Wei Lin

Trademark Trial and Appeal Board

Aug 20, 2015

No. 86329057 (T.T.A.B. Aug. 20, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lin
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Serial No. 86329057
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Gene Bolmarcich of Law Offices of Gene Bolmarcich, for Wei Lin.

Tiffany Y. Chiang, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
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Before Wolfson, Kuczma and Masiello,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Wei Lin (“Applicant”) seeks registration on the Principal Register of the mark
depicted below for “Men’s and women’s jackets, coats, trousers, vests; Pants;
Sweaters; Women’s clothing, namely, shirts, dresses, skirts, blouses” in
International Class 25.1

1 Application Serial No. 86329057 was filed on July 5, 2014, based on Chinese Reg. No.
8459855, registered April 7, 2013, under Section 44(e), 15 U.S.C. § 1126(e).
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that Applicant’s mark so resembles the mark PH:FIVE that, when used in
connection with Applicant’s goods, confusion, mistake or deception among
purchasers is likely. The mark PH:FIVE is registered for, inter alia, “Footwear,
headwear, hosiery, jackets, pajamas, pants, pullovers, jumpers, sweaters, shirts,
skirts, t-shirts, jerseys, trousers, uniforms, vests, camisoles, denims, denim shirts,
denim jackets and denim skirts; knitwear, namely, sweaters, jackets and vests,
sportswear, namely, jogging suits, belts” in International Class 25 and “Retail store
services featuring clothing, footwear, headwear, wallets, purses and belts,” in
International Class 35.2
The Examining Attorney further refused to accept the amended description of
the mark as being inaccurate under Trademark Rule 2.37. The current description
of the mark reads: “The mark consists of stylized letters ‘P’, ‘H’, ‘5’ in color black.”
Applicant proposes amending the description to “The mark consists of the
characters ‘215’ in stylized form.”
Following the Examining Attorney’s final Office Action, Applicant filed a request
for reconsideration of the refusals under Section 2(d) and Trademark Rule 2.37.

2 Reg. No. 4223650 issued October 16, 2012, on the basis of Hong Kong Reg. Nos.
2003B07186, 2003B07187 and 2003B07188, dated March 4, 2002.
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Upon denial of the request for reconsideration, the appeal was resumed. We affirm
the refusal to register.
I. Applicable Law – Section 2(d)
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion, as set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also Palm Bay Imp., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and services at issue.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. The Goods
We turn first to a comparison of the similarity or dissimilarity and nature of the
goods as they are identified in the registration and application. See Dixie
Restaurants 41 USPQ2d at 1534; Stone Lion Capital Partners, L.P. v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co.
v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant seeks to register its mark for, inter
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alia, “pants; sweaters.” Registrant’s identification of goods also includes “pants” and
“sweaters” without any limitations as to type or restrictions as to trade channels or
classes of purchaser. The goods are therefore identical in part, which weighs heavily
in favor of a likelihood of confusion. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion
must be found with respect to a class of goods or services in an application if there is
likely to be confusion with respect to any item that comes within the identification
of the goods or services in that class). The goods are also legally identical, in that
the cited registration lists “jackets,” “trousers,” “vests,” “shirts,” and “skirts”
without any limitation, encompassing Applicant’s more narrowly worded “men’s and
women’s jackets, trousers and vests” and “women’s shirts and skirts.”
Registrant’s remaining clothing items are highly related to Applicant’s clothing,
as evidenced by the website printouts submitted by the Examining Attorney from
JCrew, Banana Republic and Levi’s, showing that companies offer clothing of the
type offered by both Registrant and Applicant under a single trademark.3 It is also
well settled that confusion is likely when similar marks are used for both goods and
the service of providing those goods (here, “retail store services featuring clothing”).
The webpages submitted by the Examining Attorney demonstrate several
businesses offering retail store services featuring clothing and various clothing

3 At https://www.jcrew.com, http://bananarepublic.gap.com, and http://us.levi.com, attached
to the first Office Action dated October 22, 2014.
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items under the same mark.4 See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988) (same mark used for both furniture and retail
general merchandise store services held likely to cause confusion); In re Peebles Inc.,
23 USPQ2d 1795, 1796 (TTAB 1992) (use of nearly identical marks for coats, and
for retail outlets featuring camping and mountain climbing equipment, including
coats, was likely to cause confusion).
Additionally, the Examining Attorney attached copies of a number of use-based,
third-party registrations for a single mark for the same goods and services as are
listed in Registrant’s and Applicant’s identifications.5 While the registrations are
not evidence of use, they serve to suggest that the goods of Applicant and Registrant
and the goods of Applicant and the services of Registrant are of a type which may
emanate from a single source, which supports the showing made by the website
evidence. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
The legal identity and proximity of the goods heavily favor a finding of likelihood
of confusion.

4 See webpages attached to final Office Action, showing America Eagle Outfitters, Forever
21, and H&M offering, under a single mark, clothing and retail store services that are
similar to those offered by Registrant and Applicant under their respective marks.
5 See Registration Nos. 2820510, 2787681, 2974436, and 2907346 attached to the first
Office Action dated October 22, 2014. See also (attached to final Office Action) Registration
Nos. 4566752, 4502659, 4261957, 4261956, 3098239, 3053930, and 3075828 (showing
various clothing items offered by a single entity) and Registration Nos. 4655247, 4642249,
2382073, 2664972, 2577380, 3199241, and 3812414 (showing clothing items and retail store
services featuring clothing items offered by a single entity).

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B. Trade Channels; Purchasers
Because the goods in the application and the cited registration include identical
and legally identical goods, we must presume that the channels of trade and classes
of purchasers are the same for those goods. In re Yawata Iron & Steel Co., 403 F.2d
752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the
channels of trade and classes of purchasers are considered to be the same). See also
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 consumers,
the Board was entitled to rely on this legal presumption in determining likelihood of
confusion); Hewlett-Packard 62 USPQ2d at 1005 (“absent restrictions in the
application and registration, goods and services are presumed to travel in the same
channels of trade to the same class of purchasers”). We may presume that the
respective goods will be marketed to the same potential consumers, namely, any
member of the general public in the market for men’s or women’s clothing.
Thus, the third du Pont factor also favors a finding of likelihood of confusion.
C. The Marks
When comparing the marks, we consider them in their entireties as to
appearance, sound, connotation and commercial impression, to determine the
similarity or dissimilarity between them. Viterra, 101 USPQ2d at 1908 (quoting
du Pont); Palm Bay, 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 terms of their
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commercial impression’ such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation
omitted). Because Applicant’s and Registrant’s goods and services are in-part
identical, legally identical, and/or closely related, the degree of similarity between
the marks required to support a finding of likelihood of confusion is not as great as
in the case of diverse goods. In re Microsoft Corporation, 68 USPQ2d 1195, 1198
(TTAB 2003) (“[W]hen marks appear on or in connection with virtually identical or
closely related goods, the degree of similarity of the marks necessary to support a
conclusion of likely confusion is not as great as when the goods are different.”). See
also Century 21 Real Estate Corp. v. Century Life of America, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992) (virtually identical goods or services); Skincode AG v. Skin
Concept AG, 109 USPQ2d 1325, 1329 (TTAB 2013) (“Because some of the goods are
legally identical, the degree of similarity of the marks necessary to find likelihood of
confusion need not be as great as where there are recognizable differences between
the goods”); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987) (closely
related goods).
Applicant initially described his mark as consisting of the “stylized letters ‘P’,
‘H’, [and] ‘5’ in color black.” Applicant noted that PH5 has no meaning in the
relevant trade or industry and as applied to the goods is without significance,
including geographical significance. Applicant later amended the description of the
mark to: “the mark consists of an illegible depiction of ‘PH5.’” We also note that the
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translation of the Chinese registration submitted with the application presented the
mark as “PH5.” With his request for reconsideration, Applicant amended the
description of the mark to “The mark consists of the characters ‘215’ in stylized
form.”
Because Applicant’s mark is not in standard characters, a description of the
mark is required. Trademark Rule 2.37, 37 C.F.R. § 2.37; TMEP § 808.01. A mark
description “should state clearly and accurately what the mark comprises, and
should not create a misleading impression by either positive statement or omission.”
TMEP § 808.02.
A description cannot be used to restrict the likely public
perception of a mark. A mark’s meaning is based on the
impression actually created by the mark in the minds of
consumers, not on the impression that the applicant
states the mark is intended to convey.
Id.
Applicant argues that its mark will be perceived as a pure design mark and not
as the letters PH and number 5, despite the description of the mark in the record,
because consumers are not aware of statements made in the record or printed on
registration certificates. Rather, the mark must be taken as it is, and not as the
equivalent of the standard character mark PH5. According to Applicant, it may just
as readily be perceived as “215.” The Examining Attorney, on the other hand,
argues that Applicant’s mark will be perceived as PH5 and that it is reasonable to
presume that Applicant markets its mark as PH5, on the basis of Applicant’s
repeated characterization of its mark as PH5 in the application. The Examining
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Attorney argues that Applicant’s proposed amendment of the description of its mark
to 215 was submitted in an effort to circumvent the Section 2(d) refusal.
We are not persuaded by Applicant’s argument that its mark would be perceived
as “215” by a substantial number of relevant consumers. We agree with the
Examining Attorney’s contention that the mark “more closely resembles a stylized
‘PH5.’”6 We note that Applicant described the mark as PH5 in its initial application,
in its amended description of the mark, and in its statement of the significance of
the mark; and that the translator of the Chinese registration upon which the
application herein is based presented the mark as “PH5.” Applicant argues that
“the middle symbol in its mark would never be seen as a ‘H’ where half of an ‘H’ is
missing from the symbol,”7 and that the mark can reasonably be perceived as any of
several combinations, such as 215, ?15, P15, etc. Applicant suggests that the mark
is best described as “215.” We disagree. We find it less likely that consumers would
perceive the mark as 215, as the extraneous “line” added to the middle character is
inconsistent with a perception of the middle element as a “1.” We also find the
initial character of the mark to be, at best, a highly abstracted rendition of the
numeral 2 and not likely be so perceived. In sum, we find that relevant customers
would perceive Applicant’s mark as a stylized presentation of PH5.

6 Denial of request for reconsideration dated January 12, 2015.
7 4 TTABVUE 7.
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The literal element PH5 and PH:FIVE are identical in pronunciation; would be
seen as having the same meaning, if any;8 and convey the same overall commercial
impressions. Courts and this Board have often held that consumers have more
difficulty recalling differences in what appear to be arbitrary letter strings;
therefore, the cited mark would be more susceptible of confusion or mistake. See
Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed.
Cir. 1990); Alberto-Culver Co. v. F.D.C. Wholesale Corp., 16 USPQ2d 1597 (TTAB
1990) and cases cited therein. The difference between the numeral 5 in Applicant’s
mark and the word FIVE in Registrant’s mark creates a difference in the
appearance of the two marks, but we find that difference to be relatively
insignificant; FIVE and 5 are equivalents in sound and meaning and the colon in
Registrant’s mark is unpronounceable. Accordingly, Applicant’s mark is similar in
pronunciation, connotation and overall commercial impression to the cited mark
PH:FIVE. “[T]aking into account all of the relevant facts of a particular case,
similarity as to one factor (sight, sound, or meaning) alone may be sufficient to
support a holding that the marks are confusingly similar.” Safer, Inc. v. OMS
Investments, Inc., 94 USPQ2d 1031 (TTAB 2010) (citing Trak Inc. v. Traq Inc., 212
USPQ 846, 850 (TTAB 1981) (“Where the marks in conflict possess a marked
similarity in sound, this factor alone may be sufficient to support a holding that the
marks are confusingly similar.”); see also Chaussures Bally Societe Anonyme De

8 In the final Office Action, the Examining Attorney suggests that “PH” could be viewed as
pH, the scale in chemistry that indicates the level of acidity or basicity of an aqueous
solution. While we make no determination whether this meaning attaches here, we note
that, if it does, it attaches equally to both marks.
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Fabrication v. Dial Shoe Co., 345 F.2d 216, 217 (CCPA 1965) (“Applicant’s ‘VALLI’
and opposer’s ‘BALLY’ are virtually indistinguishable in sound and similarity in
this factor alone is sufficient to support a finding of a likelihood of confusion”).
“The nature of stylized letter marks is that they partake of both visual and oral
indicia, and both indicia must be weighed in the context in which they occur.” In re
Electrolyte Labs., Inc., 929 F.2d 645, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990)
(stylized “K+” mark unlikely to cause confusion with “K+EFF”). The court in that
case cited to Georgia-Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ
697, 699 (CCPA 1980) as follows:
It must be remembered that [registrant’s] trademark
consists of highly stylized letters and is therefore in the
gray region between pure design marks which cannot be
vocalized and word marks which are clearly intended to
be.
Applicant’s mark likewise is in the “gray region.” Weighing the mark in the
context in which it occurs yields little in the way of marketplace information, as the
mark has not yet been in use, but our determination is assisted by placing the mark
in the context of the application itself. In other words, we are guided by Applicant’s
repeated characterization of the mark as PH5, as well as the fact that the translator
of the foreign registration upon which it was based likewise characterized the mark
as PH5 (and was issued in April 2013, more than one year before the subject
application was filed). Upon encountering the mark, a prospective consumer must
form his or her own impression of the mark, drawing upon their own design sense
and familiarity with letters, numerals, and abstract designs. Although there is no
direct evidence in the record as to how buyers will perceive the mark, based on the
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record and our analysis we reach the conclusion that the mark more closely
resembles “PH5” than “215” and would be perceived as such by the relevant public.
For the reasons discussed above, we find that PH5 is similar to PH:FIVE.
The first du Pont factor favors a finding of likelihood of confusion.
II. Conclusion
We find that a substantial number of the relevant purchasing public would
perceive Applicant’s mark, , as a stylized rendition of the letter/number
combination PH5. We find it sufficiently similar to the cited mark PH:FIVE in
pronunciation, connotation and commercial impression that when used in
connection with identical, legally identical, and closely related goods and services,
confusion, mistake or deception among purchasers is likely.
Decision: The refusal to register Applicant’s mark under Section 2(d)
on the ground that the mark is likely to cause confusion with the registered mark
PH:FIVE is affirmed. In view of our finding that the mark must be refused
registration, we need not reach the refusal on the ground that the proposed
amendment to the description of the mark is unacceptable.