Theory LLCv.Brian D. Vernia

Trademark Trial and Appeal Board

Jun 4, 2013

No. 91194949 (T.T.A.B. Jun. 4, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 4, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Theory LLC
v.
Brian D. Vernia
_____

Opposition No. 91194949
to application Serial No. 77884958
filed on December 3, 2009
_____

Bret J. Danow and Michael F. Sarney of Katten Muchin Rosenman LLP for Theory
LLC.

Brian D. Vernia, pro se.
_____

Before Holtzman, Kuhlke and Taylor, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Brian D. Vernia, seeks registration of the mark shown below for
goods identified in the application as “t-shirts,” in International Class 25 on the
Principal Register.1

1 Serial No. 77884958, filed December 3, 2009, alleging a bona fide intent to the use the
mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b).
Opposition No. 91194949

2

Opposer, Theory LLC, has opposed registration of applicant’s mark on the
ground that, as applied to applicant’s goods, the mark so resembles opposer’s
previously used and registered THEORY trademark for a variety of clothing items,
including t-shirts, as to be likely to cause confusion under 2(d) of the Lanham Act,
15 U.S.C. § 1052(d).
While applicant’s answer sets forth arguments on the merits of the case, we
construe it as a general denial.
By operation of the Trademark Rules the pleadings herein and the file of the
opposed application are of record. Trademark Rule 2.122, 37 C.F.R. § 2.122. In
addition, opposer submitted, with its notice of opposition, USPTO Trademark
Electronic Search System (TESS) printouts of its pleaded registrations, which show
that the registrations are subsisting and owned by opposer.2 Applicant did not take
any testimony, file a notice of reliance or file a brief.3

2 Pleaded registrations may be made of record by attaching “a current printout of
information from the electronic database records of the USPTO showing the current status
and title of the registration.” Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d).

3 The material attached to applicant’s answer is not evidence on behalf of the party to
whose pleading the exhibit is attached unless identified and introduced in evidence as an
exhibit during the period for the taking of testimony. Trademark Rule 2.122(c), 37 C.F.R. §
2.122(c). See also Republic Steel Co. v. M.P.H. Mfg, Corp., 312 F.2d 940, 136 USPQ 447,
448 (CCPA 1963) and Hard Rock Cafe Intl (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1511
(TTAB 2000).
Opposition No. 91194949

3

STANDING, PRIORITY AND LIKELIHOOD OF CONFUSION
The pleaded registrations made of record, which are in full force and effect
and are owned by opposer, are summarized as follows:
Registration No. 2067427 for the mark THEORY in typed form for
“sweaters” in International Class 25, filed on October 8, 1993, issued
on June 3, 1997, Sections 8 and 15 combined declaration accepted and
acknowledged, renewed;

Registration No. 2338012 for the mark THEORY in typed form for
“wearing apparel, namely t-shirts, tops, shorts, pants, skirts, blouses,
dresses, evening gowns, jackets, coats, suits, vests, sock, scarves and
caps” in International Class 25, filed on February 3, 1999, issued on
April 4, 2000, Sections 8 and 15 combined declaration accepted and
acknowledged, renewed;

Registration No. 2802700 for the mark THEORY in typed form for
“leather goods, namely, belts, handbags, tote bags, backpacks,” in
International Class 18, “wearing apparel, namely, belts, sleepwear,
stockings, lingerie, underwear, wraps, hats, gloves and footwear,” in
International Class 25, and “retail store services in the fields of
apparel, footwear, bags and luggage and watches and jewelry,” in
International Class 35, filed on January 18, 1999, issued on January 6,
2004, Sections 8 and 15 combined declaration accepted and
acknowledged;4

Registration No. 3004691 for the mark THEORY in typed form for
“jewelry, clocks and watches,” in International Class 14, filed on June
6, 2002, issued on October 4, 2005, Section 8 accepted;

Registration No. 3490184 for the mark THEORY in standard
characters for “eyeglasses, eyeglass frames and sunglasses,” in
International Class 9, filed on December 29, 2004, issued on August
19, 2008; and

Registration No. 3672075 for the mark THEORY in standard
characters for “men’s wear, namely, tailored suits, tailored sports
coats, tailored trousers, tailored vests, tailored top coats, ties and bow
ties; men’s wear, namely, tuxedos; men’s wear, namely, t-shirts, long-
sleeved shirts, sweaters, pants, vests, coats, blazers, scarves and
leather jackets,” filed on October 29, 2008, issued on August 25, 2009.

4 Certain other goods were deleted pursuant to the Section 8 declaration.
Opposition No. 91194949

4

Because opposer has made the pleaded registrations summarized above
properly of record, opposer has established its standing to oppose registration of
applicant’s mark and its priority is not in issue. See King Candy Co., Inc. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Our likelihood of confusion determination under Section 2(d) 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 and 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). 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 (CCPA 1976). We confine our
analysis to opposer’s mark in Registration No. 2338012.
We turn first to a consideration of the goods, channels of trade and class of
purchasers. We must make our determinations under these factors based on the
goods as they are recited in the registrations and application. See In re Elbaum,
211 USPQ 639 (TTAB 1981).
Opposer’s “t-shirts” listed in Registration No. 2338012 are identical to
applicant’s “t-shirts.” Considering the channels of trade and classes of purchasers,
because the goods are identical and there are no limitations as to channels of trade
or classes of purchasers in either the application or opposer’s registration, we must
presume that applicant’s and opposer’s goods will be sold in the same channels of
trade and will be bought by the same classes of purchasers. See Hewlett-Packard
Opposition No. 91194949

5

Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) and In re
Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
In view of the above, the du Pont factors of the similarity of the goods, the
channels of trade and classes of purchasers favor a finding of likelihood of confusion.
With regard to the conditions of sale, because we are bound by the
description of goods in the application and registration and because the descriptions
of goods are not restricted as to price, the goods at issue must include inexpensive
as well as expensive clothing. Inexpensive t-shirts would not be purchased with a
great deal of care or require purchaser sophistication, which increases the likelihood
of confusion. Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed.
Cir. 2000) (“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”) (citations omitted). Thus, this
factor also favors opposer.
We now consider the similarity or dissimilarity of applicant’s mark
and opposer’s THEORY mark when compared in their entireties in terms of
appearance, sound, connotation and commercial impression, keeping in mind that
“when marks would appear on virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely confusion declines.” Century
Opposition No. 91194949

6

21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992).
Opposer argues that the word portion, DEVILTHEORY of applicant’s mark is
the dominant element in that mark. Opposer also points out that because its mark
is registered in typed form or standard characters we must consider all manner of
display including applicant’s “font and style.” Opp. Br. p. 7. Opposer contends that
the “DEVIL” portion of applicant’s mark serves to modify the THEORY component
and “acts as an adjective to describe the type of THEORY or the person who
provides the THEORY – one that is evil, cruel, reckless, mischievous or playful. It
does not serve as a source identifying function which sufficiently distinguishes
[a]pplicant’s [m]ark [f]rom [o]pposer’s [m]ark.” Id. Opposer concludes that “the
term ‘devil,’ when added to [o]pposer’s THEORY mark could be viewed by
consumers as suggesting or describing a more risqué or lower end of goods
distributed by Theory.” Id. at 8.
Considering the marks in their entireties, we find that applicant’s and
opposer’s marks differ substantially in appearance, sound, connotation and
commercial impression. The common element THEORY is overwhelmed by the
strong impression of the word DEVIL and the letter logo DT situated prominently
over the wording. In addition, the word DEVIL while modifying the word THEORY
would not necessarily point to another line of opposer’s goods, as could be the case
with other words such as SPORT or CASUAL.5 Moreover, we find this factor to be

5 We note that there is no evidence in the record on the issue of the similarities of the
marks or the strength of opposer’s mark.
Opposition No. 91194949

7

pivotal in that even considering the du Pont factors that favor opposer, this factor of
the dissimilarities of the marks outweighs the other factors. See Kellogg Co. v.
Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991)
(“We know of no reason why, in a particular case, a single du Pont factor may not be
dispositive”). See also Genesco Inc. v. Martz, 66 USPQ2d 1260 (TTAB 2003).
Because the marks are sufficiently different, the du Pont factor of the
dissimilarities of the marks outweighs the other relevant du Pont factors discussed
above. In view thereof, we conclude that there is no likelihood of confusion between
applicant’s mark and opposer’s THEORY mark. In re E.I. du Pont de
Nemours & Co., 177 USPQ at 567 (“[E]ach [of the thirteen elements] may from case
to case play a dominant role”).
In view thereof, and because the record is devoid of any other evidence,
opposer has not met its burden to prove its claim by a preponderance of the
evidence.
Decision: The opposition is dismissed.