Ruby Bacardi

Trademark Trial and Appeal Board

Oct 3, 2017

No. 86809072 (T.T.A.B. Oct. 3, 2017)

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB

Hearing: Mailed:
August 10, 2017 October 3, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re Bacardi
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Serial Nos. 86809072 and 86809084
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Ira Cohen of Henkel & Cohen
for Ruby A. Bacardi.

J. Ian Dible, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_______

Before Quinn, Taylor, and Adlin,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Ruby A. Bacardi (“Applicant”) filed applications to register on the Principal
Register the marks THIRTEEN 30 and 1330, both in standard characters, for
“clothing, namely, dresses, skirts, blouses, shirts, pants, and jackets” (in
International Class 25).1
The Trademark Examining Attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s marks, when

1 Application Serial Nos. 86809072 and 86809084, respectively, filed November 4, 2015 under
Section 1(b) of the Trademark Act, 15 U.S.C. § 1052(b), alleging a bona fide intention to use
the marks in commerce.
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applied to Applicant’s goods, so resemble the previously registered mark shown below
as to be likely to cause confusion:

for
Athletic apparel, namely, shirts, pants, jackets, footwear,
hats and caps, athletic uniforms; clothing for babies,
toddlers and children, treated with fire and heat
retardants, namely, pajamas, jackets, shirts, pants,
jumpers; collared shirts; dress shirts; dresses; golf shirts;
hooded sweat shirts; long-sleeved shirts; polo shirts; rugby
shirts; shirts; shirts and short-sleeved shirts; short-sleeved
or long-sleeved t-shirts; short-sleeved shirts; skirts; skirts
and dresses; sports shirts; sports shirts with short sleeves;
sweat shirts; t-shirts; tee shirts; wearable garments and
clothing, namely, shirts; wind shirts; women’s clothing,
namely, shirts, dresses, skirts, blouses (in International
Class 25).2

When the refusal was made final, Applicant appealed and requested
reconsideration. The request for reconsideration was denied and the appeal resumed.
Applicant and the Examining Attorney filed briefs. Pursuant to Applicant’s request,
the appeals were consolidated and an oral hearing was held. We decide each appeal
in this single opinion.

2 Registration No. 4488838, issued February 25, 2014. The registration includes the following
statements: “The mark consists of a shield design outlined in brown with blue interior with
a brown heart with 3 brown nails in it with the numbers ‘1330’ in white in the middle of the
heart and the word ‘Logan’ on top of the shield in brown. The color(s) brown, white and blue
is/are claimed as a feature of the mark.”
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Applicant concedes that the goods are “related,” but argues that the marks are
not similar, asserting that the cited mark “is a hodgepodge of multiple elements.” 8
TTABVUE 12-13; 14 TTABVUE 9. Applicant also points to the absence of actual
confusion between the marks. Applicant introduced third-party registrations in an
attempt to show that because several registrations of various “711” number marks
coexist on the register, so can Applicant’s and Registrant’s marks.
The Examining Attorney maintains that the goods are identical or otherwise
related, and that the marks are similar. In support of the refusal, specifically
regarding the similarity of the goods, the Examining Attorney submitted portions of
third-party websites.
Our determination under Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on likelihood of confusion. In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Varying weights may
be assigned to each du Pont factor depending on the evidence presented. Citigroup
Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687-88 (Fed. Cir. 1993). The
relevant du Pont factors in this appeal are discussed below.
With respect to the second du Pont factor regarding the similarity of the goods,
we must look to the goods as identified in the applications and the goods in the cited
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registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Houston Computers
Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Giovanni
Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Applicant’s goods and Registrant’s
goods overlap to the extent all of Applicant’s goods, namely “dresses, skirts, blouses,
shirts, pants, and jackets,” are listed in Registrant’s identification of goods.
Accordingly, the goods are identical in part, and otherwise closely related. At the oral
hearing Applicant’s counsel conceded that the goods are, in part, identical. Given the
identity of the goods, we presume that the goods travel in the same channels of trade
(e.g., clothing stores, boutiques, and online clothing retailers) and are offered to the
same potential purchasers (e.g., ordinary consumers). 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). See also In re
Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there
are legally identical goods, the channels of trade and classes of purchasers are
considered to be the same); American Lebanese Syrian Associated Charities Inc. v.
Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith
& Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
The identity of the goods, trade channels and purchasers weigh heavily in favor
of a finding of likelihood of confusion.
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There is no indication in the identifications of goods regarding the price point of
either Applicant’s or Registrant’s clothing. Thus, the goods are presumed to include
clothing that is relatively inexpensive. “When products are relatively low-priced and
subject to impulse buying, the risk of likelihood of confusion is increased because
purchasers of such products are held to a lesser standard of purchasing care.” Recot
Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282
(Fed. Cir. 1984). Thus, the du Pont factor of the conditions of sale weighs in favor of
a finding of likelihood of confusion.
The crux of the likelihood of confusion issue rests on the first du Pont factor,
namely the similarity or dissimilarity between each of Applicant’s marks and the
cited registered mark. The marks must be considered in their entireties as to
appearance, sound, connotation and commercial impression. Palm Bay Imps., Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a
side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012) (citation omitted). The marks “‘must be considered … in light of the fallibility
of memory ….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed.
Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565
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F.2d 683, 196 USPQ 1 (CCPA 1977)). The focus is on the recollection of the average
purchaser, in this case an ordinary consumer, who normally retains a general rather
than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110
USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975).
In comparing each of Applicant’s marks THIRTEEN 30 and 1330 to Registrant’s
mark , we are mindful that where, as here, the goods are identical in part, the
degree of similarity between the marks necessary to find likelihood of confusion need
not be as great as where there is a recognizable disparity between the goods. Coach
Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721; Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014);
Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007). To emphasize
this point, the facts that the goods are identical and inexpensive play a significant
role when we compare Applicant’s marks to the cited mark.
As to appearance and sound, there exist 9,000 four-digit numbers that are
available for use in a trademark (i.e., 1000 to 9999). Applicant’s marks are comprised
of the exact same four digit number as the one in Registrant’s mark. Thus, to the
extent that each of the marks includes 1330, the marks are similar in appearance
and sound.
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As to meaning, the number 1330 would appear to have no readily apparent
meaning to ordinary consumers. Thus, they are likely to view the identical number
(out of 9,000 four digit numbers) as arbitrary, or merely identifying a particular style
or model of a line of clothing.
The centrally-positioned 1330 in Registrant’s mark, and 1330 (or THIRTEEN 30)
in each of Applicant’s marks result in marks that engender similar overall
commercial impressions, especially when used in connection with identical,
inexpensive clothing items. The similarity of the marks is a factor that also weighs in
favor of a finding of likelihood of confusion.
In comparing the marks, we have considered, of course, the presence of LOGAN
and the design features of Registrant’s mark, as well as the colors. LOGAN likely will
be perceived as a name, and the design feature as being nails through a heart. The
number 1330, whether as numerals or THIRTEEN 30, will not have any recognized
meaning to consumers; thus, when consumers encounter the marks on identical
clothing items, they may view Applicant’s mark as an abbreviated version of
Registrant’s mark, or as identifying another line of clothing from Registrant.
Under the sixth du Pont factor, the number and nature of similar marks in use
on similar goods may play a role in the likelihood of confusion determination.
However, the record is devoid of evidence of any third-party uses or registrations of
the same or similar marks in the clothing field. See In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1088-89 (TTAB 2016) (comparing insufficient evidence (one third-
party registration) with situations involving a “considerable” or “extensive” number
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of such registrations, citing Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135-36
(Fed. Cir. 2015) and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1674 (Fed. Cir. 2015)).
Contrary to Applicant’s argument, the coexistence of various third-party
registrations of 7 ELEVEN or 711 marks for a variety of unrelated goods is not
persuasive. First, these marks are registered for different goods and services, unlike
this case that involves identical goods. Second, each case must be decided on its own
merits. Prior decisions and actions of examining attorneys in registering other marks
have virtually no evidentiary value and, in any event, are not binding on the Board.
See, e.g., In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB
2013) (citing In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001)).
Applicant’s reliance, in this ex parte proceeding, on the absence of evidence of
actual confusion is misplaced. It is well settled that the relevant test is likelihood of
confusion, not actual confusion. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Weiss Assocs. Inc. v. HRL Assocs. Inc.,
902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990); In re Big Pig, 81
USPQ2d 1436, 1439-40 (TTAB 2006). See In re Kangaroos U.S.A., 223 USPQ 1025,
1026-27 (TTAB 1984). In any event, inasmuch as Applicant’s application is based on
an intention to use the mark, there is no evidence that there has been an opportunity
for confusion between the marks to occur. In re Kangaroos U.S.A., 223 USPQ at 1026-
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27. Moreover, the lack of evidence of actual confusion carries little weight, especially
in an ex parte context. In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003).
We have considered all of the evidence made of record pertaining to the likelihood
of confusion issue, as well as all of the arguments related thereto, including any
evidence or arguments not specifically discussed in this opinion. Because each of
Applicant’s marks is similar to Registrant’s mark, the goods are identical in part, the
channels of trade are the same, the classes of consumers are identical, and the goods
are subject to impulse purchase, we find, under the relevant du Pont factors, that
confusion is likely between the marks. In reaching our decision, we recognize that
this is a close case. However, to the extent that any of the points raised by Applicant
raise a doubt about likelihood of confusion, that doubt is resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289,
1290-91 (Fed. Cir. 1984).
We conclude that consumers familiar with Registrant’s clothing sold under the
mark are likely to mistakenly believe, upon encountering each of Applicant’s
marks THIRTEEN THIRTY and 1330 for identical clothing items, that the goods
originate from or are associated with or sponsored by the same entity.
Decision: The refusal to register in each application is affirmed.