CTRL Holdings, LLC

Trademark Trial and Appeal Board

Mar 4, 2021

88450936 (T.T.A.B. Mar. 4, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 4, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re CTRL Holdings, LLC

Serial No. 88450936
_____

Thomas Carulli of KMA Zuckert
for CTRL Holdings, LLC.

Nathaniel Pettican, Trademark Examining Attorney, Law Office 108,
Kathryn E. Coward, Managing Attorney.
_____

Before Wellington, Shaw and English
Administrative Trademark Judges.

Opinion by English, Administrative Trademark Judge:
CTRL Holdings, LLC (“Applicant”) seeks registration on the Principal Register of
the standard character mark CTRL for “hats and shirts, all promotional items for
promoting meal replacement goods.”1
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the standard

1 Application Serial No. 88450936; filed May 29, 2019 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in
commerce.
Applicant initially sought registration for “hats; shirts.” It amended the identification of
goods in its February 19, 2020 Office action response.
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character mark CTRL INDUSTRIES (INDUSTRIES disclaimed)2 and the stylized
mark (INDUSTRIES disclaimed)3 both registered to the same entity for
“beanies; belts made out of cloth; fight shorts for mixed martial arts or grappling;
hats; rash guards; sweatshirts; t-shirts; track suits; martial arts uniforms, namely,
gis.”4

2 Registration No. 5383201; registered January 23, 2018.
3 Registration No. 5383206; registered January 23, 2018.
The Examining Attorney did not attach a copy of this registration to any of the Office actions
as required. TRADEMARK MANUAL OF EXAMINING PROCEDURE § 705.03 (Oct. 2018) (“When
refusing registration under 15 U.S.C. § 1052(d) based on a likelihood of confusion with a
previously registered mark, the examining attorney must give the registration number(s) and
attach to the Office action copies of each cited registration, which will become part of the
record.”). Applicant has not objected to this omission and has argued the merits of the Section
2(d) refusal based on this registration. Accordingly, we treat the registration as of record. Cf.
In re Olin Corp., 124 USPQ2d 1327, 1335 n.22 (TTAB 2017) (although the Board does not
take judicial notice of registrations, because applicant discussed one of its registrations that
was not in the record in its appeal brief and the examining attorney addressed that
registration and another of applicant’s registrations, which were also not in the record in her
brief, and neither objected to the discussion of the other, Board treated both registrations as
though they are of record).
4 The order in which the goods are listed in the cited registrations is slightly different, but
the goods are the same.
The Examining Attorney also initially refused registration based on a likelihood of confusion
with Alphamicron Inc.’s mark CTRL for clothing and headgear “for promoting eyewear-
related goods” (Reg. No. 5666892) and issued an advisory regarding the potential for refusal
based on two prior-filed applications owned by different entities for the mark
consisting of “the stylized wording ‘CTRL’” and the standard character mark CONTROL,
both for clothing (Serial Nos. 87004237 and 87701788, respectively). August 26, 2019 Office
Action, TSDR 2, 4, 6-8, 12-16. Based on Applicant’s February 19, 2020 response, the
Examining Attorney deemed the refusal based on Reg. No. 5666892 “obviated” and withdrew
the advisory regarding the prior-filed applications. March 10, 2020 Final Office Action, TSDR
2.
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When the refusal was made final, Applicant requested reconsideration. The
Examining Attorney denied the request for reconsideration, and Applicant appealed.
Applicant and the Examining Attorney have filed appeal briefs, and Applicant filed
a reply brief.5
We affirm the refusal to register.
I. Analysis
We focus our analysis on whether there is a likelihood of confusion between
Applicant’s mark and the registered standard character mark CTRL INDUSTRIES
(“Cited Mark” or “Cited Registration”). The Cited Mark is the most similar to
Applicant’s mark because it is not limited in stylization. Sock It To Me, Inc. v. Aiping
Fan, 2020 USPQ2d 10611, at *6 (TTAB 2020) (confining 2(d) analysis to most similar
pleaded mark); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)
(confining 2(d) analysis to cited registration in typed form).
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 likelihood of
confusion. In re E. I. DuPont de Nemours & Co, 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 575 U.S.
138, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co. Inc., 315

5 Applicant attached Internet screenshots to its reply brief that were not made of record
during prosecution of the application. 7 TTABVUE 10-11. This evidence is untimely and we
have not considered it. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“The record in the
application should be complete prior to the filing of the appeal. Evidence should not be filed
with the Board after the filing of a notice of appeal.”); see also, e.g., In re Petroglyph Games,
Inc., 91 USPQ2d 1332, 1334 (TTAB 2009) (submissions filed with reply brief not considered).
Serial No. 88450936
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F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont
factor for which there is argument and evidence. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); 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 relatedness of the goods. See In re Chatam Int’l Inc., 380
F.3d 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., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). We discuss these factors and the other
relevant DuPont factors below.
A. Similarity or Dissimilarity of the Goods, Channels of Trade and
Classes of Consumers
Under the second DuPont factor we consider “[t]he similarity or dissimilarity and
nature of the goods or services” and under the third DuPont factor we consider “the
Serial No. 88450936
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similarity or dissimilarity of established, likely-to-continue trade channels.” DuPont,
177 USPQ at 567; see also In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d
1047, 1051 (Fed. Cir. 2018). We must base our comparison of the goods on the
identifications in the Cited Registration and Applicant’s application. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs., Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). 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. General Mills Fun
Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Double Coin Holdings Ltd. v.
Tru Dev., 2019 USPQ2d 377409, *6 (TTAB 2019); In re Aquamar, Inc., 115 USPQ2d
1122, 1126, n.5 (TTAB 2015).
Applicant’s “hats and shirts, all promotional items for promoting meal
replacement goods” are encompassed within the Cited Registration’s broad
identification of “hats” and “t-shirts.” See In re Hughes Furniture Indus., Inc., 114
USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of
‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and
commercial furniture.’”). Accordingly, the goods are legally identical, in part.
Applicant asserts that its goods travel in different trade channels because its hats
and shirts are “all promotional items for promoting meal replacement goods.”6 There
are, however, no trade channel restrictions in the Cited Registration, and Applicant’s

6 Reply Brief, 7 TTABVUE 6-7.
Serial No. 88450936
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and Registrant’s goods are in part legally identical. Accordingly, we must presume
that there is some overlap in trade channels and classes of consumers. See Cai v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); In re
Viterra Inc., 101 USPQ2d at 1908 (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).
The second and third DuPont factors therefore weigh heavily in favor of finding a
likelihood of confusion.
B. Strength of the Mark
We next consider Applicant’s arguments regarding the strength of the Cited Mark
because the strength of a mark affects its scope of protection. We consider both the
conceptual strength of the Cited Mark based on the nature of the mark itself and its
commercial strength based on consumer 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).”).
Applicant argues that its mark should be able to coexist with the Cited Mark
because the identical standard character mark CTRL is registered to third-party
Alphamicron for “athletic clothing, namely, tops, pants, shorts, socks, sweatpants,
sweatshirts, t-shirts, tank tops, vests, jackets and gloves, all promotional items for
promoting eyewear related goods; headgear, namely, hats and caps as
Serial No. 88450936
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promotional items for promoting eyewear-related goods.”7 Applicant asserts
that its mark, like the Alphamicron mark, consists only of the word CTRL, and its
application, like the Alphamicron registration, expressly limits the goods to clothing
for promoting other products. Accordingly:
[I]n this market environment, there is no likelihood of confusion
between Applicant’s CTRL and [Registrant’s] CTRL INDUSTRIES.
Specifically, given that the description of goods in the CTRL
INDUSTRIES Registrations completely subsumes the goods described
in Alphamicron’s CTRL Registration, consumers distinguish
Alphamicron’s products from the same products sold under CTRL
INDUSTRIES without any confusion based solely on the presence of the
word INDUSTRIES. … [C]ontrary to the conclusion reached by the
Trademark Attorney that in his view the added word INDUSTRIES
“does not sufficiently differentiate the marks” (March 10, 2020 Office
Action), it already does for Alphamicron’s CTRL products and thus
decisive weight must be given to the distinguishing nature of the word
INDUSTRIES in obviating any likelihood of confusion with Applicant’s
mark[.]8

The problem with Applicant’s argument is that there is no evidence of “market
environment.” The registrations of Alphamicron and Registrant are not evidence of
use of the marks or consumer recognition of the marks. In re Morinaga Nyugyo
Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016); see also In re Helene Curtis
Indus. Inc., 305 F.2d 492, 134 USPQ 501, 503-04 (CCPA 1962) (third-party

7 August 26, 2019 Office Action, TSDR 6-8 (electronic copy of registration) (emphasis added).
Applicant emphasizes that it is not arguing that its mark should be allowed to register
because the Office allowed Alphamicron’s mark to register, but rather “given the description
of goods in the [Cited Registration] completely subsumes the goods described in
Alphamicron’s [registration]” the Board must “presume” that Registrant and “Alphamicron
operate in the same market, selling to the same consumers the same goods – t-shirts and
hats – all without likelihood of confusion. Hence, so can Applicant.” Appeal Brief, 4
TTABVUE 7-8.
8 Id. at 7.
Serial No. 88450936
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registrations are not evidence of what happens in the marketplace or that consumers
are familiar with use of the marks). And there is nothing in the record to show that
Alphamicron’s mark actually coexists in the marketplace with the Cited Mark.
Accordingly, the basis for Applicant’s argument that “decisive weight” should be given
“to the distinguishing nature of the word INDUSTRIES in obviating any likelihood
of confusion with Applicant’s mark,” is not supported by the record.
For the same reason, we are not persuaded by Applicant’s argument that
“consumers must also be presumed to contend with, and differentiate without
likelihood of confusion, among additional sellers using CTRL for the same clothing
items, namely WARM CTRL and DAMIJ CTRL”9 and that these CTRL marks also
co-exist in the market with many CONTROL-formative marks for clothing.10 Again,
to support its position, Applicant relies solely on third-party registrations. Such
registrations “standing alone, are not evidence that the registered marks are in use
on a commercial scale, let alone that consumers have become so accustomed to seeing
them in the marketplace that they have learned to distinguish among them by minor
differences.” In re Morinaga Nyugyo, 120 USPQ2d at 1745.
On the record before us, there is no basis for finding the Cited Mark commercially
weak. Third-party registrations, however, “are relevant to prove that some segment
of the composite marks which both contesting parties use has a normally understood
and well-recognized descriptive or suggestive meaning, leading to the conclusion that

9 Id. at 8.
10 February 19, 2020 Office Action Response, TSDR 21.
Serial No. 88450936
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that segment is relatively weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (quoting 2 MCCARTHY ON TRADEMARKS
AND UNFAIR COMPETITION § 11:90 (4th ed. 2015)). In addition to Alphamicron’s use-
based registration for the mark CTRL, the record includes twelve use-based Principal
Register registrations owned by different third-parties for the following marks:11
 WARM CTRL, standard characters, for “jackets; outer jackets; vests”;

 for “baseball caps and hats; belts; crop tops; denim
jackets; denims; gloves; graphic t-shirts; hats; hooded pullovers; hooded
sweatshirts; jeans; men’s and women’s jackets, coats, trousers, vests; pants;
polo shirts; scarfs; short-sleeved or long-sleeved t-shirts; sneakers; socks; sweat
pants; sweat shorts; sweat suits; t-shirts; tank tops; ties; underwear”;

 for “men’s fashion and apparel, namely, shirts, pants, jackets,
undergarments, footwear, hats and caps”;

 KONTROLFREEK, standard characters, for “apparel, namely, t-shirts, shorts,
and hats; performance apparel for playing video games competitively, namely,
t-shirts, shorts, and hats”;

 for “night gowns; night shirts; bras
and shapewear, namely, girdles and briefs, sports bras; strapless bras; garter
belts; garters; panties, shorts and briefs; lingerie; pajama bottoms; pajamas;
sleepwear; robes; body shapers; body suits; camisoles; teddies being
underclothing; slips being underclothing; ladies underwear; underwear,

11 February 19, 2020 Office Action Response, TSDR 24-33, 35-36. Applicant also submitted a
registration that issued under Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e), for
the standard character mark CONTROL YOUR CLIMATE (Reg. No. 5694280) for “clothing,
namely, athletic wear, namely, fleece pullover hoodies, fleece hooded jackets, waterproof
jackets, insulated jacket liner and fleece jackets, outerwear, namely, jackets, t-shirts,
sweatshirts, hooded sweatshirts, pullovers, and coats.” Id. at 34.

Serial No. 88450936
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namely, thongs; underwear, namely, boy shorts; hosiery; stockings; corsets
being underclothing; foundation garments; bustiers; bralettes; leg shapers;
leggings; boxer shorts”;

 for “jackets; pajamas; pants; shirts; skirts; sports
jerseys; tee shirts; trousers; vests”;

 DREAM CONTROL, standard characters, for “belts; hats; leather coats;
leather hats; leather jackets; leather pants; leather shirts; leather skirts;
overalls; socks; stockings; swimsuits; t-shirts; ties as clothing; trousers; belts
for clothing; fashion hats; gloves as clothing; headbands for clothing; hoods;
jackets; jerseys”;

 SPIN CONTROL (SPIN disclaimed), standard characters, “clothing for athletic
use, namely, padded hats for performing head spins”;

 ECO CONTROL, standard characters, for “coverups; swimwear”;

 COOL CONTROL, standard characters (CONTROL disclaimed), for “clothing,
namely, jeans”;

 ANNE COLE CONTROL, standard characaters (CONTROL disclaimed),
“bathing suits; beach cover-ups; beach shoes; beachwear; body shapers; bras;
coats; footwear; hats; jackets; jeans; lingerie; panties; pants; shirts; shorts;
sleepwear; stockings; sweaters; swimwear; tights; tops;” and

 CONTROL TECH, standard characters (CONTROL disclaimed), for “clothing,
namely, blouses, body shapers, body stockings, body suits, bras, camisoles,
control undergarments, dresses, foundation garments, hosiery, jeans, leggings,
lingerie, loungewear, panties, pants, shirts, shorts, skirts, skorts, suits,
sweaters, sweatpants, sweatshirts, swimsuits, teddies, t-shirts, tank tops,
tops, underpants, underwear, vests.”

The registered marks support a finding that the word “control” may be suggestive
of clothing that has some type of “control” feature such as shapewear that helps
“control” body shape or clothing that “controls” or moderates temperature. The record,
however, is not as persuasive with respect to the term CTRL because the term,
Serial No. 88450936
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defined as an abbreviation for the “control key” on a computer keyboard,12 has a more
specific meaning than the word “control,”13 and only three third-party registered
marks for clothing consist of or incorporate the CTRL abbreviation. Cf. Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1137 (Fed. Cir. 2015) (“considerable” evidence of third-
party use and registration”); Juice Generation, 115 USPQ2d at 1671 (finding
“extensive” evidence of third-party registration and use “powerful on its face”).
Ultimately, the record does not support that the Cited Mark is commercially weak,
but CTRL may have a slightly suggestive meaning for some clothing items.
Accordingly, the strength of the mark is neutral or slightly favors Applicant’s position
that confusion is not likely.
C. Similarity or Dissimilarity of the Marks
We next consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. Stone Lion, 110
USPQ2d at 1160; 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, LLC,

12 We take judicial notice that the definition of “CTRL” is “control key,” which in turn is
defined as “a key on a computer keyboard that when pressed in combination with other keys
enables special commands or symbols to be accessed.” Merriam-Webster online dictionary at
https://www.merriam-webster.com/dictionary/Ctrl and https://www.merriam-
webster.com/dictionary/control%20key (last accessed March 2, 2021). Double Coin Holdings
Ltd. v. Tru Dev., 2019 USPQ2d 377409, *7 n.23 (TTAB 2019) (Board may sua sponte take
judicial notice of dictionary definitions, including online dictionaries that exist in printed
format); see also In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013).
13 We take judicial notice that “control” is “less commonly” defined as “control key.” Merriam-
Webster online dictionary at https://www.merriam-webster.com/dictionary/control (last
visited March 2, 2021)
Serial No. 88450936
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126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812
(TTAB 2014)).
The issue is not whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are sufficiently similar in terms of
their overall commercial impression such that confusion as to the source of the goods
offered under the respective marks is likely to result. Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). The focus is
on the recollection of the average purchaser, who normally retains a general rather
than specific impression of trademarks. 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 at 1438; Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
We do not predicate our analysis on a dissection of the involved marks; we consider
the marks in their entireties. Stone Lion, 110 USPQ2d at 1160; Franklin Mint Corp.
v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic
that a mark should not be dissected and considered piecemeal; rather, it must be
considered as a whole in determining likelihood of confusion.”). But one feature of a
mark may be more significant than another, and it is not improper, for rational
reasons, to give more weight to a dominant feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. Stone Lion, 110
USPQ2d at 1161 (finding that the Board did not err in reasoning that the term LION
Serial No. 88450936
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was dominant in both applicant’s mark STONE LION CAPITAL and opposer’s marks
LION CAPITAL and LION); In re Chatam Int’l, 71 USPQ2d at 1946.
The Examining Attorney argues that the word “INDUSTRIES” has been
disclaimed in the Cited Registration and so should be given less weight as a generic
or descriptive term.14 Applicant counters that “despite the disclaimer, … the word
INDUSTRIES is not descriptive of clothing at all[.]”15 Applicant further asserts that
because Alphamicron’s mark “co-exists on the Register for essentially the identical
goods of [Registrant], CTRL cannot be deemed the dominant portion of the CTRL
INDUSTRIES mark. Indeed, INDUSTRIES is an essential element of the cited marks
in distinguishing them from the Alphamicron mark CTRL.”16
While Registrant’s disclaimer of “INDUSTRIES” does not conclusively establish
that the term is generic or descriptive, or that it should be given less weight in
comparing the marks, it suggests that the term may be considered non-distinctive.
We find that the word “INDUSTRIES” is conceptually weak because it generally
refers to manufacturing or business activity. Further, we are not persuaded by
Applicant’s argument that CTRL cannot be the dominant portion of the Cited Mark
because the mark co-exists on the register with Alphamicron’s CTRL mark. As
discussed in the preceding section, there is no evidence that the Cited Mark and
Alphamicron’s mark actually co-exist in the marketplace such that we can conclude

14 Examiner’s Statement, 6 TTABVUE 6.
15 Appeal Brief, 4 TTABVUE 8.
16 Reply Brief, 7 TTABVUE 5.
Serial No. 88450936
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that consumers rely on the term “industries” in the Cited Mark to distinguish it from
the Alphamicron mark. Moreover, as Applicant acknowledges, each case must be
decided on its own merits. In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d
1218, 1221 (Fed. Cir. 2009) (“[E]ach application must be considered on its own
merits.”); In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
(same). Accordingly, registration of the Alphamicron mark is not determinative of the
Section 2(d) refusal here.
Often it is the first part of a mark that is “the most likely to be impressed upon
the mind of a purchaser and remembered.” Presto Prods., Inc. v. Nice-Pak Prods., Inc.,
9 USPQ2d 1895, 1897 (TTAB 1988); see also Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005); Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB
2006). We find that to be the case here. Although the term CTRL may have some
suggestive significance for Registrant’s clothing, it has more source-identifying
significance than the conceptually weak term “INDUSTRIES.”
The similarities between the marks is increased because Applicant’s mark is
subsumed within the Cited Mark. Consumers are likely to perceive Applicant’s mark
as a shortened form or variation of the Cited Mark. In re United Shoe Corp., 229
USPQ 707, 709 (TTAB 1985). (“Applicant’s mark [CAREER IMAGE] would appear to
prospective purchasers to be a shortened form of registrant’s mark [CREST CAREER
IMAGES].”); see also, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257,
1260 (Fed. Cir. 2010); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ
Serial No. 88450936
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406, 407 (CCPA 1967) (affirming that THE LILLY for women’s dresses likely to be
confused with LILLI ANN for women’s apparel including dresses); In re Apparel
Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (holding applicant’s mark, SPARKS
BY SASSAFRAS (stylized), for clothing, and registrant’s mark, SPARKS (stylized),
for footwear, likely to cause confusion, noting that “[t]hose already familiar with
registrant’s use of its mark in connection with its goods, upon encountering
applicant’s mark on applicant’s goods, could easily assume that ‘sassafras’ is some
sort of house mark that may be used with only some of the ‘SPARKS’ goods”); In re
Collegian Sportswear, Inc., 224 USPQ 174, 176 (TTAB 1984) (holding COLLEGIAN
OF CALIFORNIA and design (“CALIFORNIA” disclaimed), and COLLEGIENNE,
both for clothing, likely to cause confusion, noting that the addition of “OF
CALIFORNIA” would not obviate a likelihood of confusion because consumers might
believe that such wording denotes a new product line from the same source).
In sum, when the marks are considered in their entireties, there are some
differences created by the presence of the word “INDUSTRIES” in the Cited Mark.
Overall, however, the marks are very similar in appearance, sound, connotation, and
commercial impression. Accordingly, the first DuPont factor supports that confusion
is likely.
II. Conclusion
Applicant’s and Registrant’s goods are legally identical, in part, and the trade
channels and classes of consumers overlap. The marks in their entireties also are
very similar, and the strength of the Cited Mark is neutral or only slightly favors
Serial No. 88450936
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Applicant. Accordingly, we find that confusion between Applicant’s mark and the
Cited Mark is likely.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.