Republic Technologies (NA), LLCv.Shenzhen Jieshibo Technology Co., Ltd.

Trademark Trial and Appeal Board

Jul 8, 2013

No. 91201640 (T.T.A.B. Jul. 8, 2013)

Mailed:
July 8, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Republic Technologies (NA), LLC

v.

Shenzhen Jieshibo Technology Co., Ltd.
_____

Opposition No. 91201640
to application Serial No. 85289774
filed on April 8, 2011
_____

Antony J. McShane and Katherine Dennis Nye of Neal, Gerber
& Eisenberg, LLP for Republic Technologies (NA), LLC.

Paulo A. De Almeida, Alex D. Patel and Michael W. Schroeder
of Patel & Almeida, P.C. for Shenzhen Jieshibo Technology
Co., Ltd.
______

Before Seeherman, Ritchie and Shaw, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Republic Technologies (NA), LLC has opposed the
application of Shenzhen Jieshibo Technology Co., Ltd. to
register the mark JSB in stylized form, as shown below, for
“ashtrays for smokers; cigarette cases; cigarette filters;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91201640
2
cigarettes; cigars; electronic cigarettes; filter tips;
lighters for smokers; matches; tobacco pipes.”1

In its initial application papers, applicant described the
mark as consisting “of the stylized word JSB with the
letter S in a square design.” Color is not claimed as a
feature of the mark, and applicant has stated that “the
wording JSB has no meaning in a foreign language.”
Opposer has brought this proceeding on the ground of
likelihood of confusion. In particular, opposer has
alleged that since long prior to applicant’s adoption or
use of its JSB mark, opposer has used the trademark JOB,
with the O displayed in a diamond shape, in connection with
smoker’s articles ¶ 2; that opposer owns registrations for
various JOB and JOB and design marks for cigarette papers
and other smoker’s articles ¶ 5; and that applicant’s mark
is likely to cause confusion or mistake or deception, in
that purchasers would be likely to believe that applicant’s
goods are opposer’s goods or are in some way sponsored or

1 Application Serial No. 85289774, filed April 8, 2011,
asserting first use on November 30, 2008 and first use in
commerce on October 31, 2009.

Opposition No. 91201640
3
approved by opposer ¶ 7. Applicant denied the salient
allegations of the notice of opposition in its answer.
By operation of the rules, the record includes the
pleadings and the file of the opposed application.2 The
record also includes the testimony, with exhibits, taken by
opposer of Seth Gold, its Vice President and General
Counsel, and of Steven Sandman, the Vice President Sales
and Marketing for Republic Tobacco, L.P., the U.S.
distributor for opposer’s JOB products. Opposer has made
of record, under notice of reliance, records from the
United States Patent and Trademark Office (USPTO) showing
opposition proceedings brought by opposer against third
parties’ trademark applications, as well as pleadings and a
judgment in a district court case; a printout of
applicant’s website; printouts from certain third-party
websites; applicant’s responses to opposer’s
interrogatories; and copies of opposer’s pleaded
registrations, showing status and title, taken from the
USPTO database, as follows:
MARK GOODS

2 It was therefore unnecessary for applicant to submit, under
notice of reliance, its trademark application.
Opposition No. 91201640
4
JOB (typed drawing) Cigarette papers3

Cigarette papers4

(The mark is lined for the
colors blue and red.)
Cigarette paper5

Cigarette tubes; injector
machines for filing cigarette
tubes and machines for
rolling cigarettes, all such
machines being for personal
use; filter tips for
cigarettes6
JOB (typed drawing) Cigarette tubes; injector
machines for filling
cigarette tubes and machines
for rolling cigarettes, all
such machines being for

3 Registration No. 73124, issued March 16, 1909; Section 8 and
15 affidavits accepted and received, respectively; renewed five
times.
4 Registration No. 1357088, issued August 27, 1985; Section 8
and 15 affidavits accepted and received, respectively; renewed.
5 Registration No. 1341384, issued June 11, 1985; Section 8 and
15 affidavits accepted and received, respectively; renewed.
6 Registration No. 2422747, issued January 23, 2001; Section 8
and 15 affidavits accepted and received, respectively; renewed.
Opposition No. 91201640
5
personal use; filter tips for
cigarettes7

Cigarette tubes; injector
machines for filling
cigarette tubes and machines
for rolling cigarettes, all
such machines being for
personal use; filter tips for
cigarettes8

Cigarette paper booklets,
cigarette tubes and pocket
machines for filling
cigarette tubes and pocket
machines for rolling
cigarettes, filter tips for
tobacco and cigarettes,
cigarette lighters not of
precious metal.9

Opposer also submitted under notice of reliance
applicant’s responses to opposer’s document production
requests. Such documents cannot be made of record by
notice of reliance. Trademark Rule 2.120(j)(3)(ii).
However, applicant treated them as being of record, see
applicant’s brief, p. 6, and therefore we deem them to have
been stipulated into the record. In addition, both opposer

7 Registration No. 2420646, issued January 16, 2001; Section 8
and 15 affidavits accepted and received, respectively; renewed.
8 Registration No. 2432868, issued March 6, 2001; Section 8 and
15 affidavits accepted and received, respectively; renewed.
9 Registration No. 2616450, issued September 10, 2002; Section 8
and 15 affidavits accepted and received, respectively; renewed.

Opposition No. 91201640
6
and applicant have submitted listings of search summaries
from the USPTO TESS database, e.g., opposer has submitted a
list of marks, with the serial number or registration
number, and their status as “live” or “dead” for marks that
include any of the goods identified in applicant’s
identification, and “cigarette paper,” while applicant has
submitted similar lists showing the number of live,
registered trademarks for the various items in its and
opposer’s identifications of goods, as well as the number
of registered trademarks that include in their
identifications some but not all of the goods identified in
applicant’s application, e.g., “electronic cigarettes and
cigars.” Search summary results from the USPTO’s
electronic database are not considered to be official
records that may be submitted pursuant to Trademark Rule
2.122(e). See Lebanon Seaboard Corp. v. R&R Turf Supply
Inc., 101 USPQ2d 1826, 1829 n.8 (TTAB 2012); Calypso
Technology Inc. v. Calypso Capital Management LP, 100
USPQ2d 1213, 1217 (TTAB 2011). However, because both
parties have submitted these lists and have treated them as
being of record, we will consider them to have been
stipulated into the record. The search summaries, though,
are not evidence of the third-party registrations, and
therefore their probative value is very limited.
Opposition No. 91201640
7
Applicant has made of record, by notice of reliance,
printouts from third-party websites, certain third-party
registrations, and Section 8 and Section 15 affidavits
filed by a third party in support of its registrations.
Both parties have filed trial briefs, and opposer has
filed a reply brief.
Opposer sells products that are for roll-your-own and
make-your-own cigarettes. These products are sold under
various versions of the “J◊B” trademark. The trademark was
adopted in 1838 by Jean Bardou, who “invented” the
cigarette paper business, and had a series of factories in
France. Gold, p. 20. The mark was derived from his
initials, JB, which he separated by a diamond design.
Gold, p. 19. Over time, the mark has been referred to as
JOB, but the most prominent iteration of the mark, as shown
by the exhibits of record, is the design form show below
(hereafter J◊B Oval Design):

The marks and business remained in the Bardou family for
many generations, but in 1986 Societé Job was acquired by
the Bolloré Group, which then sold it to opposer’s
Opposition No. 91201640
8
predecessor and current licensee and master distributor in
the United States, Republic Tobacco LP. Gold, pp. 20-21.
Opposer’s goods are sold by its master distributor to
wholesale distributors, such as Eby-Brown and Core-Mark,
which in turn sell the products to retailers such as
grocery stores, convenience stores, mini-marts, gas
stations, drug stores, dollar stores, tobacco stores, and
tobacco outlets, as well as warehouse stores such as Sam’s
Club and Costco. Sandman, pp. 25, 29. Some of the
distributors also have their own retail stores, such as
Admiral Petroleum and Kwik Trip. Sandman, p. 26.
The only information that we have about applicant
comes from its responses to opposer’s interrogatories and
document production requests, which were submitted by
opposer. According to applicant’s response to
Interrogatory No. 4, the only product that it has sold
under the applied-for mark in the United States is
electronic cigarettes; it sold 7,000 units of such product
in 2011, and 2096 units in 2012 (the interrogatory response
was signed on May 30, 2012).10 It sells its electronic

10 We note that applicant’s application was based on the claim
that the mark was used in commerce in the United States, and that
the identification of goods lists many goods in addition to
electronic cigarettes. However, opposer has not opposed the
application on the ground of non-use or fraud; if applicant were
to ultimately prevail in this proceeding, the application will be
Opposition No. 91201640
9
cigarettes at “exhibitions, online sales, etc.,” response
to Interrogatory No. 4, and advertises or promotes them
through the internet, magazines and trade fairs. Response
to Interrogatory No. 5. Applicant adopted the mark because
“JSB is the abbreviation of part of Applicant’s company
name JieShiBo, and the design of the letter S is to
resemble the smoke of cigarettes.” Response to
Interrogatory No. 12.
Because opposer has made of record its pleaded
registrations, it has established its standing. Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed.
Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Further, in view
of these registrations, opposer’s priority is not in
issue.11 King Candy Company v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Moreover, opposer
has presented testimony that it has used various
permutations of the JOB brand, including the J◊B Oval
Design, for cigarette paper and roll-your-own tobacco
accessories for many years prior to any dates on which

remanded to the examining attorney to consider whether a refusal
of registration should be made on the basis of non-use.
11 We note that certain additional registrations of opposer were
introduced during the testimony of Mr. Gold; however, because Mr.
Gold did not testify as to the status of these registrations,
opposer cannot rely on them as a basis for its priority and
likelihood of confusion claim.
Opposition No. 91201640
10
applicant can rely.12 With respect to its electronic
cigarettes, the earliest date of use applicant has shown in
the United States is an invoice dated December 11, 2008 for
a sale of a “Marlboro Medium Atomized device.” Document
Production Request exhibit 4. With respect to the other
goods identified in the application, applicant has not
provided any evidence of use, and therefore the application
filing date of April 8, 2011 must be treated as its
earliest date of use for priority purposes. Joel Gott
Wines LLC v. Rehoboth Von Gott Inc., __USPQ2s__, Op.
91197658 (TTAB June 26, 2013).
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003).
We turn first to a consideration of the strength of
opposer’s mark. According to the testimony of Steven
Sandman, the senior vice president of sales and marketing

12 For example, opposer has presented testimony that this mark
was used on 1.5 “slim” cigarette papers by 2004 (Gold test. p.
24, ex. 6); on 1.5 cigarette papers “for decades” (Gold test. p.
24, ex. 7) and for 1 ¼ cigarette papers since at least 2002.
(Gold test. p. 29, ex. 12).
Opposition No. 91201640
11
for the master distributor of opposer’s products, opposer’s
J◊B brand is “one of the most well-known brands of
cigarette papers in the United States.” p. 7.13 It is the
largest selling cigarette rolling paper booklet in the
United States, both by volume and by dollars. Gold, p. 29.
The product is sold by all the leading distributors in the
United States, and in the leading retail establishments, as
well as by the vast majority of the 200,000 retail outlets
that sell such products. Sandman, pp. 7, 28.
Because of the long usage of the J◊B mark, both with
and without the oval background, and the evidence of market
share and penetration, and sales and promotion,14 we find
that J◊B is a strong mark that has developed recognition
among consumers of make-your-own/roll-your-own cigarettes.
Applicant has attempted to show that the scope of
protection of opposer’s mark should be limited by pointing
to third-party three-letter marks in the field of smokers’

13 In their testimony, the witnesses generally do not make a
distinction between the various versions of opposer’s marks when
they refer to the “JOB brand”; as noted, in the exhibits the most
prominent use of the mark is as the J◊B Oval Design. Because
there is no real distinction between J◊B per se and J◊B on a
background carrier oval, unless otherwise specified our
references to the J◊B brand include the J◊B Oval Design.

14 Opposer has submitted its sales and promotion figures under
seal, and therefore we will not set them forth in this opinion.

Opposition No. 91201640
12
articles. Applicant has made of record the following
third-party registrations:
JPB and JPB enclosed in an oval, both for cigars
(Registration Nos. 1549434 and 1548569)

J M L 1902 for cigars (Registration No. 3817117)

JFC for cigars (Registration No. 3455134)

JBR enclosed in a rounded square, for pipe
tobacco, cigars, smoking pipes and cigarettes
(Registration No. 1716303)

JPS and JPS stylized for pipe tobacco
(Registration Nos. 4032341 and 4080314).

As applicant is aware, third-party registrations are
not evidence that the marks shown therein are in use, or
that the public is familiar with them. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Applicant
has attempted to overcome this problem by submitting copies
of the Section 8 and 9 declarations of use filed in
connection with the registrations for the JPB marks.
However, just as we will not accept the declaration filed
in a third-party application as proof that the mark was in
use on the filing date of the application, we will not
accept the declaration in a Section 8 or 9 filing in a
third-party registration as proof of use of the mark. We
also point out that, even if a declaration were proof of
use, the declarations for these registrations were filed in
2009, and therefore would not in any case be proof of use
Opposition No. 91201640
13
of the marks at the time of trial in this proceeding
(applicant’s notice of reliance was submitted on January
17, 2013).
Applicant has also submitted excerpts from several
websites in an attempt to prove use of the marks that are
the subject of the third-party registrations. With respect
to the website evidence of use of the mark JPS, opposer’s
witness Steven Sandman has explained that JPS pipe tobacco
is manufactured by Top Tobacco, and distributed by Republic
Tobacco LP, i.e., the same company that distributes
opposer’s J◊B cigarette papers. p. 65. Mr. Gold has also
testified that TOP is one of the brands that opposer owns.
p. 7. In view thereof, we do not view the JPS mark as an
adverse third-party use. As for third-party use of the JFC
and JML marks, the website www.shopjfctobacco.com shows the
trade name, JFC Tobacco Corp., and a cigarette rolling
paper identified as “JFC 1 1/4 Long.” The website
www.tradicion.com/Jose-M-Losa-JML-1902.html, along with the
website www.cubancrafters.com/brand/La-Tradicion-Cubana-
JML.html, feature cigars under the mark LA TRADICION CUBANA
JML and LA TRADICION CUBANA-JML 1902. Mr. Sandman has
testified that he has never seen a cigar sold under any JML
designation, or cigarette papers bearing the mark JFC. p.
62-64. He further testified that he would be aware of any
Opposition No. 91201640
14
cigarette papers that have been sold in the last number of
years. p. 64. In view of his position as senior vice
president of sales and marketing, and his testimony as to
the information that he is given as a result of that
position, we consider the use of the two third-party
trademarks, JFC and JML 1902, to be relatively limited, and
not to have engendered a great deal of public exposure. As
a result, we find that opposer’s mark J◊B Oval Design is
entitled to a broad scope of protection. We would add that
even if we treated the evidence as showing significant
third-party use of the JPS, JFC and JML marks, these marks
share with opposer’s mark only the first letter J, while,
as discussed below, applicant’s mark is much more similar
to opposer’s mark. Thus, even if the scope of protection
of opposer’s mark were limited with respect to “J” three-
letter marks, it must still be treated as a strong mark in
terms of preventing the use and registration of marks that
include the letters J and B.
We turn next to the du Pont factor of the similarity
of the goods. Applicant would have us limit our analysis
to electronic cigarettes, which it states is its primary
product, and opposer’s goods, which it characterizes as
“roll-your-own tobacco” products. Applicant’s brief, p.
15. However, applicant’s goods are not just electronic
Opposition No. 91201640
15
cigarettes, its application includes in the identification
“ashtrays for smokers; cigarette cases; cigarette filters;
cigarettes; cigars; filter tips; lighters for smokers;
matches; and tobacco pipes.” Even applicant “does not
dispute that some of the goods listed in its application,
namely, ‘ashtrays for smokers’, ‘lighters for smokers’,
‘cigarette lighters’, ‘cigarette filters’ and ‘filter tips’
are related to Opposer’s ‘roll your own’ goods, namely,
‘cigarette papers’, ‘cigarette tubes’, ‘injector machines’,
and ‘filter tips’, and ‘machines for rolling cigarettes’….”
Id. Moreover, the “filter tips for cigarettes” identified
in four of opposer’s registrations must be deemed legally
identical to the “filter tips” identified in applicant’s
application. Likelihood of confusion must be found if
there is likely to be confusion with respect to any item
that comes within the identification of goods in the
application. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Thus,
we need not consider applicant’s arguments as to why its
electronic cigarettes are different from opposer’s goods.
Because of the legal identity of the filter tips, and the
relatedness of the other items,15 we find that this du Pont
factor favors a finding of likelihood of confusion.16

15 At page 15 of its brief applicant appears to argue that, even
Opposition No. 91201640
16
To the extent that the goods are identical in part, we
must deem them to be sold in the same channels of trade.
In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
Opposer has also presented testimony and evidence that the
goods identified in applicant’s application (including
electronic cigarettes, see Sandman p. 36, ex 2, p. 40, ex.
4) are sold to the same wholesalers to which opposer’s J◊B
products are sold, and that these products are in turn sold
to the same convenience stores, drug stores, gas stations,
mini-marts, tobacco stores and outlets and warehouse stores

though it has admitted that some of its goods are related to
opposer’s goods, opposer must still show “something more” for the
Board to find that the goods are related. In support of this
position, applicant relies on cases which state that it is not
sufficient to find food or beverages and restaurant services
related simply because food and beverages are served in
restaurants, but that something more must be shown. That is not
the case, however, with smokers’ articles. Applicant has
admitted that most of its goods are related to opposer’s goods,
and we concur.

16 Applicant has suggested, at page 18 of its brief, that in the
event the Board finds the marks to be similar and the goods
related, “the Board limit its finding of likelihood of confusion
to apply only to applicant’s goods that are not electronic
cigarettes.” Applicant is well aware, as noted at footnote 1 of
its brief, that a motion to amend an application should be made
prior to trial. Nevertheless, applicant has made what is in
effect a request to amend its identification, not prior to trial
in a motion which opposer could oppose, but “buried” within its
trial brief. Applicant somehow believes that it would have been
unfair if applicant were required to timely file a motion to
amend prior to the Board’s determination as to whether it could
register its mark for all of its goods. Needless to say, what we
consider unfair is the suggestion that applicant could wait until
the last minute, after opposer had presented its case believing
that applicant’s goods included all of the items in the
identification, and then attempt to delete any items for which
opposer was successful in showing a likelihood of confusion.
Applicant’s “request” is denied.
Opposition No. 91201640
17
that sell opposer’s J◊B cigarette papers. Sandman, pp. 30-
31. Further, items such as ashtrays, cigarette cases,
cigarette filters, cigarette lighters, matches and
electronic cigarettes would be sold in retail stores in the
same OPT “other tobacco products” section as cigarette
papers. Sandman, pp. 57-59. In addition, opposer has
presented evidence that retailers, such as the Daily’s and
Circle-K convenience store chains, sell both opposer’s J◊B-
branded cigarette papers and electronic cigarettes.
Sandman, pp. 45-46, 50, ex. 10, 11, 12.
Moreover, because, at the very least, ashtrays for
smokers, lighters for smokers and matches would be used by
consumers who would purchase cigarette papers and the other
“roll-your-own” tobacco products identified in opposer’s
registrations, the parties’ goods must be deemed to be sold
to the same classes of consumers.
The du Pont factor of the similarity of the channels
of trade favors opposer.
We turn next to a consideration of the similarity of
the marks, keeping in mind that when marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v.
Opposition No. 91201640
18
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). Applicant’s mark is

while, in our view, the closest of opposer’s marks for
cigarette papers, and the mark which opposer uses most
prominently, is

depicted in the colors red and blue.
The nature of stylized letter marks is that they
partake of both visual and oral indicia, and both must be
weighed in the context in which they occur. In re
Electrolyte Laboratories Inc., 929 F.2d 645, 16 USPQ 1239
(Fed. Cir. 1990). In this case, both marks are very
similar in appearance, in that they consist of the same
initial letter, J, and the same final letter, B, with a
stylized element separating these two letters. We realize
that there are some differences in the middle elements of
the marks, but we do not consider them to be sufficient to
distinguish the marks. Although the middle element in
Opposition No. 91201640
19
applicant’s mark is supposed to be the letter S, it is not
clear that consumers would recognize it as such. Even
applicant admits that the letter is designed to suggest a
wisp of smoke. As a result, consumers may view the mark as
being just the letters J and B with an abstract design
separating the two letters. We understand that applicant,
whose name is Shenzhen Jieshibo Technology Co., Ltd., chose
its mark to reference the three syllables of Jieshibo, but
it is not clear that consumers would make this same
connection, particularly since most acronyms for corporate
names are formed from the initial letters of the individual
words in the name, e.g., SJT for Shenzhen Jieshibo
Technology, rather than formed from the first letter of the
syllables within one of the words. As for opposer’s mark,
it was created to reflect the initials of its predecessor’s
founder, Jean Bardou. Again, we recognize that over time
opposer’s mark came to be referred to as JOB. However, we
find that the differences in sound and meaning that would
be ascribed to the mark if referred to in this way do not
outweigh the similarity in appearance. Because of the
restrictions on the advertising of tobacco and tobacco-
related products, Gold pp. 11-12, 85, consumers today will
not be exposed to television and radio advertising and
therefore are not likely to hear the mark pronounced. As a
Opposition No. 91201640
20
result, many consumers of both opposer’s and applicant’s
products will not have had exposure to their marks in
spoken form and will instead likely view and understand the
meaning of the marks as simply the letters J and B, and
pronounce both of the marks as those individual letters.
Therefore, we find that the marks overall convey the
same commercial impression. “It must be remembered that
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 Services Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012), quoting Leading Jewelers Guild, Inc. v.
LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007). In
this case, the overall similarity of the commercial
impression of the marks is particularly likely to lead to
such an assumption because both parties’ goods are
inexpensive and likely to be purchased on impulse, and
without careful examination of the marks. As the Court
stated in Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed.
Cir. 1984), in considering likelihood of confusion when the
marks were used on tea, “Both products are relatively
Opposition No. 91201640
21
inexpensive, comestible goods subject to frequent
replacement. Purchasers of such products have been held to
a lesser standard of purchasing care.” The same principle
applies in the present situation, as items such as
cigarettes, matches and cigarette filters are inexpensive
and are frequently replaced. The likelihood that consumers
will confuse the marks is also heightened by the strength
of opposer’s mark. Accordingly, we find that the du Pont
factors of the similarity of the marks and the conditions
of purchase favor opposer.
We have limited our discussion to those du Pont
factors discussed by the parties. To the extent that any
other factors are relevant, we treat them as neutral.
In summary, because the goods are in part identical
and in part related, because opposer’s mark is strong, and
because some of the goods are subject to impulse purchase,
we find that the overall similarity of applicant’s mark to
opposer’s J◊B Oval Design is likely to cause confusion. We
must also remember that applicant had a duty to select a
mark which was sufficiently distinguishable from opposer’s
mark, since opposer had used its mark for decades prior to
applicant’s adoption of its mark. It is a general
principle of trademark law that later users have a duty to
avoid confusion with existing users. First International
Opposition No. 91201640
22
Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1633 (TTAB
1988); Floralife, Inc. v. Floraline International Inc., 225
USPQ 683 (TTAB 1984).
Decision: The opposition is sustained.17

17 As noted in footnote 10, should applicant appeal this decision
and ultimately prevail, the application will be remanded to the
examining attorney pursuant to Trademark Rule 2.131 to consider
whether the application should be refused on the basis that the
mark has not been used on all of the goods identified in this
use-based application.