Settlers’ Holding Company, Inc.v.Seok & Sons, LLC

Trademark Trial and Appeal Board

Feb 25, 2015

No. 91214286 (T.T.A.B. Feb. 25, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: February 25, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Settlers’ Holding Company, Inc.
v.
Seok & Sons, LLC
_____

Opposition No. 91214286
to application Serial No. 85903171
_____

Jeffrey C. Joyce of Bohan Mathers LLC for Settlers’ Holding Company, Inc.

Mike Meier of International Law Group for Seok & Sons, LLC.
______

Before Kuhlke, Cataldo and Masiello,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Seok & Sons LLC (“Applicant”) applied to register the mark shown below
for
retail store services featuring beauty products, cosmetics, hair
care products, hair styling products, skin care products, costume
jewelry, ornaments and general merchandise

Opposition No. 91214286

2
in International Class 35.1

“The mark consists of the letter ‘B’ with a stylized flower.” “Color is not
claimed as a feature of the mark.”
Settlers’ Holding Company, Inc. (“Opposer”) filed an opposition to the
registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that Applicant’s mark is likely to cause
confusion with Opposer’s marks. Opposer asserted ownership of two
registrations: Registration Nos. 29760252 for the mark shown below,

“The mark consists of a fanciful flower-like device residing in a box.” “Color is
not claimed as a feature of the mark;”
and Registration No. 29892803 for the mark shown below,

1 Application Serial No. 85903171 is based on Applicant’s assertion of July 12, 2002
as a date of first use of the mark anywhere and in commerce in connection with the
services under Section 1(a) of the Trademark Act.
2 Registered July 26, 2005. Section 8 affidavit accepted; Section 15 affidavit
acknowledged. First Renewal.
3 Registered August 30, 2005. Section 8 affidavit accepted; Section 15 affidavit
acknowledged. First Renewal.
Opposition No. 91214286

3

“The mark consists of a fanciful flower-like device.” “Color is not claimed as a
feature of the mark.”
Both registrations recite
advertising services, namely, promoting the goods and services
of others; business management of shopping malls, shopping
centers and outlet shopping centers; rental of advertising space

in International Class 35; and
shopping center services, namely leasing and rental of shopping
mall space

in International Class 36.
In its Answer, Applicant denied the salient allegations of the notice of
opposition, except that it admitted Opposer is the owner of its pleaded
registrations (para 1), that Opposer’s registrations “are subsisting and are
not abandoned”4 (para 2) and that Applicant applied to register the involved
mark. (para 15).5

4 5 TTABVue 4-5. Record citations are to TTABVue, the Trademark Trial and
Appeal Board’s publically available docket history system. See Turdin v. Trilobite,
Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
5 Applicant asserted in its answer certain affirmative defenses but did not pursue
them by motion or at trial. Accordingly, they are deemed waived. Applicant asserted
additional matters that are more in the nature of amplifications of its denials of the
allegations in the notice of opposition and have been so construed.
Opposition No. 91214286

4
Opposer subsequently amended its notice of opposition to add an
allegation that Applicant has failed to use its applied-for mark “as or in the
manner of a service mark.”6 We observe that while Applicant did not file an
amended responsive pleading, it submitted a response to Opposer’s motion to
amend its pleading indicating that “even though Applicant disagrees with
Opposer’s allegation, in order to keep this proceeding simple, Applicant
hereby consents to Opposer’s motion so that Opposer may amend its Notice of
Opposition as requested in its Motion”7 and has presented arguments in its
brief in opposition to Opposer’s claim of non-use. Accordingly, we deem
Applicant to have denied paragraphs 18 and 19 in the amended notice of
opposition, directed toward Opposer’s allegation of Applicant’s non-use of the
involved mark in the manner of a service mark.
The Record and ACR Procedural Background
Approximately three weeks into the discovery period, the parties
stipulated to adopt the Board’s Accelerated Case Resolution (“ACR”)
procedure to streamline their pre-trial and trial procedures and reduce the
pendency of this proceeding.8 In accordance with the schedule set by the
parties, subsequently modified by two consented motions to extend, the time
from notice to briefing took ten months. The Board commends the parties for

6 8 TTABVue 7.
7 9 TTABVue 2.
8 For more information on ACR, see TBMP §§ 528.05(a)(2) and 705 (2014).
Opposition No. 91214286

5
their decision to resolve this case via the efficient means of an ACR procedure
early in the proceeding, consenting to all motions filed herein, and adducing a
concise record.
Pursuant to the Stipulation for ACR, the parties filed a Stipulation to
Admissibility of Documents, providing that the parties’ evidence as well as a
testimony affidavit of a witness for Opposer may be admitted into evidence in
this proceeding, while reserving “the right to object to the relevance,
materiality, and/or weight of the documents.”9
By operation of law, the record includes the pleadings and the file of the
involved application. Rule 2.122 (a), (b); 37 CFR § 2.122 (a), (b). Pursuant to
the parties’ agreement, the record further consists of Opposer’s notice of
reliance, and the evidence filed by both parties with their briefs in accordance
with their ACR agreement.
Priority and Standing
Standing is a threshold issue that must be proven in every inter partes
case. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982) (“The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely
because of the allegations in its [pleading].”). To establish standing in an
opposition, an opposer must show both “a real interest in the proceedings as

9 10 TTABVue 2-4. Opposer filed (16 TTABVue 2-7) a subsequent consented motion
to amend the stipulation to correct certain errors in the original.
Opposition No. 91214286

6
well as a ‘reasonable’ basis for his belief of damage.” See Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
As discussed above, Applicant admitted in its answer that Opposer is the
owner of its pleaded registrations, and that Opposer’s registrations “are
subsisting and are not abandoned.”10 Opposer made of record plain copies of
its pleaded registrations. In view thereof, Opposer has established its
standing and priority is not in issue with respect to the marks and the
services set out in its pleaded registrations. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); and King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
relevant, probative evidence in the record related to the issue of likelihood of
confusion. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973); see also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997). In any likelihood of confusion analysis, two key

10 5 TTABVue 4-5.
Opposition No. 91214286

7
considerations are the similarities between the marks and the similarities
between the goods and 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.”). We
discuss the du Pont factors for which there are relevant arguments and
evidence.
For purposes of our likelihood of confusion analysis, we focus on pleaded
Registration No. 2989280. We find this mark to be the most relevant of
Opposer’s pleaded registrations for our du Pont analysis. Accordingly, if we
find a likelihood of confusion as to this pleaded registration, we need not find
it as to the other. On the other hand, if we don’t reach that conclusion, we
would not find it as to the other pleaded registration either. See In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
The Services, Channels of Trade and Classes of Consumers
The identification of services covered by Opposer’s Registration No.
2989280 includes “shopping center services, namely leasing and rental of
shopping mall space.” The identification of services in the application is
“retail store services featuring beauty products, cosmetics, hair care products,
hair styling products, skin care products, costume jewelry, ornaments and
general merchandise.” As identified, the services are related to the extent
that Opposer provides shopping center services and Applicant provides retail
Opposition No. 91214286

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store services. Opposer also made of record copies of nine use-based, third-
party registrations comprising services of a type recited by opposer and
applicant.11
Registration No. 2460380 for the mark BELLEVUE SQUARE
for retail store and retail shopping mall services;

Registration No. 2661854 for the mark SANDESTIN GOLF
AND BEACH RESORT and design for retail department stores,
retail clothing stores, leasing of shopping mall space;

Registration No. 2978288 for the design of a sun with a human
face, for retail gift store services, leasing of shopping mall space;

Registration No. 3102694 for the mark TOWN PEDDLER for
retail craft and antique store services, mall services, namely,
leasing booths and related booth accessories to craft and antique
vendors;

Registration No. 3114581 for the mark SKY SHOPS AT CVG
and design for mall and retail store services for gifts, clothing
and concessions, in the nature of food and souvenirs;

Registration No. 3517450 for the mark THE SHOPPES AT THE
PALAZZO for retail store services, located within shopping
arcades and alone, featuring a variety of goods, namely, general
consumer merchandise, jewelry, personal care products,
cosmetics, leasing of shopping mall space, shopping center
services;

Registration No. 3981961 for the mark THE BRAVERN for
retail store services featuring a wide variety of consumer goods
and services of others, leasing of shopping mall space;

11 18 TTABVUE 196 – 215. We do not include the entire description of goods and/or
services for each registration. We have listed only the services relevant to this
proceeding.

Opposition No. 91214286

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Registration No. 4117468 for the mark THE CAMP for retail
store services featuring clothing, accessories, personal body care
products, leasing of shopping mall space; and

Registration No. 4242693 for the mark SUN VALLEY and
design for retail apparel and gift store services, leasing of
shopping mall space.

Third-party registrations which individually cover a number of different
goods that are based on use in commerce may have some probative value to
the extent that they serve to suggest that the listed goods are of a type which
may emanate from the same source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). In this case, the third-party
registrations made of record by Opposer suggest that its services as well as
services of a type identified in Applicant’s application may be identified under
the same mark and emanate from a common source.
Applicant’s channels of trade include promotional mailers, its Internet
website, sporadic advertisements in printed publications in the field of
beauty, and walk-in customers.12 Applicant indicates that “the overwhelming
majority of [its] customers are female African-American or of ethnic origin.”13
Opposer’s channels of trade include television, newspapers, magazines, guide
books, its Internet website and email newsletters.14 Opposer’s consumers

12 18 TTABVue 111.
13 Id.
14 Id. at 178.
Opposition No. 91214286

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include “women age 18-45, vacationing families with children, vacationing
singles, sports enthusiasts, fashion forward women, and other consumers of
retail products.”15 Thus, both parties market their services, inter alia, via
their Internet websites and printed publications. As such, the channels of
trade for the parties’ services overlap in part. Also, there are no restrictions
in the identifications of services as to the parties’ respective channels of
trade. See Octocom Systems, Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion
that the question of registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the application regardless
of what the record may reveal as to the particular nature of an applicant’s
goods, the particular channels of trade or the class of purchasers to which the
sales of goods are directed.” (citations omitted)). Thus, there is evidence of a
partial overlap in the parties’ channels of trade, and no specified restrictions
in their respective identifications of services that would impose limitations
thereupon. In addition, Opposer markets its services to, inter alia, women of
a wide age range regardless of ethnicity, which encompasses Applicant’s
targeted consumers. As a result, the parties market their services to
overlapping groups of consumers.

15 Id.
Opposition No. 91214286

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Applicant acknowledges that the parties’ services move in similar trade
channels, but argues that it is located in the Washington, D.C. area and
Opposer is located in New Hampshire, and thus, “both Applicant and
Opposer are limited largely to local customers.”16 Applicant further argues
that due to the geographic distance between the parties, their services are
unlikely to be encountered by the same customers.17 However, there is no
evidence that either party’s services are restricted only to local customers.
Further, there are no geographical restrictions recited either in Opposer’s
Registration No. 2989280 (or its other pleaded registration) or the involved
application. Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides
that a certificate of registration on the Principal Register shall be prima facie
evidence of the validity of the registration, of the registrant’s ownership of
the mark and of the registrant’s exclusive right to use the mark in connection
with the goods or services identified in the certificate. See Giant Food Inc. v.
Nations Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed. Cir. 1983).
Thus, Opposer’s exclusive rights to use the mark in its Registration No.
2989280 accrue throughout the United States, not simply New Hampshire.18

16 20 TTABVue 11.
17 Id.
18 Geographic limitations are considered and determined only in the context of a
concurrent use proceeding. Trademark Rule 2.133(c); Enterprise Rent-A-Car Co. v.
Advantage Rent-A-Car Inc., 330 F.3d 1333, 66 USPQ2d 1811, 1815 (Fed. Cir. 2003).
See also TBMP § 1100.
Opposition No. 91214286

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Accordingly, we find that the factors of similarity of the services, trade
channels and classes of consumers weigh in favor of finding a likelihood of
confusion.
The Marks
We consider and compare the appearance, sound, connotation and
commercial impression of the marks in their entireties. Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at
1692. The similarity of the marks with regard to one of these factors can be
critical to a finding of similarity. See TBC Corp. v. Holsa Inc., 126 F.3d 1470,
44 USPQ2d 1315, 1318 (Fed. Cir. 1997) (phonetic similarity may be critical
when goods are advertised via radio or when business is done by telephone).
See also In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113 (Fed. Cir. 1983)
(“the PTO may reject an application ex parte solely because of similarity in
meaning of the mark sought to be registered with a previously registered
mark”); but see Bost Bakery, Inc. v. Roland Industries, Inc., 216 USPQ 799,
801 (TTAB 1991) (“the principle that similarity between marks in meaning or
commercial significance alone may be sufficient to create a likelihood of
confusion is applicable primarily to situations where marks are coined or
arbitrary rather than highly suggestive.”) However, the law does not counsel
that similarity in one factor alone automatically results in a finding that the
marks are similar. See Coach Servs. Inc. v. Triumph Learning LLC, 96
Opposition No. 91214286

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USPQ2d 1600, 1609 (TTAB 2010), aff’d, 668 F.3d 1356, 101 USPQ2d 1713
(Fed. Cir. 2012).
In comparing the marks, we are mindful that “[t]he 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, 101
USPQ2d at 1721 (citation omitted). See also San Fernando Electric Mfg. Co.
v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. June 5, 1992). Thus,
although we place the marks alongside each other in the following paragraph
for purposes of this decision, consumers will rarely have the luxury of viewing
the marks in such a manner.
The marks in Registration No. 2989280 and the involved application are
displayed below.
and
To state the obvious, the marks share a similarity to the extent the stylized
flower design in Applicant’s mark is highly similar to the stylized flower
Opposition No. 91214286

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design comprising Opposer’s mark. The marks differ due to the presence of
the incomplete letter “B” in Applicant’s mark.
Both marks appear to be arbitrary as used in connection with the parties’
respective services and there is no probative evidence to the contrary in the
record. Applicant’s introduction into the record of a printout from the
Trademark Electronic Search System (TESS) purporting to show a summary
of the first 100 of over 19,000 entries for certain types of flowers does not
compel a different result.19 The results summary only includes the
application serial number or registration number, word portion of the mark if
applicable, and status as live or dead. Without an indication of the identified
goods or services they have no probative value for determining if flower
designs similar to Opposer’s mark are widely registered for the relevant
services. Second, only 5 of the 100 entries indicate that the mark is
registered. The remaining 95 applications have probative value only to show
that they were filed. Interpayment Services Ltd. v. Docters & Thiede, 66
USPQ2d 1463 (TTAB 2003). Finally, registrations have no probative value as
to the du Pont factor concerning third-party use inasmuch as they are not
evidence of what happens in the market place or consumer familiarity with a
particular designation. AMF Inc. v. American Leisure Products, Inc., 474 F.2d
1403, 177 USPQ 268, 269 (CCPA 1973).

19 20 TTABVue 18, 21-28.
Opposition No. 91214286

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Applicant argues that
While no consumer surveys were conducted by Applicant or
Opposer, it is highly doubtful that a majority of consumers
would identify Opposer’s mark as a flower. One can reasonably
assume that many consumers would rather identify it as an
asterisk, especially in light of Opposer’s business of managing a
mall.20

However, as Applicant acknowledges, there is no evidence in the record to
support its speculative argument that consumers would view Opposer’s mark
as an asterisk as opposed to a stylized flower. Moreover, Applicant provides
no support for its contention that consumers would view Opposer’s mark as
an asterisk due to the nature of Opposer’s services. We observe in addition
that, to the extent consumers might interpret Opposer’s mark as
representing an asterisk, such consumers are likely to take a similar view of
the highly stylized flower design in Applicant’s mark. As a result, we find no
support for Applicant’s argument that the design portion of its mark would be
viewed as having a different connotation from Opposer’s mark.
The stylized, six-petal flower design in Applicant’s mark is highly similar
to the stylized, six-petal flower design comprising Opposer’s mark in
appearance and connotation. The addition of the letter “B” to Applicant’s
mark creates a difference in appearance and sound. Nonetheless, due to the
high degree of similarity between the design portion of Applicant’s mark and
Opposer’s mark, we find that the similarities outweigh the differences and

20 20 TTABVue 9.
Opposition No. 91214286

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that consumers are likely to view the marks as variations of each other that
nonetheless point to a common source.
Accordingly, this factor, too, weighs in favor of finding a likelihood of
confusion.
Consumer Sophistication
Applicant “agrees that both Applicant and Opposer target retail
consumers, which are generally considered an unsophisticated group.”21
Applicant argues nonetheless, without evidentiary support, that “Applicant
and Opposer target different strata of the retail consumer group.”22 However,
and as discussed above, to the extent Applicant argues that the geographic
distance between the parties makes it unlikely that the same consumers will
encounter the services under their marks, Opposer’s services as identified in
Opposer’s Registration No. 2989280 are not limited to any geographic area.
In addition, both parties market their services over the Internet, which is
available to anyone with an Internet service provider. Moreover, the
applicable standard of care is that of the least sophisticated consumer.
Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). As
Applicant has noted, this includes the general public, who are not necessarily
sophisticated consumers. Meanwhile, it is well-established that even

21 20 TTABVue 11.
22 Id.
Opposition No. 91214286

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sophisticated consumers are not immune from source confusion. See
Cunningham, 55 USPQ2d at 1846.
Accordingly, we deem this factor to be neutral.
Lack of Actual Confusion
Applicant argues that there have been no instances of actual confusion
despite the parties’ use of their respective marks for over seven years. We
note, however, that while the presence of confusion may be very useful to our
analysis, 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). This is especially true where, as here, we cannot conclude with any
certainty the extent to which there has been a substantial opportunity for
actual confusion to occur among purchasers. Nike Inc. v. WNBA Enters. LLC,
85 USPQ2d 1187, 1202 (TTAB 2007).
Accordingly, we find this factor to be neutral.
Conclusion
Considering all of the arguments and evidence of record as they
pertain to the relevant du Pont factors, including any arguments and
evidence not specifically discussed herein, in comparing Applicant’s involved
application with Opposer’s Registration No. 2989280, we conclude that the
services are related and likely to be offered through some of the same
channels of trade to the same classes of consumers, including those in the
general public whom we do not assume to have any heightened level of
Opposition No. 91214286

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sophistication. Despite the differences between the marks, we find the
similarities to outweigh the differences. There is no evidence that the shared
design, consisting of a stylized six-petal flower, is commonly used by third
parties, or that it has an understood meaning in relation to the services. On
balance, we find the factors to weigh in favor of finding a likelihood of
confusion.
In view thereof, we need not consider Opposer’s claim of non-use.
DECISION: The opposition is sustained on the ground of likelihood of
confusion.