Virola Int’l

Trademark Trial and Appeal Board

Apr 19, 2018

No. 86957516 (T.T.A.B. Apr. 19, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: April 19, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Virola Int’l
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Serial No. 86927215
Serial No. 86957516

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Vivian Ortiz Ponce, Esq.,
for Virola International.

Doritt Carroll, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
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Before Ritchie, Shaw and Pologeorgis,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Virola International (“Applicant”) seeks registration on the Principal Register of
the mark STRESSLESS,1 in standard character form, and for STRESSLESS and

1 Serial No. 86957516, filed on March 3, 2016, based upon Applicant’s allegation of a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1(b).
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design, as shown below, both for goods identified as “footwear,” in International Class
25:2

The Examining Attorney refused registration of Applicant’s marks under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a prior registration of the
mark STRESS LESS, and design, as shown below, for, as relevant, “clothing, namely,
t-shirts, sweaters, sports shirts, hats, jumpsuits, pants, and robes,” in International
Class 25:3

After the Examining Attorney made the refusals final, Applicant filed in each case
a request for reconsideration and an appeal. In each case, when the request for

2 Serial No. 86927215, filed on March 3, 2016, based upon Applicant’s allegation of a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1(b).
3 Registration No. 2299052, registered December 7, 1999, and disclaiming the exclusive right
to the term “STRESS” apart from the mark as shown. The registration identifies other goods
and services in other classes not subject to this refusal. Sections 8 and Section 15 accepted
and acknowledged. Renewed.
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reconsideration was denied, the appeal was resumed. Both Applicant and the
Examining Attorney filed briefs. The records in these two cases appear to be the same.
Since these cases have common questions of law and fact, we find it appropriate to
consider them together in a single opinion. See Trademark Trial and Appeal Board
Manual of Procedure (TBMP) § 1214 (June 2017).
For the reasons discussed herein, we affirm the refusal to register in each case.
I. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976); see also Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (“Not all of the [du Pont] factors are relevant
to every case, and only factors of significance to the particular mark need be
considered.”) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir 2010)).
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A. The Marks
We first compare the marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. The test is not
whether the marks can be distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of the goods offered under the
respective marks is likely to result. Coach Servs., Inc. v. Triumph Learning LLC, 101
USPQ2d at 1721. Under actual marketing conditions, consumers do not necessarily
have the luxury of making side-by-side comparisons between marks, and must rely
upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ
255, 259 (TTAB 1980). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. In re
Assoc. of the United States Army, 85 USPQ2d 1264 (TTAB 2007); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, the analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. Vv. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
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determining likelihood of confusion.”). On the other hand, different features may be
analyzed to determine whether the marks are similar. Joel Gott Wines LLC v.
Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013) (citing Price Candy Co.
v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955)). In fact,
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 a consideration of the marks in their entireties. In re Nat’l Data Corp., 224
USPQ at 751.
In this case, the mark in the cited registration contains the literal element
STRESS LESS, while Applicant’s marks are the standard character mark
STRESSLESS, and , which contains the literal element STRESSLESS.
In comparing Applicant’s standard character mark STRESSLESS to the mark
in the cited registration, we find that the marks would be pronounced
the same. See In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984) (noting that
there is no “correct” way to pronounce a trademark). Visually, Applicant’s mark
differs from the literal element in the mark in the cited registration by only a single
space. Applicant’s mark, as a standard character mark, could be displayed in a
similar manner to the mark in the cited registration. See Citigroup Inc. v. Capital
City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (“If the
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registrant ... obtains a standard character mark without claim to ‘any particular font
style, size or color,’ the registrant is entitled to depictions of the standard character
mark regardless of font, style, size, or color.”). The terms are similar in conveying the
connotation and commercial impression of stressless footwear/clothing or of
footwear/clothing that reduces stress. Thus, we find that the marks as a whole are
similar in sight, sound, connotation, and commercial impression.
In comparing Applicant’s mark to the mark in the cited registration, we
also find that the marks would be pronounced the same, and that the literal elements
differ by only a single space. While both marks contain designs, we note that in the
case of a mark consisting of words and a design, as is the case here, it is typically the
words by which consumers will call for or request products. In re Viterra Inc., 671 F3d
1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 200 (Fed. Cir. 1983)). In this regard, Applicant cites the case
Kelly-Brown v. Winfrey, 95 F. Supp. 350, 114 USPQ2d 1311, 1316 (SDNY 2015), aff’d,
Kelly-Brown v. Winfrey, 659 Fed. Appx. 55, 120 USPQ2d 1010 (2d Cir. 2016)
(nonprec.). In that case, the district court found that there was no trademark
infringement since the only shared portion was a merely descriptive slogan for which
plaintiff had not established secondary meaning.4 Here, by contrast, although
Registrant has disclaimed the term “STRESS,” there is no indication that the term
“STRESS LESS,” or STRESSLESS, is merely descriptive in relation to Registrant’s

4 The court also found “fair use.” Id. at 1320.
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International Class 25 goods. Applicant has also not introduced any evidence of third-
party use of the term or other evidence that the term “STRESS LESS” is conceptually
weak, and we do not find that it is. Rather, we find that the shared term STRESS
LESS (or STRESSLESS) is at worst suggestive of the identified clothing, but not
highly so, and the marks as a whole are similar in sight, sound, connotation, and
commercial impression.
For both of Applicant’s marks, we find that this du Pont factor favors finding a
likelihood of confusion.
B. The Goods, Trade Channels and Purchasers
We next consider the similarities or dissimilarities between the respective goods
as identified in the applications and the cited registration. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014) (goods as identified in involved application and cited registration compared);
Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990).
To show relatedness of Applicant’s footwear, as identified in each of the
applications, on the one hand, and Registrant’s various identified articles of clothing
on the other, the Examining Attorney submitted evidence of third-party websites that
advertise both goods for sale under the same mark. Examples include Nike.com
(footwear and pants); Adidas.com (footwear and pants); Katespade.com (footwear and
t-shirts); DCshoes.com (footwear and t-shirts); Keenfootwear.com (footwear and t-
shirts); Asos.com (footwear and pants); Reddress.com (footwear and t-shirts); and
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Premierboutique.com (footwear and t-shirts).5 We thus find that the goods are related
and complementary items of clothing. Applicant’s argument that the International
Class 25 goods are “ancillary” to Registrant’s other goods and services is inapposite,
since they are listed in Registrant’s registration. Similarly, we need not consider
Applicant’s arguments regarding the unrelatedness of Applicant’s goods to
Registrant’s other goods and services, since they are not at issue in these appeals.
Regarding channels of trade, the Examining Attorney has submitted evidence
that in addition to the websites listed above, other third parties offer for sale the
goods identified by Applicant and Registrant via the same channels of trade to the
same classes of consumers. Examples include Shiekshoes.com (footwear and pants);
Featuresneakerboutique.com (footwear and t-shirts); and UrbanOG.com (footwear
and t-shirts).6 We thus find that the goods are related and complementary, and are
likely to travel through the same channels of trade to the same classes of consumers.
The second and third du Pont factors also favor finding a likelihood of confusion.
II. Conclusion
After considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, we find that the marks as a whole are similar in sight,
sound, connotation, and commercial impression, and the goods are related and

5 Attached to June 16 Office Action, at 5-52; January 9, 2017 Final Office Action, at 2-72; and
July 20, 2017 Denial of Request for Reconsideration, at 6-53. While we note that the records
appear to be the same in both applications, all references in the decision are to the record in
Application Serial No. 86927215.
6 Attached to January 9, 2017 Final Office Action, at 20; and July 20, 2017 Denial of Request
for Reconsideration, at 2-48.
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complementary, and are likely to travel through the same channels of trade to some
of the same general consumers. Accordingly, we find a likelihood of confusion exists
between Applicant’s marks STRESSLESS and , both for “footwear,” and
the mark in the cited registration for, as relevant, “clothing, namely, t-
shirts, sweaters, sports shirts, hats, jumpsuits, pants, and robes.”
Decision: The Section 2(d) refusals to register Applicant’s marks in application
Serial Nos. 86927215 and 86957516 are affirmed.