Shannon Preston

Trademark Trial and Appeal Board

Aug 21, 2015

No. 85864287 (T.T.A.B. Aug. 21, 2015)

This Opinion is not a
Precedent of the TTAB

Oral Hearing: July 14, 2015 Mailed: August 21, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Shannon Preston
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Serial No. 85864287
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Andrew P. Lahser of Andrew P. Lahser, PLC,
for Shannon Preston.

Wendell S. Phillips III, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____

Before Bucher, Shaw, and Masiello,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Applicant, Shannon Preston, filed an application to register on the Principal
Register the mark UNRATED in standard characters for goods identified as
“Clothing sold only through owner’s online store, namely, anti-sweat underwear,
hats, jackets, pants, rash guards, shirts, shorts, sleepwear, sports bra, sweat pants,
sweat shirts, swim wear, t-shirts, tops, underwear, yoga pants,” in International
Class 25.1

1 Application Serial No. 85864287 was filed on March 1, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Serial No. 85864287
2
The Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), because of a likelihood of confusion with the
mark in U.S. Registration No. 3651681 for the mark UNR8ED, also in standard
characters, for “footwear” in international Class 25.2 After the Examining Attorney
made the refusal final, Applicant appealed and requested reconsideration. The
Examining Attorney denied the request for reconsideration and the appeal was
resumed. The case is fully briefed. We affirm the refusal to register.
Analysis
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence 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 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 and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). In this case, Applicant also submitted evidence regarding the use of
similar marks by third parties and arguments regarding differences in the goods’
channels of trade.

2 Issued July 7, 2009; combined Section 8 and 15 declaration accepted and acknowledged
August 26, 2014.
Serial No. 85864287
3
A. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression
We begin by considering the marks, comparing them for similarities and
dissimilarities in appearance, sound, connotation and commercial impression. See
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Applicant’s mark is UNRATED in standard characters. Registrant’s mark is
UNR8ED, also in standard characters. The only difference between the marks is
Registrant’s substitution of the number “8” for the letters “at” in the word
“unrated.” The Examining Attorney argues that “the numeral ‘8’ is frequently used
as an abbreviation for the phoneme ‘ate,’ so the marks UNRATED and UNR8ED
are essentially phonetic equivalents and thus sound similar.”3
Today’s consumers are frequently presented with the substitutions of certain
letters or words with phonetically equivalent numerals.4 For example, the number
“2” is sometimes used instead of the words “to” or “too” and the number “4” is
sometimes used instead of the word “for,” as in “4 sale.” This occurs in a variety of
internet-based communications such as emails and text messages.5 The use of
numbers or special characters to represent letters is often inconsequential to the
sound and meaning of a word. See In Home Federal Savings and Loan Association,

3 Examining Attorney’s Br., p.4. (Emphasis in Original).
4 Office Action, January 13, 2014; According to the Wikipedia entry submitted by the
Examining Attorney, “SMS language . . . is a term for the abbreviations and slang
commonly used with mobile phone text messaging, but sometimes used with other internet-
based communication such as email and instant messaging.”
5 Id.
Serial No. 85864287
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213 USPQ 68, 69 (TTAB 1982) (applicant’s mark TRAN$FUND is similar to
TRANSFUND).
“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). We find that when the
marks are spoken there is no difference between UNRATED and UNR8ED.
Accordingly, both marks convey the same commercial impression, that of something
that is “unrated.”
Citing In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984), Applicant argues
that the Board should find there is no likelihood of confusion inasmuch as the
marks project slightly different connotations. Applicant argues that its mark calls to
mind the movie rating system whereas the “highly unusual spelling of Registrant’s
mark” is unlikely to do so because consumers “would not abbreviate proper names,
such as trademarks.”6 We do not find this argument that the marks project slightly
different connotations to be persuasive. The nearest rating used by the Motion
Picture Association of America (“MPAA”), is “not rated”7 rather than “unrated” as
used by Applicant. Even assuming, arguendo, that Applicant’s mark calls to mind
the MPAA rating system, given the similarity of pronunciation of both marks, we

6 Applicant’s Br., p. 4.
7 Id., p. 3.
Serial No. 85864287
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see no reason why Registrant’s mark, when spoken, would not call to mind the same
system or the same rating.
Regarding the appearance of the marks, although both marks begin with and
end with the same letters, Registrant’s use of the number “8” in place of the letters
“at” does create some difference in the appearance of the marks. Nevertheless, we
find that the marks are similar in sound, connotation, and commercial impression.
Similarity as to any one factor may be sufficient to support a finding that the marks
are confusingly similar. See Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156
USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form,
spelling or sound alone is likely to cause confusion.”); In re White Swan Ltd., 8
USPQ2d 1534, 1535 (TTAB 1988).
B. The similarity or dissimilarity and nature of the goods described in
the application and registration
We next turn to the goods. It is settled that goods need not be similar or
competitive in nature to support a finding of likelihood of confusion. The question is
not whether purchasers can differentiate the goods themselves, but rather whether
purchasers are likely to confuse the source of the goods. See Helene Curtis Indus.
Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). Further, in an ex parte
appeal, likelihood of confusion is determined on the basis of the goods and services
as they are identified in the application and the cited registration. In re Elbaum,
211 USPQ 639, 640 (TTAB 1981).
Applicant’s goods are “anti-sweat underwear, hats, jackets, pants, rash guards,
shirts, shorts, sleepwear, sports bra, sweat pants, sweat shirts, swim wear, t-shirts,
Serial No. 85864287
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tops, underwear, yoga pants.” Registrant’s goods are “footwear.” The Examining
Attorney, in support of his contention that the goods at issue are commercially
related, has made of record examples of webpages from third-party vendors offering
goods that are similar in nature to those of both Applicant and Registrant under the
same mark, including the following, inter alia:8
• bananarepublic.gap.com – a website for the store Banana Republic
showing the sale of a variety of men’s clothing items alongside men’s
shoes;
• express.com – a website for the store Express showing the sale of a variety
of men’s clothing items alongside women’s shoes and sandals;
• forever21.com – a website for the store Forever 21 showing the sale of a
variety of women’s clothing items alongside a variety of women’s shoes;
• brooksbrothers.com – a website for the store Brooks Brothers listing a
variety of men’s clothing items alongside men’s shoes;
• bcbg.com – a website for the store BCBGMAXAZRIA listing a variety of
women’s clothing items alongside women’s shoes; and
• katespade.com – a website for the store Kate Spade listing a variety of
women’s clothing items alongside women’s shoes.
The Examining Attorney also made of record a number of third-party
registrations showing that both Applicant’s and Registrant’s types of goods are
offered under a single mark by others:9
• U.S. Registration No. 3584994 for the mark NORTH COAST SURF SHOP
used on footwear and underwear, hats, jackets, pants, rash guards, shirts,
shorts, swimwear, sweat pants, sweat shirts, t-shirts;
• U.S. Registration No. 4175352 for the mark used on footwear and
underwear, hats, jackets, pants, rash guards, shirts, shorts, sleepwear,
sports bras, sweatpants, sweatshirts, swimwear, T-shirts, tops;
• U.S. Registration No. 4341948 for the mark She-Balls used on footwear
and shirts, pants, jackets, hats;

8 Office Actions of June 21, 2013 and January 13, 2014.
9 Id.
Serial No. 85864287
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• U.S. Registration No. 4342996 for the mark Neo Burrito used on footwear
and hats, jackets, pants, shirts, shorts, swimwear, t-shirts, tops, yoga
pants;
• U.S. Registration No. 4343584 for the mark SHEDHEAD used on footwear
and t-shirts, sweatshirts, pants, shorts, jackets, hats, pajamas, shirts;
• U.S. Registration No. 4344035 for the mark SANDTAN used on footwear
and hats, shirts, swimwear, T-shirts, tank tops;
• U.S. Registration No. 4350493 for the mark BLACK ROOSTER used on
footwear and jackets, pants, shirts;
• U.S. Registration No. 4350650 for the mark BLOSSOMING SECRETS used
on footwear and tops, bottoms, shirts, T-shirts, pants, headwear,
underwear, sleepwear, swimwear; and
• U.S. Registration No. 4353100 for the mark used on footwear
and lingerie, underwear, bras, swimwear, T-shirts, sweat pants,
sweatshirts, tops, shirts, pants, jackets.
Although such third-party registrations are not evidence that the marks shown
therein are in use or that the public is familiar with them, they nonetheless may
have probative value to the extent they are based on use in commerce and serve to
suggest that the goods identified therein are of a kind which may emanate from a
single source under a single mark., i.e., that the same entity may provide clothing
and footwear under the same mark. See In re Davey Prods. Pty Ltd., 92 USPQ2d
1198, 1203 (TTAB 2009); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993).
We find that the third-party website evidence is competent to show that some
clothing retailers use a single mark to identify both Applicant’s and Registrant’s
types of goods and that the third-party registrations suggest that clothing and
footwear may emanate from a common source. This evidence shows that consumers
searching for information about clothing and footwear will likely see them
Serial No. 85864287
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commonly associated with each other, either by retailer or by brand. Based upon
this evidence we find that Registrant’s goods are related to those provided by
Applicant for purposes of our determination herein.
This du Pont factor favors a finding of likelihood of confusion.
C. Channels of trade and classes of purchasers
We next consider the du Pont factor relating to the channels of trade and classes
of purchasers. Applicant argues that the channels of trade for the respective goods
are different because its goods are sold only through Applicant’s online stores, as
noted in the identification of goods. Accordingly, “consumers would never encounter
Applicant’s goods in the same context as Registrant’s goods, thereby lessening any
potential likelihood of confusion.”10 But the issue is not whether purchasers would
confuse the respective goods, but rather whether there is a likelihood of confusion as
to the source of these goods. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
If the cited registration, as here, describes the goods broadly, and there is no
limitation as to their nature, type, channels of trade, or class of purchasers, it is
presumed that the registration encompasses all goods of the type described, that
they move in all normal channels of trade including the Internet, and that they are
available to all classes of purchasers. See, e.g., In re Thor Tech, Inc., 90 USPQ2d
1634, 1638 (TTAB 1990) (“We have no authority to read any restrictions or
limitations into the registrant’s description of goods.”).

10 Applicant’s Br., p. 5.
Serial No. 85864287
9
Both Applicant’s and Registrant’s goods would therefore be sold on the Internet,
albeit on different websites. The mere fact that they would be sold on different
websites does not compel the conclusion that the channels of trade are significantly
different. If the cited registration has an unrestricted identification of goods, an
applicant does not necessarily avoid a likelihood of confusion merely by more
narrowly identifying its channels of trade. See, e.g., In re Diet Center, Inc., 4
USPQ2d 1975 (TTAB 1987) (noting that, although applicant had limited its
identification to indicate that its goods were sold only through franchised outlets
offering weight reduction services, the cited registration’s identification contained
no limitations as to trade channels or classes of customers and thus it must be
presumed that registrant’s goods travel through all the ordinary channels of trade).
Applicant agues in its reply brief that the third-party website evidence
introduced by the Examining Attorney supports its position that Applicant’s and
Registrant’s channels of trade are distinguishable because “a manufacturer’s/
owner’s retail establishments do not commonly sell the goods of third parties.”11 We
find the evidence does not support Applicant’s argument.
As an initial matter, whether manufacturers choose to sell their own goods in
their own retail establishments does not mean that such manufacturers do not also
sell their products through third-party stores as well. Moreover, even if a
manufacturer chooses to sell its goods only in its own stores, as Applicant
apparently has chosen to do, customers may not necessarily know of this policy and

11 Applicant’s Reply Br., p. 1.
Serial No. 85864287
10
accordingly would not be surprised to find the manufacturer’s goods in a third-party
store. Neither will customers be aware of the limitation stated in Applicant’s
identification of goods.
More importantly, manufacturers do not forfeit their right to prevent later users
from adopting similar marks for similar goods simply because the manufacturers
choose to sell their goods in their own establishments. Applicant’s argument would
deny a basic trademark right to a vast number of manufacturers who choose to
make and sell their own products, and thus it is anathema to trademark
jurisprudence. See In re Thor Tech, 90 USPQ2d at 1638 (“We have no authority to
read any restrictions or limitations into the registrant’s description of goods.”).
This du Pont factor favors a finding of likelihood of confusion.
D. The number and nature of similar marks in use on similar goods
We next consider the strength of the marks and third-party use of similar marks
on similar goods. Evidence of third-party use falls under the sixth du Pont factor:
the “number and nature of similar marks in use on similar goods.” Du Pont, 177
USPQ at 567. If the evidence establishes that the consuming public is exposed to
third-party use of similar marks on similar goods, it “is relevant to show that a
mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay
Imports, 73 USPQ2d at 1693; See also Juice Generation, Inc. v. GS Enters. LLC, —
F.3d —, 2015 WL 4400033 (Fed. Cir. July 20, 2015) (“The weaker an Opposer’s
mark, the closer an applicant’s mark can come without causing a likelihood of
confusion and thereby invading what amounts to its comparatively narrower range
of protection.”).
Serial No. 85864287
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Applicant contends that the existence of other similar registered marks
comprising the term “rated” used on similar clothing goods entitles Registrant’s
mark to only a narrow scope of protection. Applicant made of record the following
“rated” marks:12
• Registration No. 797265 for the mark PRO-RATED used on men’s and
boy’s outer garments;
• Registration No. 1701132 for the mark TEAM RATED used on t-shirts,
sweatshirts, and pants;
• Registration No. 2163868 for the mark RATED X MAS used on tee shirts,
jackets, hats, shorts, sweatshirts, and underclothes;
• Registration No. 2996623 for the mark RATED X used on clothing and
footwear;
• Registration No. 3322308 for the mark G-RATED CLOTHING (stylized)
used on t-shirts, hats, sweatshirts, shoes, and pants;
• Registration No. 3774459 for the mark RATED (stylized) used on clothing
and apparel;
• Registration No. 3817572 for the mark UNDER RATED used on men’s,
woman’s, and children’s clothing;
• Registration No. 3944881 for the mark FIVE STARZ RATED used on hats
and shirts;
• Registration No. 4359360 for the mark RATED M BY MARIO LOPEZ used
on underwear, shirts, loungewear, and shorts; and
• Registration No. 3332414 for the mark NOT RATED used on footwear.
Absent evidence of actual use, third-party registrations are of limited probative
value for the du Pont factor relating to a crowded field and relative weakness.
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694 (CCPA 1976)
(third-party registrations “are entitled to little weight on the question of likelihood
of confusion where there is no evidence of actual use” of the marks therein). See also

12 Applicant’s response of December 23, 2011; Registration No. 2056365 is for the mark TR
in stylized form and has not been considered.
Serial No. 85864287
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In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
(“Even if 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.”). Moreover, based on the limited record before us, we have no way of
knowing whether any of the owners of the other marks are related or whether they
have entered into consent agreements permitting the use and registration of the
marks on the various products.
Nevertheless, when we compare all of the listed “rated” marks, we find
Applicant’s mark is most similar to Registrant’s mark in that they are pronounced
exactly the same and have the same meaning. That is, even if consumers are able to
distinguish among the “rated” marks by minute differences, Applicant’s mark, when
spoken, has no such difference. See King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 1401 182 USPQ 108, 109 (CCPA 1974) (Even a weak mark is
entitled to protection against the registration of a similar mark for closely related
goods.). Accordingly, this du Pont factor is neutral.
E. Balancing the factors
After considering all of the applicable du Pont factors, we find that Applicant’s
mark, UNRATED, for a variety of clothing items is likely to cause confusion with
the cited mark, UNR8ED, for footwear.
Decision: The refusal to register is affirmed.