Plumb, LLC

Trademark Trial and Appeal Board

Dec 7, 2018

No. 87654030 (T.T.A.B. Dec. 7, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: December 7, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Plumb, LLC
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Serial No. 87654030

_____

Kerry Eaton of Drinkwater Eaton Law Offices,
for Plumb, LLC.

Jonathon Schlegelmilch, Trademark Examining Attorney, Law Office 108,
Steven R. Berk, Acting Managing Attorney.
_____

Before Taylor, Ritchie, and Heasley,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Plumb, LLC (“Applicant”) seeks registration on the Principal Register of the
standard character mark PLUMB for “blouses; dresses; hats; jackets; pants; shirts;
slacks; leather jackets; sports jackets,” in International Class 25.1

1 Serial No. 87654030, filed on October 20, 2017, 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. § 1(b).
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The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a prior registration of the
mark PLUMB LIFE and design, as shown below, for “hats; pants; shirts,” in
International Class 25:2

The cited registration is registered on the Supplemental Register, and includes the
following description of the mark:
The mark consists of pipe wrench saying “Plumb Life.” The “f” in “life”
is a pipe wrench. [sic]

After the Examining Attorney made the refusal final, Applicant filed a request for
reconsideration and an appeal. When the request for reconsideration was denied, the
appeal was resumed. Both Applicant and the Examining Attorney filed briefs.3 We
affirm the refusal to register.

2 Registration No. 5435013, registered March 27, 2018.
3 Applicant filed several iterations of its brief. The most recent filing, 6 TTABVUE, was
accepted by the Board in an order dated July 17, 2018 as Applicant’s revised brief. We note
that this version is similar to the ones previously submitted by Applicant, and that all of
Applicant’s arguments have been considered in our decision.
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I. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976); see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). “Not all of
the [du Pont] factors are relevant to every case, and only factors of significance to the
particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).
A. The Goods, Trade Channels and Purchasers
We consider first the similarities or dissimilarities between the respective goods
as identified in the application and the cited registration. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014) (goods as identified in involved application and cited registration compared).
Under this second du Pont factor, it is sufficient for a refusal based on likelihood of
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confusion that relatedness is established for any good identified in the application,
which is a single class. 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, 1397 (TTAB 2007). Both the application and the cited registration
identify the identical goods “hats; pants; shirts,” which is the entirety of the listed
goods in the cited registration. Thus, the respective goods are identical-in-part. As to
the remaining goods in the application, we note that the Examining Attorney
submitted evidence of web sites that offer for sale under the same mark not only hats,
pants, and shirts, which are identified in both the application and the cited
registration, but also blouses, dresses, jackets, slacks, leather jackets, and sports
jackets, which are identified in the application. Examples of the web sites include:
ToryBurch.com (dresses, jackets, sports jackets, pants); TomFord.com (jackets,
leather jackets, pants); MarcJacobs.com (shoes, pants, slacks, jackets); and
CalvinKlein.us (dresses, jackets, shirts, pants, slacks, shoes).4
Applicant argues that the goods travel in different trade channels and are directed
to different consumers, and that its goods are custom-made.5 We must analyze the
identifications as written, however, and here they contain no such limitations.
Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods set forth

4 Attached to June 25, 2018 Denial of Request for Reconsideration, at 2-39.
5 7 TTABVUE 5.
Serial No. 87654030
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in the application regardless of what the record may reveal as to the particular nature
of an applicant’s goods, the particular channels of trade or the class of purchasers to
which the sales of goods are directed.”) (citations omitted). When as here, the
respective identifications of goods are identical-in-part, without restrictions as to
nature, type, channels of trade, or classes of purchasers, the identified goods are
presumed to travel in the same channels of trade to the same class of purchasers. In
re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); (“[A]bsent
restrictions in the application and registration, goods and services are presumed to
travel in the same channels of trade to the same class of purchasers.”). Thus, we must
presume the trade channels and classes of purchasers are the same for both
Applicant’s and registrant’s goods.
We find that these factors weigh heavily in favor of finding a likelihood of
confusion.
B. The Marks
We next compare the marks in their entireties for similarities and dissimilarities
in appearance, sound, connotation and commercial impression. Palm Bay Imps., Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. The test
is not whether the marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the source of the goods offered
under the respective marks is likely to result. Coach Servs., Inc. v. Triumph Learning
LLC, 101 USPQ2d at 1721. Under actual marketing conditions, consumers do not
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necessarily have the luxury of making side-by-side comparisons between marks, and
must rely upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corp.,
206 USPQ 255, 259 (TTAB 1980). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. In re Assoc. of the United States Army, 85 USPQ2d 1264, 1268 (TTAB
2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Here,
the average purchaser includes ordinary consumers seeking clothing items.
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, the analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. Vv. 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.”). On the other hand, different features may be
analyzed to determine whether the marks are similar. Joel Gott Wines LLC v.
Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013) (citing Price Candy Co.
v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955)). In fact,
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 Nat’l Data Corp., 224
USPQ at 751. Moreover, where, as in the present case, the marks would appear on
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goods that are identical-in-part, the degree of similarity between the marks that is
necessary to support a finding of likely confusion declines. 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 America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992).
In this case, both marks begin with the term PLUMB, which is the sole term in
Applicant’s mark. Both marks hence have similarities in appearance and sound. In
addition, consumers are generally more inclined to focus on the first word, prefix, or
syllable in any trademark or service mark, which in this case, are identical. See Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at
1692 (Fed. Cir. 2005) (“VEUVE … remains a ‘prominent feature’ as the first word in
the mark and the first word to appear on the label”). While Applicant’s mark is in
standard characters and the mark in the cited registration contains a design element,
we note that marks registered in standard character form are not limited to any
particular font size, style, or color. See Viterra, 101 USPQ2d at 1910, citing Citigroup
v. Capital City Bank Group, 637 F.3d 1344, 98 USPQ2d 1253 (Fed Cir. 2011)
(analyzing on a case by case basis “does not require us to alter the basic analysis when
a standard character mark is compared with a stylized or design mark.”).
As for the design in the mark in the cited registration, we generally give less
weight to the style and design elements of a mark than to the wording, because it is
the wording that would be used by purchasers to request the goods. See Viterra, 101
USPQ2d at 1911. This is especially so where, as here, the design enhances the word
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portion of the mark. That is, a pipe wrench immersed in the wording of the mark
suggests that the type of clothing offered by registrant may be useful for the life or
lifestyle of a plumber. Applicant argues that “Applicant’s mark is certainly not
describing a life related to plumbing.”6 There is, however, no evidence that consumers
will have a different commercial impression of the term “PLUMB” in Applicant’s
mark than of the same term in the mark in the cited registration. In this regard, the
Examining Attorney asks us to take judicial notice of the definition of “plumb,” as
being, in relevant part, “to supply with or install as plumbing” and “to work as a
plumber.”7 We thus find that the marks have very similar commercial impressions,
i.e., that the clothing may be suited for plumbing or for a plumber’s life.
Applicant also argues that the cited registration is weak and entitled to a very
narrow scope of protection because it is registered on the Supplemental Register. We
agree that the level of descriptiveness of a cited mark may influence whether
confusion is likely. In re Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978).
However, even if there is some degree of inherent weakness to the word PLUMB,
even weak marks are entitled to protection against a mark that is substantially
similar in sight, sound, and commercial impression and is used on goods that are
identical-in-part and otherwise related. See In re FabFitFun, Inc., 127 USPQ2d 1670,

6 6 TTABVUE 7.
7 Merriam-webster.com; 8 TTABVUE 19-20. See In re White Jasmine LLC, 106 USPQ2d 1385,
1392 n.23 (TTAB 2013) (Board may take judicial notice of online dictionaries that exist in
printed format or have regular fixed editions).
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1676 (TTAB 2018) (citing China Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 83
USPQ2d 1123, 1125 (Fed. Cir. 2007)).
Overall, considering the marks as a whole, and taking into account that the mark
in the cited registration is registered on the Supplemental Register, we find that the
du Pont factor of the similarity/dissimilarity of the marks also favors finding a
likelihood of confusion.
C. Conditions of Sale
Applicant urges us to consider the sophistication and degree of purchaser care
likely to be exercised by the relevant consumers. However, there is no evidence of
record that would support finding that the consumers of the general clothing items
identified would exercise a heightened degree of care. Rather, we must consider the
degree of care that would be exercised by the least sophisticated consumers, which
here includes ordinary clothing purchasers. See Stone Lion Capital 110 USPQ2d at
1163 (affirming that TTAB properly considered all potential purchasers for recited
services, including both sophisticated and unsophisticated investors, since precedent
requires consumer care for likelihood-of-confusion decision be based “on the least
sophisticated potential purchasers”). Overall, we find this factor to be neutral.
D. Other Factors
Applicant also mentions in its brief, without elaboration, the seventh, ninth, tenth
and twelfth du Pont factors. Regarding the seventh du Pont factor, Applicant urges
us to consider that there has not been any actual confusion. The lack of evidence of
“actual confusion” carries little weight, especially in an ex parte context. Majestic
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Distilling, 65 USPQ2d at 1205. This is particularly so where, as here, Applicant has
an intent-to-use application and there has not yet been an opportunity for confusion
to occur.
Regarding the ninth, tenth, and twelfth du Pont factors, Applicant merely
presents conclusory argument without evidence. We deem all of these du Pont factors
to be neutral.
E. Conclusion
After considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, we find that the goods are identical-in-part, and
otherwise related, and we presume that they would travel through the same channels
of trade to some of the same general consumers, who may not be expected to exercise
appreciable sophistication or care in their purchases. We further find that the marks
as a whole are substantially similar in sight, sound, connotation, and commercial
impression. Accordingly, we find a likelihood of confusion between Applicant’s mark
PLUMB and the mark in the cited registration .
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.