Pretty Pale, Inc.v.JADS International, LLC

Trademark Trial and Appeal Board

Sep 15, 2017

No. 91222470 (T.T.A.B. Sep. 15, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 15, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Pretty Pale, Inc.
v.
JADS Int’l, LLC
_____

Opposition No. 91222470

_____

Michael J. Bevilacqua and Barbara A. Barakat of Wilmer Cutler Pickering Hale and
Dorr LLP for Pretty Pale, Inc.

Michael A. Cornman of Ladas & Parry LLP for JADS International, LLC.

_____

Before Lykos, Adlin and Heasley,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On August 20, 2014, JADS International, LLC (“Applicant”) filed an application
to register on the Principal Register the mark SUNDICATORS in standard
characters for, as amended, “[s]tickers impregnated with photochromic dyes that
change color in response to UV radiation to warn the wearer when it is time to reapply
sunscreen or to get out of the sun, for use in measuring UV radiation, not for medical
Opposition No. 91222470
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use” in International Class 9.1 The application was originally filed under Section 1(b)
of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark
in commerce. On December 26, 2014, Applicant filed an Amendment to Allege Use
(“AAU”) signed by Andrew S. Levine, Applicant’s CEO, along with one specimen of
use, claiming December 23, 2014 as the date of first use anywhere and in commerce.
The Examining Attorney accepted the AAU, thereby amending the filing basis to
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The mark was published for
opposition on February 14, 2015.
By way of its second amended notice of opposition, Pretty Pale, Inc. (“Opposer”)
opposes registration of Applicant’s mark on the grounds of (1) likelihood of confusion
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with Opposer’s
previously used SUN/DICATORS and SUN/DICATORS “THE BEST SKIN-
SURANCE UNDER THE SUN & Design” marks; and (2) fraud in connection with
Applicant’s AAU.2 Second Amended Notice of Opposition, 14 TTABVUE 13-15.3
Opposer pleaded ownership of Application Serial No. 86503370 for the mark
“SUN/DICATORS ‘THE BEST SKIN-SURANCE UNDER THE SUN’ & Design” filed

1 Application Serial No. 86371772.
2 In the original notice of opposition, Opposer only asserted a Section 2(d) claim. The Board
granted Opposer’s timely motion for leave to amend its notice of opposition to add a claim of
fraud based on information obtained during discovery. See May 23, 2016 Interlocutory Order;
13 TTABVUE. The operative notice of opposition and answer in this case were filed June 6,
2016 and July 13, 2016. 14, 15 TTABVUE.
3 For the citations to the record in TTABVUE throughout the decision, the number preceding
“TTABVUE” corresponds to the docket entry number; the number(s) following “TTABVUE”
refer to the page number(s) of that particular docket entry. See, e.g., Turdin v. Trilobite, Ltd.,
109 USPQ2d 1473 (TTAB 2014).
Opposition No. 91222470
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January 14, 2015 for “[s]un safety awareness products, namely, bracelets and
wristbands that change color in response to UV radiation to alert wearer when it is
time to reapply sunscreen or get out of the sun” and “[d]istributorship, retail and
online retail store services featuring sun safety awareness products, namely,
bracelets and wristbands that change color in response to UV radiation to alert
wearer when it’s time to reapply sunscreen or get out of the sun,” and further alleged
that its application had been “provisionally rejected” based on Applicant’s earlier-
filed application. Second Amended Notice of Opposition ¶¶ 4 and 12; 14 TTABVUE
11, 13. Opposer also pleaded prior common law use of the composite mark as well as
the word mark SUN/DICATORS in connection with “sun safety products, including
bracelets and wristbands that change color in response to UV radiation to alert a
wearer when it is time to reapply sunscreen or get out of the sun” since at least as
early as January 1, 2010, and “services related to those products, including retail and
online retail stores” since at least as early as January 1, 2012. Id. at ¶¶ 2 and 3; 14
TTABVUE 11. The fraud claim is based on the allegations that “Applicant knowingly
made false statements to the USPTO” “with the intent to procure a registration” in
connection with the sworn statements in the AAU that: (1) Applicant’s mark
SUNDICATORS was in use in interstate commerce in connection with the identified
goods at least as early as December 23, 2014; and (2) the specimen displaying the
mark on product packaging was also in use in interstate commerce at least as early
as that date. Id. at ¶¶ 16-26; 14 TTABVUE 13-15.
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In its answer, Applicant denied the salient allegations except for admitting that
“Opposer’s application for its mark SUN/DICATORS ‘THE BEST SKIN-SURANCE
UNDER THE SUN’ & Design has been provisionally rejected based upon Applicant’s
application for the mark SUNDICATORS.” Second Amended Notice of Opposition
and Answer ¶ 12. Applicant also admitted that it filed an AAU on December 26, 2014
“together with a Sworn Declaration, signed by Andrew S. Levine, Applicant’s
president, attesting to the fact that ‘the mark was in use in interstate commerce at
least as early as December 23, 2014’” (Id. at ¶ 17; see also ¶ 18; 15 TTABVUE 4); that
“[d]uring discovery … Applicant repeatedly asserts that it has not used the mark in
commerce in the United States despite its representations to the Trademark Office”
(Id. at ¶ 18); and that “the alleged specimen of use filed on December 26, 2014 was
not in use in commerce at least as early as December 23, 2014, as alleged in the
Amendment to Allege Use.” Id. at ¶ 24. In addition, Applicant asserted the following
“defenses:”4
Applicant, at the time of submission of the December 26, 2014 Amendment
to Allege Use, believed that the degree of use in commerce and type of
specimens required to support such an allegation were met and, mistakenly
but in the good faith belief that the prototype specimens it had actually
produced and the actual preliminary use to which those prototype
specimens had actually been used, were satisfactory for the purposes of the
submission. Id. at ¶ 27.

4 We construe Applicant’s “defenses” as amplifications of its denials to Opposer’s fraud claim.
See, e.g, Morgan Creek Prod. Inc. v. Foria Int’l Inc., 91 USPQ2d 1134, 1136 (TTAB 2009)
(applicant’s “affirmative defenses” for the most part amplified its denials of opposer’s
allegations regarding likelihood of confusion); Order of Sons of Italy in America v. Profumi
Fratelli Nostra AG, 36 USPQ2d 1221, 1223 (TTAB 1995) (motion to strike third affirmative
defense denied because it was an amplification of a denial, giving fuller notice of the claim).
See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) §
311.02(d) (June 2017).
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Notwithstanding the good faith belief of adequate use and acceptable
specimens at the time of submission of the December 26, 2014 Allegation of
Use, applicant has subsequently determined in this proceeding that the
allegation and specimens were legally insufficient for the purposes of
registration of applicant’s mark. Id. at ¶ 28.

Applicant has proceeded in good faith at all times during the solicitation of
a registration of its SUNDICATORS mark and in the defense of the subject
opposition. Id. at ¶ 29.

Applicant never intended to deceive or otherwise to defraud the Trademark
Office in its prosecution of Application Serial No. 86/371772 for
SUNDICATORS. Id. at ¶ 30.

15 TTABVUE 5. The case is fully briefed.

I. The Record
The record includes the pleadings, and pursuant to Trademark Rule 2.122(b), 37
C.F.R. § 2.122(b), Applicant’s application file. Opposer made of record the testimony
deposition transcript of its founder, Kerry Lynn Spindler (“Spindler Deposition”)5
with accompanying Exhs. 1-18 and submitted under notice of reliance a printout from
USPTO records showing the status and title of Opposer’s pleaded Application Serial
No. 86503370 as well as Applicant’s Responses to Opposer’s First Request for
Admissions.6

5 Portions of the Spindler Deposition and exhibits have been designated confidential pursuant
to the parties’ stipulated protective order. The publicly available version can be found at
TTABVUE entry no. 20.
6 Insofar as Applicant has not objected to Opposer’s submission under notice of reliance of
“Applicant’s Responses to Opposer’s First Set of Interrogatories to Applicant” from another
proceeding, it is part of the record. Nonetheless, we did not rely on this evidence in reaching
our decision.
Opposition No. 91222470
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Applicant submitted no evidence and took no testimony. Nonetheless, Opposer, as
plaintiff in this proceeding, bears the burden of establishing its standing and claims.
II. The Parties
Opposer was established in 2012 as a “Section 501(c)(3)”7 non-profit corporation
whose mission is to raise awareness about skin cancer, including melanoma.
Spindler Deposition 6:14-21; 20 TTABVUE 9. As part of its educational activities,
Opposer uses “tangible products to discuss the importance of sun safety and better
habits in one’s lives” with the goal of teaching the public how to prevent skin cancer.
Id. at 6:24-7:8; 20 TTABVUE 9-10. Opposer’s founder, Ms. Spindler, a melanoma
survivor, is the primary spokesperson and is responsible for setting up and leading
educational events. Id. at 8:4-16; 20 TTABVUE 11. She is also responsible for brand
development, advertising and marketing. Id. at 8:17-19; 20 TTABVUE 11.
There is little evidence in the record regarding Applicant or its business
activities.
III.Standing

Standing is a threshold issue that must be proved in every inter partes case.
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
1062 (Fed. Cir. 2014). See also Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 189 (CCPA 1982) (“The facts regarding standing … must be
affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely because

7 This refers to the section of the U.S. Internal Revenue Code that allows for federal tax
exemption of nonprofit organizations, specifically those that are considered public charities,
private foundations or private operating foundations.
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of the allegations in its [pleading].”). The purpose of the standing requirement is to
prevent mere intermeddlers from initiating proceedings. Our primary reviewing
court, the U.S. Court of Appeals for the Federal Circuit, has enunciated a liberal
threshold for determining standing, namely that a plaintiff must demonstrate that it
possesses a “real interest” in a proceeding and “a reasonable basis for his belief of
damage.” See Empresa Cubana del Tabaco, 111 USPQ2d at 1062 (citing Ritchie v.
Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). A “real interest”
is a “direct and personal stake” in the outcome of the proceeding. Ritchie v. Simpson,
50 USPQ2d at 1026.
Ms. Spindler testified that Opposer filed and is the owner of pending Application
Serial No. 86503370, which is currently suspended pending the disposition of
Applicant’s application. Spindler Deposition 46:5-14; 20 TTABVUE 49. Opposer also
made of record the TESS printouts of its pleaded pending application, which establish
these facts. Opposer’s Notice of Reliance, 19 TTABVUE 6. See Empresa Cubana del
Tabaco, 111 USPQ2d at 1062. In addition, Applicant admitted in its answer that
“Opposer’s application for its mark SUN/DICATORS ‘THE BEST SKIN-SURANCE
UNDER THE SUN’ & Design has been provisionally rejected based upon Applicant’s
application for the mark SUNDICATORS.” Second Amended Notice of Opposition
and Answer ¶ 12. The arguable similarities of Opposer’s and Applicant’s applied-for
marks and the similar nature of the goods and services, which are evident from the
face of the TESS printouts of Opposer’s application, suffice to show that Opposer
possesses a “real interest” in this case beyond that of a mere intermeddler and a
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“reasonable basis for its belief of damage.” See id. See also Spirits International B.V.
v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d
1545, 1548 (TTAB 2011). Further, as discussed in more detail below, Opposer has
demonstrated common law use of its word mark SUN/DICATORS in connection with
sun safety bracelets and wristbands. See Giersch v. Scripps Networks Inc., 90
USPQ2d 1020, 1022 (TTAB 2009) (common-law use sufficient to establish standing).
Accordingly, Opposer has established its standing.
IV. Section 2(d) Claim
We will now consider Opposer’s Section 2(d) claim, focusing on Opposer’s pleaded
word mark SUN/DICATORS in connection with “sun safety products” consisting of
“bracelets and wristbands that change color in response to UV radiation to alert
wearer when it is time to reapply sunscreen or get out of the sun.” Second Amended
Notice of Opposition ¶ 2. We focus on that mark and those goods because it is most
likely to support a finding of likelihood of confusion with Applicant’s mark. In other
words, if confusion is likely between these marks, there is no need for us to consider
the likelihood of confusion with Opposer’s composite word/design mark and/or
services, and if there is no likelihood of confusion between Applicant’s mark and
Opposer’s SUN/DICATORS word mark, then there would be no likelihood of
confusion with Opposer’s other pleaded mark. See, e.g., In re Max Capital Group Ltd.,
93 USPQ2d 1243, 1245 (TTAB 2010).
A. Priority
Applicant, in its brief, has focused solely on the issue of priority to argue that
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Opposer has failed to meet its burden of proving its Section 2(d) claim. To maintain
a likelihood of confusion claim brought under Trademark Act Section 2(d), a party
must first prove that it owns “a mark registered in the Patent and Trademark Office
or a mark or trade name previously used in the United States … and not
abandoned….” Trademark Act Section 2, 15 U.S.C. § 1052. Typically, in the absence
of a registration, a plaintiff may establish its prior proprietary rights in a mark
through testimony and/or documentary evidence showing actual use or use analogous
to trademark use. See Trademark Act Sections 2(d) and 45, 15 U.S.C. §§ 1052(d) and
1127; T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996);
Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981).
Although Applicant failed to present any evidence at trial, it is entitled to rely on
its August 20, 2014 filing date as its constructive use date. See Syngenta Crop Prot.
Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009); Levi Strauss & Co. v. R.
Josephs Sportswear Inc., 36 USPQ2d 1328, 1332 (TTAB 1994) (an application filing
date for a use-based application can establish first use of a mark). Thus, in order for
Opposer to prevail on its Section 2(d) claim, Opposer must establish common law use
prior to that date.
Before discussing the evidence of record, we note that the parties disagree as to
the applicable standard of proof for priority. Opposer contends that it need only prove
priority by a preponderance of the evidence. Applicant, citing Hydro-Dynamics, Inc.
v. George Putnam & Co., Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987),
maintains that the appropriate level of proof is clear and convincing evidence.
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Applicant’s reliance on Hydro-Dynamics is misplaced. As the U.S. Court of
Appeals for the Federal Circuit made clear in that decision, the heightened standard
of clear and convincing evidence applies only in instances where a trademark
applicant has filed an application alleging a specific date of first use and then
subsequently asserts an earlier date of first use. “Where an applicant seeks to prove
a date earlier than the date alleged in its application, a heavier burden has been
imposed on the applicant than the common-law burden of preponderance of the
evidence.” Id. Otherwise, “the decision as to priority is made in accordance with the
preponderance of the evidence.” Id. See also Standard Knitting Ltd. v. Toyota Jidosha
Kabushiki Kaisha, 77 USPQ2d 1917, 1929 (TTAB 2006).
Turning now to our substantive analysis, Applicant argues that Opposer made no
bona fide use of its pleaded mark prior to Applicant’s August 20, 2014 filing date.
Applicant contends that Ms. Spindler’s testimony and accompanying exhibits only
show that as of 2012, Opposer had “a registered domain name, a paucity of business
cards, embryonic literature, and unmarked products in ‘swag bags,’” and that this
does not constitute “evidence of proper marking of the product to qualify as trademark
usage.” Applicant’s Brief, p. 5; 23 TTABVUE 9. Applicant then attacks the probative
value of each of the exhibits submitted with Ms. Spindler’s testimony deposition.
We disagree with Applicant’s characterization of Opposer’s evidence. Opposer
acknowledges that it does not “mass distribute” its products; Ms. Spindler explained
that this strategy is deliberate so that its sun safety products do not lose “the flavor
of the educational component.” Spindler Deposition 54:14-19; 20 TTABVUE 57.
Opposition No. 91222470
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Priority can be shown in marks for goods given away as promotional items. See
Tiberghien Freres S.A. v. Miguel Gil, S.A., 185 USPQ 183, 184 (TTAB 1974)
(furnishing free trademarked bathing suits worn publicly by contestants in beauty
contest was sufficient to establish priority). Similarly, priority can be established for
goods given away as part of educational outreach efforts. See American Express
Marketing & Development Corp. v. Gilad Development Corp., 94 USPQ2d 1294, 1298
n.3 (TTAB 2010) (“… use of marks in conjunction with the rendering of free services
still constitutes a ‘use in commerce’ under the Trademark Act. In other words, a for
profit sale is not required.”); Capital Speakers Inc. v. Capital Speakers Club of
Washington D.C. Inc., 41 USPQ2d 1030, 1034 n.3 (TTAB 1996); McDonald’s Corp. v.
McKinley, 13 USPQ2d 1895, 1898 n.6 (TTAB 1989) (finding that goods need not be
sold “in order to come within the ambit of the statute”). Ms. Spindler testified that
commencing in 2012, Opposer has been giving away SUN/DICATOR branded “sun
safety” bracelets and wristbands as both a fundraising tool for Opposer’s foundation
and to promote sun safety awareness. She testified that Opposer has given away
Opposer’s SUN/DICATORS “beaded sun safety bracelets” to children at fundraisers
since 2012. Spindler Deposition 11:3-13; 20 TTABVUE 14; Exh. 1, PPI 000328. She
also testified that Opposer has “used in fundraising” and has given away silicone “sun
safety bracelets” and wristbands at various events since 2012. Id. at 11:14-24, 12:10-
18; 20 TTABVUE 14-15; Exh. 1, PPI 000328-000335 (bracelets, wristbands and
product packaging; 20 TTABVUE 268-275). For example, commencing in 2012,
Opposer has handed out SUN/DICATOR branded bracelets for free at “high profile”
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events such as the Oscars, Golden Globes and the Teen Choice Awards. Id. at 21:19-
25:1; 20 TTABVUE 24-28. When asked to specify how many, she estimated
“[p]robably 200” at the Golden Globes and anywhere from “200, 500, 1000” at the
Oscars. Id. at 22:17-23:7; 20 TTABVUE 25-26.8 Ms. Spindler’s testimony is credible
and not characterized by contradictions or inconsistencies. See Powermatics, Inc. v.
Glebe Roofing Prods. Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965) (oral
testimony, even of a single witness, if “sufficiently probative,” may be satisfactory to
prove priority); 4U Co. of America, Inc. v. Naas Foods, Inc., 175 USPQ 251, 253 (TTAB
1972). Her testimony is corroborated by the documentary evidence she authenticated
displaying use of Opposer’s mark SUN/DICATOR either directly on the product
and/or packaging. Spindler Deposition at Exh. 1, PPI 000328-000335 (bracelets,
wristbands and product packaging); 20 TTABVUE 268-309.
When asked how Opposer’s sun safety bracelets and wristbands work, she
explained:
A: You apply sunscreen. They’re wristbands that you put on that
are supposed to mimic your skin. You apply the sunscreen and
when the sunscreen loses effectiveness, the wristband turns a
dark color reminding the wearer to reapply sunscreen.

Q: What causes the sunscreen to lose its effectiveness?

A: The photochromic dye that’s in the wristband when it’s exposed
to UV, it changes color. The idea is that the sunscreen will block

8 In addition, Ms. Spindler’s testimony shows that Opposer has continuously sold its sun
safety bracelets and wristbands under a slightly different mark, SUNDICATORS, in
interstate commerce since 2012 via its own direct-to-consumer e-commerce website. Id. at
38:17-40:7; 20 TTABVUE 40-43; Exh. PPI 000112-000113; 20 TTABVUE 161-162. Because,
however, Opposer did not plead prior common law use of this variation of the mark without
the slash, we did not consider this evidence in finding priority.
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the UV from penetrating the band and prevent it from changing
color until it starts to wear off.

Spindler Deposition 66:8-23; 20 TTABVUE 69. See also id. at 7:20-8:3; 20 TTABVUE
10-11. Her product description coincides with Opposer’s pleading as well as the goods
identified in Opposer’s pending application. The instructions on how to use the
bracelets and wristbands found on the product packaging also are consistent with her
testimony. See, e.g., Exh. 1, PPI 000334; 20 TTABVUE 274.
In view of the foregoing, Opposer has demonstrated by a preponderance of the
evidence prior use of the word mark SUN/DICATOR in connection with “[s]un safety
awareness products, namely, bracelets and wristbands that change color in response
to UV radiation to alert wearer when it is time to reapply sunscreen or get out of the
sun.”
B. Likelihood of Confusion
Although Applicant’s brief focused solely on the issue of priority, which we have
now determined in Opposer’s favor, Opposer as the plaintiff in this proceeding must
also establish a likelihood of confusion by a preponderance of the evidence in order to
prevail on its Section 2(d) claim.
We base our determination under Section 2(d) on 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) (“du Pont”). See also, In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “Not
all of the DuPont factors are relevant to every case, and only factors of significance to
the particular mark need be considered.” In re Mighty Leaf Tea, 601 F.3d 1342, 94
Opposition No. 91222470
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USPQ2d 1257, 1259 (Fed. Cir. 2010). For example, the Board can “focus … on
dispositive factors, such as similarity of the marks and relatedness of the goods.”
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002) (citation omitted). These factors and the other relevant du Pont factors are
discussed below.
1. The Marks
We begin with the du Pont likelihood of confusion factor regarding 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).
Opposer’s common law mark SUN/DICATORS and Applicant’s applied-for mark
SUNDICATORS are virtually identical in appearance and sound. The slash in
Opposer’s mark is not a significant distinguishing element and is unlikely to affect
the pronunciation enough to differentiate the marks (if it affects the pronunciation at
all). See Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1712 (TTAB
2010) (finding that hyphen does not distinguish MAG-NUM from MAGNUM), aff’d
mem., ___ Fed. Appx. ___, 2011 WL 5400095 (Fed. Cir. Nov. 9, 2011). Even if the slash
were to prompt consumers to articulate Opposer’s mark with a pause between “sun”
and “dicators,” this would amount to only a slight difference in sound. As to
connotation and commercial impression, each mark is a coined term derived from the
combination of the words “sun” and “indicator.” The unique merging of these words
projects the same connotation and commercial impression of a sun exposure
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measuring tool. Ms. Spindler testified that their SUN/DICATORS branded items are
used to educate the public about the dangers of sun exposure (Spindler Deposition
7:20-8:3; 20 TTABVUE 10-11), and that she along with Opposer’s writer Chris Gay
conceived of the name in 2012 in part because of its “unisex connotation” and broad
appeal. 9 Id. at 9:12-10:9; 20 TTABVUE 12-13. We therefore find Opposer’s and
Applicant’s marks similar in appearance, sound, connotation and commercial
impression. This first du Pont factor weighs heavily in favor of finding a likelihood of
confusion.
2. The Goods
The next step in our analysis is a comparison of the goods. It is settled that it is
not necessary that the respective goods be identical or even competitive in order to
find that they are related for purposes of our likelihood of confusion analysis. That is,
the issue is not whether consumers would confuse the goods themselves, but rather
whether they would be confused as to the source of the goods. See In re Rexel Inc., 223
USPQ 830, 831 (TTAB 1984). The respective goods need only be “related in some
manner and/or if the circumstances surrounding their marketing [be] such that they
could give rise to the mistaken belief that the goods emanate from the same source.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722
(Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB

9 Opposer originally called its sun protection products “Pretty Pale” as part of Opposer’s
children’s clothing company. Spindler Deposition 9:14-19; 20 TTABVUE 12.
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2007)). See also In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
As identified in the application, Applicant’s goods are “[s]tickers impregnated with
photochromic dyes that change color in response to UV radiation to warn the wearer
when it is time to reapply sunscreen or to get out of the sun, for use in measuring UV
radiation, not for medical use.” Applicant’s stickers are thus the functional equivalent
of Opposer’s sun safety bracelets and wristbands. The purpose of the goods is the
same – to measure UV radiation on an individualized basis and alert the user to re-
apply sunscreen or retreat indoors in order to prevent overexposure. As with
Opposer’s bracelets and wristbands (Spindler Deposition 66:8-67:16; 20 TTABVUE
69-70) Applicant’s stickers employ photochromic dyes to change color to measure UV
radiation and inform the user when sunscreen should be re-applied, according to its
identification of goods. Thus, the involved goods are closely related because they
perform the same function in the exact same manner. The fact that Applicant’s goods
consist of stickers instead of bracelets or wristbands is inconsequential. Accordingly,
the second du Pont factor also weighs heavily in favor of finding a likelihood of
confusion.
3. The Trade Channels/Purchasers
The record shows Opposer’s target market as consumers “conscientious of their
skin health” and “parents of children.” Spindler Deposition 54:7-11; 20 TTABVUE 57.
Given the particular function of the involved products, both parties’ goods may be
targeted to and encountered by the same prospective consumers – individuals
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interested in protection from damaging UV radiation sun exposure. Hence, because
the products are likely to be encountered by the same customers, this du Pont factor
also weighs in favor of finding a likelihood of confusion.
4. Conditions of Sale
Lastly, we examine the conditions under which the goods are likely to be
purchased, e.g., whether on impulse or after careful consideration, as well as the
degree, if any, of sophistication of the consumers. Purchaser sophistication or degree
of care may tend to minimize likelihood of confusion. Conversely, impulse purchases
of inexpensive items may tend to have the opposite effect. Palm Bay, 73 USPQ2d at
1695.
Opposer’s products are either given away for free or sold at the relatively low price
of $ 1-2/bracelet or wristband or $7.99 for a package of five. Spindler Deposition 14:9-
21; 20 TTABVUE 17. Since there are no price restrictions in Applicant’s
identification, we can assume that Applicant’s goods are also sold at the ordinary
price point which, given the description of goods, would be relatively inexpensive.
“When the products are relatively low-priced and subject to impulse buying, the risk
of likelihood of confusion is increased because purchasers of such products are held
to a lesser standard of purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1899 (Fed. Cir. 2000). Hence, the conditions of sale are such that they
would increase, or at least not decrease, the likelihood of confusion.
5. Balancing the Factors
Taken together, the du Pont factors discussed above weigh in favor of a likelihood
Opposition No. 91222470
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of confusion. Accordingly, we find that Opposer has met its burden of proof by a
preponderance of the evidence; Opposer’s Section 2(d) claim is sustained.
V. Fraud
Although we have determined that Opposer has proven its Section 2(d) claim, in
order to render a complete decision, we will also address Opposer’s fraud claim.
Fraud in procuring a trademark registration occurs when an applicant knowingly
makes false, material representations of fact in connection with its application with
intent to deceive the USPTO. See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938,
1941 (Fed. Cir. 2009); see also Swiss Watch Int’l Inc. v. Fed’n of the Swiss Watch
Indus., 101 USPQ2d 1731, 1745 (TTAB 2012). A party alleging fraud in the
procurement of a registration bears the heavy burden of proving fraud with clear and
convincing evidence. Bose, 91 USPQ2d at 1939 (quoting Smith Int’l, Inc. v. Olin Corp.,
209 USPQ 1033, 1044 (TTAB 1981)). For example, the Board will not find fraud if
the evidence shows that a false statement was made with a reasonable and honest
belief that it was true, rather than intent to mislead the USPTO into issuing a
registration to which the applicant was not otherwise entitled. See id. As explained
in Bose, supra:
Subjective intent to deceive, however difficult it may be to prove, is an
indispensable element in the analysis. Of course, “because direct evidence
of deceptive intent is rarely available, such intent can be inferred from
indirect and circumstantial evidence. But such evidence must still be clear
and convincing, and inferences drawn from lesser evidence cannot satisfy
the deceptive intent requirement.” Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 537 F.3d 1357, 1366 [88 USPQ2d 1001] (Fed. Cir. 2008).

Id. at 1941.
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In response to Opposer’s requests for admissions, Applicant admitted the
following:
Request No. 1: Admit that Applicant has not adopted Applicant’s Mark
for use in the United States.

Response: Admitted.

Request No. 2: Admit that Applicant has not sold, offered for sale or
otherwise distributed any products or services under or in connection
with Applicant’s Mark in the United States.

Response: Admitted.

Request No. 3: Admit that Applicant has not used Applicant’s Mark in
interstate commerce.

Response: Admitted.
…
Request No. 5: Admit that there are no retail outlets selling Applicant’s
products bearing Applicant’s Mark in the United States.

Response: Admitted.

Applicant’s Responses to Opposer’s First Request for Admissions; 19 TTABVUE 28-
30. Furthermore, as noted above, Applicant admitted in its answer that its specimen
of use filed with its AAU was not in use in commerce at least as early as December
23, 2014, as alleged in the Amendment to Allege Use. Id. at ¶ 24.
In light of Applicant’s admissions, there is no question that Applicant’s
CEO/President Mr. Levine made false statements in his signed declaration submitted
with the AAU, and that such statements were material. Thus, the pivotal issue is
whether Opposer has shown that Applicant had the requisite intent to deceive the
USPTO.
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Opposer urges the Board to find that Applicant knowingly intended to deceive the
USPTO based on the fact that Applicant has provided no explanation as to why it
fabricated a specimen and falsely stated that its applied-for mark was in use in
commerce. As Opposer contends, Applicant was obligated to read and understand the
declaration it signed in connection with the AAU and check the accuracy of its
statements. Opposer further notes that after it sent Applicant a cease and desist
letter, Applicant filed a second application (Serial No. 86523922) for the same mark
SUNDICATORS but for slightly different goods, “[b]racelets and wristbands
impregnated with photochromic dyes that change color in response to UV radiation”,
again claiming a date of first use in commerce as December 23, 2014. In Opposer’s
view, the filing of this second, related application constitutes further evidence of
Applicant’s knowing intent to deceive the USPTO.
Applicant, relying on the “defenses” asserted in its answer and arguments in its
brief, counters that through an “innocent mistake of what constituted legal
trademark usage in commerce by [Applicant] and its original attorney, [A]pplicant
submitted as a specimen of use a prototype package bearing the mark … [and] acting
in good faith, did not intend to deceive the USPTO.” Applicant’s Brief, p. 1; 5
TTABVUE 11. Applicant also argues that Opposer failed to adduce any evidence of
Applicant’s intent to deceive by taking the testimony deposition of Applicant’s
President, Andrew Levine, who signed the AAU or Applicant’s former attorney.
Applicant’s statements made in its answer regarding its lack of intent to deceive
the USPTO cannot be considered as evidence on its behalf; such allegations must be
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established by competent evidence during the time for taking testimony. See Saul
Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1725 n.7 (TTAB 2010) (assertions in answer
not evidence unless supported by evidence introduced at trial or except as admission
against interest). See also Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d 1545,
1547 n.6 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
Similarly, Applicant’s “[s]tatements in [its] brief cannot take the place of evidence.”
In re Simulations Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975); see
also Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB
2008) (broad and general statements in brief regarding marketing experience not
supported by evidence cannot be accorded evidentiary value or consideration).
That being said, Opposer as the party asserting fraud bears the burden of proof;
Applicant is not obligated to rebut allegations of fraudulent intent. There is
insufficient evidence in the record before us to warrant the inference of an intent to
deceive the USPTO. Compare Nationstar Mortg. LLC v. Ahmad, 112 USPQ2d 1361
(TTAB 2014) (Board able to infer deceptive intent to deceive USPTO based on
applicant’s testimony coupled with other factual findings). Opposer cites to Global
Maschinen GmbH v. Global Banking Sys., Inc., 227 USPQ 862, 867 (TTAB 1985) for
the proposition that “the Board may infer culpable intent in cases where the accused
party’s testimony lacks credibility.” Opposer’s Brief, p. 16; 22 TTABVUE 21. Here,
however, we have no testimony from Mr. Levine, or for that matter, anyone else
associated with Applicant. Nor do we have any admissions in the record. Opposer
misunderstands the critical significance of Mr. Levine’s testimony in establishing
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intent, given his role as the signatory of Applicant’s AAU. While intent to deceive can
be inferred from indirect and circumstantial evidence, such evidence must still be
clear and convincing, and inferences drawn from lesser evidence cannot satisfy the
deceptive intent requirement. Bose, 91 USPQ2d 1941. Standing alone, Mr. Levine’s
false representations fall short of qualifying as “clear and convincing” indirect or
circumstantial evidence so as to justify an inference sufficient to satisfy the intent to
deceive requirement. Similarly, we cannot draw the inference based on the filing of
Applicant’s subsequent application the level of intent qualifying as fraud. “[A]bsent
the requisite intent to mislead the PTO, even a material misrepresentation would not
qualify as fraud under the Lanham Act warranting cancellation.” Bose, 91 USPQ2d
at 1940 (citing King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 212 USPQ
801 (CCPA 1981)). Accordingly, Opposer’s fraud claim is dismissed.
Decision: The opposition is sustained on Opposer’s Section 2(d) claim but
dismissed as to the fraud claim.