Jonathan M. Klokow

Trademark Trial and Appeal Board

Aug 7, 2012

No. 77850282 (T.T.A.B. Aug. 7, 2012)

Mailed:
August 7, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Jonathan M. Klokow
________
Serial No. 77850282
_______
H. John Rizvi and Glenn E. Gold of Gold & Rizvi, P.A. for
Jonathan M. Klokow.1

Linda B. Orndorff, Trademark Examining Attorney, Law Office
111 (Robert L. Lorenzo, Managing Attorney).
_______
Before Quinn, Holtzman, and Wolfson, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
On October 16, 2009, Jonathan M. Klokow filed an
application to register the mark MOO DA CHAINZ (in standard
character format) for “hats; T-shirts” in International Class
25, based on his bona fide intent to use the mark in
commerce.
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), having determined that

1 It is noted that Mr. Klokow has submitted applicant’s brief in
pro per.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
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registration would lead to a likelihood of confusion in view
of Reg. No. 3188038 for the mark MOODA CHAINZ for “Clothing,
namely, tops, pants, shorts, skirts, dresses, hats, caps,
jackets, coats, headwear, underwear, sleepwear, and
footwear” in International Class 25.2
When the refusal was made final, applicant appealed.
The appeal has been fully briefed. We affirm.
I. Evidentiary Issue
Together with his appeal brief, applicant included
copies of a certificate of copyright registration, a website
printout, and a photograph of t-shirts bearing applicant’s
mark. This evidence was not submitted during the
prosecution of the application but submitted for the first
time with applicant’s brief. The examining attorney has
objected to this evidence as being untimely.
Trademark Rule 2.142(d) provides that the record in the
application should be complete prior to the filing of an
appeal. See TBMP § 1208.02 (3d ed. 2011) and authorities
cited in that section. Evidence submitted for the first
time with a party’s brief will not be considered by the
Board. Accordingly, we have not considered this evidence.3

2 Registered December 19, 2006.
3 We have, however, considered the evidence submitted by applicant
with his response to the January 25, 2010, Office action; namely
photographs of a hat and a long-sleeved t-shirt bearing the mark,
a copy of the design applicant has copyrighted that includes the
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II. Applicable Law
Our determination under Trademark Act § 2(d) is based
on an analysis of the probative facts in evidence that are
relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay Imp.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003); and In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence
of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976); see also In re Azteca
Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
III. Discussion
A. Similarity or Dissimilarity of the Marks in Their
Entireties

mark, and photographs of a hat and shirt bearing the mark MOVE
THE CHAINS from an unrelated third-party.

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In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. In comparing the marks, 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 those goods
or services offered under the respective marks is likely to
result. Coach Services Inc. v. Triumph Learning LLC, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012). The focus is on the
recollection of the average purchaser who normally retains a
general rather than specific impression of trademarks.
L'Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
Here, applicant’s mark is compared to the cited mark
without consideration of the design features applicant
contends he uses in connection with his mark, because
applicant has not applied for the mark as including a
design, but only for the words MOO DA CHAINZ. See AMF
Incorporated v. American Leisure Products, Inc., 474 F.2d
1403, 177 USPQ 268, 269 (CCPA 1973) (fact that applicant or
registrant use their marks with different designs “is
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irrelevant and immaterial.”). We also do not consider the
particular stylization of the lettering of applicant’s mark
as it appears on applicant’s goods, because applicant has
applied for the mark as a standard character mark. Our
comparison of the marks is confined to applicant’s mark as
shown in the drawing.
Bearing this in mind, we consider the mark MOO DA
CHAINZ to be highly similar to the mark MOODA CHAINZ in
sight, sound, meaning and commercial impression. In
appearance and pronunciation, the marks are virtually
identical. The first term of the cited mark is merely a
combination of the first and second terms of applicant’s
mark, and the final terms of each mark are identical, novel
spellings of the word “chains.” As for meaning, applicant
notes that “MOO DA” is a corrupt spelling for “move the”
such that the entire phrase means “move the chains,” a
phrase that has meaning in the context of the game of
football. The same meaning may be ascribed to the cited
mark; nothing in the record suggests otherwise.4 Overall,
the marks are highly similar in commercial impression.

4 Applicant argues that the registrant intends its mark to mean
“Attitude for Life,” but has not supported this contention with
evidence of record. Although he states that registrant
“represent[s] their concept of the phrase is a philosophy” on
their website, and includes the web address, he has not submitted
a copy of a web page from the website. The information is
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B. Similarity or Dissimilarity of the Parties’ Goods

With respect to the relatedness of the goods, it is
well settled that the question of likelihood of confusion
must be determined based on an analysis of the goods
identified in applicant’s application vis-à-vis the goods
identified in the cited registration. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993);
and Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Applicant seeks to
register his mark for “hats, T-shirts.” One of the items
for which the cited mark is registered is “hats.” These
goods are identical. Moreover, the cited mark covers
“tops,” “caps,” and “headwear,” goods that either encompass
or are virtually identical to “hats, T-shirts.” It is
sufficient for a finding of likelihood of confusion if the
relatedness is established for any item encompassed by the
identification of goods within a particular class in the
application. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Baseball
America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847
n.9 (TTAB 2004).

therefore not in the record; the Board does not “look up”
websites on behalf of a party.
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The registration also covers additional items of
clothing: “pants, shorts, skirts, dresses, jackets, coats,
underwear, sleepwear, and footwear.” These clothing items
are closely related to “hats, T-shirts.” To show their
relatedness, the examining attorney has submitted copies of
ten use-based, third-party registrations which cover both
applicant’s and registrant’s types of goods. The evidence
suggests that these clothing items are of a type that
emanate from a single source. In re Mucky Duck Mustard Co.,
6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149
(Fed. Cir. 1988). See also, In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). In addition, the
examining attorney has submitted copies of pages from third-
party websites showing that companies offer various types of
apparel under a single mark. For example, the pages from
www.ralphlauren.com show coats, jackets, shirts, dresses,
footwear and baby clothes advertised for sale under the mark
RALPH LAUREN; and the website at www.jcrew.com advertises
women’s shirts, tops and skirts under the mark J.CREW.
Material obtained from the Internet is acceptable in ex
parte proceedings as evidence of potential public exposure
to a term. See In re Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB
2002).
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In view of the in part identical and in part related
nature of the goods, we find applicant’s “hats, T-shirts” to
be closely related to the clothing items listed in the
registration.
C. Trade Channels and Classes of Purchasers
Considering the channels of trade and classes of
purchasers, because the goods are in part identical and
there are no restrictions in the identifications as to trade
channels or purchasers, we must presume that these identical
goods will be sold in the same channels of trade, such as
retail clothing and department stores, and will be offered
to the same ordinary classes of purchasers. See Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002); In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). The Internet evidence submitted by the examining
attorney supports the presumption. We find that the
similarities in the channels of trade and classes of
purchasers favor a finding of likelihood of confusion.
D. Applicant’s Nonuse Arguments
Applicant argues that there can be no confusion between
his mark and the cited mark because the cited mark has
allegedly not been in use for “nearly the past 2 years (if
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not longer).”5 Applicant requests “forfeiture,
invalidation, recission, [or] cancellation” of the cited
registration, “as I believe they have NOT fulfilled the
Requirement of a ‘reasonable continuous Use’ of their
Mark.”6 (stylization in original). We construe this
statement, taken together with applicant’s recitation of
steps he has taken to determine whether the cited mark is in
use, and his stated conclusion that it is no longer in use,
as an assertion that the registrant has abandoned its mark.
See Section 45 of the Trademark Act, 15 U.S.C. § 1127.7
Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b),
provides that a certificate of registration on the Principal
Register shall be prima facie evidence of the validity of
the registration, of the registrant’s ownership of the mark
and of the registrant’s exclusive right to use the mark in
connection with the goods and/or services identified in the

5 Applicant’s brief, p. 7. It is noted that applicant asserts
various lengths of nonuse throughout his brief; for example, on
p. 9 he states that registrant has not used its mark “over the
past nearly 6 years.”
6 Id., p. 3.
7 That section defines “abandonment,” in pertinent part, as
follows:
Abandonment of mark. A mark shall be deemed to be “abandoned”
if [] the following occurs:
(1) When its use has been discontinued with intent not to
resume such use. Intent not to resume may be inferred from
circumstances. Nonuse for 3 consecutive years shall be prima
facie evidence of abandonment. “Use” of a mark means the bona
fide use of such mark made in the ordinary course of trade, and
not made merely to reserve a right in a mark. ….

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certificate. Therefore, in the context of an ex parte
proceeding, the registration enjoys the benefits of the
presumptions of registration. Accordingly, an applicant who
wishes to remove a registration from the register is
required to file a petition to cancel the registration,
thereby affording the registrant an opportunity to contest
an allegation of abandonment.
Although applicant may be entitled to file a petition
to cancel the cited registration, pleading proper grounds
for his standing and abandonment claim, applicant is not
entitled to challenge the validity of the registration
during this ex parte proceeding. The validity of the
registration can only be challenged by applicant’s filing of
a petition to cancel. During ex parte prosecution,
including this ex parte appeal, applicant will not be heard
on matters that constitute a collateral attack on the cited
registration. In re Dixie Restaurants, Inc., 41 USPQ2d at
1534; and In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB
1992). See TMEP § 1207.01(d)(iv) (8th ed. 2011).
In this case, applicant did not file a petition to
cancel the registration, the registration is presumed valid,
and applicant’s arguments regarding whether the cited mark
is in use or not are irrelevant to this proceeding. No
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consideration has been given to applicant’s arguments in
this regard.
IV. Conclusion
We have carefully considered the entire record,
including all arguments and the evidence submitted. We find
that the marks are highly similar and the goods are
identical in part and otherwise closely related. Use of
applicant’s mark in association with “hats, T-shirts” is
likely to cause confusion with the mark in the cited
registration.
Decision: The refusal to register under Trademark Act
§ 2(d) is affirmed.