Peace Love World Live, LLC

Trademark Trial and Appeal Board

Jul 23, 2018

No. 86705287 (T.T.A.B. Jul. 23, 2018)

This Opinion is a
Precedent of the TTAB

Mailed: July 23, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Peace Love World Live, LLC
_____

Serial No. 86705287
_____

Mark Terry, Esq., for Peace Love World Live, LLC.

Jason F. Turner, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
_____

Before Mermelstein, Bergsman and Ritchie,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Peace Love World Live, LLC (“Applicant”) seeks registration on the Principal
Register of the mark I LOVE YOU (in standard characters) for “bracelets,” in Class
14.1
The Trademark Examining Attorney refused registration under Sections 1, 2 and
45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127, on the ground that I

1 Application Serial No. 86705287 was filed on July 27, 2015, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
first use in commerce since at least as early as August 5, 2013.
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LOVE YOU as used by Applicant fails to function as a trademark because it is merely
a decorative feature of Applicant’s bracelets.
Also, the Trademark Examining Attorney refused to register I LOVE YOU for
bracelets under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that I LOVE YOU for bracelets so resembles the registered mark I LUV U for, inter
alia, “jewelry, namely, necklaces, bracelets, rings and charms; pendants; earrings,”
in Class 14, as to be likely to cause confusion.2
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm both refusals to register.
I. Preliminary Issue Regarding the Refusal under Sections 1, 2, and 45 of
the Trademark Act.
The Trademark Manual of Examining Procedure (“TMEP”) (October 2017)
provides that when assessing whether applied-for matter is merely decorative or can
serve a trademark function for purposes of making an ornamentation refusal, the
significance of the matter, including whether it is a common expression, is a factor to
consider. TMEP § 1202.03(a). If the evidence establishes the applied-for matter would
be perceived merely as an informational or common message, then that provides a
separate reason to issue a failure-to-function refusal under Sections 1, 2, and 45 of
the Trademark Act.3 TMEP §1202.04. During examination, the Trademark

2 Registration No. 4632685, registered November 4, 2014.
3 Where ornamental matter is also merely informational matter, the mark may not be
registrable on the Principal Register or the Supplemental Register. TMEP §§ 1202.03;
1202.03(a).
Serial No. 86705287
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Examining Attorney refused registration, inter alia, under Sections 1, 2, and 45 of
the Trademark Act on the ground that the applied-for matter does not function as a
mark because it is merely ornamentation, noting that I LOVE YOU “appears to be
incapable” of functioning as a source-identifier for the goods as a reason why the
matter would be perceived as merely ornamental.4 But for the first time in his Brief,
the Examining Attorney used the rationale that I LOVE YOU is “a widely used
informational message and is incapable of functioning as a trademark” as a separate
basis, apart from ornamentation, for the failure-to-function refusal.5 Because the
final refusal under Sections 1, 2, and 45 of the Trademark Act was limited to the mere
ornamentation rationale and the merely informational rationale was raised only in
an advisory manner during examination, we cannot be certain that Applicant had a
full opportunity to address the alternative rationale for the failure-to-function refusal
prior to appeal. We therefore exercise our discretion to limit our review to whether I
LOVE YOU fails to function as a trademark because it is merely ornamental. We
consider the significance of I LOVE YOU only as a factor in assessing whether that
refusal is correct.

4 September 9, 2015 Office Action (TSDR 3); December 1, 2015 Final Office Action (TSDR 3);
July 5 2017 Office Action denying Applicant’s Request for Reconsideration (TSDR 2).
Citations to the TSDR database are to the downloadable .pdf version.
5 10 TTABVUE 4. The Examining Attorney did not request remand to make the alternative
refusal that the applied-for mark fails to function because it is a common expression
incapable of indicating the source of the goods.
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II. Whether Applicant’s use of I LOVE YOU functions as a trademark?
Applicant filed a photograph of its bracelet as its specimen of use, reproduced
below:

The Trademark Examining Attorney contends that I LOVE YOU as used by
Applicant is an ornamental feature of Applicant’s bracelets that conveys the common
expression of endearment and fails to function as a trademark.6 To support this
contention, the Trademark Examining Attorney submitted numerous examples of
third-party uses of I LOVE YOU, or variations thereof, on bracelets and other
jewelry.7 See D.C. One Wholesaler, Inc. v. Chien, 120 USQ2d 1710, 1716 (TTAB 2016)
(“The widespread ornamental use of the phrase by third parties ‘is part of the
environment in which the [mark] is perceived by the public and … may influence how
the [mark] is perceived.’”), quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB

6 Trademark Examining Attorney’s Brief (10 TTABVUE 3).
7 December 1, 2016 Office Action (TSDR 8-37). See also July 5, 2017 Office Action denying
Applicant’s Request for Reconsideration (5 TTABVUE 10-18).
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2013); In re Chung, Jeanne & Kim Co., 226 USPQ 938, 941 (TTAB 1985) (common
practice in the trade to use a design as an ornamental feature is evidence that the
design is not unique or unusual in the field and that it will be viewed by the relevant
public as ornamentation rather than as a trademark); cf. In re Eagle Crest Inc., 96
USPQ2d 1227, 1229 (TTAB 2010) (“The more commonly a phrase is used, the less
likely that the public will use it to identify only one source and the less likely that it
will be recognized by purchasers as a trademark.”). The photographs of the I LOVE
YOU bracelets reproduced below are representative:
• A Lucian Piccard I LOVE YOU BRACELET advertised on Martha’s Jewelry
Case (marthasjewelrycase.com):8

• A Juicy Couture “I Love You Bracelet” advertised on the Polyvore website
(polyvore.com):9

8 December 1, 2016 Office Action (TSDR 12).
9 December 1, 2016 Office Action (TSDR 15-16).
Serial No. 86705287
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• I LOVE YOU Link Bracelet posted for sale on JewelryWeb.com:10

Other examples explain that the words “I love you” convey the message of
endearment, including:
• “Send a clear message of ‘I love you’ written on this Diamond white 18kt
gold bracelet.”11
• “Sterling silver necklace featuring two-piece moon pendant engraved with
loving message of ‘I love you . . . to the moon & back.’”12
• “This ID bracelet features . . . a phrase everyone needs to hear: I love you.”13

10 December 1, 2016 Office Action (TSDR 8).
11 December 1, 2016 Final Office Action (TSDR 19).
12 Id. (TSDR 21).
13 Id. (TSDR 27).
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The critical question in determining whether I LOVE YOU functions as a
trademark is the commercial impression it makes on the relevant public, i.e., whether
the term sought to be registered would be perceived as a mark identifying the source
of the goods. See In re Keep a Breast. Found., 123 USPQ2d 1869, 1879 (TTAB 2017);
Hulting, 107 USPQ2d at 1177-79; In re Lululemon Athletica Can. Inc., 105 USPQ2d
1684, 1686 (TTAB 2013) (“In considering whether matter is ornamental … relevant
considerations include the commercial impression made by the design”); see also In
re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216 (CCPA 1976) (“[T]he manner in which
an applicant has employed the asserted mark, as evidenced by the specimens of
record, must be carefully considered in determining whether the asserted mark has
been used as a trademark with respect to the goods named in the application.”).
“When evaluating a mark that appears to be ornamental, rather than functioning
as an indicator of source, ‘the size, location, dominance and significance of the alleged
mark as applied to the goods’ are all relevant factors in determining whether it is
inherently distinctive.” Hulting, 107 USPQ2d at 1178 (quoting In re Pro-Line Corp.,
28 USPQ2d 1141, 1142 (TTAB 1993)); see also In re Dimitri’s Inc., 9 USPQ2d 1666,
1667 (TTAB 1998); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984).
In this application, the phrase “I Love You,” as depicted in Applicant’s specimen,
is essentially the bracelet itself, as each of the eight letters in the phrase is one of the
bracelet’s eight segments. The phrase “I LOVE YOU” conveys a term of endearment
comprising the bracelet and, thus, it is ornamental. It does not identify and
distinguish the source of the bracelet, especially where there is so much jewelry
Serial No. 86705287
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decorated with the term I LOVE YOU in the marketplace. See In re Paramount
Pictures Corp., 213 USPQ 1111, 1113 (TTAB 1982) (“if the subject matter is in the
nature of the expression ‘SWALLOW YOUR LEADER’, it is purely ornamental and
would not be considered as an indication of source.”); compare In re Watkins Glen
Int’l, Inc., 227 USPQ 727, 729 (TTAB 1985) (checkered flag design sought to be
registered for clothing, while a common symbol in auto racing, is highly stylized and
unique and is likely to be perceived not only as ornamental, but as a trademark).
The ornamental nature of the proposed mark is corroborated by the third-party
use of that phrase on bracelets and other jewelry demonstrating that consumers are
accustomed to seeing similar, ornamental displays of I LOVE YOU on bracelets and
other jewelry from different sources. As a result, consumers will not perceive I LOVE
YOU appearing on bracelets as pointing uniquely to Applicant as a single source. Cf.
Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940-41 (Fed. Cir.
1984) (use by other parties undercuts argument that an asserted trademark identifies
and distinguishes one particular source). Not every word, name, phrase, symbol or
design, or combination thereof which appears on a product functions as a trademark.
Pro-Line Corp., 28 USPQ2d at 1142; cf. In re Morganroth, 208 USPQ 284 (TTAB
1980). Mere intent that a phrase function as a trademark is not enough in and of
itself to make it a trademark. Pro-Line Corp., 28 USPQ2d at 1142; cf. In re Remington
Prods. Inc., 3 USPQ2d 1714, 1725 (TTAB 1987).
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Applicant argues that its mark “comprises the shape and look of the lettering
along with the theme of the product itself.”14 Applicant also asserts that it is “a well-
known, cutting-edge clothing and jewelry design store that is highly popular with
youth culture,” and that many of Applicant’s products “share a common distinctive
thread – love and peace oriented themes having playful and chunky design
elements.”15 Applicant’s arguments do not persuade us that I LOVE YOU would be
perceived as a trademark.
First, Applicant’s contention of what its mark comprises is not commensurate with
the scope of the mark as set forth in the application. Applicant applied to register I
LOVE YOU in standard characters. The specific shape and look of the letters as they
appear on the goods are not features of the mark that Applicant seeks to register.
Standard character marks are limited to the words themselves and not to any
particular font style, size or color. Citigroup Inc. v. Capital City Bank Group Inc., 637
F.3d 1344, 98 USPQ2d 1253, 1258‒59 (Fed. Cir. 2011); In re Calphalon Corp., 122
USPQ2d 1153, 1160 (TTAB 2017) (“Having elected to seek registration of its proposed
mark as a standard character mark,” an applicant must have “the mark assessed
without limitation to any particular depiction of that term.”). However, in this case,
the look of the letters as they appear on the goods in the specimen is a reason I LOVE

14 Applicant’s Brief, p. 3 (7 TTABVUE 4).
15 Applicant’s Brief, p. 4 (TTABVUE 5).
Serial No. 86705287
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YOU would be perceived as mere ornamentation and must be refused registration
because it does not function as a mark.16
Second, Applicant’s argument that I LOVE YOU is the “theme of the product”
supports finding that the words are merely an aesthetic feature of the goods and
would not be perceived as indicating the source of the goods. Applicant’s argument
confirms the evidence of record indicating that consumers will perceive the expression
“I Love You” as used on Applicant’s bracelets as an important component of the
product itself, rather than as a trademark. See D.C. One Wholesaler, Inc. v. Chien,
120 USPQ2d at 1716 (“the display [of the mark] itself is an important component of
the product and customers purchase the product precisely because it is ornamented
with a display of the term”).
Third, during the prosecution of the application, Applicant did not seek to register
the mark pursuant to Section 2(f) of the Trademark Act on the basis that its use of
I LOVE YOU in connection with bracelets has been substantially exclusive and
continuous and has acquired distinctiveness as an indication of a unique source of
the goods. Absent such a claim — and evidence to support it — we cannot consider
Applicant’s argument that the renown of its business or its customers’ recognition of
the common style of its products have resulted in the recognition of I LOVE YOU as
an indication of source. Cf. In re Cazes, 21 USPQ2d 1796, 1797 (TTAB 1991)

16 We add that even if the design elements were part of the mark, consumers are not
predisposed to recognize the design elements of a product as an indication of the source of
the product. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 54 USPQ2d 1065, 1069
(2000) (“In the case of product design, … we think consumer predisposition to equate the
feature with the source does not exist.”).
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(“[A]pplicant has not claimed the benefits of Section 2(f) of the Act and, without a
formal claim of distinctiveness ..., evidence of fame cannot serve as the basis for
allowing registration of applicant’s mark.”); In re McDonald’s Corp., 230 USPQ 304,
307 (TTAB 1986) (“While applicant has demonstrated a strong public association
between the mark sought to be registered and applicant’s restaurant services, the
Board concludes that this evidence is evidence of secondary meaning and that in the
absence of a claim of secondary meaning pursuant to Section 2(f), registration must
be refused under Section 2(e)(3).”). Furthermore, the evidence of record appears to
preclude any claim, at present, that Applicant’s use of I LOVE YOU in connection
with bracelets has been substantially exclusive and continuous.
We find that Applicant’s use of I LOVE YOU in connection with bracelets is merely
ornamental, and does not function as a trademark.
III. Likelihood of Confusion
As noted above, the Trademark Examining Attorney refused to register I LOVE
YOU for bracelets under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on
the ground that I LOVE YOU for bracelets is likely to cause confusion with the
registered mark I LUV U, in standard characters for, inter alia, “jewelry, namely,
necklaces, bracelets, rings and charms; pendants; earrings.”
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 issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis
Serial No. 86705287
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Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each du Pont factor that is relevant and for which there is evidence of
record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944,
1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232,
1242 (TTAB 2015) (“While we have considered each factor for which we have
evidence, we focus our analysis on those factors we find to be relevant.”). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services. See In re Chatam Int’l
Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (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.”); see also
In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The similarity or dissimilarity and nature of the goods and established,
likely-to-continue channels of trade.

Because Registrant’s description of goods includes “bracelets” and Applicant’s
description of goods is “bracelets,” the goods are in part identical. Applicant does not
argue otherwise.
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Because the goods are in part identical, we must presume that the channels of
trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to
travel in same channels of trade to same class of purchasers); In re Yawata Iron &
Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB
2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst.,
101 USPQ2d 1022, 1028 (TTAB 2011).
B. The number and nature of similar marks in use on similar goods.

Applicant submitted the seven third-party registrations listed below consisting of
some variation of I LOVE YOU for jewelry:17

17 March 9, 2016 Response to Office Action (TSDR 84-103).
We give little, if any, weight to the list of applications and registrations for variations of
I LOVE YOU printed from the USPTO electronic database. (TSDR 38-83). The Board does
not take judicial notice of registrations and a list of registrations does not make those
registrations of record. See In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1583 (TTAB
2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). However, in instances where, as
here, the Examining Attorney does not object to the list of registrations, the Board may
consider the objection waived. See In re Houston, 101 USPQ2d 1534, 1536 (TTAB 2012)
(finding that the examining attorney’s failure to advise applicant of the insufficiency of the
list of registrations when it was proffered during examination constituted a waiver of any
objection to consideration of that list); In re 1st USA Realty Prof’ls, 84 USPQ2d at 1583
(allowing consideration of a list of third-party registrations because the examining attorney
did not advise applicant of the insufficiency of the list while there was still time to correct the
mistake); In re Broyhill Furniture Indus., Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001)
(finding examining attorney’s objection to a listing of third-party registrations waived
because it was not raised in the Office action immediately following applicant’s response in
which applicant’s reliance on the listing as evidence was indicated).
Nevertheless, the list does not include enough information to be probative. The list includes
only the serial number, registration number, mark, and status (live or dead) of the
applications or registrations. Because the goods are not listed, we do not know whether the
Serial No. 86705287
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• I WILL LOVE YOU FOREVER;18
• I LOVE YOU ALWAYS and design;19
• P.S. I LOVE YOU;20
• THE NEW WAY TO SAY I LOVE YOU;21
• I LOVE YOU EACH DAY OF THE WEEK;22
• MORE THAN 100 WAYS OF SAYING I LOVE YOU;23 and
• LUV HER.24

listed registrations are relevant. See Nat’l Fidelity Life Ins. v. Nat’l Ins. Trust, 199 USPQ
691, 694 n.5 (TTAB 1978) (list of registrations without goods and services and other relevant
information “has no probative value”); see also Nat’l Cable Television Ass’n, Inc. v. Am.
Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); Key Chem. Inc.
v. Kelite Chem. Corp., 464 F.2d 1040, 175 USPQ 99, 101 (CCPA 1972); In re Thor Tech Inc.,
90 USPQ2d 1634, 1639 (TTAB 2009) (the third-party registrations are of limited probative
value because the goods identified in the registrations appear to be in fields which are far
removed from the goods at issue).
Although Applicant properly submitted a copy of Registration No. 4164633 for the mark YES,
I LOVE YOU for “bathing suits; bikinis; infantwear; and t-shirts,” (TSDR 96) this registration
has little, if any, probative value because it is for clothing, not jewelry. See In re Thor Tech
Inc., 90 USPQ2d at 1639; see also Key Chem., Inc. v. Kelite Chem. Corp., 175 USPQ at 101.
Finally, the properly-submitted copies of Application Serial No. 85768557 for the mark I LAH
U for hats, shirts, shoes and socks (TSDR 98) and Application Serial No. 86388512 for the
mark P.S. I LOVE YOU for clothing (TSDR 100) have little probative value because pending
applications are evidence only that an application was filed on a certain date; they are not
evidence of use of the marks. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1193 n.8
(TTAB 2007); Interpayment Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6
(TTAB 2003).
18 March 9, 2016 Response to Office Action (TSDR 84).
19 March 9, 2016 Response to Office Action (TSDR 86).
20 March 9, 2016 Response to Office Action (TSDR 88).
21 March 9, 2016 Response to Office Action (TSDR 90).
22 March 9, 2016 Response to Office Action (TSDR 82).
23 March 9, 2016 Response to Office Action (TSDR 94).
24 March 9, 2016 Response to Office Action (TSDR 102).
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Applicant argues that this “evidence establishes that the consuming public is
exposed to third-party use of marks similar to the cited marks [sic] in connection with
[the] same or similar goods (i.e., jewelry)” and, therefore, Registrant’s mark is entitled
to only a narrow scope of protection or exclusivity of use.25 While third-party
registrations are not evidence of use under the 6th du Pont factor, they may be used
to show the sense in which a term is used in ordinary parlance (i.e., that a term has
a well-recognized meaning). See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015); AMF Inc. v. Am. Leisure Prods., Inc.,
474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973).
As demonstrated by the evidence of third-party use of I LOVE YOU for bracelets
and other jewelry in the record, including the examples noted in the ornamentation
discussion above, I LOVE YOU is a commonly used term of endearment displayed on
jewelry. When combined with the seven registrations for variations of I LOVE YOU
for jewelry, we find that I LOVE YOU used in connection with jewelry is such a
commonly used term with a well-recognized meaning expressing the feelings of the
purchaser or the person wearing the jewelry that consumers are conditioned to look
for differences among trademarks consisting of or including I LOVE YOU for jewelry.
See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millenium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (citing Juice
Generation, 115 USPQ2d at 1674).

25 Applicant’s Brief, pp. 10-11 (7 TTABVUE 11-12).
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We turn next to whether Applicant’s mark I LOVE YOU is similar enough to
Registrant’s mark I LUV U for consumers to mistakenly believe that there is some
connection, association or sponsorship between them.
C. The similarity or dissimilarity of the marks.
We consider 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., 177 USPQ at 567. “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812
(TTAB 2014).
In comparing the marks, we are mindful that where, as here, the goods are in part
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the goods. Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang,
84 USPQ2d 1323, 1325 (TTAB 2007). “The proper test is not a side-by-side
comparison of the marks, but instead ‘whether the marks are sufficiently similar in
terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs. Inc., 101
USPQ2d at 1721 (quotation omitted); see also San Fernando Elec. Mfg. Co. v. JFD
Elec. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests.
Serial No. 86705287
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Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353
(Fed. Cir. 1992). The proper focus is on the recollection of the average customer, who
retains a general rather than specific impression of the marks. Geigy Chem. Corp. v.
Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A.
v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975). Because the relevant goods are bracelets without
any restrictions as to price point or channels of trade, the average customer is an
ordinary consumer.
Applicant’s mark is I LOVE YOU and Registrant’s mark is I LUV U. Those marks
share the same structure, sound alike, mean the same thing and engender the same
commercial impression. The differences in the spelling of the words “Love” and “You”
do not distinguish the marks. Slight differences in marks do not normally create
dissimilar marks. In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985)
(CAYNA is similar to CANA); In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350,
251 (TTAB 1983) (ENTELEC is similar to INTELECT); RE/MAX of America, Inc. v.
Realty Mart, Inc., 207 USPQ 960, 964 (REMACS and RE/MAX “indistinguishable in
sound” and confusingly similar); In re Cresco Mfg. Co., 138 USPQ 401, 402 (TTAB
1963) (CRESCO and KRESSCO “are phonetically indistinguishable” such that there
would be a likelihood of confusion). Here, “love” and “luv” are phonetic equivalents
with the same meanings. Ralston Purina Co. v. The Quaker Oats Co., 169 USPQ 508,
510 (TTAB 1971) (LUV and LOVE are phonetic equivalents, such that the compared
Serial No. 86705287
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marks have substantially similar commercial impressions related to “love”).
Additionally, “U” is a recognized abbreviation for “YOU.”26
Applicant argues that the marks are significantly different because Applicant’s
mark I LOVE YOU has a traditional feel whereas Registrant’s mark I LUV U “is used
as an abbreviation in telecommunications in order to use less characters for texting
and social media entry data … or used in the well-known Leet speak (an informal
language or code used on the Internet, in which standard letters and words are often
replaced by abbreviations, numerals or special characters).”27 Even assuming that I
LOVE YOU has a traditional feel and I LUV U has a more informal or modern feel,
the marks still look alike, sound alike, mean the same thing and engender the same
commercial impression (i.e., a term of endearment).
We find that the minor differences between I LOVE YOU and I LUV U in
appearance due to the different spellings of the words “love” and “you” do not
outweigh the identity of the entire marks in terms of sound, connotation, and
commercial impression. The strong similarity of the marks weighs in favor of a
likelihood of confusion.

26 “U” pronoun. Pron. Spelling. you: Shoes fixed while U wait. Dictionary.com Unabridged
based on the RANDOM HOUSE DICTIONARY (2018). The Board may take judicial notice of
dictionary definitions, including online dictionaries that exist in printed format. In re Cordua
Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632
(Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14
(TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
27 Applicant’s Brief, pp 8-9 (7 TTABVUE 9-10).
Serial No. 86705287
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D. Balancing the factors.
Even accounting for the fact that Registrant’s mark I LUV U is a variation of the
commonly used term I LOVE YOU that has a well-recognized meaning when used in
connection with jewelry, because Applicant’s mark I LOVE YOU is so similar to
Registrant’s mark I LUV U, and is sought to be registered for identical products that
we must presume are offered in the same channels of trade, we find that Applicant’s
mark I LOVE YOU for bracelets is likely to cause confusion with the registered mark
I LUV U for “jewelry, namely, necklaces, bracelets, rings and charm; pendants;
earrings.”
Decision: The refusals to register Applicant’s mark I LOVE YOU are affirmed.