Pali Hawaii LLC

Trademark Trial and Appeal Board

Jul 19, 2018

No. 87227433 (T.T.A.B. Jul. 19, 2018)

This Opinion is Not a
Precedent of the TTAB

Hearing: June 12, 2018 Mailed: July 19, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Pali Hawaii LLC
_____
Serial No. 87227433
_____
Erik M. Pelton of Erik M. Pelton & Associates PLLC
for Pali Hawaii LLC.

Andrea B. Cornwell, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____
Before Kuhlke, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Pali Hawaii LLC, seeks registration on the Principal Register of the
mark UFLEX, in standard characters, identifying “footwear, namely, sandals” in
International Class 25.1

1 Application Serial No. 87227433 was filed November 5, 2016, alleging March 3, 1983 as a
date of first use of the mark anywhere and in commerce under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a).
Serial No. 87227433
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The Examining Attorney has finally refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the
following registered mark issued on the Principal Register: U-FLEX in standard
characters, identifying “baseball caps and hats, caps, hatbands, hats, headwear” in
International Class 25.2
After the final Office Action, Applicant appealed and requested reconsideration.
The Examining Attorney denied the request, and this appeal proceeded and is fully
briefed. In addition, Applicant and the Examining Attorney presented arguments at
an oral hearing before this panel. We affirm the refusal to register for the reasons set
out below.
I. 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 or services. See In re Chatam Int’l Inc.,
380 F.2d 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

2 Registration No. 4401385 issued September 10, 2013.
Serial No. 87227433
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characteristics of the goods [and services] and differences in the marks.”). We have
considered each relevant du Pont factor for which there is evidence or argument, and
have treated any other factors as neutral. See M2 Software, Inc. v. M2 Commc’ns,
Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); 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 du Pont factor depending
on the evidence presented. Citigroup Inc. v. Capital City Bank Group 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) (factors “may play more or less weighty roles in
any particular determination”).
A. Strength of the Cited Mark
We begin by evaluating the strength of the cited mark and the scope of protection
to which it is entitled. The fifth du Pont 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).”).
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Applicant argues that “the term “FLEX” is weak in relation to the cited
registration for headwear. In relation to the registered goods, the term “flex” clearly
indicates that the hats are bendable and flexible.”3 In support of this argument,
Applicant submitted with its November 16, 2017 Request for Reconsideration
definitions of “flex,” including the following: – “to bend especially repeatedly.”4 There
is no additional evidence in the record regarding the significance of the term “flex” in
relation to the various headwear items identified in the cited registration. Concerning
conceptual strength, we find on this record that U-FLEX is only somewhat suggestive
of the flexible nature of “baseball caps and hats, caps, hatbands, hats, headwear.”
As for marketplace strength, there is no evidence regarding the mark’s
commercial strength, as is typical with ex parte appeals in which the owner of the
cited registration is not a party. Also, Applicant submitted no evidence that third
parties are using similar U-FLEX or FLEX formative marks in connection with the
goods at issue. Further, there is no evidence of any third-party registration for a
similar mark in connection with Registrant’s goods. Cf. Juice Generation, Inc. v. GS
Enterprises 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).
Applicant argues:
The apparel industry (emphasis in original) is extremely crowded, with
a myriad of businesses and trademarks. Apparel brands commonly

3 9 TTABVUE 11-12.
4 At .pdf 14-16. Page references to the application record refer to the .pdf version of the
USPTO’s Trademark Status & Document Retrieval (TSDR) system.
Serial No. 87227433
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coexist with very similar or even identical names, and consumers are
conditioned to distinguish between footwear and headwear products
with identical or virtually identical names. Here, the regular coexistence
of similar marks for these goods underscores the differences in the
commercial impressions conveyed by each mark.

Applicant provides herein evidence of third party registrations of
numerous headwear and footwear brands with identical or virtually
identical names and different owners. The evidence of third parties in
the market is indicative of both the crowded nature of Class 25 and the
way that consumers interact with headwear and footwear brands. The
third party registrations are further evidence of the crowded nature of
Class 25, and also of the USPTO’s routine acceptance of trademarks
containing similar or identical elements for headwear and footwear.5

In support of this contention, Applicant introduced into the record with its November
16, 2017 Request for Reconsideration copies of pairs of registrations for marks that
are identical or similar to each other, but completely dissimilar from the UFLEX and
U-FLEX marks at issue, for goods including headwear and footwear.6 However, as
noted above, the sixth du Pont factor concerns the number and nature of similar
marks in use for similar goods or services. du Pont, 177 USPQ at 567. Applicant’s
evidence of coexisting registrations that are wholly different from the marks at issue
is not probative of the marketplace or commercial strength of Registrant’s U-FLEX
mark.
Considering the record as a whole, we find that the registered mark is only
somewhat suggestive and there is no evidence of third-party use or registration of
confusingly similar marks for similar or related goods. We therefore find that the
registered mark is not weak and entitled only to a narrow scope of protection, but

5 9 TTABVUE 12.
6 At .pdf 18-81.
Serial No. 87227433
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rather we accord the U-FLEX mark 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).
B. Similarity of the Marks
We next address the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks 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 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)
(quotation 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 1467, 1468 (TTAB 1988).
The sole difference between Applicant’s UFLEX mark and the otherwise identical
registered U-FLEX mark is the presence of a hyphen between the first two letters of
the mark in the cited registration. The hyphen does not affect the pronunciation,
connotation, or overall commercial impression of the mark, and is therefore not a
Serial No. 87227433
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basis on which to distinguish the marks. See Goodyear Tire & Rubber Co. v. Dayco
Corp., 201 USPQ 485, 488 n.4 (TTAB 1978) (FAST-FINDER with hyphen is in legal
contemplation substantially identical to FASTFINDER without hyphen); see also
Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040, 2042
(TTAB 1989) (marks PRO-PRINT and PROPRINT identical but for hyphen and
confusion likely). Cf. In re Vanilla Gorilla, L.P., 80 USPQ2d 1637 (TTAB 2006)
(presence of hyphen does not change descriptive nature of the term). Further, the
presence or absence of a space between virtually the same words, UFLEX and U-
FLEX, also does not distinguish the marks. Stockpot, Inc. v. Stock Pot Restaurant,
Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir.
1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK
POT] are confusingly similar. The word marks are phonetically identical and visually
almost identical”); In re Best Western Family Steak House, Inc., 222 USPQ 827, 827
(TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF
MASTER] are practically identical”). In addition, there is no evidence to suggest that
UFLEX or U-FLEX has a different meaning or connotation as applied to the
respective goods at issue.
Applicant acknowledges that its “UFLEX mark is visually similar, but not
identical, to Registrant’s cited U-FLEX mark.”7 Far from being only “visually
similar,” the marks differ solely due to the presence of a hyphen, and are otherwise

7 9 TTABVUE 9.
Serial No. 87227433
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identical in every respect in appearance, sound, connotation and overall commercial
impression.
We find that the du Pont factors of the similarity of the marks weighs in favor of
likelihood of confusion.
C. Similarity of the Goods, Channels of Trade and Classes of Consumers
With regard to the goods, channels of trade and classes of consumers, we must
make our determinations based on the goods as they are identified in the application
and cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002);
Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). A proper comparison of the goods considers whether “the
consuming public may perceive [the respective goods or services of the parties] as
related enough to cause confusion about the source or origin of the goods and
services.” Hewlett Packard, 62 USPQ2d at 1004. Therefore, to support a finding of
likelihood of confusion, it is not necessary that the goods be identical or even
competitive. It is sufficient that the goods are related in some manner, or that the
circumstances surrounding their marketing are such that they would be encountered
by the same persons in situations that would give rise, because of the marks, to a
mistaken belief that they originate from the same source or that there is an
Serial No. 87227433
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association or connection between the sources of the goods. In re Thor Tech Inc., 90
USPQ2d 1634, 1635 (TTAB 2009).
Again, Applicant’s goods are “footwear, namely, sandals” and the goods in the
cited registration are “baseball caps and hats, caps, hatbands, hats, headwear.” In
support of the refusal of registration, the Examining Attorney introduced with her
May 16, 2017 Final Office Action8 and December 4, 2017 Denial of Applicant’s
Request for Reconsideration9 printouts from the following third-party internet
websites offering under the same mark goods identified in the subject application and
cited registration.
ugg.com provides sunhats, straw hats and sandals;

merrell.com provides sandals, hats, winter hats and caps;

ninewest.com provides sandals and floppy hats;

ghbass.com provides baseball caps, trapper hats, winter hats and
sandals;

rainbowsandals.com provides trucker hats and sandals;

roxy.com provides trucker hats, fedoras, panama hats and sandals;

keenfootwear.com provides hats and sandals;

columbia.com provides winter hats and sandals; and

nordstrom.com provides winter hats, fedoras, sunhats, caps, baseball
caps and sandals.

8 At .pdf 10-66.
9 At .pdf 58-86.
Serial No. 87227433
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This evidence demonstrates that at least nine third parties offer both Applicant’s
goods and the goods in the cited registration under the same mark.
The Examining Attorney also introduced into the record with her May 16, 2017
Final Office Action10 copies of nine use-based, third-party registrations for marks
identifying, inter alia, goods identified in the involved application and cited
registration. The following examples are illustrative:
Registration No. 5179690 for the mark PENELOPE PIPER (in standard
characters) identifying, among other clothing items, “hats, sandals;”

Registration No. 5151210 for the mark ESCAPE EVERYDAY (in standard
characters) for, among other clothing items, “hats, headwear, sandals;” and

Registration No. 5171203 for the mark MTOTM in stylized form for, among
other clothing items, “caps, hats, sandals.”

As a general proposition, although use-based, third-party registrations alone are not
evidence that the marks shown therein are in use or that the public is familiar with
them, they nonetheless may have some probative value to the extent they may serve
to suggest that the goods are of a kind that emanate from a single source. See In re
Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); Mucky Duck Mustard Co., 6
USPQ2d at 1470 n.6. In this case, the totality of the website and third-party
registration evidence demonstrates that consumers would readily expect that these
goods could emanate from the same sources.
Applicant argues:

10 At .pdf 67-144.
Serial No. 87227433
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In situations such as this, in which the relatedness of goods and services
is not clearly evident, the Examining Attorney must show “something
more” than the mere fact that the goods and services are “used together.”
In re St. Helena Hosp., 774 F.3d 747 (Fed. Cir. 2014) (finding that
substantial evidence did not support relatedness of hospital-based
residential weight and lifestyle program and printed materials dealing
with physical activity and fitness used on nearly identical marks). The
Examining Attorney has not met that burden here.11

We disagree. Unlike the circumstances in St. Helena Hosp. in which the Federal
Circuit found that the relatedness of hospital-based weight and lifestyle services and
printed materials on the subject of physical activity and fitness was not clearly
evident, the relatedness of sandals and headwear is much more apparent.
Conceptually, both are items that may be purchased and worn together.
Furthermore, the Examining Attorney’s evidence shows that these goods are
produced and marketed under the same trademarks by common sources. We find no
support for Applicant’s somewhat speculative argument that the relatedness of these
goods is not readily apparent.
Applicant further argues:
the fields of headwear and footwear are extremely crowded. There are
more than 100,000 live registrations featuring Class 25 and “hat or hats
or caps or headwear” in the listing of goods. [Internal citations omitted.]
There are also more than 60,000 live registrations featuring Class 25
and “shoe or shoes or footwear or sandals” in the listing of goods.12

In support of this contention, Applicant introduced into the record with its November
16, 2017 Request for Reconsideration lists of registrations from the USPTO’s
Trademark Electronic Search System (TESS) displaying application serial numbers,

11 9 TTABVUE 11.
12 9 TTABVUE 15.
Serial No. 87227433
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registration numbers, word mark, and status of the registrations as live.13 Even with
the limited information contained in this list of registrations, it is clear that none of
the registrations lists a mark that is similar to the marks at issue herein. The
question, moreover, is not whether some, or even many, entities provide the goods
identified in the cited registration. Rather, the question is whether there are entities
that provide and market sandals and various items of headwear under the same
marks, and the evidence submitted by the Examining Attorney is sufficient to show
that this is not an aberration done by only one or two companies. As the Board said
in connection with a similar argument based on third-party registrations, i.e., that
there were many third-party registrations for the goods of the applicant that did not
include the goods identified in the cited registration, and vice versa:
There is no requirement for goods to be found related that all or even a
majority of the sources of one product must also be sources of the other
product. Therefore, evidence showing only that the source of one product
may not be the source of another product does not aid applicant in its
attempt to rebut the evidence of the examining attorney.

In re G.B.I. Tile and Stone Inc., 92 USPQ2d 1366, 1370 (TTAB 2009).
Applicant argues in addition:
the hats provided in the evidence by the Examining Attorney generally
display a brand or mark to indicate a secondary source and not the
source of the hat. Hats are commonly used as marketing and
promotional items for all types of companies, including apparel and
footwear brands. Evidence regarding uses from Nike, Columbia, and DC
Shoes are not typical industry businesses; they are companies with large
product portfolios covering dozens of goods or more.14

13 At .pdf 83-101.
14 Id. at 15.
Serial No. 87227433
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To the contrary, the vast majority of the website evidence submitted by the
Examining Attorney shows caps, hats and various headwear that do not display the
mark as a secondary source, but rather as a mark displaying the source of those
goods. Moreover, there is no evidence that all of the third-party websites relied upon
by the Examining Attorney belong to large companies with extensive catalogs of
different types of goods.
Applicant also argues:
Applicant’s and Registrant’s goods occupy and appeal to distinctly
different overall markets, and thus registration of Applicant’s UFLEX
mark is not likely to cause confusion among consumers. Footwear and
headwear are both non-durable consumer goods that may be worn on
the body and are listed in International Class 25, however they operate
in different consumer markets, namely the footwear market and the
clothing or apparel market, and operate within different microsegments
of specific segments within those overall markets. While headwear is
often lumped into the larger market of clothing or apparel, footwear is a
market that is distinguished separately from the clothing industry.15

In support of this position, Applicant submitted with its April 19, 2017 Response to
the Examining Attorney’s first Office Action a Wikipedia definition of “durable good”
and a printout from an internet-based statistical study of market forecasts for
footwear, clothing and headwear.16 However, there is no evidence that consumers of
Applicant’s sandals or Registrant’s various items of headwear are familiar or
concerned with which microsegments of the overall market segments these goods may
be encountered. Indeed, there is no evidence of the extent, if any, to which these
market forecasts are read by consumers or even available to them. Evidence of record

15 9 TTABVUE 10-11.
16 At .pdf 17-38.
Serial No. 87227433
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discussed above demonstrates that both Applicant’s goods and Registrant’s goods
may be encountered in at least one common trade channel, i.e., the websites of retail
stores that offer both footwear and headwear under the same marks, by the same
classes of consumers. In addition, the identification of goods in the cited registration
and involved application do not recite any limitations as to the channels of trade in
which the goods are or will be offered. In the absence of trade channel limitations on
the goods under the registered and applied-for mark, we must presume that these
goods are offered in all customary trade channels. See Citigroup Inc. v. Capital City
Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump
Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). There is no evidence that the asserted microsegments of markets in
which the goods are encountered somehow limits these goods to different channels of
trade. “We have no authority to read any restrictions or limitations into the
registrant’s description of goods.” Thor Tech, 90 USPQ2d at 1638. Nor may an
applicant restrict the scope of the goods covered in a cited registration by argument
or extrinsic evidence. Midwest Gaming & Entm’t, 106 USPQ2d at 1165; In re La
Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re Bercut-Vandervoort & Co.,
229 USPQ 763, 764 (TTAB 1986). Further, as noted above, the Examining Attorney
has introduced evidence that both Applicant’s goods and Registrant’s goods are
offered for sale on the same webpages. This evidence supports a finding that these
goods are offered in the same channels of trade.
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We find that the du Pont factors of the relatedness of the goods, channels of trade
and consumers weigh in favor of likelihood of confusion.
II. Conclusion
We have carefully considered all of the evidence of record, including any evidence
not specifically discussed herein. The marks are substantially identical. Evidence of
record establishes that the goods are related, and may be marketed and sold by third
parties under the same marks in at least one common channel of trade. Applicant’s
arguments regarding the asserted weakness of the mark in the cited registration and
distinctions between the goods and their trade channels that are not reflected in the
goods as identified are insufficient to overcome these similarities.
Decision: The refusal to register Applicant’s mark is affirmed.