Toho Co., Ltd.

Trademark Trial and Appeal Board

Dec 7, 2018

No. 79201556 (T.T.A.B. Dec. 7, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: December 7, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Toho Co., Ltd.
_____

Serial No. 79201556
_____

Michelle E. Tochtrop of Pearne & Gordon LLP,
for Toho Co., Ltd.
Kristina Morris, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_____

Before Taylor, Wolfson and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Toho Co., Ltd. (“Applicant”) seeks registration on the Principal Register of the
mark (in standard characters)1 for services in International Classes
28 and 41, and the following goods in Class 25:

1 In light of the December 17, 2018 notation to file in the Trademark Status & Document
Retrieval system indicating a change in drawing code, this decision is amended to indicate
that Applicant’s mark is in standard characters. Application Serial No. 79201556 was filed
on August 19, 2016 as a request for extension of protection of International Registration No.
1331104 under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a) (Madrid Protocol).
Applicant’s Section 66(a) application is subject to the same examination standards as any
other application for registration on the Principal Register. 15 U.S.C. § 1141h(a)(1); see also
TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1904.02(a) (Oct. 2018). If the
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Clothing, namely, evening dresses, school uniforms,
jackets, jogging pants, sweat pants, undershirts for
kimonos (Koshimaki), undershirts for kimonos (Juban),
tightening-up strings for kimonos (Datejime), wrap belts
for kimonos (Datemaki), full-length kimonos (Nagagi),
short overcoat for kimonos (Haori), string fasteners for
haori (Haori-himo), pleated skirts for formal kimonos
(Hakama), detachable neckpieces for kimonos (Haneri),
sleep masks, aprons, collar protectors for wear in the
nature of collar protector strips for application to clothing
collars, mufflers as neck scarves, socks and stockings other
than special sportswear, puttees and gaiters, fur stoles,
shawls, scarves, Japanese style socks (Tabi), Japanese
style socks covers (Tabi covers), cloth gloves, and mittens,
neckties, neckerchieves, bandanas, thermal clothing
supporters for neck, foot, leg and arm in the nature of
thermal socks, neck scarves, leg warmers, arm warmers
being clothing, mufflers, ear muffs as clothing, boas
necklets, gaiters, gaiter straps, leggings, leg warmers, bibs
not of paper, heelpieces for stockings, spats, hoods for head
(Zukin), sedge-woven in the nature of bamboo hats
(Sugegasa), nightcaps and other headwear; garters; sock
suspenders; braces for clothing in the nature of suspenders;
belts; footwear; masquerade costumes; ski gloves;
headbands; all of the aforementioned goods excluding
swimwear.
The Trademark Examining Attorney has refused registration of Applicant’s mark
as to the Class 25 goods under Section 2(d) of the Trademark Act on the ground that
the mark so resembles the registered mark RODAN SWIMWEAR (in standard

proposed mark is not registrable on the Principal Register, the extension of protection must
be refused. 15 U.S.C. § 1141h(a)(4).

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs and other
docket entries on appeal are to the Board’s TTABVUE docket system.

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characters, with “SWIMWEAR” disclaimed) for “swimwear” in Class 25 as to be
likely to cause confusion or mistake, or to deceive. 15 U.S.C. § 1052(d).2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
Applicant has attached to its main brief three exhibits: (A) a TSDR printout about
the cited RODAN SWIMWEAR registration, (B) screenshots from Registrant’s
website, displaying its swimwear, and (c) an article from Wikipedia about Rodan, the
giant monster in Applicant’s 1956 film Rodan:

2 Registration No. 4644087 issued on the Principal Register on November 25, 2014.
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3
The Examining Attorney objects to exhibits B and C on the ground that they are
untimely. The objection is well taken. “The record in the application should be
complete prior to the filing of an appeal. Evidence should not be filed with the Board
after the filing of a notice of appeal. If the appellant or the examining attorney desires
to introduce additional evidence after an appeal is filed, the appellant or the
examining attorney should submit a request to the Board to suspend the appeal and
to remand the application for further examination.” Trademark Rule 2.142(d), 37
C.F.R. § 2.142(d); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (“TBMP”) § 1207.01 (June 2018). The Examining Attorney’s objection is
therefore sustained, and exhibits B and C to Applicant’s appeal brief will be given no

3 Exs. A-C, Applicant’s brief, 7 TTABVUE 10-26; we consider exhibit A, to which the
Examining Attorney did not object.

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consideration. See e.g., In re Fiat Grp. Mktg. & Corporate Commc’ns S.p.A., 109
USPQ2d 1593, 1596 (TTAB 2014); In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB
2013). We hasten to add that even if this evidence had been considered, it would not
change the outcome of this decision.
II. Likelihood of Confusion

Applicant directs our attention to a Third Circuit decision, Interpace Corp. v.
Lapp, Inc., 721 F.2d 460 (3d Cir. 1983), a trademark infringement and false
designation of origin case that enunciated a multi-factor test for determining
likelihood of confusion between marks used on non-competing goods.4 As the
Examining Attorney correctly points out, that case is not on point.5 We base our
determination of likelihood of confusion under Section 2(d) on the factors enunciated
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 575 U.S. __, 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 DuPont
factor that is relevant, based on all of the probative facts in evidence, and have treated
any other factors as neutral. 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

4 Applicant’s brief, 7 TTABVUE 5.
5 Examining Attorney’s brief, 9 TTABVUE 6.
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relevant.”). Varying weights may be assigned to each DuPont factor depending on the
evidence presented. See Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more
or less weighty roles in any particular determination”). Two key considerations are
the similarities between the marks and the similarities between the goods. See In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
A. The Marks
Under the first DuPont factor, we determine the similarity or dissimilarity of the
marks as compared in their entireties, taking into account their appearance, sound,
connotation and commercial impression. DuPont, 177 USPQ at 567; Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160
(Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “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).
Applicant acknowledges that both marks contain the word RODAN, but points out
that the registered mark adds a second word, SWIMWEAR, which it contends
distinguishes the two marks.6 In support of this contention, Applicant cites another

6 Applicant’s brief, 7 TTABVUE 5.
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Third Circuit decision, A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d
198, 216 (3d Cir. 2000) in which the court found that Victoria’s Secret’s THE
MIRACLE BRA mark for swimsuits was not likely to be confused with the mark
MIRACLESUIT, also for swimsuits. According to Applicant, the court found the
marks differed for two reasons: first, the marks, with their differing syllables, differed
in sight and sound, and second, “the descriptive word ‘bra’ focused attention on the
brassiere portion of the Victoria’s Secret product, rather than on the entire suit.”7
Here, as in that case, “the inclusion of ‘swimwear’ in the registered mark focuses the
consumer’s attention on swimwear, and only swimwear,” Applicant argues, adding
“In contrast, the applied-for mark explicitly excludes swimwear of any type…”8
We agree with the Examining Attorney, however, that the A&H Sportswear v.
Victoria’s Secret case is distinguishable from the present appeal, and that the marks
are more similar than dissimilar under the first DuPont factor. In A&H Sportswear
v. Victoria’s Secret, the Third Circuit found that the common element “MIRACLE,”
as used in both marks, was not arbitrary, but suggestive. Id. at 223. “The Miraclesuit
is advertised as having a slimming effect on the wearer without using uncomfortable
girdle-like binds. … Just as a ‘miracleworker’ is a person who works miracles, a
‘miraclesuit’ is a suit that works miracles. Whether the slimming effect is literally
miraculous may be subject to debate, but the mark itself communicates something
about the product.” Id. at 208, 223. In contrast, wrote the court, “While A & H is busy

7 Id., 7 TTABVUE 5-6.
8 Id.
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selling skinny waists and midriffs, Victoria’s Secret, the nation’s premier lingerie
seller, has focused on instant enlargements of the bust. In 1993, Victoria’s Secret
released The Miracle Bra, a padded push-up bra.” Id. at 208. In both cases, the term
“MIRACLE” was self-laudatory: “‘Self-laudatory’ marks like ‘Sure,’ … ‘Super Duper,’
… ‘Plus,’ … or, in this case, ‘Miracle,’ are generally held to be weak marks,” the court
found. Id. at 222 (internal citations omitted).
Here, unlike that Third Circuit case, the shared term RODAN is not suggestive,
but arbitrary or even fanciful with respect to clothing. Its dominance is reinforced by
its location as the first word in the cited registered mark. Palm Bay Imps., 73
USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve” is the first word in the mark and the first word to appear
on the label); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (“[I]t is often the first part of a mark which is most likely to be impressed in the
mind of a purchaser and remembered”).
While we must consider a mark in its entirety, one feature may be more significant
or dominant than other elements. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985) (“[I]n articulating reasons for reaching a conclusion
on the issue of confusion, 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 consideration of the marks in their entireties.”).
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Here, the highly distinctive word RODAN, placed prominently at the front of
Registrant’s mark, carries great weight as a source indicator.9
The remaining part of the registered mark, SWIMWEAR, is less significant and
rightly disclaimed, as it is generic for a kind of clothing.10 Consumers would be
unlikely to focus upon this generic term to distinguish source. See Citigroup v. Capital
City, 98 USPQ2d at 1257; In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997); (finding DELTA the dominant part of the mark THE
DELTA CAFÉ, where CAFÉ was disclaimed as generic).
Moreover, all of Applicant’s mark, RODAN, is encompassed by Registrant’s mark.
While there is no rule that likelihood of confusion automatically applies where one
mark encompasses another, likelihood of confusion has often been found where the
entirety of one mark is incorporated within another. See In re Denisi, 225 USPQ 624,
626 (TTAB 1985) (PERRY’S PIZZA for restaurant services specializing in pizza and
PERRY’S for restaurant and bar services); see also Coca-Cola Bottling Co. of
Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188
USPQ 105 (CCPA 1975) (applicant’s mark BENGAL LANCER for club soda, quinine
water and ginger ale likely to cause confusion with BENGAL for gin); In re Integrated
Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (applicant’s mark BARR GROUP
wholly encompasses the registered mark BARR); Johnson Publ’g Co. v. Int’l Dev. Ltd.,

9 Since Applicant’s and Registrant’s marks are both standard character marks, they may be
presented in the same font, size and color. In re Aquitaine Wine USA, LLC, 126 USPQ2d
1181, 1186 (TTAB 2018).
10 Examining Attorney’s brief, 9 TTABVUE 7.
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221 USPQ 155, 156 (TTAB 1982) (applicant’s mark EBONY DRUM for hairdressing
and conditioner is likely to cause confusion with EBONY for cosmetics); In re U.S.
Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (finding applicant’s CAREER IMAGE
marks similar to registered mark CREST CAREER IMAGES). Thus, the marks are
similar to the extent that Registrant’s mark fully encompasses Applicant’s mark.
Applicant’s mark is likely to appear to prospective purchasers as a shortened form
of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257,
1260 (Fed. Cir. 2010) (“the Board found ... that ML is likely to be perceived as a
shortened version of ML MARK LEES when used on the same or closely related skin
care products. ... Avoidance of this kind of confusion about the provenance of goods is
the very problem to which the Lanham Act was directed.”); Big M. Inc. v. U.S. Shoe
Corp., 228 USPQ 614, 616 (TTAB 1985) (“[W]e cannot ignore the propensity of
consumers to often shorten trademarks....”). As the Examining Attorney correctly
observes, “[t]he addition of the generic wording SWIMWEAR to the common wording
RODAN, creates the impression the registrant’s mark identifies a line of swimwear
emanating from the same source as the clothing offered under applicant’s mark.”11
Far from distinguishing Applicant’s mark, the addition of SWIMWEAR to RODAN
tends to suggest another product line emanating from the same source. See In re
Collegian Sportswear, Inc., 224 USPQ 174, 176 (TTAB 1984) (“…customers familiar
with registrant’s ‘COLLEGIENNE’ clothing might believe that ‘COLLEGIAN OF
CALIFORNIA’ clothing was a new line of clothing from registrant featuring a

11 Id.
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‘California’ or west coast style.”).
On the whole, then, considering the marks in their entireties, we find that
Applicant’s mark is highly similar to the cited registered mark. This factor favors a
finding of likelihood of confusion.
B. The Goods and Channels of Trade

We next consider the second and third DuPont factors, concerning the relatedness
of Applicant’s and Registrant’s respective goods and channels of trade. DuPont, 177
USPQ 567.
Applicant maintains that “wherein Registrant’s only clothing item is bathing
suits, not even accessories that might ordinarily be sold alongside of bathing suits,
that such bathing suits are not likely to be confused with Applicant’s clothing items,
which are completely distinct from, and specifically exclude, swimwear.”12
The issue, however, is not whether consumers would confuse the goods
themselves, but whether they would likely confuse their source. In re I-Coat Co., LLC,
126 USPQ2d 1730, 1737 (TTAB 2018). It is not necessary that Applicant’s and
Registrant’s clothing goods be similar or even competitive to support a finding of
likelihood of confusion. Instead, likelihood of confusion can be found “if the respective
products are related in some manner and/or if the circumstances surrounding their
marketing are such that they could give rise to the mistaken belief that they emanate
from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1722 (Fed. Cir. 2012).

12 Applicant’s reply brief, 10 TTABVUE 3.
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The Board has found many different articles of clothing related for likelihood of
confusion purposes. See Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d
1233, 1236 (TTAB 1992) (underwear related to neckties); In re Mercedes Slacks, Ltd.,
213 USPQ 397, 398-399 (TTAB 1982) (hosiery related to trousers); In re C. F.
Hathaway Co., 190 USPQ 343, 345 (TTAB 1976) (“Moreover, we are firmly of the
opinion that purchasers confronted by ‘GOLF CLASSIC’ men’s hats and
‘HATHAWAY GOLF CLASSIC’ men’s knitted sport shirts are likely to assume that
both products emanate from or are in some way associated with applicant ....”).
Swimwear and other apparel items of the type identified in the application,
including Japanese-style clothing, often emanate from a single source under a single
mark, as evidenced by a dozen use-based third-party registrations the Examining
Attorney has introduced,13 e.g.:
• Reg. No. 3712781 for inter alia swimsuits, pants, spats, Japanese style
clothing, namely kimono, jeans, sweat pants, underwear, aprons in the nature
of clothing, socks, stoles, shawls, scarfs, gloves in the nature of clothing,
neckties, neckerchiefs, mufflers, ear muffs, hats, footwear, ski wear;

• Reg. No. 4740221 for inter alia swimwear, bikinis, headwear, footwear, jackets,
pants, belts, hats, kimonos, muffs, headbands, neckwear, jogging suits,
skiwear;

• Reg. No. 4848861 for inter alia swimwear, bikinis, headwear for women,
footwear for women, women’s clothing, namely, tops, bottoms, jackets, pants,
dresses, belts, hats, scarf, kimonos, hoods, hooded sweaters, neckwear, jogging
suits, skiwear;

• Reg. No. 4941929 for inter alia swimwear, bikinis, headwear; footwear;
clothing, namely, tops, bottoms, jackets, pants, skirts, dresses, belts, hats,
scarf, gloves, kimonos, muffs, hoods, hooded sweaters, slippers, neckwear,
mittens, jogging suits, skiwear;

13 Oct, 3, 2017 Office Action TSDR pp. 75-115.
Serial No. 79201556
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• Reg. No. 4715875 for inter alia swimsuits, beach cover-ups, wet suits, bath suit,
clothing, namely, tops, bottoms, pants, aprons, gowns, belts, cloth bibs, foot
wear, shoes, boots, dresses, fleece, sandals, gloves, skirts, hats, caps, head
wear, hooded sweat shirts, jackets, kimonos, obis, mittens, ties, suspenders,
sweat bands.
These third-party registrations serve to suggest that other apparel, including
Japanese-style apparel of the sort identified in the application, may be provided by
the same source under the same mark as swimwear. In re I-Coat, 126 USPQ2d at
1738; In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)
aff’d per curiam 864 F.2d 149 (Fed. Cir. 1988); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993).
The Examining Attorney has also introduced marketplace evidence that
swimwear and other apparel, including Japanese-style apparel, often emanate from
a single source under a single mark. For example:
• The Uniqlo website shows both swimwear and yukata, jeans, sweaters, shirts,
blouses, and fleece, featured under the UNIQLO mark;14
• The Free People website features swimwear as well as kimonos, croppy
kimonos, ponchos, jumpsuits, dresses, and shoes under the FREE PEOPLE
mark;15
• The YesStyle website offers swimsuits, bodysuits, swim shorts, rashguards
and cover-ups, as well as kimono jackets, kimono cardigans, kimono neck

14 Uniqlo.com 10/3/2017, Oct. 3, 2017 Office Action TSDR pp. 32-34.
15 FreePeople.com 10/3/2017, id. at TSDR pp. 23-31.
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blouses, kimono dresses, t-shirts, and evening gowns under the YESSTYLE
mark;16
• The Billabong website features swimsuits and wetsuits, as well as vests, denim
jackets, fleeces, shorts, tops, sweaters, tee shirts, skirts, and pants under the
BILLABONG mark;17 and
• The American Eagle Outfitters website features swimwear and t-shirts, jeans,
jackets, underwear, mittens, gloves, and shorts under the AMERICAN EAGLE
mark.18
These websites demonstrate that goods of the type offered by both Applicant and
Registrant are marketed and sold together online under the same marks. See Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002) (evidence that “a single company sells the goods and services of both parties, if
presented, is relevant to the relatedness analysis….”). This evidence supports a
finding that swimwear and the other items of apparel identified in the subject
application and registration are indeed related products. See, e.g., In re Davey Prods.
Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba, 91 USPQ2d 1266,
1268-69, 1271-72 (TTAB 2009).
Since neither the application nor the registration restricts its channels of trade or
classes of customers, we must presume that Applicant’s and Registrant’s goods will

16 YesStyle.com 10/3/2017, id. at TSDR pp. 45-67.
17 Billabong.com 10/3/2017, id. at TSDR pp. 8-22.
18 AE.com 2/24/2017, Feb. 24, 2017 Office Action TSDR pp. 25-38.
Serial No. 79201556
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flow through the normal and usual channels of trade―that is, clothing and
department stores―to the same general class of consumers, that is, purchasers of
apparel. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed.
Cir. 2018); In re i.am.symbolic, 123 USPQ2d at 1750; In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“since the identification is unrestricted as to
channels of distribution, we must consider the [clothing] goods to travel in all
channels appropriate for goods of this type.”)
Based on the record evidence, we find that Registrant’s and Applicant’s clothing
goods are related, and travel through the same or similar normal channels of trade
to the same general class of customers. Thus, the second and third DuPont factors
favor finding a likelihood of confusion.
C. Sophistication and Care of Consumers
Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont, 177 USPQ at 567.
Applicant argues that buyers of apparel, especially women’s apparel, are
sophisticated purchasers, so “it follows that consumers of Rodan Swimwear would be
discerning enough so as not to be confused by Applicant’s clothing, which specifically
excludes swimwear.”19 The Examining Attorney responds that Applicant has
provided no evidence of this avowed sophistication, and that purchasers who are

19 Applicant’s brief, 7 TTABVUE 7; Applicant’s reply brief, 10 TTABVUE 2.
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sophisticated or knowledgeable in a particular field may still be susceptible to source
confusion.20
In this case, the relevant class of purchasers is the general clothes-purchasing
public; neither the application nor the registration limit or restrict this potential
public by gender, nor the goods by price. “We must therefore presume that
[Registrant’s] and Applicant’s [goods] are offered to both sophisticated and
unsophisticated consumers, and that their purchasing decisions … range from
thoughtful to hasty.” Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC,
122 USPQ2d 1030, 1039 (TTAB 2016). “Although some of the parties’ more
knowledgeable consumers may be more careful in their purchase, neither the
registrations nor the applications contain limitations on the classes of customers. We
therefore must not limit our consideration of this factor to the more
sophisticated purchasers within the classes of potential customers.” Bd. of Regents v.
So. Illin. Miners, LLC, 110 USPQ2d 1182, 1193 (TTAB 2014). We must, in fact,
consider the degree of care that would be exercised by the least sophisticated
consumer. See Stone Lion Capital 110 USPQ2d at 1163 (precedent requires consumer
care for likelihood-of-confusion decision to be based “on the least sophisticated
potential purchasers”). Given the similarity of the marks and the relatedness of the
goods, there is no reason to believe that these consumers would exercise more than
ordinary care, which would not avoid a likelihood of confusion. In fact, “even careful
purchasers who do notice the difference in the marks will not ascribe it to differences

20 Examining Attorney’s brief, 9 TTABVUE 12.
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in the source of the goods, but will see the marks as variations of each other, pointing
to a single source.” In re I-Coat, 126 USPQ2d at 1739.
For these reasons, the fourth DuPont factor is neutral.
D. Applicant’s Intent

Applicant, alluding to the Third Circuit Lapp factors, argues that its intent in
applying to register RODAN is benign, as it seeks merely to “expand its business
interests based on the Rodan Monster, a mark that it has been using, and had rights
in, for over 60 years.”21 The Examining Attorney answers that “[A]pplicant’s intent
is not relevant in a determination of likelihood of confusion under Section 2(d).”22
This is partly true.
Bad faith adoption of a mark in order to capitalize on the good will developed by
another may be taken as a tacit acknowledgement of the marks’ similarity, and the
senior mark’s consumer recognition. See Tao Licensing, LLC v. Bender Consulting
Ltd., 125 USPQ2d 1043, 1063 (TTAB 2017) (13th DuPont factor); L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1441 (TTAB 2012). But good faith adoption of a mark
that is similar to a prior registered mark, for use on the same or similar goods, cannot
overcome the presumption of validity that inheres in the prior registered mark. 15
U.S.C. § 1057(b). See Miles Labs. Inc. v. Naturally Vitamin Supplements Inc., 1
USPQ2d 1445, 1455 (TTAB 1986) (“applicant is not in any case absolved from the
duty imposed by our trademark law on all late-comers to select marks for their new

21 Applicant’s brief, 7 TTABVUE 8, citing Applicant’s Reg. No. 2120121 for toys, issued in
1997.
22 Examining Attorney’s brief, 9 TTABVUE 12.
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products that are sufficiently distinguishable from marks in respect of which others
have federally recorded superior rights to prevent confusion.”). Thus, “[w]hile
evidence of bad faith adoption typically will weigh against an applicant, good faith
adoption typically does not aid an applicant attempting to establish no likelihood of
confusion. J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d
1889, 1891 (Fed. Cir. 1991).” Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393,
1398 n. 7 (TTAB 2007).
Accordingly, this factor is neutral.
E. Conclusion

We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant DuPont factors. Based on the
foregoing analysis, we have found that the marks at issue are similar; that
Applicant’s identified goods are related to Registrant’s identified goods; that they
would move in the same normal or usual trade channels to the same general class of
consumers; that these consumers cannot be expected to exercise sufficient care or
sophistication to avoid confusion; and that Applicant’s intent does not dispel
consumer confusion. For these reasons, we find that the applied-for mark, as used on
or in connection with the Class 25 goods identified in the application, so resembles
the cited registered mark as to be likely to cause confusion or mistake, or to deceive
under Section 2(d) of the Trademark Act. 15 U.S.C. § 1052(d).

Serial No. 79201556
- 19 -
Decision: The refusal to register Applicant’s mark in International
Class 25 is affirmed. The application will proceed to publication as to International
Classes 28 and 41.