XOXO Clothing Company, Inc. and Global Brand Holdings, LLCv.Aytemizler Orgu Ve Dokuma Urunleri Uretim Limited Sirketi

Trademark Trial and Appeal Board

Oct 26, 2005

No. 91155594 (T.T.A.B. Oct. 26, 2005)

Mailed:
26 October 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

XOXO Clothing Company, Incorporated and Global Brand
Holdings, LLC1
v.
Aytemizler Orgu Ve Dokuma Urunleri
Uretim Limited Sirketi.
_____

Opposition No. 91155594
to application Serial No. 75549496

_____

Louis S. Ederer of Torys LLP for XOXO Clothing Company,
Incorporated and Global Brand Holdings, LLC.

Jeremy Craft of Harrison & Egbert for Aytemizler Orgu Ve
Dokuma Urunleri Uretim Limited Sirketi.2
______

Before Quinn, Hairston, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On 08 September 1998, applicant (Aytemizler Orgu Ve
Dokuma Urunleri Uretim Limited Sirketi) applied to register
the mark shown below on the Principal Register for the
following goods in Class 25:

1 In view of the assignments of the pleaded registrations,
recorded at the Office's Assignment Branch at Reel 2823, Frame
0392, Global Brand Holdings, LLC is joined as party opposer. See
TBMP § 512 (2d ed. rev. 2004). To the extent we refer to
opposers by name, we will refer to assignee.
2 Applicant did not file a brief in this case.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91155594
2
Skirts, sweaters, waistcoats, jackets, trousers,
overcoats, raincoats, women's coats, hooded jackets,
trench coats, sweat shirts, pullovers, blouses, skirts,
parkas, masquerade costumes, dresses, T-shirts, shorts,
blue jeans, evening dresses, suits, jump suits,
uniforms, bathrobes, bath slippers, beach wear,
neckties, bow ties, men's scarves, hats, capes, berets,
scarves, gloves, shawls, arm bands, belts, sweat
shirts, socks, underskirts, body suits, panties,
singlets, brassieres, corsets, camisoles, garters,
night dresses, morning dresses, shoes, high boots,
sports shoes; parts of shoes, namely, heels, legs, and
vamps

The application is based on an allegation of a bona fide
intention to use the mark in commerce.
The registration of applicant’s mark has now been
opposed by Global Brand Holdings, LLC (opposer). Opposer
has alleged that there is a likelihood of confusion under
Section 2(d) of the Trademark Act (15 U.S.C. § 1052(d))
between applicant’s mark as proposed to be used on its goods
and the following registrations that opposer owns for the
identified goods and services.
XOXO in standard character form for “clothing, namely,
men’s, women’s and children’s shirts, shorts, pants,
jackets, T-shirts, sweatshirts, hats, socks, sweaters
and swimwear” in Class 25.3

XOXO in standard character form for “luggage, handbags,
purses all made from leather, imitations of leather and
other material” in Class 18.4

3 Registration No. 2,009,243 issued 22 October 1996, affidavits
under Sections 8 and 15 accepted or acknowledged.
4 Registration No. 2,102,098 issued 30 September 1997, affidavits
under Sections 8 and 15 accepted or acknowledged.
Opposition No. 91155594
3
XOXO in standard character form for “eyeglasses and
sunglasses” in Class 9.5

XOXO JEANS in standard character form for “women's, and
children's clothing, namely jeans, dresses, skirts,
shorts, jackets, shirts, pants, blouses, vests,
blazers, jeans, overalls, sweatshirts, sweatpants,
tank-tops, tee-shirts, [and] hats” in Class 25.6

XOXO in standard character form for “retail clothing
store services” in Class 35.7

XOXO in standard character form for “women’s and
children’s shoes” in Class 25.8

XOXO in standard character form for “jewelry, watches
and other horological and chronometric instruments,
namely, clocks” in Class 14.9

Applicant has denied the salient allegations of the
notice of opposition.
The Record
The record consists of the pleadings, the file of the
involved application; and opposer’s stipulated testimony by
declaration with exhibits of Jennifer Fettig, opposer’s
representative responsible for business development.
Priority
Inasmuch as opposer has shown that it owns several
trademark registrations for the mark XOXO for various goods
and services, opposer has priority. See King Candy Co. v.

5 Registration No. 2,269,840 issued 10 August 1999, affidavits
under Sections 8 and 15 accepted or acknowledged.
6 Registration No. 2,320,710 issued 22 February 2000.
7 Registration No. 2,370,004 issued 25 July 2000.
8 Registration No. 2,436,377 issued 20 March 2001.
9 Registration No. 2,456,625 issued 05 June 2001.
Opposition No. 91155594
4
Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974).
Likelihood of Confusion
The central issue in this case is whether there is a
likelihood of confusion. Applicant seeks registration for
the mark OXXO (stylized) for numerous clothing items while
opposer relies on its ownership of several registrations for
the mark XOXO, most for those letters alone, in standard
character form for various goods and services. The Federal
Circuit and its predecessor court have set out the factors
that are relevant in these types of cases. See In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). See also In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); and
Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896
(Fed. Cir. 2000).
Two key considerations in likelihood of confusion cases
are the similarities and dissimilarities of the marks and
the relatedness of the goods and/or services. We will first
consider the relationship between applicant’s and opposer’s
goods and services. Numerous items in applicant’s
identification of goods are identical or virtually identical
to opposer’s goods in Registration Nos. 2,009,243 and
2,436,377. Opposer’s registrations are for men’s, women’s
and children’s shirts, shorts, pants, jackets, T-shirts,
Opposition No. 91155594
5
sweatshirts, hats, socks, sweaters, swimwear, and women’s
and children’s shoes. Applicant’s identification of goods
similarly includes shorts, trousers, jackets, T-shirts,
sweat shirts, hats, socks, sweaters, beach wear, and shoes.
Therefore, applicant’s and opposer’s goods are not only
related, they are in part identical. “When marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992). Furthermore, since the goods are
identical, “they must be presumed to travel in the same
channels of trade, and be sold to the same class of
purchasers.” In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994).
The second factor we consider concerns the similarities
and dissimilarities of the marks. Applicant seeks
registration for the mark OXXO (stylized) and opposer relies
on numerous registrations for the mark XOXO. Inasmuch as
opposer’s mark is depicted in a typed or standard character
form, its marks are not confined to any particular display
and, therefore, there is no viable difference in the marks
based on applicant’s stylization of its mark. Squirtco v.
Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir.
1983).
Opposition No. 91155594
6
When we compare marks, we must examine “the similarity
or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (internal quotation marks omitted). A feature of
these marks is the fact that they both consist of arbitrary
letters. The case law distinguishes between marks that
consist of arbitrary letters and marks that are recognizable
words. HRL Associates, Inc. v. Weiss Associates Inc., 902
F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990) (“On the
issue that letters are confusing, this court also agrees
with the Board. It is more difficult to remember a series
of arbitrarily arranged letters than it is to remember
figures”). See also Edison Brothers Stores, Inc. v.
Brutting E.B. Sport-International GmbH, 230 USPQ 530, 533
(TTAB 1986):
We must also consider the well-established principle of
our trademark law that confusion is more likely between
arbitrarily arranged letters than between other types
of marks. This principle was set forth fifty years ago
in the decision of the Court of Customs and Patent
Appeals in Crystal Corp. v. Manhattan Chemical
Manufacturing Co., 75 F.2d 506, 25 USPQ 5, 6 (1935)
wherein the following reasoning was applied in holding
Z.B.T. likely to be confused with T.Z.L.B. for talcum
powder.

We think that it is well known that it is more
difficult to remember a series of arbitrarily
arranged letters than it is to remember figures,
syllables, words, or phrases. The difficulty of
Opposition No. 91155594
7
remembering such lettered marks makes confusion
between such marks, when similar, more likely.

Inasmuch as the parties’ marks are not recognized
words, they would not have any specific meaning. The only
meaning the marks may have is that “the letter ‘X’ signifies
‘kisses’ and the letter ‘O’ signifies ‘hugs.’” Fettig
declaration at 11. If opposer’s marks would have the
meaning “kisses” and “hugs,” opposer’s witness points out
that “consumers may forget, or not be concerned, as to the
particular order of the ‘X’s’ and ‘O’s’ appearing on
Global’s XOXO products.” Id. Even if purchasers associate
the letters “X” and “O” as symbols for “kisses” and “hugs,”
these symbols can be used in different order. Furthermore,
both marks would still have the same meaning, i.e., two
kisses and two hugs.
When the marks are pronounced, because they consist of
arbitrary letters, they would most likely be pronounced as
the letters themselves (O-X-X-O and X-O-X-O). Under these
circumstances, it is easy to understand how consumers may
become confused as to the exact order of the letters. The
appearances of the marks are also similar because they have
the exact same letters with only the order of the first two
letters being reversed. In addition, the commercial
impressions of XOXO and OXXO would be similar because they
are likely to be viewed as a series of letters “X” and “O”
Opposition No. 91155594
8
and the exact order of the “X’s” and “O’s” is not as
significant as with recognized words.
Reversing the order of the first letters in certain
circumstances may create significantly different marks as in
the case of the words BABY and ABBY. The difference in the
order of the “A” and “B” profoundly effects the meaning,
pronunciation, appearance, and commercial impression of the
words. Prospective purchasers are likely to assume that
there is no association between ABBY and BABY goods or
services. However, unlike the example, applicant’s OXXO and
opposer’s XOXO marks are not recognizable words. Purchasers
familiar with the mark XOXO may not recall the exact order
of the arbitrary letters and we must keep in mind that
"[h]uman memories … are not infallible." In re Research and
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986), quoting, Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).
Furthermore, the presence of two “X’s” in a short word or
term in English is unusual and this fact also emphasizes the
similarity of the marks. Therefore, we conclude that the
marks OXXO (stylized) and XOXO are similar.
We also have considered that opposer has obtained
registrations for its XOXO on a number of registrations
involving clothing, luggage, handbags, purses, eyeglasses,
sunglasses, retail clothing store services, and clocks. In
Opposition No. 91155594
9
addition to the pleaded registrations, opposer’s witness
also introduced three additional registrations that opposer
owns. Two are for the mark:

The first is for “women’s and children’s shoes” in
Class 25.10 The second is for “women's, and children's
clothing, namely dresses, skirts, shorts, jackets, shirts,
pants, blouses, vests, blazers, jeans, overalls,
sweatshirts, sweatpants, tank-tops, tee-tops, tee-shirts,
[and] hats” in Class 25.11 The third additional
registration is for the mark FRAGILE BY XOXO in standard
character form for “eyeglasses and sunglasses” in Class 9.12
Opposer has also provided a list of licensees of its XOXO
mark for products under the following headings: Apparel,
Belts/Cold Weather, Dresses, Footwear, Fragrance, Handbags,
Intimates, Kids, Outerwear, Sleepwear, Swimwear, and
Sunglasses. Fettig declaration at 6 and Ex. B. The
advertising (Exhibit D) shows that opposer is using the mark

10 Registration No. 2,484,317 issued 04 September 2001. The word
“America” has been disclaimed.
11 Registration No. 2,043,508 issued 11 March 1997; affidavits
under Sections 8 and 15 accepted or acknowledged. The term
“America” has been disclaimed.
12 Registration No. 2,556,155 issued 02 April 2002.
Opposition No. 91155594
10
in association with a wide variety of clothing and fashion
items, including shoes, boots, tops, jeans, swimwear,
handbags, vests, and shirts. This evidence of registration
and use of the XOXO mark on a wide variety of products
favors opposer.
Opposer also argues that its “XOXO mark is a famous and
strong mark, and therefore the XOXO mark should be accorded
a wide scope of protection.” Brief at 18. Opposer has
submitted evidence that it regularly advertises its XOXO
products in magazines such as Teen Vogue, In Style, Vogue,
and Cosmopolitan. Fettig declaration at 7 and Ex. D.
Ms. Fettig (p. 5) also testified that revenues for the XOXO
brand “have increased to approximately $150-200 million” and
that opposer spent nearly $2.2 million promoting its brand
in 2003. Fettig Declaration at 8. Ms. Fettig also
testified (p. 9) to other methods opposer uses to promote
the XOXO mark.
In addition to the traditional methods of advertisement
and promotion, the XOXO brand has been at the forefront
of product placement and endorsement by celebrities in
the television, film and music industries.

On television, the XOXO brand has sponsored such events
as The Miss America Pageant, The VH-1 Fashion Awards
and The Miss Teen USA Pageant, and its products have
been seen on such shows as, “7th Heaven,” “Charmed,”
“Ally McBeal,” “E! A Makeover Story,” “The Oprah
Winfrey Show,” “Los Bel Tran,” “Motown Live,” “MTV 120
Minutes,” “MTV Beach House,” “MTV Blame Game,” “The
Price is Right,” “Pajama Party,” “Solo En America” and
“Studio Y.”

Opposition No. 91155594
11
XOXO products have also been seen in movies, including,
“Almost Famous,” “100 Girls,” “The Test,” “Empire,” “In
Pursuit,” “Licensed to Steal,” “Like Mike,” and “Lift,”
and worn by members of the musical groups 3LW, Before
Dark, Darmozel, Flight 180, Icy and Jewel.

Finally, many celebrities have worn XOXO products to
pubic events including, Britney Spears, Christina
Aguilera, Cindy Blackman, Farrah Fawcett, Jessica
Simpson, Kathy Griffen, Kylie Bax, Leslie Grossman,
Mary J. Blige, Mena Suvari, Paula Cole, Pink and
Spinderella.

Opposer has also submitted evidence that its XOXO mark
has been the subject of numerous articles in the press.
See, e.g., Chicago Sun-Times, 01 October 1995 (“Trendy
sportswear makers such as Jalate, Doll House and XOXO are
further feminizing these looks for fall”); Crain’s New York
Business, 24 February 1997 (“The industry’s two hottest
junior manufacturers, Rampage and XOXO”); WWD, 25 February
1998 (“Lola, Inc., which markets junior powerhouse XOXO”);
and WWD, 20 July 2001 (“Key junior brands include XOXO,
Guess and Tommy”). Fettig Ex. H. The Federal Circuit has
held that the fame “of an opposer’s mark, if it exists,
plays a dominant role in the process of balancing the DuPont
factors” and “likelihood of confusion fame varies along a
spectrum from very strong to very weak.” Palm Bay Imports,
73 USPQ2d at 1694 (internal quotation marks omitted).
Opposer’s evidence supports a conclusion that its XOXO mark
has achieved some fame and, therefore, this factor must be
resolved in opposer’s favor.
Opposition No. 91155594
12
When we consider the evidence of record in light of the
relevant factors, we conclude that there is a likelihood of
confusion in this case. The goods of the parties are
identical, at least in part, and the channels of trade and
purchasers, therefore, would be the same. The marks OXXO
and XOXO are similar and opposer’s mark has achieved some
fame. When prospective purchasers would encounter the mark
OXXO (stylized) on clothing such as sweaters, shoes, and
shorts, they are likely to believe that these products are
associated with the source of the same or similar products
sold under the mark XOXO.

Decision: The opposition to the registration of
application No. 75549496 is sustained.