Best Industries (PVT) Ltd.

Trademark Trial and Appeal Board

Oct 8, 2021

88643027 (T.T.A.B. Oct. 8, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: October 8, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Best Industries (PVT) Ltd.
_____

Serial No. 88643027
_____

Lisa J. Reppert of Reppert Kelly & Vytell LLC,
for Best Industries (PVT) Ltd.
Nakia D. Henry, Trademark Examining Attorney, Law Office 129,
Pam Willis, Managing Attorney.
_____

Before Zervas, English and Allard,
Administrative Trademark Judges.

Opinion by Allard, Administrative Trademark Judge:
Best Industries (PVT) Ltd. (Applicant) seeks registration on the Principal Register
of the mark JORDANA in standard character format for “Clothing, namely, women’s
apparel and sportswear, namely, pants, dresses, shirts, skirts, coats, sweaters,
blouses, shorts and jackets” in International Class 25.1

1 Application Serial No. 88643027 was filed under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), on October 4, 2019, claiming a date of first use anywhere and in interstate
commerce of October 4, 2019.

Serial No. 88643027
- 2 -
Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s mark so resembles the registered standard
character mark BY JORDANA for “Footwear; Leggings” in International Class 252 as
to be likely to cause confusion, mistake, or to deceive.
After the refusal was made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the request for reconsideration, and
the Board resumed the appeal. Both Applicant and the Examining Attorney have
filed briefs. We affirm the refusal to register.
I. Preliminary Matter

Applicant attached certain evidence to its Request for Reconsideration (January
4, 2021 Req. Recon. TSDR 10-34) that was previously attached to Applicant’s
response to the first Office Action (July 9, 2020 Office Action response TSDR 18, 26-
48).3 The Board has long discouraged multiple submissions of the same evidence
because it can cause confusion in reviewing the record and delay in issuing a final
decision. In re Virtual Independent Paralegals, LLC, 2019 USPQ2d 111512, *1 (TTAB
2019) (“The Board has long discouraged multiple submissions of the same evidence
because they are unnecessarily cumulative.”).

2 Registration No. 5491714, issued June 12, 2018.
3 Page references to the application record refer to the online database of the USPTO’s
Trademark Status & Document Retrieval (“TSDR”) system. All citations to documents
contained in the TSDR database are to the downloadable .pdf versions of the documents in
the USPTO TSDR Case Viewer. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d
1400, 1402 n.4 (TTAB 2018). References to the briefs on appeal refer to the Board’s
TTABVUE docket system. Before the TTABVUE designation is the docket entry number;
after this designation are the page references, if applicable.
Serial No. 88643027
- 3 -
II. Likelihood of Confusion

Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the issue of likelihood of confusion. In re E.I.
duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(“DuPont”); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203-04
(Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and
argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed.
Cir. 2019).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods. 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., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (quoting Han Beauty, Inc. v. Alberto—
Culver Co., 236 F.3d 1333, 1336 (Fed. Cir. 2001) (alteration in original))); In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997).

Serial No. 88643027
- 4 -
A. Similarity of the Goods, Channels of Trade, and Conditions Under
Which Sales are Made

We turn now to the DuPont factors considering the similarity of the goods,
channels of trade, and conditions under which sales are made, focusing on the goods
as they are identified in the involved application and the cited registration. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014) (goods as identified in involved application and cited
registration compared); Octocom Sys., Inc. v. Houston Computer Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
i. Relatedness of the Goods
It is well established that it is not necessary that the goods of the involved
application and cited registration be similar or competitive, or even that they move
in the same channels of trade, to support a holding of likelihood of confusion. It is
sufficient that the respective goods 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. Coach Servs., Inc. v. Triumph Learning, LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Even if the goods
and services in question are not identical, the consuming public may perceive them
as related enough to cause confusion about the source or origin of the goods and
services.”); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir.
Serial No. 88643027
- 5 -
2000) (“[E]ven if the goods in question are different from, and thus not related to, one
another in kind, the same goods can be related in the mind of the consuming public
as to the origin of the goods.”); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d
1100, 1109 (TTAB 2007); In re Int’l Tel. & Tel. Corp., 197 USPQ 910, 911 (TTAB
1978). Further, it is sufficient for a finding of likelihood of confusion if relatedness is
established for any item encompassed in the identification of goods or services in a
particular class. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981); Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d
377409, at *6 (TTAB 2019); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB
2015).
As evidence that Applicant’s and Registrant’s clothing items are related, the
Examining Attorney introduced Internet website evidence showing that Applicant’s
goods, i.e., women’s pants, dresses, shirts, skirts, coats, sweaters, blouses, shorts and
jackets, and Registrant’s goods, i.e., leggings and footwear, are the types of clothing
items that commonly emanate from the same source under a common mark.4 Jan. 9,
2020 Office Action TSDR 4, 7-99; 11 TTABVUE 9-12. The following screenshots (from
Gap.com) are representative of the evidence proffered by the Examining Attorney:

4 Applicant argues that the “[E]xaminer relies on the fact that because the Gap® sells
leggings, there is an inference that [Applicant] could easily expand into all other apparel
items like the Gap®.” 9 TTABVUE 10. Applicant has misconstrued the Examining Attorney’s
arguments and evidence. The Examining Attorney properly seeks to demonstrate that the
goods of the involved application and the cited registration are of the type that could emanate
from the same source and thus be considered “related” for purposes of determining likelihood
of confusion.
Serial No. 88643027
- 6 -

Serial No. 88643027
- 7 -

Serial No. 88643027
- 8 -

Serial No. 88643027
- 9 -

Jan. 9, 2020 Office Action TSDR 7-9, 12, 32, 42.
Additionally, the Examining Attorney proffered screenshots from the following
websites to evidence that the Applicant’s and Registrant’s goods are related:
 www.bananarepublic.com showing leggings, pants, footwear and dresses
(January 9, 2020 Office Action TSDR 44-99);
 www.victoriassecret.com showing footwear, leggings, t-shirts, shirts and tops
(Feb. 18, 2021 Denial of Req. Recon. TSDR 7-57);
 www.sneakermatchtees.com showing tees, sweatshirts and shoes (Feb. 18,
2021 Denial of Req. Recon. TSDR 61-64); and
 www.itailorshoes.com listing shoes and blouses (Feb. 18, 2021 Denial of Req.
Recon. TSDR 65-70).
Serial No. 88643027
- 10 -
Indeed, Applicant’s own evidence shows that the goods of the involved application
and the cited registration are related. For example, the screen shot below from the
ANTHROPOLOGIE BHLDN line (BHLDN.com) evidences that “dresses” and “shoes”
commonly emanate from the same source:

Office Action Response July 9, 2020 TSDR 23. Additionally, Applicant’s Yahoo search
results show that LuLaRoe offers both dresses and leggings (Id. at 33-34) and that
Nike offers tops, dresses and leggings. Id. at 33.
Serial No. 88643027
- 11 -
Based on the foregoing discussion, we find that the evidence of record establishes
that Applicant’s goods and the goods of the cited registration are related.5 In re
Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018)
(crediting relatedness evidence showing that third parties use the same mark for the
goods and services); Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1640 (TTAB
2007) (evidence of companies selling both clothing and fragrances supported a finding
that such goods are related); In re C.H. Hanson Co., 116 USPQ2d 1351, 1355-56
(TTAB 2015) (relatedness found where Internet evidence demonstrated goods
commonly emanate from the same source under a single mark). Indeed, we have
previously remarked that “as early as 60 years ago[,] the Federal Circuit’s
predecessor court noted that commercial diversification had led to companies offering
footwear and clothing items under the same mark.” In re Embiid, 2021 TTAB LEXIS
168, 2021 USPQ2d 577 at *29 (TTAB 2021) (citing Gen. Shoe Corp. v. Hollywood-

5 Applicant argues that “[t]o prove [that the goods of the involved application and cited
registration are related] the Examining Attorney attached multiple pages showing different
products that the Gap® and Victoria’s Secret® sells as presumptive evidence that the goods
of the Applicant and Referenced Mark are related and likely to overlap…. This argument is
weak where there is no comparison with these large companies to the Referenced Mark’s
Owner which is selling custom goods that are hand painted.” 9 TTABVUE 12-13. We construe
this as an argument that because Gap and Victoria’s Secret are large companies, the evidence
that they each sell the clothing offered by both Applicant and Registrant, the evidence is less
persuasive.

Even were we to discount the evidence of relatedness established by the GAP and
VICTORIA’S SECRET websites because of the scope of goods offered, the remaining evidence
of record, namely, SneakerMatchTees.com, iTailorshoes.com, Anthropologie (BHLDN.com),
and the hits for LuLaRoe and Nike in Applicant’s Yahoo search results, is sufficient to
support our finding that Applicant’s and Registrant’s goods are related. Hewlett-Packard Co.
v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that
“a single company sells the goods and services of both parties, if presented, is relevant to the
relatedness analysis”).
Serial No. 88643027
- 12 -
Maxwell Co., 277 F.2d 169, 125 USPQ 443, 444-45 (CCPA 1960)); see also In re Keller,
Heumann & Thompson Co., 81 F.2d 399, 28 USPQ 221, 223 (CCPA 1936).
Thus, this factor weighs heavily in favor of a likelihood of confusion.
ii. Channels of Trade, Purchasers and Conditions of Sale
Turning next to the channels of trade, purchasers and conditions of sale, we note
that the identifications of goods in the application and in the cited registration do not
include any restriction of any kind as to channels of trade, consumer or price. We
must, therefore, presume that the recited goods are sold in the ordinary or normal
trade channels for such goods to all consumers for such goods without any limitation
to price. Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351,
1357 (Fed. Cir. 2000) (“When the registration does not contain limitations describing
a particular channel of trade or class of customer, the goods or services are assumed
to travel in all normal channels of trade.”); DeVivo v. Ortiz, 2020 USPQ2d 10153, at
*39-41 (TTAB 2020) (“[A]bsent an explicit restriction in the application, the identified
goods in the application must be presumed to move in all channels of trade that would
be normal for such goods and to all usual prospective purchasers for goods of that
type.”). By their nature, women’s clothing, namely, pants, dresses, shirts, coats,
sweaters, tees and blouses and also footwear and leggings are general consumer items
that are marketed to the general population. Indeed, the record shows that these
items are sold together on the websites of apparel companies and they are purchased
or used in some form by virtually everyone. Accordingly, we find that the channels of
trade and classes of consumers overlap.
Serial No. 88643027
- 13 -
Applicant argues that the trade channels differ for several reasons, all of which
relate to actual “real world” conditions. First, Applicant’s clothing is inexpensive; for
example, pants typically sell for about $10 each, and all of Applicant’s garments are
priced well below $20 whereas Registrant’s “customized” shoes are “sold at a starting
price over $200[.]” Kumar Declaration ¶¶ 5-6, 12, 14 and Exhibit B attached thereto
(“Kumar Decl.”).6 Second, Applicant’s clothing is sold through discount department
stores, such as Boscov’s®, through both its website and in its brick-and-mortar store.
9 TTABVUE 8; Kumar Decl. ¶¶ 6-9 and Exhibits B, C attached thereto. In contrast,
Registrant’s goods are offered through Registrant’s website. 9 TTABVUE 7-9; Kumar
Decl. ¶¶ 12, 13 and Exhibits D, E, F attached thereto. Applicant also argues that it is
unaware of any department store that carries Registrant’s products. Kumar Decl.
¶ 10. Third, because of the high cost of Registrant’s goods, Registrant’s customers will
be sophisticated and exercise care. 9 TTABVUE 7-9.
Applicant’s arguments based on “real world” evidence about channels of trade, the
class of purchasers to whom sales of the goods are directed, and price differentials
have no impact on our decision as we must reach our decision on the basis of the
identifications of goods in the involved application and the cited registration. Stone
Lion Capital. Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1162 (Fed. Cir. 2014) (“It was proper, however, for the Board to focus on the
application and registrations rather than on real-world conditions ….”); Embiid, 2021

6 The Kumar Declaration is attached to the January 4, 2021 Request for Reconsideration
TSDR 14-69.
Serial No. 88643027
- 14 -
USPQ2d 577, at *28 (TTAB 2021) (“[W]e may not import restrictions into the
identification[s] based on alleged ‘real world conditions’ of the sort argued by
Applicant, or consider extrinsic evidence regarding Applicant and Registrant
themselves.”) (internal citation omitted). This is so, regardless of what the record may
reveal as to the particular nature of Applicant’s goods, the particular channels of
trade, the class of purchasers to which sales of the goods are directed, and the costs
of such goods. Stone Lion, 110 USPQ2d at 1162.
As to Applicant’s argument about the likely care consumers would exercise, we
must base our determination on the least sophisticated consumer of the identified
goods. Stone Lion, 110 USPQ2d at 1163 (cited in In re FCA US LLC, 126 USPQ2d
1214, 1222 (TTAB 2018) (“Board precedent requires our decision to be based on the
least sophisticated potential purchasers.”)). Because the respective identifications of
goods are unrestricted, we must assume that these goods are offered to ordinary
purchasers who exercise no more than ordinary care in their purchasing decisions.
Embiid, 2021 USPQ2d 577, at *31 (“By their nature, shoes, shirts and sweatshirts
are ‘general consumer goods’ that are ‘marketed to the general population,’ and that
are purchased or used in some form by virtually everyone…. ‘[S]hoes,’ ‘shirts,’ and
‘sweatshirts’ encompass … ‘off-the-shelf items purchased by all manner of people …
and worn by virtually everyone”.); see In re Fabfitfun, Inc., 127 USPQ2d 1670, 1673
(TTAB 2018) (no restriction of price). Here, the consumers for Applicant’s and
Registrant’s goods comprise the general public. While Registrant’s website suggests
that customized sneakers are offered, the description of goods in the cited registration
Serial No. 88643027
- 15 -
contains no such limitation. As such, the relevant goods in the involved application
and the cited registration would not involve a particular or raised level of care in the
purchasing decision. To the extent there is a raised level of care, in particular as to
the customized footwear, it is not one that would out-weigh the other factors.
In sum, the DuPont factors of the channels of trade, purchasers and conditions of
sale weigh heavily in favor of likelihood of confusion.
B. Strength of the Cited Mark
Because the strength of the cited BY JORDANA mark informs our comparison of
the marks, we address Applicant’s argument that the term JORDANA is “not unique”
and is “weak”, and, therefore, entitled to a narrow scope of protection. 9 TTABVUE
8-9.
In determining the strength of a mark, we consider both its inherent strength,
based on the nature of the mark itself, and its commercial strength, based on
marketplace recognition of the mark. See 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).”); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-
72 (TTAB 2011) (the strength of a mark is determined by assessing its inherent
strength and its commercial strength); Tea Bd. of India v. Republic of Tea Inc., 80
USPQ2d 1881, 1899 (TTAB 2006); 2 MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 11:83 (5th ed. 2021) (“The first enquiry focuses on the inherent
potential of the term at the time of its first use. The second evaluates the actual
Serial No. 88643027
- 16 -
customer recognition value of the mark at the time registration is sought or at the
time the mark is asserted in litigation to prevent another’s use.”). Market strength is
the extent to which the relevant public recognizes a mark as denoting a single source.
Tea Bd. of India, 80 USPQ2d at 1899.
Applicant relies on three types of evidence to support its position that the cited
mark is weak: (1) Internet evidence of third party use of the JORDANA mark
(9 TTABVUE 12; Kumar Decl. ¶¶ 18, 20 and Exhibits G and H thereto); (2) third
party registrations of the JORDANA mark (9 TTABVUE 12; Kumar Decl. ¶ 22 and
Exhibit J thereto); and (3) third party registrations of marks consisting of or
incorporating the term JORDAN (9 TTABVUE 10; Kumar Decl. ¶ 25 and Exhibit M
thereto), which Applicant maintains is the masculine7 version of the term JORDANA.
Each is discussed in turn.
i. Internet Evidence of Third Party Use of the JORDANA
Mark

Applicant relies on the Internet search results in Exhibits G and H to the Kumar
Declaration to support its position that the JORDANA component of the cited mark

7 We note that Exhibit I contains content from a single website, i.e., the House of Names, to
support the position that the term JORDAN is the masculine version of the term JORDANA.
We do not find this single reference, without more, particularly probative of the issue. We
take judicial notice of the fact that the term JORDAN has other meanings as well. 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); In re Red Bull GmbH, 78 USPQ2d 1375, 1377
(TTAB 2006). According to the COLLINS dictionary, which we accessed on October 6, 2021,
JORDAN is the name of a river in the Near East, a country in the Near East, a surname, and
can mean chamber pot. Nonetheless, we consider this evidence for whatever probative value
it offers.
Serial No. 88643027
- 17 -
is weak because it is used throughout the clothing industry to identify “numerous
styles of clothing” and to identify a “dress style, etc.” 9 TTABVUE 12.
Exhibit G consists of two pages of Yahoo search results responsive to the query
“by jordana leggings.”
Exhibit H consists of two types of evidence: (1) two pages of Google search results
responsive to the search query “jordana clothing,”8 and (2) select website printouts
showing the JORDANA mark used by third parties.
First, we turn to the list of search results at Exhibit G. In short, these search
results have little probative value because the JORDANA term does not even appear
in some of hits, such as the second, third and fourth hits (shown below):

8 Applicant asserts that “[i]f one inputs ‘by jordana leggings’ into a Yahoo® search, not one
hit for the [Registrant’s] mark appears” and that, similarly, a Google search for “Jordana
leggings” does not reveal any hits for Registrant. 9 TTABVUE 12; Kumar Declaration ¶ 19
and Exhibits G, H thereto. To the extent that Applicant’s argument constitutes an assertion
that Registrant’s mark is not in use with “leggings” and therefore, has been abandoned, this
argument is irrelevant. Collateral attacks on the validity of a cited registration are not
permissible in an ex parte appeal. In re Phillips-Van Heusen Corp., 228 USPQ 949, 950
(TTAB 1986) (claim that mark in cited registration is not in use is an impermissible collateral
attack on the validity of the registration in an ex parte proceeding).
Serial No. 88643027
- 18 -

Even where the term appears, the search results are of limited probative value
because the search results are truncated so the nature of the references is not entirely
clear. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2062 n.4 (TTAB 2013) (while
Google search engine retrieved over 100,000 results, evidence was of “limited
probative value”); In re BetaBatt Inc., 89 USPQ2d 1152, 1153 n.1 (TTAB 2008) (no
probative weight given to fact that search using Google search engine retrieved
22,200 hits; further, “hit list” does not corroborate that there are 22,200 relevant
references); In re Int’l Bus. Machines Corp., 81 USPQ2d 1677, 1679 n.3 (TTAB 2006).
For example, one hit refers to “Jordana Brewster in flattering cropped leggings
following…”, which conveys that the person’s name is Jordana; the term is not used
Serial No. 88643027
- 19 -
as a trademark for the leggings, so this hit is irrelevant. As for the reference to
“JORDAN. NIKE.COM”, it is not evident from the evidence of record what mark is
used, i.e., “JORDAN” or “JORDAN. NIKE.COM” or some other combination or
something else entirely. From what we can discern of Exhibit G, at best three hits
are potentially relevant: “Jordana spliced capri leggings (kohls.com),”9 “Jordan
leggings at Amazon (amazon.com/sports)”, and FLVR by Jordana Store.
Most Google search results at Exhibit H similarly have little probative value. For
example, one of the hits relates to the mark of the cited registration (byjordana.com),
so it does not support Applicant’s position. See Exhibit H at 34. Many others are
duplicate references.10
The following hits from websites included as a part of Exhibit H include sufficient
information and hence are relevant:
 Jordana high-wasted leggings by Fabletics.
 Jordana dress by Chicos.
 Jordana trim lace gown by Windsor.
 Jordana wedding dress by Maggie Sottero.
 Jordana Boutique Facebook page.
 Jordana dress by BHLDN.
 Jordana dress by Beginning Boutique.

9 The two hits for Jordana spliced Capri Leggings offered via kohls.com appear to be
duplicates.
10 There are six references to Jordana Leggings by Fabletics and three references to a
Jordana dress from the ANTHROPOLOGIE BHLDN line.
Serial No. 88643027
- 20 -
 Jordana Fashion Facebook page.11

Exhibit H (pages 36-41) shows eight third-party uses of a JORDANA formative mark.
Taken together, Exhibits G and H show eleven third party uses of the JORDANA
mark or, as Applicant calls it, the masculine equivalent JORDAN.
“‘Evidence of third-party use of similar marks on similar goods is relevant to show
that a mark is relatively weak and entitled to only a narrow scope of protection.’” In
re FabFitFun, 127 USPQ2d at 1674, (quoting Palm Bay Imps. v. Veuve Cliquot
Ponsardin Maaison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir.
2005)) (emphasis added). “Internet printouts, such as those offered by Applicant, ‘on
their face, show that the public may have been exposed to those internet websites and
therefore may be aware of the advertisements contained therein.’” Id. (quoting Rocket
Trademarks Pty Ltd v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011)). While
Applicant has not presented specific evidence concerning the extent, exposure, or
impact of these uses, “[i]n determining the degree of weakness, if any, of the shared
term [JORDANA], we must ‘adequately account for the apparent force of [third-party
use] evidence,’ regardless of whether ‘specifics’ pertaining to the extent and impact of
such use[s] have been proven.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746
(TTAB 2018), aff’d, 777 Fed. Appx. 516 (Fed. Cir. 2019) (mem), (quoting Jack Wolfskin

11 One screen shot states “Jordana Warmflash is an old soul who embraced fashion at a young
age.” Exhibit H at 38. This use of the term “Jordana” is irrelevant, as it not used as a
trademark to identify the source of any goods or services but rather to identify a particular
individual.
Serial No. 88643027
- 21 -
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015)).
Applicant has made of record eleven (11) third party uses of the term JORDANA
or its masculine equivalent. As the U.S. Federal Circuit Court of Appeals has
explained, “extensive evidence of third-party registration and use is ‘powerful on its
face,’ even where the specific extent and impact of the usage has not been
established.” Jack Wolfskin, 116 USPQ2d at 1136 (citing Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)). The third-
party use evidence here, however, “reflects a more modest amount of evidence than
that found convincing in Jack Wolfskin and Juice Generation, wherein ‘a considerable
number of third parties’ use [of] similar marks was shown.’” FabFitFun, 127 USPQ2d
at 1674 (quoting Juice Generation, 115 USPQ2d at 1674). As a result, we find that
Applicant has not established that the cited mark is commercially weak.
ii. Third Party Registrations of the JORDANA Mark

Applicant also argues that the JORDANA term is weak because formatives of it
have been registered for cosmetics by Jordana Cosmetics, LLC (“Jordana Cosmetics”).
9 TTABVUE 10; Exhibit J to the Kumar Decl. Specifically, Jordana Cosmetics owns
a registration for the JORDANA mark in standard character format (Reg. No.
2191057), the JORDANA and Design mark (Reg. No. 5591464), the J JORDANA USA
and Design mark (Reg. No. 4599961), and the J JORDANA and Design mark (Reg.
No. 2889270). We consider these registrations as one, since the predominant term in
Serial No. 88643027
- 22 -
each is JORDANA, the registrations cover legally identical goods, and they are
commonly owned.
We note that there is no evidence of record that any of the JORDANA formative
marks is in use with cosmetics.
iii. Third Party Registrations of Marks Incorporating the
Term JORDAN, i.e., the Purported Masculine Version of
the Term JORDANA

Applicant also asserts that JORDANA is the feminine version of JORDAN (9
TTABVUE 11; Kumar Decl. ¶¶ 21, 25 and Exhibit I attached thereto), and because
there are “hundreds of [JORDAN] registrations”, this renders the mark of the cited
registration weak since various JORDAN formative marks coexist with the BY
JORDANA mark of the cited registration. 9 TTABVUE 9.
Specifically, Applicant submits evidence in the form of a TESS printout (Exhibit
M to the Kumar Declaration) showing twenty registrations for JORDAN formative
marks and another twenty pending applications for JORDAN formative marks, all
for goods in Class 25, which is the class for clothing. 9 TTABVUE 10, 15-16; Kumar
Decl. ¶ 25. Exhibit M is shown below:
Serial No. 88643027
- 23 -

Serial No. 88643027
- 24 -

We note that the registrations identified in the list above are not of record.12 There
was no objection by the Examining Attorney to this listing so we consider it, but not
more than the information provided by Applicant. In re 1st USA Realty Professionals

12 It is well-established that in order to make third-party registrations properly of record,
Applicant should submit copies of the registrations themselves or the electronic equivalent
thereof’ from the USPTO’s electronic databases. In re City of Houston, 101 USPQ2d 1534,
1536 n.5 (TTAB 2012). To the extent that applications are listed, they are irrelevant as
applications are evidence only of the fact that they have been filed and have no other
probative value. In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009); In
re Fiesta Palms LLC, 85 USPQ2d 1360, 1365 n.7 (TTAB 2007); Interpayment Servs. Ltd. v.
Docters & Thiede, 66 USPQ2d 1463, 1467 n.6 (TTAB 2003).
Exhibit M has an additional defect: just because the mark is deemed a “hit” by the search
engine, does not mean it is a mark that is relevant to our discussion. For example, the JM,
JE, and JP marks are entirely different from the JORDANA mark and, therefore, are
irrelevant.

Serial No. 88643027
- 25 -
Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) (Board treated listing of particulars of
third-party applications/registrations submitted by applicant as stipulated into
record only to the extent that the specific data was provided by applicant); In re
Broyhill Furniture Indus. Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001) (listing of
registration information considered for whatever probative value it might have, with
Board noting that the listing did not indicate whether registrations issued on the
Principal or the Supplemental Register).
While it is true that Class 25 is the International Class for clothing, this is simply
not enough to cause the search results to be relevant. Classification is merely an
administrative act that has no bearing on the determination of likelihood of
confusion. In re Detroit Athletic, 128 USPQ2d at 1051 (citing Jean Patou, Inc. v.
Theon, Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993)). Without knowing
the specific goods associated with each registered mark, it is impossible to assess their
probative value. Consequently, we do not find the evidence in the form of Exhibit M
to be probative and will not consider it.
Additionally, Applicant’s Appeal Brief contains the following chart, which
summarizes a “random sampling” of the registrations from the TESS search results
at Exhibit M, but the below chart differs from Exhibit M in that it includes at least a
portion of the pertinent description of goods. The Examining Attorney did not object
to the chart, so we will consider it.
Applicant argues that “[i]f the [below] marks are able to coexist with so many
other similar trademarks for clothing, then it can also be said that there is room for
Serial No. 88643027
- 26 -
Applicant’s mark[] JORDANA to coexist with the Referenced Mark.” 9 TTABVUE 15-
16.
Owner Goods/Services Mark Registration # Registered
Date

Chattanoga
Manufacturing, Inc
025 women's wearing
apparel, namely, blouses,
sweaters, tee shirts, jackets,
vests, pants, trousers,
skirts, suits, dresses,
jumpers, jump suits,
women's underwear,
namely, camisoles; and
clothing for use during
exercise, namely,
tank tops and
sweatshirts
JORDAN 2197149 October 20,
1998
NIKE, INC. FOOTWEAR AND ATHLETIC
CLOTHING, NAMELY,
SHIRTS, PANTS, SHORTS [ ,
AND WRIST BANDS
]
AIR JORDAN 1370283 November 12,
1985
SWEET JORDAN'S
LLC
Clothing, namely,
shirts, sweatshirts
SWEET
JORDAN'S
6237165 January 5, 2021
Jordan Fashions
Corp
Wedding apparel, namely,
wedding and bridesmaids
dresses
JORDAN 3078845 April 11, 2006
Mason Companies,
Inc.
Clothing, namely, shorts,
T-shirts, blouses, pants,
shirts, jackets,
blazers, sweaters,
dresses, skirts,
camisoles
K. JORDAN 3537133 November 25,
2008
STRATEGIC
MARKS, LLC
T-shirts.
JORDAN
MARSH

6044777

May 5, 2020

9 TTABVUE 15-16.
Even assuming that the JORDAN formative marks in the chart are relevant, not
all the registrations can be properly included in support of Applicant’s arguments.
For example, one of the marks cited in the chart - SWEET JORDAN’S (Reg. No.
Serial No. 88643027
- 27 -
6237165) – is not shown on Exhibit M; therefore, we cannot ascertain from the
evidence of record the status of this registration, so this mark will not be further
considered.
Of the remaining five registrations, three of these are for marks that contain
additional textual matter that distinguish them from the mark of the cited
registration, i.e., “AIR”, “K.” and “MARSH”. This additional distinguishing matter
differentiates these marks from the cited mark in sight, sound, meaning and causes
them to make a different commercial impression; therefore, they are of no probative
value. That leaves two registrations of JORDAN formative marks for consideration.
We find that Applicant’s three third-party registrations, without any evidence of
actual use, are insufficient in number to be probative of any conceptual weakness of
JORDANA for the goods identified in the cited registration. Unlike Juice Generation,
115 USPQ2d at 1674, in which extensive evidence of third-party registrations was
found to be “powerful on its face”, this record presents only a very limited number of
such registrations for similar goods. See, e.g., Jack Wolfskin, 116 USPQ2d at 1136; In
re Inn at St. John’s, LLC, 126 USPQ2d at 1746 (four third-party registrations and no
third-party uses were “a far cry from the large quantum of evidence of third-party use
and third-party registrations that was held to be significant” in Jack Wolfskin and
Juice Generation).13 Cf. TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d

13 In Jack Wolfskin, “the evidence demonstrated the ubiquitous use” of paw print marks that
showed the weakness of that design element in the opposer’s mark, 116 USPQ2d at 1136 n.2,
while in Juice Generation, there were approximately 26 third-party registrations and uses of
marks containing the words “Peace” and “Love” that showed the weakness of those words in
the opposer’s marks. 115 USPQ2d at 1673 n.1.
Serial No. 88643027
- 28 -
1409, 1427-28 n.92 (TTAB 2018) (67 third-party registrations and numerous uses of
TRADER-formative marks showed that the formative was weak and could not form
the basis of petitioner’s claimed family of marks).
To summarize, we find that there is insufficient evidence of record regarding the
conceptual or commercial weakness of the cited mark and that, as a result, the cited
mark is entitled to a normal scope of protection. Accordingly, the strength of the cited
mark is neutral in our likelihood of confusion analysis.
C. The Similarity of the Marks
We compare the marks in their entireties as to “appearance, sound, connotation
and commercial impression.” Palm Bay Imps., 73 USPQ2d at 1691 (quoting DuPont,
177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find
the marks confusingly similar.” In re Inn at St. John’s, 126 USPQ2d at 1746 (citing
In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)).
Here, the applied-for mark is JORDANA and the cited mark is BY JORDANA.
Applicant’s mark is subsumed by Registrant’s mark. The preposition BY in the cited
mark highlights and is subordinate to the term JORDANA. Accordingly, the absence
of the term BY in Applicant’s mark is not sufficient to distinguish it by appearance
or sound and it does not cause Applicant’s mark to make a different commercial
impression. Consumers encountering Applicant’s mark could easily believe that the
mark is a shortened form of Registrant’s mark. In re Mighty Leaf Tea, 601 F.3d 1342,
1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229
USPQ 707, 709 (TTAB 1985)). Thus, merely omitting the word BY from the registered
Serial No. 88643027
- 29 -
mark is not enough to distinguish the marks. See In re Mighty Leaf Tea, 94 USPQ2d
at 1347-48; In re West Point-Pepperell, Inc., 468 F.2d 200, 201 (CCPA 1972) (WEST
POINT PEPPERELL likely to cause confusion with WEST POINT for similar goods);
Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324 (CCPA 1967) (THE LILLY as a
mark for women's dresses is likely to be confused with LILLI ANN for women’s
apparel including dresses); In re United States Shoe Corp., 229 USPQ 707 (TTAB
1985) (CAREER IMAGE for women’s clothing stores and women’s clothing likely to
cause confusion with CREST CAREER IMAGES for uniforms including items of
women’s clothing). We find that the marks are nearly identical.
Applicant argues that its mark and the cited mark are used in different
stylizations and font and thus appear entirely different to consumers. 9 TTABVUE
17. Notably, the cited mark is registered in standard character format, and Applicant
seeks registration in standard character format. A mark registered in standard
character format may be presented in any style, regardless of font, size, or color.
Viterra, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
939 (Fed. Cir. 1983) (“the argument concerning a difference in type style is not viable
where one party asserts rights in no particular display”). Consequently, Applicant’s
arguments that the “style of usage of the marks is different” and sufficient to prevent
a likelihood of confusion is unpersuasive.
Thus, this DuPont factor weighs heavily in favor of likelihood of confusion.

Serial No. 88643027
- 30 -
D. No Actual Confusion
In further support of registration, Applicant argues that there has been no actual
confusion in the nearly two years that Applicant and Registrant have simultaneously
used their marks. 9 TTABVUE 16; Kumar Decl. ¶ 4. This uncorroborated statement
has little probative value. The Federal Circuit in In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Circ. 2013), addressed the weight to be given to an
assertion of no actual confusion by an applicant in an ex parte proceeding:
[W]e agree with the Board that Majestic’s uncorroborated statements of no
known instances of actual confusion are of little evidentiary value. See In re
Bissett-Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529 (CCPA 1973)
(stating that self-serving testimony of appellant’s corporate president’s
unawareness of instances of actual confusion was not conclusive that actual
confusion did not exist or that there was no likelihood of confusion). A showing
of actual confusion would of course be highly probative, if not conclusive, of a
high likelihood of confusion. The opposite is not true, however. The lack of
evidence of actual confusion carries little weight, [citation omitted], especially
in an ex parte context.

Majestic Distilling Co., 65 USPQ2d at 1205.
Accordingly, while examples of actual confusion may point toward a finding of a
likelihood of confusion, an absence of such evidence is not as compelling in support of
a finding of no likelihood of confusion. Thus, we cannot conclude from the lack of
instances of actual confusion that confusion is not likely to occur. Therefore, this
factor is neutral.
E. The Fame of Registrant’s Mark is Irrelevant
Finally, Applicant argues that “[T]here is no evidence that the [Registrant’s] Mark
is famous” (9 TTABVUE 11, 12) and that the burden is on the Examiner to prove such
fame (9 TTABVUE 12). In an ex parte appeal, the factor of fame of the cited mark is
Serial No. 88643027
- 31 -
typically neutral because the Examining Attorney is not expected to submit evidence
regarding fame of the cited mark and does not bear any obligation to or burden for
proving fame. In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006); In re Mr.
Recipe, LLC, 118 USPQ2d 1084, 1086-88 (TTAB 2016) (reiterating that examining
attorneys are not expected to submit evidence of fame); In re Davey Prods. Pty Ltd.,
92 USPQ2d 1198, 1204 (TTAB 2009) (noting that the absence of evidence as to the
fame of the registered mark “is not particularly significant in the context of an ex
parte proceeding”). Because there is no expectation of evidence from the Examining
Attorney on this factor, the Examining Attorney provided none. Thus we find this
factor neutral.
III. Conclusion

We have considered all of the arguments and evidence of record and all relevant
DuPont factors. In sum, we have found that the marks are nearly identical, the goods
are related, and the channels of trade and consumers overlap. Applicant has not
established that the cited mark should be deemed “weak” or entitled to a narrow scope
of protection. Therefore, we conclude that confusion between the marks is likely.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.