Romeo & Juliette, Inc.

Trademark Trial and Appeal Board

Aug 6, 2018

No. 87089997 (T.T.A.B. Aug. 6, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: August 6, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Romeo & Juliette, Inc.
_____

Serial No. 87089997
_____

Richard Alaniz of Lowe Graham Jones PLLC,
for Romeo & Juliette, Inc.
Colleen Dombrow, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Mermelstein, Heasley and Coggins,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Romeo & Juliette, Inc. (“Applicant”) seeks registration on the Principal Register
of the mark BEARLY THERE (in standard characters) for:
“footwear; footwear for men; footwear for women; footwear;
hats; infants’ shoes and boots; jackets and socks; leather
shoes; leg-warmers; sandals and beach shoes; snow boots;
stockings” in International Class 25; and

“online social networking services in the field of fashion
Serial No. 87089997
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provided via a website” in International Class 45.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that the
proposed mark, as used on or in connection with Applicant’s identified goods and
services, is likely to cause confusion with the following four registered marks, all
owned by the same Registrant:
(stylized) for “women’s hosiery” in
International Class 25;2
BARELY THERE (typed drawing) for “lingerie and
underwear garments, namely, panties and brassieres” in
International Class 25;3
BARELYTHERE (typed drawing) for “tank tops, tube
tops, crop tops, bodysuits, bandeaus, cropped tank tops and
camisoles” in International Class 25;4
BARELYTHERE (typed drawing) for “panties, bras,
shapewear, namely, thigh shapers, body briefers, body
suits, all-in-ones, briefs and girdles” in International Class
25;5

1 Application Serial No. 87089997 was filed on June 30, 2016, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Page references to the application record are to the .pdf version of the USPTO’s Trademark
Status & Document Retrieval (TSDR) system. References to the briefs, motions and orders
on appeal are to the Board’s TTABVUE docket system.
2 Registration No. 0579747, issued on the Principal Register on September 8, 1953, renewed.
3 Registration No. 1973373, issued on the Principal Register on May 7, 1996, renewed.
A “typed drawing” is the legal equivalent of a “standard character” mark. Prior to November
2, 2003, “standard character” marks were known as “typed drawings.” See TMEP § 807.03(i)
(Oct. 2017).
4 Registration No. 2410876, issued on the Principal Register on December 5, 2000, renewed.
5 Registration No. 2465357, issued on the Principal Register on July 3, 2001, renewed.
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When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Likelihood of Confusion

We base our determination of likelihood of confusion under Trademark Act Section
2(d) 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, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Ind., Inc.,
575 U.S. __, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
We have considered each relevant DuPont factor for which there is evidence or
argument, and have treated the other factors as neutral. See M2 Software, Inc. v. M2
Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006). Varying
weights may be assigned to each DuPont factor depending on the evidence presented.
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) (factors “may play more or less weighty roles in any particular determination”);
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)
(“While we have considered each factor for which we have evidence, we focus our
analysis on those factors we find to be relevant.”).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and services. In re
Serial No. 87089997
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i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir.
2002)) (“The likelihood of confusion analysis considers all DuPont factors for which
there is record evidence but ‘may focus … on dispositive factors, such as similarity of
the marks and relatedness of the goods.’”); Primrose Ret. Cmtys., LLC v. Edward Rose
Senior Living, LLC, 122 USPQ2d 1030, 1032 (TTAB 2016) (citing Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)).
A. The First DuPont Factor

Under the first DuPont factor, we consider “the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.” DuPont, 177 USPQ at 567. See also Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). Similarity in any one of these elements may be
sufficient to find the marks confusingly similar. In re Inn at St. John’s, LLC, 126
USPQ2d 1742, 1746 (TTAB 2018).
In appearance, the word marks BEARLY THERE and BARELY THERE are very
similar. Each has the same structure, with two words expressed in three syllables.
The first word, BARELY in Registrant’s marks and BEARLY in Applicant’s proposed
mark, differ only in the slight rearrangement of the three consecutive letters, A, R,
and E. The last word, THERE, is identical in each mark. Given the overall similarity
in structure and elements, the minor difference in spelling is not sufficient to
Serial No. 87089997
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distinguish the marks visually. See Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d
728, 156 USPQ 523, 526 (CCPA 1968) (BEEP and VEEP phonetically similar and
visually similar); Apple Computer v. TVnet.net Inc., 90 USPQ2d 1393, 1396 (TTAB
2007) (letter “v” is insufficient to distinguish the dominant portions of the parties’
ITUNES and VTUNES marks).
Applicant “concedes that the marks sound alike.”6 We take judicial notice of the
fact that the words “bear” and “bare,” as normally pronounced, are homophones.
Applicant has not suggested an alternative pronunciation for either. And while
“barely” is a common English word and “bearly” is not, Applicant has not argued —
and we do not believe — that this would affect their likely pronunciation in the
respective marks. “Despite specific differences in spelling ... the dominant factor for
consideration is the likelihood of confusion arising from the similarity in sound of the
two words when spoken.” Krim-Ko v. Coca-Cola, 156 USPQ at 526 (finding the aural
similarities of the marks VEEP and BEEP to be such that confusion would be likely);
see also RE/MAX of Am. Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980)
(REMACS and RE/MAX indistinguishable in sound). Accordingly, we find the marks
identical in pronunciation.
“But that is where the similarity comparison ends,” Applicant maintains. “The
dissimilarities in appearance, connotation, and thus obvious commercial impression
between the respective marks weigh[] heavily in favor of Applicant.” “The term[s]
BEARLY and BARELY are two different terms with only the term BARELY having

6 Applicant’s brief pp. 7, 8, 7 TTABVUE 8, 9.
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a dictionary meaning,” Applicant states.7 Dictionary.com defines “barely” as
“scarcely, without disguise or concealment, openly, scantily…,”8 a definition that is
consistent with Registrant’s intimate apparel: “the commercial impression is
obviously to convey that the clothing is not noticeable, the kind of feature that a
consumer would look for in the types of goods associated with the mark,” Applicant
notes.9 In contrast, “The term ‘BEARLY’ incorporates wholly Applicant’s ‘Bear’ theme
it uses for its goods and for which term is meant to serve as a source indicator,”
Applicant concludes.10 The “Bear” theme to which Applicant refers is reflected in its
registered “house” marks:11
BEARPAW12
13
14
15

7 Id.
8 Applicant’s April 20, 2017 Response to Office Action TSDR p. 5.
9 Applicant’s brief p. 8, 7 TTABVUE 9.
10 Id. pp. 8-9, 7 TTABVUE 9-10.
11 Applicant’s brief p. 4, 7 TTABVUE 5.
12 Reg. No. 3862146, Applicant’s Nov. 15, 2017 Response to Office Action TSDR p. 5.
13 Reg. Nos. 4017491, 4425790, 4831899, Applicant’s Nov. 15, 2017 Response to Office Action
TSDR pp. 8, 11, 17.
14 Reg. No. 3886301, Applicant’s Nov. 15, 2017 Response to Office Action TSDR p. 15.
15 Reg. No. 4973105, Applicant’s Nov. 15, 2017 Response to Office Action TSDR p. 21.
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We find, though, that Applicant’s claimed dissimilarity in connotation does not
overcome the marks’ strong similarities in sight and sound. Its reliance on its
registered “house” marks is misplaced, as those marks are not the mark for which it
now seeks registration. As the Federal Circuit has made clear:
To the extent that [Applicant] is advocating that we
consider another mark … that is not part of the applied-for
mark in analyzing the similarity of the marks, we decline
to do so. The correct inquiry requires comparison of the
applied-for mark … to the registrants’ marks. See, e.g.,
Denney, 263 F.2d at 348 (“In determining the applicant’s
right to registration, only the mark as set forth in the
application may be considered; whether or not the mark is
used with an associated house mark is not controlling.
Therefore the likelihood of confusion must be determined
by a comparison of the [applicant’s and registrant’s] marks
themselves.” (internal citations omitted)); In re Microsoft
Corp., 68 U.S.P.Q.2d 1195, 1198 (T.T.A.B. Sept. 11, 2003)
(“To the extent applicant’s argument reflects anticipated
use of the applied-for mark with applicant’s house mark, it
is well-settled that use of a house mark in conjunction with
a product mark will not serve to prevent a finding of
likelihood of confusion when the house mark is not
included in the mark for which registration is sought.”).
In re i.am.symbolic, 123 USPQ2d at 1749.
Beyond that, even if Applicant’s prior registrations were relevant, the applied-for
mark, BEARLY THERE, encroaches far more closely on Registrant’s marks than do
Applicant’s registered marks. As the Board found in a recent decision, “Applicant’s
applied-for mark … moves closer to the cited registration … than the mark in
Applicant’s prior registration … rendering the new mark more similar in appearance,
sound, and meaning to Registrant’s mark ….” In re Inn at St. John’s, 126 USPQ2d at
1748. By moving closer to Registrant’s marks, it encroaches on the goodwill
represented by Registrant’s cited, long-registered marks. As the Examining Attorney
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puts it, “[t]he overriding concern is not only to prevent buyer confusion as to the
source of the goods [ ]or services, but to protect the registrant from adverse
commercial impact due to use of a similar mark by a newcomer.”16 Citing In re Shell
Oil, 26 USPQ2d at 1690.
We acknowledge that BEARLY THERE is a play on words, but consumers will
only apprehend that it is a play on words by first thinking of Registrant’s mark,
BARELY THERE. Therefore, the marks are similar in connotation because they both
invoke the impression of an item of clothing that is “scant[ ]y” or “not noticeable,” a
connotation that is as relevant to Applicant’s goods as it is to Registrant’s. Although
Applicant has substituted the word “bear” for “bare,” the connection would be easily
made by an ordinary consumer because the words are identical in sound and highly
similar in appearance.
For these reasons, we find that the marks, taken in their entireties, are highly
similar in appearance, sound, connotation and commercial impression, favoring a
finding of a likelihood of confusion.
B. The Second and Third DuPont Factors

Under the second and third DuPont factors, we consider “[t]he similarity or
dissimilarity and nature of the goods or services as described in an application or
registration” and “the similarity or dissimilarity of established, likely-to-continue
channels of trade.” DuPont, 177 USPQ at 567.

16 Examining Attorney’s brief 9 TTABVUE 5.
Serial No. 87089997
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1. Applicant’s Class 25 Clothing Goods
Comparing Applicant’s clothing goods to the goods identified in the cited
registrations, we see that Registrant’s “women’s hosiery,” defined as “socks and
stockings; hose,”17 is described with sufficient breadth in Registration No. 0579747 to
encompass Applicant’s “socks” and “stockings.” Thus, the goods are in part identical
or legally identical. See Am. Lava Corp. v. Multronics, Inc., 461 F.2d 836, 174 USPQ
107, 108 (CCPA 1972); Bond v. Taylor, 119 USPQ2d 1049, 1053 (TTAB 2016) (goods
identical in part, as application and registration both identify t-shirts); In re Hughes
Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly
worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly
identified ‘residential and commercial furniture.’”). “[W]here 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 . . . .” In re Solid State Design Inc.,
125 USPQ2d 1409, 1413 (TTAB 2018) (quoting In re Jump Designs LLC, 80 USPQ2d
1370, 1374 (TTAB 2006) (internal punctuation omitted)). This identity of goods in the
same class, International Class 25, favors a finding of likelihood of confusion as to all
of Applicant’s goods in that class. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); B.V.D. Licensing Corp. v. Rodriguez,
83 USPQ2d 1500, 1507 (TTAB 2007).

17 The American Heritage Dictionary AHDictionary.com 5/15/2017, May 15, 2017 Office
Action TSDR pp. 205-206.
Serial No. 87089997
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This identity of goods also eases the Examining Attorney’s burden in proving the
similarity of the marks, for where, as here, the goods are in part identical or legally
identical, less similarity between the marks is needed to find a likelihood of confusion.
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722
(Fed. Cir. 2012); Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330,
102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century
Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (“When marks
would appear on virtually identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion declines.”).
With respect to Applicant’s remaining goods, consisting of footwear, hats, and
jackets, the Examining Attorney has submitted a dozen use-based third-party
registrations indicating that Applicant’s and Registrant’s identified articles of
clothing may emanate from one source.18 For example:
Registration No. Mark Pertinent Goods
4053353 MALE HQ Socks and stockings, athletic shoes, caps, hats,
jogging pants, sweat pants, ladies’ underwear,
women’s underwear, body suits
4724307 MASTER & MUSE Clothing, namely, lingerie, undergarments,
foundation garments, body suits, stockings,
headwear and footwear
5064747 OKLAHOMA CITY
BLUE
Clothing, namely, hosiery, footwear, sweatpants,
warm-up pants, hats, caps, undergarments
4785449 I TEXACTIVE
and Design
Brassieres, girdles, hats, hosiery, shoes,
underclothing, underpants

18 Oct. 20, 2016 Office Action TSDR pp. 13-49.
Serial No. 87089997
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5066051 BROOKLYN
THREADS TRADING
CO
Hosiery, socks, leggings, lingerie, bras, panties,
brief, shapewear, namely, bodysuits, control
briefs, corsets, girdles, body shapers, thigh
shapers and thigh slimmers, hats, caps, footwear,
shoes, sandals
5058200 TALLISTA Clothing, namely, jackets, shoes, lingerie, socks,
hosiery
5058289 HOTONE Footwear, girdles, hats, hosiery,

This evidence suggests that the clothing goods listed in the registrations and the
application are of a kind that may emanate from a single source under a single mark.
See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d at 1470 n.6; In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993), cited in In re i.am.symbolic, llc, 116 USPQ2d
1406, 1412 (TTAB 2015), aff’d, 123 USPQ2d 1744.
Additionally, to show that Applicant’s footwear and other clothing goods
identified in its application are related to Registrant’s various identified articles of
clothing, the Examining Attorney has submitted evidence of third-party websites that
advertise both types of goods for sale under the same mark. Examples include Eddie
Bauer (lingerie, hats, jackets, shoes, socks, sandals),19 Forever 21 (bodysuits, bras,
panties, crop tops, tank tops, hats, jackets, shoes, sandals),20 GAP (bandeaus, bras,
panties, jackets, bodysuits, camisoles, cropped tank tops, shoes, sandals, socks),21 H

19 EddieBauer.com 5/15/2017, May 15, 2017 Office Action TSDR pp. 18-52.
20 Forever21.com 5/15/2017, May 15, 2017 Office Action TSDR pp. 54-91.
21 Gap.com 5/15/2017, May 15, 2017 Office Action TSDR pp. 92-136.
Serial No. 87089997
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& M (bandeau bras, bras, bodysuits, shaping briefs, shoes, sandals, socks, jackets),22
and L.L. Bean (hats, jackets, footwear, sandals, socks, underwear).23 See, e.g., In re
Strategic Partners, Inc., 102 USPQ2d 1397, 1398-99 (TTAB 2012); In re Davey Prods.
Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91
USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009) (third-party use in commerce
demonstrating that goods emanate from single source under single mark).
We must consider the goods as they are described in the application and
registrations. Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Integrated Embedded, 120 USPQ2d 1504,
1514 (TTAB 2016). Since there are no restrictions in either Applicant’s or Registrant’s
identification of goods, we presume that the goods, which are identical in part and
related in part, would travel through the same channels of trade, online and physical
retail stores, to the same classes of customers, ordinary purchasers of clothing. See
In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (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); Bond v. Taylor, 119 USPQ2d at 1053; B.V.D. v. Rodriguez, 83 USPQ2d at
1507; Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268-69 (TTAB 2003) (“Given the in-
part identical and in-part related nature of the parties’ goods, and the lack of any

22 HM.com 5/15/2017, May 15, 2017 Office Action TSDR pp. 138-172.
23 LLBean.com 5/15/2017, May 15, 2017 Office Action TSDR pp. 173-204.
Serial No. 87089997
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restrictions in the identifications thereof as to trade channels and purchasers, these
clothing items could be offered and sold to the same classes of purchasers through the
same channels of trade.”); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994).
Applicant does not contest the Examining Attorney’s evidence that the goods are
similar and related, and concedes “with respect to Class 25, that the Examining
Attorney has demonstrated that Applicant’s goods could be found broadly in the same
channels of trade, i.e. online and physical retail stores.”24 We accordingly find that
Applicant’s Class 25 goods are in part identical and otherwise related to the goods in
the cited registrations, and that Applicant’s channels of trade and usual purchasers
are also identical, at least in part.
2. Applicant’s Class 45 Website Services
“However,” Applicant maintains, “Applicant does not concede that with respect to
Class 45, the Examining Attorney has met her burden of proof to demonstrate
likelihood of confusion. ... [T]he cited registrations do not include any identification
of any services, let alone any related services outlined in Applicant’s application [i.e.,
online social networking services in the field of fashion provided via a website]. The
Examining Attorney is essentially giving the Registrant the benefit of a registration
for services it does not have.”25
The Examining Attorney agrees that “[t]he applicant is correct in stating that the

24 Applicant’s brief p. 9, 7 TTABVUE 10.
25 Id.
Serial No. 87089997
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registrations do not include any services, and only include goods classified in
International Class 025. However, the evidence [of third-party use] demonstrates
that companies that provide goods similar to registrant’s Class 025 goods also provide
services similar to the applicant’s Class 045 services.”26 For example:
• L.L. Bean, which offers hats, socks, tank tops, camisoles, jackets, footwear, and
bras, also uses online social media in the field of fashion under the same mark:
27
• www.hm.com advertises “Check out our social media feeds for fashion
inspiration, style advice and glimpse behind the scenes. Fashion fans all over
the world already follow us.”28

26 Examining Attorney’s brief, 9 TTABVUE 12-13.
27 May 15, 2017 Office Action TSDR p. 187; Examining Attorney’s brief, 9 TTABVUE 8.
28 May 15, 2017 Office Action TSDR p. 160
Serial No. 87089997
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• www.eddiebauer.com Facebook page;29
• www.forever21.com social media page;30
• www.gap.com Facebook page.31
More on point, the Examining Attorney cites third-party use-based registrations
in Classes 25 and 45:
• MALE HQ, Reg. No. 4053353 (Apparel and online social networking services);32
• L’AFRICANA, Reg. No. 4117093 (Apparel and online social networking
services provided through a fashion community website);33
• MASTER & MUSE, Reg. No. 4724307 (Apparel and online social networking
services provided through a fashion community website).34
• Even Applicant currently provides social networking services related to its
clothing goods under its mark, Reg. No. 4973105 (Providing news
and information in the field of fashion including text, video, audio and images
in the field of fashion; Providing a website featuring information on fashion
including reviews and commentary on fashion; Online social networking
services; Providing social networking services for purposes of commentary,
comparison, collaboration, consultation, advice, discussion, research,

29 May 15, 2017 Office Action TSDR p. 53.
30 Id. at 78.
31 Id. at 137.
32 Oct 20, 2016 Office Action TSDR p. 15.
33 Id. at 19.
34 Id. at 21.
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information sharing, entertainment, all related to fashion, provided via a
website).35
“[I]t is not necessary that the goods and services overlap in order to be found to be
related in such a way that confusion is likely.” Research in Motion Ltd. v. Defining
Presence Mktg. Grp. Inc., 102 USPQ2d 1187, 1194 (TTAB 2015). “It is settled that the
likelihood of confusion may result from the use by different parties of the same or
similar marks in connection with goods, on the one hand, and services which deal
with or are related to those goods, on the other.” In re Wet Seal, Inc. v. FD Mgmt.,
Inc., 82 USPQ2d 1629, 1639-40 (TTAB 2006). See also In re House Beer, LLC, 114
USPQ2d 1073, 1078 (TTAB 2015); In re U.S. Shoe Corp., 229 USPQ 707, 708 (TTAB
1985) (holding CAREER IMAGE (stylized) for retail women’s clothing store services
and CREST CAREER IMAGES (stylized) for uniforms likely to cause confusion).
In assessing the relatedness of goods and services, the Federal Circuit has
observed that the second DuPont factor “considers whether ‘the consuming public
may perceive [the respective goods and services of the parties] as related enough to
cause confusion about the source or origin of the goods and services.’” In re St. Helena
Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002) (“Even if the goods and services in question are not identical, the consuming
public may perceive them as related enough to cause confusion about the source or
origin of the goods and services.”)). The mere fact that goods and services are used

35 Applicant’s Nov. 15, 2017 Response to Office Action TSDR p. 21.
Serial No. 87089997
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together does not, on its own, show relatedness. Id. at 1086-87. In circumstances
where “the relatedness of the goods and services is not evident, well-known or
generally recognized,” the PTO will need to show “something more.” Id. at 1087. “In
circumstances in which the types of goods and services in question are well-known or
otherwise generally recognized as having a common source of origin, the PTO’s
burden to establish relatedness will be easier to satisfy.” Id. cited in TMEP
§ 1207.01(a)(ii) (Oct. 2017).
The registrations provided by the Examining Attorney suggest that apparel goods
and social networking services may emanate from common sources. See In re
i.am.symbolic, 116 USPQ2d at 1412. Additionally, the Examining Attorney’s third-
party website evidence demonstrates apparel retailers’ frequent use of social media
in connection with their clothing goods. Although using social media in this way is
not technically the same as providing online social networking services for others,36
the online experience would be much the same from the perspective of ordinary
consumers, who would be familiar with viewing retailers’ sites on social media.
Applicant’s identified “online social networking services in the field of fashion
provided via a website” are unrestricted, meaning that they must be construed to
cover fashion issues concerning Registrant’s BARELY THERE goods, as well as its
own goods. In such a case, users of Applicant’s BEARLY THERE website would be

36 See In re Florists’ Transworld Delivery, Inc., 119 USPQ2d 1056, 1063 (TTAB 2016), cited
in TMEP § 1301.04(h)(iv)(C) (Oct. 2017) (“[A]n applicant generally will not be able to rely on
use of its social media account to support an application for registration of a mark for [the
service of creating an online community for users].”).
Serial No. 87089997
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likely to believe that there was some connection to the source of the BARELY THERE
goods. Overall, the evidence indicates that Applicant’s identified online services are
sufficiently related to Registrant’s apparel goods to engender a likelihood of confusion
among the purchasing public.
For these reasons, the second and third DuPont factors weigh in favor of finding
a likelihood of confusion as to Applicant’s identified goods and services.
II. Conclusion

We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant DuPont factors. We find that the
marks at issue are highly similar, that Applicant’s identified goods and services are
identical or related to Registrant’s identified goods, and that they would move in the
same sort of online and physical retail trade channels, to the same class of purchasers.
We conclude that Applicant’s proposed mark BEARLY THERE, as used in connection
with the goods and services identified in the Application, so resembles the cited
registered marks, as used on the goods identified in the registrations, as to be likely
to cause confusion or mistake, or to deceive under Section 2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s mark BEARLY THERE is affirmed
as to the Class 25 goods and Class 45 services.