Pele IP Ownership, LLCv.Michael C. Silver

Trademark Trial and Appeal Board

Nov 30, 2018

No. 91220395 (T.T.A.B. Nov. 30, 2018)

Mailed: November 30, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Pele IP Ownership, LLC. v. Michael C. Silver _____ Opposition No. 91220395 _____ Jonathan P. Froemel of Barnes & Thornburg LLP, for Pele IP Ownership, LLC. Michael C. Silver, pro se. _____ Before Cataldo, Ritchie and Adlin, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, Michael C. Silver, seeks registration on the Principal Register of the mark PELE SAY, in standard characters, for “wearable garments and clothing, namely, shirts,” in International Class 25.1 1 Application Serial No. 86275795, filed May 8, 2014 under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), based upon Applicant’s assertion of a bona fide intent to use the mark in commerce in connection with the goods. This Opinion Is Not a Precedent of the TTAB Opposition No. 91220395 - 2 - Opposer, Pele IP Ownership, LLC,2 opposes registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), asserting in its notice of opposition3 priority and a likelihood of confusion with its mark PELÉ, registered on the Principal Register as follows: PELÉ in standard characters, identifying “balls for games,” in International Class 28;4 in stylized form, identifying “balls for games,” in International Class 28;5 and PELÉ in standard characters, identifying “all-purpose sports bags,” in International Class 18.6 All three registrations include the following consent: “The name(s), portrait(s), and/or signature(s) shown in the mark identifies the nickname of Edson Arantes do Nascimento, whose consent(s) to register is made of record.” In addition, Opposer asserts that it has made common law use of PELÉ as a mark in connection with “an array of goods and services in the United States and 2 On October 29, 2015, original Opposer, Montag Divulgacão, Ltda, filed a motion to amend its name to Pele IP Ownership LLC to reflect the assignment of its pleaded registrations, recorded with the U.S. Patent and Trademark Office on October 21, 2015 at Reel/Frame No. 5650/0253. Opposer’s motion was approved in a Board paralegal order issued on December 28, 2015. 10 TTABVUE; 12 TTABVUE. 3 1 TTABVUE. 4 Registration No. 4338969, issued May 21, 2013. 5 Registration No. 4338970, issued May 21, 2013. 6 Registration No. 4345347, issued June 4, 2013. Opposition No. 91220395 - 3 - worldwide. Such products include clothing, sports bags and game balls, among other products and services.”7 Opposer further alleges that Applicant’s mark falsely suggests a connection with Opposer in violation of Section 2(a) of the Trademark Act, 15 U.S.C. § 2(a). In his answer, Applicant denied the salient allegations in the notice of opposition.8 Only Opposer submitted testimony and evidence and filed a brief, although, as discussed below, Applicant later filed a brief with a “motion to reopen.” I. Applicant’s Motion to Accept Late-Filed Brief Applicant’s trial brief was due on February 24, 2018. On August 21, 2018, Applicant filed his brief accompanied by a “motion to reopen,” which we construe as a motion to accept his late-filed brief. We find that Applicant has made a sufficient showing of excusable neglect under Fed. R. Civ. P. 6(b) for his failure to timely file his brief. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 509 and authorities cited therein. Furthermore, Opposer has not opposed Applicant’s motion. Trademark Rule 2.127(a) (unopposed motion may be granted as conceded).9 We note, however, that Applicant’s brief includes a hyperlink to “The Atlantic Web 7 1 TTABVUE 4. 8 5 TTABVUE. 9 Finally, we note that “the filing of a brief on the case is optional, not mandatory, for a party in the position of defendant.” TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 801.02(b) (2018) (citing Trademark Rule 2.128(a)(1), 37 C.F.R. § 2.128(a)(1)). Opposition No. 91220395 - 4 - site” along with a putative excerpt from that web site.10 Applicant’s brief also includes references to Wikipedia and putative excerpts therefrom.11 Applicant did not submit any testimony or evidence during his trial period, which is now over, and any evidence submitted with his brief is untimely. Evidence not filed in compliance with the rules of practice governing opposition proceedings before the Board will not be considered. See Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1734-35 (TTAB 2012) (declaration and exhibits submitted with brief not an acceptable way to make evidence of record); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1846 n.8 (TTAB 2004) (materials submitted outside of applicant’s assigned testimony period and which failed to comply with the Board’s evidentiary rules given no consideration); The Maytag Co. v. Luskin’s, Inc., 228 USPQ 747, 748 (TTAB 1986) (collection of twenty-nine registrations listed in appendix to brief not considered because not in compliance with rules of practice). Because the evidence attached to the brief was not timely filed, we have not given it any consideration.12 In addition, we do not take judicial notice of Wikipedia entries or hyperlinks. In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767-68 (TTAB 2016) (Board does not take judicial notice of Wikipedia entries); Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (search summary inadmissible because it merely offers links 10 27 TTABVUE 7. 11 27 TTABVUE 5-6, 8-9. 12 To the extent Applicant sought by his motion to also reopen his testimony period for purposes of submitting evidence, the evidence referenced in his brief is, as discussed above, improperly submitted in any event. Opposition No. 91220395 - 5 - to information not otherwise of record); In re HSB Solomon Associates LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (Board will not utilize web address to access site and consider whatever content appears). Accordingly, Applicant’s late-filed brief is accepted with the exception that the evidence submitted and discussed therein will be given no consideration. In order to avoid further delay in the disposition of this matter, we hereby exercise our discretion to determine this matter on its merits without resetting Opposer’s time for filing a reply brief. II. Record The record comprises the pleadings and, without any action by the parties, the file of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1). Opposer submitted the following evidence by notice of reliance: The file histories of its pleaded registrations (23 TTABVUE 6-420); Printouts from third-party informational and commercial web sites referencing Opposer’s Marks, trade channels, use in commerce, and the fame of Pelé (23 TTABVUE 50-94, 421-493, 531-539); Applicant’s responses to Opposer’s written discovery requests (23 TTABVUE 516-527); and The file history of Applicant’s Mark (23 TTABVUE 494-515). Opposer also submitted the following testimony: The declaration of Mr. Kevin Griffin, CEO and CIO of Opposer’s parent company, and exhibits thereto (24 TTABVUE 1-89). III. Opposer’s Standing and Priority Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 Opposition No. 91220395 - 6 - USPQ2d 1058, 1062 (Fed. Cir. 2014); see also, e.g., Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). Opposer’s standing to oppose registration of Applicant’s mark is established by its pleaded registrations, which the record shows to be valid and subsisting, and owned by Opposer. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012). “Once standing is established, the opposer is entitled to rely on any of the grounds set forth in section 2 of the Lanham Act which negate applicant’s right to its subject registration.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012) (quoting Jewelers Vigilance v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987)); see also Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1385-86 (TTAB 1991) (noting that, once the opposer shows “a personal interest in the outcome of the case … the opposer may rely on any ground that negates applicant’s right to the registration sought”). Because Opposer’s pleaded registrations are of record and Applicant did not counterclaim to cancel them, priority is not an issue with respect to the marks in and goods identified by Opposer’s registrations. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)). In order for Opposer to prevail on a claim of likelihood of confusion based on its ownership of common law rights in its PELÉ mark, the mark must be distinctive, inherently or otherwise, and Opposer must show priority of use. See Towers v. Advent Software, Inc., 913 F.2d 942, 945, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990); Otto Roth Opposition No. 91220395 - 7 - & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). In this case, neither party addressed the issue of the distinctiveness of Opposer’s common law PELÉ mark. However, there is nothing in the record to suggest that Opposer’s PELÉ mark is not inherently distinctive as used in connection with its goods and services. Inasmuch as the parties have treated the PELÉ mark as being inherently distinctive, and because Applicant has not argued or introduced any evidence to suggest otherwise, we will do the same in making our determination. Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1023 (TTAB 2009) (“Respondent has not raised an issue as to the distinctiveness of petitioner’s mark or otherwise put petitioner on notice of this defense, and therefore we find that the mark is distinctive.”) (citing Wet Seal Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1634 (TTAB 2007)). In this case, Opposer introduced the declaration of Mr. Kevin Griffin attesting that “Opposer, its related companies, and/or its authorized licensees have made continuous common law use of the PELÉ mark since at least 2011 “on and in connection with a wide variety of goods and services including clothing, namely jerseys, and soccer balls, DVDs, bags, and general sports paraphernalia.”13 Mr. Griffin further declares that Opposer, its related companies and licensees have continued to advertise, market and sell products bearing the PELÉ mark since that time.14 Mr. Griffin introduced into the record examples of such use through several 13 Griffin Declaration at para. 3, 7, 10-13; 24 TTABVUE 3-4. 14 24 TTABVUE 4. Opposition No. 91220395 - 8 - online retailers.15 Opposer’s common law first use date of 2011 is earlier than the May 8, 2014 filing date of the involved application, which is the earliest date upon which Applicant may rely for purposes of priority.16 Opposer submitted a screenshot from the eBay website, dated February 28, 2015, showing Applicant’s shirts under his PELE SAY mark available for sale.17 Even if we accept that this evidence is sufficient to establish a date of first use of Applicant’s mark on his goods, the date is subsequent to Opposer’s first use date. We find that Opposer’s declaration testimony is clear and consistent, supported by evidence, and is uncontradicted by any testimony or evidence submitted by Applicant. Therefore, we find that Opposer has demonstrated, by a preponderance of the evidence, common law use of the mark PELÉ in connection with goods including clothing, specifically jerseys, since 2011 - a date prior to the earliest date Applicant can rely on, and that it has made continuous use of the PELÉ mark. See National Bank Book Co. v. Leather Crafted Products, Inc., 218 USPQ 826, 828 (TTAB 1993) (oral testimony may be sufficient to prove the first use of a party’s mark when it is based on personal knowledge, it is clear and convincing, and it has not been contradicted); Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305, 15 24 TTABVUE 28-89. 16 Applicant argues, as discussed further infra, that his PELE SAY mark is intended to connote the “Hawaiian Volcano Goddess Pele which is and has been legend in the Islands of Hawaii and thereby the United States and the world long before the Opposer’s mark was filed.” (Applicant’s brief, 27 TTABVUE 6.) However, Applicant does not argue that beliefs surrounding the goddess Pele accrue to his constructive date of first use of his PELE SAY mark for purposes of priority, and we do not so find. Nor does Applicant assert or introduce any evidence to support an earlier date of use of his PELE SAY mark than the filing date of the involved application. 17 23 TTABVUE 527. Opposition No. 91220395 - 9 - 316 (TTAB 1979) (oral testimony may be sufficient to establish both prior use and continuous use when the testimony is proffered by a witness with knowledge of the facts and the testimony is clear, convincing and consistent to convince the Board of its probative value). IV. Likelihood of Confusion We assess all 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); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Opposer bears the burden of proving its claim by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848. In any likelihood of confusion analysis, the similarities between the goods or services and the similarities between the marks - the first two du Pont factors - are key considerations. See 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 Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1288 (Fed. Cir. 2016) (“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. Focus on Opposer’s Common Law PELÉ Mark Opposition No. 91220395 - 10 - For purposes of the du Pont factors that are relevant to this opposition we will consider Applicant’s involved mark and identified goods and Opposer’s common law mark PELÉ, identifying a variety of goods including jerseys. If likelihood of confusion is found as to this mark and goods, it is unnecessary to consider Opposer’s pleaded registrations. Conversely, if likelihood of confusion is not found as to the PELÉ mark and goods, we would not find likelihood of confusion as to the marks and goods in the pleaded registrations. See, e.g., In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). B. Similarity of the Goods and Trade Channels We now consider the second and third du Pont factors, the similarity or dissimilarity of the parties’ goods and the parties’ established, likely-to-continue trade channels. It is well established that the goods of the parties need not be similar or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective goods of the parties are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. See Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); In re Int’l Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue, of course, is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source thereof. In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Opposition No. 91220395 - 11 - Applicant’s goods are identified as “wearable garments and clothing, namely, shirts.” There are no limitations in Applicant’s identification of goods regarding the nature or type of shirts offered under his mark. Opposer has introduced testimony and evidence that it, its related companies and licensees offer jerseys with the PELÉ mark, occasionally appearing as PELE without the diacritical mark.18 A “jersey” is defined as “a close-fitting, knitted sweater or shirt.”19 Thus, Opposer’s jerseys are encompassed by Applicant’s more broadly identified shirts. See, e.g., Southwestern Mgmt., Inc. v. Ocinomled, Ltd, 115 USPQ2d 1007, 1025 (TTAB 2015) (With a broad identification of services, “we must presume that the services encompass all services of the type identified”). We note in addition that Applicant neither argues nor presents evidence that his goods are not related to those offered by Opposer under the PELÉ mark. There are no restrictions in Applicant’s identification of goods as to their channels of trade. See Octocom, 16 USPQ2d at 1787 (“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.”) (citations 18 23 TTABVUE 426-433, 459, 467; 24 TTABVUE 3-4, 31-33, 35, 63, 71. 19 Dictionary.com unabridged, based upon the Random House Unabridged Dictionary (2018). The Board may take judicial notice of dictionary definitions, including online dictionaries which exist in printed format. See In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014); In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002). See also University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Opposition No. 91220395 - 12 - omitted). As a result, Applicant’s goods are presumed to move in all trade channels customary therefor, and to be available to all classes of consumers. Applicant argues without evidentiary support that Further, the subject matter for channels of trade and the possible consumers are not identical as the “Pele Say” category for the channel of trade is clearly slanted towards the academic, history, art history, religious and meteorological category of trade where the Opposer’s product of trade is one dimensional, being only one product of trade, namely sports memorabilia.20 Opposer has introduced testimony and evidence that its jerseys under the PELÉ mark are available both in brick and mortar stores and online at retailers including soccer.com, amazon.com, shop.nycosmos.com.21 Evidence further establishes that both Applicant’s goods and Opposer’s goods under its PELÉ mark are available on the same page on eBay.22 Thus, there is evidence of a partial overlap in the parties’ channels of trade, and no specified restrictions in Applicant’s identification of goods that would impose limitations thereupon. In addition, there is no evidence to support Applicant’s speculative claim that the parties market their goods to different groups of consumers. Accordingly, we find that the du Pont factors of similarity of the goods and trade channels weigh heavily in favor of finding a likelihood of confusion. 20 27 TTABVUE 9. 21 24 TTABVUE 4, 28-89. 22 23 TTABVUE 527. Opposition No. 91220395 - 13 - C. Strength of Opposer’s Mark We next evaluate the strength of Opposer’s mark and the scope of protection to which it is entitled. The fifth du Pont factor is the fame of the prior mark, and the sixth factor is the number and nature of similar marks in use for similar goods or services. du Pont, 177 USPQ at 567. In determining strength of a mark, we consider both inherent strength, based on the nature of the mark itself, and commercial strength or recognition. Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”). Commercial strength may be measured indirectly, by volume of sales and advertising expenditures and factors such as length of use of the mark, widespread critical assessments, notice by independent sources of the goods or services identified by the mark, and general reputation of the goods or services. Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014). In this case, Opposer has introduced evidence regarding the fame of the soccer player Edson Arantes do Nascimento, universally known by his nickname Pelé.23 While the record establishes that Pelé is widely regarded as the greatest footballer to ever play, it is not clear to what extent his fame translates to fame or strength of Opposer’s PELÉ mark. Applicant opines without evidentiary support that “Opposer is also arguing a soccer player from a past generation in the 1970’s would be well 23 23 TTABVUE 50-72; 484-493. Opposition No. 91220395 - 14 - known by todays’ public and youth which is not true.”24 Opposer has introduced evidence that jerseys, photographs, soccer balls and other memorabilia signed by Pelé are sought-after by collectors, and fetch prices from $100 to $900.25 However, the cost of these items appears to reflect the celebrity of Pelé himself rather than the strength of Opposer’s PELÉ mark inasmuch as jerseys not so autographed sell for $65 to $100.26 Considering the record as a whole, including the very limited evidence pertaining to both conceptual and commercial strength, we find that Opposer’s mark is inherently distinctive. Further, the record does not establish that the PELÉ mark is entitled to only a narrowed scope of protection due to third-party use or registration of confusingly similar marks for similar or related goods or services. We therefore accord Opposer’s PELÉ mark the strong scope of protection to which inherently distinctive marks, and with a certain degree of commercial strength, are entitled. See Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (stating that likelihood of confusion fame varies along a spectrum from very strong to very weak). D. Similarity of the Marks The first du Pont factor is the similarity or dissimilarity of the parties’ marks. In a likelihood of confusion analysis, we compare the marks in their entireties for 24 27 TTABVUE 6. 25 23 TTABVUE 426-431. 26 23 TTABVUE 427-428. Applicant’s shirts sell for $30. Id. at 527. Opposition No. 91220395 - 15 - similarities and dissimilarities in appearance, sound, connotation and commercial impression. Stone Lion, 110 USPQ2d at 1160. Applicant’s mark PELE SAY in standard characters fully encompasses Opposer’s distinctive mark PELÉ. While there is no rule that likelihood of confusion automatically applies where one mark encompasses another, in this case, as in many others, the fact that Opposer’s entire mark is incorporated in Applicant’s mark increases the similarity between the two. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (finding applicant’s CAREER IMAGE marks similar to registered mark CREST CAREER IMAGES). Thus, the marks are similar in appearance and sound inasmuch as Opposer’s mark is identical to the first term in Applicant’s two-word mark. Opposer’s PELÉ mark includes a diacritical mark over the second letter É. While Applicant may not use the same diacritical markings as in Opposer’s mark, this does not preclude a finding that the marks, when considered in their entireties, are similar for likelihood of confusion purposes. We note, for example, that the USPTO does not treat diacritical markings as requiring a special form drawing. Trademark Manual of Examining Procedure (TMEP) § 807.03(b). Because diacritical marks are not commonly used in English, the acute accent over the second letter “E” in Opposer’s mark gives the impression that the word is from another language. But if PELÉ has a significantly different pronunciation in any foreign language than the word PELE in Applicant’s PELE SAY mark, it is not apparent on this record. Opposition No. 91220395 - 16 - Moreover, the significance of the term PELE in Applicant’s mark PELE SAY is reinforced by its location as the first word thereof. Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897) TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed in the mind of a purchaser and remembered”); see also Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers must first notice the identical lead word); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM for hairdressing and conditioner); In re South Bend Toy Mfg. Co., Inc., 218 USPQ 479, 480 (TTAB 1983) (LIL’ LADY BUGGY for toy doll carriages and LITTLE LADY for doll clothing). With regard to meaning, Opposer’s PELÉ mark is intended to and clearly connotes the soccer player Pelé. Applicant argues that his mark connotes the Hawaiian volcano goddess Pele and, with regard to meaning: The directive to the listener of the Applicant’s mark, “Pele Say” is that the public should recall what historical words and acts the Goddess of Volcanoes has done in the past or to listen with attention to what the Goddess of Volcanoes wants to convey to her mortals. Understanding that the Applicant’s mark is referencing the word of “God” or of a “Goddess” makes the Applicant’s mark very different than the Opposer’s mark and meaning.27 However, there is no evidence regarding whether the consuming public will associate Applicant’s PELE SAY mark with the goddess Pele, the soccer player Pelé, or ascribe any other meaning to the mark. Applicant’s unsupported assertion that consumers are likely to associate the wording PELE SAY on a tee shirt, without any apparent 27 27 TTABVUE 11. Opposition No. 91220395 - 17 - reference or other indicia, to the Hawaiian volcano goddess Pele thus is entitled to little if any probative weight. To the contrary, it is equally likely that consumers will view PELE SAY as a reference to the world famous soccer player Pelé, particularly inasmuch as shirts and jerseys bearing both marks appear on eBay. We acknowledge that the presence of SAY as the trailing term in Applicant’s mark distinguishes it somewhat visually and aurally from Opposer’s mark. This point of distinction, however, does not significantly diminish the strong similarities in appearance, sound, connotation and overall commercial impression engendered by these two marks. We find that the first DuPont factor weighs in favor of a finding that confusion is likely. E. Conclusion on Likelihood of Confusion We have carefully considered all arguments and evidence of record, including any not specifically discussed herein. Based thereupon, we find that Applicant’s mark is similar to Opposer’s strong and distinctive mark; and that Applicant’s goods encompass those of Opposer and thus are legally identical and may be encountered in the same channels of trade by common classes of consumers that will include ordinary consumers exercising a normal degree of care. Accordingly, we find that Opposer has carried its burden to establish by a preponderance of the evidence its standing and priority, and that Applicant’s mark is likely to cause consumer confusion when used in association with his goods. Opposition No. 91220395 - 18 - Decision: The opposition to registration of application Serial No. 86275795 is sustained on the ground of likelihood of confusion.28 28 We do not reach the other ground for opposition. “Like the federal courts, the Board has generally used its discretion to decide only those claims necessary to enter judgment and dispose of the case. . . [T]he Board’s determination of registrability does not require, in every instance, decision on every pleaded claim.” Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013).