PRL USA Holdings, Inc.v.Brasilio Machado

Trademark Trial and Appeal Board

Jan 7, 2020

91230510 (T.T.A.B. Jan. 7, 2020)

Mailed: January 7, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

PRL USA Holdings, Inc.
v.
Brasilio Machado
_____

Opposition No. 91230510
_____

Daniel I. Schloss and Arsha Hasan, of Greenberg Traurig, LLP,
for PRL USA Holdings, Inc.

Brasilio Machado (pro se)
_____

Before Thurmon, Deputy Chief Administrative Trademark Judge, Zervas and
Coggins, Administrative Trademark Judges.

Opinion by Thurmon, Deputy Chief Administrative Trademark Judge:

Brasilio Machado (“Applicant”) seeks registration on the Principal Register of the
mark POLO KING (standard characters) for “Boots; Jackets; Jeans; T-shirts for men,
women, children; Baseball caps and hats; Sports caps and hats” in International
Class 25.1

1 Application Serial Number 87019978 was filed on April 29, 2016, based on Applicant’s
alleged bona fide intent to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
This Opinion Is Not a
Precedent of the TTAB
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Opposer, PRL USA Holdings, Inc., opposes registration based on the nine
registered marks shown below.
Mark Registration No. Goods
POLO 1363459 “Clothing-Namely, Suits, Slacks,
Trousers, Shorts, Wind Resistant
Jackets, Jackets, Blazers, Dress Shirts,
Sweatshirts, Sweaters, Hats, Belts,
Socks, Blouses, Skirts, Coats, and
Dresses” in International Class 25
POLO 1468420 “Men’s, Women’s, Children’s and Athletic
Shoes” in International Class 25

1508314 “Men’s Suits, Slacks, Ties, Sweaters,
Jackets, Coats, Shoes, Shirts, Hats” in
International Class 25
POLO RALPH
LAUREN
1935665 “infants and children[’]s clothing, namely
layettes, bibs, slippers, sleepwear,
underwear, rompers, shorts, shirts,
coveralls, pants, socks, booties” in
International Class 25
POLO SPORT 1951601 “wearing apparel, namely pants, shorts,
jackets, T-shirts, sport shirts, knit shirts,
sweatshirts, hats, socks and footwear” in
International Class 25
POLO GOLF 2686291 “Wearing Apparel, Namely, Shirts,
Sweaters, Pants” in International Class
25

3306101 “Clothing, namely, knit shirts, polo
shirts, sweaters, shirts, t-shirts, hats,
swimwear, pants, jackets, belts, ties,
footwear, socks; outerwear, namely,
coats, sport coats, raincoats” in
International Class 25

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the pleadings,
evidence, and briefs are to the Board’s TTABVUE docket system.
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Mark Registration No. Goods
POLO RALPH
LAUREN
3733341 “Sweaters, shirts, sweatshirts, pants,
shorts, jackets, coats, vests, hats,
scarves, gloves, belts, ties, underwear,
socks, shoes, sneakers, boots. sleepwear,
robes, men’s suits” in International Class
25

978166 “Men’s Suits, Slacks, Ties, Sweaters,
Shoes, Shirts, Hats, Belts, Socks; and
Ladies’ Blouses, Skirts, Suits and
Dresses” in International Class 25

Opposer asserts priority and a likelihood of confusion under Trademark Act
Section 2(d) and dilution under Trademark Act Section 43(c), 15 U.S.C. §§ 1052(d),
1125(c). We sustain the opposition under Section 2(d). We do not reach the dilution
claim.
I. The Record
Opposer submitted substantial evidence in support of its claims. Applicant
submitted his own testimonial declaration. Both parties objected to at least parts of
the evidence submitted by the other. We have reviewed all the evidence and
considered all the objections. We overrule or deem moot2 all evidentiary objections
and accord appropriate weight to the evidence in the record. Where appropriate, we
cite below to specific parts of the record.

2 Objections to evidence that is not probative to the disposition of the case are moot.
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II. Analysis
A. Standing
Standing is a requirement that must be established in every inter partes
proceeding. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94
USPQ2d 1942, 1945 (TTAB 2010). Opposer’s standing is established by its pleaded
registrations, which the record shows to be valid and subsisting, and owned by
Opposer. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000); Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252,
1254 (TTAB 2012).
B. Priority
Because of the submission of the pleaded registrations shown to be valid and
subsisting, and because Applicant did not counterclaim to cancel Opposer’s
registrations, priority is not an issue with respect to the goods identified in the
registrations. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998)
(citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974)).
C. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the 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); 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
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considerations are the similarities between the marks and the similarities between
the goods and services. 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 bears the burden of establishing that there is a likelihood of confusion by
a preponderance of the evidence. Cunningham, 55 USPQ2d at 1844. We consider the
likelihood of confusion factors about which there is evidence. du Pont, 177 USPQ at
567-68 (consider factors “when of record”); Cai v. Diamond Hong, Inc., 901 F.3d 1367,
127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (“Not all of the du Pont factors are relevant
to every case, and only factors of significance to the particular mark need be
considered.”(quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir. 2010)).
Where multiple registered marks are asserted as the basis for a Section 2(d) claim,
it is sufficient to find for Opposer if there is a likelihood of confusion as to any of the
asserted registered marks. See Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113
USPQ2d 1913, 1917 (TTAB 2015). In this case, we limit our analysis to Opposer’s
Registration Number 1363459 (the ’459 registration) for the POLO mark in typed
format for “Clothing-Namely, Suits, Slacks, Trousers, Shorts, Wind Resistant
Jackets, Jackets, Blazers, Dress Shirts, Sweatshirts, Sweaters, Hats, Belts, Socks,
Blouses, Skirts, Coats, and Dresses” because “if we find a likelihood of confusion as
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to this pleaded registration, we need not find it as to the others.” Fiserv, 113 USPQ2d
at 1917.
1. Similarity of the Marks
We must consider 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 DuPont, 177 USPQ at 567). “Similarity in any one of these elements
may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d
1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d
728, 156 USPQ 523, 526 (CCPA 1968).
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 so that confusion as to the source of the goods
and services offered under the respective marks is likely to result. Cai, 127 USPQ2d
at 1801 (Fed. Cir. 2018); Midwestern Pet Foods, Inc. v. Societe des Produits Nestle
S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975).
The marks are highly similar in appearance, sound, meaning, and commercial
impression. Opposer’s POLO mark is incorporated in whole into Applicant’s POLO
KING mark. Applicant’s mark adds the word “king,” which is a point of distinction,
but as the other relied-upon registrations show, Opposer owns marks that include
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POLO plus a second word (e.g., POLO SPORT and POLO GOLF). The similarity of
the marks makes confusion more likely.
2. Similarity of Goods, Trade Channels, and Purchasing
Conditions
“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 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.” Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014);
Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). We group these three du Pont factors because of the shared focus on the
identification of the goods.3
The parties’ goods are identical in part and highly similar overall. Both the
application and the ’459 registration identify jackets and hats. The application and
registration also identify other basic clothing items, including pants and shirts. When
the goods are identical, even in part, “the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life

3 Our analysis here covers the second, third and fourth du Pont factors: “The similarity or
dissimilarity and nature of the goods or services as described in an application or registration
or in connection with which a prior mark is in use;” “The similarity or dissimilarity of
established, likely-to-continue trade channels;” and, “The conditions under which and buyers
to whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” du Pont, 177
USPQ at 567.
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of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); see also Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012).
There are no trade channel limitations in the application or registration. Because
the goods are in-part identical, we must presume the parties’ goods will flow through
the same trade channels and be purchased by the same class of consumers under
similar conditions. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels of
trade to same class of purchasers). Applicant’s arguments that it intends to market
its goods to polo players and others associated with the sport of polo4 is irrelevant
because there are no trade channel limitations in the identification of goods. Stone
Lion Capital Partners, 110 USPQ2d at 1162. Based on Opposer’s identification of
goods, Opposer could also market its goods to polo players and others associated with
the sport of polo.
We find the parties’ goods are identical, in part, and that such goods are likely to
use the same trade channels and be purchased under similar conditions by the same
classes of purchasers. These facts make confusion more likely.
3. Strength of Opposer’s Mark
The fifth du Pont factor asks whether Opposer’s mark is strong.5 “A mark’s
strength is measured both by its conceptual strength (distinctiveness) and its

4 41 TTABVUE 11-12.
5 The fifth du Pont factor addressed “the fame of the prior mark.” In re E.I. du Pont de
Nemours & Co., 177 USPQ at 567.
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marketplace strength (secondary meaning).” In re Chippendales USA, Inc., 622 F.3d
1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010)); see also Top Tobacco, L.P. v. N. Atl.
Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011); Tea Bd. of India v.
Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); 2 J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83 (5th ed. 2019).
To evaluate the conceptual strength of word marks, we place the mark in one of
the following classes: “(1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or
fanciful. The lines of demarcation, however, are not always bright.” Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). Market strength also
“varies along a spectrum from very strong to very weak.” Joseph Phelps Vineyards,
LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir.
2017).
We find Opposer’s POLO mark has some conceptual and substantial market
strength. The registered mark is presumed to have acquired distinctiveness, Cold
War Museum Inc. v. Cold War Air Museum Inc., 586 F.3d 1352, 92 USPQ2d 1626,
1628 (Fed. Cir. 2009), and it has been used for more than five decades.6 The evidence
of record shows Opposer’s POLO marks have been heavily promoted, with almost
$750 million spent on advertising and promotion during the 2016-18 period.7 The

6 26 TTABVUE 2-4, Exhs. 1-3.
7 Id. at 4.
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POLO mark is well-known to many consumers.8 We find the strength of Opposer’s
mark makes confusion more likely.
4. The Variety of Goods on Which the Mark Is Used
“One of the factors the du Pont court listed as relevant is ‘[t]he variety of goods on
which a mark is or is not used (house mark, ‘family’ mark, product mark).’”
McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268, 1275 (TTAB 2014) (quoting
du Pont, 177 USPQ at 567). Opposer alleged ownership of a group of “POLO marks”
and later presented testimony that these marks constituted a family of marks.9 We
find the evidence shows that Opposer owns a family of POLO marks and that this
makes confusion more likely. J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d
1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991) (“A family of marks is a group of marks
having a recognizable common characteristic, wherein the marks are composed and
used in such a way that the public associates not only the individual marks, but the
common characteristic of the family, with the trademark owner.”).
As part of its family of POLO marks, Opposer owns the marks POLO SPORT and
POLO GOLF for goods that overlap with those identified in the opposed application.
Consumers, therefore, are accustomed to seeing a variety of Opposer’s POLO marks
used with a wide range of clothing goods. Applicant’s use of the mark POLO KING

8 Id. at 3-4.
9 5 TTABVUE 8-10; 26 TTABVUE 2-4. Though Opposer did not expressly mention a “family”
of marks in the Amended Notice of Opposition, it did refer collectively to the “POLO marks.”
Later testimony and briefing expressly relied upon the family of marks argument, and
Applicant did not object to the presentation of that argument. We find this issue is properly
before us by implied consent at trial. See Morgan Creek Prods. Inc. v. Foria Int’l Inc., 91
USPQ2d 1134, 1138 (TTAB 2009); Fed. R. Civ. P. 15(b)(2).
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with identical or highly similar goods is very likely to create confusion. The POLO
KING mark would be seen by many consumers as another member of the POLO
family of marks owned by Opposer.
5. Weighing and Balancing the Factors
Opposer has proven that confusion is likely. The parties’ marks are similar, the
goods are identical (in part), and we presume the same trade channels, classes of
purchasers and purchasing conditions exist for the parties’ goods. Opposer owns a
family of POLO marks and its marks are strong, facts that also make confusion more
likely. None of the likelihood of confusion factors favors Applicant.
Decision: The Opposition is sustained under Section 2(d).