Stillwater Design, Inc.

Trademark Trial and Appeal Board

Aug 20, 2018

No. 87144548 (T.T.A.B. Aug. 20, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 20, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Stillwater Design, Inc.
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Serial No. 87144548
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Shane M. Popp of Stillwater Design, Inc.

Paul Ferrer, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
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Before Taylor, Bergsman, and Ritchie,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Stillwater Design, Inc. (“Applicant”) seeks registration on the Principal Register
of the mark STILLWATER and design, shown below, for “clothing, namely, women's
shirts, sweatshirts, dresses, pants, and suits,” in Class 25.1

1 Application Serial No. 87144548 was filed on August 19, 2016, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
first use in commerce at least as early as January 1, 2014.
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In the application, Applicant described its mark as follows:
The mark consists of the wording “STILLWATER” directly
to the right of four triangles in a row, the first two triangles
are right-side up and the next two are upside down. The
second and last triangles from the left to right have a
horizontal line intersecting them.
Color is not claimed as a feature of the mark.
The Examining Attorney refused to register Applicant’s mark under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles the registered mark STILLWATER SUPPLY CO. and design, shown
below, for “clothing, namely, men's and women's jackets and vests,” in Class 25, as to
be likely to cause confusion.2

In the registration, Registrant describes its mark as follows:
Color is not claimed as a feature of the mark. The mark
consists of Stillwater Supply Co. with a fanciful design of a
duck against an oval background.
Registrant disclaimed the exclusive right to use the term “Supply Co.”
Our determination under Section 2(d) is based on an analysis of all of the
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,

2 Registration No. 3334168, registered November 13, 2007; renewed.
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177 USPQ 563, 567 (CCPA 1973) (“du Pont”) cited in B&B Hardware, Inc. v. Hargis
Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each du Pont factor that is relevant or for which there is evidence of record.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242
(TTAB 2015) (“While we have considered each factor for which we have evidence, we
focus our analysis on those factors we find to be relevant.”). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods or services. See In re Chatam Int’l Inc.,
380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”); see also
In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The similarity or dissimilarity and nature of the goods.
Applicant is seeking to register its mark for “clothing, namely, women's shirts,
sweatshirts, dresses, pants, and suits” and the description of goods in the registered
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mark is for “clothing, namely, men's and women's jackets and vests.” To show that
the goods are related, the Examining Attorney submitted copies of 14 third-party
registrations for the goods listed in both the application and the cited registration.3
Third-party registrations based on use in commerce that individually cover a number
of different goods may have probative value to the extent that they serve to suggest
that the listed goods are of a type that may emanate from the same source. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d mem. 864 F.2d
149 (Fed. Cir. 1988). Representative registrations, with relevant portions of the
identifications, are listed below.
Mark Reg. No. Goods

RAILRIDERS 1573492 Men’s and women’s shirts and jackets

ALLAXDO 2164642 Women’s suits, shirts, jackets, and vests

STEPHANIE B 2343817 Women’s shirts, jackets, pants and dresses

JUNK
UNDERJEANS
3837651 Men’s and women’s shirts, sweatshirts and
jackets

ULTRAGUARD 3991009 Men’s and women’s shirts, pants and jackets

The Examining Attorney also submitted excerpts from nine third-party websites
showing the same mark used to identify goods from both the application and the cited

3 June 30, 2017 Office Action (TSDR 71). Citations to the USPTO TSDR database are to the
downloadable .pdf format.
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registration. The third-party websites include those owned by the following
companies:
• LL BEAN (llbean.com);4
• J. CREW (jcrew.com);5
• EDDIE BAUER (eddiebauer.com);6
• RALPH LAUREN POLO (ralphlauren.com);7
• COACH (coach.com);8
• BROOKS BROTHERS (brooksbrothers.com);9
• WHITE HOUSE BLACK MARKET (whitehouseblackmarket.com);10
• FOREVER 21 (forever21.com);11 and
• CALVIN KLEIN (calvinklein.us).12
Applicant argues that the Examining Attorney has failed to show that the goods
are related, asserting that:
[T]he Examining Attorney has simply failed to show that
Applicant’s goods and Registrant’s goods are in anyway
related other than they are all items that fall within the
extremely broad category known as apparel. To be sure, the
Examining Attorney has cited numerous third party

4 December 11, 2016 Office Action (TSDR 13).
5 Id. at TSDR 43.
6 Id. at TSDR 88.
7 June 30, 2017 Office Action (TSDR 9).
8 Id. at TSDR 65.
9 December 28, 2017 Denial of Request for Reconsideration (4 TTABVUE 24).
10 Id. at (5 TTABVUE 9).
11 Id. at (5 TTABVUE 14).
12 Id. at (6 TTABVUE 2).
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registrations and web pages showing that clothing, in
general, is sold at department stores and online. However,
it has long been held that a “wide variety of products” are
sold in large stores such as department stores and
supermarkets. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).13
The Examining Attorney has done more than just show that the goods at issue fall
under the broad category of apparel. The Examining Attorney has shown that nine
different entities sell the goods at issue under the same mark. Also, Applicant
conflates the issue of whether the channels of trade are similar with whether the
goods are related. The third-party registrations and website excerpts submitted by
the Examining Attorney show that the same entities sell Applicant’s products and
Registrant’s products under the same marks.
In view of the foregoing, we find that the goods are related.
B. Established, likely-to-continue channels of trade and purchasers to
whom sales are made.
The above-noted third-party website excerpts show that some clothing designers
advertise the sale of their products through their Internet websites and, thus, those
clothing products are offered through at least one similar channel of trade to the same
consumers.
C. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation

13 Applicant’s Brief, p. 10 (13 TTABVUE 11).
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and commercial impression. du Pont, 177 USPQ at 567. “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling
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.”) (citation omitted).
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, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see
also Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046,
103 USPQ2d 1435, 1440 (Fed. Cir. 2012); San Fernando Elec. Mfg. Co. v. JFD Elec.
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed.
Cir. 1992). The proper focus is on the recollection of the average customer, who retains
a general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas
Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975). Because the goods at issue are “clothing, namely,
women's shirts, sweatshirts, dresses, pants, and suits” and “clothing, namely, men's
and women's jackets and vests” without any restrictions or limitations as to channels
Serial No. 87144548
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of trade, classes of consumers or price, the average customer includes ordinary
consumers.
Applicant’s mark is STILLWATER and design shown below:

The mark in the cited registration is STILLWATER SUPPLY CO. and design shown
below :

The marks are similar in appearance, sound, connotation and commercial
impression inasmuch as each includes the name “Stillwater.” The additional term
“Supply Co.” in Registrant’s mark is a point of difference in appearance and sound.
However, “Supply Co.” is merely descriptive with respect to a wide range of
commercial enterprises, including clothing.14 Customers are not likely to view the
term “SUPPLY CO.” as an indicator of source.

14 The word “Supply” is defined, inter alia, as “Economics. the quantity of a commodity that
is in the market and available for purchase or that is available for purchase at a particular
price.” Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2018). The
Board may take judicial notice of dictionary definitions, including online dictionaries that
exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014),
aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome
Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d
1375, 1378 (TTAB 2006).
Serial No. 87144548
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Likewise, with respect to the design portions of each mark, the words are normally
accorded greater weight because the words are likely to make an impression upon
purchasers, would be remembered by them, and would be used by them to request
the products. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908, 1911
(Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 218 USPQ 198, 200 (Fed.
Cir 1983)); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d
1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390 (Fed. Cir. 1983). Thus, consumers will look primarily to
STILLWATER, in both marks, as the source indicator. Although we have considered
each mark in its entirety, there is nothing improper in our finding that STILLWATER
is dominant because our ultimate conclusion rests upon a comparison of the marks in
their entireties. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985).
In analyzing the marks in their entireties and finding that the name “Stillwater”
is the dominant element of the mark, we note that “Stillwater” is an arbitrary term
when used in connection with clothing. Moreover, there is no evidence of any third-
party registrations or third-party use incorporating the name “Stillwater” in
connection with clothing that would dilute the strength of that term. In this regard,

With respect to the abbreviation “Co.”, such business designations are generic terms free for
all to use. See In re Wm. B. Coleman Co., 93 USPQ2d 2019, 2015 (TTAB 2010) (with respect
to ELECTRIC CANDLE COMPANY, “Company” is simply a designation for a type of entity
without source-identifying capability); In re The Paint Prods. Co., 8 USPQ2d 1863, 1866
(TTAB 1988) (“purchasers encountering the words ‘PAINT PRODUCTS CO.’ on the goods for
which registration is sought would view those words not as a trademark, but in their ordinary
dictionary sense: a company that sells paint products.”).
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the Federal Circuit has held that evidence of the extensive registration and use of a
term by others can be powerful evidence of the term’s weakness. Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363,
116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC,
794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).
Applicant contends that Registrant’s mark engenders the commercial impression
of outdoor clothing in the nature of hunting and sportswear while Applicant’s mark
engenders the commercial impression of more formal attire.15 Assuming arguendo
that Applicant is correct, because of the strength of the name STILLWATER,
consumers may perceive Registrant’s STILLWATER SUPPLY CO. to be the outdoor
clothing line of the STILLWATER brand.
Moreover, consumers often shorten full names such as STILLWATER SUPPLY
CO. to STILLWATER. See Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 395 (Fed. Cir. 1983) (“Although the record does not indicate
that applicant's business is commonly referred to as “Giant”, it does indicate that
people have called it by that name, omitting the word “Hamburgers”. Thus, in a
conversation between two consumers in opposer's area about a place of business
called “Giant”, there likely would be confusion about which “Giant” they were talking
about.”); Big M Inc. v. The U.S. Shoe Co., 228 USPQ 614, 616 (TTAB 1985) (“we
cannot ignore the propensity of consumers to often shorten trademarks and, in the

15 Applicant’s Brief, p. 7 (13 TTABVUE 8).
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present case, this would be accomplished by dropping the ‘T.H.’ in referring to
registrant's stores [T.H. MANDY].”).
Because we find that the marks are more similar than dissimilar, the marks are
similar in their entireties in terms of their appearance, sound, connotation and
commercial impression.
D. The conditions under which sales are made.
Applicant asserts that “the average consumer purchasing the Applicant’s goods
are sophisticated in nature and take the time to carefully select the highest quality
goods.”16 However, we must consider the goods as they are described in the
application and registration. Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 1321, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys, Inc. v.
Houston Comput. Servs. 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.”). As noted above, there are no restrictions or limitations as to
channels of trade, classes of consumers, or price in the descriptions of goods and we
may not read such limitations into them. In re i.am.symbolic, llc, 123 USPQ2d at
1748; Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)

16 Applicant’s Brief, p. 11 (13 TTABVUE 12).
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(“There is no specific limitation and nothing in the inherent nature of Squirtco’s mark
or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks.
The Board, thus, improperly read limitations into the registration”); Thor Tech, 90
USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions or
limitations into the registrant’s description of goods.”).
Further, we cannot resort to extrinsic evidence to restrict the channels of trade,
classes of consumers or prices of Applicant’s or Registrant’s goods. See In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that relevant goods
are expensive wines sold to discriminating purchasers must be disregarded given the
absence of any such restrictions in the application or registration). Thus, we must
treat Applicant’s clothing as including all levels of price and quality, and we treat this
factor as being neutral.
E. Analyzing the factors.
We have carefully considered all of the evidence and arguments made of record,
including arguments that have not been expressly addressed in this decision. Because
the marks are similar, the goods are related and are offered in some of the same
channels of trade to the same general classes of consumers, we find that Applicant’s
mark STILLWATER and design for “clothing, namely, women's shirts, sweatshirts,
dresses, pants, and suits” is likely to cause confusion with the registered mark
STILLWATER SUPPLY CO. and design for “clothing, namely, men's and women's
jackets and vests.”
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Decision: The refusal to register Applicant’s mark STILLWATER and design
under Section 2(d) is affirmed.