Big Idea Brands LLC

Trademark Trial and Appeal Board

Mar 1, 2016

No. 86191836 (T.T.A.B. Mar. 1, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: March 1, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Big Idea Brands LLC
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Serial No. 86191836
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Jenny Johnson-Sardella of Hunter Taubman Weiss LLP,
for Big Idea Brands LLC.
Sui Q. Duong, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
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Before Taylor, Wellington and Wolfson,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Big Idea Brands, LLC (“Applicant”) seeks registration on the Principal Register
of the mark LAX FOR LIFE (in standard characters) for
Athletic apparel, namely, shirts, pants, jackets, footwear,
hats and caps, athletic uniforms; Athletic shirts; Pants;
Shirts; Shorts; [and] T-shirts in International Class 25.1
At the request of the Trademark Examining Attorney, “LAX” has been disclaimed.

1 Application Serial No. 86191836 was filed on February 12, 2014, 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. §1051(b).
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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, when used on or in connection with the identified goods, so
resembles the two registered marks owned by two different entities set forth below
as to be likely to cause confusion, to cause mistake, or to deceive.
A. Lax Gal, LLC’s Registration:
Registration No. 3910057 for the mark LIFE IS LAX
(LAX disclaimed), in standard characters, for “Athletic
apparel, namely, shirts, pants, jackets, footwear, hats and
caps, athletic uniforms; Bermuda shorts; Boxer shorts;
Fleece shorts; Golf shirts; Gym shorts; Hats; Head
sweatbands; Hooded sweat shirts; Jackets; Jerseys; Knit
shirts; Long-sleeved shirts; Polo shirts; Ponchos; Shirts;
Short-sleeved or long-sleeved t-shirts; Short-sleeved
shirts; Shorts; Sport shirts; Sun visors; Sweat bands;
Sweat jackets; Sweat pants; Sweat shirts; Sweat shorts;
T-shirts; Visors; Wristbands” in International Class 25.2
B. PaiP, Inc.’s Registration:
Registration No. 4036104 for the mark LAX LIFE (LAX
disclaimed as to the goods identified in Class 25), in
standard characters, for, inter alia, “Athletic apparel,
namely, shirts, pants, jackets, footwear, hats and caps,
athletic uniforms; T-shirts” in International Class 25.3
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
Our determination under Section 2(d) is based on an analysis of all of the facts
in evidence that are relevant to the factors bearing on the likelihood of confusion

2 Issued January 25, 2011.
3 Issued October 4, 2011. The registration also includes goods identified in International
Class 16, but they were not cited as a bar to registration.
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issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976).
We first address the du Pont factor concerning the relatedness of the goods. Both
Applicant’s goods and Registrants’ goods include “Athletic apparel, namely, shirts,
pants, jackets, footwear, hats and caps, athletic uniforms; and T-shirts.” Thus, the
goods are in-part identical. In addition, all of the goods identified in the application,
and cited registrations for that matter, are classified in International Class 25. As
such, the Trademark Examining Attorney need not prove, and we need not find,
similarity as to each and every product listed in Applicant’s description of goods. It
is sufficient for a refusal based on likelihood of confusion that relatedness is
established for any product encompassed by the description of goods in a particular
class. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745
(TTAB 2014); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d
1584, 1588 n.1 (TTAB 2011), judgment set aside on other grounds, 2014 WL 343267
(TTAB Jan. 22, 2014); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1397
(TTAB 2007).
Further, because the goods identified in the application and the cited
registrations are in-part identical, we must presume that the channels of trade and
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classes of purchasers are the same. See 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);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). 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). The goods are
likely to be sold through the same trade channels (e.g., online and brick and mortar
retailers of athletic wear) to the same classes of purchasers (e.g., athletes and
ordinary consumers).
The in-part identity of Applicant’s and Registrants’ goods, as well as the
presumed overlap in trade channels and purchasers, are factors that weigh heavily
in favor of finding a likelihood of confusion. We note that Applicant did not dispute
this conclusion. Indeed, it did not even address the relatedness of the goods,
channels of trade and classes of purchasers in its appeal briefing.
We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. E. I. du Pont de Nemours, 177 USPQ at
567. In a particular case, “two marks may be found to be confusingly similar if there
are sufficient similarities in terms of sound or visual appearance or connotation.”
Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318
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(TTAB 1991, aff’d without opinion, 979 F.2d 216 (Fed. Cir. 1992) (emphasis in the
original; citation omitted). See also Eveready Battery Co. v. Green Planet Inc., 91
USPQ2d 1511, 1519 (TTAB 2009), citing 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 comparing the marks, we are mindful that where, as here, the goods are
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the goods. Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85
USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-
Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their 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, 101 USPQ2d at
1721. See also San Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed.
Cir. June 5, 1992). The proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the marks. L’Oreal S.A. v.
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Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver
& Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975). Here, as discussed above, the average
customer includes members of the general public.
With these principles in mind, we compare Applicant’s mark LAX FOR LIFE
with the cited registered marks, LIFE IS LAX and LAX LIFE. We note, first, that
all three marks include the descriptive and disclaimed term LAX, “lax”
being defined in pertinent part as “lacrosse,”4 and the term LIFE. Considering first
Applicant’s mark LAX FOR LIFE vis-à-vis the cited LIFE IS LAX mark, we find
they are substantially similar in appearance, sound, connotation and commercial
impression. Both marks consist of three terms, the first and last being transposed
elements. The middle element of each mark, the words “for” and “is,” respectively,
serve as joining elements between the two common words. Though these words
differ, they do not serve to distinguish the two marks, nor do they change the
overall connotation of the marks when viewed in connection with identical goods.
Similarly, the transposition of the terms LAX and LIFE in the two marks does
not avoid a finding of likelihood of confusion. Where the primary difference between
marks is the transposition of the elements that compose the marks, and where this
transposition does not change the overall commercial impression of the marks,
there may be a likelihood of confusion. See, e.g., In re Wine Soc’y of Am. Inc., 12
USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA

4 http://www.merriam-webster.com/dictionary/lax, retrieved May 20, 2014; First Office
Action dated May 20, 2015, 5 TSDR 10.
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and design for wine club membership services including the supplying of printed
materials, and AMERICAN WINE SOCIETY 1967 and design for newsletters,
bulletins, and journals, likely to cause confusion); In re Nationwide Indus., Inc., 6
USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER (with “RUST”
disclaimed) for rust-penetrating spray lubricant, and BUST RUST for penetrating
oil, likely to cause confusion); In re Gen. Tire & Rubber Co., 213 USPQ 870, 871
(TTAB 1982) (holding SPRINT STEEL RADIAL (with “STEEL” and “RADIAL”
disclaimed) for pneumatic tires, and RADIAL SPRINT (with “RADIAL” disclaimed)
for radial tires, likely to cause confusion). However, we recognize that if the
transposed mark creates a distinctly different commercial impression, then
confusion is not likely. See, e.g., In re Best Prods. Co., 231 USPQ 988, 989-90 (TTAB
1986) (holding BEST JEWELRY and design (with “JEWELRY” disclaimed) for
retail jewelry store services, and JEWELERS’ BEST for bracelets, not likely to
cause confusion). In this case, we are dealing with two marks which include the
same descriptive term and an additional common element and while we cannot
dissect those marks to make a determination as to confusing similarity, we cannot
ignore that the term LAX has little source-identifying function. Thus, in comparing
the marks, we look to the particular placement of terms LAX and LIFE. In so doing,
we find, contrary to Applicant’s contention, that its mark LAX FOR LIFE and the
cited mark LIFE IS LAX convey very similar meanings in relation to the identical
clothing items recited in both the application and cited registration. That is, each
mark conveys the idea that the identified athletic clothing is designed for a
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“lacrosse” lifestyle. We simply are not persuaded by Applicant’s unsupported
contention that the meanings evoked by its mark and the mark in the cited
registration differ and that its mark instead “connotes the duration of an activity for
a period of a lifetime.” Applicant’s Br., 4 TTABVUE 3.
As regards Applicant’s mark vis-à-vis the cited mark LAX LIFE, we find that
they are similar in appearance and sound in that they each begin with the word
LAX and end with the word LIFE. The sole difference between the two marks is the
word “FOR” in Applicant’s mark. Given its imbedded placement in the middle of
Applicant’s mark, it is likely that it will be unnoticed by consumers, especially given
that marks are not usually compared on a side-by side basis and the fallibility of
memory. Moreover, given the commonality of the elements LAX and LIFE, we find
the marks similar in connotation and commercial impression. Both Applicant’s and
the cited mark convey the impression of clothing for a lacrosse lifestyle.
In sum, although we recognize that Applicant’s mark and the cited marks have
certain differences, when we compare them in their entireties we find that, on the
whole, they are similar in appearance, sound, meaning and commercial impression.
Accordingly, the du Pont factor of the similarity of the marks favors a finding of
likelihood of confusion.
In Section B of its brief captioned “Dominant Portion of the Marks ‘LAX’ and
‘Life’ are Generic,” Applicant contends (emphasis supplied):
The term “life” as used in the subject mark is also
descriptive and considered generic. The Applicant
respectfully states that the strength of a mark is an
important component when determining whether or not
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there is a likelihood of confusion. If the common element
of a conflicting mark is weak, the fact will reduce the
chance of any likelihood of confusion. [citations omitted]
In the instant case, the dominant portion that the marks
cited by the Examining Attorney are extremely weak in
that they are generic terms and cannot be used to refuse
registration of the Applicant’s trademark.
…
The general public understands the term Lax to describe
Lacrosse. Lax is not commonly recognized by the public to
identify one source of the goods and services offered in
association with each cited mark.
There is nothing in the record to support Applicant’s contention that the terms LAX
and LIFE in the cited marks are generic for clothing, although we recognize that the
term LAX is descriptive of the recited goods. “LIFE” appears to be, at best, merely
suggestive of clothing. Nonetheless, even if we were to presume some degree of
weakness in the term LIFE, even weak marks are entitled to protection where
confusion is likely. See Matsushita Electric Company v. National Steel Co., 442 F.2d
1383, 170 USPQ 98, 99 (CCPA 1971) [“Even though a mark may be ‘weak’ in the
sense of being a common word in common use as a trademark, it is entitled to be
protected sufficiently to prevent confusion from source arising”]. Here,
notwithstanding any alleged weakness in the cited registered marks, they are still
similar in sound, appearance, connotation and commercial impression to Applicant’s
mark.
Applicant, during prosecution, pointed out that both of the cited registrations
are active on the Principal Register and that their registration demonstrates that
there is no basis for the “disparate and inconsistent” treatment of Applicant’s
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application for its LAX FOR LIFE mark. Although the United States Patent and
Trademark Office strives for consistency, each application must be examined on its
own merits. Neither the Trademark Examining Attorney nor the Board is bound to
approve for registration an applicant’s mark based solely upon the registration of
other assertedly similar marks having unique evidentiary records. In re Boulevard
Entm't Inc., 333 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003) (“the PTO must
decide each application on its own merits, and decisions regarding other
registrations do not bind either the agency or this court,)” citing In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)); see also In re
International Taste Inc., 53 USPQ2d 1604, 1606 (TTAB 2000). Here, for the reasons
explained, the record clearly supports affirming the refusal.
Based on the similarity of the marks, as well as the in-part identity of the goods,
and their travel in the same trade channels to the same class of purchasers, we find
confusion likely.
Decision: The refusal to register Applicant’s mark LAX FOR LIFE pursuant to
Section 2(d) of the Trademark Act is affirmed.