Unique Brands SC

Trademark Trial and Appeal Board

Jan 23, 2019

EX (T.T.A.B. Jan. 23, 2019)

Hearing: December 6, 2018 Mailed: January 23, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Unique Brands SC
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Serial No. 87482343
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Rebeccah Gan, Wenderoth LLP,
for Unique Brands SC.
Brendan McCauley, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
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Before Zervas, Shaw, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Unique Brands SC seeks to register on the Principal Register the mark
STEVE’S, in standard characters, for “shoes” in International Class 25.1 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 so
resembles the mark STEVE’S JEANS, in standard characters and with “JEANS”

1 Application Serial No. 87482343 was filed June 9, 2017, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention to use the
mark in commerce.
This Opinion Is Not a
Precedent of the TTAB
Serial No. 87482343
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disclaimed, registered on the Principal Register for the following goods in
International Class 25:
pants, jeans, jumpsuits, shorts, shirts, sweaters, vests,
jackets, overalls, swimsuits, socks, underwear, t-shirts,
blouses, skirts, dresses, tights, hats, caps, scarves, gloves,
footwear, sweatshirts, sweatpants, coats
as to be likely to cause confusion, to cause mistake, or to deceive.2
After the Examining Attorney made the refusal final, Applicant appealed to this
Board and requested reconsideration. After reconsideration was denied, the appeal
resumed. It is now fully briefed, and an oral hearing was held on December 6, 2018.
We affirm the refusal to register.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the goods
and differences in the marks.”).

2 Registration No. 4970321, issued May 31, 2016.
Serial No. 87482343
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A. Similarity of the Goods, Customers, and Channels of Trade
We begin with the second and third du Pont likelihood of confusion factors, the
similarity of the goods and channels of trade. Applicant’s goods are “shoes,” and
Registrant’s goods include “footwear.” Applicant’s “shoes” are encompassed within
Registrant’s “footwear.” Thus, these goods are legally identical. Brown Shoe Co. v.
Robbins, 90 USPQ2d 1752, 1754 (TTAB 2009). There are no limitations as to channels
of trade or classes of purchasers, moreover, in either the application or cited
registration. Therefore, and because they are legally identical, we must presume that
Applicant’s “shoes” and Registrant’s “footwear” will be sold in the same channels of
trade and bought by the same classes of purchasers. See, e.g., In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Fat Boys Water Sports LLC,
118 USPQ2d 1511, 1518-19 (TTAB 2016).
Applicant argues that:
Applicant makes and sells artisanal Italian shoes.
Registrant, as one might expect, makes jeans and other
items of clothing. Registrant does not, however, make or
sell shoes. Accordingly, the parties’ goods are different.
Appeal Brief at 7, 69 TTABVUE 12. This is not persuasive. We must base our decision
on the identification of goods set forth in the application and cited registration. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1162 (Fed. Cir. 2014). Applicant’s argument also constitutes an impermissible
collateral attack on the validity of the cited registration. See In re Dixie Rests. Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re C.H. Hanson Co., 116
USPQ2d 1351, 1355 n.13 (TTAB 2015).
Serial No. 87482343
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The Examining Attorney, moreover, introduced evidence of third-party use of the
same mark for both shoes and jeans by Calvin Klein,3 Gap,4 Levi’s,5 and Lucky
Brand.6 He also submitted at least ten existing, use-based registrations owned by
other third parties identifying both jeans and shoes.7 This evidence of third-party use
and registration shows that jeans and shoes may emanate from a single source under
the same mark. See, e.g., In re I-Coat Co., 126 USPQ2d 1730, 1738 (TTAB 2018); C.H.
Hanson, 116 USPQ2d at 1355-56. The second and third du Pont factors weigh heavily
in favor of a finding that confusion is likely.
B. Similarity of the Marks
Next, we address the first du Pont factor, which focuses on “‘the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression.’” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d
1047, 1048 (Fed. Cir. 2018) (quoting du Pont, 177 USPQ at 567). “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) (quotation omitted).

3 May 10, 2018 Reconsideration Letter at TSDR 163-74, 187-98 (from macys.com).
4 Id. at 341-65, 384-86, 643-67 (from gap.com).
5 Id. at 715-21, 738-54, 913-16 (from levi.com).
6 Id. at TSDR 942-51, 955-82, 1064-69 (from luckybrand.com).
7 Id. at TSDR 24-49.
Serial No. 87482343
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The similarity of the marks is determined based on the marks in their entireties,
so our analysis is not predicated on dissecting the marks into their various
components. C.H. Hanson, 116 USPQ2d at 1353.
On the other hand, in 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. Indeed, this type of analysis
appears to be unavoidable.
In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Because some of the goods are legally identical, the degree of similarity between
the marks necessary to support a determination that confusion is likely declines.
Viterra, 101 USPQ2d at 1908; In re RiseSmart Inc., 104 USPQ2d 1931, 1935
(TTAB 2012).
Applicant’s mark is STEVE’S and the cited mark is STEVE’S JEANS, with
“JEANS” disclaimed. The lead element in a mark has a position of prominence; it is
likely to be noticed and remembered by consumers and so to play a dominant role in
the mark. See, e.g., Detroit Athletic, 128 USPQ2d at 1049 (“The identity of the marks’
initial two words is particularly significant because consumers typically notice those
words first.”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992) (stating that, “upon encountering each mark,
consumers must first notice th[e] identical lead word”). We find STEVE’S to be the
dominant part of Registrant’s mark.
While there is no rule that likelihood of confusion automatically applies where one
mark subsumes another, in this case, the fact that Applicant’s entire mark STEVE’S
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is identical to the dominant and only distinctive term in the cited mark STEVE’S
JEANS increases the similarity between the two. See, e.g., In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (affirming Board decision that ML
is likely to be perceived as a shortened version of ML MARK LEES, and stating that
“the presence of an additional term in the mark does not necessarily eliminate the
likelihood of confusion if some terms are identical”); Lilly Pulitzer, Inc. v. Lilli Ann
Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (affirming that THE LILLY is
likely to be confused with LILLI ANN); Hunter Indus., Inc. v. Toro Co., 110 USPQ2d
1651, 1660-61 (TTAB 2014) (finding applicant’s mark PRECISION similar to
opposer’s mark PRECISION DISTRIBUTION CONTROL); 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); see also China Healthways Inst. Inc. v.
Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (finding the common
word in CHI and CHI PLUS likely to cause confusion despite differences in the marks’
designs).
The added word “JEANS” in the cited mark distinguishes it somewhat from
Applicant’s mark. Nonetheless, because of the shared term, STEVE’S, the marks are
similar in appearance, sound, and meaning. Bearing in mind that less similarity is
necessary where the identified goods are legally identical, we find the marks
sufficiently similar in commercial impression that persons who encounter them
would be likely to assume a connection between Applicant and Registrant.
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C. Third-Party Registrations
Finally, we address the third-party registrations for STEVE-formative marks
submitted by Applicant with its Request for Reconsideration (4 TTABVUE 8-69).
Applicant argues that “consumers are likely to perceive the clear differences between
the parties’ marks, particularly given the vast third-party registrations for ‘STEVE’-
formative marks in, e.g., International Class 25.” Appeal Brief at 8, 69 TTABVUE 13.
The ten existing, use-based registrations are:8
Mark Registration No. Selected Goods / Services
STEVE MADDEN 2012115 Shoes, sandals and boots (Class 25)
4518492
Retail store services featuring
clothing, shoes, bags, eyewear,
perfumes and jewelry
(Class 35)

2788077 Clothing, namely, t-shirts,
shirts, and tops, shorts and
board shorts, swimwear,
jackets (Class 25)
STONE COLD STEVE
AUSTIN
3659657 Slippers, footwear, namely, shoes, socks, sneakers, boots
(Class 25)
STEVE DAHL 4346964 Footwear, namely, shoes, boots, athletic shoes (Class 25)
STEVE MCQUEEN 3948067 Footwear; athletic footwear; shoes (Class 25)
5248209 Leather for use in the manufacture of footwear; shoe
bags for travel (Class 18)
SCUBA STEVE 3950866 Sandals; shoes (Class 25)

8 An eleventh registration, No. 3762017 for STEVE IRWIN, was cancelled as to Class 25 and
remains active only as to the unrelated goods “plush animals” in International Class 28.
Serial No. 87482343
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Mark Registration No. Selected Goods / Services

4715188 Clothing, namely, shirts,
pants, hats, jackets, coats,
socks, undergarments,
neckties, shoes, belts and
suspenders (Class 25)

4726560 Clothing, namely, shirts,
pants, hats, jackets, coats,
socks, undergarments,
neckties, shoes, belts and
suspenders (Class 25)
In comparison with Applicant’s mark, STEVE’S, each of these third-party marks
contains at least one additional term that further distinguishes it from the cited
mark, STEVE’S JEANS. Seven include at least a surname (MADDEN, AUSTIN,
DAHL, MCQUEEN, HARVEY), while one is ambiguous ( ) and the
others comprise a word that is distinctive in association with shoes (LIVES, SCUBA).
Nor do we find this evidence sufficient to establish that STEVE- formatives are so
widespread for shoes and related goods and services that consumers have come to
distinguish marks containing them based on minute differences. See In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (stating
that evidence of third-party use “falls short of the ubiquitous or considerable use of
the mark components present in [applicant’s] cited cases”) (quotations omitted).
There is no evidence these marks are in actual use, or that consumers are aware of
them. Cf. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (discussing
Serial No. 87482343
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“voluminous evidence” of registration and use of paw print design elements);
Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75
(Fed. Cir. 2015) (referencing evidence of “a considerable number” of third-party uses
of marks).
II. Conclusion
We have considered all the evidence of record and Applicant’s arguments as they
pertain to the relevant du Pont likelihood of confusion factors. To the extent that any
other factors for which no evidence was presented by Applicant or the Examining
Attorney may nonetheless be applicable, we treat them as neutral.
We have found that the first three du Pont factors weigh in favor of a finding that
confusion is likely, with none weighing against. We conclude that Applicant’s mark
is likely to cause confusion with the mark in cited Registration No. 4970321 when
used in association with the goods identified in the application.
Decision: The refusal to register Applicant’s mark is affirmed.