Rhythm Holding Limitedv.Rhythm Interactive, Inc.

Trademark Trial and Appeal Board

Dec 3, 2015

No. 91213331 (T.T.A.B. Dec. 3, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: December 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Rhythm Holding Limited

v.

Rhythm Interactive, Inc.
___

Opposition Nos. 91213331 and 91213378
___

John L. Welch of Wolf Greenfield & Sacks, P.C. and William E. Maguire of the Law
Office of William E. Maguire for Rhythm Holding Limited.

Christopher J. Day of the Law Office of Christopher Day for Rhythm Interactive,
Inc.
______

Before Cataldo, Shaw and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Rhythm Interactive, Inc. (“Applicant”) seeks registration of RHYTHM, in
standard characters1 and the form shown below
2

1 Application Serial No. 86001216, the subject of Opposition No. 91213378, filed July 2,
2013, based on an alleged intent to use the mark in commerce (the “‘216 Application”).
Opposition Nos. 91213331 and 91213378

2

for:
Advertising and marketing services; internet marketing
services, namely, promoting the goods and services of
others via online sweepstakes, developing online
promotional marketing campaigns for business, including
direct response promotional marketing campaigns,
marketing via electronic mail with permission,
dissemination of advertising matter online via electronic
marketing banners, and marketing media planning and
buying; business management of interactive promotional
marketing campaigns; business management of
promotional marketing campaigns via the Internet;
business services, namely, marketing campaign
measurement and analysis; online development of
marketing strategies for others in International Class 35.

In its notices of opposition, Rhythm Holding Limited (“Opposer”) alleges prior use
and registration of RHYTHM and RHYTHM LIVIN in standard characters, as
follows:
MARK REG. NO. GOODS
RHYTHM 3610417 backpacks, day packs in International Class 18;
clothing, namely, shirts, t-shirts, shorts; headgear,
namely, hats, caps in International Class 253
RHYTHM 3884199 Clothing, namely, footwear, athletic footwear,
slippers, casual footwear, sandals; bathing suits
and trunks, beachwear, swimwear, beach and
bathing coverups, bermuda shorts, pants, polo
shirts, slacks, sweatshirts, tank tops, tops,
trousers, knit shirts, caps; sleepwear, namely,
nightshirts, boxer shorts, undershirts in
International Class 254

2 Application Serial No. 85955722, the subject of Opposition No. 91213331, filed August 30,
2011 based on an alleged intent to use the mark in commerce (the “‘722 Application”).
3 Issued April 21, 2009; Section 8 Affidavit accepted, Section 15 Affidavit acknowledged
(the “‘417 Registration”).
4 Issued November 30, 2010 (the “‘199 Registration”).
Opposition Nos. 91213331 and 91213378

3

RHYTHM LIVIN 3890579 Clothing, namely, bathing suits and trunks,
beachwear, swimwear, T-shirts, shorts in
International Class 255

As its sole ground for opposition, Opposer alleges that use of Applicant’s marks
would be likely to cause confusion with Opposer’s marks. In its answers, Applicant
denies the salient allegations in the notices of Opposition.
The Record
The record consists of the pleadings, the files of the involved applications, and
Opposer’s notice of reliance on its discovery requests and Applicant’s responses
thereto, third-party registrations and Internet printouts. 13 TTABVue.6 Neither
party took any testimony. Applicant did not introduce any evidence.
Opposer’s Evidence
In an attempt to establish that the parties’ goods and services are related,
Opposer made of record the following third-party use-based registrations showing
that a single mark has been registered for goods such as those covered by Opposer’s
registrations on the one hand and services such as those covered by Applicant’s
involved applications on the other:
PITA GEAR in standard characters (Reg. No. 4665808) is
registered to Pita Pit for “clothing, namely, shirts,
outerwear …” on the one hand and “advertising services”
on the other.

5 Issued December 14, 2010 (the “‘579 Registration”).
6 Citations to the record reference TTABVue, the Board’s online docketing system, in the
parent case, Opposition No. 91213331. Specifically, the number preceding “TTABVue”
corresponds to the docket entry number(s), and any number(s) following “TTABVue” refer
to the page number(s) of the docket entry where the cited materials appear.
Opposition Nos. 91213331 and 91213378

4

BODY HIGH in standard characters (Reg. No. 4660635) is
registered to Body High Records LLC for “musical sound
and video recordings,” “clothing, namely, tops, bottoms
…,” “entertainment marketing services, namely,
marketing, promotion and advertising for recording and
performing artists …,” and “audio and video recording
and production services … provision of information
relating to live performances, road shows, live stage
events, theatrical performances, live music concerts and
audience participation in such events.”

OUTERBORO & Design (Reg. No. 4657134) is registered
to Wan Yuan Textiles Co. for “bathing trunks; belts;
clothing, namely, pullovers, shirts, Tee-shirts, trousers
…” on the one hand and “accounting; administrative
processing of purchase orders; advertising; demonstration
of good; organization of exhibitions for commercial or
advertising purposes; organization of fashion shows for
promotional purposes” on the other.

ATENCIÓN ATENCIÓN & Design (Reg. No. 4652044) is
registered to Atención Atención Inc. for “children’s
educational music CDs and DVDs … downloadable image
file containing artwork, text, audio, video, games and
Internet Web links relating to sporting and cultural
activities,” “babies’ pants; children’s and infant’s apparel
… T-shirts,” “advertising and promotional services …
retail store services featuring CDs, DVDs, stuffed toys,
toys, puppets, garments for children” and “education and
entertainment services, namely, ongoing television public
service announcements and ongoing television programs
in the field of children’s educational music and
entertainment show … production and distribution of
videos in the field of children’s educational music and
entertainment.”

STORIED RIVALS in standard characters (Reg. No.
4648732) is registered to Storied Rivals Sports Media,
LLC for “apparel, namely, t-shirts, sweatshirts …,”
“advertising services, namely, providing advertising space
in printed advertisements and signage at amateur sports
venues, on web sites, on web-based applications and
during highlight videos produced for amateur and high
school athletes and amateur and high school sports teams
Opposition Nos. 91213331 and 91213378

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as a means of underwriting the cost of production of said
highlight videos,” “video recording services, namely,
recording amateur and high school athletes and amateur
and high school sports teams; video production services”
and “hosting, creating and maintaining web sites for
amateur and high school athletes and amateur and high
school sports teams.”

TRILLYUN SKY in standard characters (Reg. No.
4648329) is registered to Kyle Merrill for “audio and video
recordings featuring music and artistic performances …,”
“baseball caps and hats … jackets; jerseys; pants; shirts”
and “entertainment marketing services, namely,
marketing, promotion and advertising for recording and
performing artists; management of performing and
recording artists; producing promotional videotapes, video
discs, and audio visual recordings.”

SEXPOT in standard characters (Reg. No. 4643757) is
registered to Sexpot, LLC for “bathing costumes; bathing
suits” and “advertising and marketing services provided
by means of indirect methods of marketing
communications, namely, social media, search engine
marketing, inquiry marketing, internet marketing, mobile
marketing, blogging and other forms of passive, sharable
or viral communications channels; on-line retail store
services featuring swim wear; on-line wholesale store
services featuring swim wear; providing a website used to
place on-line commercial orders in the field of swim wear
….”

WHO’S YOUR NANNY? in standard characters (Reg. No.
4639717) is registered to Sittercity Inc. for “sweatshirts”
and “promotion, advertising and marketing of on-line
websites.”

B BUDGET APPAREL & Design (Reg. No. 4528789) is
registered to Budget Company Limited for “anorak;
athletic apparel, namely, shirts, pants …” and
“advertisement and publicity services by television, radio,
internet radio, mail; advertisement for others on the
internet; advertising and advertisement services … retail
clothing boutiques; retail department store services; retail
store services featuring clothing.”
Opposition Nos. 91213331 and 91213378

6

THE CHIC ORGANIZATION in standard characters
(Reg. No. 4608803) is registered to Nile Rodgers for
“baseball caps and hats; blouses …,” “entertainment
marketing services, namely, marketing, promotion and
advertising for independent recording artists …
marketing services … promoting the services of others”
and “entertainment services by a musical artist and
producer, namely, musical composition for others and
production of musical sound recordings; entertainment
services in the nature of live musical performances ….”

WEALTH ULTD LOYALTY IS EASY & Design (Reg. No.
4604791) is registered to Wealth Unlimited, LLC for
“hats; scarfs; shirts,” “entertainment marketing services,
namely, marketing, promotion and advertising for
recording and performing artists” and “music production
services; music video production; production of audio
recording; video production services.”

ICON & Design (Reg. No. 4566959) is registered to
LeMans Corporation for “protective helmets … articles of
protective clothing, namely, back protectors, knee
protectors, elbow protectors, face shields …,” “trunks,
luggage, traveling bags, bags for sports gear, all-purpose
carrying bags and backpacks, all of the aforementioned
intended for use in connection with powersport vehicles,
namely, motorcycles, all-terrain vehicles and utility
terrain vehicles or the promotion of such products,”
“helmet accessories … clothing, namely, jackets, vests,
gloves, pants, t-shirts … all of the aforementioned
intended for use in connection with powersport vehicles,
namely, motorcycles, all-terrain vehicles and utility
terrain vehicles or the promotion of such product” and
“advertising and marketing in the field of powersports;
electronic catalog services for featuring motorcycles, all-
terrain vehicles and utility terrain vehicles riding gear,
sportswear and accessories.”

#JACQUES ELLIOTT in standard characters (Reg. No.
4574835) is registered to Briefcase, Vibes & Jacques LLC
for “footwear; jackets; shirts; ties,” “branding services,
namely, consulting, development, management and
marketing of brands for businesses and/or individuals …”
Opposition Nos. 91213331 and 91213378

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and “providing a website featuring blogs and non-
downloadable publications in the nature of articles in the
fields of fashion, style, lifestyle, culture, arts, advice, food
and drink.”

WSHH in standard characters (Reg. No. 4547760) is
registered to LO 337 IP Holding, LLC for “computer
application software for mobile phones, portable media
players, handheld computers …,” “clothing, namely, t-
shirts, shirts, shorts, dresses …,” “advertising and
directory services, namely, promoting the products and
services of others by providing a web page featuring links
to the websites or products of others,” “entertainment
services in the nature of providing online information,
news and commentary in the fields of hip hop, and urban
music and culture via a global computer network” and
“entertainment services, namely, providing a web site
featuring hip hop artist performances ….”

NEXUS APPAREL & Design (Reg. No. 4344990) is
registered to Trimark Sportswear Canada Inc. for
“clothing and sportswear …” and “wholesale
distributorships featuring apparel for use in promoting
businesses and organizations and for use in conjunction
with promotions and events staged or sponsored by that
business or organization; specialty merchandising
services, namely, promoting the goods and services of
others through the distribution of customized advertising
materials, namely, apparel for use in conjunction with
promotions and events staged or sponsored by that
business or organization.”

NEILSEN CLOTHING & Design (Reg. No. 4230376) is
registered to Neilsen Clothing LLC for “protective
clothing …,” “clothing, namely, jackets, trousers, pants
…” and “advertising and marketing services, namely,
promoting the goods and services of others; wholesale
store services in the fields of protective clothing, headgear
and waterproof safety clothing …”7

7 While Opposer also submitted information about Reg. No. 3351930 for the mark G-STAR
RAW & Design, Opposer’s evidence reveals that this mark was never used for advertising
services or any of the other services identified in International Class 35. This registration
has therefore been given no consideration.

Opposition Nos. 91213331 and 91213378

8

Opposer did not introduce any other evidence bearing on the relationship between
the parties’ goods and services or their channels of trade.
Standing and Priority
Opposer made its pleaded registrations of record by attaching to its notice of
opposition printouts from an Office database showing the registrations’ status and
title. 1 TTABVue 5-17. Trademark Rule 2.122(d). The registrations establish
Opposer’s standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000). And because Applicant has not
counterclaimed for cancellation of any of the registrations, priority is not at issue in
this proceeding with respect to the goods identified in the registrations. King Candy
Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974).
Likelihood of Confusion
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). In any likelihood of confusion analysis, two key 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
(CCPA 1976). Opposer bears the burden of establishing that there is a likelihood of
confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848.
Opposition Nos. 91213331 and 91213378

9

Obviously the marks in Opposer’s ‘417 and ‘199 Registrations are identical to the
mark in Applicant’s ‘216 Application. Furthermore, while the standard character
marks in Opposer’s ‘417 and ‘199 Registrations are not identical to the RHYTHM &
Design mark in Applicant’s ‘722 Application, these marks are highly similar.
Indeed, where, as here, a mark is comprised of both words and a design, the words
are normally accorded greater weight, because consumers are likely to remember
and use the word(s) to request the goods. In re Appetito Provisions Co. Inc., 3
USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the marks comprises both
a word and a design, then the word is normally accorded greater weight because it
would be used by purchasers to request the goods or services” and “because
applicant’s mark shares with registrant’s mark that element responsible for
creating its overall commercial impression, the marks are confusingly similar”); see
also, In re Viterra Inc., 671 F.2d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012)
(“the verbal portion of a word and design mark likely will be the dominant portion”).
Here, the word in Applicant’s ‘722 Application is identical to Opposer’s pleaded
RHYTHM mark. In short, this factor not only weighs heavily in favor of a finding of
likelihood of confusion, but also reduces the degree of similarity between the goods
and services that is required to support a finding of likelihood of confusion. In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re Opus
One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).
Opposition Nos. 91213331 and 91213378

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However, in this case in which Opposer pleads only likelihood of confusion,
rather than dilution, it does not eliminate the need for Opposer to establish a
relationship between the parties’ goods and services or channels of trade. Indeed, in
particular cases, the dissimilarity of the goods and services and their channels of
trade may be dispositive. See e.g. Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d
1333, 57 USPQ2d 1557, 15560 (Fed. Cir. 2001) (“While it must consider each [du
Pont] factor for which it has evidence, the Board may focus its analysis on
dispositive factors, such as similarity of the marks and relatedness of the goods.”);
The North Face Apparel Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217, 1233
(TTAB 2015) (“The difference in the goods and services is dispositive on the issue of
likelihood of confusion.”); In re HerbalScience Group LLC, 96 USPQ2d 1321, 1325
(TTAB 2010) (despite nearly identical marks, “there is no evidence of overlap
between the channels of trade for and purchasers of applicant’s and registrant’s
products. Accordingly, the examining attorney has failed to prove that applicant’s
mark, if used for its identified goods, is likely to cause confusion with the cited
registration”); Morgan Creek Productions Inc. v. Foria International Inc., 91
USPQ2d 1134, 1143 (TTAB 2009) (finding no likelihood of confusion despite nearly
identical marks, stating “the dissimilarity of the goods due to their nature, the
manners in which they are sold or distributed, and the circumstances under which
consumers would encounter them, is a dispositive factor in this case”).
The crux of this case is whether Opposer’s third-party registrations, alone,
establish that there is a relationship between the goods, services and channels of
Opposition Nos. 91213331 and 91213378

11

trade such that consumers would believe that Applicant’s services and Opposer’s
goods come from the same source. In evaluating Opposer’s evidence on this central
and potentially dispositive issue, we keep in mind that the parties’ goods and
services need not be identical or even competitive in order to support a finding of
likelihood of confusion. It is enough that the goods and services are related in some
manner or that the circumstances surrounding their marketing are such that they
would be likely to be seen by the same persons under circumstances which could
give rise, because of the marks used, to a mistaken belief that Applicant’s services
and Opposer’s goods originate from or are in some way associated with the same
source or that there is an association between the sources of the goods and services.
Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d
1423, 1432 (TTAB 1993); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991);
Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex
Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). In fact, the issue is
not whether purchasers would confuse the goods and services, but rather whether
there is a likelihood of confusion as to the source of the goods and services. In re
Rexel Inc., 223 USPQ 830, 832 (TTAB 1984).
Here, the only evidence of a relationship between the goods and services is 16
unexplained, uncorroborated third-party registrations. “Third-party registrations
which cover a number of differing goods and/or services, and which are based on use
in commerce, although not evidence that the marks shown therein are in use on a
Opposition Nos. 91213331 and 91213378

12

commercial scale or that the public is familiar with them, may nevertheless have
some probative value to the extent that they may serve to suggest that such goods
or services are of a type which may emanate from a single source.” In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998) (emphasis added); see
also In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009).
While 16 is not an insubstantial number of third-party registrations, and may
under certain circumstances be sufficient to establish a relationship, in this case
there is less to Opposer’s evidence than meets the eye. Specifically, the evidence is
naked. In other words, it is unaccompanied by any evidence that the marks in the
registrations are actually in use, that consumers have been exposed to them or that
the owners of the registrations are in fact the source of both clothes (or backpacks)
and advertising services for others offered under the same mark. See generally
Smith Brothers Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA
1973) (“But in the absence of any evidence showing the extent of use of any of such
marks or whether any of them are now in use, they provide no basis for saying that
the marks so registered have had, or may have, any effect at all on the public mind
so as to have a bearing on likelihood of confusion.”).
Furthermore, less than half of the cited third-party registrations cover only or
primarily clothes (or backpacks and daypacks) and advertising services. The
majority cover these goods and services as well as many other disparate goods and
services which are unrelated to either clothes or advertising. For example:
BODY HIGH also covers sound and video recordings and
providing information about road shows.
Opposition Nos. 91213331 and 91213378

13

OUTERBORO & Design also covers accounting, import-
export agencies, demonstration of good and
administrative processing of purchase orders.

ATENCIÓN ATENCIÓN & Design also covers children’s
educational music CDs and DVDs, downloadable image
files and retail stores featuring stuffed toys.

STORIED RIVALS also covers video production services
and hosting, creating and maintaining web sites for
amateur and high school athletes and amateur and high
school sports teams.

TRILLYUN SKY also covers audio and video recordings
featuring music and artistic performances and
management of performing and recording artists.

THE CHIC ORGANIZATION also covers entertainment
services by a musical artist and producer and live musical
performances.

WEALTH ULTD LOYALTY IS EASY & Design also
covers music and video production services.

ICON & Design also covers electronic catalog services
featuring motorcycles, all-terrain vehicles and utility
terrain vehicles riding gear, sportswear and accessories.

WSHH also covers entertainment services, namely,
providing a web site featuring audio clips, video clips,
musical performances, musical videos, film clips and
photographs in the fields of hip hop, urban music, and
entertainment news and culture and electronic publishing
services, namely, online publication of audio, video and
graphic works featuring sexual content.

Registrations such as these, which cover a wide variety of goods and services, do not
suggest, or are at least much less likely to suggest, that particular goods and
services within the identifications are of the type which may emanate from a single
source. In re Mucky Duck, 6 USPQ2d at 1470 n.6. See also Hi-Country Foods Corp.
Opposition Nos. 91213331 and 91213378

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v. Hi Country Beef Jerky, 4 USPQ2d 1169 (TTAB 1987) (dismissing opposition to
registration of HI-COUNTRY & Design for jerky and sausage based on prior use of
HI-COUNTRY for fruit juices, even though both products could be found in grocery
stores, convenience stores and supermarkets).
In fact, taking Opposer’s argument that its third-party registration evidence
establishes a relationship between clothing and advertising services to its logical
conclusion would yield absurd results. By Opposer’s logic, clothing is related not
only to advertising services but also to other products and services covered by the
registrations, such as notepads, accounting, on-line retail store services featuring
downloadable pre-recorded music and video and electronic publishing services,
namely, online publication of audio, video and graphic works featuring sexual
content. Similarly, by Opposer’s logic, advertising services are related not only to
clothing and backpacks, but also to mugs, on-line retail stores services featuring
swim wear, recording studio services, electronic catalog services for featuring
motorcycles and import-export agencies. As we stated under analogous
circumstances:
The PANASONIC registration illustrates another
limitation in the probative value of a number of the third-
party registrations at issue here. In addition to goods
concerned with lighting, the registration also identifies
automatic bread-making machines, rice cookers, various
types of cooking ovens, ventilation systems and air
conditioners. The diversity of the goods identified in this
registration diminishes the probative value in
establishing that any two items identified in the
registration are related. See In re Davey Products Pty Ltd,
92 USPQ2d 1198, 1203 (TTAB 2009). Without speculating
as to the other uses of the PANASONIC mark, we
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15

conclude that the diversity of goods identified in the
registration of record is sufficient to establish that
PANASONIC is a house mark, or the equivalent, used on
a wide variety of goods which are otherwise unrelated …
In sum, we find that the third-party registrations are not
probative of whether personal headlamps and electric
lighting fixtures are related.

In re Princeton Tectonics Inc., 95 USPQ2d 1509, 1511 (TTAB 2010).
Furthermore, the owners of some of the registrations appear from their names to
not be advertisers, marketers, or producers of clothing or backpacks and daypacks,
such as Body High Records, LLC, Pita Pit, Sittercity and Nile Rodgers (a well
known entertainer). Rather, it appears that these third-party trademark owners
offer clothing or promotional services which are merely incidental to their primary
products or services, and would likely be perceived as the source of their primary
products or services, not their incidental ones. Similarly, in addition to Mr. Rodgers,
several of the third-party registration owners appear to be primarily in the
entertainment industry, and to offer clothing or promotional services which are
merely ancillary to their entertainment products or services, such as the owners of
the BODY HIGH, ATENCIÓN ATENCIÓN & Design, STORIED RIVALS,
TRILLYN SKY and WEALTH ULTD LOYALTY IS EASY & Design registrations.
Other owners of the cited third-party registrations appear to be primarily clothing
companies, such as Wan Yuan Textiles Co., Trimark Sportswear Canada and
Neilsen Clothing, just as the marks B BUDGET APPAREL & Design, NEXUS
APPAREL & Design and NEILSEN CLOTHING appear to be used for clothing.
Clothing businesses, like other businesses, may be expected to market or advertise,
Opposition Nos. 91213331 and 91213378

16

but that does not mean that advertising and marketing services emanate from the
same source as each of the products or services being promoted under a particular
mark.
Without more information than Opposer has provided, such as, at the very least,
copies of the specimens supporting these third-party registrations, or printouts
showing how and for which products or services these marks are actually used, we
simply cannot find based on the registrations alone that advertising services are
related to clothing (or backpacks and daypacks). To the extent Opposer intends to
suggest that it might expand from the clothing and backpack business into
advertising, or that Applicant might expand into clothing or backpacks, we are not
persuaded. There is absolutely no evidence in support of either possibility, and the
third-party registrations do nothing to support such a suggestion. See In re
American Olean Tile Company, Inc., 1 USPQ2d 1823, 1826 (TTAB 1986) (“Also
unsupported is the Examining Attorney’s inference that purchasers of applicant’s
ceramic tile are apt to think that the registrant has expanded into the ceramic tile
business. Mere recognition of the greater amount of diversification and expansion of
manufacturing enterprises in our contemporary society is not enough support for
the proposition that purchasers are likely to assume from the use of the same
trademark that products so different in composition, process of manufacture and
purpose as ceramic tile and doors have the same source.”).
Furthermore, there is no evidence that any nonparty advertising or marketing
firms offer clothing or vice versa, that Opposer has ever offered anything other than
Opposition Nos. 91213331 and 91213378

17

clothing or that Applicant has ever offered anything other than advertising and
marketing services. Cf. The Black and Decker Mfg. Co. v. Big Yank Corp., 231
USPQ 484, 486-87 (TTAB 1986) (“This record also supports the fact that a number
of companies have licensed relatively well-known marks (for example, COCA-
COLA, CHAMPION, FIRESTONE, DUNLOP, GOODYEAR, etc.) in connection with
clothing … Also entitled to consideration is the fact that opposer has distributed a
number of items of apparel bearing the house mark BLACK & DECKER and the
product mark WORKMATE.”); Bridgestone Tire Co. Ltd. v. Bridgestone Trading Co.,
221 USPQ 1012, 1014 (TTAB 1984) (“we believe that opposer’s use of the mark on
tires, bicycles, tennis and golf balls, and on a wide variety of promotional items
including clothing, together with the established renown and long use of this
arbitrary mark demonstrate that purchasers, upon encountering applicant’s
BRIDGESTONE mark on shoes, are likely to mistakenly believe that this is another
product produced, sponsored or otherwise associated with opposer”).
In any event, even where an opposer establishes use of its mark on collateral
products, which Opposer in this case has not done, confusion may not be likely. For
example, in Amica Mutual Insurance Co. v. R.H. Cosmetics Corp., 204 USPQ 155
(TTAB 1979), we found no likelihood of confusion between AMICA for perfume and
the same mark for insurance services, despite the insurer’s proven use of its mark
for collateral products including cigarette lighters, key chains, pocket knives,
ballpoint pens and briefcases. As stated in that case:
Opposer and its predecessors have, over the years, been
involved directly and/or through subsidiary companies
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exclusively in rendering insurance and credit services
under the corporate symbol and trademark “AMICA”. In
fact, opposer's corporate charters do not authorize it to do
anything but provide insurance and credit services.
Opposer has made no effort through any of the means
available to it to expand or diversify its activities in any
other direction … It is apparent from the foregoing that
the parties are in different fields of endeavor and,
notwithstanding that both engage in a substantial mail
order business, there is no interplay or relationship
between them that can create a situation from which
confusion can arise. There are common customers, but in
a realistic appraisal of the situation it is doubtful that
opposer's policyholders, including the recipient of
opposer's promotional material, under the normal
conditions and circumstances surrounding the
distribution thereof, would equate opposer with goods of
the type offered by applicant which they would encounter
generally in an entirely different marketing milieu and
purchase with different motivations and considerations.
The differences between opposer's services and applicant's
goods more than offset the identity of the marks and serve
to negate any likelihood of confusion in trade.

Id. at 165-66.
Similarly, and perhaps more relevant to the facts of this case, we dismissed an
opposition to registration of the mark LITTLE PLUMBER for liquid drain opener
filed by the owner of the same mark for advertising services in the plumbing field.
As we stated in that case:
We see no reason why plumbing contractors would believe
that an advertising agency sells or sponsors a liquid drain
opener, or that a liquid drain opener manufacturer would
provide advertising services. Thus, even though opposer’s
services and applicant’s product are or can be marketed to
the same class of customers, namely plumbing
contractors, these services and goods are so different that
confusion is not likely even if they are marketed under
the same mark.

Opposition Nos. 91213331 and 91213378

19

Local Trademarks Inc. v. The Handy Boys Inc., 16 USPQ2d 1156, 1158 (TTAB
1990).
Turning back to the facts of and limited record in this case, it defies common
sense that clothes, backpacks and daypacks are related to advertising and
marketing services, or that their channels of trade overlap. Clothes are necessities,
made of fabric, intended to warm or cover individuals and sold in consumer outlets.
Backpacks and daypacks are consumer items made of various types of material,
intended to carry other items and also sold in consumer outlets. By sharp contrast,
advertising and marketing services are performed at the direction and for the
benefit of businesses, sold to purchasers who we assume to be careful and often
sophisticated and offered through channels of trade which bear no relationship to
clothes stores or stores which offer backpacks. Id. at 1158 (“the general public does
not purchase advertising services which are marketed to plumbing contractors”).
While it may be that some advertising agencies use t-shirts and other clothes to
promote themselves or even their clients, there is no evidence of this in the record of
this case, much less the type of evidence that would persuade us that the goods and
services are related.8 See Coach Services. Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (“On appeal, CSI concedes that the

8 Even if Opposer had presented evidence that some advertising agencies use or offer
clothes, or that some clothing companies offer advertising services, this would not be
particularly meaningful without evidence of the proportion of firms offering such disparate
products and services under the same mark. See In re Coors Brewing Co., 343 F.3d 1340, 68
USPQ2d 1059, 1063 (Fed. Cir. 2003) (despite some third-party registration evidence that
beer and restaurant services are related, confusion found unlikely, stating “even if all
brewpubs, microbreweries, and regional specialty breweries featured restaurant services,
those establishments would constitute only about 18 one-hundredths of one percent of all
restaurants, or fewer than one in 500”).
Opposition Nos. 91213331 and 91213378

20

parties’ products are not the same, but contends that there is some overlap between
their goods because it ‘has used the mark in connection with books and audio and
videotapes and in connection with tote bags, caps and shirts’ … This alleged overlap
does not help CSI’s position, however, particularly since there is no evidence in the
record regarding the sales or marketing of these items.”). Indeed, this would not
without more establish a relationship between the goods and services in any event.
See generally In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993)
(finding PHOENIX for leather sold in bulk unlikely to be confused with PHOENIX
in stylized form for, inter alia, briefcases and handbags, stating “[w]hat is missing
from the record is convincing evidence that finished products of this nature
commonly carry not only the trademark of their manufacturer but also the
trademark of the producer of the leather from which they are made … there is no
convincing evidence that the ultimate purchasers of registrant’s good are likely to
encounter applicant’s mark as well as registrant’s”).9 In fact, even where there is
some apparent relationship between goods and services, or where they are used
together, likelihood of confusion may not be found where the consuming public
would not perceive them as originating from the same source. Shen Mfg. Co. v. Ritz
Hotel, Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (finding no likelihood

9 Applicant’s deemed admission that it has used its mark on clothing and provided services
to clothing manufacturers, distributors or retailers, 13 TTABVue 6, is irrelevant. Octocom
Systems, Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990); see also Coach Services, 101 USPQ2d at 1722 (“although CSI argues that
the parties’ products are related because Triumph uses its marks on shirts, caps, and tote
bags, the Board correctly noted that Triumph’s applications do not seek to register its
COACH marks for those items, and likelihood of confusion must be based on the goods
identified in the application”).
Opposition Nos. 91213331 and 91213378

21

of confusion between identical marks used for cooking classes on the one hand and
kitchen textiles on the other, or between THE RITZ KIDS for gloves and RITZ for
barbeque mitts). Here, there is no apparent relationship between clothing and
advertising services, and clothing and advertising services are not used together.
The question we are faced with here is whether consumers “would consider the
goods [and services] to emanate from the same source.” Coach Services, 101
USPQ2d at 1723; 7-Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007).
Here the evidence does not establish that they would. The mere fact that consumers
of Applicant’s advertising services will at some point also purchase clothes (or
backpacks), or vice versa, is not a basis upon which to find that the channels of
trade or classes of consumers are the same. Coach Services, 101 USPQ2d at 1723;
Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1794 (TTAB
2002) (“We think it a fit subject for judicial notice that purchasers of computer
hardware and software also would be purchasers of, at least, footwear and apparel,
and perhaps sporting goods and equipment. There is nothing in the record, however,
to suggest that merely because the same consumer may purchase these items, such
consumer would consider the goods as likely to emanate from the same source or
have the same sponsorship.”).
Conclusion
Opposer’s limited, unsupported and uncorroborated evidence, consisting of 16
third-party registrations and nothing more, is insufficient to establish a
relationship between the parties’ goods and services, their channels of trade or,
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22

ultimately, that consumers would believe that the parties’ goods and services
emanate from the same source.10 This is dispositive.

Decision: The oppositions are dismissed.

10 See Coach Services, 101 USPQ2d at 1719 (“we review the Board’s findings as to the
DuPont factors for substantial evidence”).