Urban Outfitters, Inc. and Urban Outfitters Wholesale, Inc.v.Urban Originals Pty Ltd

Trademark Trial and Appeal Board

Feb 22, 2018

No. 91228029 (T.T.A.B. Feb. 22, 2018)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: February 22, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Urban Outfitters, Inc. and Urban Outfitters Wholesale, Inc.
v.
Urban Originals Pty Ltd
_______
Opposition No. 91228029
to Application Serial No. 86806712
_______
Robert Cannuscio and Mita K. Lakhia of Drinker Biddle & Reath LLP for Urban
Outfitters, Inc. and Urban Outfitters Wholesale, Inc.
Ben T. Lila of Mandour & Associates, APC for Urban Originals Pty Ltd.
_______
Before Shaw, Goodman, and Coggins, Administrative Trademark Judges.
Opinion by Shaw, Administrative Trademark Judge:
Applicant, Urban Originals Pty Ltd, seeks registration of the mark

for goods identified as:
All-purpose carrying bags; Beach bags; Belt bags; Clutch
purses; Coin purses; Cosmetic bags sold empty; Daypacks;
Opposition No. 91228029
2
Duffle bags; Garment bags for travel; Handbags, in
International Class 18; and
Belts; Bottoms; Gloves; Hats; Jackets; Overalls; Pants;
Scarves; Shirts; Shoes; Shorts; Skirts; Socks; Sweaters;
Sweatpants; Sweatshirts; Swimsuits; Tops; Underwear, in
International Class 25.1
Opposers, Urban Outfitters, Inc. and Urban Outfitters Wholesale, Inc., have
opposed registration of Applicant’s mark on the grounds of likelihood of confusion
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), and dilution.2 Opposers
pleaded ownership of the following relevant marks:
1. URBAN OUTFITTERS, in typed form, for “Retail department store
services”;3
2. URBN.COM, in typed form, for, inter alia, “On-line retail store services
featuring men’s, women’s and children’s clothing and accessories,
housewares, furnishings, novelty items and general consumer goods”;4

1 Application Serial No. 86806712, filed on November 2, 2015 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming a date of first use and a date of first use in
commerce of July 10, 2015. The description of the mark states “The mark consists of the
lowercase letters ‘UO’ appearing in a scripted font appearing in the middle of a circle.”
2 Insofar as Opposers have not argued the pleaded dilution claim in their brief, we find that
claim to have been waived. See, e.g., Alcatraz Media Inc. v. Chesapeake Marine Tours Inc.,
107 USPQ2d 1750, 1753 (TTAB 2013).
3 Registration No. 1323901, issued March 5, 1985, Section 8 and 15 affidavits filed and
accepted, renewed, “Outfitters” disclaimed.
4 Registration No. 2518432, issued December 11, 2001, Section 8 and 15 affidavits filed and
accepted, renewed.
Opposition No. 91228029
3
3. URBAN ON, in standard characters, for “Customer loyalty services and
customer club services, for commercial, promotional and/or advertising
purposes”;5
4. URBAN OUTFITTERS TELEVISION, in standard characters, for, inter
alia, “Entertainment services, namely, providing a website featuring non-
downloadable audio clips, video clips, musical performances, musical
videos, film clips, photographs, other multimedia materials in the nature of
audio files and video files, and videos in the field of music, clothing and
fashion; providing a website featuring non-downloadable online videos of
music performances and non-downloadable online videos in the field of
clothing, music, fashion; educational and entertainment services, namely,
production and distribution of videos in the field of music, clothing and
fashion; entertainment services, namely, providing a website featuring non-
downloadable videos in the nature of mini-documentaries, animations, how
to videos and short narrative web shows in the field of music, clothing and
fashion”;6
5. UOTV, in standard characters, for, inter alia, “Entertainment services,
namely, providing a website featuring non-downloadable audio clips, video
clips, musical performances, musical videos, film clips, photographs, other
multimedia materials in the nature of audio files and video files, and videos

5 Registration No. 4553396, issued June 17, 2014.
6 Registration No. 5154225 issued March 7, 2017. “TELEVISION” disclaimed.
Opposition No. 91228029
4
in the field of music, clothing and fashion; providing a website featuring
non-downloadable online videos of music performances and non-
downloadable online videos in the field of clothing, music, fashion;
educational and entertainment services, namely, production and
distribution of videos in the field of music, clothing and fashion;
entertainment services, namely, providing a website featuring non-
downloadable videos in the nature of mini-documentaries, animations, how
to videos and short narrative web shows in the field of music, clothing and
fashion”;7
6. URBN, in standard characters, for, inter alia, “Retail department store
services and on-line retail store services, featuring men’s, women’s and
children’s clothing and accessories, housewares, furnishings, novelty items
and general consumer merchandise”;8 and
7. URBN, in styled form for, inter alia, “Retail department store services and
on-line retail store services, featuring men’s, women’s and children’s
clothing and accessories, housewares, furnishings, novelty items and
general consumer merchandise.”9
Opposers also claim common law use of UO as a trademark since as early as 1994
in connection with Opposers’ retail store services.10 Applicant denied the salient
allegations of the notice of opposition.

7 Registration No. 5154226 issued March 7, 2017.
8 Registration No. 4971625 issued June 7, 2016.
9 Registration No. 4971624 issued June 7, 2016.
10 Opposers’ Br., p. 4, 9 TTABVUE 9.
Opposition No. 91228029
5
The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved application. Opposers submitted the
following evidence:
1. The testimonial declaration of Francis J. Conforti, Chief Financial Officer of
Opposers, with exhibits.
2. The testimonial declaration of Cris Buchenauer, Executive Director of Creative
Ops for Opposers, with exhibits.
Applicant submitted the testimonial declaration of Andrew Cates, Chief Executive
Officer of Applicant, with exhibits, including copies of registrations for the following
two marks:11
1. Registration No. 3079862 for the mark for “All purpose
carrying bags, athletic bags, beach bags, belt bags, duffle bags, evening
handbags, flexible bags for garments, bumbags, carrying cases, carry all
bags, carrying cases, carry on bags, clutch bags, clutch purses, coin purses,
cosmetic bags sold empty, daypacks,” in International Class 18;12 and
2. Registration No. 4885380 for the mark URBAN ORIGINALS, in standard
characters, for “All-purpose carrying bags; Athletic bags; Beach bags; Belt

11 Registration No. 3850142 for the mark UO URBAN ORIGINALS in stylized form also was
made of record but was cancelled on April 28, 2017 under Section 71 of the Trademark mark
Act, 15 U.S.C. § 1141j.
12 Issued April 11, 2006, Section 71 declaration and Section 15 affidavit filed and
acknowledged, renewed.
Opposition No. 91228029
6
bags; Bumbags; Carry-all bags; Carry-on bags; Carrying cases; Clutch bags;
Clutch purses; Coin purses; Cosmetic bags sold empty; Daypacks; Duffle
bags; Evening handbags; Garment bags for travel; Handbags,” in
International Class 18 and “Belts; Bottoms; Gloves; Hats; Jackets; Jerseys;
Overalls; Pants; Scarves; Shirts; Shoes; Shorts; Skirts; Socks; Sweaters;
Sweatpants; Sweatshirts; Swim suits; Tops; Underwear,” in International
Class 25.13
Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). Our primary
reviewing court, the U.S. Court of Appeals for the Federal Circuit, has enunciated a
liberal threshold for determining standing, namely that a plaintiff must demonstrate
that it possesses a “real interest” in a proceeding beyond that of a mere intermeddler,
and “a reasonable basis for his belief of damage.” Empresa Cubana Del Tabaco at
1062 (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir.
1999)). A “real interest” is a “direct and personal stake” in the outcome of the
proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026.
In this case, Opposers made of record by notice of reliance copies of their pleaded
URBAN OUTFITTERS, URBAN and UO-formative registrations showing their
current status and title to Opposers. In addition, as discussed infra, Opposers have

13 Issued January 12, 2016.
Opposition No. 91228029
7
established common law rights in their UO mark in connection with retail store
services featuring clothing and accessories. In view thereof, Opposers have
established their standing.
Priority
“In an opposition founded on section 2(d), the opposer must establish its own prior
proprietary rights in the same or a confusingly similar designation in order to defeat
the application.” T.A.B. Sys. v. Pactel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1881
(Fed. Cir. 1996). Section 2(d) challenges may be based either on ownership of a
registered mark or prior use of an identical or similar mark. Wonderbread 5 v. Gilles,
115 USPQ2d 1296, 1302 n.8 (TTAB 2015); see also Herbko Int’l., Inc. v. Kappa Books,
Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002), cited in Hunter Indus.,
Inc. v. Toro Co., 110 USPQ2d 1651, 1658 (TTAB 2014).
1. Opposers’ priority
Priority is not in issue with respect to the marks and the services set out in
Opposers’ pleaded registrations vis-à-vis Applicant’s mark and its identified goods.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Opposers also rely on common law use of their UO mark in connection with retail
store services featuring clothing and accessories. Thus, to establish priority for this
mark in connection with the services, Opposers must prove by a preponderance of the
evidence that their common law rights were acquired before any date upon which
Opposition No. 91228029
8
Applicant may rely. Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825,
1834 (TTAB 2013) (citing Hydro-Dynamics Inc. v. George Putnam & Co. Inc., 811 F.2d
1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987) (The “decision as to priority is made in
accordance with the preponderance of the evidence”)).
Opposers state that they have “been using the term ‘UO’ as a company trademark
for many years” and that the use “started as an abbreviation of the company name
‘Urban Outfitters’, and eventually Opposers began to use it as a trademark associated
with its company and products.”14 In support, Opposers made of record a number of
examples of their use of the abbreviation “UO,” used in connection with online media
to advertise their retail store services featuring clothing and accessories, as well as
on software apps offering goods for sale.15 The following are the most relevant
examples:
• A Facebook page showing use of “UO” since 2008 in connection with
promoting Opposers’ Urban Outfitters stores:

14 Conforti Test., p. 3, 5 TTABVUE 7.
15 Opposers introduced a copy of expired Registration No. 2174296 for a design mark
including the letter “O” and “U” used in connection with retail store services. Conforti Test.,
exh. 2, 5 TTABVUE 91-93. An expired registration is generally evidence only of the fact that
that registration issued. See In re Brown-Forman Corp., 81 USPQ2d 1284, 1286 n.3 (TTAB
2006). The registration has no evidentiary value, particularly since there is no evidence that
Opposers used the mark after the expiration of the registration on April 25, 2009.
Opposition No. 91228029
9
16
• iPhone and Android apps allowing consumers to view and purchase goods
sold in Opposers’ Urban Outfitters stores. The apps were first made
available in March 2013 and use the abbreviation “UO,” both on the App
Store download screen and as the on-screen icon for the app:
17

16 Buchenauer Test., pp. 3 and 13, exhs. 2 and 14, 6 TTABVUE 7, 13, 34-42, and 89-101.
17 Conforti Test., pp. 4-5, exh. 4, 5 TTABVUE 8-9 and 96-102.
Opposition No. 91228029
10
• Use of the abbreviation “UO” since June 28, 2011 on Instagram, a popular
photo-sharing app for smartphones, to promote Opposers’ Urban Outfitters
retail store services:
18

18 Id. at 6, exh. 6, 5 TTABVUE 10 and 106-13.
Opposition No. 91228029
11
• A blog, available since 2007 at http://blog.urbanoutfitters.com/blog, which
uses the heading “UO BLOG” and “UO” and which provides information
about Opposers’ Urban Outfitters stores and the products sold in them:
19
Opposers also have promoted their retail store services featuring clothing and
accessories by using the abbreviation “UO” on other social media, including Twitter
since June 23, 2014,20 Pinterest since 2012,21 and Snapchat since December 2013.22

19 Id. at 6, exh. 7, 5 TTABVUE 10 and 112-14.
20 Buchenauer Test., p. 10, exh. 15, 6 TTABVUE 14 and 102-17.
21 Id. at 11, exh. 17, 6 TTABVUE 15 and 122-23.
22 Id. at 11, exh. 18, 6 TTABVUE 15 and 124-43.
Opposition No. 91228029
12
Lastly, Opposers have used the abbreviation “UO” on storefronts since at least as
early as September 26, 2007:
23
This testimony and evidence establishes that Opposers have used the
abbreviation “UO” as a trademark used in connection their retail store services

23 Id. at 8, exh. 12, 6 TTABVUE 12 and 78-79.
Opposition No. 91228029
13
featuring clothing and accessories since as least as early as 2007, and continue to do
so.
2. Applicant’s priority
Based on its ownership of Registration No. 3079862 for the mark
Applicant argues that “Opposers’ burden is to demonstrate, by a preponderance of
the evidence, that Opposers have proprietary rights in their alleged common law
usage of the UO mark, for use with related goods prior to July 26, 2004, the filing
date of Applicant’s Registration No. 3,079,862.”24 We disagree.
Applicant is seeking to “tack” the earlier, constructive use date of its registration
of a different mark incorporating the letters “UO” to the applied-for mark so as to
establish priority over Opposers. But “‘tacking’ is a defense that must be pleaded as
an affirmative defense to put opposer on notice of new matter that applicant is placing
at issue (i.e., a mark previously used by applicant that is the legal equivalent of
applicant’s opposed mark, and that provides the basis for applicant to claim prior
use).” The H.D. Lee Co., Inc. v. Maidenform, Inc., 87 USPQ2d 1715, 1720 (TTAB
2008); Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d
1271 (TTAB 2009). Here, Applicant did not plead as an affirmative defense that it
would rely on its use of the mark UO URBAN ORIGINALS to prove its earlier use of
the applied-for mark. Although denial by Applicant of Opposers’ allegation of priority

24 Applicant’s Br., p. 10, 10 TTABVUE 14.
Opposition No. 91228029
14
of use is sufficient to put Opposers on notice that they must prove their pleaded
priority, it is insufficient to put Opposers on notice that Applicant will attempt to
prove earlier use through tacking. Id. Moreover, Applicant does not argue that the
issue was tried by consent of the parties and we do not find that it has been.
Even assuming, arguendo that Applicant had properly pleaded that it would rely
on its use of the UO URBAN ORIGINALS mark to prove its earlier use of the applied-
for mark, Applicant may not rely on the registered mark because it differs
significantly from the applied-for mark. Tacking is permitted if the later-used mark
(here, UO and design) is the “legal equivalent” of the prior-used mark sought to be
tacked. That is, the earlier and later marks must be indistinguishable, creating the
same, continuing commercial impression, such that the consumer would consider
both marks to be the same mark. See Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926
F.2d 1156, 17 USPQ2d 1866 (Fed. Cir. 1991); Anthony’s Pizza & Pasta, 95 USPQ2d
at 1276. The test for legal equivalence is very strict, much stricter than the test for
confusing similarity. Tacking is permitted only in “rare instances.” Id. at 1868.
Because Applicant’s marks are significantly different Applicant may not claim the
benefit of its earlier use of the UO URBAN ORIGINALS mark to establish priority.
We must look to other evidence of record to determine Applicant’s earliest date of use.
Applicant submitted the declaration of its Chief Executive Officer, Andrew Cates,
with exhibits purporting to show Applicant’s use of its marks. None of the exhibits,
however, establish first use of the applied-for mark before the filing date of the
application, namely, November 2, 2015. For example, various retailer invoices and
Opposition No. 91228029
15
other documents are all dated after the filing date of the application.25 Applicant’s
“Brand Guidelines” and “Labelling & Packaging Guide” do not show use of the mark
in the sale or advertising of the goods inasmuch as they are merely internal corporate
style documents.26 Accordingly, Applicant has not established its claimed date of first
use of the mark as of July 10, 2015. Trademark Rule 2.122(b)(2) (“The allegation in
an application for registration, or in a registration, of a date of use is not evidence on
behalf of the applicant or registrant; a date of use of a mark must be established by
competent evidence.”).
For purposes of priority, Applicant must therefore rely on the filing date of the
application, November 2, 2015, which is its constructive use date, as its earliest date
of use of the applied-for mark. Levi Strauss & Co. v. R. Josephs Sportswear, 28
USPQ2d 1464, 1467 (TTAB 1993) (“[I]n the absence of proof of use, the filing date of
the application, rather than the dates of use alleged in the application, is treated as
the earliest use date on which the applicant may rely.”).
Based on the foregoing, Opposers have established priority in their UO mark in
connection with retail store services featuring clothing and accessories.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re

25 Cates Test., Exhs. 7-11, 7 TTABVUE 214-26.
26 Id., Exhs. 13-14, 7 TTABVUE 237-706.
Opposition No. 91228029
16
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the services and the similarities between the marks. 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 [or services] and differences in the marks.”).
Inasmuch as Opposers have established prior common law use of the UO mark in
connection with retail store services featuring clothing and accessories, we focus our
analysis on the UO mark because it is most similar to Applicant’s mark. If we do not
find a likelihood of confusion with this mark as it is used in connection with Opposers’
retail store services, then there would be no likelihood of confusion with the marks in
the pleaded registrations. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245
(TTAB 2010).
1. Strength of Opposers’ Mark
We begin with the du Pont factor regarding the strength of Opposers’ UO mark.
Opposers argue that due to their “longstanding use of the marks and considerable
investment therein, and substantial sales as a result of these efforts, the marks and
the association of the term “UO” with Urban Outfitters and its products and services
have become well-known to consumers and potential customers.”27 In support of its
position, Opposers primarily point to sales under the UO and Urban Outfitters marks

27 Opposers’ Br., p. 6, 9 TTABVUE 11.
Opposition No. 91228029
17
of over one billion dollars in 2015.28 Opposers’ sales and are quite substantial,
however, we note that Opposers have not distinguished between use of the UO mark
and the URBAN OUTFITTERS marks. Nor have Opposers placed its sales figure in
a context that would prove strength. On this limited record we cannot find that the
UO mark is particularly stronger than any other abbreviation mark. See Bose Corp.
v. QSC Audio Prods., 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). This du Pont factor is
neutral.
2. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression
We next consider the marks, comparing them for similarities and dissimilarities
in appearance, sound, connotation and commercial impression. See Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). Similarity in any one of these elements is sufficient to support a
determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 390
F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either
form, spelling or sound alone is likely to cause confusion.”).
Both marks consist of the letters “UO.” Opposers have used their UO mark in both
typed form and with background shapes such as circles and squares, as discussed
supra. Thus, the primary difference between the marks is that Applicant’s UO mark
is in a stylized script whereas Opposers’ mark is used in block letters. This difference
is not sufficient to distinguish the marks inasmuch as both marks are otherwise

28 Id.
Opposition No. 91228029
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similar in appearance, would be pronounced the same, and create identical
connotations and commercial impressions.
Accordingly, the du Pont factor regarding the similarity of the marks weighs in
favor of finding a likelihood of confusion.
3. The similarity or dissimilarity of the goods and services, trade channels and
classes of consumers
We next consider the similarity of Applicant’s goods and Opposers’ services,
keeping in mind that the goods and services of the parties need not be identical or
even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am.
Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); TMEP
§1207.01(a)(i). The respective goods and services need only be “related in some
manner and/or if the circumstances surrounding their marketing [be] 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, 1369, 101 USPQ2d 1713,
1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007)).
To recap, Applicant’s identified goods are:
All-purpose carrying bags; Beach bags; Belt bags; Clutch
purses; Coin purses; Cosmetic bags sold empty; Daypacks;
Duffle bags; Garment bags for travel; Handbags, in
International Class 18; and
Belts; Bottoms; Gloves; Hats; Jackets; Overalls; Pants;
Scarves; Shirts; Shoes; Shorts; Skirts; Socks; Sweaters;
Sweatpants; Sweatshirts; Swimsuits; Tops; Underwear, in
Opposition No. 91228029
19
International Class 25.29
Opposers use their UO mark in connection with retail store services featuring
clothing and accessories. The record shows that Opposers sell a wide variety of
products including women’s clothing as well as purses and bags similar to Applicant’s
goods.30 Indeed, the record shows that Opposers sold Applicant’s goods, including
bags, in their stores between 2013 and 2016.31
Applicant argues that Opposers’ “services are still completely distinct from
Applicant’s goods, one providing a place to offer and sell goods, and one providing the
actual goods.” This argument is unpersuasive. It is well recognized that confusion
may be likely to occur from the use of the same or similar marks for goods, on the one
hand, and for the services of selling those goods, on the other. See, e.g., In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGGS for retail
grocery and general merchandise store services likely to be confused with BIGGS for
furniture); In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (“It is clear that
consumers would be likely to believe that jewelry on the one hand and retail stores
selling jewelry on the other emanate from or are sponsored by the same source if such
goods and services are sold under the same or similar marks.”); see also 4 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition § 24:25 (4th ed. March
2017) (“Where the services consist of retail sales services, likelihood of confusion is

29 Application Serial No. 86806712, filed on November 2, 2015 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming a date of first use and a date of first use in
commerce of July 10, 2015.
30 Conforti Test., p. 2, 5 TTABVUE 6; Buchenauer Test., p. 2, 6 TTABVUE 6.
31 Conforti Test., pp. 7-8, exh. 11, 5 TTABVUE 11-12 and 65-77.
Opposition No. 91228029
20
found when another mark is used on goods which are commonly sold through such a
retail outlet.”). Thus, Applicant’s goods are related to Opposers’ retail store services
for purposes of likelihood of confusion.
Regarding classes of consumers and channels of trade, the record establishes that
Applicant’s goods have been sold, in part, in stores such as Opposers’ and are thus
directed to similar consumers via similar channels of trade.
For the foregoing reasons, we find that the du Pont factors of the similarity of the
goods and services, channels of trade and classes of consumers weigh in favor of a
finding of likelihood of confusion.
4. Balancing the factors
After considering all of the applicable du Pont factors, including any factors not
discussed herein, we find that Applicant’s mark for goods identified as “All-
purpose carrying bags; Beach bags; Belt bags; Clutch purses; Coin purses; Cosmetic
bags sold empty; Daypacks; Duffle bags; Garment bags for travel; Handbags” and
“Belts; Bottoms; Gloves; Hats; Jackets; Overalls; Pants; Scarves; Shirts; Shoes;
Shorts; Skirts; Socks; Sweaters; Sweatpants; Sweatshirts; Swimsuits; Tops;
Underwear” is likely to cause confusion with Opposers’ UO mark for retail store
services featuring clothing and accessories.
Decision: The opposition is sustained and registration of the mark is refused.