Wal-Mart Stores, Inc.v.All Green Environment LLC

Trademark Trial and Appeal Board

Feb 26, 2013

No. 91191751 (T.T.A.B. Feb. 26, 2013)

Hearing: Mailed:
August 9, 2012 Feb. 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Wal-Mart Stores, Inc.
v.
All Green Environment LLC
_____

Opposition No. 91191751
to application Serial No. 77646853
filed on January 9, 2009
_____

Gary J. Rinkerman of Drinker Biddle & Reath LLP for Wal-Mart
Stores, Inc.

All Green Environment LLC, pro se.
______

Before Grendel, Taylor and Kuczma, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

INTRODUCTION.
All Green Environment LLC (applicant) seeks
registration on the Principal Register of the mark depicted
below, for goods and services identified in the application
as “belts; caps; ties; tops; wearable garments and clothing,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91191751
2
namely, shirts,” in Class 25, and “computerized on-line
ordering featuring general merchandise and general consumer
goods; on-line retail store services featuring clothing,” in
Class 35.1

The application includes the following description of
the mark: “The mark consists of six yellow oblong shaped
lines arranged to represent rays from the sun. The color
gray represents background, outlining, shading, and/or
transparent areas and is not part of the mark.” The
application also states that “The color(s) yellow is/are
claimed as a feature of the mark.” Applicant has referred
to this mark as its “Sun Rays” mark.
Wal-Mart Stores, Inc. (opposer) has opposed
registration of applicant’s mark as to both Class 25 and
Class 35, pursuant to Trademark Act Section 13, 15 U.S.C. §
1063. As its ground of opposition, opposer has alleged

1 Serial No. 77646853, filed on January 9, 2009. The application
is based on applicant’s allegation of a bona fide intention to
use the mark in commerce. Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b).
Opposition No. 91191751
3
priority and likelihood of confusion under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d).2
The case is fully briefed, and an oral hearing was held
on August 9, 2012.
After careful consideration of the evidence of record
and the parties’ arguments, we sustain opposer’s opposition
to registration of applicant’s mark as to both Class 25 and
Class 35.

THE PLEADINGS.
In pertinent part, opposer has alleged in the Notice of
Opposition that it is the owner and prior user of the mark
depicted below,

which is registered on the Principal Register for Class 35
services identified in the registration as “online retail

2 In the Notice of Opposition, opposer also pleaded dilution as a
ground of opposition. Because we are sustaining the opposition
based on opposer’s Section 2(d) ground (see below), we need not
and do not reach opposer’s dilution ground. At the oral hearing
on this case, opposer’s counsel assented to this approach.

Opposition No. 91191751
4
department store and retail department store services;
retail grocery store services.” (Reg. No. 3373555 (the ‘555
registration).)3 The registration includes the following
description of the mark: “The mark consists of a design of
six rays symmetrically centered around a circle to resemble
a spark.” The registration also states that “Color is not
claimed as a feature of the mark.” Opposer refers to this
mark as its “Spark Design” mark, and we shall do likewise.
Opposer also pleaded ownership of several other Spark
Design-formative marks in Class 35, but we shall base our
findings and analysis on what we deem to be the most salient
of opposer’s pleaded registrations in this case, i.e., the
‘555 Spark Design mark registration.4

3 The ‘555 registration was issued on January 22, 2008 from an
application filed on October 26, 2006. (Notice of Opposition,
Exh. A.)

4 Opposer’s other pleaded registrations include the following:

Reg. No. 3612345, issued on April 28, 2009
from an application filed on October 3, 2008. (Notice of
Opposition, Exh. B.) The services as identified in the
registration are “on-line retail store services featuring a wide
variety of consumer goods; retail automobile parts and
accessories stores; retail bakery shops; retail delicatessen
services; retail grocery stores; retail pharmacy services; retail
store services featuring a wide variety of consumer goods of
others; retail optical stores; retail automotive supplies and
parts stores.” The registration includes the following
description of the mark: “The mark consists of the word
‘WALMART’ next to a design of six rays symmetrically centered
around a circle to resemble a spark.” The registration also
states that “Color is not claimed as a feature of the mark.”

Opposition No. 91191751
5
Opposer alleges under Trademark Act Section 2(d) that
applicant’s mark, as used or intended to be used in
connection with applicant’s identified goods and services,
so resembles opposer’s previously-used and –registered Spark
Design mark for Class 35 services as to be likely to cause
confusion, to cause mistake, or to deceive.5

Reg. No. 3612344, issued on April 28, 2009
from an application filed on October 3, 2008. (Notice of
Opposition, Exh. C.) The services as identified in the
registration are the same as those identified in Registration No.
3612345, immediately above. The registration includes the
following description of the mark: “The mark consists of the
word ‘WALMART’ in blue next to an orange design of six rays
symmetrically centered around a circle to resemble a spark.” The
registration also states that “The color(s) blue and orange
is/are claimed as a feature of the mark.”

Reg. No. 3546870, issued on December 16,
2008 from an application filed on July 1, 2008. (Notice of
Opposition, Exh. D.) The services as identified in the
registration are “on-line retail store services featuring a wide
variety of consumer goods.” The registration includes the
following description of the mark: “The mark consists of the
wording, ‘WALMART’ and ‘SAVE MONEY. LIVE BETTER.’, followed by a
design of six rays symmetrically centered around a circle to
resemble a spark.” The registration also states that “Color is
not claimed as a feature of the mark.”

5 In addition to its pleading of its rights arising from its
prior use and registrations of its marks for Class 35 services,
opposer presented evidence at trial and argues in its briefs that
it has actually used its Spark Design marks on clothing since
October 2007, and now claims prior common law rights in the marks
pursuant to such use as an additional basis for its Section 2(d)
claim. However, opposer did not allege any such prior use of its
marks on clothing, per se, in the Notice of Opposition. Its
Section 2(d) claim, as alleged in the Notice of Opposition, is
based solely on its asserted prior use and registration of its
marks in connection with Class 35 services. Opposer did not file
a motion to amend its pleading under Fed. R. Civ. P. 15(b)(2) to
assert prior use on clothing, per se, as an additional basis for
Opposition No. 91191751
6
Applicant filed an Answer to the Notice of Opposition,
by which it admitted certain of opposer’s allegations (see
below) and denied the rest.

THE EVIDENCE.
Opposer presented evidence at trial; applicant did
not.6 The evidence of record consists of the pleadings
(including applicant’s admissions in its Answer, see below);
the file of applicant’s involved application (see Trademark
Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1)); printouts from
the Office’s TARR database of opposer’s pleaded
registrations, attached as exhibits to the Notice of
Opposition (see Trademark Rule 2.122(d)(1), 37 C.F.R. §
2.122(d)(1)); and the September 1, 2010 testimony deposition
(with exhibits) of opposer’s witness Mr. Alan Dranow,
opposer’s Director of Brand Communication (see Trademark
Rule 2.125, 37 C.F.R. § 2.125).

its Section 2(d) claim. Nor can we conclude that this issue was
tried by the express or implied consent of the parties, and we
therefore shall not sua sponte deem the pleadings to be amended
in this manner. In short, we shall base our findings and
analysis as to opposer’s Section 2(d) claim solely on the claim
as pleaded in the Notice of Opposition, i.e., based on opposer’s
alleged prior use and registration of its marks in connection
with Class 35 services.

6 On April 9, 2011, the penultimate day of its assigned testimony
period, applicant filed a “notice of reliance” on various
materials. On June 2, 2011, the Board granted as conceded
opposer’s uncontested April 20, 2011 motion to strike the notice
on various grounds.
Opposition No. 91191751
7
OPPOSER’S BURDEN.
To prevail in this opposition proceeding, opposer must
establish (1) its standing to oppose and (2) at least one
statutory ground of opposition to registration of
applicant’s mark as to each of the opposed classes of goods
and services in applicant’s application, i.e., Classes 25
and 35. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Saul Zaentz Co. v.
Bumb, 95 USPQ2d 1723, 1726 (TTAB 2010). See also Frantz et
al. v. Sky Distributing Co., 169 USPQ 185, 189 n.3 (TTAB
1971).

OPPOSER’S STANDING.
Opposer has properly made its pleaded ‘555 Spark Design
mark registration of record, establishing that the
registration is in effect and is owned by opposer. (Notice
of Opposition, Exh. A.) In view thereof, and because
opposer has established that it is not a mere intermeddler,
we find that opposer has a real interest in the outcome of
this proceeding and thus a reasonable basis for believing
that it would be damaged by registration of the mark
applicant seeks to register. Accordingly, we find that
opposer has established its standing to oppose registration
of applicant’s mark. See Cunningham v. Laser Golf Corp.,
supra, 55 USPQ2d at 1844. See also Lipton Industries, Inc.
Opposition No. 91191751
8
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA
1982).

OPPOSER’S SECTION 2(d) CLAIM AGAINST APPLICANT’S CLASS 35
SERVICES.

Applicant seeks registration of its mark for Class 25
goods and Class 35 services. We must determine whether
opposer has established its pleaded Section 2(d) claim
against each of the classes, separately. See Frantz et al.
v. Sky Distributing Co., 169 USPQ 185, 189 n.3 (TTAB 1971).
We begin with the Class 35 services.
Under Trademark Act Section 2(d), registration of a
mark is barred if it “... so resembles a mark registered in
the Patent and Trademark Office, or a mark or trade name
previously used in the United States by another and not
abandoned, as to be likely, when used on or in connection
with the goods [and/or services] of the applicant, to cause
confusion, or to cause mistake, or to deceive.”
Thus, to prevail on its pleaded Section 2(d) ground of
opposition, opposer must establish its ownership of a
previous registration and/or its priority of use, and
likelihood of confusion.

Section 2(d) Priority.
Opposition No. 91191751
9
Because opposer has properly made its pleaded ‘555
Spark Design mark registration of record, Section 2(d)
priority is not an issue in this case as to the mark and the
Class 35 services covered by that registration. See King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974); Miss Universe L.P. v. Community
Marketing Inc., 82 USPQ2d 1562, 1566 (TTAB 2007).
We note that in its brief, applicant asserts that its
mark “has been in progress since 1999,” and that it “was
developed since 1999.” (Applicant’s Brief at 4, 5.)
Applicant also asserts in its brief that business cards
bearing the mark were distributed at an environmental summit
on June 15, 2007. (Applicant’s Brief at 5.) However, these
assertions are not supported by any evidence in the record.
(See above at footnote 5.) Moreover, even if they had been
supported by evidence, they would be of no avail to
applicant on the issue of Class 35 priority in this case
absent a counterclaim for cancellation of opposer’s
registration(s). See Trademark Rule 2.106(b)(2), 37 C.F.R.
§ 2.106(b)(2). Applicant has filed no such counterclaim.
In short, opposer’s ‘555 Spark Design mark registration
has been properly made of record, and Section 2(d) priority
therefore is not an issue as to the mark and the Class 35
services covered by that registration.

Opposition No. 91191751
10
Likelihood of Confusion.
Initially, we note that applicant, by certain
admissions in its Answer to the Notice of Opposition, has
essentially conceded that a likelihood of confusion exists.
(See discussion below.) Applicant instead bases its defense
to opposer’s opposition to registration of applicant’s mark
on applicant’s alleged priority of use. As discussed above,
however, priority is not an issue in this case as to the
mark and services identified in opposer’s ‘555 Spark Design
mark registration, and applicant’s arguments regarding
priority are unavailing.
Although applicant has essentially conceded likelihood
of confusion, we shall make our own findings on the issue as
well, in the interest of completeness.
Our likelihood of confusion determination under Section
2(d) is a legal conclusion, based on an analysis of all of
the probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue (the du
Pont factors). In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). See M2 Software Inc.
v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944
(Fed. Cir. 2006); Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1639, 73 USPQ2d
1689 (Fed. Cir. 2005).
Opposition No. 91191751
11
“While it must consider each factor for which it has
evidence, the Board may focus its analysis on dispositive
factors, such as similarity of the marks and relatedness of
the goods [and/or services].” Han Beauty Inc. v. Alberto-
Culver Co., 236 F.3d 1333, 57 USPQ2d 1557 at 1559 (Fed. Cir.
2001); In re Max Capital Group Ltd., 93 USPQ2d 1243 at 1244
(TTAB 2010)(“In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.”)
To recount, applicant seeks registration of the mark
depicted below, for Class 35 services identified in the
application as “computerized on-line ordering featuring
general merchandise and general consumer goods; on-line
retail store services featuring clothing.”

Opposer’s ‘555 Spark Design mark registration is of the
mark depicted below, for Class 35 services identified, in
what we deem to be pertinent part, as “online retail
department store and retail department store services.”

Opposition No. 91191751
12

Du Pont Factor 1: Similarity of the Marks.
Under the first du Pont factor, we determine the
similarity or dissimilarity of applicant’s mark and
opposer’s mark when they are viewed in their entireties in
terms of appearance, sound, connotation and commercial
impression. See In re E. I. du Pont de Nemours & Co.,
supra; see also Palm Bay Imports, Inc., supra, 73 USPQ2d at
1692.
The test, under the first du Pont factor, 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 their overall commercial impressions
as to be likely to cause confusion when used on or in
connection with the goods and/or services at issue. See
Midwestern Pet Foods, Inc. v. Societe Des Produits Nestle
S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir.
2012); Edom Labs, Inc. v. Lichter, 102 USPQ2d 1546, 1551
(TTAB 2012); In re Iolo Technologies LLC, 95 USPQ2d 1498,
1499 (TTAB 2010). This necessarily requires us to take into
account the fallibility of memory over time and the fact
Opposition No. 91191751
13
that the average purchaser retains a general rather than a
specific impression of trademarks. See In re Association of
the United States Army, 85 USPQ2d 1264, 1269 (TTAB 2007);
Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1660
(TTAB 2002); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1468 (TTAB 1988).
Applicant’s mark and opposer’s ‘555 Spark Design mark
both are design marks, without any verbal elements. As
such, our comparison of the marks under the first du Pont
factor is based primarily on the similarity or dissimilarity
of the marks in terms of their appearance and commercial
impression. See In re Vienna Sausage Mfg. Co., 16 USPQ2d
2044, 2047 (TTAB 1990)(“...where the question of likelihood
of confusion to be decided involves design marks which are
not capable of being spoken, the question of the similarity
of the marks must be determined primarily on the basis of
their visual similarity.”).
Here, we find that the parties’ marks are highly
similar in appearance and commercial impression. Both marks
consist of six oblong lines of equal size radiating out from
a circular center. Applicant calls its mark a “Sun Rays”
design and opposer calls its mark a “Spark” design.
However, we find that applicant’s mark could readily be
perceived by purchasers to be a “spark” design and,
conversely, opposer’s mark could readily be perceived by
Opposition No. 91191751
14
purchasers as a “sun rays” design. Either way, the parties’
names for or verbal descriptions of their respective marks
are not dispositive. We look to the marks themselves, and
we find that they are highly similar in terms of appearance
and commercial impression.
The spacing between the “rays” radiating from the
center in the two marks differs slightly, and therefore the
two marks are not identical in all respects when they are
compared side-by-side. But again, that is not the test
under the first du Pont factor. See, e.g., In re Steury
Corp., 189 USPQ 353 (TTAB 1975)(finding a design mark
consisting of three stacked broad horizontal bars with
curved ends to be similar, even if not identical, to another
design mark consisting of two stacked broad horizontal bars
with curved ends); Matsushita Elec. Indus. Co. v. Sanders
Assocs., Inc., 177 USPQ 720 (TTAB 1973)(finding two design
marks, each consisting essentially of a triangle design
created by three arrows radiating from the center, to be
similar, even if not identical).
Applicant has claimed the color yellow as a feature of
its mark. However, opposer’s mark as registered is depicted
in a black-and-white special form drawing in which no color
is claimed. The registration therefore is presumed to
contemplate the use of the mark in any color, including
Opposition No. 91191751
15
yellow.7 See In re Data Packaging Corp., 453 F.2d 1300,
1302, 172 USPQ 396, 397 (CCPA 1972)(finding that just as a
word mark depicted in typed form may be displayed in any
manner, “[s]imilarly, it seems to us, there is no reason why
an applicant should not be able to obtain a single
registration of a design mark covering all the different
colors in which it may appear, that is to say, not limited
to a particular color”). See also Trademark Manual of
Examining Procedure (TMEP) (October 2012) at Section
807.14(e)(1).
Finally, in addition to our own findings that
applicant’s mark and opposer’s ‘555 registered Spark Design
mark are highly similar under the first du Pont factor, we
note that applicant, in its Answer to the Notice of
Opposition, has admitted and indeed has affirmatively
asserted that the parties’ marks are highly similar.
Opposer alleged in its Notice of Opposition that
“Applicant’s Design mark is highly similar to Opposer’s
Spark Design mark in appearance and commercial impression.”

7 At page 27 of its Main Brief, opposer contends: “Additionally,
Opposer has, since the inception of its use, used the color
yellow for its Spark Design Mark as evidenced by, e.g., Reg. Nos.
3,612,344 and 3,598,440 and Dranow [Depo.] at Exhibit P. So too,
Applicant has adopted the color yellow for its mark.” However,
the referenced registrations claim the color orange as a feature
of the mark, not yellow. (See footnote 4 above.) The baseball
cap featured in the color photograph submitted as Dranow Depo.
Exh. P depicts the Spark design in various shades of blue, not
yellow. We also note that the various items depicted in Dranow
Depo. Exh. K (the “Spark Shop” brochure) also show the mark being
used in orange, not yellow.
Opposition No. 91191751
16
(Notice of Opposition, ¶ 11.) Applicant answered this
allegation as follows: “Admitted. The similarities are
homogenous, thus confusion will occur to consumers seeking
distinctive products.” (Answer, ¶ 11.) Together with our
own findings as to the similarity of the marks, applicant’s
admission in its Answer that the parties’ marks are highly
similar suffices to support a finding that the marks are
highly similar. See CBS Inc. v. Mercandante, 23 USPQ2d
1784, 1786 (TTAB 1992).
For all of these reasons, we find that applicant’s mark
and opposer’s ‘555 Spark Design mark are similar, and indeed
highly similar. This finding under the first du Pont factor
strongly supports a conclusion that confusion is likely.

Du Pont Factor 2: Similarity of the Services.
We turn next to the second du Pont factor, under which
we determine the similarity or dissimilarity of the parties’
services. See Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). In
comparing the parties’ services under the second du Pont
factor, it is the identifications of services in applicant’s
application and in opposer’s registration, respectively,
that control. See Packard Press Inc. v. Hewlett-Packard
Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000).
If the services are identified broadly in applicant’s
Opposition No. 91191751
17
application and/or in opposer’s registration, we must
presume in each case that they encompass all services of the
nature and type identified. See Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987).
We find that the Class 35 “computerized on-line
ordering featuring general merchandise and general consumer
goods; on-line retail store services featuring clothing”
identified in applicant’s application are similar and
closely related to the “online retail department store and
retail department store services” identified in opposer’s
‘555 registration. In this regard, we take judicial notice
that “department store” is defined as “a large retail store
offering a variety of merchandise and services and organized
in separate departments.”8
Applicant’s “on-line retail store services featuring
clothing” are essentially encompassed by opposer’s “online
retail department store” services. Additionally,
applicant’s “computerized on-line ordering” services are or
would be an integral feature of the services offered in
connection with online retail department store services.
In addition to our own finding that the parties’
respective services as identified in the application and the

8 The American Heritage Dictionary of the English Language (3rd
Ed.).

Opposition No. 91191751
18
registration are similar and related under the second du
Pont factor, we note that in its Answer to the Notice of
Opposition, applicant expressly admitted opposer’s
allegation that “[t]he services for which Applicant seeks to
register the Applicant’s Design mark are identical to the
services identified in Opposer’s Spark Design
Registrations.” (Notice of Opposition/Answer at ¶12.)
Together with our own findings as to the similarity and
relatedness of the services, applicant’s admission suffices
to support a finding that the parties’ services are similar
and indeed identical. See CBS Inc. v. Mercandante, supra.
For these reasons, we find that applicant’s and
opposer’s Class 35 services, as identified in applicant’s
application and opposer’s ‘555 registration, respectively,
are highly similar, if not essentially identical. This
finding under the second du Pont factor strongly supports a
conclusion that a likelihood of confusion exists.

Du Pont Factor 3: Trade Channels and Purchasers.
Under the third du Pont factor, we determine the
similarity or dissimilarity of the trade channels in which,
and the classes of purchasers to whom, the parties’
respective services are or would be marketed.
Because there are no limitations or restrictions as to
trade channels or classes of purchasers in applicant’s and
Opposition No. 91191751
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opposer’s respective identifications of services, we presume
that the services are or would be marketed in all normal
trade channels for such services and to all normal classes
of purchasers of such services. See, e.g., Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1722 (Fed. Cir. 2012); Packard Press Inc. v. Hewlett-
Packard Co., supra, 56 USPQ2d at 1355.
Furthermore, because applicant’s services and opposer’s
services are closely related if not also essentially
identical (as discussed above), we presume and find, for
purposes of the third du Pont factor, that they also are or
would be marketed in the same or similar trade channels and
to the same or similar classes of purchasers. See In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 1012); American Lebanese Syrian Assoc. Charities Inc.
v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB
2011); Venture Out Properties LLC v. Wynn Resorts Holdings
LLC, 81 USPQ2d 1887, 1893-94 (TTAB 2007); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
Our finding under the third du Pont factor that the
parties’ respective trade channels and classes of purchasers
are similar and/or the same supports a conclusion that
likelihood of confusion exists.

Du Pont Factor 4: Conditions of Purchase.
Opposition No. 91191751
20
Under the fourth du Pont factor, we consider the
conditions under which the parties’ services, as they are
identified in applicant’s application and opposer’s
registration, respectively, are purchased. We find that the
purchasers of these identified retail store services and
online retail store services would include ordinary
consumers, who would exercise only a normal degree of care
in making their decisions to purchase the services the
parties are or will be rendering under their respective
marks. This finding under the fourth du Pont factor
supports a conclusion that a likelihood of confusion exists.
See Palm Bay Imports, Inc., supra, 73 USPQ2d at 1695.

Du Pont Factor 7: Actual Confusion.
In its Answer to the Notice of Opposition (at ¶ 6),
applicant itself has affirmatively alleged that actual
confusion has occurred between opposer’s mark and
applicant’s mark, albeit it is confusion which applicant
alleges was caused by opposer. In pertinent part, applicant
alleged as follows: “Ultimately, Plaintiff has created
confusion to the consumer due to the similarities. For
example, when goods were presented to a potential high end
client, the merchandise was identified as being related to
Wal-Mart’s mark.”
Opposition No. 91191751
21
We find, under the seventh du Pont factor, that this
apparent instance of actual confusion as alleged by
applicant in its Answer supports a finding that a likelihood
of confusion exists.

Likelihood of Confusion as to Class 35: Conclusion.
Based on our findings under the relevant du Pont
factors, and for all of the reasons discussed above, we
conclude that a likelihood of confusion exists as between
applicant’s mark, when used in connection with applicant’s
identified Class 35 services, and the mark and the Class 35
services identified in opposer’s ‘555 registration.9

Opposer’s Class 35 Section 2(d) Claim: Conclusion.
Opposer has properly made its ‘555 Spark Design mark
registration of record, and Section 2(d) priority therefore
is not an issue as to the mark and services identified in
that registration. The evidence of record establishes that
a likelihood of confusion exists as between the mark and

9 We also note that in addition to applicant’s specific
admissions in its Answer as to the similarity of the marks and
services, applicant in its Brief has admitted and asserted, more
generally, that a likelihood of confusion exists. See, e.g.,
“Opposer’s mark causes likelihood of confusion and Applicant
could prove that Applicant has priority of use if requested.”
(Applicant’s Brief at 6.) (As discussed above, opposer has made
its pleaded ‘555 registration of record, so priority is not an
issue in this case with respect to the mark and services
appearing in that registration.)

Opposition No. 91191751
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services in applicant’s Class 35 application and the mark
and services in opposer’s ‘555 Spark Design mark
registration. Accordingly, we find that opposer has
established its Section 2(d) claim against applicant’s Class
35 application. Opposer’s opposition to registration of
applicant’s mark in Class 35 under Section 2(d) is
sustained.

OPPOSER’S SECTION 2(d) CLAIM AGAINST APPLICANT’S CLASS 25
GOODS.

We turn now to opposer’s Section 2(d) ground of
opposition to registration of applicant’s mark for the Class
25 goods identified in applicant’s application, i.e.,
“belts; caps; ties; tops; wearable garments and clothing,
namely, shirts.”
As was the case with our findings and analysis with
respect to applicant’s Class 35 services application, we
will focus our Section 2(d) findings and analysis as to the
registrability of applicant’s mark for its Class 25 goods by
comparing them to the mark and services in opposer’s pleaded
‘555 Spark Design mark registration.10

Section 2(d) Priority.

10 Also, see above at footnote 5 regarding opposer’s unpleaded
allegations of prior use of its mark on clothing as a basis for
its Section 2(d) claim.

Opposition No. 91191751
23
Opposer has properly made its pleaded ‘555 registration
of record. (Notice of Opposition, Exh. A.) Section 2(d)
priority therefore is not an issue in this case as to the
mark and Class 35 services covered by that registration.
See King Candy Co. v. Eunice King’s Kitchen, Inc., supra.
Applicant’s assertions that it has prior actual use of its
mark are unproven and are unavailing in this case in any
event, as discussed above.

Likelihood of Confusion.
Again, our likelihood of confusion determination under
Section 2(d) is a legal conclusion, based on an analysis of
all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue
(the du Pont factors).

Du Pont Factor 1: Similarity of the Marks.
For all of the reasons discussed above in connection
with applicant’s Class 35 application, including applicant’s
express admission that the marks are highly similar, we find
that applicant’s mark and opposer’s registered ‘555 Spark
Design mark are highly similar. This finding under the
first du Pont factor strongly supports a conclusion that
confusion is likely.

Opposition No. 91191751
24
Du Pont Factor 2: Similarity of the Goods and Services.
Applicant’s Class 25 goods as identified in the
application are “belts; caps; ties; tops; wearable garments
and clothing, namely, shirts.” For the reasons discussed
below, we find that applicant’s goods are related to the
Class 35 retail department store services identified in
opposer’s ‘555 registration.
First, it is common knowledge, and we take judicial
notice, that department stores and online department stores
typically feature a clothing or apparel department in which
a variety of clothing items are offered for sale. The
record in this case shows that opposer’s department stores
in fact include an apparel department. (Dranow Depo. at 20-
21.)
We also note that each of the separate departments in
opposer’s stores has a large sign hanging from the ceiling
which identifies that department, to aid customers in
locating the department in which they wish to shop. (Dranow
Depo. at 20-21; Exh. J.) Each of these large signs in
opposer’s stores, including the sign over the clothing
department, identifies the name of the department and the
goods for sale therein, immediately next to a prominent
display of opposer’s ‘555 registered Spark Design mark.
(Id.)
Opposition No. 91191751
25
Our primary reviewing court has held that particular
goods, and the service of selling those particular goods at
retail, are considered to be related goods and services for
purposes of the second du Pont factor. See In re Hyper
Shoppes, 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). In
Hyper Shoppes, an ex parte case, the court found that
furniture, the goods identified in the cited prior
registration, were related under the second du Pont factor
to the applicant’s “general merchandise store services.”
The court stated: “The reason is that applicant’s ‘general
merchandise store services’ would include the sale of
furniture,” and the evidence of record showed that the
applicant in fact sold furniture in its general merchandise
store. “What else it sells is irrelevant; there is
overlap.” (Id. at 1025.)11
In this case, we find that the “general merchandise
store services” that were involved in Hyper Shoppes are

11 The court went on:

The only aspect of this case which is unusual is that
the marks sought to be registered are for services
while the prior registration on which their
registration is refused is for wares. Considering the
facts (a) that trademarks for goods find their
principal use in connection with selling the goods and
(b) that the applicant’s services are general
merchandising – that is to say selling – services, we
find this aspect of the case to be of little or no
legal significance. The respective marks will have
their only impact on the purchasing public in the same
marketplace.

Id. (Emphasis in original.)
Opposition No. 91191751
26
essentially the equivalent of opposer’s “retail department
store services” as identified in opposer’s ‘555 Spark Design
mark registration. Hyper Shoppes involved the sale of
furniture, while the present case involves clothing, but the
principle enunciated by the court in Hyper Shoppes with
respect to furniture sold in general merchandise stores
would apply in the present case involving clothing sold in
department stores as well. See also Saks & Co. v. TFM
Industries Inc., 5 USPQ2d 1762 (TTAB 1987)(finding that
women’s apparel is related to retail department store
services where the evidence showed that women’s apparel
constituted a significant portion of the department store’s
retail sales).
In short, based on In re Hyper Shoppes and Saks & Co.
v. TFM Industries Inc., we find that applicant’s Class 25
clothing goods are related to the Class 35 department store
services identified in opposer’s ‘555 Spark Design mark
registration. This finding under the second du Pont factor
supports a conclusion that a likelihood of confusion exists.

Du Pont Factor 3: Trade Channels and Purchasers.
As discussed above in connection with applicant’s Class
35 application, because there are no limitations or
restrictions as to trade channels or classes of purchasers
in applicant’s application, we presume that applicant’s
Opposition No. 91191751
27
goods are or would be marketed in all normal trade channels
for such goods and to all normal classes of purchasers of
such goods. We find that applicant’s goods are of the type
that normally would be sold in department stores such as
opposer’s, and to the same classes of purchasers, i.e.,
ordinary consumers. This finding under the third du Pont
factor supports a conclusion that a likelihood of confusion
exists.

Du Pont Factor 4: Conditions of Purchase.
As discussed above in connection with Class 35, we find
that the ordinary consumers who comprise a normal class of
purchasers for applicant’s goods and opposer’s goods and
services would exercise only a normal degree of care in
making their decisions to purchase the parties’ goods and
services. This finding under the fourth du Pont factor
supports a conclusion that a likelihood of confusion exists.

Du Pont Factor 7: Actual Confusion.
As noted above in connection with Class 35, applicant
itself in its Answer to the Notice of Opposition has
affirmatively alleged that actual confusion has occurred.
Applicant alleged: “Ultimately, Plaintiff has created
confusion to the consumer due to the similarities. For
example, when goods were presented to a potential high end
Opposition No. 91191751
28
client, the merchandise was identified as being related to
Wal-Mart’s mark.” (Answer at ¶ 6.)
We find, for purposes of the seventh du Pont factor,
that this apparent instance of actual confusion as alleged
by applicant supports a finding that a likelihood of
confusion exists.

Likelihood of Confusion as to Class 25: Conclusion.
Based on our findings as to the relevant du Pont
factors, and for all of the reasons discussed above, we
conclude that a likelihood of confusion exists as between
applicant’s mark as used on applicant’s Class 25 goods as
identified in the application and opposer’s registered ‘555
Spark Design mark for the Class 35 services identified in
the ‘555 registration.

Opposer’s Class 25 Section 2(d) Claim: Conclusion.
Opposer has properly made its ‘555 Spark Design mark
registration of record, and Section 2(d) priority therefore
is not an issue as to the mark and services identified in
that registration. The evidence of record establishes that
a likelihood of confusion exists. Accordingly, we find that
opposer has established the elements of its Section 2(d)
claim against applicant’s Class 25 application. Opposer’s
Opposition No. 91191751
29
opposition to registration of applicant’s mark in Class 25
under Section 2(d) is sustained.

DECISION:
Opposer’s Section 2(d) opposition to registration of
applicant’s mark in Class 25 is SUSTAINED.
Likewise, opposer’s Section 2(d) opposition to
registration of applicant’s mark in Class 35 is SUSTAINED.