Stuck on You PTY Ltd.v.Archuleta Innovations, LLC

Trademark Trial and Appeal Board

May 26, 2015

No. 91211182 (T.T.A.B. May. 26, 2015)

THIS OPINION
IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 26, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Stuck on You Pty Ltd.
v.
Archuleta Innovations, LLC

________
Opposition No. 91211182

_______

Archuleta Innovations, LLC, pro se.
Dwayne K. Goetzel of Meyertons, Hood, Kivlin, Kowert & Goetzel, P.C. for Stuck on
You Pty Ltd.
_______

Before Zervas, Wolfson and Masiello, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Archuleta Innovations, LLC (“Applicant”) has filed an application to register
the standard character mark STUCKONS for “removable stickers for electronic
devices such as cell phones, tablets, laptops, e-books, gaming devices, etc[.]” in
Opposition No. 91211182

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International Class 16.1 Stuck on You Pty Ltd. (“Opposer”) has opposed the
registration of Applicant’s mark, alleging prior use of the standard character mark
STUCK ON YOU and ownership of two registrations for the mark for, inter alia,
vinyl labels, vinyl stickers, and adhesive, paper and address labels in International
Class 16,2 and that Applicant’s mark STUCKONS so resembles Opposer’s mark
STUCK ON YOU as to cause a likelihood of confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). Applicant denies the salient allegations in the
notice of opposition.
The Record
In addition to the pleadings, the file of the opposed application is part of the
record without any action by the parties. Trademark Rule 2.122(b), 37 C.F.R.
§ 2.122(b).
Opposer introduced, under notice of reliance, the following evidence: copies of
Opposer’s pleaded registrations for the mark STUCK ON YOU; Internet printouts,
including printouts from Opposer’s and Applicant’s websites showing use of the

1 Application Serial No. 85602027, filed April 18, 2012, based upon Applicant’s allegation of
a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act.
2 Reg. No. 2642174, issued October 29, 2002 for “vinyl labels, namely address and
identification labels, decorative labels, and pencil labels” in International Class 16; “plastic
luggage tags” in International Class 18; and “iron on and sew on cloth labels” in
International Class 24. Renewed.
Reg. No. 4175797, issued July 17, 2012 for “vinyl stickers; children’s wall stickers and
murals; adhesive labels; paper labels; address labels; notepads; invitation cards; stationery;
calendars; diaries; printed invitations; temporary tattoo stickers; lunch bags; personalized
paper place mats; charts for displaying data about human height and also displaying a
ruler for measuring a person’s height; paper hand-towels; personalized books for children;
business cards; school supply kits containing various combinations of selected school
supplies, namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers,
crayons, highlighter pens, folders, notebooks, paper, pencil sharpeners, and book marks” in
International Class 16. The registration also covers goods in International Classes 14, 18,
21, 24 and 28.
Opposition No. 91211182

3

parties’ respective marks; excerpts of Applicant’s initial disclosures; and Applicant’s
responses to Opposer’s discovery requests (for admissions, production of documents,
and interrogatories). Applicant in turn introduced, under notice of reliance, copies of
Internet printouts showing use of Applicant’s and Opposer’s marks;3 the petition to
cancel as filed in Cancellation No. 92055875, filed by Opposer against an unrelated
third-party; a listing from the TESS database of third-party marks incorporating
the phrase “stuck on”; Opposer’s initial disclosures; and Opposer’s responses to
Applicant’s document production requests and interrogatories.
Standing and Priority
Because Opposer has properly made its pleaded registrations of record,
showing Opposer as owner and that the registrations are subsisting, Opposer has
established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). For the same reasons, Section 2(d)
priority is not at issue in this case as to the mark, STUCK ON YOU, and the goods
covered by the registrations. King Candy Co. v. Eunice King's Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
We now turn to a consideration of the issue of likelihood of confusion under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Opposer must establish

3 The Board does not want or need multiple copies of trial evidence; once material has been
made of record, it may be relied upon by either party for any appropriate purpose.
Applicant duplicated the Internet printouts submitted by Opposer and added a few
additional pages, but should only have submitted the additional pages. Duplication merely
serves to complicate the record, delay processing, and wastes Board resources.
Opposition No. 91211182

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that there is a likelihood of confusion by a preponderance of the evidence. Our
determination under Trademark Act § 2(d) is based on an analysis of the probative
facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
The Goods
We start with a comparison of the goods. Applicant has applied to register its
mark STUCKONS for “removable stickers for electronic devices such as cell phones,
tablets, laptops, e-books, gaming devices, etc[.]” Opposer’s registrations include
“vinyl stickers.” These goods are legally identical. Opposer’s goods also include four
types of labels, namely vinyl, adhesive, paper and address labels. While Opposer
has not provided direct evidence that stickers and labels are related goods, on its
website Opposer uses the terms interchangeably, describing its “Cool Kids Name
Labels” as “large stickers,” “medium stickers,” “small stickers,” “pencil stickers,”
Opposition No. 91211182

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and “dot stickers.”4 We also take judicial notice of the dictionary definitions of
“sticker” and “label” in finding them to be related goods. A sticker is defined as “a
slip of paper with adhesive back that can be fastened to a surface” and a label is “a
slip (as of paper or cloth) inscribed and affixed to something for identification or
description.”5 Thus, Opposer’s labels are closely related to Applicant’s stickers.
Applicant argues that consumers would not be confused because Opposer
markets children’s products while “Applicant’s market is political campaigns and
business entities.”6 Applicant bases its argument on pages from its Facebook page,
showing that it offers political stickers,7 and a statement made by Opposer in
Cancellation No. 92055875, namely, that Opposer uses the mark STUCK ON YOU
“in connection with a wide variety of children’s products.”8 The evidence does not
confirm Applicant’s contention that its goods are for political campaigns and
business entities only or that Opposer has restricted itself to children’s products
only. Regardless, it is well established that the goods must be compared as they are

4 10 TTABVUE at 17-18.
5 Both definitions found at http://www.merriam-webster.com. Judicial notice may be taken
of dictionary evidence, University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
6 13 TTABVUE at 12.
7 See, e.g., 11 TTABVUE at 58, offering a “free Mitt Romney Stuckon.”
8 13 TTABVUE at 12. We have considered this statement in the context in which it was
made, i.e., in connection with a petition to cancel a third-party’s mark that was registered
for “one piece garment for infants and toddlers.” Accordingly, it has little probative value in
this proceeding and is not an admission that Opposer exclusively sells products for children.
Applicant also argues that Opposer’s Reg. No. 4175797 includes many children’s products
in different classes and that “Opposer’s website header limits its marketing to ‘Kids’
products.” Id. However, Reg. No. 4175797 is not limited to children’s products in any of the
registered classes, and Opposer’s website specifically states “Not just for kids or school,
Stuck on You® also have a selection of labels with more simple designs.” 11 TTABVUE at
78.
Opposition No. 91211182

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identified in the application and registration, and not as they may be used in the
marketplace. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“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”) (quoting Octocom Sys., Inc. v. Houston Comps. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Thor Tech Inc., 90 USPQ2d
1634, 1637-38 (TTAB 2009) (“we must also analyze the similarity or dissimilarity
and nature of the goods based on the description of the goods set forth in the
application and the registration at issue … we may not limit or restrict [the goods]
listed in the cited registration based on extrinsic evidence”). Given that there are no
limitations or restrictions to the type of stickers identified in Opposer’s
registrations, other than that they are made of vinyl, we must presume that both
parties’ goods may contain political messages or be directed to children. We must
further presume that Opposer’s stickers could be removable and may be applied, as
are Applicant’s stickers, to electronic devices, and that Applicant’s stickers may be
made of vinyl. Indeed, Applicant alludes to the use of vinyl in its stickers, arguing
that “To the extent that Applicant and Opposer both use adhesive vinyl as a product
in their business, the similarity ends there. … Utilizing a common, widely available
material, like vinyl, does not constitute making the same product.”9 That Applicant
currently chooses to affix political messages on its stickers while Opposer may focus

9 Id. We have considered the photo of Applicant’s product, produced under Opposer’s notice
of reliance, as evidence that the product could be made of vinyl. We have not considered the
declaration of counsel attached to Opposer’s brief or the photographs attached thereto for
this purpose, as they were not properly made of record during the time for taking
testimony. See TBMP §704.05(b) (2015) and cases cited therein.
Opposition No. 91211182

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on messages or designs for children does not obviate the likelihood of confusion
inasmuch as there are no such parameters on the parties’ use of their respective
marks contained in the identifications of goods thereof, which are in part legally
identical and otherwise closely related.
Accordingly, the second du Pont factor strongly favors a finding of likelihood
of confusion. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1244 (TTAB
2010); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008) (“The identity,
at least in part, between applicant’s and registrant’s goods is a factor that weighs
heavily against applicant in the likelihood of confusion analysis.”).
Channels of Trade; Classes of Purchasers
Because the goods in Applicant’s application and Opposer’s registrations are
in part legally identical, we must presume that the channels of trade and classes of
purchasers for these goods are the same. See In re Yawata Iron & Steel Co., 403
F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods,
the channels of trade and classes of purchasers are considered to be the same);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence
regarding channels of trade and classes of consumers, the Board was entitled to rely
on this legal presumption in determining likelihood of confusion).
Applicant’s argument that it sells “via direct mail with follow up phone calls
and letters to political campaign organizations” while Opposer sells “direct to
Opposition No. 91211182

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consumers and through wholesalers” but not via direct mail, is unsupported by the
record. It is also immaterial because, based on its identification of goods, Opposer is
not precluded from marketing via direct mail at any time in the future should it
choose to do so. Moreover, the goods of both parties are inexpensive consumer items
that would be sold to ordinary consumers having no special sophistication. On its
website, Opposer offers each collection of stickers or labels for $14.95 with the
exception of “create your own small” customized labels for $19.95.10 Applicant’s
website pages advertise its stickers “start[ing] at $1.11 per unit for 125
Stuckons….”11 “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. Becton, 214
F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); see Midwestern Pet Foods,
Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435,
1440 (Fed. Cir. 2012).
Accordingly, the third and fourth du Pont factors, the similarity or
dissimilarity of established, likely-to-continue trade channels and the conditions
under which and buyers to whom sales are made, also favor a finding of likely
confusion.
The Marks
We next consider the marks in their entireties as to appearance, sound,
connotation and commercial impression, to determine the similarity or dissimilarity

10 10 TTABVUE at 17-22. For example, the “cool kids name labels” collections (i.e., large,
medium, and small stickers; pencil stickers and dot stickers) are all priced at $14.95.
11 11 TTABVUE at 49.
Opposition No. 91211182

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between them. In re Viterra, 101 USPQ2d at 1908 (quoting du Pont); Palm Bay, 73
USPQ2d at 1692. Because the similarity or dissimilarity of the marks is determined
based on the marks in their entireties, the analysis cannot be predicated on
dissecting the marks into their various components. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). However, different features may be
analyzed to determine whether the marks are similar. National Data, 224 USPQ at
751 (nothing improper in giving more or less weight to a particular feature of a
mark, provided the ultimate conclusion rests on a consideration of the marks in
their entireties). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. See
Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); L’Oreal
S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Applicant’s mark is STUCKONS. Opposer’s mark is STUCK ON YOU. The
marks are similar in appearance and pronunciation because they both consist of or
comprise the same phrase, “stuck on,” as their initial components. There is no
significant distinction between the initial components due to the addition of the
letter “s” in Applicant’s mark. In light of the rest of Applicant’s mark, which is
incorporated within Opposer’s mark, we find the addition to be a very minor
distinction. See Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957)
(finding no material difference between the singular and plural forms of ZOMBIE
such that the marks were considered the same mark); Weidner Publ’ns, LLC v.
Opposition No. 91211182

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D&D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014); In re Pix of Am., Inc.,
225 USPQ 691, 692 (TTAB 1985) (the terms “BLINK” and “BLINKS” share the
same meaning and connotation because the pluralization of applicant’s mark “is
almost totally insignificant in terms of the likelihood of confusion of purchasers.”). It
is also immaterial that Applicant’s mark is a compound term, lacking a space
between the terms. Applicant’s mark will be readily perceived as the combination of
two terms, “stuck” and “ons.” See Seaguard Corp. v. Seaward International, Inc.,
223 USPQ 48, 51 (TTAB 1984) (SEA GUARD and SEAGUARD are “essentially
identical”); In re Best Western Family Steak House, Inc., 222 USPQ 827 (TTAB
1984) (BEEFMASTER for restaurant services and BEEF MASTER for frankfurters
and bologna are “practically identical”); Stockpot, Inc. v. Stock Pot Restaurant, Inc.,
220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984)
(finding STOCKPOT and STOCK POT confusingly similar).
Applicant’s comparison of the marks in terms of their number of words,
letters, and spaces is unpersuasive. The test is not whether the marks can be
distinguished in a side-by-side comparison; nor should undue weight be given to the
spaces between the words. The test, under the first du Pont factor, is “‘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) (citation omitted). Here, due to the presence of
Opposition No. 91211182

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the same beginning phrase in both marks, we find they are similar in appearance
and pronunciation.
The marks are also similar in connotation. Both suggest that the goods are
meant to adhere to a surface of an object. Applicant argues that there is no
likelihood of confusion because Opposer’s mark is a double entendre, a “common,
defined and specific object pronoun phrase which means ‘enamored with YOU’, an
emotional state directed at YOU,”12 while Applicant’s mark is “[a]t most, … a single
nonsense word that could be considered a descriptive mark (description of stuck-on
or adhesion, solely a physical property).”13 Applicant further contends that if
Opposer’s mark is not a double entendre, it is entitled to only “weak trademark
protection.”14 Contrary to Applicant’s arguments, we find that the double entendre
in Opposer’s mark creates a noticeable and arbitrary mark that is not weak. We
find further that, given the significance of STUCK ON as applied to adhesive labels
and stickers, the plain meaning of the words STUCK ON is just as salient as the
double entendre significance in the mark. The fact that Opposer’s mark may be a
double entendre does not obviate the likelihood that consumers will be confused as
to the source of origin of the goods. See Barbaras Bakery, Inc. v. Barbara
Landesman 82 USPQ2d 1283 (TTAB 2007) (finding BARB’S BUNS BAKERY, INC.
confusingly similar to BARBARA’S BAKERY despite double entendre of BARB’S
BUNS); Blue Cross & Blue Shield Ass’n v. Harvard Cmty. Health Plan, Inc., 17
USPQ2d 1075 (TTAB 1990) (finding applicant’s mark THE CURE FOR THE

12 13 TTABVUE at 9. Emphasis in original.
13 Id.
14 13 TTABVUE at 10.
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BLUES likely to cause confusion with opposer’s marks BLUE CROSS and BLUE
SHIELD despite double entendre of “the blues”).
Applicant’s argument that Opposer’s mark is weak due to the registration of
similar third-party marks fails for lack of proof. The TESS listing, submitted by
Applicant, of applications and registrations of marks including the word “stuck,”
provides only the application serial number or registration number, mark, and
status of the applications or registrations (“live” or “dead”). Such a list, without
copies or electronic printouts of the applications or registrations, is insufficient to
properly make the applications or registrations of record.15 In re 1st USA Realty
Professionals, Inc., 84 USPQ2d 1581 (TTAB 2007); cf. In re Smith & Mehaffey, 31
USPQ2d 1531, 1532 n.3 (TTAB 1994) (listing of registrations from private search
report not considered); In re Classic Media, Inc., 78 USPQ2d 1699, 1700 (TTAB
2006) (listing of registrations in Applicant’s brief insufficient).
Overall, we find that the similarity between the marks which arises from the
shared phrase “stuck on” outweighs the points of dissimilarity between the marks.
Viewed as a whole in terms of their source-indicating significance, we find that
Applicant’s mark is similar, rather than dissimilar, to Opposer’s mark. This is
especially so given that Applicant’s goods are, in part, identical to Opposer’s goods,

15 We hasten to add that even had these registrations been properly made of record, they
would not show that Opposer’s mark is weak. Only a small number of the marks in the
listing were indicated as being live registrations, and the marks in the majority of these
cases include additional elements that distinguish them from either party’s mark. The
applications, even if they had been properly of record, are evidence only of the fact that they
had been filed. Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1467 n.6
(TTAB 2003). Similarly, the cancelled registrations, even if properly of record, are evidence
only of the fact that such registrations at one time existed. Even copies of live registrations
are not effective to prove that the registered marks are actually in use.
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thus reducing the degree of similarity between the marks that is required to
support a finding of likelihood of confusion. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). The first du
Pont factor accordingly weighs in Opposer’s favor in our likelihood of confusion
analysis.
Additional Factors
Applicant argues that there has been no actual confusion. The absence of
reported instances of actual confusion would be meaningful only if the record
showed appreciable and continuous use by Applicant of its mark for a significant
period of time in the same geographic area as Opposer. Fiserv, Inc. v. Electronic
Transaction Systems Corp., 113 USPQ2d 1913, 1922 (TTAB 2015) (“[W]hile the
presence of confusion may be very useful to our analysis, the lack of evidence of
actual confusion carries little weight.” (citing J.C. Hall Co. v. Hallmark Cards, Inc.,
340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965)); Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768 (TTAB 1992). Applicant’s application is based on
Applicant’s intent to use, and other than the single invoice provided by Opposer,
there is no evidence that Applicant has made any use of its mark, let alone
appreciable or continuous use. Accordingly, we treat this factor as neutral.
Applicant further argues that it adopted its mark in good faith. Even if the
record supported Applicant’s contention, a finding of good faith adoption of a mark
will not prevent a finding of likelihood of confusion. J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991); Lebanon
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Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1834 (TTAB 2012).
This factor is also treated as neutral.
Finally, Applicant argues that Opposer has no plans to expand to include
stickers or labels that may be affixed onto cellphones, or which may contain political
messages. Applicant has provided no evidence or testimony to support its position.
In any event, nothing in Opposer’s identification of goods limits its ability to expand
its line of goods. On its website, Opposer offers labels that may be affixed to a
variety of goods: “These labels are both dishwasher and microwave safe making
them perfect for drink bottles, food containers, school books, swimming goggles,
outdoor toys, books and more.”16 Buyers of Opposer’s labels will likely think that
they are suitable for attaching to electronic devices, or that Opposer will develop
labels suitable to the purpose. Thus, this factor is also neutral or slightly favors
Opposer.
Balancing the factors.
There are greater points of similarity than of dissimilarity between
Applicant’s mark STUCKONS and Opposer’s registered mark STUCK ON YOU. As
to the goods, they are in part legally identical, and the application and registrations
contain no restrictions as to trade channels or classes of purchasers. Although
Applicant’s goods are designed for use on electronic devices, Opposer’s stickers and
labels may also be affixed thereto, and both parties’ stickers may be made of vinyl
and be removable.

16 10 TTABVUE at 25.
Opposition No. 91211182

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Accordingly, we find that Applicant’s registration of the mark STUCKONS is
likely to cause confusion with Opposer’s previously used and registered mark
STUCK ON YOU under Section 2(d) of the Trademark Act, 15 U.S.C. § 2(d).
Decision: The opposition is sustained.