Loaded Clothing, LLCv.The Tefa Dexter and Tiffany Haugen Partnership

Trademark Trial and Appeal Board

Apr 20, 2007

No. 91161958 (T.T.A.B. Apr. 20, 2007)

Mailed: April 20, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Loaded Clothing, LLC
v.
The Tefa Dexter and Tiffany Haugen Partnership
_______

Opposition No. 91161958
to Application No. 76553481
filed on October 2, 2003
_______

John Arai Mitchell of Arai Mitchell PC for Loaded Clothing,
LLC.

Robert J. Schaap of The Law Offices of Robert J. Schaap for
The Texfa Dexter and Tiffany Haugen Partnership.
_______

Before Walters, Taylor and Bergsman, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Loaded Clothing, LLC filed an opposition to the
application of The Tefa Dexter and Tiffany Haugen
Partnership to register the mark LOADED CLOTHING for
“clothing, namely, hats, tank-tops, t-shirts, men's
underwear, women's underwear, lingerie, skirts, shorts,
pants, dresses, wristbands, jackets, socks, shoes, belts,
bathing suits, beach wear, sweatshirts, sweaters,

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91161958
2
sweatpants,” in International Class 25.1 The application
includes a disclaimer of CLOTHING apart from the mark as
shown.
As its ground for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods so
resembles opposer’s previously used mark LOADED for “high
quality clothing … primarily t-shirts, tank tops and caps,”
(Notice of Opposition, paragraphs 1, 2) as to be likely to
cause confusion, under Section 2(d) of the Trademark Act.
Applicant, in its answer, denied the salient
allegations of the claim and asserted several “affirmative
defenses.” However, only opposer submitted evidence and a
brief on the case.2 In view of applicant’s failure to
submit any evidence or a brief, its affirmative defenses are
deemed to have been waived.
Opposer propounded discovery requests, including
interrogatories, document production requests and a notice
of deposition under Fed. R. Civ. P. 30(b)(6), to which
applicant refused to respond (see opposer’s letter to the
Board of November 29, 2006). In its trial brief, opposer
requested that judgment be entered against applicant for its

1 Application Serial No. 76553481, filed October 2, 2003, based upon use
of the mark in commerce, alleging dates of first use as of April 24,
2003, and first use in commerce as of July 25, 2003.

2 Opposer’s Reply Brief was inappropriately submitted because applicant
did not file a brief. Thus, opposer’s Reply Brief has not been
considered.

Opposition No. 91161958
3
failure to respond to discovery. Because opposer did not
file a motion to compel discovery prior to the commencement
of the first testimony period, we will not decide the case
on this basis (See 37 C.F.R. §2.120(e); TBMP §523.03).
Rather, we will proceed to a determination on the merits of
opposer’s claim of priority and likelihood of confusion.
Findings of Fact
Opposer has established that it designs and
manufactures clothing identified by the mark LOADED,
including t-shirts, tank tops, caps, hoodies, and swimwear;
that it produces custom clothing, including t-shirts, suit
jackets and shirts, identified by the mark LOADED, for
celebrities such as Brittany Spears, Gilby Clark, and Tommy
Lee; that it first used the mark on these goods in sales to
a retail store in Taiwan on March 12, 1999; that it first
used the mark on these goods in commerce at least as early
as December 31, 1999; and that it has a pending trademark
application, Serial No. 78377202, filed March 2, 2004, for
the mark LOADED for “clothing, namely, t-shirts, tank tops
and caps” that is currently suspended pending the outcome of
the instant opposition proceeding. (Trial testimony of
Sonny J. Valenzuela, “Valenzuela,” at 5-6.) Opposer has
sold, and continues to sell, its goods to various stores in
California, as well as in Wisconsin, Las Vegas, Philadelphia
and New York (id. at 7-9, 28), and to an online store, L.A.
Opposition No. 91161958
4
Celebrity (id. at 10); and that it has received media
coverage for its goods in various magazines, including L.A.
Confidential, Lemonade, Proctor & Gamble Magazine (2001),
Rolling Stone (April 2004), and Blender Magazine (April
2006), and on the television show Rock Star: Supernova (id.
at 11-21, exhibits 5-8). Opposer’s sole proprietor, Sonny
J. Valenzuela, stated that he observed applicant’s t-shirts
for sale in stores in California in close proximity to the
stores selling his goods; and that several of his friends
and customers reported to him that they mistakenly went to
applicant’s website looking for his products (id. at 22-23).
Additionally, several stars of the Rock Star: Supernova
television show appeared on the show wearing opposer’s t-
shirts. The show provided as a courtesy a web link from its
MSN website to what they believed was opposer’s web site.
However, the television show mistakenly linked to
applicant’s website. This mistake was corrected when
opposer became aware of it. After the link was corrected,
opposer received a substantial increase in “hits” at its web
site and made additional sales. (Id. at 22-28).
Analysis
Because opposer has a pending application that is
suspended pending the outcome of this proceeding, and its
likelihood of confusion claim is not frivolous, we find that
opposer has established its standing to oppose registration
Opposition No. 91161958
5
of applicant’s mark. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Opposer has established its priority because it has
established uncontroverted first use and use in commerce
dates in 1999 that predate applicant’s October 2, 2003
filing date, the only date upon which applicant may rely
herein.
Therefore, we turn to the issue of likelihood of
confusion and note that our determination must be based on
an analysis of all of the probative facts in evidence that
are relevant to the factors bearing on the likelihood of
confusion issue. In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); and In re Dixie Restaurants 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
Opposition No. 91161958
6
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein.
With respect to the goods of the parties, we observe
that applicant’s identification of goods includes all of the
goods upon which opposer has shown that it uses its mark.
Applicant’s remaining identified goods are closely related
clothing items. Thus, we conclude that the goods of the
parties are either identical or closely related. This
factor favors opposer.
Further, both opposer’s and applicant’s identifications
of goods and services are broadly worded, without any
limitations as to channels of trade or classes of
purchasers. We must presume that the goods and services of
the applicant and opposer are sold in all of the normal
channels of trade to all of the usual purchasers for goods
and services of the type identified. See Canadian Imperial
Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). In other words, we conclude that the channels of
trade and class of purchasers of the parties’ goods and
services are the same. This factor favors opposer.
Turning to the marks, we note that while we must base
our determination on a comparison of the marks in their
entireties, we are guided, equally, by the well established
principle that, in articulating reasons for reaching a
Opposition No. 91161958
7
conclusion on the issue of confusion, “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.” In re National Data Corp.,
732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant’s mark consists of the word LOADED, which is
identical to opposer’s entire mark, followed by the
disclaimed and, thus, admittedly descriptive, if not
generic, word CLOTHING. We find that LOADED is clearly the
dominant portion of applicant’s mark because it is the first
word in the mark and it is followed by a merely descriptive
or generic term. Therefore, we find that applicant’s mark
is substantially similar to opposer’s pleaded mark in sound,
appearance, connotation and commercial impression. This
factor favors opposer.
Finally, we also find that opposer has established the
opportunity for actual confusion to occur and that such
confusion has occurred to opposer’s detriment. This factor
favors opposer.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, LOADED CLOTHING, and opposer’s mark, LOADED, their
contemporaneous use on the same and closely related goods
Opposition No. 91161958
8
involved in this case is likely to cause confusion as to the
source or sponsorship of such goods.
Decision: The opposition is sustained.