Tween Brands Investment, LLCv.I am a Dreamer LLC DBA Levi Emmanuel

Trademark Trial and Appeal Board

Mar 31, 2015

No. 92056767 (T.T.A.B. Mar. 31, 2015)

Mailed:
March 31, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Tween Brands Investment, LLC
v.
I am a Dreamer LLC DBA Levi Emmanuel
_____

Cancellation No. 92056767
_____

Brandt W. Gebhardt and Rosanne T. Yang of Ascena Retail Group, Inc. for Tween
Brands Investment LLC.

I am a Dreamer LLC DBA Levi Emmanuel, pro se, represented by Levi Sap Nei
Thang, owner.
_____

Before Taylor, Bergsman and Ritchie, Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

I am a Dreamer LLC DBA Levi Emmanuel (“Respondent”) owns a
registration for the mark JUSTICE, in standard character format, for
Colognes, perfumes and cosmetics; cosmetics in general,
including perfumes; disinfecting perfumed soaps; eau de
perfume; essential oils as perfume for laundry purposes;
liquid perfumes; oils for perfumes and scents; perfume;
perfume oils; perfume oils for the manufacture of cosmetic
preparations; perfumed creams; perfumed extracts for
tissues and perfumes; perfumed paste; perfumed powder;
perfumed powders; perfumed soap; perfumed soaps;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Cancellation No. 92056767

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perfumed talcum powder; perfumes; perfumes and
colognes; perfumes and toilet waters; perfumes for
industrial purposes; perfumes in solid form; perfumes,
aftershaves and colognes; perfumes, eau de colognes and
aftershaves; perfumes, eaux de cologne and aftershaves;
perfuming sachets; sachets for perfuming linen in
International Class 3.1
Tween Brands Investment LLC (“Petitioner”) seeks to cancel the registration
on the ground that Respondent’s mark, as used or in connection with the identified
goods, so resembles Petitioner’s previously used and registered JUSTICE marks
noted below that it is likely to cause confusion, mistake, or deception. In the petition
to cancel, petitioner alleges ownership of the following registrations:2

1 Registration No. 4180720 issued on the Principle Register on July 24, 2011, based upon
application Serial No. 85373401, filed on July 18, 2011. The registration claims May 17,
2011 as the date of first use of the mark and August 17, 2011 as the date of first use in
commerce.
2 Petitioner also pleaded ownership of the following registrations, all which have been
cancelled:
Registration No. 3395626 (SHINE AT JUSTICE)
Registration No. 3999647 (SHINE AT JUSTICE)
Registration No. 3413783 (JUSTICE 04)
Registration No. 3406399 (JUSTICE JEMS)

A cancelled or expired registration has no probative value other than to show that it once
issued and it is not entitled to any of the statutory presumptions of Section 7(b) of the
Trademark Act. In Re Ginc UK Limited, 90 USPQ2d 1472, 1480 (TTAB 2007). See also
Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309
(Fed. Cir. 1989) (“a cancelled registration does not provide constructive notice of
anything.”); In re Hunter Publishing Company, 204 USPQ 957, 963 (TTAB 1979)
(cancellation “destroys the Section [7(b)] presumptions and makes the question of
registrability ‘a new ball game’ which must be predicated on current thought.”).

In addition, Petitioner has not as yet filed the required Section 8 affidavit of continued use
in connection with pleaded Registration No. 3523414 for the mark ,
although we note that the registration has not been cancelled and is still in the grace period
for such filing. Because of the uncertainty of continued registration, we did not consider the
registration in this decision.

Cancellation No. 92056767

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Registration No. 796455 for the mark JUSTICE (typed
format) for “men’s, boy’s and women’s shirts” in Class 25;3
Registration No. 2990417 for the mark JUSTICE (typed
format) for “clothing, namely, bathrobes, beach cover-ups,
beachwear, belts, blazers, blouses, [ body shapers, body
suits ], boxer shorts, bras, [bustiers,] camisoles, caps,
coats, dresses, footwear, [foundation garments, garter
belts, girdles,] gloves, [gowns,] halter tops, hats,
headbands, hosiery, jackets, jeans, jogging suits, knee
highs, knit shirts, knit tops, [ leotards, lingerie, ]
loungewear, mittens, [negligees,] night gowns, night
shirts, pajamas, panties, pants, [pantyhose, sarongs,]
scarves, shirts, shorts, skirts, slacks, sleepwear, [slips,]
socks, [stockings, suits,] sweat pants, sweat shirts, sweat
shorts, sweat suits, sweaters, swim wear, t-shirts, tank
tops, [tap pants, teddies,] ties, tights, underpants,
undershirts, underwear and vests” in Class 25 and “retail
store services, mail order catalog services and on-line
retail services featuring clothing” in Class 35;4
Registration No. 3006487 for the mark for “clothing,
namely, bathrobes, beach cover-ups, beachwear, belts,
blazers, blouses, [body shapers, body suits,] boxer shorts,
bras, [bustiers,] camisoles, caps, coats, dresses, footwear,
[foundation garments, garter belts, girdles,] gloves,
[gowns,] halter tops, hats, headbands, hosiery, jackets,
jeans, jogging suits, knee highs, knit shirts, knit tops,
[leotards, lingerie,] loungewear, mittens, [negligees,]
night gowns, night shirts, pajamas, panties, pants,
[pantyhose, sarongs,] scarves, shirts, shorts, skirts,
slacks, sleepwear, [slips,] socks, [stockings, suits,]sweat
pants, sweat shirts, sweat shorts, sweat suits, sweaters,
swim wear, t-shirts, tank tops, [tap pants, teddies,] ties,
tights, underpants, undershirts, underwear and vests” in
Class 25 and “retail store services, mail order catalog

3 Registered September 21, 1965; renewed (second renewal – 10 years). Prior to November
2, 2003, “standard character” drawings were known as “typed” drawings. A typed mark is
the legal equivalent of a standard character mark. TMEP § 807.03(i) (January 2015).
4 Registered August 30, 2005; Section 8 and 15 combined declaration accepted and
acknowledged.
Cancellation No. 92056767

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services and on-line retail services featuring clothing” in
Class 35;5
Registration No. 4237687 for the mark JUSTICE
(standard character format) for “backpacks; luggage;
purses; tote bags; umbrellas; wallets” in Class 18;6
Registration No. 3206319 for the mark JUSTICE FUN
CARD (standard character format) for “coupons” in Class
16 and “retail clothing store services featuring a program
of issuing and redeeming coupons” in Class 35;7
Registration No. 4249562 for the mark JUSTICE
(standard characters) for “Address books; art paper; arts
and craft paint kits; binders; blank journals; calendars;
coin holders; document holders; drawing boards; drawing
instruments; dry erase writing boards and writing
surfaces; folders; holders for desk accessories; lunch bags;
magnetic boards; note paper; notebooks; paper containers;
paper gift bags; paper party bags; pen or pencil holders;
photo albums; pictures; poster board; stationery;
temporary tattoos; writing instruments” in Class 16;8
Registration No. 4234053 for the mark JUSTICE
(standard characters) for “jewelry” in Class 14;9
Registration No. 3815420 for the mark JOYFUL
JUSTICE (standard characters) for “bean bag dolls; dolls;
plush dolls; soft sculpture dolls; soft sculpture plush toys”
in Class 28; and
Registration No. 4562166 for the mark JUSTICE &
BROTHERS (standard characters, “& BROTHERS”
disclaimed) for “Retail store services featuring clothing,
personal care products, paper goods, electronics, writing

5 Registered October 11, 2005; Section 8 and 15 combined declaration accepted and
acknowledged.
6 Registered November 6, 2012.
7 Registered February 6, 2007; Section 8 and 15 combined declaration accepted and
acknowledged.
8 Registered November 27, 2012.
9 Registered October 30, 2012.
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instruments, home furnishings, jewelry, watches, bags,
sporting goods, toys and candy” in Class 35.10
Petitioner also alleges that: (1) since years prior to the July 18, 2011 filing
date of Respondent’s trademark application Petitioner, its predecessors, and their
affiliated and related entities, licensees and/or sponsors “have used marks that
consist, in whole or in part, of the term JUSTICE (“JUSTICE Marks”) in U.S.
commerce on perfume and closely related goods and services (Pet. to Can. ¶ 2),11
“have used JUSTICE Marks in U.S. commerce on an and in connection with various
other goods and services, including, without limitation, cosmetics and personal care
products; clothing; bags; jewelry; paper and writing-related products; dolls; and
retail store, mail order catalog, and on-line retail services” (Pet. to Can. ¶ 3),12 and
“have promoted and advertised the sale and distribution of various goods –
including, perfume in U.S. under JUSTIC Marks (Pet. to Can. ¶ 5);13 (2) that, upon
information and belief, Registrant did not use the Registered Mark for the goods
covered in the underlying application in United States commerce prior to its
trademark application filing date of July 18, 2011 (Pet. to Can. ¶ 8);14 and (3) that
the Registered mark is identical and/or highly similar to Petitioner’s JUSTICE

10 Registered July 8, 2014.
11 1 TTABVue 11. Citations to the record in this opinion are to the TTABVUE docket entry number and
the electronic page number where the document or testimony appears. Because the Board primarily uses
TTABVUE in reviewing evidence, the Board prefers that citations to material or testimony in the record
that has not been designated confidential include the TTABVUE docket entry number and the TTABVUE
page number. For material or testimony that has been designated confidential and which does not appear
on TTABVUE, the TTABVUE docket entry number where such material or testimony is located should
be included in any citation. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
12 Id. at 11-12.
13 Id. at 12.
14 Id.
Cancellation No. 92056767

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Marks and is likely, when used with Class 3 goods listed in the Registration, to
cause confusion, to cause mistake, and to deceive the trade and the public (Pet to
Can. ¶ 10).15
Respondent, in its answer, has denied the salient allegations in the petition
to cancel.16
Preliminary Issue – Evidentiary Objection
As a preliminary matter, Petitioner has objected to Exhibit 3 of Respondent’s
Notice of Reliance “to the extent Respondent purports that it makes any of Tween’s
registrations or applications themselves of record.” As correctly noted by Petitioner,
A TESS printout of search results is insufficient to make the registrations or
applications listed thereon of record since it is merely a list and does not include the
contents of the records themselves. Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546,
1550 (TTAB 2012). Accordingly, Petitioner’s objection is sustained and we do not

15 Id. at 13.
16 Respondent also alleged several “affirmative defenses,” including laches and unclean
hands and, although not true affirmative defenses, assertions of fraud and failure to state a
claim upon which relief can be granted. Because opposer did not offer any evidence in
support of the affirmative defenses during its testimony period, and did not file a brief, to
the extent that any of these claims are properly pleaded affirmative defenses, we consider
them to have been waived.
Also, Respondent asserts that it is “at least entitled to registration with a restriction
that Registrant is not using its JUSTICE mark in association of the goods Petitioner
claims.” Not only did Respondent fail to pursue this contention in any way, Petitioner seeks
to cancel all of the goods identified in the involved registration. We further note that all of
Respondent’s identified goods are classified in International Class 3 and that Petitioner has
asserted common law ownership of the JUSTICE mark for, in part, identical goods. In the
context of likelihood of confusion, it is sufficient if likelihood of confusion is found with
respect to use of the mark on any item that comes within the identification of goods in each
class in an application or registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90
USPQ2d 1393, 1398 (TTAB 2007).

Cancellation No. 92056767

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consider the listed registrations and applications to be of record. Moreover, we point
out that it is of no probative value for what Registrant is attempting to show
because it fails to include the goods or services in the listings.
Record
By operation of Trademark Rule 2.122, 37 CFR §2.122, the record includes
the pleadings and the file of the subject registration. The record also includes the
following testimony and evidence:
Petitioner’s Evidence
1. Printouts of Registration Nos. 796455, 2990417,
3006487, 4237687, 3206319, 3523414, 4249562, 3395626,
3399647, 3413783, 4234053, 3406399 and 3815420, taken
from the Trademark Status and Document and Retrieval
(TSDR) database and attached to the Petition for
Cancellation as Exhibits 2-14;
2. The deposition, with Exhibits 1-6117 (some of which are
confidential), of Georgia Fox, Petitioner’s Vice President
and Specialty Merchandise Manager; and

17 Exhibit No. 24, which is described as a “CD of Spreadsheets,” was never filed with the
Board. Only a photograph of the CD was submitted with Petitioner’s ESTTA submission.
We point out in any event that submission by CD rom of that type of materials is not
acceptable. At one time evidence could be made of record in this manner pursuant to
Trademark Rule 2.126(b). However, by amendment effective August 31, 2007 and
applicable to all cases pending or commenced on or after that date, Trademark Rule
2.126(b) no longer accords parties the option of making submissions to the Board in CD-
ROM form. See e.g., Swiss Watch International Inc. v. Federation of the Swiss Watch
Industry, 101 USPQ2d 1731, 1734 n.5 (TTAB 2012) (petitioner submitted CD-ROM versions
of the testimony depositions, as well as the printed versions, and was advised that it was
not necessary to submit the CD-ROMs and that the rules no longer provided that testimony
can be submitted in this manner). Exhibits consisting of videotapes or audiotapes of
commercials, demonstrations, etc., may be transferred to an appropriate electronic format
for submission to the Board. See generally TBMP §106.03 (2014).
Nonetheless, Ms. Fox’s testimony regarding certain of the sales figures that were the
subject of the CD is definite and unambiguous and therefore has probative value.

Cancellation No. 92056767

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3. A Notice of Reliance on Respondent’s Answers to
Petitioner’s First Request for Admissions Nos. 66-96.
Respondent’s Evidence
A notice of reliance on:
i) A printout from the Trademark Electronic Search
System (TESS) of cancelled Registration No. 2768806,
registered to Brandon Shaw, for the mark JUSTICE for
“tanning cream/lotion that moisturizes the skin and
accelerates tanning” [Ex. 1];18
ii) A copy of a TESS printout of application Serial No.
85582157 [owned by Petitioner] showing a filing date of
March 28, 2012 [Ex. 2]; and
iii) A copy of a Notice of Allowance for Serial No.
85373401 [now involved registration No. 4180720] dated
February 7, 2012 [Ex. 4].
Only Petitioner filed a brief on this case and, in that regard, we note that the
filing of a brief is optional for a party in the position of defendant. See 37 C.F.R.
§ 2.128(a)(1).
Findings of Fact
In support of its claim of priority, Petitioner took the testimony of Georgia
Fox, its Vice President and Specialty Merchandise Manager. Ms. Fox testified that
JUSTICE-branded products have been sold not only at over 900 JUSTICE retail
stores in the U.S. and the JUSTICE website but also through catalogs that have
reached approximately 4 million “tween (age 7 to 14)”19 girls.20 From 2006 to the

18 We note that Registration No. 2768806 has been cancelled pursuant to Section 8 of the Trademark Act.
Accordingly, it is only evidence that the registration once existed.
19 We take judicial notice of the definition of “tween” from The American Heritage
Dictionary of the English Language (5th ed. 2014), accessed at
www.ahdictionary.com/word/search.html?q=tween, which defines “tween” as “[a] child
Cancellation No. 92056767

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present, “tens of millions of dollars” have been spent annually on marketing costs
and catalogs.21 JUSTICE-branded “girl care” products,22e.g., lip gloss, body tattoos,
eye shadows, nail items, lotions, fragrance misters and shower gels, were put on the
market in 2005.23 Early in 2009, the signature JUSTICE fragrance was launched.
Since then, at least tens of thousands of units have been sold.24 From 2005 to the
present, “there have been no plans by Petitioner to discontinue the use of JUSTICE
on perfume or cosmetics.”25
Discussion
Standing
Petitioner has demonstrated through the USPTO database printouts made of
record with its petition to cancel that it is the owner of its pleaded registrations and

between middle childhood and adolescence, usually between 8 and 12 years old.” The Board
may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. 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).
20 Fox depo., pp. 16-17 and 40, 12 TTABVue 18-19, 42.
21 Fox depo., p. 25, Ex. 26. 12 TTABVue 27. Exhibit 23 is confidential and not accessible by the public
via TTABVue.
22 Ms. Fox specifically stated:
Q. And could you tell us what you mean when you say “girl
care”?
A. Girl care for us would be anything like lip - - lip, anti-bac,
anything cosmetic, toiletries, perfume, fragrance, spa, anything that
-- in that world.
23 Fox depo., pp. 9-10, Ex. 1, 12 TTABVue 11-12. . Exhibit 1 is confidential and not accessible by the
public via TTABVue.
24 Fox. depo, pp. 37-37, 40-46, 12 TTABVue 39-41, 42-48.
25 Fox depo., p. 46, 12 TTABVUE 48.
Cancellation No. 92056767

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that those registrations, except as noted previously at footnote 2, are valid and
subsisting. Because Petitioners’ registrations are properly of record, Petitioner has
established its standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). In addition, as noted above through
the deposition of Georgia Fox, Petitioner has proven that it is the source of various
personal care products, namely, cosmetics, colognes and perfumes, with which it has
used its JUSTICE trademark.
Priority
We note that although Petitioner has asserted and proven ownership of nine
registrations for JUSTICE (or JUSTICE-formative) marks for use on or in
connection with various goods and services primarily in the clothing and retail
clothing services areas, Petitioner has limited its arguments in support of its claim
of priority and likelihood of confusion to its common law use of the mark JUSTICE
on or in connection with personal care products, namely cosmetics, perfumes and
perfume-related products. We shall do the same.
To establish priority on a likelihood of confusion claim brought under
Trademark Act § 2(d), a party must prove that, vis-à-vis the other party, that it
owns "a mark or trade name previously used in the United States ... and not
abandoned...." Trademark Act Section 2, 15 U.S.C. § 1052. A party may establish its
own prior proprietary rights in a mark through ownership of a prior registration,
actual use or through use analogous to trademark use. See Trademark Act §§ 2(d)
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and 45, 15 U.S.C. Section 1052(d) and 1127; T.A.B. Systems v. PacTel Teletrac, 77
F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996), vacating Pactel Teletrac v. T.A.B.
Systems, 32 USPQ2d 1668 (TTAB 1994).
Petitioner is relying on its common law rights in the JUSTICE mark for
personal care products, including, perfumes and cosmetics. Accordingly, to prevail
on its claim of likelihood of confusion, Petitioner must show that its mark is
distinctive, inherently or otherwise, and that it has priority. See Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). Respondent has
not questioned the distinctiveness of JUSTICE and, in fact, the involved
registration, in part, is for an identical mark for identical goods.
As regards priority, the record is clear that Petitioner first used its JUSTICE
mark in 2005 (because no specific date was established, the date is construed as
December 31, 2005). With regard to Respondent’s priority, it is well established that
a registrant may rely on the filing date of its application that matured into the
subject registration or, if it submits appropriate testimony or evidence of an earlier
first use date, on such earlier date. See Trademark Act § 2(d), 7(c) and 45, 15 U.S.C.
§§ 1052(d), 1057(c) and 1127; T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37
USPQ2d 1879 (Fed. Cir. 1996); Intersat Corp. v. International Telecommunications
Satellite Organization, 226 USPQ 154 (TTAB 1985). Inasmuch as Respondent did
not submit evidence of use of its mark earlier than the filing date of its intent-to-use
application, Respondent’s first use date for purposes of priority is the filing date of
its application Serial No. 85373401 which matured into involved registration No.
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4180720 i.e., July 18, 2011,26 which is subsequent to Petitioner’s established first
use date of December 31, 2005. Accordingly, priority rests with Petitioner.
Likelihood of Confusion
We now consider whether the parties’ respective marks are confusingly
similar and note that the parties are using identical marks (JUSTICE) to identify,
in part, identical goods (cosmetics and perfume).27 As such, there is no question that
a likelihood of confusion exists between the parties’ marks. Nor is there any
evidence of record that any of the du Pont factors support a finding of no likelihood
of confusion under these circumstances.
Conclusion
In conclusion, for the reasons discussed above, Petitioner has established
both priority and likelihood of confusion.
Decision: The petition to cancel is granted, and Registration No. 4180720 will
be cancelled in due course.

26 This date is confirmed by Respondent’s responses to Petitioner’s Requests for Admissions
Nos. 66-99. Petitioner’s Notice of Reliance filed February 13, 2014, 10 TTABVue 6-17.
27 Inasmuch as all of the recited goods are in Class 3, it is unnecessary to rule with regard
to the other items identified in Respondent’s registration. Tuxedo Monopoly v. General
Mills, 209 USPQ AT 988.