Pure & Simple Concepts, Inc.v.I H W Management Limited DBA The Finchley Group

Trademark Trial and Appeal Board

Nov 26, 2019

91234659 (T.T.A.B. Nov. 26, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 26, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Pure & Simple Concepts, Inc.
v.
I H W Management Limited DBA The Finchley Group
_____

Opposition No. 91234659
_____

Thomas D. Rosenwein of Rosenwein Law Group
for Pure & Simple Concepts, Inc.
Arthur Sanft of Sanft Law
for I H W Management Limited DBA The Finchley Group.
_____

Before Bergsman, Lykos and Larkin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On April 30, 2015, I H W Management Limited DBA The Finchley Group
(“Applicant”) filed an application to register on the Principal Register the standard
character mark BLUE INDUSTRY for
“Clothing, namely, pants, sweatpants, jeans, overalls,
shirts, T-shirts, tank tops, blouses, jackets, blazers, vests,
coats, rainwear, dresses, skirts, dress suits, t-shirts,
sweatshirts, sweaters, pullovers, cardigans, shorts, belts,
ties, gloves, scarves, shawls, bathing suits, sport bras,
lingerie, socks and hosiery; Footwear; Headgear, namely,
balaclavas, bandanas, beanies, berets, cagoules, caps, ear
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muffs, hats, headbands, skull caps, toques, turbans and
visors” in International Class 25.1
Pure & Simple Concepts, Inc. (“Opposer”) opposes registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) and Section 43(c) of the
Trademark Act, 15 U.S.C. § 1125(c), on the grounds of likelihood of confusion and
likelihood of dilution by blurring based on Opposer’s previously used and registered
family of INDUSTRY marks.2 In the Notice of Opposition, Opposer pleaded
ownership of the following eight registrations:
Registration No. 2118102 for the mark INDUSTRY BY
WORK WEAR (typed form)3 (WORK WEAR disclaimed) on

1 Application Serial No. 86615907, filed under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
Citations to the record throughout the decision include references to TTABVUE, the Board’s
online docketing system. 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, 1476 n.6 (TTAB 2014).
As explained below, portions of the record have been designated confidential. With a few
exceptions, the majority of citations to the record refer to the redacted, publicly available
versions of each submission.
2 Opposer, by failing to allege that any of its pleaded marks became famous prior to
Applicant’s date of constructive use, failed to properly plead a claim of dilution by blurring.
See Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540, 1542 (TTAB 2001) (dilution
pleading legally insufficient where opposer failed to allege that its mark became famous
before constructive use date of involved intent-to-use application). Nonetheless, because
Opposer presented evidence regarding its dilution claim at trial, and because both parties
argued this claim in their briefs, we deem the pleadings amended and Opposer’s dilution
claim to be tried by implied consent under Fed. R. Civ. 15(b)(2), made applicable to Board
proceedings by Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a). See Morgan Creek Prods. Inc.
v. Foria Int’l Inc., 91 USPQ2d 1134, 1138 (TTAB 2009); H.D. Lee Co. v. Maidenform Inc., 87
USPQ2d 1715, 1720-1721 (TTAB 2008); Boise Cascade Corp. v. Cascade Coach Co., 168 USPQ
795, 797 (TTAB 1970) (“Generally speaking, there is an implied consent to contest an issue
if there is no objection to the introduction of evidence on the unpleaded issue, as long as the
adverse party was fairly informed that the evidence went to the unpleaded issue.”).
3 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings;
the preferred nomenclature was changed to conform to the Madrid Protocol. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012); see also TRADEMARK
MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (Oct. 2018).
Opposition No. 91234659
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the Principal Register for “all men’s, women’s, boys’ and
girls’ wearing apparel, namely, shirts, pants, blazers,
jackets, vests, skirts, shorts, jeans, sweaters and T-shirts,
together with all accessories, namely, belts, socks, ties,
underclothing, caps and hats” in International Class 25;4
Registration No. 2326074 for the composite mark displayed
below

(UNION MADE PRODUCT disclaimed) on the Principal
Register for “All men’s, women’s, boys’ and girls’ wearing
apparel, namely, shirts, pants, blazers, jackets, vests,
skirts, shorts, jeans, sweaters and T-shirts, together with
all accessories, namely, belts, socks, ties, underclothing,
caps and hats” in International Class 25;5
Registration No. 2403592 for the mark INDUSTRY GIRL
(typed form) (GIRL disclaimed) on the Principal Register
for “All Women’s and girls’ wearing apparel, namely,
shirts, pants, blazers, jackets, vests, skirts, shorts, jeans,
sweaters and T-shirts, together with all accessories,
namely, belts, socks, ties, underclothing, caps and hats” in
International Class 25;6
Registration No. 2446522 for the composite mark displayed
below (SUPPLY CO. disclaimed)

4 Registered December 2, 1997; renewed.
5 Registered March 7, 2000; renewed. Color is not claimed as a feature of the mark.
6 Registered November 14, 2000; renewed.
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on the Principal Register for “All men’s, women’s, boys’,
girls’ and children’s wearing apparel namely, shirts, pants,
blazers, jackets, vests, skirts, shorts, jeans, sweaters and
T-shirts, together with all accessories, namely, belts, socks,
ties, underclothing, caps and hats” in International Class
25;7
Registration No. 2723120 for the mark displayed below

on the Principal Register for “men’s, women’s, boys’, girls’
and children’s wearing apparel namely, shirts, pants,
blazers, jackets, vests, skirts, shorts, jeans, sweaters, T-
shirts, underclothing and lingerie, together with all
accessories, namely, belts, socks, ties, caps and hats” in
International Class 25;8
Registration No. 2859863 for the composite mark displayed
below

7 Registered April 24, 2001; renewed. Color is not claimed as a feature of the mark.
8 Registered June 10, 2003; renewed. Color is not claimed as a feature of the mark.
Opposition No. 91234659
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on the Principal Register for “All men’s, women’s, boys’,
girls’ and children’s wearing apparel namely, shirts, pants,
blazers, jackets, vests, skirts, shorts, jeans, sweaters, T-
shirts, underclothing, underwear, lingerie, brassieres,
panties, hosiery, pantyhose, camisoles, sleepwear, and
footwear, together with all accessories, namely, belts,
socks, ties, caps and hats” in International Class 25;9
Registration No. 3407934 for the composite mark displayed
below

on the Principal Register for “Wholesale store, [ retail
store, ] on-line wholesale store and on-line retail store
services featuring men’s, women’s, boys’, girls’ and
children’s wearing apparel, namely, shirts, pants, blazers,
jackets, vests, skirts, shorts, jeans, sweaters, T-shirts,
underclothing, undergarments, underwear, lingerie,
panties, hosiery, camisoles, sleepwear, and footwear,

9 Registered July 6, 2004; renewed. Color is not claimed as a feature of the mark.
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together with all accessories, namely, belts, socks, ties,
caps and hats” in International Class 35;10 and
Registration No. 5052618 for the composite mark displayed
below

on the Principal Register for “Men’s, women’s, boys’ and
girls’ clothing, namely, shirts, pants, blazers, jackets, vests,
skirts, shorts, jeans, sweaters, t-shirts, underclothing,
undergarments, underwear, lingerie, panties, hosiery,
camisoles and sleepwear, together with all accessories,
namely, belts, socks, ties, caps and hats” in International
Class 25.11
In its answer, Applicant denied the salient allegations in the Notice of Opposition
and asserted various putative affirmative defenses that in fact are amplifications of
its denials.12

10 Registered April 8, 2008; renewed. The mark consists of the word “INDUSTRY” and a
design of a bird’s wing, with a body of a bird depicted as an “i.” Color is not claimed as a
feature of the mark.
11 Registered April 8, 2008; October 4, 2016. The mark consists of a stylized arrowhead design
above the stylized wording “INDUSTRY”. Color is not claimed as a feature of the mark.
12 Applicant asserts the affirmative defense of failure to state a claim upon which relief may
be granted. Insofar as Applicant neither filed a formal motion to dismiss pursuant to Fed R.
Civ. P. 12(b)(6) during the interlocutory phase of this proceeding, nor argued this defense in
his main brief, the defense is deemed waived. See Alcatraz Media, Inc. v. Chesapeake Marine
Tours, Inc., 107 USPQ2d 1750, 1752 n.6 (TTAB 2013) (petitioner’s pleaded descriptiveness
and geographical descriptiveness claims not argued in brief deemed waived), aff’d, 565 F.
App’x 900 (Fed. Cir. 2014) (mem.).

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The case is now fully briefed. Opposer, as plaintiff in this proceeding, bears the
burden of establishing its standing and claims by a preponderance of the evidence.
See Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007).
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 introduced the testimony affidavit of Ted Rozenwald, Opposer’s
President (“Rozenwald Affidavit”) with Exhibits A-F (confidential). Opposer also
submitted a notice of reliance on the following documents:
Photocopies of Opposer’s pleaded Registration Nos.
2118102, 2326074, 2403592, 2446522, 2723120, 2859863
and 5052618 showing current status and title as well as
each registration’s file history; and
A copy of the Canadian decision Registrar of Trade-marks
In the Matter of an Opposition by Manhattan International
Trade Inc. and Pure & Simple Concepts Inc. to application
No. 1358556 for the trade-mark BLUE INDUSTRY
DESIGN in the name of Cornelis B.V., Citation 2014
TMOB 216, dated October 6, 2014.
Applicant took no testimony but instead introduced under notice of reliance the
following:
Copies of third-party registrations of INDUSTRY
formative marks for clothing obtained from the USPTO
Trademark Status and Document Retrieval (“TSDR”)
database (Exhibits 1-74);
Excerpts from Opposer’s Facebook page accessed on
January 3, 2019 (Exhibits 75a-75g);
A printout from Opposer’s Instagram page accessed on
October 17, 2017 (Exhibit 76);
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Excerpts from Opposer’s website industryclothing.com
accessed on January 3, 2019 (Exhibit 77);
Excerpts from Opposer’s website industryclothing.com
accessed via web archive on May 20, 2017 (Exhibit 78);
The Board’s final decision dated May 11, 2018 in
Opposition No. 91216270, Manhattan International Trade
Inc. and Pure & Simple Concepts, Inc. v. Industrie IP Pty
Limited (Exhibit 79);
Applicant’s First Set of Requests of Production of
Documents and Things to Opposer (Exhibit 80);
Google search results for the word “Industry” (Exhibit 81);
Google search results for the word “Industry Clothing”
(Exhibit 82);
Excerpts from third-party websites accessed on January
18, 2019 (Exhibit 83); and
Excerpts from Blue Industries website in the Netherlands
(Exhibit 84).
II. Designation of Confidential Material and Briefing
Opposer improperly designated the entire affidavit of Mr. Rozenwald and exhibits
confidential pursuant to the Board’s stipulated protective order, hindering the
Board’s ability to issue an opinion in this case. “Confidentiality designations do not
provide absolute immunity from the public disclosure of materials so designated.”
Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1475 (TTAB 2017)
(internal citation omitted). The Board may treat as not confidential material which
cannot reasonably be considered confidential, notwithstanding a designation as such
by a party. Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g). As explained in
Opposition No. 91234659
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Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461
(TTAB 2014):
Board proceedings are designed to be transparent to the
public and the contents of proceeding files publicly
available. The improper designation of materials as
confidential thwarts that intention. Moreover, it is more
difficult to make findings of fact, apply the facts to the law,
and write decisions that make sense when the facts may
not be discussed. The Board needs to be able to discuss the
evidence of record, unless there is an overriding need for
confidentiality, so that the parties and a reviewing court
will know the basis of the Board’s decision. Therefore, in
rendering our decision, we will not be bound by petitioner’s
designations and in this opinion, we will treat only
testimony and evidence that is clearly of a private nature
or commercially sensitive as confidential.
See also Gen. Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d
1179, 1182 (TTAB 2008); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (“TBMP”) § 703.01(p) (2019) (“Confidential or Trade Secret Material”).
We see no reason not to follow the Board’s practice noted above. Nonetheless, we are
mindful of the Opposer’s concerns, and accordingly we have not disclosed any truly
confidential information such as customer names or financial data.
In addition, both parties failed to follow the Board’s well-established practice of
including the TTABVUE docket entries and page numbers in their briefs when citing
to publicly available evidence in the record and the TTABVUE entry number for
matter designated as confidential. This added unnecessarily to the length of time for
the Board to render an opinion in this case. We therefore direct the parties to the
guidance set forth in Turdin v. Trilobite, Ltd., 109 USPQ2d at 1476 n.6, and TBMP
Opposition No. 91234659
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§§ 106.03, 801.01, 803.03, and urge both parties to adhere to this practice in future
cases with the Board.
III. Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015); John W.
Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). Opposer
must prove its standing by showing a real interest in the outcome of the proceeding
and a reasonable basis for believing that it would suffer damage if the mark is
registered. See 15 U.S.C. § 1063; Empresa Cubana Del Tabaco v. Gen. Cigar Co., 111
USPQ2d at 1062. A “real interest” is a “direct and personal stake” in the outcome of
the proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir.
1999).
Opposer’s pleaded registrations for INDUSTRY formative marks for clothing
which are of record establish its standing to bring a Section 2(d) claim. See Coach
Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed.
Cir. 2012); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed.
Cir. 2000). Once a plaintiff has shown standing on one ground, it has the right to
assert any other ground in an opposition which in this case includes Opposer’s
dilution by blurring claim. See, e.g., Poly-America, L.P. v. Illinois Tool Works Inc., 124
USPQ2d 1508, 1512 (TTAB 2017) (if petitioner can show standing on the ground of
functionality, it can assert any other grounds, including abandonment).
Opposition No. 91234659
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IV. Section 2(d) Claim
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), prohibits the registration
of a mark that
[c]onsists of or comprises a mark which so resembles a
mark registered in the Patent and Trademark Office, or a
mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used
on or in connection with the goods of the applicant, to cause
confusion, or to cause mistake, or to deceive.
Priority
To prevail on a Section 2(d) claim, a party must first prove priority. Because, as
noted above, Opposer properly made of record its valid and subsisting pleaded
registrations and Applicant did not counterclaim to cancel them, priority is not at
issue for the marks and the goods and services identified therein. See King Candy,
Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). See
also Coach Servs., 101 USPQ2d at 1727-28.
Likelihood of Confusion
The second element of a Section 2(d) claim is likelihood of confusion. Our analysis
is based on all of the probative evidence of record. In re E. I. DuPont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See also, In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We
must consider each relevant DuPont factor for which there is evidence and argument.
See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir.
2019). Varying weights may be assigned to each DuPont factor depending on the
Opposition No. 91234659
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evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play
more or less weighty roles in any particular determination”).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods. See In re Chatam Int’l
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”). These
factors, and the other relevant DuPont factors, are discussed below.
1. Opposer’s Alleged Family of Marks13
Opposer argues that it owns a family of six INDUSTRY formative marks for
clothing items14 that are promoted together when offered for sale on Opposer’s
licensee website:15 See Rozenwald Affidavit ¶15 and Exhibit F (excerpts from

13 Opposer was a co-plaintiff in prior litigation before the Board, Manhattan International
Trade Inc. and Pure & Simple Concepts Inc. v. Industrie IP Pty Limited, Opposition No.
91216270 (TTAB May 11, 2018) (non-precedential). In that opposition proceeding, Opposers
alleged prior use and registration of a purported family of marks for clothing which all share
the term INDUSTRY. In dismissing both the Section 2(d) and dilution by blurring claims,
the Board found that Opposers failed to establish a family INDUSTRY of marks for clothing.
Applicant’s Notice of Reliance, 19 TTABVUE 354-358. The Board also found, based on the
sheer volume of third-party registrations and third-party uses for INDUSTRY formative
marks in connection with clothing, that the term INDUSTRY was both conceptually and
commercially weak. Id.
14 Registration Nos. 2118102, 2403592, 2446522, 2723120, 3407934 and 5052618.
15 Opposer licenses its trademarks to companies in the Manhattan Group which include
Manhattan International Trade, Inc. and Manhattan International Concepts, Inc. Rozenwald
Affidavit ¶ 5; 20 TTABVUE (marked confidential).
Opposition No. 91234659
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publically available website www.manhattaninc.com/industry); 20 TTABVUE
(marked confidential).
The seminal case defining a family of marks is J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891-92 (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. Simply using a series of
similar marks does not of itself establish the existence of a
family. There must be a recognition among the purchasing
public that the common characteristic is indicative of a
common origin of the goods.… Recognition of the family is
achieved when the pattern of usage of the common element
is sufficient to be indicative of the origin of the family. It is
thus necessary to consider the use, advertisement, and
distinctiveness of the marks, including assessment of the
contribution of the common feature to the recognition of the
marks as of common origin.
Neither the mere intention to create a family of marks, nor ownership of multiple
registrations containing the family term, are sufficient in and of themselves to
establish that a party owns a family of marks. Am. Standard Inc. v. Scott & Fetzer
Co., 200 USPQ 457, 461 (TTAB 1978); Consol. Foods Corp. v. Sherwood Med. Indus.
Inc., 177 USPQ 279, 282 (TTAB 1973); Witco Chem. Co., Inc. v. Chemische Werke
Witten GmbH., 158 USPQ 157, 160 (TTAB 1968). In order to prove ownership of a
family of marks, a party must establish:
[F]irst, that prior to the entry into the field of the
opponent’s mark, the marks containing the claimed ‘family’
feature or at least a substantial number of them, were used
and promoted together by the proponent in such a manner
as to create public recognition coupled with an association
of common origin predicated on the ‘family’ feature; and
second, that the ‘family’ feature is distinctive (i.e. not
Opposition No. 91234659
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descriptive or highly suggestive or so commonly used in the
trade that it cannot function as the distinguishing feature
of any party’s mark). Emphasis added.
Marion Labs. Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215, 1218-19 (TTAB
1988) (quoting Land-O-Nod Co. v. Paulison, 220 USPQ 61, 65-66 (TTAB 1983)). See
also TPI Holdings Inc. v. Trailertrader.comLLC, 126 USPQ2d 1409, 1420 (TTAB
2018).
The record shows that a significant number of third parties have registered or
used INDUSTRY formative marks in connection with clothing and apparel. Applicant
made of record 74 third-party registrations comprised of this shared element as well
as 12 examples of advertised use. Examples of registered INDUSTRY formative
marks in the record for clothing include the word marks COTTAGE INDUSTRY,
INDUSTRY WHORE, 305 INDUSTRY, INDUSTRY 9, INDUSTRY HORROR,
CHALC INDUSTRY, REPLICA INDUSTRY, LAUNDRY INDUSTRY, STARK
INDUSTRIES, MISLED INDUSTRIES, HOMEGROWN INDUSTRIES, CHAMBER
INDUSTRIES, CARE APPAREL INDUSTRIES, ALPHA INDUSTRIES, BENT
INDUSTRIES, CHAMBER INDUSTRIES, ADDICTED INDUSTRIES, BLOCK
INDUSTRIES, GENERATION INDUSTRIES, IMPERFUCT INDUSTRIES, LUCKY
PUNK INDUSTRIES, GET SOME INDUSTRIES, and AWAKEN INDUSTRIES.
Applicant’s Notice of Reliance, Exhibits 1-74; 22 TTABVUE 19-228. Third-party uses
of INDUSTRY formative marks in connection with clothing include CRWWND
INDUSTRIES, LAUNDRY INDUSTRY, LUCKY PUNK INDUSTRIES, UH-OH
INDUSTRIES, and YELL! INDUSTRY. Applicant’s Notice of Reliance, Exhibits
83(a)-(l); 22 TTABVUE 417-461. Thus, the alleged family term, INDUSTRY, or the
Opposition No. 91234659
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plural thereof, has been ubiquitously registered and used to identify clothing and
apparel, making it both conceptually and commercially weak. This precludes a
finding that Opposer owns a family of marks for the shared INDUSTRY element. See,
e.g., TPI Holdings, 126 USPQ2d at 1428 (“we find –TRADER formative marks are so
commonly used by others that the shared –TRADER element in Petitioner’s marks
does not constitute a distinguishing feature. Petitioner cannot lay claim to a family
of marks based on the common trait in its marks, despite the evidence showing
Petitioner’s efforts to establish such a family of marks”); see also Land-O-Nod Co. v.
Paulison, 220 USPQ at 66 (denying claim of family of CHIRO formative marks, while
also noting the inherent weakness of CHIRO and that “[t]he evidence further
establishes that the term CHIRO has been commonly used and/or registered by third
parties”).
2. The Number and Nature of Similar Marks in Use on Similar Goods
We will now consider the number and nature of similar marks in use on similar
goods, the sixth DuPont factor. As noted above, the record shows that numerous third
parties have registered or used INDUSTRY formative marks in connection with
clothing items. “The purpose of a defendant introducing third-party uses is to show
that customers have become so conditioned by a plethora of such similar marks that
customers have been educated to distinguish between different such marks on the
bases of minute distinctions.” Omaha Steaks Int'l, Inc. v. Greater Omaha Packing
Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1694 (Fed. Cir. 2005)). See also Jack Wolfskin Ausrustung Fur
Opposition No. 91234659
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Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted).
In addition, third-party registrations may be relevant to show that a mark or a
portion of a mark is descriptive, suggestive, or so commonly used that the public will
look to other elements to distinguish the source of the goods or services. See, e.g., Jack
Wolfskin, 116 USPQ2d at 1136. Extensive evidence of third-party use and
registrations as we have before us is “powerful on its face.”16 Jack Wolfskin, 116
USPQ2d at 1136. Given the sheer volume of third-party registrations and examples
of third-party use, consumers are conditioned to look for differences between
INDUSTRY formative marks to determine the source of a given product and are
therefore less likely to be confused.
“[T]he strength of a mark is not a binary factor” and “varies along a spectrum from
very strong to very weak.” Juice Generation, 115 USPQ2d at 1675-76 (internal
citations omitted). “The weaker [Opposer’s] mark, the closer an applicant’s mark can
come without causing a likelihood of confusion and thereby invading what amounts
to its comparatively narrower range of protection.” Id. at 1676 (internal citations
omitted). See also Palm Bay, 73 USPQ2d at 1693 (“Evidence of third-party use of
similar marks on similar goods is relevant to show that a mark is relatively weak and
entitled to only a narrow scope of protection.”). The record shows that Opposer’s

16 In Jack Wolfskin, there were at least 14 third-party registrations and uses, 116 USPQ2d
at 1136 n.2, and in Juice Generation, there were at least 26. 115 USPQ2d at 1673 n.1.
Opposition No. 91234659
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INDUSTRY formative marks all fall on the weak side of the spectrum, meaning that
their scope of protection is limited. This sixth DuPont factor therefore weighs against
finding a likelihood of confusion.
3. The Similarity or Dissimilarity of the Marks
This DuPont factor 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, 73 USPQ2d at 1691 (quoting DuPont, 177 USPQ at 577).
“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 would be likely to assume a connection between
the parties.” Coach Servs., 101 USPQ2d at 1721 (quoting Leading Jewelers Guild,
Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). The focus is on
the recollection of the average purchaser, who normally retains a general rather than
a specific impression of trademarks. In re Binion, 93 USPQ2d 1531, 1534 (TTAB
2009) (citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975)). Our
analysis cannot be predicated on dissection of the involved marks. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014). Rather, we are obliged to consider the marks in their entireties. Id.
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.”). Nonetheless, 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
Opposition No. 91234659
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the ultimate conclusion rests on a consideration of the marks in their entireties. Stone
Lion, 110 USPQ2d at 1161.
As explained above, a mark comprising the term INDUSTRY in whole or in part
in connection with clothing items is entitled only to a “restricted scope of protection,”
and as such will only bar the registration of marks “as to which the resemblance …
is striking enough to cause one seeing it to assume that there is some connection,
association or sponsorship between the two.” Anthony’s Pizza & Pasta Int’l Inc. v.
Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009), aff’d, 415 Fed.
Appx. (Fed. Cir. 2010). We find that due to the addition of the word BLUE to
INDUSTRY in Applicant’s applied-for mark BLUE INDUSTRY, the mark as a whole
does not bear a “striking” resemblance in appearance, sound, meaning or commercial
impression to any of Opposer’s pleaded registered marks. None of Opposer’s marks
include the word BLUE or a synonym therefor, or any other color, when used as an
adjective,17 such that consumers would perceive Applicant’s mark as a product

17 According to THE MERRIAM-WEBSTER DICTIONARY (www.merriam-webster.com), the
word “blue” in adjectival form is:
1 : of the color whose hue is that of the clear sky : of the color blue (see blue entry 2 sense 1)
a blue jacket; her bright blue eyes; The house is blue with white shutters.
2a : bluish the blue haze of tobacco smoke
b : discolored by or as if by bruising blue with cold
c : bluish gray a blue cat
3a : low in spirits : melancholy has been feeling blue
b : marked by low spirits : depressing a blue funk; things looked blue
4 : wearing blue the blue team
5 of a woman : learned, intellectual … the ladies were very blue and well-informed …— W.
M. Thackeray
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extension of Opposer’s line of clothing. Furthermore, BLUE, as the first term in
Applicant’s mark “is most likely to be impressed upon the mind of a purchaser and
remembered.” See Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) ((“[It is] a matter of some importance since it 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, 73 USPQ2d at 1692 (“The presence of this strong
distinctive term as the first word in both parties’ marks renders the marks similar,
especially in light of the largely laudatory (and hence non-source identifying)
significance of the word ROYALE.”). Consumers are therefore more likely to attribute
source identifying features to the initial word BLUE in Applicant’s mark BLUE
INDUSTRY.
Overall, the marks are dissimilar in sound, appearance, connotation and
commercial impression. Accordingly, this DuPont factor weighs against finding a

6 : puritanical … a blue Sunday city …— James Street
7a : profane, indecent a blue movie
b : off-color, risqué blue jokes
8 music : of, relating to, or used in blues (see blues sense 3) a blue song
9 US politics : tending to support Democratic candidates or policies. As has become
increasingly clear over the past few general elections, with their red states and blue states,
an American Presidential campaign is no longer truly national.— Hendrik Hertzberg —
compare purple sense 3, red sense 5
The Board may take judicial notice of online dictionary definitions. Fed. R. Evid. 201 (Judicial
Notice of Adjudicative Facts). See, e.g., In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791
n.3 (TTAB 2002) (online dictionary definition where resource was also available in book form
- yes); Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385, 1393 (TTAB 1999)
(dictionary definitions judicially noticed although not made of record by either party).

Opposition No. 91234659
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likelihood of confusion.
4. The Similarity or Dissimilarity of the Goods and Services and the
Established, Likely-to-Continue Channels of Trade and Classes of
Consumers
Next, we compare the goods and services as they are identified in the involved
application and Opposer’s registrations. See Stone Lion, 110 USPQ2d at 1161;
Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990) and Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002). As noted above, both the application and seven out
of eight of Opposer’s pleaded registrations include pants, jeans, shirts, t-shirts,
jackets, blazers, vests, sweaters, shorts, belts, socks and hats. Thus, on their face,
Applicant’s and Opposer’s goods are in-part identical. Because the goods are in-part
identical and unrestricted as to trade channels, we must also presume that these
particular goods travel in the same ordinary trade and distribution channels and will
be marketed to the same potential consumers. See In re Viterra Inc., 101 USPQ2d at
1908 (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); Am. Lebanese Syrian Associated
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
We now turn to a comparison of the goods identified in the involved application
to the wholesale store, on-line wholesale store and on-line retail store services
featuring apparel listed in Opposer’s Registration No. 3407934. Because the
Opposition No. 91234659
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identification in the application has no restrictions on channels of trade, we must
presume that Applicant’s clothing travel in all channels of trade appropriate for such
goods, which would include the wholesale store, on-line wholesale store and on-line
retail store services featuring apparel. These services are therefore related to
Applicant’s goods as well. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1051-52 (Fed. Cir. 2018) (affirming Board’s finding that retail apparel stores and
clothing were related). Accordingly, these DuPont factors favor a finding of likelihood
of confusion.
5. Balancing the Factors
We must balance our findings that the goods are in-part identical and are
marketed in the same established, likely-to-continue channels of trade to the same
classes of consumers, and that the services are related, against the limited scope of
protection Opposer’s INDUSTRY formative marks are due, and their dissimilarity
when compared in their entireties to Applicant’s BLUE INDUSTRY mark in its
entirety. Weighing these factors, we find confusion unlikely. In reaching this
conclusion, we have carefully considered all of the evidence pertaining to the relevant
DuPont factors, as well as all of the parties’ arguments with respect thereto. “‘We are
not concerned with the mere theoretical possibilities of confusion, deception or
mistake or with de minimis situations but with the practicalities of the commercial
world, with which the trademark laws deal.’” Elec. Design & Sales Inc. v. Elec. Data
Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992) (quoting Witco
Chem. Co. v. Whitfield Chem. Co., Inc., 418 F.2d 1403, 164 USPQ 43, 44-45 (CCPA
1969)).
Opposition No. 91234659
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Accordingly, we find that although Opposer has proved its standing and priority,
it has failed to prove likelihood of confusion by a preponderance of the evidence.
Opposer’s Section 2(d) claim is therefore dismissed.
V. Dilution by Blurring
The Trademark Act provides a cause of action for the dilution of famous marks.
Sections 13 and 43(c) of the Trademark Act, 15 U.S.C. §§ 1063 and 1125(c) provide as
follows:
Subject to the principles of equity, the owner of a famous
mark that is distinctive, inherently or through acquired
distinctiveness, shall be entitled to an injunction against
another person who, at any time after the owner’s mark
has become famous, commences use of a mark or trade
name in commerce that is likely to cause dilution by
blurring or dilution by tarnishment of the famous mark,
regardless of the presence or absence of actual or likely
confusion, of competition, or of actual economic injury.
Opposer contends that Applicant’s BLUE INDUSTRY mark will “blur” the
distinctiveness of Opposer’s INDUSTRY marks. The Trademark Act defines dilution
by blurring as the “association arising from the similarity between a mark or trade
name and a famous mark that impairs the distinctiveness of the famous mark.”
Section 43(c)(2)(B) of the Trademark Act, 15 U.S.C. § 1125(c)(2)(B). It “occurs when a
substantial percentage of consumers, on seeing the junior party’s mark on its goods,
are immediately reminded of the famous mark and associate the junior party’s mark
with the owner of the famous mark, even if they do not believe that the goods emanate
from the famous mark’s owner.” N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114
USPQ2d 1497, 1509 (TTAB 2015). “Dilution diminishes the ‘selling power that a
Opposition No. 91234659
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distinctive mark or name with favorable associations has engendered for a product in
the mind of the consuming public.’” Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1182
(TTAB 2001) (internal citation omitted). The concern is that “the gradual whittling
away of distinctiveness will cause the trademark holder to suffer ‘death by a thousand
cuts.’” Nat’l Pork Bd. v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479, 1497
(TTAB 2010) (citation omitted). In deciding Opposer’s dilution claim, we consider the
following factors:
1 Whether Opposer’s marks are distinctive;
2. Whether Opposer’s marks are famous;
3. Whether Opposer’s marks became famous prior to
applicant’s date of constructive use; and
4. Whether Applicant’s mark is likely to cause dilution by
blurring the distinctiveness of Opposer’s mark.
See Coach Servs., 101 USPQ2d at 1723-24 (test for use-based application) and Nat’l
Pork Bd. v. Supreme Lobster and Seafood Co., 96 USPQ2d at 1494-95 (test for intent-
to-use application). Turning to the second requirement, a mark is defined under
§1125(c)(2)(A) as “famous” for dilution purposes —
… if it is widely recognized by the general consuming public
of the United States as a designation of source of the goods
or services of the mark’s owner. In determining whether a
mark possesses the requisite degree of recognition, the
court may consider all relevant factors, including the
following:
(i) The duration, extent, and geographic reach of
advertising and publicity of the mark, whether advertised
or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of
goods or services offered under the mark.
Opposition No. 91234659
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(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of
March 3, 1881, or the Act of February 20, 1905, or on the
principal register.
Opposer has the burden of establishing that its mark has become famous. “It is
well-established that dilution fame is difficult to prove.” Coach Servs., 101 USPQ2d
at 1724 (quoting Toro, 61 USPQ2d at 1180). As noted in the statute, fame for dilution
requires “widespread recognition by the general public.” Id. at 1725 (citing 15 U.S.C.
§ 1125(c)(2)(A)). Opposer must show that, when the general public encounters the
mark “in almost any context, it associates the term, at least initially, with the mark’s
owner.” Id., (quoting Toro, 61 USPQ2d at 1180). A famous mark is one that has
become a “household name.” Id. (internal citations omitted).
According to the testimony of Opposer’s CEO Mr. Rozenwald, “five of Opposer’s
marks have been in use for 20 years or more, another for 15 years and yet another for
12 years (only the most recent mark has been in use for less than 5 years).” Rozenwald
Affidavit ¶ 14; 20 TTABVUE (marked confidential). The trade channels for Opposer’s
apparel products are: a) independent sales representatives located across the United
States; b) third-party showrooms; c) a company showroom in New York City (which
city is central hub for the fashion trade in the United States); d) online offerings
through company and third party websites; e) displays via social media on Instagram,
Facebook, etc.; f) participation in annual and semi-annual trade shows; g) sales to
third-party intermediaries who then sell the goods to retailers; and h) sales to
retailers. Id. at ¶9. Opposer’s clothing items have been featured in publications such
as WOMEN’S HEALTH, SHAPE, MUSCLE MEMORY and MUSCLE & FITNESS. Id. at ¶11
Opposition No. 91234659
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and Exhibit C. From 2004 through 2017, apparel offered for sale in connection with
one of more of Opposer’s INDUSTRY marks has generated sales in in excess of $10
million in the United States (or an average of $769,231 per year) and there is
“significant inventory” for 2018 sales. Id. at ¶12 and Exhibit D.
We find that this evidence falls far short of proving that Opposer’s marks are
famous for dilution purposes. Compare Research in Motion Ltd. v. Defining Presence
Mktg. Grp., Inc. and Axel Ltd. Co., 102 USPQ2d 1187 (TTAB 2012) (“we are convinced
that the BLACKBERRY mark is famous based upon the ground breaking role of this
device in shaping the culture and technology of the early twenty-first century, the
incredible volume of sales, opposer’s extensive promotional and advertising
expenditures within the United States, and evidence of widespread media attention);
Nike Inc. v. Maher, 100 USPQ2d 1018 (TTAB 2011) (“the mark JUST DO IT is one of
the most famous advertising slogans created, and has been communicated ‘to wide
demographic segments, across gender, age and lifestyle categories.’”). As noted above,
we did not find that Opposer owns a family of INDUSTRY formative marks for
clothing. Opposer’s testimony fails to break down by each individual mark the
number of years of use and sales figures for clothing items sold under each mark. And
even if Opposer’s testimony had attributed these figures to one or more particular
marks, we would still find no fame for dilution purposes since there is no evidence
that any of Opposer’s marks have risen to the level of consumer recognition as a
household name.
Opposition No. 91234659
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Since Opposer has failed to establish the critical element of fame, we need not
consider the other factors. Accordingly, Opposer’s dilution by blurring claim is
dismissed.

Decision: The opposition is dismissed.