WE Brand S.a.r.l.v.ChicV Holding Limited

Trademark Trial and Appeal Board

Sep 20, 2018

No. 91225220 (T.T.A.B. Sep. 20, 2018)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 20, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
WE Brand S.a.r.l.
v.
ChicV Holding Limited
_______
Opposition No. 91225220
_______

William J. Seiter of Seiter Legal Studio,
for WE Brand S.a.r.l.

Ruth K. Khalsa of Legalforce RAPC Worldwide PC,
for ChicV Holding Limited.
______

Before Bergsman, Shaw, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:

Applicant, ChicV Holding Limited, seeks registration of the mark STYLEWE, in
standard characters, for services identified as “Online retail store services featuring
clothing and fashion accessories; Operating on-line marketplaces for sellers and
Opposition No. 91225220
2
buyers of goods and/or services; Operating on-line marketplaces featuring clothing
and fashion accessories,” International Class 35.1
Opposer, WE Brand S.a.r.l., has opposed registration of Applicant’s mark on the
grounds of priority and likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on ownership of the registered marks WE,2 in
standard characters, and ,3 in stylized form, both for goods and services
identified as:
Spectacles including sunglasses; spectacle frames; cases
and containers for spectacles, in International Class 9;
Precious metals and their alloys and goods in precious
metals or coated therewith, namely, tie clips; jewelry,
costume jewelry, precious stones; horological and
chronometric instruments, including watches, in
International Class 14;
Leather and imitation leather, goods made of these
materials and not included in other classes, namely,
leather handbags, wallets, purses, briefcases; umbrellas
and parasols; trunks and traveling bags; bags not included
in other classes, namely, all-purpose carrying bags
including duffle bags, gym bags, school bags, sports bags,
athletic bags, back packs, canvas, textile, cotton, silk and
wool shopping bags, beach bags, suitcases and traveling
bags, in International Class 18;
Clothing, namely, trousers, shorts, Bermuda shorts, skirts,
dresses, sweaters, pullovers, cardigans and vests, jackets,
overcoats, jackets and waist coats, blouses and shirts,
undershirts, t-shirts, shawls, scarves, mittens, socks,
stockings, tights and pantyhose, swimming costumes;
footwear, namely, sandals, boots, shoes, slippers, sports

1 Application Serial No. 86638669, filed on May 22, 2015 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), claiming a bona fide intent to use the mark in commerce.
2 Reg. No. 4714553, issued on April 7, 2015.
3 Reg. No. 4710199, issued on March 31, 2015.
Opposition No. 91225220
3
shoes; headgear, namely, bonnets, hats and caps, in
International Class 25; and
Retail store services and computerized online retail store
services featuring eyewear including sunglasses, optical
frames, cases and containers for spectacles, precious
metals and their alloys and products made from the
aforesaid material or coated therewith, jewelry, costume
jewelry, precious stones, clocks and chronometrical
instruments, including watches, leather and imitation
leather and products made from the aforesaid materials,
umbrellas and parasols, trunks and suitcases, bags,
clothing, footwear, headgear; franchise services, namely,
offering business management assistance in the
establishment and operation of franchised retail shops
featuring eyewear including sunglasses, optical frames,
cases and containers for spectacles, precious metals and
their alloys and products made from the aforesaid material
or coated therewith, jewelry, costume jewelry, precious
stones, clocks and chronometrical instruments, including
watches, leather and imitation leather and products made
from the aforesaid materials, umbrellas and parasols,
trunks and suitcases, bags, clothing, footwear, headgear;
the aforesaid services also offered via electronic channels,
including the Internet, in International Class 35.
In its answer, Applicant denied the salient allegations of the notice of opposition.
I. 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. Via notice of reliance,
Opposer submitted the following evidence:4
1. Copies of the pleaded registrations showing their status and title; and
2. Applicant’s responses to Opposer’s First Set of Interrogatories.

4 20 TTABVUE.
Opposition No. 91225220
4
Applicant did not submit any testimony or evidence during its trial period. After
Opposer filed its brief on the case, Applicant filed its brief, along with a motion to
reopen its testimony period and a notice of reliance concurrently therewith.5 The
Board denied Applicant’s motion to reopen its testimony period.6 Accordingly,
Applicant’s notice of reliance will receive no consideration.
II. Standing and Priority
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, 111
USPQ2d 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, Opposer made of record by notice of reliance copies of its pleaded WE
registrations showing their current status and title to Opposer. In view thereof,
Opposer has established its standing. In addition, priority is not in issue with respect
to the marks and the goods and services set out in Opposer’s pleaded registrations

5 22-24 TTABVUE.
6 26 TTABVUE.
Opposition No. 91225220
5
vis-à-vis Applicant’s mark and the identified services. 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).
III. 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
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.”).
We focus our analysis on the WE mark in standard characters 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 Opposer’s services, then there would be no likelihood
of confusion with the marks in the other pleaded registration. See In re Max Capital
Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The similarity or dissimilarity of the services, trade channels and classes of
consumers
We initially consider the similarity of the parties’ services, keeping in mind that
the services 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,
Opposition No. 91225220
6
1475 (Fed. Cir. 2000). The respective 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)).
Applicant’s identified services include “Online retail store services featuring
clothing and fashion accessories.” Opposer’s services include “computerized online
retail store services featuring eyewear . . . jewelry, costume jewelry, precious stones,
clocks and chronometrical instruments, including watches . . . clothing, footwear,
[and] headgear.” The services of the parties are, in part, identical because both offer
online retail store services featuring clothing and fashion accessories. Registration
must be refused if Applicant’s mark for any of its identified services is likely to cause
confusion with the Opposer’s mark for any of its identified services. Tuxedo Monopoly,
Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)
(likelihood of confusion must be found if there is likely to be confusion with respect to
any item that comes within the identification of goods or services in the application).
Where, as here, the parties’ services are in part identical, we must presume that
the channels of trade and classes of purchasers for those services are the same as
well. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
(even though there was no evidence regarding channels of trade and classes of
Opposition No. 91225220
7
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion).
For the foregoing reasons, we find that the du Pont factors of the similarity of the
services, channels of trade and classes of consumers weigh in favor of a finding of
likelihood of confusion.
B. Strength of Opposer’s Mark
Before comparing the parties’ marks, we analyze the strength of Opposer’s mark
in order to evaluate the scope of protection to which it is entitled. Applicant argues
that Opposer’s “WE Marks are weak and entitled only to a narrow scope of
protection.”7
Here, there is no record evidence of conceptual weakness or third-party use or
registration of marks incorporating WE in association with retail store services, and
thus no evidence of any commercial weakness of Opposer’s mark. We find Opposer’s
mark to be inherently distinctive and accord it the normal scope of protection to which
such marks are entitled.
C. 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 Imps.
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). When considering the similarity of the marks, the test is not whether

7 Applicant’s Br., p. 5, 24 TTABVUE 10
Opposition No. 91225220
8
the marks can be distinguished when subjected to a side-by-side comparison, but
rather whether the marks are sufficiently similar in terms of overall commercial
impression so that confusion as to the source of the goods or services offered under
the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des
Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012).
Additionally, where, as here, the services are in part identical, the degree of similarity
between the marks necessary to support a determination that confusion is likely
declines. Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330,
1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012).
Applicant’s mark is STYLEWE in standard characters. Opposer’s mark is WE also
in standard characters. Applicant argues that the word STYLE is the dominant
portion of its mark.8 We disagree. The term STYLE is relatively weak, if not
descriptive,9 when used in connection with retail clothing stores, therefore, it is less
distinctive than the term WE. See Cunningham v. Laser Golf, 55 USPQ2d at 1846
(“Regarding descriptive terms, this court has noted that the ‘descriptive component
of a mark may be given little weight in reaching a conclusion on the likelihood of
confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed.
Cir. 1985)). As Applicant admits, Opposer’s “WE Marks are [comprised of] a pronoun,

8 Id. at 3, 24 TTABVUE 8.
9 “Style” is defined as “the state of being popular: ‘fashion clothes that are always in style’” or
“fashionable elegance;” www.merriam-webster.com/dictionary/style. The Board may take
judicial notice of dictionary definitions, including online dictionaries which exist in printed
format. See In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014); see also Univ.
of Notre Dame du Lac v. J. C. Gourmet Food Imps. Co., 213 USPQ 594 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91225220
9
and it is quite uncommon for a clothing store to be named after a pronoun . . .”10 We
find that the term WE is the dominant element of both marks.
Applicant has simply added the term STYLE to Opposer’s mark. Likelihood of
confusion is not necessarily avoided between otherwise confusingly similar marks
merely by adding or deleting a term that is descriptive or suggestive of the named
goods or services. If the dominant portion of both marks is the same, then the marks
may be confusingly similar notwithstanding peripheral differences. See In re Denisi,
225 USPQ 624, 624 (TTAB 1985) (“[I]f the dominant portion of both marks is the
same, then confusion may be likely notwithstanding peripheral differences.”). See
also Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 1322 110
USPQ2d 1157, 1161 (Fed. Cir. 2014) (STONE LION CAPITAL incorporated the
entirety of the registered marks LION CAPITAL and LION, and that the noun LION
was the dominant part of both parties’ marks); In re Toshiba Med. Sys. Corp., 91
USPQ2d 1266, 1271 (TTAB 2009) (holding VANTAGE TITAN and TITAN, for
medical devices, likely to cause confusion); In re El Torito Rests. Inc., 9 USPQ2d 2002
(TTAB 1988) (holding MACHO COMBOS (with COMBOS disclaimed), and MACHO,
for food items, likely to cause confusion).
When we consider the marks as a whole, in connotation and commercial
impression, the marks are similar in that the dominant portion of each mark, WE, is
identical. The weaker term STYLE in Applicant’s mark modifies the arbitrary term
WE and thus plays a subordinate role, even though it comes first in Applicant’s mark.

10 Applicant’s Br., p. 4, 24 TTABVUE 9.
Opposition No. 91225220
10
Consumers familiar with Opposer’s mark for retail store services could think that
Applicant’s STYLEWE services were a related retail store focusing on a different level
of fashion or style.
Although the marks have some differences in appearance and sound, we find they
are more similar than dissimilar, particularly, as noted, in connotation and
commercial impression. 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.”); In re
Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (“Similarity in any one of these elements
may be sufficient to find the marks confusingly similar.”). Accordingly, the du Pont
factor regarding the similarity of the marks weighs in favor of finding a likelihood of
confusion.
D. Actual Confusion
Next, we turn to the seventh and eighth du Pont factors: the nature and extent of
any actual confusion, and the length of time and conditions under which there has
been concurrent use without evidence of actual confusion. Applicant alleges that it
began using its mark on May 10, 2015 and that the parties’ marks have co-existed
since then without any actual confusion.11
A showing of actual confusion may be highly probative, if not conclusive, of a
likelihood of confusion. Majestic Distilling, 65 USPQ2d at 1205. Yet the opposite is

11 Id. at 8-9, 24 TTABVUE 13-14.
Opposition No. 91225220
11
not true; an absence of evidence of actual confusion carries little weight. Id. (citing J.
C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 964, 144 USPQ 435, 438 (CCPA
1965)).
We do not accord significant weight to Applicant’s contention, unsupported by any
evidence, that there have been no instances of actual confusion despite
contemporaneous use of the respective marks. Moreover, while examples of actual
confusion may point toward a finding of a likelihood of confusion, an absence of such
evidence is not compelling in support of a finding of no likelihood of confusion,
particularly in these circumstances where there has only been contemporaneous use
of the marks for three years. Thus, we cannot conclude from the lack of instances of
actual confusion that confusion is not likely to occur. This du Pont factor is neutral.
E. Balancing the factors
After considering all of the applicable du Pont factors, including any factors not
discussed herein, we find that Applicant’s mark STYLEWE for online retail clothing
and accessory store services is likely to cause confusion with Opposer’s WE mark for
the same services.
Decision: The opposition is sustained.