Manuel E. Tellez

Trademark Trial and Appeal Board

Nov 3, 2017

No. 87229195 (T.T.A.B. Nov. 3, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 3, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Manuel E. Tellez
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Serial No. 87229195
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Gene Bolmarcich of the Law Offices of Gene Bolmarcich
for Manuel E. Tellez.

Tarah Hardy Ludlow, Trademark Examining Attorney, Law Office 110,
Chris Pedersen, Managing Attorney.
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Before Kuhlke, Kuczma, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background
Manuel E. Tellez (“Applicant”) seeks registration on the Principal Register of the
mark SLAY OR PREY in standard characters for “Athletic tops and bottoms for all
sports and exercises; Clothing for athletic use, namely, padded pants; Clothing for
athletic use, namely, padded shirts; Clothing for athletic use, namely, padded shorts;
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Clothing, namely, athletic sleeves; Polo knit tops; Polo shirts; T-shirts; Graphic T-
shirts; Hoods; Jackets; Jerseys; Short-sleeved or long-sleeved t-shirts; Tops;
Wristbands” in International Class 25.1
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark
for “T-shirts; T-shirts for adults” in International Class 25.2 After the
Examining Attorney made the refusal final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the request, and the appeal then
resumed. We reverse the refusal.
II. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); 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 key considerations are the similarities between

1 Application Serial No. 87229195 was filed November 10, 2016, based on Applicant’s claim
of a bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
2 Registration No. 5066234 issued on the Supplemental Register on October 18, 2016. It
includes the following description of the mark: “The mark consists of the wording ‘PRAY
THEN SLAY’, with horizontal lines above and below the word ‘THEN’.”
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the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.2d
1340, 71 USPQ2d 1944 (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.”).
A. The Goods, Trade Channels, and Classes of Consumers
As to the goods, we must determine whether their degree of relatedness rises to
such a level that consumers would mistakenly believe the parties’ goods emanate
from the same source. In making this analysis of the second du Pont factor, we look
to the identifications of goods in the application and cited registration. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Applicant’s identification of goods includes “T-shirts,” and the cited registration
also identifies “T-shirts.” Thus, the goods are identical in part. The Examining
Attorney also submitted ample evidence that the other applied-for goods are related
to “T-shirts.” The record includes website printouts of the other applied-for goods and
“T-shirts” being sold under the same mark, showing consumer exposure to the same
source providing such goods under one mark.3 In addition, the record includes use-
based third-party registrations that cover the same types of goods under the same

3 March 2, 2017 Office Action at 69-134; March 30, 2017 Denial of Reconsideration at 6-86.
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mark,4 suggesting that such goods may emanate from the same source. In re
Aquamar, Inc., 115 USPQ26 1122, 1126 n.5 (TTAB 2015); 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). We find Applicant’s and Registrant’s goods
identical in part and otherwise closely related.
Turning to the trade channels, we presume, as we must, that Applicant’s and
Registrant’s identical goods move in the same normal channels of trade for T-shirts
and that they are available to the same classes of consumers. In re Viterra, 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this
legal presumption in determining likelihood of confusion).
B. Similarity of the Marks
Comparing Applicant’s mark SLAY OR PREY to Registrant’s mark
pursuant to the first du Pont factor, we consider them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports, 73
USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567). The test assesses not whether
the marks can be distinguished in a side-by-side comparison, but rather whether
their overall commercial impressions are so similar that confusion as to the source of
the goods offered under the respective marks is likely to result. Coach Servs. Inc. v.

4 March 2, 2017 Office Action at 3-68.
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Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see
also Edom Labs, 102 USPQ2d at 1551.
The record does not include definitions of any wording from the marks, but we
take judicial notice of the following: “Slay” means: “to kill by violence” or, as slang,
“to impress strongly; overwhelm, especially by humor: Your jokes slay me.”5 “Pray” is
defined as “to offer devout petition, praise, thanks, etc., to (God or an object of
worship).”6 “Prey” means “an animal hunted or seized for food, especially by a
carnivorous animal,” “a person or thing that is the victim of an enemy, a swindler, a
disease, etc.” or “the action or habit of preying.”7 The Board may take judicial notice
of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co.,
213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983),
including online dictionaries that exist in printed format or have regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Clearly, although “prey” and “pray” are phonetic equivalents, their meanings
differ sharply. Taking into account this significant difference, we find that Applicant’s
mark most likely gives the impression of presenting a choice to either kill8 or become
a victim by falling prey to a predator. By contrast, we find that the registered mark

5 Dictionary.com entry for “slay,” from The Random House Dictionary, accessed November 2,
2017.
6 Dictionary.com entry for “pray,” from The Random House Dictionary, accessed November
2, 2017.
7 Dictionary.com entry for “prey,” from The Random House Dictionary, accessed November 2,
2017.
8 Given the use of “prey” in Applicant’s mark, we find the traditional, rather than slang,
meaning of “slay” more applicable.
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most likely conveys a command to first confer with the divine through prayer, and
next to impress others (the slang meaning of “slay”). The mark may suggest that
prayer will lead to making a strong impression on others – i.e. if you pray, then you
will slay. Alternatively, Registrant’s mark could be viewed as a call to faith-inspired
violence – i.e. to pray and then slay, in the traditional sense of the word. Throughout
the prosecution of the application and in her brief, the Examining Attorney has
asserted that the marks have the “same commercial impression” and “same
connotation,”9 with little or no discussion of the distinct meanings of “pray” and “prey”
or the implication of each mark as a whole. We disagree with the assertions, and
instead find the overall connotations and commercial impressions of Applicant’s and
Registrant’s marks dissimilar.
Admittedly, the appearance and sound of the marks are somewhat similar because
of the shared term “slay” and the phonetic equivalence and visual similarity of “pray”
and “prey.” However, consumers seeing the marks would certainly read and recognize
“prey” and “pray” as distinct words. Furthermore, the marks do not look or sound
identical because “slay” and “prey”/“pray” are transposed, and the word separating
them differs in each mark – “or” versus “then.” While some cases have deemed
confusion likely between marks consisting of transposed words, those holdings
depended on the transposition “not chang[ing] the overall commercial impression.” In

9 14 TTABVUE 5, 9 (Examining Attorney’s Brief); see also February 13, 2017 Office Action at
2 (“same connotation” and “same commercial impression”); March 2, 2017 Office Action at 5
and March 20, 2017 Denial of Reconsideration at 4 (both acknowledging Applicant’s
argument based on these terms but nonetheless asserting without further explanation that
the marks “create the same connotation” and “have the same commercial impression”).
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re Wine Society of America Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (affirming
refusal to register THE WINE SOCIETY OF AMERICA & Design based on
registration of AMERICAN WINE SOCIETY 1967 & Design, finding that “the
transposition of words does not change the overall commercial impression”); see also
Bank of America National Trust and Savings Ass’n v. The American National Bank
of St. Joseph, 201 USPQ 842, 845 (TTAB 1978) (“the words ‘BANKAMERICA’ and
‘BANK OF AMERICA,’ on the one hand, and ‘AMERIBANC,’ on the other, convey the
same meaning and create substantially similar commercial impressions”). In this
case, where the commercial impressions of the marks differ not only because of the
transposition but also because of the different meanings of the wording used in the
marks, this line of cases on confusingly similar transposed terms does not apply.
Overall, we find the marks in this case dissimilar, particularly because of their
very different connotations and commercial impressions.
III. Conclusion
Notwithstanding that the goods are, in part, identical, and the channels of trade
and purchasers overlap, we conclude that the marks are too dissimilar to warrant a
determination of likely confusion. We consider this du Pont factor dispositive in this
case. See Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47
USPQ2d 1459, 1460 (Fed. Cir. 1998) (holding that Board did not err in deciding
likelihood of confusion based solely on dissimilarity of marks regardless of other du
Pont factors, that favored a likelihood of confusion, noting that “we have previously
upheld Board determinations that one DuPont factor may be dispositive in a
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likelihood of confusion analysis, especially when that single factor is the dissimilarity
of the marks”); Kellogg Co. v. Pack’em Ent., 951 F.2d 330, 21 USPQ2d 1142, 1145
(Fed. Cir. 1991) (upholding Board decision that “a single duPont factor – the
dissimilarity of the marks – was dispositive of the likelihood of confusion issue,”
observing “we know of no reason why, in a particular case, a single duPont factor may
not be dispositive”).
Decision: The refusal to register Applicant’s mark is reversed.