SoleMates, LLC

Trademark Trial and Appeal Board

Mar 22, 2013

No. 85262439 (T.T.A.B. Mar. 22, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: March 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SoleMates, LLC
________

Serial No. 85262439
_______

Fritz L. Schweitzer Jr. of St Onge Steward Johnston & Reens
LLC for SoleMates, LLC.

Anthony Rinker, Trademark Examining Attorney, Law Office
102 (Mitch Front, Managing Attorney).
_______

Before Seeherman, Cataldo and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

SoleMates, LLC has applied to register on the
Principal Register the mark
SOLEMATES
in standard characters for “jewelry” in International Class
14.1

1 Application Serial No. 85262439, filed March 9, 2011, pursuant
to applicant’s assertion of its bona fide intent to use the mark
in commerce under Section 1(b) of the Trademark Act.
Ser. No. 85262439
2
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the marks
SOULMATE
and
SOULMATE. BECOME ONE. AGAIN.
both registered on the Principal Register by the same
entity for “jewelry,” that as used in connection with
applicant’s goods it is likely to cause confusion or
mistake or to deceive.2
We affirm the refusal to register.
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 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). See also, In re Dixie

2 Registration No. 3306078 issued October 9, 2007. Registration
No. 3502298 issued on September 16, 2008.
Ser. No. 85262439
3
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
To state the obvious, applicant’s “jewelry” is
identical to the “jewelry” identified in the cited
registrations. Applicant does not argue otherwise.
Further, because as identified the goods are legally
identical, they must be presumed to travel in the same
channels of trade and be sold to the same classes of
consumers. See Hewlett-Packard Co. v. Packard Press, Inc.,
281 F.3d 1261, 1268, 62 USPQ2d 1001 (Fed. Cir. 2002); In re
Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
These du Pont factors favor a finding of likelihood of
confusion.
The next du Pont factor we consider is the similarity
of the marks. Because the additional wording in the cited
SOULMATE. BECOME ONE. AGAIN. mark arguably contains
additional points of difference with applicant’s mark, we
confine our analysis to the issue of likelihood of
confusion between applicant’s mark and the cited
registration for the mark SOULMATE. That is, if confusion
is likely between those marks, there is no need for us to
consider the likelihood of confusion with the cited
registration for SOULMATE. BECOME ONE. AGAIN., while if
there is no likelihood of confusion between applicant’s
Ser. No. 85262439
4
mark and SOULMATE, then there would be no likelihood of
confusion with the SOULMATE. BECOME ONE. AGAIN. mark. See
In re Max Capital Group Ltd., 93 USPQ2d at 1245.
There are certain principles that we must keep in
mind. First, when marks would appear on virtually
identical goods or services, as they do here, the degree of
similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). Second, similarity in any one of the
elements of sound, appearance, meaning, or commercial
impression is sufficient to support a determination of
likelihood of confusion. 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) (“In appropriate
cases, a finding of similarity as to any one factor (sight,
sound or meaning) alone ‘may be sufficient to support a
holding that the marks are confusingly similar’”)
(citations omitted)). Therefore, even if the marks had
different meanings, it would not necessarily mean there was
no likelihood of confusion. Third, the test is not whether
the marks can be distinguished when subjected to a side-by-
Ser. No. 85262439
5
side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. In re Association of
the United States Army, 85 USPQ2d 1264, 1268 (TTAB 2007);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
With these principles in mind, we turn to the marks at
issue. Applicant’s SOLEMATES mark is virtually identical
in sound to registrant’s SOULMATE mark. It has long been
held that the difference between plural and singular word
forms is of little consequence in comparing marks under
Trademark Act § 2(d). See, e.g., Wilson v. Delauney, 245
F.2d 877, 114 USPQ 339, 341 (CCPA 1957); Chicago Bears
Football Club v. 12th Man/Tenn. LLC, 83 USPQ2d 1073, 1077
(TTAB 2007). There are also similarities in the appearance
of the marks, in that both have the same second syllable
(MATE/MATES), while the first syllable of both consists of
four letters with the first two letters and one of the
remaining two letters all being the same.
Ser. No. 85262439
6
With regard to connotation, applicant argues that the
term SOULMATE comprising registrant’s mark connotes “one of
two persons esp. of opposite sex temperamentally suited to
each other”3 whereas its mark “is more suggestive of
footwear and footwear accessories (and, indeed, the
business of the applicant is largely involved with the
marketing of footwear accessories).4 We agree with
applicant’s characterization of the meaning of the mark
SOULMATE. We further agree that applicant’s spelling of
its SOLEMATES mark adds a footwear-related twist to the
term “soul mates.” Nonetheless, because applicant’s mark
would readily be understood as being a play on the term
“soul mates,” the connotations and commercial impressions
of the marks are related and, in any event, more similar
than dissimilar.
Thus, although there are some differences in the
marks, these differences are not sufficient to distinguish
the marks. This du Pont factor favors a finding of
likelihood of confusion.
As for the strength of the SOULMATE mark, applicant
has introduced evidence from commercial internet websites
and argued at length that “the term ‘soulmate’ (in the

3 Applicant’s brief, p. 8.
4 Id.
Ser. No. 85262439
7
singular or plural form, one word or two word form) was
used generically throughout the jewelry trade to refer to a
type of jewelry… .”5 In this regard, we point out this is
an ex parte proceeding, and applicant is not permitted to
overcome a refusal by arguing that the mark in a cited
registration is merely descriptive or generic. The Court
stated in In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534-35 (Fed. Cir. 1997):
Dixie's argument that DELTA is not actually used in
connection with restaurant services amounts to a
thinly-veiled collateral attack on the validity of the
registration. It is true that a prima facie
presumption of validity may be rebutted. See Dan
Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d
1009, 1014, 202 USPQ 100, 105 (CCPA 1979). However,
the present ex parte proceeding is not the proper
forum for such a challenge. Id. ("One seeking
cancellation must rebut [the prima facie] presumption
by a preponderance of the evidence."); Cosmetically
Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165
USPQ 515, 517 (CCPA 1970); TMEP Section 1207.01(c)(v)
(1993); 3 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition Section 23.24[1] [c] (3d ed.
1996). In fact, Cosmetically Yours held that “it is
not open to an applicant to prove abandonment of [a]
registered mark" in an ex parte registration
proceeding; thus, the "appellant's argument … that
[a registrant] no longer uses the registered mark …
must be disregarded." 424 F.2d at 1387,165 USPQ at
517; cf. In re Calgon Corp., 435 F.2d 596, 598, 168
USPQ 278, 280 (CCPA 1971) (applicant's argument that
its use antedated a registered mark was effectively an
improper collateral attack on the validity of the
registration, which should have been made in formal
cancellation proceedings).

5 Id. at 6, emphasis in original.

Ser. No. 85262439
8
See also Hecon Corporation v. Magnetic Video Corporation,
199 USPQ 502, 507 (TTAB 1978) (“Applicant has also
contended that the term ‘COPYCORDER’ is ‘particularly
descriptive’ of opposer's goods and thus is entitled to but
a limited scope of protection. Aside from the fact that
the term ‘COPYCORDER’ is, in our opinion, only suggestive
as applied to either opposer's or applicant's goods, the
assertion of descriptiveness constitutes a collateral
attack upon the validity of opposer's pleaded registration
and as such cannot be entertained herein in the absence of
a counterclaim to cancel the same”). Therefore, inasmuch
as the cited mark is registered on the Principal Register,
we must assume that it is at least suggestive and we cannot
entertain applicant’s collateral attack that the registered
mark is descriptive or generic as applied to its jewelry.
We do conclude from the third-party internet evidence
that SOULMATE has a suggestive meaning and therefore the
cited registration is not entitled to a broad scope of
protection. However, it is well-settled that even
suggestive or weak marks are entitled to protection from
the use of a very similar mark for legally identical goods.
See In re Chica Inc., 84 USPQ2d 1845, 1850 (TTAB 2007),
quoting In re Colonial Stores, 216 USPQ 793, 795 (TTAB
1982):
Ser. No. 85262439
9
if the word CORAZON, and its English
translation, was considered to be
highly suggestive of jewelry, it
nonetheless is entitled to protection
from the use of a very similar mark on
jewelry products. “[E]ven weak marks
are entitled to protection against
registration of similar marks,
especially identical ones, for related
goods and services.”

To the extent that any other du Pont factors are
relevant, we treat them as neutral.
In view of the above discussion, and our finding that
the factors of the similarity of marks, and the legally
identical goods and trade channels, all favor a finding of
likelihood of confusion, and that any other du Pont factors
are neutral, we find that applicant’s mark for its goods is
likely to cause confusion with the mark registered under
Registration No. 3306078, and affirm the refusal of
registration made pursuant to Section 2(d).
Decision: The refusal of registration pursuant to
Section 2(d) is affirmed.