Peace Love World, LLC

Trademark Trial and Appeal Board

Jul 22, 2015

No. 85906882 (T.T.A.B. Jul. 22, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Peace Love World, LLC
_____

Serial No. 85906882
_____

Mark Terry of the Office of Mark Terry,
for Peace Love World, LLC.

Lyndsey Kuykendall, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Bucher, Mermelstein and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Peace Love World, LLC (“Applicant”) seeks registration of the mark LOVE IS
MY RELIGION, in standard characters, for “Hooded sweat shirts; Hooded
sweatshirts; Long-sleeved shirts; Open-necked shirts; Shirts; Shirts and short-
sleeved shirts; T-shirts.”1 The Examining Attorney refused registration under
Section 2(d) of the Act on the ground that Applicant’s mark so resembles the
registered mark LOVE IS RELIGION, in standard characters, for “Beachwear;

1 Application Serial No. 85906882, filed April 17, 2013, alleging first use dates of April 19,
2012.
Serial No. 85906882
2

Bras; Caps; Flip flops; Gloves; Hats; Headbands; Hooded sweat shirts; Jackets; Leg
warmers; Neckties; Scarves; Shirts; Shorts; Socks; Sports bra; Sweat shirts; T-
shirts; Tank tops; Underwear; Wristbands,” that use of Applicant’s mark in
connection with Applicant’s goods is likely to cause confusion or mistake or to
deceive.2 After the refusal became final, Applicant appealed and Applicant and the
Examining Attorney filed briefs.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all 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); see also In re Majestic Distilling Company, Inc., 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 similarities
between 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.”).
Turning first to the goods and channels of trade, they are in-part identical, as
Applicant and Registrant both offer “hooded sweat shirts,” “shirts” and “t-shirts.”
Moreover, neither identification of goods includes any limitations with respect to
channels of trade. Where, as here, Applicant’s and Registrant’s goods are in-part

2 Registration No. 3958576, issued May 10, 2011.
Serial No. 85906882
3

legally identical, we must presume that the channels of trade and classes of
purchasers for those goods are also the same. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence
regarding channels of trade and classes of consumers, the Board was entitled to rely
on this legal presumption in determining likelihood of confusion); 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); American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
The legal identity (in part) of Applicant’s and Registrant’s goods and their
overlapping channels of trade and classes of purchasers not only weigh heavily in
favor of a finding of likelihood of confusion, but also reduce the degree of similarity
between the marks necessary to find a likelihood of confusion. In re Viterra, 101
USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260
(Fed. Cir. 2010); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB
2010).
Turning to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports 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). That is, we may
not dissect the marks into their various components. In re Nat’l Data Corp., 753
Serial No. 85906882
4

F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v.
Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981).
Here, the marks are quite similar in how they look and sound, differing only by
Applicant’s addition of the word “my” to Registrant’s mark. When applicants add
terms to previously-registered marks, confusion is often found to be likely. See e.g.
Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ
105, 106 (CCPA 1975) (confusion found likely between BENGAL and BENGAL
LANCER & Design for related goods); International Paper Co. v. Valley Paper Co.,
468 F.2d 937, 175 USPQ 704 (CCPA 1972) (DATA for “writing, typewriter and
printing paper” likely to be confused with DATA-SPEED for “paper sold in bulk
rolls or bulk reams for conversion only into business forms”); Hunter Indus., Inc. v.
Toro Co., 110 USPQ2d 1651, 1660-61 (TTAB 2014) (PRECISION likely to be
confused with PRECISION DISTRIBUTION CONTROL); In re Fiesta Palms LLC,
85 USPQ2d 1360 (TTAB 2007) (CLUB PALMS MVP for casino services likely to be
confused with MVP for casino services offered to preferred customers identified by
special identification cards); In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984) (“we
are firmly of the opinion that purchasers who encounter applicant’s ‘LITTLE
GOLIATH’ stapler kits and registrant’s ‘GOLIATH’ large diameter woodcased
pencils are likely to believe … that both products emanate from or are in some way
associated with the same source”); Johnson Publishing Co. v. International
Development Ltd., 221 USPQ 155 (TTAB 1982) (EBONY for cosmetics likely to be
confused with EBONY DRUM for hairdressing and conditioner).
Serial No. 85906882
5

Applicant’s argument that “there is a difference of at least one word and at least
two (2) letters between the cited mark and Applicant’s mark” essentially proves that
the marks look and sound similar – the two letter word MY appears in the middle of
Applicant’s four-word sixteen-letter mark and therefore, as the Examining Attorney
pointed out in the February 27, 2014 Office Action, “it is likely that MY will get
overlooked.” Indeed consumers are likely to focus on the identical first part of the
marks (LOVE IS). See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered”); see also Palm Bay
Imports, Inc., 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 Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering
the marks, consumers will first notice the identical lead word). Moreover, the last
word in Applicant’s and Registrant’s marks is also identical.
Applicant’s argument that the marks convey different meanings is not well-
taken. In both marks, “love” is depicted as “religion,” either as a general matter
(LOVE IS RELIGION), or for a particular individual (LOVE IS MY RELIGION).
According to Applicant itself, its mark conveys that “love … is the personal religion
of the speaker” while Registrant’s mark “conveys to a consumer that ‘love’ is the
only religion in the world and that no other religions can exist.” Applicant’s Appeal
Brief at 3. But in either formulation, love is the “speaker’s” religion, whether by
Serial No. 85906882
6

birth, choice or because there are no other religions. To the extent there are
differences in connotation between the marks, they are not enough to prevent
consumer confusion where the marks look and sound so similar, and are used for
identical goods which are presumed to travel in the same channels of trade.
Similarly, while Applicant has introduced a number of third-party registrations
for marks comprising “LOVE IS” followed by an additional word(s), that is not
enough to prevent consumer confusion in this case because the marks are otherwise
so similar and used for identical goods. Cf. Juice Generation, Inc. v. GS Enterprises
LLC, ___ F.3d ___, ___ USPQ2d ___, Case No. 2014-1853 (Fed. Cir. July 20, 2015)
(where shared components of marks at issue were the subject of a number of third-
party registrations and the marks at issue had additional design and literal
differences (not present in this case), finding of confusing similarity vacated and
remanded).
Applicant argues that Registrant’s mark is weak and entitled to only a narrow
scope of protection as a result of third-party usage and registration of similar
marks. We disagree. As for the third-party registrations upon which Applicant
relies, they are not by themselves evidence that the marks are in use on a
commercial scale or that the public has become familiar with them. See Smith Bros.
Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the
purchasing public is not aware of registrations reposing in the U.S. Patent and
Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La
Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). And while Applicant has
Serial No. 85906882
7

established through website printouts that a number of the “LOVE IS” marks in the
third-party registrations are in use, and that this component of Registrant’s mark
may not be entitled to a broad scope of protection as explained in Juice Generation,
none of the third-party marks are even close to as similar to Registrant’s mark as is
Applicant’s. Indeed, none of the third-party marks upon which Applicant relies
includes the word “religion,” or any word which looks or sounds like or conveys the
same meaning as religion.3 Furthermore, as this is an ex parte proceeding, and
“inasmuch as the cited mark is registered on the Principal Register, we must
assume that it is at least suggestive.” In re Fiesta Palms, 85 USPQ2d at 1363 (citing
In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997)).
Conclusion
In short, while Registrant’s mark LOVE IS RELIGION may or may not be
entitled to protection against the third-party marks Applicant cites, it is entitled to
protection against Applicant’s highly similar mark LOVE IS MY RELIGION, which
also includes the word “religion” and is used for in-part identical goods which travel
in the same channels of trade.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.

3 The third-party marks which Applicant has established are in use include LOVE IS
ALWAYS LOVE, LOVE IS A VERB, LOVE IS LEGAL, LOVE IS THE KEY, LOVE IS
BLONDE and LOVE IS THE ANSWER.