Cabot Hosiery Mills, Inc.

Trademark Trial and Appeal Board

Jul 2, 2018

No. 87089154 (T.T.A.B. Jul. 2, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 2, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Cabot Hosiery Mills, Inc.
_____

Serial No. 87089154
_____

Gordon E. R. Troy of Gordon E. R. Troy, PC,
for Cabot Hosiery Mills, Inc.
Benji Paradewelai, Trademark Examining Attorney, Law Office 101,
Ronald S. Sussman, Managing Attorney.
_____

Before Cataldo, Greenbaum, and Coggins,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Cabot Hosiery Mills, Inc. (“Applicant”) seeks registration on the Principal Register
of the mark VERTEX (in standard characters) for
Athletic footwear; Footwear; Hosiery; Socks; Sweat-
absorbent socks; Thermal socks in International Class 25.1
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

1 Application Serial No. 87089154 was filed on June 30, 2016 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s claim of first use of the mark
anywhere on June 1, 2015 and first use of the mark in commerce on January 1, 2016.
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Applicant’s mark, when used on Applicant’s goods, so resembles the previously
registered marks
1. X VERTX and design,2 as displayed below
and
2. X VERTX FOR THE OPERATIONAL ATHLETE and design,3 as displayed
below

both for “Jackets; Shirts; Shorts; T-shirts; Trousers” in International Class 25, and
owned by one registrant, as to be likely to cause confusion, mistake, or deception.
After the Examining Attorney made the refusal final, Applicant appealed to the
Board. The case is fully briefed. We affirm the refusal to register.
I. Applicable Law – Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in 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 Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two

2 Registration No. 4285929 issued on February 5, 2013. The registered mark is described as
consisting “of a logo featuring a stylized X with arrows superimposed over a square next to
the word ‘vertx.’” Color is not claimed as a feature of the mark.
3 Registration No. 4295218 issued on February 26, 2013. The registered mark is described as
consisting “of a logo featuring a stylized ‘X’ with arrows superimposed over a square next to
the word ‘vertx’ and the phrase ‘for the ‘OPERATIONAL ATHLETE’ below.” Color is not
claimed as a feature of the mark.
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key considerations are the similarities between the marks and the similarities
between the goods or services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d
1944, 1945-46 (Fed. Cir. 2004); 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.”). We discuss below these and other relevant
factors. See M2 Software, Inc. v. M2 Commc’ns, 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). See also In re i.am.symbolic, llc, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers
all DuPont factors for which there is record evidence but ‘may focus … on dispositive
factors, such as similarity of the marks and relatedness of the goods.’”) (quoting
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002)).
In this case, we have based our Section 2(d) likelihood of confusion findings and
decision only on Registration No. 4285929 for the mark , as it
is more similar to Applicant’s mark than is the mark in
Registration No. 4295218.4 If we do not affirm the refusal on the basis of this

4 Consequently, we need not address evidentiary issues pertaining to the meaning of the
words “operational” or “operational athlete,” or Applicant’s request, made in its reply brief,
that we remand the application to the Examining Attorney for consideration of new material,
submitted with Applicant’s reply brief, pertaining to the term “operational athlete.”
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previously registered mark, we would not find a likelihood of confusion as to the other
mark. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016);
In re Max Capital Grp., Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. Similarity of the Marks
We begin by comparing Applicant’s standard character mark VERTEX and
Registrant’s mark “in their entireties as to appearance, sound,
connotation and commercial impression.” In re Viterra, 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (quoting du Pont, 177 USPQ at 567). See also Palm Bay
Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005). “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, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted).
Further, marks “‘must be considered … in light of the fallibility of memory ….’” In re
St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting
San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196
USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). “[S]imilarity is not a binary factor but
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is a matter of degree.” St. Helena Hosp., 113 USPQ2d at 1085 (quoting In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003)). Since the goods
are clothing and footwear without any restrictions or limitations as to price or trade
channels, the average purchaser is an ordinary consumer.
Applicant argues that the Examining Attorney has dissected the marks and has
not considered them in their entireties, including the design element in the cited
registered mark. Applicant concedes that “consumers might read and pronounce X
VERTX as ‘vertex,’”5 but argues that “the X VERTX design logo, when considered as
a whole, is highly distinctive” and that “Registrant’s use of the X VERTX design logo
on its garments creates a strikingly different – and unmistakable – commercial
impression from that of the applied-for mark, in at least two respects.”6 According to
Applicant,
the initial black “X” in the XVERTX Design Marks,7 which
is formed by two-headed black arrows crossing each other
and superimposed on a black box, gives those marks a
militaristic look and feel, also calling to mind the military
expression, “X marks the spot” – i.e., the positioning of a
black “x” on the heart of someone who was sentenced to
death by firing squad.8

5 4 TTABVUE 5.
6 Id.
7 Applicant’s arguments on this du Pont factor are addressed to both of the cited marks, and
the discussion of this factor in Applicant’s reply brief is almost entirely devoted to the mark
in Registration No. 4295218. 7 TTABVUE 3-6. We focus on the portion of
Applicant’s arguments that pertain to the mark in Registration No. 4285929.
8 Id.
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Applicant also argues that “the initial ‘X’ and final ‘X’ have the visual effect of
‘bookending’ Registrant’s mark, thereby reinforcing the military and paramilitary
focus of the product line.”9 Applicant claims that the “use of two X’s is not incidental,
but material, to the look and feel of the X Vertx Design Marks” and that “[s]uch visual
elements are simply non-existent in the applied-for mark.”10
The Examining Attorney focuses on the visual and aural similarities between
Applicant’s standard character mark VERTEX and the literal term VERTX in the
cited registered mark . The Examining Attorney contends that
the term VERTX is the most distinctive portion, and therefore the strongest source
identifying element, of the cited registered mark. We agree with the Examining
Attorney’s assessment of the similarity of the marks.
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, there is nothing improper

9 Id.
10 Id.
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in stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (citing Nat’l Data, 224 USPQ at
751).
Applicant’s standard character mark VERTEX is similar to the cited registered
mark in that the term VERTX is phonetically equivalent to
the entirety of Applicant’s standard character mark VERTEX. See Kabushiki Kaisha
Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985) (“the word portion of
applicant’s mark ‘SEYCOS’, is virtually the phonetic equivalent of opposer’s ‘SEIKO’
mark and is, in fact, the phonetic equivalent of the plural of opposer’s mark”). In
certain circumstances, similarity in sound alone may be sufficient to find the marks
confusingly similar. In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB
2007); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988). In this case,
however, the terms VERTEX and VERTX also are nearly identical in appearance,
differing only by one letter. This difference is relatively minor, especially since it
appears in the middle of each mark. Given the overall visual and aural similarity in
the terms, it is unlikely that consumers will notice the presence or absence of a letter,
or treat it as a distinguishing feature. Further, there is no evidence that the term
VERTEX, which is defined as “the top of the head” and “a principal or highest point:
Serial No. 87089154
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summit the vertex of the hill,”11 has anything other than a suggestive meaning
with respect to clothing, perhaps connoting a desirable characteristic such as being
in the highest position or first place, and that meaning would apply equally to the
goods identified in the application and registration.12 The slight misspelling of the
term VERTX in the cited registered mark does not affect the
mark’s commercial impression in any significant way. See, e.g., Contour Chair-
Lounge Co. v. Englander Co., 324 F.2d 186, 139 USPQ 285, 288 (CCPA 1963)
(“Contur” but a slight misspelling of “Contour,” with identical pronunciation and
meaning); Fleetwood Co. v. Mende, 298 F.2d 797, 132 USPQ 458, 460 (CCPA 1962)
(TINTZ merely a phonetic spelling of “tints”).
With regard to the design element in the cited registered mark, although we
assess each mark in its entirety, wording often is considered the dominant feature of
a mark comprising both literal and design elements because it is most likely to
indicate the source of the goods. See Jack Wolfskin Ausrustung Fur Draussen GmbH
& Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129,
1134 (Fed. Cir. 2015); Viterra, 101 USPQ2d at 1908. The words are likely to make a
greater impression upon purchasers than the designs and would be remembered by
them and used by them to request the goods. See Viterra, 101 USPQ2d at 1908 and
1911 (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)).

11 April 14, 2017 Response to Office Action p. 12.
12 We discuss below Applicant’s evidence concerning the purported weakness of this term in
regard to clothing.
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This general principle applies here, where the design element in the cited registered
mark is not sufficiently prominent or distinctive to overcome the dominance of the
literal term VERTX. Cf. In re White Rock Distilleries, Inc., 92 USPQ2d 1282, 1284
(TTAB 2009) (no likelihood of confusion between VOLTA (in standard characters) for
caffeine-infused vodka and TERZA VOLTA and design due to the prominent
design in the registered mark). See also Parfums de Coeur Ltd. v. Lazarus, 83
USPQ2d 1012, 1016 (TTAB 2007) (prominently displayed design of a torso wearing a
cape considered to be dominant element of mark BODYMAN and design
because the design catches the eye and engages the viewer before the viewer looks at
the word “Bodyman”). Unlike these two examples, the design element in the cited
registered mark is in the shape of an “X” and is in-line with and approximately the
same size as the literal element VERTX.
Finally, Applicant’s standard character mark is not limited to any particular
depiction. The rights associated with a standard character mark reside in the wording
and not in any particular display. In re RSI Sys. LLC, 88 USPQ2d 1445, 1448 (TTAB
2008); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Trademark
Manual of Examining Procedure (“TMEP”) § 1207.01(c)(iii) (Oct. 2017). We must
consider Applicant’s standard character mark “regardless of font style, size, or color”
Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259
Serial No. 87089154
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(Fed. Cir. 2011), including iterations displaying the mark in all lower case bold
letters, just as the term VERTX appears in the cited registered mark.
The marks are similar in appearance, sound, connotation, and commercial
impression. This du Pont factor supports a finding of a likelihood of confusion.
B. Similarity of the Goods and Channels of Trade
With regard to the goods and channels of trade, we must make our determinations
under these factors based on the goods as they are identified in the applications and
registration. See Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997).
See also Stone Lion, 110 USPQ2d at 1161; Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous.
Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
1. Similarity of Goods
The second du Pont factor involves the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration . . . .” Stone Lion,
110 USPQ2d at 1159. “[L]ikelihood of confusion can be found ‘if the respective goods
are related in some manner and/or if the circumstances surrounding their marketing
are such that they could give rise to the mistaken belief that they emanate from the
same source.’” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler,
83 USPQ2d 1715, 1724 (TTAB 2007)).
The goods identified in the application are “athletic footwear; footwear; hosiery;
socks; sweat-absorbent socks; thermal socks.” The goods identified in the registration
are “jackets; shirts; shorts; T-shirts; trousers.” The Examining Attorney argues that
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these goods commonly emanate from a single source, citing both record evidence and
prior cases from the Federal Circuit and the Board finding such goods to be related.13
In its reply brief, Applicant “does not deny that the goods are related” and effectively
concedes that they are “closely related.”14
The Examining Attorney made of record pages from the websites of Nike,
Columbia, and L.L. Bean showing that footwear and socks are commonly sold under
the same mark as jackets, shirts, shorts, or trousers.15 These webpages are probative
of the relatedness of the goods. See, e.g., In re C.H. Hanson Co., 115 USPQ2d 1351,
1355-56 (TTAB 2015); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB
2009). The Examining Attorney also made of record 21 use-based, third-party
registrations of marks covering one or more of the goods identified in the application
as well as one or more of the goods identified in the registration for the cited mark.16
The third-party registrations are also probative of the relatedness of the goods
because they suggest that the listed goods are of a type that may emanate from the
same source. See, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015);
In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). We find that

13 6 TTABVUE 6. Applicant argues that the cases cited by the Examining Attorney on the
similarity of goods factor “do not support a likelihood of confusion, given the differences
between the marks” in this case (4 TTABVUE 6-7), but this argument is unavailing. We rely
upon the record, not the holdings of prior cases involving different marks, to find that the
goods are related based upon the evidence presented in this case.
14 7 TTABVUE 6. We agree with Applicant that the fact that “the goods are closely related is
not sufficient in itself to support a finding that there is a likelihood of confusion” (id. at 7),
because we must assess likelihood of confusion based upon all of the relevant du Pont factors.
15 May 3, 2017 Office Action pp. 75-171. Citations to the TSDR database are to the
downloadable .pdf format.
16 Id. at 15-74.
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the goods are closely related, as Applicant acknowledges, because the record shows
that they commonly emanate from the same source under the same mark.17 This du
Pont factor supports a finding of a likelihood of confusion.
2. Channels of Trade
“The third Du Pont factor considers ‘[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.’” Stone Lion, 110 USPQ2d at 1161 (quoting du
Pont, 177 USPQ at 567). Applicant argues, on the basis of Registrant’s current use of
the cited registered mark, that Registrant “caters to a specialized market,”18
comprising “individuals who use weapons, guns, in particular, in sporting, military,
or paramilitary contexts,”19 while Applicant sells footwear and socks to runners and
other athletes,20 as shown by Applicant’s specimens. The Examining Attorney
responds that the “registrant has not limited its identification of any market” and
“has not limited the goods to tactical use or for the ‘modern warrior.’”21
Because the identification of goods in the registration contains no restrictions or
limitations on the nature of the goods, their channels of trade, or classes of customers,
we must presume that the identified goods travel through all normal and usual trade

17 Under this du Pont factor, the Examining Attorney need not prove, and we need not find,
similarity as to each and every product listed in the description of goods. It is sufficient for a
refusal based on likelihood of confusion that relatedness is established for any item
encompassed by the identification of goods in a particular class in the application. Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); see
also In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).
18 4 TTABVUE 4.
19 Id. at 3.
20 Id. at 4.
21 6 TTABVUE 7.
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channels for such goods and that they are sold to all classes of prospective purchasers
for those goods. See Stone Lion, 110 USPQ2d at 1161; see also Coach Servs., 101
USPQ2d at 1723 (absent limitation, “goods are presumed to travel in all normal
channels … for the relevant goods.”); Jump Designs, 80 USPQ2d at 1374. We thus
must presume that the goods identified in the registration are sold in all channels of
trade for jackets, shirts, shorts, T-shirts, and trousers, and are purchased by all
ordinary consumers of those goods, not solely by “individuals who use weapons, guns,
in particular, in sporting, military, or paramilitary contexts.”22 As discussed above in
connection with the similarity of the goods, the record shows that the items of clothing
identified in the registration are sold through the same channels of trade as the items
of footwear and hosiery identified in the application, and that the classes of customers
for both sets of goods overlap. The third du Pont factor also supports a finding of a
likelihood of confusion.
C. Third-Party Marks and the Strength or Weakness of the Cited
Registered Mark
The strength or weakness of the cited registered mark is “connected to the ‘number
and nature of similar marks in use on similar goods’ identified in Du Pont . . . and is
in any event probative of likelihood of confusion . . . .” Juice Generation, Inc., v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (quoting du
Pont, 177 USPQ at 567). Applicant devotes a substantial portion of its main brief to
its argument that “Vertex” is “commonly used to suggest high quality and

22 4 TTABVUE 3.
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performance,”23 and is entitled to a narrow scope of protection.24 Applicant claims
that the “dictionary definition of ‘vertex,’ the third party registrations, and the Google
search results” in the record “show that the term ‘vertex’ is a highly suggestive term
used for a wide range of goods.”25 Applicant cites Juice Generation for the proposition
that “[m]arks that are descriptive or highly suggestive are entitled to a narrower
scope of protection, i.e., are less likely to generate confusion over source identification,
than their more fanciful counterparts.” Id. at 1675.
Applicant made of record information from the TSDR database regarding nine
registrations of VERTEX-formative marks, which cover dinnerware and ovenware;
bicycles; watches; protective helmets for climbing, speleology, and mountaineering;
duffel bags, sports bags, backpacks and similar goods; a four-legged hunting stand;
bullet-proof vests; on-line retail store services featuring firearms and firearm parts;
and carpets, rugs, mats, and related goods.26 Citing two non-precedential Board

23 Id. at 7. Applicant made of record a dictionary definition of “vertex.” April 14, 2017
Response to Office Action p. 12. However, none of the listed definitions of “vertex” define it
as “suggest[ing] high quality and performance.” 4 TTABVUE 7.
24 Id. at 7-11. Applicant’s argument that the cited registered mark is weak for this reason is
somewhat inconsistent with its argument that Registrant’s “marks are, in fact, ‘X VERTX,’
not ‘VERTX’ alone,” id. at 5 n.2, and that the X design at the beginning of the cited registered
mark is the dominant portion of the mark. Id. at 11. We have found above, however, that the
word VERTX is the dominant portion of the cited registered mark, and that the word VERTX
is equivalent in at least sound and meaning to the word VERTEX that comprises the entirety
of Applicant’s mark.
25 Id. at 10-11.
26 April 14, 2017 Response to Office Action pp. 17-55. Applicant also made of record a list of
active marks from the TESS database (id. at 13-16), to show “the many different VERTEX
Marks – 134 live marks – in the USPTO database.” 4 TTABVUE 7. The list itself has little
probative value regarding the strength or weakness of the word VERTEX because the list
provides no information about the goods or services for which any listed mark is registered.
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decisions,27 Applicant argues that all of these goods are related to the goods identified
in the registration for the cited mark.28 The Examining Attorney responds that none
of the third-party registrations are for clothing; that they are few in number; that
they do not evidence use of the registered marks; and that Applicant’s reliance on
Juice Generation is misplaced.29
We find that Applicant’s third-party registration evidence has little probative
value. In Juice Generation, the Federal Circuit held that third-party registrations can
show “‘that some segment of the composite marks which both contesting parties use
has a normally understood and well recognized descriptive or suggestive meaning,
leading to the conclusion that that segment is relatively weak.’” Juice Generation, 115
USPQ2d at 1674 (quoting 2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 11:90 (4th ed. 2015)). But as the Examining Attorney correctly
points out,30 the services at issue in Juice Generation were juice bar services and
restaurant services, and the third-party use and registration evidence in Juice
Generation all involved restaurant services or food products. Here, none of the third-
party registrations identify the clothing items at issue. Even if some of the goods

See, e.g., Black & Decker Corp. v. Emerson Elec. Co., 84 USPQ2d 1482, 1494 (TTAB 2007);
see also Jump Designs, 80 USPQ2d at 1372.
27 In In re Breitling SA, Serial No. 79152818 (TTAB January 25, 2017), the Board found that
there was “some, but not a strong, relationship between watches and clothing.” 21 TTABVUE
8. In Alfwear Inc. v. Shuff, Opp. No. 91224467 (TTAB December 1, 2017), the Board found
that bicycles and rugged outdoor clothing are related products. 46 TTABVUE 29.
28 4 TTABVUE 7-8. Applicant also notes that two of the third-party registrations made of
record by the Examining Attorney cover both clothing, and tote bags and backpacks. Id. at 8.
29 6 TTABVUE 9.
30 Id.
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covered by the registrations might be found to be related to clothing in a hypothetical
du Pont analysis of the similarity of those goods, the third-party registrations do not
show that VERTEX is a weak or diluted mark for clothing per se. Cf. Jump Designs,
80 USPQ2d at 1375 (nine third-party registrations of JUMP-formative marks for
computer services, beverages, and athletics shoes did not show that registrant’s
JUMP DESIGNS mark for furniture could coexist with applicant’s JUMP mark for
furniture). Indeed, the “record before us shows that the only [VERTEX-formative]
mark registered in the [clothing] field is registrant’s mark.” Id.
Applicant’s evidence of use of VERTEX-formative marks similarly has little, if
any, probative value. Applicant argues that the results of its Google searches show
that “‘vertex’ is used by many companies to suggest high quality and performance.”31
The Examining Attorney responds that the search results have “little probative value
because such a list does not show the context in which the term or phrase is used on
the listed web pages and may not include sufficient surrounding text to show the
context within which the term or phrase is used.”32
As a general matter, “[s]earch engine results—which provide little context to
discern how a term is actually used on the webpage that can be accessed through the
search result—may be insufficient to determine the nature of the use of a term or the
relevance of the search results to registration considerations.” In re Bayer

31 4 TTABVUE 9. Applicant submitted the Google search results with its April 14, 2017
Response to Office Action pp. 56-81; the search was simply for the word “vertex” without any
other search terms or limitations.
32 6 TTABVUE 9.
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Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); see also In
re Thomas Nelson Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (citing cases). Even
accepting this evidence at face value, however, it tells us virtually nothing about
whether VERTEX is a weak mark for clothing, or about whether Applicant’s and
Registrant’s marks can coexist for clothing because of third-party marks containing
the word. As best we can determine from the truncated results of the searches, only
three appear to reflect the use of VERTEX in connection with clothing, and Applicant
acknowledges that two of them refer to Applicant’s own use for socks.33 The multiple
other uses of the term in fields such as medicine, dentistry, energy, boating,
laboratory equipment, cleanroom maintenance, athletic training, fasteners, and
garden supplies,34 are not probative of the strength or weakness of the term as
applied to clothing.35 Applicant’s use evidence does not support a finding that
confusion is unlikely. See Nat’l Cable Television Ass’n Inc. v. Am. Cinema Editors Inc.,
937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991) (evidence of widespread third-
party use of ACE-formative marks in various fields not probative of weakness of
petitioner’s ACE mark for presentations of awards for excellence in film editing for
motion pictures and television, or that respondent’s ACE mark for presentation of

33 4 TTABVUE 11 (referring to the April 14, 2017 Response to Office Action pp. 69 and 81).
The third result appears to refer to a type of climbing pant. April 14, 2017 Response to Office
Action p. 75. The word “vertex” suggests something other than “high quality and
performance” in this context, as one of the definitions of vertex made of record by Applicant
is “a principal or highest point: summit the vertex of the hill.” Id. at 12.
34 4 TTABVUE 9-10 (referring to the April 14, 2017 Response to Office Action pp. 56-81),
35 The same is true of the full Internet webpages made of record by Applicant that reflect use
of VERTEX for outdoor fabric (April 14, 2017 Response to Office Action pp. 82-84), and
various goods available at The Home Depot. Id. at 85-86.
Serial No. 87089154
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awards for excellence in cable television broadcasting could coexist with petitioner’s
mark, where “[n]one of the third party marks and uses of ACE made of record are
nearly as closely related to the activities of the parties as the virtually identical uses
of the parties are to each other other.”). This du Pont factor is neutral.
D. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, as they pertain to the relevant du Pont factors. To
the extent that any other du Pont factors not discussed by Applicant may nonetheless
be applicable, we treat them as neutral. We conclude that Applicant’s standard
character mark VERTEX is very similar to the cited registered mark
. We further conclude that the goods identified in the
application and cited registration are closely related and that they move through the
same channels of trade to the same classes of purchasers. We therefore find that
Applicant’s mark is likely to cause confusion with the cited registered mark when
used on the goods identified in the application.
Decision: The Section 2(d) refusal to register is affirmed.