YM Inc. (Sales)

Trademark Trial and Appeal Board

Oct 7, 2015

No. 86078647 (T.T.A.B. Oct. 7, 2015)

This Opinion is Not a
Precedent of the TTAB
Mailed: October 7, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re YM Inc. (Sales)
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Serial No. 86078647
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Christopher A. Mitchell of Dickinson Wright PLLC
for YM Inc. (Sales).

Verna B. Ririe, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
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Before Seeherman, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
YM Inc. (Sales) (hereafter “Applicant”) seeks registration of the mark STORM
MOUNTAIN, in standard characters, for “outdoor winter clothing and casual
clothing, namely, jackets, vests, coats, sweaters, shirts, gloves, mitts, hats, pants,
jeans and scarves.”1 The Examining Attorney refused registration under Section
2(d) of the Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so

1 Application Serial No. 86078647, filed September 30, 2013 under Section 44(e) of the
Trademark Act, 15 U.S.C. § 1126(e), claiming priority as of April 16, 2013 under Section
44(d) of the Act based on a Canadian registration.
Serial No. 86078647
2
resembles the mark STORMY MOUNTAIN, in typed form, for “shoes,”2 that use of
Applicant’s mark in connection with Applicant’s goods is likely to cause confusion or
mistake or to deceive. After the refusal became final, Applicant appealed. The
appeal is fully briefed.3
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods. 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 and differences in the marks.”). These factors and others are discussed below.
See M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 78 USPQ2d
1944, 1947 (Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant
and of record” need be considered).

2 Registration No. 1670839, issued December 31, 1991; renewed.
3 The Examining Attorney’s objection to the untimely evidence submitted with Applicant’s
Appeal Brief, consisting of lists of registrations printed from the Office’s TESS database, is
sustained. Trademark Rule 2.142(d); In re Michalko, 110 USPQ2d 1949, 1950 (TTAB 2014).
Serial No. 86078647
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Turning first to the marks, they differ by only a single letter at the end of the
first word, and as a result look and sound highly similar.4 It is settled that 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. San Fernando Elec. Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991).
We also find that the marks convey similar meanings, as both marks call to
mind mountains which experience storms. We are not persuaded by Applicant’s
argument that its mark “connotes a location named ‘Storm Mountain’” and “has the
hallmarks of being a proper name for a mountain,” while Registrant’s mark
connotes “a mountain characterized by particularly bad weather.” 4 TTABVue 9.5
Applicant has not submitted any evidence that there is a mountain called “Storm
Mountain,” and indeed acknowledges that it is “unaware of any actual geographic
location named ‘Storm Mountain.’” Id. As a result, there is no basis for us to
conclude that consumers would understand Applicant’s mark to mean a specific

4 There is no substantive difference between “standard character” marks and marks in
“typed” form. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012)
(“until 2003, ‘standard character’ marks formerly were known as ‘typed’ marks, but the
preferred nomenclature was changed in 2003 to conform to the Madrid Protocol … we do
not see anything in the 2003 amendments that substantively alters our interpretation of
the scope of such marks”).
5 Citations to the record reference TTABVue, the Board’s online docketing system.
Specifically, the number preceding “TTABVue” corresponds to the docket entry number,
and the number(s) following “TTABVue” refer to the page number(s) of that particular
docket entry where the cited materials appear.

Serial No. 86078647
4
location, or that they would differentiate the marks based on this purported but
unsupported difference in meaning. Applicant’s mark could just as easily connote a
mountain characterized by bad weather, as Registrant’s mark does, because
“stormy” in Registrant’s mark is merely the adjectival form of the noun “storm” in
Applicant’s mark.
In short, the marks are highly similar in how they look and sound, and similar
in the meanings and commercial impressions they convey. This factor therefore
weighs in favor of a finding of likelihood of confusion.
Turning to the goods and channels of trade, the evidence establishes that the
types of clothes Applicant offers are related to shoes. For example, the Examining
Attorney has introduced evidence that the types of clothes identified in the
application are offered by the same sources under the same mark as shoes:
WHITNEYMANNEY in standard characters (Reg. No.
4587588) is registered for “shirts,” “pants,” “jackets” and
“coats” as well as “shoes.”

LONDONBERRY in standard characters (Reg. No.
4583259) is registered for “shirts,” “pants,” “jeans,”
“jackets,” “coats” and “sweaters” as well as “shoes.”

NELIPO in standard characters (Reg. No. 4551855) is
registered for “gloves,” “hats,” “knit jackets,” “knit shirts”
and “shirts” as well as “shoes.”

KISCHE in standard characters (Reg. No. 4579682) is
registered for “coats,” “gloves,” “hats,” “pants” and “shirts”
as well as “shoes.”

MIXED UP CLOTHING in standard characters (Reg. No.
4583868) is registered for “clothing, namely, shirts …
sweaters … jackets, coats… pants” as well as “footwear,
namely, shoes and boots.”

Serial No. 86078647
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63 in standard characters (Reg. No. 4583884) is registered
for “coats,” “dress pants,” “hats,” “jackets” and “shirts” as
well as “shoes.”

VIVIAN & VINCENT in standard characters (Reg. No.
4575709) is registered for “coats,” “gloves,” “hats” and
“shirts” as well as “shoes.”

UNDCRWN in standard characters (Reg. No. 4584094) is
registered for “clothing, namely, men’s, women’s, and
children’s … shirts … pants … jackets …sweaters” as well
as “footwear, namely, athletic shoes, sneakers, boots,
sandals.”

OTHER MIX (Stylized) (Reg. No. 4580072) is registered
for “coats,” “outer jackets,” “overcoats,” “shirts” and
“trousers” as well as “sports shoes.”

AÉROPOSTALE DESIGNED IN NYC (Stylized) (Reg. No.
4572463) is registered for “clothing, namely … shirts …
pants, sweaters … gloves” as well as “footwear, namely,
shoes ….”

MEGAN MASSACRE in standard characters (Reg. No.
4588851) is registered for “clothing, namely, pants …
shirts … coats, jackets, sweaters” as well as “footwear,
namely, boots, shoes, sandals and slippers.”

Office Action of August 23, 2014.6 “Third-party registrations which cover a number
of differing goods and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in use on a commercial
scale or that the public is familiar with them, may nevertheless have some
probative value to the extent that they may serve to suggest that such goods or
services are of a type which may emanate from a single source.” See, In re Mucky

6 Applicant argues that most of these third-party registrations “comprise only a partial
listing of Applicant’s goods.” That is not relevant, because it is sufficient for a finding of
likelihood of confusion if relatedness is established for any item encompassed by Applicant’s
identification of goods. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986 (CCPA 1981).
Serial No. 86078647
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Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re Davey
Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009).
As for the channels of trade, because Applicant’s and Registrant’s identifications
contain no limitations, the goods are presumed to move in all normal channels of
trade therefor and to be available to all classes of consumers. Stone Lion Capital
Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed.
Cir. 2014) (“An application with ‘no restriction on trade channels’ cannot be
‘narrowed by testimony that the applicant’s use is, in fact, restricted to a particular
class of purchasers.’”); Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d
1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Here, the
evidence establishes that third-parties Nine West, Nike, Adidas, Payless Shoe
Source, J. Crew, Gap and Max Studio offer on their websites the opportunity to shop
for and purchase various types of shoes as well as clothing such as jackets, t-shirts,
scarves and workout clothes. Office Actions of January 16 and August 23, 2014.
This further supports a finding that the goods are related, as well as a finding that
the channels of trade overlap.
While each case must be decided on its own merits, and we base our findings on
only the record in this case, what we said in a similar case holds true today:
In this case we have women's shoes, on the one hand, and
women's pants, blouses, shorts and jackets, on the other.
Despite applicant's argument to the contrary, we believe
that these goods are related. A woman's ensemble, which
may consist of a coordinated set of pants, a blouse and a
jacket, is incomplete without a pair of shoes which match
or contrast therewith. Such goods are frequently
Serial No. 86078647
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purchased in a single shopping expedition. When
shopping for shoes, a purchaser is usually looking for a
shoe style or color to wear with a particular outfit. The
items sold by applicant and registrant are considered to
be complementary goods. They may be found in the same
stores, albeit in different departments. We are convinced
that this is a sufficient relationship between the goods to
support a holding of likelihood of confusion where both
sets of goods are sold under the same mark.

In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). See also, In re Pix of
America, Inc., 225 USPQ 691 (TTAB 1985); B. Rich’s Sons, Inc. v. Frieda Originals,
Inc., 176 USPQ 284, 285 (TTAB 1972) (“shoes and women’s wearing apparel are
closely related goods which could be purchased in the same retail outlets by the
same classes of purchasers and often during the same shopping excursion to
complete an ensemble”); The United States Shoe Corp. v. Oxford Industries, Inc.,
165 USPQ 86, 87 (TTAB 1970) (“The products of the parties are closely related
goods. Shoes and sportswear are sold in the same stores to the same purchasers and
the sale of sportswear may engender the sale of casual shoes. In addition such goods
are advertised and promoted together.”).7
The record in this case, showing that the same sources offer shoes and clothes,
and do so on the same retail websites, leads us to conclude similarly, that shoes and
the types of clothes Applicant offers are related and travel in the same channels of
trade. These factors also weigh in favor of a finding of likelihood of confusion.

7 Applicant’s reliance on H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715 (TTAB 2008)
and In re British Bulldog, Ltd., 224 USPQ2d 854 (TTAB 1984) is misplaced. In H.D. Lee the
marks were dissimilar, the opposer’s mark was not particularly distinctive and the products
at issue were outerwear and undergarments, and no evidence established a relationship
between them. In British Bulldog, the marks conveyed different meanings and the men’s
underwear and shoes at issue were sold in different manners and were found to be “not
complementary or companion items.”
Serial No. 86078647
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Applicant introduced mere lists of third-party registrations, in an attempt to
establish that there are “many separately owned federal trademark registrations
and pending applications for marks that contain the term STORM(Y) or
MOUNTAIN.” However, it is settled that such lists are not probative. In re Jump
Designs, 80 USPQ2d at 1372. Furthermore, the fact that the Trademark Examining
Operation did not cite the mark STONEY MOUNTAIN BY WILLITS & Design for
footwear (Registration No. 1923783) as a bar to registration of STONE MOUNTAIN
for jackets (Registration No. 3801249) is essentially irrelevant. In re Nett Designs,
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board must
decide each case on its own merits … Even if some prior registrations had some
characteristics similar to Nett Designs’ application, the PTO’s allowance of such
prior registrations does not bind the Board or this court.”).
Conclusion
Because Applicant’s and Registrant’s marks are highly similar and used or
intended to be used for related goods which may be offered in the same channels of
trade, confusion is likely.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.