Straight Up Southern, LLC

Trademark Trial and Appeal Board

Jul 20, 2017

No. 86518517 (T.T.A.B. Jul. 20, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 20, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Straight Up Southern, LLC
_____

Serial No. 86518517
_____

Kirby D. Shealy III and Lyndey Ritz Zwing of Adams and Reese LLP for Straight
Up Southern, LLC.

Tamara Frazier, Trademark Examining Attorney, Law Office 116 (Christine
Cooper, Managing Attorney).
_____

Before Ritchie, Masiello, and Lynch, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Straight Up Southern, LLC (“Applicant”) filed an application for registration on
the Principal Register of the mark shown below for “Short-sleeved or long-sleeved t-
shirts; Tank tops,” in International Class 25:1

1 Application Serial No. 86518517 was filed on January 29, 2015 under Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), stating December 5, 2014 as the date of first use and first
use in commerce. The design in the mark is described as “a stylized honey bee.” Color is not
claimed as a feature of the mark. The application states that LILY GRACE does not
identify a living individual.
Serial No. 86518517

2

The Trademark Examining Attorney 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 Applicant’s goods, so resembles the registered mark LILA
GRACE as to be likely to cause confusion, or to cause mistake, or to deceive. The
cited mark is registered in standard character form for “Bathrobes,” in
International Class 25.2 When the refusal was made final, Applicant appealed to
this Board. Applicant and the Examining Attorney have filed briefs.
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 as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, 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).

2 Reg. No. 4731637 issued on May 5, 2015.
Serial No. 86518517

3

(a) The marks.
We first consider the similarity or dissimilarity of the marks in their entireties as
to 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 (Fed. Cir. 2005). “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). Marks
must be considered in light of the fallibility of memory. In re St. Helena Hosp., 774
F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014). While we consider each mark in
its entirety, 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 that our
ultimate conclusion rests upon a comparison of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). “Indeed,
this type of analysis appears to be unavoidable.” Id.
The marks resemble each other in appearance by virtue of their literal
components, LILA GRACE and LILY GRACE, which differ by only a single, internal
letter. The marks differ in appearance because of the stylized lettering and the
honey bee design in Applicant’s mark. However, we generally give less weight to the
style and design elements of a mark than to the wording, because the wording
would be used by consumers to request the goods. In re Dakin’s Miniatures, Inc., 59
USPQ2d 1593, 1596 (TTAB 1999). See also Sweats Fashions Inc. v. Pannill Knitting
Serial No. 86518517

4

Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v.
Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983).
Moreover, with respect to the stylization of the lettering in Applicant’s mark, we
bear in mind that Registrant’s mark is registered in standard character form, such
that it is not limited to any particular form of display, Squirtco v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983), and could be displayed in stylized
letters that resemble those of Applicant’s mark. In any event, customers would find
the stylized presentation of LILY GRACE in Applicant’s mark immediately legible
and would appreciate its similarity to the Registrant’s mark.
With respect to sound, the GRACE component would likely be pronounced the
same in each mark. As for the wording LILA and LILY, they both are two-syllable
words in which each syllable begins with the letter “L.” The final syllables of these
terms would likely be pronounced differently; and there is a possibility that their
first syllables would be pronounced differently, for example, with a long ī in
Registrant’s mark and a short ĭ in Applicant’s mark. However, because names in
particular are subject to unusual pronunciations, LILA could be pronounced with a
short ĭ. “[T]here is no correct pronunciation of a trademark, and consumers may
pronounce a mark differently than intended by the brand owner.” In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012). Regardless, the similar
structure and the use of the “L” consonant sound both at the beginning and middle
of these terms makes them phonetically alike. We thus find that overall, when
called for, the marks are likely to sound very similar.
Serial No. 86518517

5

With respect to meaning and connotation, there is a small amount of evidence to
show that both LILY GRACE and LILA GRACE have been used as female given
names.3 Applicant argues that its mark has a different connotation:
“Lily” is a commonly-known variety of flower which has
direct associations with Christianity (e.g., “lily of the
valley” (Song of Solomon 2:1) and the lily is often used
during religious ceremonies, including Easter. As used in
the Bible, lilies stand for purity and the preciousness of
Christ to the church. See Hosea 14:5. Similarly, the word
“grace” is a commonly-used English word with direct
associations to Christianity. See 2 Corinthians 12:9;
Ephesians 2:8-9; Romans 6:14; James 4:6. The word
“grace” has various definitions, including “simple elegance
or refinement of movement” or (in Christian belief) the
free and unmerited favor of God, as manifested in the
salvation of sinners and the bestowal of blessings.” When
used together in the Proposed Mark, “LILY GRACE,” the
religious connotations of both words are magnified
because they are used together.4
Applicant did not, during prosecution of its application, submit any evidence to
support its contentions regarding the Christian connotations of its mark, and
“[a]ttorney argument is no substitute for evidence.” Enzo Biochem Inc. v. Gen-Probe
Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005). Applicant appears to
suggest that the Board take judicial notice of the Bible texts cited in its brief;
however, Applicant did not submit copies of the specific texts that it would like the
Board to read. See TBMP 1208.04 and 704.12 (June 2017). Even if such texts were

3 Office Action of June 22, 2016 at 8 (“Lily Grace … knows that she can do anything she sets
her new heart to. This is her first Christmas …”); and 11-12 (“Kate Moss’s daughter Lila
Grace is already a Vogue cover star …”; “Kate Moss is an ‘Embarrassing’ Mom, Says
Daughter Lila Grace …”; “Lila Grace Watson’s Journey. … This page is to inform family
and friends of the journey of a strong, brave, little girl …”).
4 Applicant’s brief at 5, 4 TTABVUE 10.
Serial No. 86518517

6

of record, Applicant offers no evidence to show that relevant customers are familiar
with them or to show the extent to which such texts have affected customers’
perception of the meaning of the mark.
The Examining Attorney argues that customers would not likely derive a
Christian connotation from Applicant’s mark. She points out that Applicant’s
Facebook page includes no mention of a Christian connotation of the mark, but
instead states, “Lily Grace is a close-knit group of family and friends who were
inspired to create a brand that embodies everything we love about being southern,
classy, and modern.”5
To this, Applicant ripostes, “Whether Appellant associates its Proposed Mark with
Christianity is irrelevant. … [T]he proper focus … is ... the average purchaser ….
Appellant’s subjective definition of its brand is irrelevant to determining the
likelihood of consumer confusion.”6
Contrary to Applicant’s argument, we do believe the manner in which Applicant
promotes its mark is relevant to a determination of how customers perceive the
mark. With no evidence of record to support a particular Christian interpretation of
the mark, we think it far more likely that customers will perceive LILY GRACE as
a female given name. In this regard, Applicant’s mark is similar in meaning to
Registrant’s mark, which also is likely to be perceived as a female name. We
acknowledge, meanwhile, that the honey bee design in Applicant’s mark adds to the
mark a significance that is absent from the cited registered mark.

5 Office Action of June 22, 2016 at 10.
6 Applicant’s brief at 6-7, 4 TTABVUE 11-12 (internal quotations omitted).
Serial No. 86518517

7

Considering the overall commercial impressions created by the two marks, we find
that they are substantially similar in appearance, sound, and meaning and that
their similarities outweigh their differences. Although the marks are not exactly
alike, they are sufficiently similar that, given the imperfect perceptions and
memories of typical consumers, they are likely to be mistaken for each other or
perceived as indicating the same source of goods. We find that the du Pont factor of
the similarity or dissimilarity of the marks weighs in favor of a finding of likelihood
of confusion.
(b) The goods; trade channels; customers.
We next consider the similarity or dissimilarity of the goods as identified in the
application and the cited registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014); Octocom
Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). Applicant’s goods are t-shirts and tank tops, while Registrant’s
goods are bathrobes.
All of the goods at issue, as identified, are common items of apparel that might be
worn by men, women, or children. All are relatively informal types of attire that
would be worn in a private or casual setting. To demonstrate that the goods of
Applicant and Registrant are commercially related, the Examining Attorney has
submitted evidence from online stores showing that bathrobes and t-shirts are both
sold under the marks DKNY7 and SONOMA LIFE+STYLE.8 Although this evidence

7 Office Action of May 11, 2015 at 31 and 43-44, 48.
Serial No. 86518517

8

is not voluminous, when combined with the fact that the goods are similar in nature
(all being casual apparel), it is sufficient to persuade us that customers would
readily believe that both types of goods emanate from the same source.
Because there are no limitations or restrictions as to trade channels or classes of
purchasers in the application and cited registration, we presume that the goods at
issue would be marketed in all normal trade channels for such goods and to all
normal classes of purchasers of such goods. See, e.g., Coach Servs., Inc. v. Triumph
Learning LLC, 101 USPQ2d at 1722; In re Elbaum, 211 USPQ 639 (TTAB 1981).
The Examining Attorney’s evidence, cited above, shows that t-shirts and bathrobes
are offered together through the online stores of Nordstrom and Kohl’s, showing
that they travel in the same trade channels.9 All of the goods are common apparel
items that would be offered to ordinary consumers. We must assume that the goods
of both Applicant and Registrant are available to all classes of customers for those
goods, see Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77-78 (CCPA 1973), and clearly all of the goods would typically be offered
to a wide range of ordinary consumers, both male and female. We conclude that
these customer classes overlap.
We find that the du Pont factors relating to the similarity or dissimilarity of the
goods, the established and likely-to-continue trade channels, and the classes of
customers to whom sales are made all favor a finding of likelihood of confusion.

8 Id. at 50, 52, 61-62, and 71.
9 Id. at 31, 43-44, 48; and 50, 52, 61-62, and 71.
Serial No. 86518517

9

(c) Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. The marks, when
considered as a whole, are similar in appearance, sound, meaning, and commercial
impression; and the goods are related and are marketed to the same classes of
customers through the same channels of trade. Overall, we find that Applicant’s
mark, as used on Applicant’s goods, so resembles the cited registered mark as to be
likely to cause confusion or to cause mistake or to deceive.
Decision: The refusal under Section 2(d) is affirmed.