Simple Shoes, Inc.v.Jay Mohseni

Trademark Trial and Appeal Board

Oct 6, 1998

No. 91101627 (T.T.A.B. Oct. 6, 1998)

Paper No. 20
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 10/6/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Simple Shoes, Inc.
v.
Jay Mohseni
_____
Opposition No. 101,627
to application Serial No. 74/577,971
filed on September 26, 1994
_____
Paul Juettner of Juettner Pyle Lloyd & Piontek for Simple
Shoes, Inc.
Kenneth Roberts of Lyon & Lyon LLP for Jay Mohseni
______
Before Simms, Cissel and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
An application has been filed by Jay Mohseni to
register the mark SIMPLE BY DESIGN on the Principal Register
for “headwear, hats, t-shirts, sweatshirts, shorts,
Opposition No. 101627
2
swimwear, pants, jeans, jackets, sweaters, overalls, skirts,
blouses, coats, pajamas, sleepwear, pullovers, headbands,
wristbands, underwear, cardigans and socks.”1 The
application was based on intent to use.
Registration has been opposed by Simple Shoes, Inc.
pursuant to Section 2(d) of the Trademark Act. In support
of its opposition, opposer asserts that it has continuously
used the mark SIMPLE on footwear and t-shirts since December
1991, and has continuously used the mark in interstate
commerce on said goods since March 13, 1992; and that
applicant’s mark, if used on his goods, would so resemble
opposer’s previously used and registered mark, SIMPLE, for
“men’s women’s and children’s casual and athletic shoes and
t-shirts”2 as to be likely to cause confusion, mistake, or
deception.
Applicant filed an answer in which he admits that his
mark has not been used in commerce, but he otherwise denies
the salient allegations of the notice of opposition3.
The record consists of the pleadings; opposer’s notice
of reliance on printed publications, product packaging4, a

1 Appl. Ser. No. 74/577,971, filed September 26, 1994.
2 Reg. No. 1,805,363, issued November 16, 1993.
3 Applicant asserted the untimeliness of the opposition as a
“defense” in his answer to the notice of opposition. The record
shows that on February 12, 1996 opposer filed a timely request to
extend its time to oppose until April 15, 1996. The Board
granted said request in an order dated March 19, 1996. The
notice of opposition was timely filed on April 12, 1996.
4 The Board notes that opposer’s product packaging is not
appropriate material for submission through a notice of reliance
Opposition No. 101627
3
status and title copy of opposer’s pleaded registration, and
applicant’s amended objections and answers to certain of
opposer’s first set of interrogatories to applicant; and the
testimony depositions (with exhibits) of Eric Meyer,
opposer’s founder, and Jalalh Mohseni5, applicant.6
In this case opposer has filed a status and title copy
of its pleaded registration. Because opposer owns a valid
and subsisting registration of its mark, the issue of
priority does not arise. See King Candy Company v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974); McDonald’s Corp. v. McClain, 37 USPQ2d 1274 (TTAB
1995); and Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696
(TTAB 1987).
Thus, the sole issue before the Board is likelihood of
confusion. Based on the record before us in this case, we
find that confusion is likely.

under Trademark Rule 2.122(e). However, applicant specifically
did not object to this evidence, stating that the only
evidentiary disputes related to certain objections to testimony.
Accordingly, we have considered the packaging to be of record.
See TBMP §708. In any event, opposer’s product packaging is not
of significance in deciding this case.
5 Both parties refer to this testimony deposition as that of
“applicant, Jay Mohseni”.
6 In their briefs on the case, both parties stated “there are no
evidentiary disputes other than occasional objections to trial
testimony, which objections are noted in the transcripts of Eric
Meyer and Jay Mohseni.” The parties did not renew any specific
objection in their briefs on the case. Even if the above-quoted
broad statement is construed as a renewal of all objections, the
Board will not rule on each of those few objections separately.
None of the individual objections by either side, separately or
collectively, is critical to the determination of this case.
Opposition No. 101627
4
The testimony of Eric Meyer establishes that he founded
the opposer corporation in December 1991 (Dep., p. 10), and
that the initial products made and offered to the public
under the mark SIMPLE by opposer were shoes, t-shits, hats,
decals, and stickers (Meyer Dep., p. 11). Opposer currently
sells a wide variety of products other than shoes,
including, hats, caps, socks, sweatshirts, wallets, key
chains, stickers, backpacks, and messenger bags (Dep., pp.
13-16 and 28). Mr. Meyer testified that opposer sells its
goods nationwide and worldwide through retailers ranging
from large department stores such as Nordstrom’s and Macy’s
West to the smallest surf shop (Dep., pp. 13 and 33), and
through mail order catalogs of companies such as REI and
Sundance (Dep., p. 32), and that opposer also sells its
shoes in shoe stores such as Athlete’s Foot, Foot Locker,
Lady Foot Locker, and Track and Trail (Dep., p. 33). He
further testified that opposer’s goods are promoted through
opposer’s sponsorship since December 1991 of various teams
such as surf teams, snowboard teams, and skateboard teams,
as well as sponsorship of a number of other athletes who
compete in the fields of mountain biking, water-skiing,
downhill skiing, etc. (Dep., p. 18). Opposer advertises its
goods in magazines such as Rolling Stone, Wired, Spin,
Details, Surfer, and Transworld Skateboarding (Dep., p. 19);
as well as through a website (Dep., p. 19); at large concert
Opposition No. 101627
5
tours; a poetry festival in Portland, Oregon; and at film
festivals, such as the New York International Film Festival
(Dep., pp. 19-20). Mr. Meyer specifically testified that t-
shirts and shoes have been sold continuously since opposer’s
inception in December 1991 (Dep., p. 27).
Opposer’s sales figures (domestically) are $800,000 (5%
non-shoe sales) for 1992; $1.6 million (5% non-shoe sales)
for 1993; $12 million (5% non-shoe sales) for 1994; $19
million (5% non-shoe sales) for 1995; and $26 million (7.5%
non-shoe sales) for 1996 (Dep., pp. 31-32).
Eric Meyer testified that the meaning of, or the
philosophy behind, opposer’s mark, SIMPLE, is “maintaining a
clean lifestyle,” and “not falling prey to the hype of the
1990’s.” (Dep., p. 22). In further explaining, Mr. Meyer
stated the motivating force in his founding of Simple Shoes,
Inc. was that he “was having a lot of trouble finding shoes
that I liked. Many of the shoes were, you know, offering
things that I didn’t want. And I was looking for shoes that
were classics from the past, and at the same time I wanted
the type of comfort which was available in an athletic
shoe.” (Dep., pp. 23-24).
Applicant, Jay Mohseni, testified that he met with Mr.
Meyer in San Diego to discuss a possible joint business
venture regarding the SIMPLE trademark, but no agreement was
reached (Dep., pp. 10-12); that before selecting his mark
Opposition No. 101627
6
SIMPLE BY DESIGN, a search was conducted, revealing several
registered marks that included the word SIMPLE, such as
SIMPLE LIFE (stylized), SIMPLE ADDITION, SIMPLESSE, SIMPLEE
ALONE (stylized), PURE & SIMPLE, SIMPLE PLEASURES, and
SIMPLE MINDS, all for goods which included items of
clothing; and that he believed anyone could use the word
SIMPLE (Dep., p. 12).
As to the meaning of his mark, Mr. Mohseni testified
that he added the words “BY DESIGN” to indicate that the
product was “designed simple to go out there, just your
basic colors,, classic styles,” keeping simplicity in mind
“to create a product line which would be timeless and
ageless.” (Mohseni Dep., p. 13).
He also testified that he intends to use his mark on
various items of apparel, not including shoes (Dep., pp. 16-
17), and that he will not sell to shoe stores (Dep., p 18).
He intends to sell his goods to department stores, such as
Nordstrom’s, Macy’s, the Federated chain, and Allied Stores,
clothing stores; specialty stores; through catalogs; and on
the Internet (Dep., p. 32-34). In his amended answers to
opposer’s interrogatories, he responded that he intends to
advertise in “national magazines publications, on the
internet, and on television.” (No. 5).
This record clearly establishes opposer’s continuous
use of the mark SIMPLE on clothing, namely shoes and t-
Opposition No. 101627
7
shirts, since December 1991, with sales through department
stores, specialty stores, and mail order catalogs. It is
also clear that applicant intends to sell a variety of
clothing items, including t-shirts. Applicant’s argument
that opposer is predominantly a shoe company is not
persuasive because, even if the majority of opposer’s sales
are for shoes, the t-shirts identified in opposer’s
registration must be deemed legally identical to the t-
shirts identified in applicant’s application. Moreover, t-
shirts are closely related to, inter alia, the sweatshirts,
pants, jeans and other specific clothing items in
applicant’s application. See In re Kangaroos U.S.A., 223
USPQ 1025 (TTAB 1984); B. Rich’s Sons, Inc. v. Frieda
Originals, Inc., 176 USPQ 284 (TTAB 1972); and The United
States Shoe Corp v. Oxford Industries, Inc., 165 USPQ 86
(TTAB 1970). Thus, the parties’ respective goods are in
part identical, and many are otherwise related.
As a result, the goods of opposer and applicant which
are deemed to be legally identical must also be deemed to be
sold in the same channels of trade. Moreover, it is clear
from the testimony of both parties that once applicant
commences use of his mark, he intends to sell through
channels of trade identical to those of opposer, such as
department stores, specialty stores and catalogs. Further,
the application contains no limitation as to channels of
Opposition No. 101627
8
trade and we must, therefore, presume that the goods move
through all of the normal channels of trade for goods of
this type. See The Chicago Corp. v. North American Chicago
Corp., 20 USPQ2d 1715 (TTAB 1991).
Turning to the marks, opposer’s mark is SIMPLE and
applicant’s mark is the word SIMPLE plus the words BY
DESIGN. Thus, the marks are in part identical. The
connotations of the respective marks, SIMPLE and SIMPLE BY
DESIGN, are quite similar, as testified to by both applicant
and opposer. Specifically, both connote the idea of a
simple, classic, timeless and/or ageless product.
Purchasers may assume that SIMPLE BY DESIGN is just an
extension of opposer’s line of products sold under the mark
SIMPLE, including shoes, clothing, and other items. That
is, consumers may see applicant’s mark as a mere variation
of opposer’s mark, SIMPLE. The addition of the words BY
DESIGN is insufficient to distinguish the marks because
overall they are substantially similar in commercial
impression. (Applicant did not argue or testify that the
addition of the words BY DESIGN was intended to indicate
these were clothing items designed by a specific designer.)
Moreover, where a newcomer has appropriated the entire
mark of a registrant, and has added to it a non-distinctive
term or otherwise subordinate matter, the marks are
generally considered to be confusingly similar. See Spoons
Opposition No. 101627
9
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB
1991), aff’d unpub’d, Appeal No. 92-1086 (Fed. Cir. June 5,
1992); In re Denise, 225 USPQ2d 624 (TTAB 1985); and The
Proctor & Gamble Company v. Glamorene Products Corporation,
188 USPQ2d 704 (TTAB 1975), aff’d at 190 USPQ2d 543 (CCPA
1976).
Applicant testified that he requested a search; and
that there were several third-party registrations which
include the word SIMPLE in some form (Dep., p. 12); and
opposer’s witness, Eric Meyer was questioned as to his
knowledge of third-party marks (Dep., pp. 51-54 and 58-59).
From this applicant argued that there is extensive third-
party use of the word SIMPLE or a variant thereof on related
goods; and that when questioned on these registered marks,
opposer testified that these marks were in use on the goods,
such as lingerie, t-shirts and hats, thereby admitting the
use of these third-party marks. Essentially, applicant is
arguing that SIMPLE is a weak mark which is not entitled to
a broad scope of protection, basing his claim on the third-
party registrations revealed by the search he conducted.
However, applicant is incorrect in his interpretation of the
testimony of opposer, and in his reliance on the
registrations alone. [In fact, applicant testified that he
did not have any evidence of use of the various third-party
marks (Dep., pp. 28-30).] Mr. Meyer was asked if he was
Opposition No. 101627
10
aware of certain registrations, to which he answered “yes”
or “no”, and he was asked if he believed that there was a
likelihood of confusion between the third-party marks and
opposer’s mark. This is not testimony as to use of the
marks, nor does it constitute an admission that the
registered marks are in use. Third-party registrations are
not evidence of use of the marks, or what happens in the
marketplace, or that consumers are familiar with the third-
party marks. See Olde Tyme Foods Inc., v. Roundy’s Inc.,
961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992); and
Spoons Restaurants Inc. v. Morrison Inc., supra, at 1740.
Thus, there is no evidence of record as to uses of similar
marks on similar goods. While third-party registrations may
be used to show the significance of a mark regarding
weakness, applicant’s mark is closer to opposer’s mark than
any of the registered third-party marks. That is,
applicant’s mark is the word SIMPLE with the additional
words BY DESIGN. The third-party registrations indicate
that the word SIMPLE (or some form thereof) has been
registered with other words for a variety of clothing items,
but applicant has not proven that opposer’s mark SIMPLE is a
weak mark.7

7 Applicant also argues in the brief on the case that opposer
acknowledges its mark SIMPLE should not be entitled to a broad
scope of protection because during the testimony of Eric Meyer,
opposer admitted “that a lack of strong public awareness of
Simple Shoes and what the brand represents has prevented Simple
Opposition No. 101627
11
Finally, opposer argued that applicant’s motive in
adopting his mark and applicant’s intent to trade on
opposer’s mark are relevant in this case. The record shows
that applicant contacted Eric Meyer at the offices of
opposer, Simple Shoes, Inc., to commence a joint venture or
to do business together under the mark SIMPLE; that the two
men spoke on the phone and met at a trade show in San Diego
in August 1994; that applicant wrote a proposal dated
September 6, 1994; and that no agreement to do business
together was ever reached. (Mohseni Dep., pp. 9-12).
While the record is clear that applicant knew of
opposer and opposer’s mark, SIMPLE, there is no convincing
evidence of bad faith by applicant. Mere knowledge does not
necessarily amount to bad faith in adopting a mark.
Nonetheless, a party which knowingly adopts a mark
similar to one used by another for the same or closely

shoes from expanding into the apparel arena.” (Appl’s brief, p.
14). Opposer takes issue with this assertion in that when asked
whether opposer had plans to further expand its line of products,
Eric Meyer testified, “yes”; and that opposer has been looking at
“other clothing products than we have currently”. (Meyer Dep.,
p. 28-29). In explaining the timetable for this, he stated that
opposer needs “to develop our brand to an extent that we feel the
public has a strong awareness of Simple Shoes and what the brand
represents. And as they see the logo, they know immediately
what-- they know immediately it’s Simple Shoes and what we’re all
about. And when we feel that that point has come, we will then
come out with the apparel line.” (Meyer Dep., p. 29). The Board
disagrees with applicant’s argument that this testimony
constitutes an admission that opposer’s mark is entitled to a
narrow scope of protection and that opposer’s mark lacks strong
public awareness. As indicated above, the third-party
registrations and opposer’s statements do not show that opposer’s
mark is a entitled to only a narrow scope of protection.
Opposition No. 101627
12
related goods does so at its peril and any doubt on the
question of likelihood of confusion must be resolved against
the junior user. See Kenner Parker Toys Inc. v. Rose Art
Industries Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d
1460, 18 USPQ2d 1889 (Fed. Cir. 1991); In re Hyper Shoppes
(Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988);
First International Services Corp. v. Chuckles, Inc., 5
USPQ2d 1628, 1633 (TTAB 1988); and Roger & Gallet S.A. v.
Venice Trading Co. Inc., 1 USPQ2d 1829, 1832 (TTAB 1987).
Based on the close similarity of the marks, the
identity or close relationship of the goods, and the
identity of the trade channels, confusion is likely between
applicant’s mark and opposer’s mark, when these marks are
used on the respective goods of the parties.
Decision: The opposition is sustained, and
registration to applicant is refused.
R. L. Simms
R. F. Cissel
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board