Stance, Inc.

Trademark Trial and Appeal Board

Jun 4, 2018

No. 87168245 (T.T.A.B. Jun. 4, 2018)

Mailed: June 4, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Stance, Inc.
_____

Serial No. 87168245
_____

Gregory K. Nelson of Weeks Nelson,
for Stance, Inc.
Steven W. Ferrell Jr., Trademark Examining Attorney, Law Office 121,
Kevin Mittler, Managing Attorney.
_____

Before Cataldo, Ritchie and Adlin,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant Stance, Inc. seeks registration on the Principal Register of the mark
identifying the following goods, as amended, “Socks; performance
socks, hosiery and underwear; all excluding uniforms and work and utility clothing”
in International Class 25.1

1 Application Serial No. 87168245 was filed on September 12, 2016 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s allegation of June 22, 2010 as the
This Opinion is not a
Precedent of the TTAB
Serial No. 87168245
- 2 -
The Trademark Examining Attorney has refused registration under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as
used in connection with the identified goods, so resembles the following marks,
previously registered on the Principal Register in typed or standard characters to the
same entity: UNCOMMON THREADS (“THREADS” disclaimed), identifying
“Clothing, namely, uniforms, work and utility shirts, work and utility trousers, work
and utility coats; aprons; smocks and scrubs not for medical purposes; hats, caps and
beanies; neckerchiefs,” in International Class 25;2 and UNCOMMON THREADS
WORKING WEAR THAT WORKS AS HARD AS YOU DO., identifying “Clothing,
namely, uniforms, work and utility shirts, work and utility trousers, work and utility
coats; aprons; smocks and scrubs; hats, caps and beanies; neckerchiefs,”3 as to be
likely to cause confusion, to cause mistake, or to deceive.
After the Examining Attorney made the refusals final, Applicant appealed to this
Board and filed a request for reconsideration, which was denied. We affirm the
refusal to register.

date of first use of the mark anywhere and in commerce. The application includes the
following description of the mark and color claim: The mark consists of the stylized words
“the UNCOMMON thread” in a stacked format with the word “the” centered above the word
“UNCOMMON” which is centered above the word “thread” with a piece of thread depicted
beneath. Color is not claimed as a feature of the mark.
2 Registration No. 3569235 issued on February 3, 2009. Section 8 and 15 affidavits accepted
and acknowledged. First Renewal.
3 Registration No. 2868001 issued on July 27, 2004. Section 8 and 15 affidavits accepted and
acknowledged. First Renewal.
Serial No. 87168245
- 3 -
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper 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.”).
1. Focus on Cited Registration No. 3569235
For purposes of the du Pont factors that are relevant to this appeal we will
consider Applicant’s involved mark and identified goods and the UNCOMMON
THREADS mark that is the subject of cited Registration No. 3569235, identifying
“Clothing, namely, uniforms, work and utility shirts, work and utility trousers, work
and utility coats; aprons; smocks and scrubs not for medical purposes; hats, caps and
beanies; neckerchiefs.” If likelihood of confusion is found as to the mark and goods in
this registration, it is unnecessary to consider the other cited registration because it
is less similar to Applicant’s involved mark. Conversely, if likelihood of confusion is
not found as to the mark and goods in this registration, we would not find likelihood
Serial No. 87168245
- 4 -
of confusion as to the mark and goods in the other cited registration. See In re Max
Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
2. Relatedness of the Goods/Channels of Trade/Consumers
With regard to the goods, channels of trade and classes of consumers, we must
make our determinations based on the goods as they are identified in the application
and cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002);
Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). A proper comparison of the goods considers whether “the
consuming public may perceive [the respective goods or services of the parties] as
related enough to cause confusion about the source or origin of the goods and
services.” Hewlett Packard, 62 USPQ2d at 1004. Therefore, to support a finding of
likelihood of confusion, it is not necessary that the goods be identical or even
competitive. It is sufficient that the goods are related in some manner, or that the
circumstances surrounding their marketing are such that they would be encountered
by the same persons in situations that would give rise, because of the marks, to a
mistaken belief that they originate from the same source or that there is an
association or connection between the sources of the goods. In re Thor Tech Inc., 90
USPQ2d 1634, 1635 (TTAB 2009).
Serial No. 87168245
- 5 -
Applicant’s goods are “Socks; performance socks, hosiery and underwear; all
excluding uniforms and work and utility clothing” and the goods in the cited
registration are “Clothing, namely, uniforms, work and utility shirts, work and utility
trousers, work and utility coats; aprons; smocks and scrubs not for medical purposes;
hats, caps and beanies; neckerchiefs.” In support of the refusal of registration, the
Examining Attorney introduced with his October 6, 2016 first Office Action,4 April
17, 2017 Final Office Action5 and November 7, 2017 Denial of Applicant’s Request for
Reconsideration6 printouts from the following third-party Internet websites offering
under the same mark goods identified in the subject application and cited
registration.
Childrensplace.com provides socks, hosiery, uniforms, beanies and hats;

duluthtrading.com provides underwear, work and utility shirts, work
and utility pants, socks, hats, work coats and aprons;

scoutstuff.com provides socks, uniforms, hats, caps, bandanas and
neckerchiefs;

scrubsandbeyond.com provides scrubs, aprons, socks and hosiery;

anthropologie.com provides aprons, utility pants, socks, hats, caps and
underwear;

llbean.com provides utility shirts, utility pants, neckerchiefs, bandanas,
hats, caps, socks and underwear;

uniformadvantage.com provides socks, scrubs, utility shirts, caps and
hats;

4 At .pdf 12-23.
5 At .pdf 8-29.
6 At .pdf 5-20.
Serial No. 87168245
- 6 -
chefwear.com provides socks and utility pants;

dickies.com provides underwear, scrubs, aprons, beanies, hats, and
socks, including performance socks; and

happychefuniforms.com provides hats, aprons and socks.

This evidence demonstrates that at least ten third parties offer both Applicant’s goods
and the goods in the cited registration under the same mark.
The Examining Attorney also introduced into the record with his November 7,
2017 Denial of Applicant’s Request for Reconsideration7 copies of 22 use-based, third-
party registrations for marks identifying, inter alia, goods identified in the involved
application and cited registration. The following examples are illustrative:8
Registration No. 2180591 for the mark THE LOOK OF A PROFESSIONAL (in
stylized form) identifying, among other things, “aprons, smocks, uniforms,
socks and hosiery;”

Registration No. 3085275 for the mark THE AMERICAN INSTITUTE OF
WINE & FOOD (in standard characters) for, among other things, “aprons,
hats, caps, scarves, bandanas and socks;” and

Registration No. 4348867 for the mark I AM THE COLLECTION in stylized
form for, among other things, for “aprons, hats, underwear.”

As a general proposition, although use-based, third-party registrations alone are not
evidence that the marks shown therein are in use or that the public is familiar with
them, they nonetheless may have some probative value to the extent they may serve
to suggest that the goods are of a kind that emanate from a single source. See In re
Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel &

7 At .pdf 21-112.
8 At .pdf 7-74.
Serial No. 87168245
- 7 -
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988). In this case, the totality of the website and
third-party registration evidence demonstrates that consumers would readily expect
that these goods could emanate from the same sources.
Applicant argues that
The Registrant has not tried to cover all apparel and
footwear, but rather a discrete description of goods.
Applicant’s goods do not overlap with Registrant’s in any
manner, and in fact specifically disclaim any potentially
overlapping goods. This is not an instance where the goods
would be viewed as related to the consuming public or
originating from a common source.9

However, it is not necessary that Applicant’s goods “overlap,” or include identical
clothing items, in order to find that the goods are related. The question is whether
the goods are sufficiently related such that, if similar marks are used thereon,
consumers will believe that the products emanate from the same source. Thus, the
exclusionary language adopted by Applicant is insufficient to traverse a finding that
the goods are related because the Examining Attorney’s evidence establishes that
these goods may emanate from a common source, notwithstanding Applicant’s
indication that it does not provide the excluded goods. Furthermore, the “aprons;
smocks and scrubs not for medical purposes; hats, caps and beanies; neckerchiefs,”
identified in the cited registration are separated by semicolons from the remainder of
the identified goods, and, as such, are not included under the rubric of uniforms, work
or utility clothing. See In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1166

9 10 TTABVUE 19.
Serial No. 87168245
- 8 -
& n.4 (TTAB 2013) (finding that semicolon separates services into discrete
categories).
Applicant further argues that “Registrant’s catalog reveals that its marks are used
solely for chef’s clothing,”10 which does not “overlap” with its identified goods and
moves in discrete trade channels. In support of this contention, Applicant introduced
into the record with its October 17, 2017 Request for Reconsideration pages from
Registrant’s printed catalog11 and screenshots from its own website.12 However, the
identification of goods in the cited registration does not recite any limitations as to
the channels of trade in which Registrant’s goods are or will be offered. In the absence
of trade channel limitations on the goods under the registered mark, we must
presume that the goods in the cited registration are offered in all customary trade
channels, and are not limited solely to those trade channels in which clothing for chefs
may be found. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370,
1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). As a result, we
find unpersuasive Applicant’s arguments and evidence seeking to impose trade
channel limitations on the goods in the cited registration. “We have no authority to
read any restrictions or limitations into the registrant’s description of goods.” Thor
Tech, 90 USPQ2d at 1638. Nor may an applicant restrict the scope of the goods

10 10 TTABVUE 19.
11 At .pdf 32-155.
12 At .pdf 25-31.
Serial No. 87168245
- 9 -
covered in a cited registration by argument or extrinsic evidence. Midwest Gaming &
Entm’t, 106 USPQ2d at 1165; In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB
2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). Further, as
noted above, the Examining Attorney has introduced evidence that both Applicant’s
goods and Registrant’s goods are offered for sale on the same webpages. This evidence
supports a finding that these goods are offered in the same channels of trade.
We find that the du Pont factors of the relatedness of the goods, channels of trade
and consumers weigh in favor of likelihood of confusion.
3. Conditions of Sale
Applicant argues that because the clothing identified in the cited registration is
marketed to culinary professionals, the goods are likely subject to careful purchase.
However, Registrant’s goods are not so limited. In addition, neither identification of
goods restricts the identified clothing items by price. Because the identifications of
goods in the application and cited registration contain no limitations as to price
points, we must presume that the clothing includes lower cost clothing items that
may be purchased without a high degree of care. “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.”
Recot Inc. v. M.C. Becton, 213 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). As
a result, this du Pont factor also favors a finding of likelihood of confusion.

Serial No. 87168245
- 10 -
4. Strength of the Cited Mark / Number and Nature of Similar Marks
Applicant argues that the UNCOMMON THREADS mark in the cited registration
is not famous, and in addition
Registrant’s trademark registration for UNCOMMON
THREADS disclaims the term THREADS, thus
designating UNCOMMON as the dominant term deserving
of protection. There are several live registrations that
incorporate UNCOMMON in Class 25…. The existence of
multiple marks containing similar terms demonstrates
that not one entity has exclusive rights to the term
UNCOMMON and consumers can in fact distinguish
between marks with shared terms, even for apparel in class
25.13

However, even if we accept that the term “THREADS” is descriptive of the goods
identified in the cited registration, Applicant has submitted no evidence that the cited
mark in its entirety, UNCOMMON THREADS, is weak, and the mark as a whole
only appears to be somewhat suggestive on its face. In support of its contention that
the term “UNCOMMON” in the cited mark is weak, Applicant introduced into the
record with its October 17, 2017 Request for Reconsideration, copies of the following
eight live third-party registrations, all issued on the Principal Register to different
entities (all marks are in standard characters):14
Reg. No. 3080767 for the mark A COMMON THREAD identifying
“clothing, namely, shirts, pants, t-shirts, [footwear, headwear,
baseball caps], shorts, [swimwear, lingerie,] sweat shirts,
[underwear,] jackets, dresses and skirts;”

Reg. No. 5289370 for the mark UNCOMMON WARRIOR identifying
“t-shirts;”

13 10 TTABVUE 24.
14 At .pdf 158-165.

Serial No. 87168245
- 11 -
Reg. No. 5287060 for the mark UNCOMMON COMFORT WITH
UNEXPECTED STYLE identifying “footwear;”

Reg. No. 5033304 for the mark UNCOMMON BOND identifying
“knit tops; short-sleeved or long-sleeved t-shirts; T-shirts; jerseys;”

Reg. No. 4855555 for the mark UNCOMMON BREED identifying “pants;
shirts; shorts; vests;”

Reg. No. 4157395 for the mark UNCOMMON FIT identifying “athletic
apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic
uniforms;”

Reg. No. 4966456 for the mark UNCOMMON CLOTHES FOR
UNCOMMON PEOPLE identifying “men’s, women’s and children’s
clothing, namely, shirts and t-shirts;” and

Reg. No. 4388642 for the mark UNWAVERING SUPPORT FOR
UNCOMMON HEROES identifying, among other things, “clothing,
namely, shirts, jackets, caps and visors.”

Evidence of third-party use and registration of a term in the relevant industry is
considered in the likelihood of confusion analysis. Juice Generation, Inc. v. GS
Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015); 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). The “existence
of [third party] registrations is not evidence of what happens in the market place or
that customers are familiar with them. . . .” AMF Inc. v. Am. Leisure Prods., Inc., 474
F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). Nevertheless, in determining the degree
of weakness, if any, in the shared terms, we must “adequately account for the
apparent force of [third-party use] evidence,” regardless of whether “specifics”
pertaining to the extent and impact of such use have been proven. Juice Generation,
115 USPQ2d at 1674-75. “[E]xtensive evidence of third-party use and registrations is
Serial No. 87168245
- 12 -
‘powerful on its face,’ even where the specific extent and impact of the usage has not
been established.” Jack Wolfskin, 116 USPQ2d at 1136 (citing Juice Generation, 115
USPQ2d at 1674).
In the case before us, however, Applicant points to no evidence of third-party use,
and instead relies on third-party registrations of marks that include A COMMON
THREAD or formatives of “UNCOMMON.” Applicant’s record thus does not
demonstrate commercial weakness from third-party use, and fails to show that
consumers actually are conditioned to distinguish among many marks including
UNCOMMON THREADS. Of the eight third-party registrations introduced into
the record by Applicant, Reg. No. 3080767 for the mark A COMMON THREAD
for various items of clothing is arguably the closest overall, in that the mark is
most similar to the involved marks in appearance and sound, although it differs
in meaning inasmuch as A COMMON THREAD is an antonym of UNCOMMON
THREADS. The remainder of the third-party registrations all include the term
“UNCOMMON,” but differ from both the cited mark and the mark in the involved
application inasmuch as they also include additional wording that is completely
dissimilar in appearance, sound and especially meaning, although the goods are
related to Registrant’s goods.
Thus, unlike in Juice Generation and Jack Wolfskin, where “voluminous” third-
party evidence involved the same goods and services at issue, here Applicant’s eight
third-party registrations proffered as evidence relate to one mark (A COMMON
THREAD) that is similar in appearance and sound but opposite in meaning in one of
Serial No. 87168245
- 13 -
the registrations and quite different marks in the other seven of them. It therefore
lacks sufficient probative value as to alleged weakness of the term in relation to the
Registrant’s goods to significantly restrict the scope of protection to be afforded the
mark in the cited registration. Overall, given the nature and quantity of the third-
party registration evidence and the nature of the mark in the cited registration, we
find that the scope of protection to be afforded the mark in the cited registration,
while perhaps somewhat narrower than that afforded a more arbitrary mark with no
evidence of third party registration or use, is not so narrow as to permit registration
of a similar mark for related goods. Cf. Juice Generation, 115 USPQ2d at 1675
(weakness shown by at least 26 third-party uses and registrations containing the
same phrase for the same services); Jack Wolfskin, 116 USPQ2d at 1136 (third-party
weakness evidence characterized as “voluminous”).
5. Similarity or Dissimilarity of the Marks
We next address the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). “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)
Serial No. 87168245
- 14 -
(quotation omitted). While we have placed the marks in close proximity to one
another for comparison purposes, consumers may not necessarily encounter the
marks in such proximity and must rely upon their recollections thereof. Mucky Duck
Mustard, 6 USPQ2d at 1468.
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. Nat’l Data, 224 USPQ at 751.
The only differences between Applicant’s mark and the registered
mark UNCOMMON THREADS are the presence of “THE” and a design suggestive of
the goods in Applicant’s mark and the pluralization of “THREADS” in the registered
mark. Generally, and here, the definite article “THE” contributes little to the overall
impression of a mark. See In re Narwood Prods., Inc., 223 USPQ 1034, 1034 (TTAB
1984) (“There is no doubt that the word portion of appellant’s mark and the mark
Serial No. 87168245
- 15 -
subject of the cited registration are virtually identical since both consist primarily of
the term ‘music makers.’ The fact that the presentation in the mark of the cited
registration is as a single word rather than two words is obviously insignificant in
determining the likelihood of confusion. So also is the fact that appellant’s mark, as
it is sought to be registered, includes the definite article ‘the’”). Accord Jay-Zee, Inc.
v. Hartfield-Zodys, Inc., 207 USPQ 269, 271-72 (TTAB 1980) (“Since the psychological
and marketing impact of petitioner’s mark in its earlier version clearly was derived
from the word ‘IMAGE,’ the omission of the word ‘THE’ (the definite article serving
merely to emphasize ‘IMAGE’) from the later version did not interrupt the continuity
of use”); U. S. Nat’l Bank of Oregon v. Midwest Savings and Loan Ass’n, 194 USPQ
232, 236 (TTAB 1977) (“The definite article ‘THE’ likewise adds little distinguishing
matter because the definite article most generally serves as a means to refer to a
particular business entity or activity or division thereof, and it would be a natural
tendency of customers in referring to opposer’s services under the mark in question
to utilize the article ‘THE’ in front of ‘U-BANK’ in view of their uncertain memory or
recollection of the many marks that they encounter in their everyday excursion into
the marketplace”).
With regard to the pluralization of “THREADS” in the registered mark, we see
little viable distinction. If Applicant’s mark is perceived to be a singular form of
UNCOMMON THREADS, the distinction is not sufficient to prevent likely confusion.
Wilson v. Delaunay, 114 USPQ 339, 341 (CCPA 1957); In re Pix of Am., Inc., 225
USPQ 691, 692 (TTAB 1985); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962).
Serial No. 87168245
- 16 -
Similarly, the modestly sized thread design in the applied-for mark does not
significantly contribute to the mark’s commercial impression, but rather reinforces
the term “THREAD” in the wording THE UNCOMMON THREAD. Where, as here, a
mark is comprised of both words and a design, the words are normally accorded
greater weight, in part because consumers are likely to remember and use the word(s)
to request the goods. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed.
Cir. 2012) (“the verbal portion of a word and design mark likely will be the dominant
portion”); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding
that “if one of the marks comprises both a word and a design, then the word is
normally accorded greater weight because it would be used by purchasers to request
the goods or services” and “because applicant’s mark shares with registrant’s mark
that element responsible for creating its overall commercial impression, the marks
are confusingly similar”). The general principle applies here.
Compared in their entireties, the marks and UNCOMMON
THREADS are highly similar in appearance and sound. The term “THREADS” is
disclaimed in the registered mark, although “THREAD” in Applicant’s mark is not.
Notwithstanding, the term “UNCOMMON” in the registered UNCOMMON
THREADS mark modifies “THREADS” and connotes that the clothing identified by
the mark is unique and of higher quality than the norm. Like the registered mark,
the wording “THE UNCOMMON THREAD” in Applicant’s mark suggests that the
socks and hosiery identified thereby are unique, special and of high quality. As a
Serial No. 87168245
- 17 -
result, the marks are highly similar in connotation. Regardless of the strength or
relative weakness of the terms, because both marks include UNCOMMON
THREAD[S] as the entirety of the registered mark and the most significant portion
of Applicant’s mark, consumers are likely to believe these marks identify goods
emanating from a common source. In addition, because the registered mark is in
standard characters, it may be presented in any font, including the same style or font
in which Applicant’s mark appears. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1847 (Fed. Cir. 2000) (“Registrations with typed drawings are not
limited to any particular rendition of the mark and, in particular, are not limited to
the mark as it is used in commerce”); In re Cox Enters. Inc., 82 USPQ2d 1040, 1044
(TTAB 2007) (“We must also consider that applicant’s mark, presented in typed or
standard character form, is not limited to any special form or style as displayed on
its goods”).
We find, as a result, that the relatively minor differences between the marks are
far outweighed by their similarity in appearance, sound and meaning. Considered in
their entireties, we find that the marks convey highly similar overall commercial
impressions. This du Pont factor thus supports a finding that confusion is likely.
6. Absence of Actual Confusion
Applicant argues that there is no evidence of any actual confusion; that there has
been concurrent use for over seven years; and that Applicant has enjoyed considerable
success and publicity of its goods under the involved mark. We do not accord
significant weight to Applicant’s contention, unsupported by any evidence, that there
Serial No. 87168245
- 18 -
have been no instances of actual confusion despite contemporaneous use of the
respective marks. Contrary to Applicant’s contentions, our primary reviewing court,
the Federal Circuit, has addressed the question of the weight to be given to an
assertion of no actual confusion by an applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we agree with
the Board that Majestic’s uncorroborated statements of no
known instances of actual confusion are of little
evidentiary value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that
self-serving testimony of appellant’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). A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The opposite
is not true, however. The lack of evidence of actual
confusion carries little weight, [citation omitted], especially
in an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205.
Accordingly, while examples of actual confusion may point toward a finding of a
likelihood of confusion, an absence of such evidence is not compelling in support of a
finding of no likelihood of confusion in these circumstances.15 Thus, we cannot
conclude from the lack of instances of actual confusion that confusion is not likely to
occur. This du Pont factor is neutral.

15 Nor does Applicant’s assertion that Registrant must be aware of Applicant’s mark and
failed to bring an infringement action against Applicant have any bearing on our
determination of this ex parte appeal. Simply put, the owner of the cited registration is not a
party to the Examining Attorney’s refusal of registration and we draw no inferences from any
asserted action or inaction on its part.
Serial No. 87168245
- 19 -
Summary
Considering all the evidence of record, including any evidence not specifically
discussed herein, we find that the marks in their entireties are highly similar and
that the identified goods are related and will be encountered by the same consumers
in common channels of trade at all price points. Applicant’s evidence of third-party
registration of somewhat similar marks is insufficient to weigh in favor of a finding
of no likelihood of confusion. We find therefore that Applicant’s mark is likely to cause
confusion with the mark in the cited registration when used in association with the
identified goods.
Decision: The refusal to register Applicant’s mark on the ground of likelihood of
confusion is affirmed.