Sebastian M. Cangemi

Trademark Trial and Appeal Board

May 9, 2016

No. 86335313 (T.T.A.B. May. 9, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Sebastian M. Cangemi
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Serial No. 86335313
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John D. Gugliotta of Law Offices of John D. Gugliotta,
for Sebastian M. Cangemi.
Alice Benmaman, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_____

Before Greenbaum, Masiello and Lynch,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Sebastian M. Cangemi (“Applicant”) seeks registration on the Principal Register
of the mark WITNESSED (in standard characters) for
T-shirts in International Class 25.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the ground that Applicant’s

1 As discussed below, application Serial No. 86335313 was filed on July 11, 2014, with no
stated filing basis. Also as discussed below, the identification of goods includes the extraneous
wording “IC 025. US 022 039 G and S:”.
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mark, when used on or in connection with Applicant’s goods, is likely to cause
confusion with the mark I WITNESSED (in standard characters) for “athletic
apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms;
Golf shirts; Hooded sweat shirts; Sweat shirts; Wearable garments and clothing,
namely, shirts” in International Class 25.2 The Examining Attorney also made final
the requirements to specify and meet the requirements of at least one filing basis,
and to amend the identification of goods.
After the Examining Attorney made the refusal and requirements final, Applicant
appealed to this Board. We affirm the refusal and requirements.
I. Evidentiary Issue
Before proceeding to the merits of the refusal and requirements, we address two
evidentiary matters. First, Applicant submitted a list of the results of a search
performed on the USPTO’s TESS electronic database for applications and
registrations that include the word “witness,” and of a separate search for
applications and registrations that include the word “apparel” in the identification of
goods or services.3 In the body of the April 21, 2015 Response to Office Action,
Applicant also listed eleven marks with associated registration numbers, purportedly
owned by Registrant.4 Applicant did not provide copies of the listed registrations and
applications, or the full information regarding them in the USPTO TSDR electronic

2 Registration No. 4167997 issued on July 3, 2012.
3 April 21, 2015 Response to Office Action, Exhibits C and D, respectively.
4 In his brief, Applicant provided the same list. 4 TTABVUE 8-9.
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database. Generally, a mere listing is insufficient to make such registrations of
record. In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998). The
Examining Attorney, however, did not object to the evidence or list, but rather treated
the registrations and applications named therein as if properly made of record. The
Examining Attorney therefore has waived any objection, and we will treat the lists
as being of record, and will consider them for whatever probative value they may
have. In re District of Columbia, 101 USPQ2d 1588, 1592 n.5 (TTAB 2012); In re
Broyhill Furniture Indus. Inc., 60 USPQ2d 1511, 1513 n. 3 (TTAB 2001).
Second, Applicant attached to his brief all of his previously submitted evidence.
This was not necessary, as the evidence already was of record in this proceeding. See
In re City of Houston, 101 USPQ2d 1534, 1536 (TTAB 2012) (no need to attach
additional copies to appeal brief of materials already of record), aff’d 713 F.3d 1326,
108 USPQ2d 1226 (Fed. Cir. 2013).
II. Requirement to Assert a Filing Basis
We turn first to Applicant’s failure to specify a statutory basis for filing his
application.5 An applicant will receive a filing date without specifying the statutory
filing basis on which it relies. Kraft Grp. LLC v. Harpole, 90 USPQ2d 1837, 1840
(TTAB 2009). However, an applicant must in fact state and meet the requirements of
one or more of the five statutory filing bases in order for its application to come within
the terms of the Trademark Act, 15 U.S.C. §§ 1051 et seq. See also Trademark Rules

5 We note that the application indicates, in red: “NO FILING BASIS SPECIFIED” and
“BASIS REQUIRED.”
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2.32, 2.34(a), 2.47(a), and 2.47(e), 37 C.F.R. §§ 2.32, 2.34(a), 2.47(a), and 2.47(e). If an
applicant does not state the statutory basis on which it relies in an original
application, the examining attorney will require the applicant to state a basis and
comply with the relevant requirements. See TMEP § 806 (April 2016). The examining
attorney will issue a final office action if the applicant timely responds to the first
office action, but fails to specify a filing basis, or fails to meet the requirements of a
particular basis. Id. Where an applicant does not specify and meet the requirements
of any statutory basis for filing a trademark application, there is no legal basis upon
which to grant a trademark registration.
In her April 6, 2015 Office Action, and again in her May 15, 2015 Final Office
Action, the Examining Attorney informed Applicant that his application lacked a
filing basis, required that Applicant provide a filing basis, and advised Applicant of
the various statutory bases that could apply. Applicant, however, failed to respond to
this deficiency in his April 21, 2015 Response to Office Action, and took no action to
state a filing basis during the six-month response period following the Examining
Attorney’s final refusal. Moreover, he did not address the matter in his brief.
Applicant has neither specified nor met the requirements of any statutory basis for
filing an application under the Trademark Act. We affirm the Examining Attorney’s
refusal to register Applicant’s mark on this ground.
Although we have refused registration on the ground that Applicant failed to state
and meet the requirements of a statutory filing basis, for the sake of completeness,
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we also address the likelihood of confusion refusal and the requirement for an
acceptable identification of goods.
III. Likelihood of Confusion - Applicable Law
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 Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and 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 or services. See Federated Foods,
Inc. v. Fort Howard 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 and differences in the marks.”).
A. Relatedness of the Goods, Channels of Trade and Conditions of
Purchase
We begin with the du Pont factors of the relatedness of the goods, channels of
trade, and conditions of purchase. We base our evaluation on the goods as they are
identified in the application and the cited registration. Stone Lion Capital Partners,
LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014);
Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
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In this case, the “athletic apparel, namely, shirts” and “wearable garments and
clothing, namely, shirts” identified in the cited registration encompass, and therefore
are legally identical to, the “T-shirts” identified in the application. See In re Jump
Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ
639, 640 (TTAB 1981)) (unrestricted and broad identifications are presumed to
encompass all goods of the type described). We need not discuss the remaining goods
identified in the registration because likelihood of confusion must be found if
confusion is likely with respect to use of the mark on any item that comes within the
identification of goods in the registration. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v.
TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007). Further, because the goods
are identical and, as identified, are not limited to any specific channels of trade, we
must presume that the trade channels and classes of purchasers are the same.
Viterra, 101 USPQ2d at 1908 (absent restrictions in an application or registration,
the identified goods, if identical, are “presumed to travel in the same channels of trade
to the same class of purchasers.”) (quoting Hewlett-Packard, 62 USPQ2d at 1001).
See also Stone Lion, 110 USPQ2d at 1161; In re Linkvest, 24 USPQ2d 1716, 1716
(TTAB 1992).
With regard to the conditions of sale and the consumers, Applicant argues that
purchasers of apparel are sophisticated.6 In addition to lacking evidentiary support,

6 Applicant also suggests that Registrant no longer uses the mark I WITNESSED for clothing
as Applicant was unable to locate Registrant’s website or any products sold online by
Registrant. 4 TTABVUE 6-7. To the extent Applicant is attempting to claim that Registrant
has abandoned its mark, this would be considered an impermissible collateral attack on the
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this argument fails because we are bound by the identification of goods in the
application and registration, and because the identifications of goods are not
restricted as to price, the goods at issue must include inexpensive as well as expensive
shirts. There is nothing inherent in the identifications of “shirts” and “T-shirts” which
would limit their price point or class of consumer. We therefore cannot assume that
consumers who purchase “shirts” and “T-shirts” would be particularly careful or
sophisticated. In our analysis, we must consider all potential customers, including
the less sophisticated. Moreover, inexpensive shirts would not be purchased with a
great deal of care or require purchaser sophistication, which increases the likelihood
of confusion. Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed.
Cir. 2000) (“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.”).
Applicant relies on extrinsic evidence concerning Registrant’s incorporation,7 and
eleven registrations purportedly owned by Registrant for various gambling
equipment and accessories, including the mark I WITNESS for “[g]aming equipment,
namely, poker chips,”8 to argue that the goods identified in Applicant’s application
and the cited registration travel in different channels of trade to different customers,

validity of the cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534-35 (Fed. Cir. 1997).
7 April 21, 2015 Response to Office Action, Exhibits A and B.
8 4 TTABVUE 6, 8-9.
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and that Registrant’s sale of apparel is merely ancillary to its primary business.9
However, because we must focus on the identification of goods set forth in the
application and registration, rather than on alleged “real-world conditions,”
Applicant’s arguments are unavailing. See Stone Lion, 110 USPQ2d at 1162;
Octocom, 16 USPQ2d at 1787.
We find that the goods, channels of trade, and conditions of purchase favor a
finding of likelihood of confusion.
B. The Marks and the Number and Nature of Similar Marks in Use in
Connection With Similar Goods.
We next turn to the du Pont factor of the similarities and dissimilarities between
the marks. We analyze “the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Viterra, 101 USPQ2d at 1908 (quoting du
Pont, 177 USPQ at 567). See also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). In
comparing the marks, we are mindful that where, as here, the goods are legally
identical, the degree of similarity 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, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012); Viterra, 101 USPQ2d at 1912 (citing Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992)). Further,
“[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether

9 4 TTABVUE 6.
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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., 101 USPQ2d at 1721 (quoting Leading Jewelers Guild,
Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007). The focus is on
the recollection of the average purchaser, who normally retains a general rather than
a specific impression of trademarks. In re Binion, 93 USPQ2d 1531 (TTAB 2009);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Applicant’s mark is WITNESSED and Registrant’s mark is I WITNESSED. The
word “witnessed” is the past tense of the word “witness,” which is defined as, inter
alia, “to see, hear, or know by personal presence and perception: to witness an
accident” and “to be present at (an occurrence) as a formal witness, spectator,
bystander, etc.: She witnessed our wedding.”10 To the extent that both marks contain
the word WITNESSED, they are quite similar in appearance and pronunciation.
Registrant’s mark also includes the pronoun I, but the addition of this term to the
shared word WITNESSED does not change the meaning of WITNESSED, as, for
example, the additional word CLEAR in ALL CLEAR changes the meaning of the
single word ALL. Lever Bros. Co. v. The Barcolene Co., 463 F.2d 1107, 174 USPQ 392
(CCPA 1972). Instead, the pronoun I would be viewed merely as the subject
performing the verb WITNESSED, indicating that “I” am the one who “saw,” “heard,”

10 Dictionary.com Unabridged, based on the RANDOM HOUSE DICTIONARY (2016). The Board
may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular
fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
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or was “present at (an occurrence).” WITNESSED, the active verb, forms the
dominant part of the mark. See Stone Lion, 110 USPQ2d at 1161 (nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, so long as the ultimate conclusion rests on a consideration of the
marks in their entireties). The meaning of WITNESSED is the same in both marks.
As a result, the marks convey essentially the same commercial impression, and
consumers likely would view WITNESSED as a variation of the mark I WITNESSED,
with both marks indicating a single source for the goods.
Applicant argues that “[a] brief search of the TEAS system found 418 separate
references that incorporate ‘WITNESS’ within the mark, 145 of which are currently
live.”11 Applicant submitted a list from the TESS database of the first 50 of the 418
“separate references,” and the first 50 of the 145 that are “currently live,” including
16 that are registered.12 However, the lists do not include critical information, such
as the goods or services associated with the marks, or the owner(s) of the marks. The
TESS listings offered by Applicant do not serve to introduce the listed registrations
or applications, and therefore also have little, if any, persuasive value. See Edom
Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012). This evidence
therefore is not probative that I WITNESSED is diluted in use or commercially weak
for shirts (or any type of clothing, for that matter).13 Applicant’s other evidence

11 4 TTABVUE 8.
12 April 21, 2015 Response to Office Action, Exhibit C.
13 The Federal Circuit’s decisions in 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,
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comprises a printout from the TESS database listing the first 50 of 38744 records of
all “live” marks for “apparel.”14 In addition to sharing the evidentiary infirmities just
discussed, this listing does not include any WITNESS-inclusive marks.
On this record, we conclude that the word WITNESS and its variations have no
special meaning or significance as used in connection with shirts, and therefore the
mark I WITNESSED is conceptually strong when used on shirts. See Palm Bay Imps.,
73 USPQ2d at 1692 (“VEUVE is an arbitrary term as applied to champagne and
sparkling wine, and thus conceptually strong as a trademark.”).
In view of the foregoing, we find the sound, appearance, meaning, and overall
commercial impression of the marks I WITNESSED and WITNESSED to be highly
similar when the marks are compared in their entireties.
C. Lack of Actual Confusion
Applicant argues that he and Registrant have used their marks concurrently “in
their respective and distinct markets since at least June, 2011”15 and there has been
no instance of actual confusion. However, there is no evidence of record relating to
the extent of use of Applicant’s or Registrant’s marks, and, thus, whether there have
been meaningful opportunities for actual confusion to have occurred in the
marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,

1674 (Fed. Cir. 2015) do not compel a different result. Those decisions emphasized that a
“considerable” or “extensive” number of third-party registrations may well have, in the
aggregate, evidentiary value. See In re Mr. Recipe, 118 USPQ2d 1084, 1089 n.9 (TTAB 2016).
As discussed above, there are no third-party registrations of record here.
14 April 21, 2015 Response to Office Action, Exhibit D.
15 4 TTABVUE 8.
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1847 (Fed. Cir. 2000). Moreover, “uncorroborated statements of no known instances
of actual confusion are of little evidentiary value.” Majestic Distilling, 65 USPQ2d at
1205. See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA
1973) (stating that self-serving testimony of applicant's corporate president's
unawareness of instances of actual confusion was not conclusive that actual confusion
did not exist or that there was no likelihood of confusion). In this ex parte case, the
lack of evidence of actual confusion carries little weight. J.C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). Accordingly, the du Pont
factors of the nature and extent of any actual confusion, and the length of time during
and conditions under which there has been contemporaneous use without evidence of
actual confusion are considered neutral.
D. “Any Other Established Fact Probative of the Effect of Use”
Finally, under the “catchall” 13th du Pont factor, Applicant points to a notice of
allowance that the USPTO issued in a prior, now abandoned, application owned by
Applicant for the mark WITNESSED for “t-shirts.”16 Because the abandoned
application pre-dated the cited registration, Applicant asserts it is evidence of “prior
use,” and “equitable priority as well as a longer standing track record of lack of
confusion between the two entities uses of their various marks.”17 Contrary to
Applicant’s contentions, the issuance of a notice of allowance in Applicant’s other
application has no bearing on this ex parte proceeding. It has been noted many times

16 April 21, 2015 Response to Office Action, Exhibit E.
17 4 TTABVUE 10.
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that each case must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had
some characteristics similar to [applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this court.”); In re Merrill Lynch, Pierce,
Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987).
Moreover, an abandoned application, such as the one on which Applicant attempts to
rely, has no probative value. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d
1828, 1831 n.2 (Fed. Cir. 2007) (“A copy of Bayer’s previously filed and now-
abandoned application to register the same mark in connection with the same goods
was considered by the examining attorney, but the Board did not assign any probative
value to this abandoned application in its decision to affirm.”).
E. Conclusion
After considering all of the evidence properly of record, including any evidence not
specifically discussed herein, and arguments pertaining to the du Pont likelihood of
confusion factors, we conclude that Applicant’s mark WITNESSED, as applied to “T-
shirts” so resembles the registered mark I WITNESSED for “athletic apparel,
namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Golf shirts;
Hooded sweat shirts; Sweat shirts; Wearable garments and clothing, namely, shirts”
as to be likely to cause confusion, mistake, or deception as to the source of Applicant’s
goods.
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IV. Identification of Goods
As a final matter, we address the Examining Attorney’s requirement for an
amended identification of goods. The Examining Attorney raised this issue in her
April 6, 2015 Office Action, and again in her May 15, 2015 Final Office Action, but
Applicant failed to address the matter in his April 21, 2015 Response to Office Action
or during the six-month response period following the Examining Attorney’s final
refusal. Applicant also did not discuss the requirement in his brief. It is obvious that
“t-shirts” are the only goods identified in the application, and that the additional
wording is simply a typographical error that does not cause the wording “t-shirts” to
be indefinite in any manner. However, there is no question that the additional
wording should not be included as part of the identification of goods were this
application to proceed to registration. Applicant’s utter failure to address the issue is
not well-taken. Accordingly, we affirm the requirement for an amended identification
of goods.
Decision: The refusal to register Applicant’s mark WITNESSED is affirmed on
the ground that Applicant lacks any statutory basis for filing his application; on the
ground of likelihood of confusion under Trademark Act Section 2(d); and on the
ground of Applicant’s failure to comply with the Examining Attorney’s requirement
of an amendment to the identification of goods.