GTFM, Inc.v.Guy R. Wilson, Jr.

Trademark Trial and Appeal Board

Dec 27, 2007

No. 91170761 (T.T.A.B. Dec. 27, 2007)

Mailed:
December 27, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

GTFM, Inc.
v.
Guy R. Wilson, Jr.
_____

Opposition No. 91170761
to application Serial No. 78681938
filed on July 29 2005
_____

Peter J. Vranum of Janvey, Gordon, Herlands, Randolph & Cox
LLP for GTFM, Inc.

Guy R. Wilson pro se.
______

Before Zervas, Cataldo and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

On July 29, 2005, Guy R. Wilson filed an intent-to-use
application for the mark FYBY FOR Y’ALL BY Y’ALL and
design, shown below, for “silk screen painting on
clothing,” in Class 40 (Serial No. 78681938).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91170761
2
GTFM, Inc. filed an opposition to the registration of
applicant’s mark on the grounds of priority of use and
likelihood of confusion and dilution. Opposer alleged that
applicant’s mark, when used in connection with applicant’s
services, so resembles opposer’s FUBU marks for clothing as
to be likely to cause confusion.1 Opposer claimed ownership
of the following FUBU registrations:
1. Registration No. 1910169 for the mark F.U.B.U.,
in block letters, for “men’s, women’s and children’s
clothing, namely, sweatshirts, shirts, jeans, jackets,
coats, sweatpants, slacks, suits, hats, headbands, visors,
caps, dresses, shoes, sneakers, boots, wristbands, socks,
t-shirts, belts, undergarments, neckties, dress shirts,
collared shirts, rugby shirts, knit shirts, shorts, and
sandals,” in Class 25;2
2. Registration No. 2403324 for the mark FUBU, in
typed drawing form, for “clothing, namely shirts, vests,
sweaters, shoes, caps, bandanas, shorts, sweat shirts,
pants, belts for clothing, socks, swimwear, jackets,

1 Although opposer alleged that the use and registration of
applicant’s FYBY mark will dilute the distinctive character of
opposer’s FUBU mark, it did not allege or prove that its FUBU
mark became famous prior to the filing date of the application.
In addition, opposer did not raise the dilution claim in its
brief. In view of the foregoing, opposer is deemed to have
waived its dilution claim, and we will give it no further
consideration.
2 Registration No. 1910169, issued August 8, 1995; Sections 8 and
15 affidavits accepted and acknowledged; first renewal.
Opposition No. 91170761
3
rainwear, blouses, dresses, footwear, hosiery, scarves,
hats, head bands, pajamas and sleepwear,” in Class 25;3
3. Registration No. 2068058 for the mark FUBU and
design, shown below, for “men’s, women’s and children’s
clothing, namely, sweatshirts, shirts, jeans, jackets,
coats, sweatpants, slacks, suits, hats, headbands, visors,
caps, dresses, shoes, sneakers, boots, wristbands, socks,
t-shirts, belts, undergarments, neckties, dress shirts,
collared shirts, rugby shirts, knit shirts, shorts and
sandals,” in Class 25;4 and,

4. Registration No. 2068059 for the mark FUBU JEANS,
shown below, for “men’s, women’s and children’s clothing,
namely, sweatshirts, shirts, jeans, jackets, coats,
sweatpants, slacks, suits, hats, headbands, visors, caps,
dresses, shoes, sneakers, boots, wristbands, socks, t-
shirts, belts, undergarments, neckties, dress shirts,

3 Registration No. 2403324, issued November 14, 2000; Sections 8
and 15 affidavits accepted and acknowledged.
4 Registration No. 2068058, issued June 3, 1997, Sections 8 and
15 affidavits accepted and acknowledged; first renewal.
Opposition No. 91170761
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collared shirts, rugby shirts, knit shirts, shorts, and
sandals,” in Class 25.5

Only opposer filed a brief.

The Record

By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the application file
for applicant’s mark. The record also includes the
following testimony and evidence:
A. Opposer’s evidence.
Opposer’s evidence comprises the testimony deposition
of Lawrence Blenden, opposer’s general counsel, with
attached exhibits. In his deposition, Mr. Blenden
identified opposer’s pleaded registrations referenced
supra, and confirmed that they are owned by opposer and
that they are valid and subsisting.6
B. Applicant’s evidence.
Applicant did not introduce any testimony or evidence.

5 Registration No. 2068059, issued June 3, 1997; Sections 8 and
15 affidavits accepted and acknowledged.
6 Blenden Deposition, pp. 8-10; Exhibits 3-6.
Opposition No. 91170761
5
Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).

Priority

Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108 (CCPA 1974).

Likelihood of Confusion

Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the 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
Opposition No. 91170761
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goods and/or services. See In re Dixie Restaurants Inc.,
105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); Federated
Foods, Inc. v. Fort Howard Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn first to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont De Nemours &
Co., supra. In a particular case, any one of these means
of comparison may be critical in finding the marks to be
similar. In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB
1988). See also, In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988). In comparing the marks, we are mindful
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 so that confusion as to
the source of the goods offered under the respective marks
is likely to result. 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
USPQ 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086
Opposition No. 91170761
7
(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. 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).
We find that dominant feature of applicant’s mark is
the letters FYBY.7 Applicant’s mark is a composite mark
consisting of the words FOR Y’ALL BY Y’ALL located over the
design element of the mark comprising the letters FYBY
superimposed on the drawing of a Confederate flag.
However, the letters FYBY form the dominant part of the
mark because they cover the entire Confederate flag, and
they are much larger than words FOR Y’ALL BY Y’ALL. In
fact, letters are the feature that first grabs the viewers’
attention. In addition, the letters FYBY mean FOR Y’ALL
B’YALL. FOR Y’ALL B’YALL is “Southern slang for ‘For You
By You.’”8 Because the acronym FYBY is the dominant element
of applicant’s mark, we accord that feature more weight in
our comparison of the marks. In re Chatam International
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004);
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751

7 Applicant concedes that FYBY is the dominant element of its
mark. (Answer ¶6).
8 Answer ¶2.
Opposition No. 91170761
8
(Fed. Cir. 1985) (“there is nothing improper 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 consideration of the marks in
their entireties”).
Moreover, it is the acronym FYBY that will be
recognized and used by purchasers as the primary means of
source identification. In cases where a mark comprises
both a word and a design, the word is normally accorded
greater weight because purchasers will use the words to
request the goods identified by the mark. In re Dakin’s
Miniatures Inc., 59 USPQ2d 1593, 1554 (TTAB 2001); In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1976).
Although the applicant’s mark is highly stylized, the
design of applicant’s marks is not sufficient to
distinguish it from opposer’s Registration No. 2403324 for
the mark FUBU in typed drawing form. If a mark (in either
an application or a registration) is presented in standard
characters, the owner of the mark is not limited to any
particular depiction. The rights associated with a mark in
standard characters reside in the wording (or other literal
element, e.g., letters, numerals, punctuation) and not in
any particular display. Therefore, an applicant cannot, by
presenting its mark in special form, avoid likelihood of
Opposition No. 91170761
9
confusion with a mark that is registered in standard
characters because the registered marks presumably could be
used in the same manner of display. See, e.g., In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re
Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB
1988); Sunnen Products Co. v. Sunex International Inc., 1
USPQ2d 1744, 1751 (TTAB 1987); In re Hester Industries,
Inc., 231 USPQ 881, 883, n.6 (TTAB 1986).
In this case, both marks comprise an arbitrary
combination of letters: FUBU and FYBY. The letters FUBU
and FYBY are clearly discernable and trigger the initial
impact of the marks. As discussed supra, it is not
unrealistic to assume that consumers may not keep in mind
the precise letters of the marks, and thus be able to
differentiate FYBY from FUBU. To the extent that the marks
are alike because they both have the same structure (i.e.,
they begin with the letter “F” followed by a vowel, the
letter “B,” and then the initial vowel), and taking into
account that the marks may be encountered by the same
consumers, we find the similarities in the appearance of
the marks outweigh the differences. Moreover, we must keep
in mind that it is more difficult to remember a series of
arbitrarily arranged letters that it is to remember words,
figures, or phrases. Weiss Associates, Inc. v. HRL
Opposition No. 91170761
10
Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed.
Cir. 1990); Edison Brothers Stores v. Brutting E.B. Sports
International, 230 USPQ 530, 533 (TTAB 1986).
In addition, the marks engender similar meanings and
commercial impressions. The record shows that opposer’s
mark FUBU stands for “For Us, By Us.” However, according
to Lawrence Blenden, FUBU “is also throughout the country
understood by many customers and non-customers who know of
the FUBU mark as having a secondary meaning of ‘for you, by
you.’”9 Opposer’s Exhibit 12 consists or excerpts from
Internet articles or blogs in which the authors have
explained that the FUBU trademark means “For You, By You.”
TIPS: Urban Design and Advertising

Watch how the younger people dress,
Popper said. Watch brands like Phat
Farm, Nichi, FUBU (“for you by you)
came out with a line of Fat Albert
clothing, (“Hey, Hey, Hey!”), based on
he old animated character voiced by
Bill Cosby.

Hip-Hop Style: What is Cool?

I think you need a little fashion
update. Tommy Hilfiger is still in
style. However, here in the south, the
trend is FuBu, which means “for you by
you.”

9 Blenden Deposition, pp. 16-19; Exhibit 12.
Opposition No. 91170761
11
In addition, Mr. Blenden testified about a song “Fatty
Girl” produced by Universal Music and FUBU Records, LLC.
The song has the following lyrics:
I mean in them jeans, your shape is
beautiful and I’m for you, by you, like
FUBU.

An accompanying music video was produced and aired on Black
Entertainment Television and MTV.10
Because FUBU is associated with the phrase “For You,
By You,” we find that its connotation is similar to the
phrase “FOR Y’ALL BY Y’ALL” in applicant’s mark.
Finally, the marks are similar in sound because they
have the same rhythm and cadence when they are spoken, and
they both feature the letters “F” and “B” in the same
position.
In view of the foregoing, when we consider the marks
as a whole, we find that the marks are similar in terms of
appearance, sound, meaning and commercial impression.
B. The similarity or dissimilarity and nature of the
goods; and,

C. The similarity or dissimilarity of established,
likely-to-continue trade channels.

It is well settled that likelihood of confusion is
determined on the basis of the goods as they are identified
in the application and the cited registration. Hewlett-

10 Blenden Deposition, p. 19..
Opposition No. 91170761
12
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002); In re Elbaum, 211 USPQ 639,
640 (TTAB 1981); In re William Hodges & Co., Inc., 190 USPQ
47, 48 (TTAB 1976). We cannot read any limitations or
restrictions into the description of goods and services.
Octocom Systems, Inc. v. Houston Computers Services 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”); CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983). If the
application and/or opposer’s registrations describe the
goods and services broadly, and there is no limitation as
to the nature, type, channels of trade or class of
purchasers, it is presumed that the application and/or
opposer’s registrations encompass all the goods and/or
services of the type described, that they move in same
channels of trade normal for these goods and/or services,
and that they are available to all classes of purchasers
Opposition No. 91170761
13
for the described goods and/or services. In re Linvest
S.A., 24 USPQ2d 1716 (TTAB 1992).
Applicant describes his services as follows:
Applicant . . . is engaged in the Silk
(sic) screening of designs onto T-
shirts. The designs come from the
general public, Silk (sic) screened
onto T-shirts and offered back to the
public for sale.11

Applicant has used and presently uses
the mark “F.Y.B.Y.” and design on T-
shirts using the Silk (sic) screening
process described.”12

On the other hand, opposer’s registrations describe
the clothing products broadly and without limitation as to
style, price, channels of trade or classes of purchasers.
Consequently, the clothing identified in opposer’s
registrations may include t-shirts and sweatshirts with
silkscreen designs sold to all potential consumers,
including ordinary consumers. Also, applicant’s
description of services is without any restrictions or
limitations, and applicant has stated in his answer that
“[t]he designs come from the general public, Silk (sic)
screened onto T-shirts and offered back to the public for
sale.”13 Therefore, we consider applicant’s silkscreen
painting services as being available to all potential

11 Answer, ¶1.
12 Answer, ¶2.
13 Answer, ¶1.
Opposition No. 91170761
14
consumers of clothing, including ordinary consumers.
Accordingly, opposer’s clothing products and applicant’s
services of silkscreen painting on clothing move in the
same channels of trade and are sold to the same class of
purchasers.
It is well settled that the goods and services of the
applicant and the opposer do not have to be identical or
directly competitive to support a finding that there is a
likelihood of confusion. It is sufficient if the
respective goods and services are related in some manner
and/or that the conditions surrounding their marketing are
such that they would be encountered by the same persons
under circumstances that could, because of the similarity
of the marks used in connection therewith, give rise to the
mistaken belief that they emanate from or are associated
with a single source. In re Albert Trostel & Sons Co.,
supra at 1785; In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978). In this case,
applicant’s silkscreen painting services are related to
opposer’s clothing products because clothing, particularly
t-shirts and sweatshirts, often display designs that are
created by the consumer, affixed by silkscreen, and then
sold back the same consumer. Accordingly, consumers
encountering clothing and services identified by similar
Opposition No. 91170761
15
marks could mistakenly believe that the goods and services
emanate from a single source.
D. Balancing the factors.
In view of the similarities of the marks, the goods
and services, and the channels of trade, we find that
applicant’s mark FYBY FOR Y’ALL BY Y’ALL and Design, when
used in connection with “silk screen painting on clothing”
so resembles opposer’s FUBU marks for clothing as to be
likely to cause confusion. To the extent that any doubt
might exist as to whether a likelihood of confusion exists,
we resolve such doubt against the applicant. In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In
re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1998).
Decision: The opposition is sustained and
registration to applicant is refused.