Rogue Apparel Group, Inc.v.Haute Rogue Inc.

Trademark Trial and Appeal Board

Jun 2, 2020

91227424 (T.T.A.B. Jun. 2, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: June 2, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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Rogue Apparel Group, Inc.1
v.
Haute Rogue Inc.

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Opposition No. 91227424
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Steven L. Baker, John M. Rannells of Baker and Rannells PA, for Rogue Apparel
Group, Inc.

Farah Bhatti, of Buchalter, P.C., for Haute Rogue Inc.

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Before Mermelstein, Goodman and Heasley,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Haute Rogue Inc. (Applicant) filed an application to register the mark HAUTE
ROGUE (standard characters) for the following Class 25 goods: “Business wear,

1 The opposition was filed by joint Opposers Excelled Sheepskin & Leather Coat Corp.,
(Excelled) and Rogue Apparel Group, Inc. (Rogue Apparel) who pleaded joint ownership in
ROGUE and ROGUE-formative registrations. 1, 8 TTABVUE. Excelled transferred all right,
title and interest in the registrations to Rogue Apparel on February 21, 2017. See Chase
Ahders testimony, ¶ 6, 31 TTABVUE 3. Accordingly, the caption has been updated to reflect
Rogue Apparel Group Inc. as the sole party plaintiff.
Opposition No. 91227424
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namely, suits, jackets, trousers, blazers, blouses, shirts, skirts, dresses and footwear;
Men’s and women’s jackets, coats, trousers, vests; Skirts and dresses; Women’s
clothing, namely, shirts, dresses, skirts, blouses.”2
Rogue Apparel Group, Inc. (Opposer) opposes registration of Applicant’s HAUTE
ROGUE mark on the grounds of likelihood of confusion, dilution and non-use.3
Because Opposer did not argue dilution or non-use in its brief, those claims are
waived. See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750,
1753 (TTAB 2013) (petitioner’s pleaded descriptiveness and geographical
descriptiveness claims not argued in brief deemed waived), aff’d, 565 Fed. Appx. 900
(Fed. Cir. 2014) (mem.).
Opposer has pleaded ownership of previously used and registered ROGUE and
ROGUE-formative marks, as well as one pending ROGUE application, and has placed
in evidence the following registrations:
Registration No. 3260143 for the mark ROGUE (standard character) for Class 25:
“footwear”;

Registration No. 3945523 for the mark ROGUE STATE (standard character) for
Class 25: “men’s, ladies’ and children’s clothing, namely, coats, jackets, vests, shirts
and pants”;

Registration No. 3346559 for the mark ROGUE (standard character) for Class 25:
“men’s, ladies’ clothing, namely, coats, jackets, vests, shirts and pants; children’s
clothing, namely, coats, jackets, vests, shirts”;

2 Application Serial No. 86496002 was filed on January 6, 2015 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging a date of first use and a date of first use in
commerce of May 5, 2014.
References to the briefs and the record refer to the Board’s TTABVUE docket system.
3 Opposer also alleged claims of false suggestion of a connection and fraud in original, first
amended, and second amended notices of opposition, but the Board dismissed those claims
as insufficient after allowing Opposer to replead them. 29 TTABVUE.
Opposition No. 91227424
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Registration No. 2790074 for the mark ROGUE LEATHER BY REILLY OLMES
(typed, “leather” disclaimed) for Class 25: Men’s, women’s and children’s clothing
made in whole or in substantial part of leather, namely, coats, vests, shirts and
pants”;

Registration No. 2815985 for the mark REILLY OLMES ROGUE LEATHER (typed,
“leather” disclaimed) for Class 25: “Men’s, women’s and children’s clothing made in
whole or in substantial part of leather, namely, coats, vests, and pants.”

Applicant did not submit any evidence. After the Board issued an order to show
cause, Opposer submitted its brief, with a motion to reopen, which the Board granted.
Applicant did not submit a brief.
I. The Record
The record consists of Opposer’s pleaded registrations, listed above, and the
declaration testimony of Chase Ahders, (Ahders testimony), the President of Rogue
Apparel Group, Inc., with accompanying exhibits.
II. Standing
Standing is a threshold issue 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).
To establish standing in an opposition or cancellation proceeding, a plaintiff must
prove that it has a “real interest” in the proceeding and a “reasonable basis” for its
belief of damage. See Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). A plaintiff must maintain its
standing throughout the proceeding and prove its standing at the time of trial.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000).
Opposition No. 91227424
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The current status and title of five of the pleaded registrations, submitted under
notice of reliance, is shown by printouts from the Office’s Trademark Electronic
Search System (TESS) and Trademark Status Document Retrieval (TSDR) electronic
databases. Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1). See Cunningham v.
Laser Golf Corp., 55 USPQ2d at 1844. These printouts reflect that Opposer is the sole
owner of the pleaded registrations, and that they are in force. See also Ahders
testimony, ¶ 8, 31 TTABVUE 4 (“According to o[u]r records and the USPTO database
records, each of the registrations identified above are in good standing and are in the
name of Opposer, Rogue Apparel Group, Inc.”).
Therefore, Opposer has established its standing.
III. Section 2(d) claim
We now consider the Section 2(d) claim. We focus on Opposer’s Registration Nos.
3346559 and 3260143 (both for the mark ROGUE), pleaded and made of record by
notice of reliance. 30 TTABVUE. These registrations present the closest question of
similarity with Applicant’s mark. If we find a likelihood of confusion as to these
registrations, then we need not find it as to the others that are in the record. On the
other hand, if we do not reach that conclusion, we would not find it as to the other
registrations of record either. See Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98
USPQ2d 1066, 1073 n.14 (TTAB 2011) (limiting analysis to those registrations most
likely to support a finding of likelihood of confusion); In re Max Capital Grp. Ltd., 93
USPQ2d 1243, 1245 (TTAB 2010) (same).
Opposition No. 91227424
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A. Priority
Because Opposer’s pleaded Registration Nos. 3346559 and 3260143 are of record
and no counterclaim has been asserted against them, priority is not at issue with
respect to the marks and goods identified in these registrations. King Candy, Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
B. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all 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, 567 (CCPA 1973)
(“Dupont”). “Not all of the DuPont factors are relevant to every case, and only factors
of significance to the particular mark need be considered.” See Cai v. Diamond Hong,
Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). But the thirteen
DuPont factors “‘must be considered’ when [they] are of record.” In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie
Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
In every Section 2(d) case, two key factors are the similarity or dissimilarity of the
marks and the goods or services. 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 [or services] and differences in the marks.”).
Opposition No. 91227424
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C. Similarity or Dissimilarity of the Goods, Trade Channels and Classes of
Purchasers
We now consider the second, third, and fourth DuPont factors, i.e., the similarities
or differences between the parties’ goods, as well as between trade channels and
classes of purchasers of the parties’ goods. DuPont, 177 USPQ at 567.
We turn first to the second DuPont factor. It is settled that in making our
determination regarding the relatedness of the parties’ goods, we must look to the
goods as identified in Applicant’s application and Opposer’s registrations. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161-63 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Comp. Servs., Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
As noted above, Applicant’s goods are “Business wear, namely, suits, jackets,
trousers, blazers, blouses, shirts, skirts, dresses and footwear; Men’s and women’s
jackets, coats, trousers, vests; Skirts and dresses; Women’s clothing, namely, shirts,
dresses, skirts, blouses.” The goods identified in Opposer’s Registration No. 3346559
are “men’s, ladies’ clothing, namely, coats, jackets, vests, shirts and pants; children’s
clothing, namely, coats, jackets, vests, shirts.”
Applicant’s men’s and women’s coats, jackets, vests and women’s shirts are
identical to Opposer’s men’s and ladies’ jackets, coats, and vests, and ladies’ shirts.
In addition, Opposer’s men’s and ladies’ pants in the identification are broad enough
to encompass Applicant’s men’s and women’s trousers. See Ahders testimony, ¶ 10,
31 TTABVUE 5 (stating that there are identical or substantially identical goods in
Applicant’s application and Opposer’s registrations). The goods in Registration No.
Opposition No. 91227424
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3260143 are “footwear,” which is broad enough to encompass the more narrowly
identified “business wear” footwear in Applicant’s application. See In re Solid State
Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018) (where the goods in an
application or registration are broadly described, they are deemed to encompass all
the goods of the nature and type described therein); Sw. Mgmt., Inc. v. Ocinomled,
Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015), aff’d mem., 652 Fed. Appx. 971 (Fed. Cir.
2016) (same).
Accordingly, the goods in Applicant’s application are identical in part or legally
identical to the goods in Opposer’s Registration Nos. 3346559 and 3260143.
As to channels of trade or classes of purchasers, there are no limitations in
Applicant’s involved application or Opposer’s Registration Nos. 3346559 and
3260143, and we presume that Applicant and Opposer’s in part identical and legally
identical goods move in all usual channels of trade for such goods and are available
to all potential classes of purchasers, including ordinary purchasers. See Citigroup
Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); Am. Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101
USPQ2d 1022, 1028 (TTAB 2011). Such trade channels would include department
stores. The Ahders testimony indicates that Rogue Apparel’s goods are offered in
“department stores, specialty stores, licensee’s stores, over the Internet via Rogue
websites and licensee websites.” ¶ 13, 31 TTABVUE 5. Finally, the parties’ respective
goods are ordinary consumer items which would be purchased without a great deal
of care, by ordinary consumers.
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These findings under the second, third and fourth DuPont factors all weigh
significantly in favor of finding a likelihood of confusion.
C. Similarity or Dissimilarity of the Marks

We compare the parties’ marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. See Palm Bay Imp., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). The test, under the first DuPont factor, is not whether the marks
can be distinguished when subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their overall commercial impression
that confusion as to the source of the goods or services offered under the respective
marks is likely to result. Coach Servs. 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)).
Moreover, in cases such as this, where Applicant’s goods are identical in part or
legally identical in part to Opposer’s goods, the degree of similarity between the
marks that is required to support a finding of likelihood of confusion is less than it
would be if the goods were not identical. Century 21 Real Estate Corp. v. Century Life
of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Applicant’s mark is HAUTE ROGUE and Opposer’s mark is ROGUE.
In comparing the two marks, we note that Applicant’s mark, HAUTE ROGUE,
incorporates the entirety of Opposer’s mark ROGUE. Thus, the marks are similar to
the extent that they both contain the identical term ROGUE.
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We acknowledge that the common term ROGUE is the second word in Applicant’s
mark. However, in this case, we find that the word placement is not sufficient to
distinguish the marks in that the word HAUTE simply modifies, and appears as a
variant of, the common element ROGUE. The term HAUTE is defined as “high-class
or high-toned fancy,”4 Ahders testimony ¶ 22, 31 TTABVUE 7-8, and is suggestive of
the goods. Because the term HAUTE, is suggestive, it possesses less source-
identifying significance than the term ROGUE, which appears to be arbitrary as
applied to the goods of both parties. Id. (“The term ‘Haute,’ in the Applicant’s mark
has a well-known meaning in the English language and also has an established
meaning within the apparel industry.”). Applicant’s HAUTE ROGUE mark thus
bears the commercial impression of a higher class version of Opposer’s ROGUE line
of clothing.
In sum, we conclude that Applicant’s mark and Opposer’s marks are substantially
similar in terms of sound, appearance, connotation and commercial impression. Thus,
when the marks are considered in their entireties, we find that they are substantially
similar. Accordingly, this DuPont factor weighs in favor of finding a likelihood of
confusion.
D. Other factors
The remainder of Opposer’s arguments merit little discussion. There is no
evidence in the record on the sixth, tenth and eleventh DuPont factors. Therefore,

4 Ahders testimony, ¶ 22 and Exhibit 8, 31 TTABVUE 136-137, Webster’s Encyclopedic
Unabridged Dictionary of the English Language (2001).
Opposition No. 91227424
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we find these factors neutral. See Shannon DeVivo v. Celeste Ortiz, 2020 USPQ2d
10153, at *15 (TTAB 2020).
IV. Conclusion
In view of the similarities of the marks, the relatedness of the goods, the
overlapping trade channels, and the classes of consumers, we find confusion likely.

Decision: The opposition is sustained and registration to Applicant’s application
Serial No. 86496002 is refused.