Pinkette Clothing, Inc.v.Lawrence Mallard

Trademark Trial and Appeal Board

Aug 30, 2018

No. 91223575 (T.T.A.B. Aug. 30, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: August 30, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Pinkette Clothing, Inc.
v.
Lawrence Mallard

_____

Opposition No. 91223575
_____

Amanda V. Dwight, Dwight Law Group for Pinkette Clothing, Inc.

Lawrence Mallard, Pro Se.

_____

Before Bergsman, Wolfson and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Lawrence Mallard (“Applicant”) filed an application to register the mark shown
below for the following:1 “Belts; Bottoms; Bottoms for clothing, namely, men, women,
kids; Capri pants; Cargo pants; Clothing, namely, crops; Crop pants; Denims; Dress

1 Application Serial No. 86310344 was filed on June 16, 2014 under Section 1(a) alleging a
date of first use of June 10, 2014 and a date of first use in commerce of June 15, 2014.
“Clothing & Co” is disclaimed. The description of the mark states: “The mark consists of 3
Slanted lines followed by the word ‘Lash’ and the words ‘Clothing & Co.’ directly under the
word ‘Lash.’” Color is not claimed as a feature of the mark.
Opposition No. 91223575
- 2 -
pants; Footwear for men and women; Hats; Jackets; Jackets and socks; Jeans;
Jogging pants; Leather pants; Men’s and women’s jackets, coats, trousers, vests;
Pants; Socks; Sports caps and hats; T-shirts; Tops; Tops for clothing, namely, men,
women, kids; Women’s clothing, namely, shirts, dresses, skirts, blouses” in
International Class 25.

Pinkette Clothing, Inc. (“Opposer”) opposes registration of Applicant’s mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant's
mark, when used in connection with Applicant’s goods, so resembles Opposer's
previously used and registered mark LUSH (in standard characters) for “clothing,
namely, tops, bottoms and dresses” in International Class 25 as to be likely to cause
confusion.2
Applicant filed an answer denying the salient allegations in the notice of
opposition.
Applicant’s involved application also was the subject of Opposition No. 91223648,
litigated by an unrelated third party. In that proceeding, judgment was entered
against Applicant for discovery sanctions, and as a result, Serial No. 86310344
presently stands abandoned. Although the involved application is abandoned,

2 Registration No. 3816441 issued July 13, 2010; Section 8 accepted.
Opposition No. 91223575
- 3 -
Oppposer informed the Board that it wishes to obtain judgment in this proceeding.
17 TTABVUE. Only Opposer has filed a trial brief.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved application. In addition, Opposer
introduced a notice of reliance upon its pleaded registration, its First Requests for
Admissions and the declaration of counsel, Kelly W. Cunningham,3 notices of non-
appearance for the deposition of Applicant, and the testimony deposition of Eduardo
Kim, President of Opposer.
II. Standing
Opposer has properly made its pleaded registration of record by submitting a
current copy from the USPTO electronic database showing the current status and
title of the registration. 15 TTABVUE 9. Trademark Rule 2.122(d)(2), 37 C.F.R. §
2.122(d)(2). In view thereof, we find Opposer has established its personal interest in
this proceeding and proven its standing. See Empressa Cubana Del Tabaco v. Gen.
Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton
Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).

3 According to counsel, Applicant did not respond to Opposer’s First Requests for Admissions.
Under Fed. R. Civ. P. 36(a), a requested admission is deemed admitted unless a written
answer or objection is provided to the requesting party within thirty days after service of the
request.
Opposition No. 91223575
- 4 -
III. Priority
Because Opposer has made its pleaded registration of record and shown it is valid
and subsisting, priority is not an issue in this case as to the LUSH mark for the goods
recited in the registration. 15 TTABVUE 9. King Candy, Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
IV. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all of the 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 goods and the similarities between
the marks. 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.”). Opposer must establish that there is a likelihood of
confusion by a preponderance of the evidence.
A. The Goods and Trade Channels
We commence our analysis with the second and third du Pont factors – a
comparison of the goods and established, likely-to-continue channels of trade.
Applicant’s and Opposer’s respective goods must be compared as they are identified
in the application and the pleaded registration. See Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014);
Opposition No. 91223575
- 5 -
Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990).
Opposer’s goods are “clothing, namely, tops, bottoms and dresses,” while
Applicant’s goods are “Belts; Bottoms; Bottoms for clothing, namely, men, women,
kids; Capri pants; Cargo pants; Clothing, namely, crops; Crop pants; Denims; Dress
pants; Footwear for men and women; Hats; Jackets; Jackets and socks; Jeans;
Jogging pants; Leather pants; Men’s and women’s jackets, coats, trousers, vests;
Pants; Socks; Sports caps and hats; T-shirts; Tops; Tops for clothing, namely, men,
women, kids; Women’s clothing, namely, shirts, dresses, skirts, blouses.”
Applicant’s “bottoms,” “bottoms for clothing,” “tops,” “tops for clothing,” and
“dresses” are identical to Opposer’s “clothing, namely, tops, bottoms and dresses.”
Thus, the goods are in part identical. Moreover, in analyzing the similarity of the
goods, it is sufficient for a refusal based on likelihood of confusion that relatedness of
the goods is established for any single item encompassed by the description of goods
in the application. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981).
As to the channels of trade, given the identity of the goods in part, and the lack of
restrictions in the application and registration, we presume that these goods travel
through the same channels of trade (e.g., clothing stores) and are 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) (even though there was no evidence
regarding channels of trade and classes of consumers, the Board was entitled to rely
Opposition No. 91223575
- 6 -
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). Further, Opposer’s
President Kim testified that Opposer sells “through a number of large retail stores
and through hundreds of smaller boutiques across the country” and that its goods
have been offered on the internet through the Nordstrom department store website.
15 TTABVUE 49. Applicant is deemed to have admitted, due to his failure to respond
to Opposer’s requests for admissions, that his goods may be offered and sold in brick
and mortar stores and on the internet. 15 TTABVUE 22. Accordingly, the parties’
channels of trade overlap.
We find the second and third du Pont factors both weigh in favor of finding a
likelihood of confusion.
B. The Marks
We now direct our attention to the first du Pont likelihood of confusion factor,
which involves an analysis of the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression. See Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “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
Opposition No. 91223575
- 7 -
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)
(citation omitted).
While the marks must be considered in their entireties, including any disclaimed
matter and designs, it is nevertheless appropriate, for rational reasons, to regard
certain features of a mark as being more dominant or otherwise significant, and
therefore to give those features greater weight. Stone Lion Capital Partners, LP v.
Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); In re Nat’l
Data Corp., 753 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) (“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.”). In the case
of marks which consist of words and a design, the words are normally accorded
greater weight because they would be used by purchasers to request the goods. See
In re Viterra, 101 USPQ2d at 1908 (“In the case of a composite mark containing both
words and a design, ‘the verbal portion of the mark is the one most likely to indicate
the origin of the goods to which it is affixed.”’) (quoting CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 200 (Fed. Cir. 1983)); In re Dakin’s Miniatures, Inc., 59 USPQ2d
1593, 1596 (TTAB 2001) (“words are normally accorded greater weight because they
would be used by purchasers to request the goods”). Also, disclaimed or otherwise
descriptive matter is generally viewed as a less dominant or significant feature of a
mark. See In re National Data Corp., 224 USPQ at 751-52. Finally, where, as here,
Opposition No. 91223575
- 8 -
the goods are in-part identical, the degree of similarity between the marks which is
necessary to support a finding of likelihood of confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992).
Applicant’s mark is and Opposer’s mark is LUSH.4
When considered in its entirety, the dominant and distinguishing portion of
Applicant’s mark is LASH because it is most prominently displayed in both size and
position with respect to the other terms in the mark. The disclaimed terms
“CLOTHING & CO.,” have little to any source identifying significance, with “clothing”
being a generic term for the goods, and “Co.” an entity designation. The design
feature, which consists of three slanted lines, also is subordinate to the words.
Applicant’s mark begins with a word similar to
Opposer’s mark LUSH in terms of sound and appearance. Both LASH and LUSH are
one syllable words that are similarly constructed of identical consonants in the
identical order, beginning with the letter L and ending with the consonant

4 Opposer’s mark is in standard characters and is not limited to any particular depiction. The
rights associated with a mark in standard characters reside in the wording and not in any
particular font style, color or size. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181 (TTAB
2018) (“We hold that when we are comparing a standard character mark to a word + design
mark for Section 2(d) purposes, we will consider variations of the depictions of the standard
character mark only with regard to ‘font style, size, or color’ of the ‘words, letters, numbers,
or any combination thereof.’”) (citing Trademark Rule 2.52(a), 37 CFR 2.52(a)).
Opposition No. 91223575
- 9 -
combination “SH,” and differing only by the vowel employed. As to sound, the terms
LASH and LUSH have only a small difference in the vowel sound and would be
pronounced similarly. With respect to meaning, we recognize that the term LUSH
appears to suggest luxuriant and rich whereas Applicant’s mark LASH does not have
this connotation, instead suggesting to bind or fasten. Also, we note that the
additional terms CLOTHING & CO. in Applicant’s mark adds to this difference in
meaning which most likely refers to clothing with bindings or fastenings.
Nonetheless, we find that the similarities in sound and appearance outweigh the
differences in connotation. Further, when Applicant’s mark and Opposer’s mark are
considered in their entireties, the marks engender sufficiently similar overall
commercial impressions. We find that the inclusion of the design element and the
non-source identifying terms CLOTHING & CO. in Applicant’s mark are insufficient
to distinguish the marks. Accordingly, we find the marks more similar than
dissimilar. This du Pont factor favors a finding of likelihood of confusion.
V. Conclusion
We have considered all of the evidence pertaining to the relevant du Pont factors,
as well as the arguments with respect thereto (including any evidence and arguments
not specifically discussed in this opinion). We have focused our discussion on the
above du Pont factors because we have found them to be most relevant. In balancing
the relevant du Pont factors, we conclude that the similarity of the marks, the
similarity of the goods, and the overlapping trade channels favor a likelihood of
confusion.
Opposition No. 91223575
- 10 -

Decision: Opposition No. 91223575 is sustained on the basis of likelihood of
confusion with the mark in Registration No. 3816441, and Applicant’s application
Serial No. 86310344 stands abandoned.