85219191 also covers certain goods in Classes 3 and 9, which are
not at issue in this appeal.
With respect to both applications, the trademark examining attorney refused
registration as to the goods and services in Classes 25 and 35 under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s marks, as
intended to be used in connection with applicant’s goods and services, so resemble
the mark ONE PIECE, which is registered on the Principal Register in standard
character form for “t-shirts,”3 as to be likely to cause confusion, or to cause mistake,
or to deceive. When the refusals were made final, applicant appealed. Applicant
and the examining attorney have filed their respective appeal briefs.
1. Proceedings Consolidated.
The issues raised by the two above-noted appeals are identical in part and
otherwise highly similar. The briefs and evidentiary record in both cases are in
large part identical and are otherwise highly similar. Accordingly, the Board will
address both appeals in a single opinion. Citations to the briefs refer to the briefs
filed with respect to application Serial No. 85219191 unless otherwise noted. We

3 Reg. No. 3469251, issued on July 15, 2008. The cited registration also covers “digital
video discs and video discs containing animated cartoon programs.”
Serial Nos. 85219191 and 85219203

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have, of course, considered all arguments and evidence filed in each case, including
any arguments and evidence not specifically discussed in this decision.
2. Discussion.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, the applicant and
the examining attorney have also submitted evidence and arguments regarding
channels of trade, classes of customers, and the strength of the cited mark.
We turn first to the similarity or dissimilarity of the marks as to appearance,
sound, connotation and commercial impression. Du Pont, 177 USPQ at 567.
A. Applicant’s standard character mark.
Applicant’s mark set forth in application Serial No. 85219191 and the cited
registered mark are highly similar in appearance, differing only to the extent that
the registered mark has a space between ONE and PIECE and applicant’s mark
does not. The marks are also identical in sound and meaning. The omission of a
space between the words in applicant’s mark does not meaningfully distinguish the
two marks. See In re Narwood Productions, Inc., 223 USPQ 1034 (TTAB 1984)
(THE MUSIC MAKERS is similar to MUSICMAKERS); Goodyear Tire & Rubber
Serial Nos. 85219191 and 85219203

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Co. v. Dayco Corp., 201 USPQ 485 (TTAB 1978) (“Fast-Finder” with hyphen is
substantially identical to “Fastfinder” without a hyphen). The average customer
retains a general rather than specific impression of marks seen in the marketplace.
Customers might well fail to notice this minor distinction between the marks; even
if they were to notice it, they are not likely to view it as indicating separate sources
for the goods. See Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ
335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975).
Applicant argues that “Even marks that are identical in sound and/or
appearance may create sufficiently different commercial impressions when applied
to the respective parties’ goods…,” citing In re Sears, Roebuck & Co., 2 USPQ2d
1312 (TTAB 1987).4 The case before us is unlike Sears, where the marks were
found to have different suggestive meanings when viewed in the context of the
parties’ different types of goods (brassieres versus sportswear). Applicant does not
explain what aspects of the goods and services at issue in the present case would
cause the two marks to project different commercial impressions. Overall, we find
that the marks convey the same impression. This factor of the similarity of the
marks accordingly weighs heavily in favor of finding a likelihood of confusion.
B. Applicant’s stylized mark.
Applicant’s mark set forth in Serial No. 85219203 consists of the designation
ONEPIECE, shown in large, stylized letters, with the wording JUMP IN appearing

4 Applicant’s brief at 3.
Serial Nos. 85219191 and 85219203

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below it in much smaller letters. In comparing the marks, 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 a
consideration of the marks in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this case, we consider the wording
ONEPIECE to be the dominant portion of applicant’s mark, inasmuch as it is
presented in lettering that is substantially bolder than, and approximately twice as
tall as, the lettering of the words JUMP IN. The position of the designation JUMP
IN, to the lower right-hand corner of the mark, also shows it to be subordinate.
As noted above in our discussion of applicant’s standard character mark,
applicant’s designation ONEPIECE has the same sound and meaning as the
registered mark. Moreover, we note that the capitalization of the letters O and P in
applicant’s stylized mark promotes the perception of ONE and PIECE as two words,
thereby reinforcing the similarity with the two-word cited mark.
The addition of the wording JUMP IN is not sufficient to distinguish the
marks. As the dominant part of applicant’s mark is nearly identical to registrant’s
entire mark, consumers would view the additional tagline JUMP IN as a variation
of registrant’s mark.5 See Saks & Co. v. TFM Indus. Inc., 5 USPQ2d 1762, 1764
(TTAB 1987); In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986).

5 In this connection, applicant’s attempts to register both ONEPIECE in standard
characters and ONEPIECE JUMP IN in the design form depicted above shows that a
company may adopt marks that are variations of each other to identify a single source for
its goods and services.
Serial Nos. 85219191 and 85219203

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The stylized form of the lettering in applicant’s mark is also not sufficient to
distinguish the marks. Because the cited registered mark is in standard character
form, it is not limited to any particular font, size, style, color, or other graphic
presentation. In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir.
2010). In other words, registrant has the right to depict its mark in the same
lettering style as applicant’s mark.
We therefore find applicant’s stylized mark similar to the cited registered
mark. This du Pont factor weighs in favor of a finding of likelihood of confusion.
We turn now to consider the similarities and differences between the goods and
services of applicant and registrant.
C. The goods and services.
The two applications at issue cover the same goods and services. The goods
are, briefly, items of apparel, such as sweatshirts, footwear, and headgear; the
services are retail and wholesale stores in the field of “clothing and accessories.”
The relevant goods of the cited registrant are “t-shirts.”
Applicant has submitted evidence in an attempt to show that registrant’s
goods are limited to “promotional items” related to a Japanese manga series, and
that such goods “are targeted to a narrow consumer base – fans of the Japanese
comic series – and they travel in a narrow specialized channel of trade.”6 However,
we may not consider such extrinsic evidence for the purpose of limiting the
registrant’s goods, customers, or channels of trade; rather we must look to the

6 Applicant’s request for reconsideration filed April 26, 2012, and evidence attached thereto.
Serial Nos. 85219191 and 85219203

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identification of goods set forth in the registration itself for the purpose of
determining the scope of the registrant’s goods. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA
1958). See also Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A.,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (the question of likelihood of
confusion must be determined based on an analysis of the mark as applied to the
goods and/or services recited in applicant’s application vis-à-vis the goods and/or
services recited in an opposer’s registration, rather than what the evidence shows
the goods and/or services to be). The goods identified in the registration are
described only as “t-shirts”; we must presume that the registrant’s identification of
goods “encompasses… all the goods of the nature and type described therein,” that
they “are offered in all channels of trade which would be normal therefor, and that
they would be purchased by all potential buyers thereof.” In re Jump Designs, 80
USPQ2d 1370, 1374 (TTAB 2006). While it is possible that the t-shirts of registrant
are actually promotional t-shirts intended to indicate a connection with registrant’s
manga products, the registration at issue contains no such limitation.
For the purpose of demonstrating that applicant’s goods are related to the
goods identified in the cited registration, the examining attorney has made of record
at least 30 use-based U.S. trademark registrations that cover both t-shirts and
goods listed in the applications at issue.7 Among these, we note the following

7 See evidence submitted with the examining attorney’s final Office action of October 27,
2011.
Serial Nos. 85219191 and 85219203

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registrations, each of which covers t-shirts as well as jackets, sweatshirts,
sweatpants, sweatsuits, hats, and footwear:8
Reg. No. Reg. No.
2419780 2536986
2696031 3006675
3166511 3259133
3553372 3738414
3744550 3871379
These registrations have probative value to the extent that they suggest that the
listed goods and services are of types that may emanate from the same source. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786; In re Mucky Duck Mustard
Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
The examining attorney has also made of record evidence, collected from the
websites of online stores, demonstrating that t-shirts and goods of the types listed
in applicant’s applications may be found in some of the same trade channels.9 This
evidence shows, for example, that t-shirts and sweatshirts are offered by the J.
Crew online store; that t-shirts, sweatshirts, and caps are offered by the East West
Worldwide online store and the Orlando Magic online store; and that t-shirts,

8 The examining attorney need not adduce evidence relating to every item listed in
applicant’s identification of goods. In the context of likelihood of confusion, it is sufficient if
likelihood of confusion is found with respect to use of the mark on any item that comes
within the description of goods in the application or registration. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple
Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
9 Evidence submitted with the examining attorney’s final Office action of October 27, 2011.
Serial Nos. 85219191 and 85219203

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sweatshirts, caps and jackets are offered by the Football Fanatics online store.
Considering the commonplace nature of the goods at issue, the evidence presented
by the examining attorney is sufficient to confirm that t-shirts are likely to be found
in the same trade channels as such other clothing items as applicant’s sweatshirts,
jackets, and caps.
To demonstrate that applicant’s services are related to the goods identified in
the cited registration, the examining attorney has made of record several use-based
U.S. trademark registrations that cover both t-shirts and retail and wholesale
clothing store services.10 Among these, we note the following:
Reg. No. Reg. No.
2869328 3016139
3411758 3446799
3719093 3848500
3848501
We also note Reg. Nos. 3535336 and 3682339, which cover t-shirts and online retail
and wholesale clothing stores.
It has often been recognized that likelihood of confusion may arise where
confusingly similar marks are used on goods, on the one hand, and in connection
with stores that offer such goods, on the other. See In re Wet Seal, Inc. v. FD
Management, Inc., 82 USPQ2d 1629, 1640 (TTAB 2006); J. Thomas McCarthy,
Trademarks and Unfair Competition (4th ed.) § 24:25. As our principal reviewing

10 Id.
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court has noted, “trademarks for goods find their principal use in connection with
selling the goods” and accordingly marks for goods and marks for stores that sell
such goods will have their impact on the purchasing public in the same
marketplace. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988). Accordingly, we find that “retail store services and wholesale store
services in the field of clothing and accessories” must be considered related to t-
shirts.
Finally, applicant argues that “The cited mark ONE PIECE is not the type of
strong mark which is entitled to a broad range of protection sweeping across varied
types of goods.”11 However, applicant has not explained why the registered mark
should be deemed weak in source-indicating power for the goods identified in the
registration (nor, for that matter, for the goods and services identified in the
applications). Nor has applicant submitted any evidence on this point. On the
present record we see no reason to reduce the scope of protection afforded to the
registered mark.
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s marks, as
applied to applicant’s goods and services, so closely resemble the registered mark
ONE PIECE for t-shirts as to be likely to cause confusion, mistake or deception as
to the source of applicant’s goods and services.

11 Applicant’s brief at 2.
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Decision: The refusal to register is affirmed with respect to application
Serial No. 85219203.
With respect to application Serial No. 85219191, the refusal to register as to
International Classes 25 and 35 is affirmed, and registration is refused as to those
classes; after the period for appeal has passed, the application will proceed to
publication for opposition in International Classes 3 and 9.