Cashere Jeanel AshmeadeDownload PDFTrademark Trial and Appeal BoardSep 2, 202087517030 (T.T.A.B. Sep. 2, 2020) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: September 2, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Cashere Jeanel Ashmeade _____ Serial No. 87517030 _____ Adam Alba of Magleby Cataxinos & Greenwood, for Cashere Jeanel Ashmeade. Nicholas K. D. Altree, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney. _____ Before Taylor, Shaw and Pologeorgis, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: Cashere Jeanel Ashmeade (“Applicant”) seeks registration on the Principal Register of the mark STYLEBUY, in standard characters, for services identified as: Wholesale buying club services; Wholesale buying club services in the field of fashion, accessories, lifestyle and home products; Wholesale distributorships featuring fashion, accessories, lifestyle and home products; On-line wholesale store services featuring clothing, accessories, lifestyle, and home products through a global or other computer network technologies, in International Class 35.1 1 Application Serial No. 87517030, filed on July 5, 2017, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s allegation of first use of the mark anywhere Serial No. 87517030 - 2 - The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the mark STYLE BUYS, in standard characters, registered for the following goods and services: Backpacks; Luggage; Purses; Tote bags; Umbrellas; Wallets, in International Class 18;2 Clothing, namely, bathrobes, beach cover-ups, beachwear, belts, blouses, boxer shorts, bras, camisoles, caps, coats, dresses, footwear, gloves, halter tops, hats, headbands, hosiery, jackets, jeans, jogging suits, knee highs, knit shirts, knit tops, loungewear, mittens, night gowns, night shirts, pajamas, panties, pants, scarves, shirts, shorts, skirts, slacks, sleepwear, socks, sweat pants, sweat shirts, sweat shorts, sweat suits, sweaters, swim wear, t-shirts, tank tops, ties, tights, underpants, undershirts, underwear and vests, in International Class 25;3 and Retail store services featuring clothing; online retail store services featuring clothing, in International Class 35.4 When the refusal was made final, Applicant appealed and requested reconsideration. The Examining Attorney denied the request for reconsideration, and the appeal resumed. The case is fully briefed.5 We affirm the refusal to register. on August 7, 2013 and in commerce on November 11, 2016. 2 Registration No. 5105891, issued December 20, 2016. 3 Registration No. 5105890, issued December 20, 2016. 4 Registration No. 5105893, issued December 20, 2016. 5 Page references herein to the application record refer to the online database of the USPTO’s Trademark Status & Document Retrieval (“TSDR”) system. All citations to documents contained in the TSDR database are to the downloadable .pdf versions of the documents in the USPTO TSDR Case Viewer. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1402 n.4 (TTAB 2018). References to the briefs on appeal refer to the Board’s TTABVUE docket system. Before the TTABVUE designation is the docket entry number, and after this designation are the page references, if applicable. Serial No. 87517030 - 3 - I. Preliminary Issues A. Applicant’s motion to divide On the same day Applicant filed her reply brief, Applicant concurrently filed a motion to divide to move all services related to “lifestyle and home products” into a separate application.6 The motion, however, did not include the additional fees required to divide the application, nor did it include a request to remand the application to the Examining Attorney for consideration of the amendment.7 The Board denied the motion as untimely, noting that the case was fully briefed, and forwarded the reply brief to the Examining Attorney.8 Applicant then filed a supplemental motion to divide, explaining that she had tried to file a request to divide via the Trademark Electronic Application System (“TEAS”) with her notice of appeal, but encountered technical difficulties and was unable to complete the request to divide at that time.9 The Board considered Applicant’s supplemental motion to divide as a request for reconsideration of the denial of the motion but noted numerous shortcomings in both Applicant’s original effort to divide the application and the subsequent motion to divide.10 For example: TEAS does not allow the filing of a request to divide an application, as in this case, once an appeal has been filed; 6 15 TTABVUE. Applicant’s main brief referenced a “motion to divide” but stated “[t]o the extent necessary, Applicant will also submit a separate motion to divide under separate cover in the coming days.” Applicant’s Br., p. 4 n.2, 12 TTABVUE 9. The motion was not submitted until Applicant filed her reply brief more than 11 weeks later. 7 15 TTABVUE. 8 16 TTABVUE. 9 19 TTABVUE. 10 20 TTABVUE. Serial No. 87517030 - 4 - Applicant unduly delayed in filing the motion to divide and did not request remand to address the new issues raised; and Applicant did not indicate which services should go in which application, and whether she would continue the appeal in one or both applications.11 Nevertheless, due to the technical difficulties experienced by Applicant, the Board remanded the case to the Examining Attorney and allowed Applicant sixty days “to file a Request to Divide Application through TEAS with the requisite fee, failing which the Examining Attorney must return the file to the Board, and the Board will issue an order denying the March 25, 2020 Request for Reconsideration and resuming the appeal.12 Upon remand, Applicant filed a request to divide through TEAS, but did not do so until the sixty-first day after the remand order. The Examining Attorney therefore denied the request to divide as untimely, and returned the case to the Board for resumption of the appeal.13 Given the untimeliness of Applicant’s request to divide the application, filed through TEAS, we have not considered the request. The identification of services as filed remains the operative identification. In any event, as discussed below, the amendment to the recitation of services to divide out all services related “lifestyle and home products” would not obviate the refusal to register under Section 2(d). 11 Id. 12 Id. at 6. 13 21 TTABVUE. Serial No. 87517030 - 5 - B. Evidence submitted with Applicant’s reply brief With her reply brief, Applicant submitted a number of exhibits, including office actions from the application underlying a previously registered but now cancelled mark, excerpts from magazines and third party websites, and purported examples of use of Registrant’s mark. These exhibits are manifestly untimely. The evidentiary record in an application should be complete prior to the filing of an ex parte appeal to the Board. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB 2013) (new evidence submitted with reply brief is “untimely and therefore not part of the record for this case”); In re HSB Solomon Assocs. LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (printouts submitted with reply brief not considered). If Applicant wished to have new evidence considered by the Examining Attorney after appeal, she should have requested remand for the submission of additional evidence and provided a showing of good cause as to why the evidence was not filed prior to appeal. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1207.02 (2020). Because the materials were not filed prior to the appeal, they will be given no further consideration by the Board. II. 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) (“DuPont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We must consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. Serial No. 87517030 - 6 - 2019). In any likelihood of confusion analysis, two key considerations are the similarities between the goods or 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.”). A. The number and nature of similar marks for similar services Before reaching the degree of similarity of the marks, we address Applicant’s evidence and argument under the sixth DuPont factor, “[t]he number and nature of similar marks in use on similar goods [or services],” DuPont, 177 USPQ at 567, as this may impact the scope of protection accorded the cited registrations. The Federal Circuit has held that evidence of the extensive registration and use of similar marks by others in the field can be powerful evidence of a mark’s weakness. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). The strength of a mark may be assessed based on its conceptual strength arising out of the nature of the mark itself and its commercial strength, derived from the marketplace recognition of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010). Of course, because Registrant’s mark is registered, it is presumptively valid and distinctive for the identified goods and services. Trademark Act Sections 7(b) and 33(a), 15 U.S.C. §§ 1057(b) and 1115(a); In re Fiesta Palms LLC, 85 USPQ2d 1360, Serial No. 87517030 - 7 - 1363 (TTAB 2007). Nonetheless, we may acknowledge the weakness of a registered mark in the course of a DuPont analysis. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517-18 (TTAB 2016). Applicant argues that given the number of other registered marks containing the term “style,” Registrant’s mark is relatively weak and entitled to a narrow scope of protection, thereby virtually eliminating any likelihood of confusion: Active third-party registrations of marks may be relevant to show that a mark or a portion of a mark is so commonly used that the public will look to other elements to distinguish the source of the goods or services. . . . Evidence of third-party use is relevant to show that the mark is relatively weak and entitled to only a narrow scope of protection. . . . Here, there are dozens of marks on the registry in the same categories as the Registered Marks that use similar terms as those used by Registered Marks. . . . [Third-party registration] evidence shows the Registered Marks are weak, and that a likelihood of confusion is practically nonexistent.14 To support this argument, Applicant introduced more than forty third-party registrations for marks comprising the term “style,” registered for clothing, fashion accessories, jewelry, and household goods, as well as for retail, wholesale, or online store services selling these goods. The following examples are representative:15 Mark Reg. No. Relevant Goods or Services STYLEBONE and design 4168786 Jewelry; and On-line wholesale and retail store services featuring jewelry STYLEBUREAU. 5729899 On-line retail store services featuring apparel, leather goods, headwear, footwear, watches and fashion accessories 14 Applicant’s Br., p. 16, 12 TTABVUE 21. (Internal citations omitted). 15 Applicant’s request for reconsideration dated October 3, 2019, TSDR 16-142. Serial No. 87517030 - 8 - Mark Reg. No. Relevant Goods or Services STYLESTOP 4695902 Retail stores featuring apparel, apparel accessories, handbags, hats, scarves, jewelry and shoes STYLEWORD and design 5275712 Bathing suits; . . . Belts; Bikinis; Blouses; Bottoms; Bras; Briefs; Caps; Coats; Dresses; Gloves; . . . Hats; Jackets; Leather coats; Leather jackets; Pants; Shirts; Sweat suits; Swimsuits; . . . Underwear; Vests; . . . Wearable garments and clothing, namely, shirts STYLEYOU 5341938 On-line retail store services featuring new and used luxury goods; On-line retail store services featuring new and used handbags; On-line retail store services featuring authenticated luxury goods; On-line retail store services featuring authenticated new and used handbags STYLE DOME (STYLE disclaimed) 5830955 Camisoles; Coats; Dresses; Hosiery; Jackets; . . . Leather coats; Leather jackets; . . . Outer jackets; Overalls; Overcoats; Parkas; Ponchos; Raincoats; Scarves; Shawls; Shirts; Short-sleeve shirts; Skirts; . . . Sweaters; Tee-shirts; Trousers; Waistcoats; Wind coats; Jerseys; Morning coats; Over coats; Winter coats STYLE CIRCLE 5335731 Retail store services in the field of clothing, shoes, fashion accessories and clothing accessories; . . . membership club services in the nature of providing discounts to members in the field of clothing, shoes and fashion accessories THE STYLE CLUB and design 5154754 Women’s clothing, namely, shirts, dresses, skirts, blouses; Women’s hats and hoods STYLE FACTOR (STYLE disclaimed) 5747447 Aprons; Beanies; Baseball caps and hats; Knitted caps; Sports caps and hats STYLE FINDER and design (STYLE disclaimed) 5390461 Retail clothing boutiques STYLE FOR EVERYONE 5626191 [R]etail store services and online retail store services featuring clothing, namely, coats, outerwear, women’s sportswear, men’s wear, children’s and infant’s wear, footwear, socks and hosiery, and clothing Serial No. 87517030 - 9 - Mark Reg. No. Relevant Goods or Services accessories for adults, children and infants, . . . housewares, bed and bath linens, window treatments, furniture accessories and decorative accessories, luggage, bookbags, totebags and valises for adults, children and infants, and miscellaneous giftwares STYLE FOR LIFE 5393009 Retail store, mail order catalog and online retail store services featuring women’s clothing, footwear, headgear, clothing accessories, bags, handbags, leather goods, small leather accessories, wallets, sunglasses and eyeglasses, eyewear, jewelry, watches, hair accessories and giftware STYLE HAVEN (STYLE disclaimed) 5762212 [O]nline retail store services featuring apparel, apparel accessories, jewelry accessories and handbag accessories, and bath and body care products STYLE ME and design (STYLE disclaimed) 5708698 Retail store services featuring fashion goods Because Applicant did not provide evidence of any third-party use of marks consisting of or comprised of the term “style” for clothing, fashion accessories, jewelry, household goods, or services related to selling these goods, we have no evidence of commercial weakness. See Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (“Evidence of third-party use of similar marks on similar goods [or services] is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”); Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059 (TTAB 2017) (“As to commercial weakness, ‘the probative value of third-party trademarks depends entirely upon their usage’”) (quoting Palm Bay, 73 USPQ2d at 1693). Serial No. 87517030 - 10 - However, third-party registrations alone may be relevant, in the manner of dictionary definitions, “to prove that some segment of the [marks] 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 1675 (internal quotation marks omitted). See also Jack Wolfskin, 116 USPQ2d at 1136. The foregoing evidence therefore impacts the conceptual strength of “style” formative marks. The fact that a number of “style” formative terms have been registered for use in connection with clothing, fashion accessories, jewelry, household goods, and services related to selling these goods indicates that “style” in this context suggests the goods are fashionable or distinctive. Thus, we agree with Applicant that “style” formative marks have some conceptual weakness in association with clothing, fashion accessories, jewelry, household goods, and services related to selling these goods. See Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (stating that likelihood of confusion fame varies along a spectrum from very strong to very weak). None of the cited third-party registrations, however, consist solely of the term “style.” All of the marks listed by Applicant—including Registrant’s mark—have other matter besides the term “style” to distinguish them from each other. Only Applicant’s Registrant’s mark include both of the terms “style” and “buy.” In other words, of all the listed “style” formative marks, Applicant’s mark and the cited mark are the most similar. Serial No. 87517030 - 11 - Nevertheless, we find the cited mark has some inherent weakness, but we must treat the mark at worst as “highly suggestive” because it is registered on the Principal Register without a disclaimer of or claim of acquired distinctiveness. Fiesta Palms LLC, 85 USPQ2d at 1363. Moreover, even weak marks are entitled to protection against confusion. See Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010); see also King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). B. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression. Under the first DuPont factor, we determine the similarity or dissimilarity of Applicant’s mark and the mark in the cited registrations in their entireties, taking into account their appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay 73 USPQ2d at 1692. The emphasis of our analysis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. Applicant mark is STYLEBUY in standard characters. The cited mark is STYLE BUYS, also in standard characters. The marks are virtually identical, the only differences between them being that Applicant’s mark is the singular form of Registrant’s mark, and is a compound term, whereas Registrant’s mark includes a space between the words. Because the absence of an “S” from the term BUY in Applicant’s mark does nothing to distinguish its meaning from the meaning conveyed by the cited mark, other than making it singular, it is a distinction with very little, if Serial No. 87517030 - 12 - any, material difference. Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (the singular and plural forms of SHAPE are essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (CCPA 1957) (no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark). Similarly, removing a space between the terms STYLE and BUY is essentially irrelevant, because the marks still convey the same commercial impression, of a fashionable purchase or purchases. See e.g., Stockpot, Inc. v. Stock Pot Rest., Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (finding STOCKPOT and STOCK POT confusingly similar); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (BEEFMASTER and BEEF MASTER found “practically identical”). Obviously, Applicant’s removal of a space between the words and Registrant’s pluralization of BUYS barely change the appearance or sound of the marks, and thus they are highly similar, indeed almost identical, in appearance, sound, connotation and commercial impression. This factor therefore not only weighs heavily in favor of finding a likelihood of confusion, but also reduces the degree of similarity between the goods and services required to support a finding of likelihood of confusion. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner Entm’t Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). Serial No. 87517030 - 13 - C. The nature and similarity or dissimilarity of the goods, the established, likely- to-continue trade channels, and the classes of purchasers. We next consider the similarity of Applicant’s services and Registrant’s goods and services, keeping in mind that the goods and services of the parties 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, 1475 (Fed. Cir. 2000). The respective goods and 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, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). We need not find similarity as to each and every service listed in an Applicant’s identification. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of services in a particular class in the application. See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a single good from among several may sustain a finding of likelihood of confusion); 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). As noted above, Applicant’s services include “On-line wholesale store services featuring clothing, accessories, lifestyle, and home products through a global or other computer network technologies.” Registrant’s goods and services include: accessories Serial No. 87517030 - 14 - such as backpacks, luggage, purses, tote bags, umbrellas, and wallets; a variety of clothing articles; and retail store services featuring clothing. Applicant argues that her services and Registrant’s goods and services are different because “Applicant deals in the wholesale realm of fashion, accessories, and lifestyle products. By contrast, the registered marks have nothing to do with wholesale services. Indeed, the Registered Mark associated with Class 35 specifically references retail services. This difference is crucial.”16 This argument is unpersuasive. The Examining Attorney submitted numerous active, use-based, third-party registrations demonstrating that a number of entities have registered a single mark for clothing and accessories, as well as for retail and wholesale store services selling these goods. A number of these registrations also include the sale of home products. By way of illustration, we note the following:17 Mark Reg. No. Relevant Goods or Services Flower design 4702823 Jackets; Scarves; Women’s clothing, namely, shirts, dresses, skirts, blouses; and On-line retail store services featuring clothing; Retail apparel stores; Wholesale store services featuring clothing BELLA TU 4879458 Women’s clothing, namely, tunics, caftans, shirts, dresses, blouses, pants; and On-line retail store services featuring clothing; On-line wholesale store services featuring clothing MR PRINTS and design 4905892 [A]pparel and clothing, namely, shirts, shoes, pants, jackets, blouses, tank tops, socks, dresses, scarfs, and belts; footwear; and headgear, namely, hats, head wraps and bandanas; and 16 Applicant’s Br., p. 7, 12 TTABVUE 12. 17 Office Action of September 29, 2017; Office Action of April 3, 2019; Office Action of October 7, 2019. Serial No. 87517030 - 15 - Mark Reg. No. Relevant Goods or Services [W]holesale store services featuring clothing and apparel; retail store services featuring clothing and apparel STYLZOO 4812992 A variety of clothing articles; and On-line wholesale and retail store services featuring clothing and apparel HEMP QUEEN 2636207 [C]lothing, namely shoes, socks, pants, skirts, dresses, shorts, shirts, tops, jackets, sweaters, underwear, bras, scarves, belts and hats made in whole or substantially in part of hemp; and [R]etail store, wholesale and online retail store services featuring clothing made in whole or substantially in part of hemp PRETTIES 5163219 Retail store services, . . . all featuring clothing, swimwear, headwear, footwear, leather goods, bags and home goods; Wholesale store services featuring clothing, swimwear, headwear, footwear, leather goods, bags and home goods IT’S ALL ABOUT THE O. 2968790 [O]nline wholesale and online retail store services featuring clothing, shoes, bath and body products, jewelry, electronics, cookware, housewares, appliances, furniture, linens, pillows, decorative accessories SEASBUSINESS 5258767 Online wholesale and online retail store services featuring clothing, foods, beverages, fruits, health products, electronics, carrying all goods together THE HOUSE OF JANE 5303076 Retail and Wholesale store services featuring clothing, nutritional supplements, soft drinks, household appliances, vaping accessories, jewelry, and furniture CAPELLI 3425726 Retail stores featuring fashion, accessories, clothing, jewelry, toys, cosmetics, home fashions, handbags, and sunglasses; Wholesale stores featuring fashion, accessories, clothing, jewelry, toys, cosmetics, home fashions, handbags, and sunglasses ORGANICALLY GROWN and design 4230338 Wholesale and retail store services and on-line retail and wholesale store services featuring goods which are all made from organically grown materials, namely, men’s, women’s and children’s clothing, footwear, headgear, apparel, fashion accessories, and a variety of Serial No. 87517030 - 16 - Mark Reg. No. Relevant Goods or Services goods, home furnishings, stationery and paper products, personal care accessories, toys TRAILCREST 5746295 Retail stores services, wholesale stores services, . . . all of the aforesaid featuring bags and accessories therefor, clothing and accessories therefor, footwear, headwear, bedding and linens, towels and pet products MASAKALI 5789581 On-line wholesale and retail store services featuring kitchen accessories and products, sporting goods, clothing, Jeans, hoodies, ladies cloths [sic], men cloths [sic], foot wear and headwear, furniture, cutleries, paper plates and cups, kitchen knives, dinning set and accessories, kitchen goods holders, Electronics, lawn and patio goods, office supplies, toys JOLIMOLI 5813649 [O]nline retail and wholesale store services featuring a wide variety of clothing, toys, bedding, household products, skincare and grooming products, and fashion accessories for babies and children As a general proposition, although use-based third-party registrations alone are not evidence that the marks shown therein are in use or that the public is familiar with them, they nonetheless may have probative value to the extent they may serve to suggest that the goods and services are of a kind that emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Here, the foregoing evidence demonstrates that consumers may expect to find both Applicant’s wholesale store services in the field of fashion, accessories, lifestyle and home products, and Registrant’s bags, umbrellas, wallets, clothing, or retail store services featuring clothing, to be offered under the same mark. For example, Serial No. 87517030 - 17 - consumers familiar with Registrant’s clothing and accessories could think Applicant’s wholesale store services featuring clothing, accessories, lifestyle, and home products were related. It is well recognized that confusion may be likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods, on the other. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (“[W]e have held that confusion is likely where one party engages in retail services that sell goods of the type produced by the other party[.]”); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S (stylized) for retail grocery and general merchandise store services and BIGGS and design for furniture likely to cause confusion); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding similar marks used in connection with distributorship services in the field of health versus beauty aids and skin cream likely to cause confusion). Similarly, consumers familiar with Registrant’s retail store services featuring clothing could think Applicant’s wholesale store services featuring clothing, accessories, lifestyle, and home products are related as well. This is supported by the following five business articles submitted by the Examining Attorney showing that “that wholesalers and retailers of clothing and accessories now compete directly with one another, as more and more wholesalers also sell directly to consumers through their own retail store websites.”18 How The Digital Economy Is Blurring Industry Boundaries (digitalistmag.com): this article discusses how the digital economy is 18 Examining Attorney’s Br., 14 TTABVUE 16; Office Action of October 7, 2019, TSDR 58-99. Serial No. 87517030 - 18 - blurring the distinctions between traditional channels of trade, such as wholesale and retail channels. The article states that consumer product manufacturers “are moving away from wholesale distribution in favor of selling direct – either online or in brick-and-mortar retail stores – enabling a more personalized experience.” The Future Of Retail Could Be In The Hands Of The Brand Manufacturers (blog.wiser.com): this article discusses how “[t]he line between retailers and manufacturers is becoming blurred.” The article states that “the best way to maximize reach is to sell through both your own website and retail channels. Many . . . already sell on both retail and direct channels, typically online . . . [n]ow is the time to take more ownership of your brand and start selling directly to consumers.” Should Wholesale Brands Start Selling Direct-To-Consumer? (tinuiti.com): this article discusses the emergence of direct-to-consumer retail channels as a supplement to traditional wholesale channels. The article states that “channels like Facebook, Google Shopping, Pinterest, and of course Amazon – offer traditional wholesale brands an opportunity to expand into the world of selling direct to consumer.” How Manufacturers Sell Directly To Consumers (thebalancesmb.com): this article discusses how “[t]he Internet is changing how wholesalers do business.” The article states that “with the rise of the internet and small businesses leveraging websites, that [wholesale] business model is evolving rapidly. Manufacturers are increasingly skipping wholesalers altogether and are selling directly to their consumers . . . . With same day shipping and overnight service, getting a special item or garment can be done from the comfort of a couch, making it more difficult for traditional wholesalers and retailers to attract customers.” Retailers Beware: More Companies Now Selling Direct (forbes.com): this article explains that wholesalers are changing to a direct-to-consumer business model, “a trend that is largely being driven by the Internet.” The article concludes that “[b]rick-and-mortar retailers are already under attack by Amazon. Now, retailers must also worry about their wholesalers selling direct via the Internet. . . . [Wholesalers] will follow the customers and the money.” Applicant also seeks to distinguish her services from Registrant’s by arguing that her services are offered to “sophisticated wholesale purchasers”19 whereas 19 Applicant’s Br., p. 11, 12 TTABVUE 16. Serial No. 87517030 - 19 - Registrant’s goods and services are directed to “young girls.”20 This argument is unavailing. In making our determination regarding the relatedness of the goods and services, we must look to them as identified in the application and cited registrations which contain no limitations as to consumer sophistication or age. See Stone Lion Capital, 110 USPQ2d at 1162 (quoting Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.”)). Similarly, Applicant’s argument that “the holder of the Registered Marks appears to have discontinued its use of the mark on its website”21 also is unavailing. Such an argument constitutes an impermissible collateral attack on the cited registrations. As explained above, under Trademark Act Section 7(b), a certificate of registration is prima facie evidence of the validity of the registration. 15 U.S.C. § 1057(b). If an applicant believes a cited registration is abandoned, those arguments will not be heard in an ex parte proceeding; instead the applicant must petition to cancel the registration. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); Fiesta Palms, 85 USPQ2d at 1363; TRADEMARK MANUAL OF EXAMINING PROCEDURE § 716.02(a) (October 2018). 20 Id. 21 Id. at 12, 12 TTABVUE 17. Serial No. 87517030 - 20 - Regarding channels of trade and classes of consumers, we base our determination regarding the similarities between the channels of trade and classes of purchasers on the goods and services as they are identified in the application and the cited registrations. Octocom, 16 USPQ2d at 1787; Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Applicant’s application and the cited registrations contain no limitation as to channels of trade or classes of customers, and we decline to read any such limitation into them. Squirtco, 216 USPQ at 940. The only evidence relating to the trade channels through which the goods and services at issue travel are business articles submitted by the Examining Attorney and the third-party registrations discussed above. This evidence shows that Applicant’s wholesale store services featuring clothing, accessories, lifestyle, and home products, and Registrant’s retail clothing and accessories store services, may be offered via the same channels of trade to all relevant classes of purchasers, i.e., individuals interested in clothing, accessories, lifestyle, and home products. That is, the respective goods and services, as identified, would be provided in the same or at least overlapping channels of trade to the same or overlapping classes of purchasers. The DuPont factors regarding the similarity of the goods and services, channels of trade, and classes of purchasers favor a finding of a likelihood of confusion. D. Conclusion We find Applicant’s mark is highly similar to the cited mark, outweighing any conceptual weakness. Applicant’s services and Registrant’s goods and services are related, and the channels of trade and classes of consumers are overlapping, if not the same. We conclude that there is a likelihood of confusion between Applicant’s Serial No. 87517030 - 21 - mark, STYLEBUY, and the cited mark, STYLE BUYS, for the respective goods and services. Decision: The refusal to register Applicant’s mark is affirmed. Copy with citationCopy as parenthetical citation