Ethika, Inc.v.Alexander Hage-Boutros dba Ethik Clothing Co.

Trademark Trial and Appeal Board

Oct 26, 2020

92063682 (T.T.A.B. Oct. 26, 2020)

Mailed: October 26, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Ethika, Inc.
v.
Alexander Hage-Boutros d/b/a Ethik Clothing Co.
___

Cancellation No. 92063682
___

Kirsten L. Thomson, Nicole E. Reifman and Andrea K. Orth of
McDonnell Boehnen Hulbert & Berghoff LLP for Ethika, Inc..

Alexander Hage-Boutros d/b/a Ethik Clothing Co., pro se.
______
Before Greenbaum, Adlin and Hudis,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Respondent Alexander Hage-Boutros d/b/a Ethik Clothing Co. owns a registration
of the mark shown below:

(CLOTHING CO. disclaimed) for “athletic apparel, namely, shirts, pants, jackets,
footwear, hats and caps, athletic uniforms; graphic t-shirts; short-sleeved or long-
This Opinion is not a
Precedent of the TTAB
Cancellation No. 92063682
2
sleeved t-shirts; t-shirts” in International Class 25 (the “Registration”).1 In its second
amended petition for cancellation, Petitioner Ethika, Inc. alleges prior use and
registration of the mark ETHIKA, in typed form2 as well as the design form shown
below
3,
both for “clothing, namely, boxer shorts, underwear, and headwear,” and, in the case
of the design form of the mark, “t-shirts.” As grounds for cancellation, Petitioner
alleges that use of Respondent’s mark is likely to cause confusion with Petitioner’s
marks.4 In his answer, Respondent denies the salient allegations in the second
amended petition for cancellation.5

1 Registration No. 4834883, issued October 20, 2015. The Registration includes this
description of the mark: “The mark consists of the wording ‘ETHIK CLOTHING CO.’ with a
series of interconnecting straight lines arranged in a manner that spells out ‘ETHIK’, with
the word ‘ETHIK’ below the lines and the wording ‘CLOTHING CO.’ beneath it.” The
Registration also states that: “The English translation of the word ‘ETHIK’ in the mark is
‘ETHIC.’”
2 Registration No. 3313394, issued October 16, 2007; renewed. The registration states that:
“The English translation of the word ETHIKA in the mark is ‘ethics.’” There is no substantive
difference between “standard character” marks and marks in “typed” form. In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’
marks formerly were known as ‘typed’ marks, but the preferred nomenclature was changed
in 2003 to conform to the Madrid Protocol … we do not see anything in the 2003 amendments
that substantively alters our interpretation of the scope of such marks”).
3 Registration No. 3618319, issued May 12, 2009; renewed.
4 Petitioner also asserted a claim of nonownership, but did not pursue the claim at trial or in
its Trial Brief, and it is therefore waived. Alcatraz Media, Inc. v. Chesapeake Marine Tour
Inc., 107 USPQ2d 1750, 1753 (TTAB 2013), aff’d 565 F. App’x 900 (Fed. Cir. 2014).
5 Respondent also asserted a number of “Defenses” most of which merely amplify his denials,
or are more applicable to tort cases than trademark registration proceedings. In any event,
Respondent did not pursue any true affirmative defenses at trial, and they are therefore
Cancellation No. 92063682
3
I. The Record and Evidentiary Objections
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Respondent’s involved Registration. In addition,
Petitioner introduced:
Notice of Reliance on its pleaded registrations,
Respondent’s responses to certain discovery requests and
Petitioner’s discovery deposition of Respondent (“Resp.
Disc. Tr.”), and Internet printouts (“Pet. NOR”).6 30
TTABVUE.7

Testimony Declaration of Angela Tsay, Chief Executive
Officer and Creative Director of Oaklandish, and the
exhibit thereto (“Tsay Dec.”). 31 TTABVUE.

Testimony Declaration of Danny Evans, Petitioner’s Vice
President of Marketing, and the exhibits thereto (“Evans
Dec.”). 32 TTABVUE.

Testimony Declaration of Darius Burton, Petitioner’s Key
Account Manager in the Specialty Account Sales
department, and the exhibit thereto (“Burton Dec.”). 33
TTABVUE.

Testimony Declaration of Kenneth White, Petitioner’s Vice
President, Business and Legal Affairs, and the exhibits
thereto (“White Dec”). 34 TTABVUE.

Testimony Declaration of Matt Cook, its Chief Executive
Officer, and the exhibits thereto (“Cook Dec.”). 35
TTABVUE.

waived. Miller v. Miller, 105 USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness Small Estates
Inc. v. Am. Wine Trade Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012).
6 Petitioner also introduced its own initial and pretrial disclosures, but a party may not
introduce its own disclosures by notice of reliance and therefore they have been given no
consideration. Trademark Rule 2.120(k)(5).
7 Citations to the record reference TTABVUE, the Board’s online docketing system. The
number preceding “TTABVUE” corresponds to the docket entry number(s), and any
number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the
cited materials appear.
Cancellation No. 92063682
4

Testimony Declaration of Mike Lindahl, Senior Specialty
Sales Account Manager in Petitioner’s Specialty Account
Sales department, and the exhibits thereto (“Lindahl
Dec.”). 36 TTABVUE.

Rebuttal NOR on Internet printouts (“Pet. Rebuttal NOR”).
54 TTABVUE.

Rebuttal Testimony Declaration of Mr. Cook, and the
exhibit thereto (“Cook Rebuttal Dec.”). 55 TTABVUE 2-42.

Rebuttal Testimony Declaration of Mr. Evans, and the
exhibits thereto (“Evans Rebuttal Dec.”). 55 TTABVUE 43-
60.

Respondent introduced:
Notice of Reliance on its involved Registration and a
related registration, Petitioner’s responses to certain of
Respondent’s discovery requests and Internet printouts
(“Resp. NOR”).8 40 TTABVUE.

Testimony Declaration of Nathalie Chapin, a buyer for
KNWA International (“Chapin Dec.”). 41 TTABVUE 2-3.

Testimony Declaration of Respondent (“Hage-Boutros
Dec.”). 41 TTABVUE 4-6.

Only Petitioner filed a Trial Brief.
Petitioner objects to portions of Exhibit G to Respondent’s NOR, 40 TTABVUE
383-562 and 726-819, because while the materials purport to be Internet printouts,
Respondent failed to provide the URL or date the materials were accessed. The
objection is sustained and we have not considered this evidence. Trademark Rule
2.122(e).

8 Respondent also introduced his own disclosures which have been given no consideration.
Trademark Rule 2.120(k)(5).
Cancellation No. 92063682
5
Similarly, Petitioner objects to Exhibit I of Respondent’s NOR, 40 TTABVUE 567-
651, because the materials are neither Internet printouts which include the URL and
date of access, nor otherwise admissible under Trademark Rule 2.122(e). This
objection is also sustained and we have not considered this evidence.
As for Petitioner’s remaining objections, suffice it to say, “we simply accord the
evidence whatever probative value it deserves, if any at all … Ultimately, the Board
is capable of weighing the relevance and strength or weakness of the objected -to
testimony and evidence in this specific case, including any inherent limitations, and
this precludes the need to strike the testimony and evidence.” Hunt Control Sys. Inc.
v. Koninkijke Philips Elecs. N.V., 98 USPQ2d 1558, 1564 (TTAB 2011). See also Grote
Indus., Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197, 1200 (TTAB 2018) (“We also
remind the parties that our proceedings are tried before judges not likely to be easily
confused or prejudiced. Objections to trial testimony on bases more relevant to jury
trials are particularly unnecessary in this forum.”) (citing U.S. Playing Card Co. v.
Harbro LLC, 81 USPQ2d 1537, 1540 (TTAB 2006)); RxD Media, LLC v. IP Application
Dev. LLC, 125 USPQ2d 1801, 1804 (TTAB 2018); Kohler Co. v. Honda Giken Kogyo
K.K., 125 USPQ2d 1468, 1478 (TTAB 2017) (quoting Luxco, Inc. v. Consejo Regulador
del Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB 2017)). For example, we need not
strike evidence that is inadmissible for the truth of the matter asserted, but instead
consider the evidence for whatever it may show on its face.
Cancellation No. 92063682
6
II. The Parties, Their Marks, Goods and Marketing Strategies and Tactics
The parties both sell “streetwear,” i.e. casual clothing typically worn by young
people, often in cities. Streetwear is commonly associated with youth subcultures
such as skateboarding and hip hop.
A. Petitioner
Petitioner was founded in 2001 and refers to itself as a “lifestyle brand,” with “deep
roots in action sports, such as BMX, X-games, Motocross, Supercross, etc.” 35
TTABVUE 2-3 (Cook Dec. ¶¶ 3, 5).
Petitioner primarily sells underwear, but also offers headwear and t-shirts, and
has done so since its founding. Id. at 4 (Cook Dec. ¶ 8). In fact, Petitioner’s website
features t-shirts and hats, as well as underwear bearing the mark ETHIKA:

Cancellation No. 92063682
7

Id. at 5, 10, 16 (Cook Dec. ¶¶ 19 and Ex. 1). The posts reproduced below from
Petitioner’s Facebook page predate Respondent’s filing date and depict: (1) “Travis
Pastrana, a well-known professional motorsports competitor and stunt performer,
wearing a t-shirt bearing the ETHIKA mark;” (2) “a pink t-shirt for breast cancer
awareness bearing the ETHIKA mark;” and (3) a hat bearing the ETHIKA mark:

Cancellation No. 92063682
8

Id. at 4, 179, 181, 187 (Cook Dec. ¶¶ 9, 10, 12 and Exs. 5, 6, 9).
B. Respondent
Respondent’s clothing business, which is in fact a “d/b/a” rather than a separate
entity, was founded in 2010. 41 TTABVUE 4 (Hage-Boutros Dec. ¶ 3). The “original
content” of Respondent’s ETHIK brand “was based largely around the Occupy Wall
Street ideology.” 30 TTABVUE 168 (Respondent’s response to Interrogatory No. 1).
Cancellation No. 92063682
9
Respondent “used the meaning behind the name of the company to draw parallels
between the questionable ethics of corporations and other large entities.” Id. In his
deposition, Respondent further explained that ETHIK refers to: (1) “a work ethic;” (2)
“ethic and moral grounds, or, you know, right and wrong grounds;” and (3) “ethic in
German.” 30 TTABVUE 329-30 (Resp. Disc. Tr. 127-28).
Since 2010 (date unspecified), Respondent has sold clothing, including t-shirts,
hats and caps, under its ETHIK marks. 41 TTABVUE 4 (Hage-Boutros Dec. ¶ 4).9
Respondent’s brand appeals to “artists, lyrical MCs, [and] extreme sport participants
(snowboarders, skateboards, BMX riders, etc.),” as well as “rap cultures.” 30
TTABVUE 169, 182 (Respondent’s responses to Interrogatory No. 2 and Request for
Admission No. 12). Thus, Respondent “sponsor[s] extreme sports athletes and has
targeted social media accounts for those interests,” and his “main demographic is men
ages 13-30.” 30 TTABVUE at 170, 277 (Respondent’s response to Interrogatory No. 5
and Disc. Tr. At 75). Respondent “uses Care Packages, which include free
merchandise or promotional materials, that are given to individuals to wear as part
of [a] ‘ground marketing’ campaign.” 30 TTABVUE at 173 (Respondent’s response to
Interrogatory No. 16).
C. The Parties’ Consumers and Marketing Strategies and Tactics
Petitioner markets its goods to athletes and artists, including through social
media sites such as Facebook, Twitter and Instagram. 32 TTABVUE 3-4 (Evans Dec.

9 While Respondent claimed in response to an interrogatory that his mark “was first printed
onto a t-shirt in my off-campus dorm room … in October 2010,” 30 TTABVUE 168, this by
itself does not constitute trademark “use” under 15 U.S.C. § 1127. According to Respondent’s
involved Registration, his date of first use of the mark in commerce was January 15, 2011.
Cancellation No. 92063682
10
¶¶ 6, 10). Respondent also markets its goods to athletes and artists, and also uses
Facebook, Twitter and Instagram. 30 TTABVUE 169, 170, 182, 230, 233, 277, 309-
312 (Respondent’s responses to Interrogatory Nos. 2 and 5, Request for Admission
No. 12 and Disc. Tr. at 28, 31, 75, 107-110).
Petitioner participates in trade shows, including the Agenda “lifestyle fashion
trade show.” 32 TTABVUE 3 (Evans Dec. ¶ 8). Respondent also participates in the
Agenda Show. Id. The exhibitors list for the 2017 Agenda Show listed the parties
consecutively:

Id. at 3, 69 (Evans Dec. ¶ 9 and Ex. 4).
Petitioner uses the term “Ethika Familie” to describe those who wear and help
promote Petitioner’s clothes, such as Chevy Woods:
Cancellation No. 92063682
11

Id. at 4, 5, 13, 15 (Evans Dec. ¶¶ 12, 15 and Ex. 1). Respondent uses the term “Ethik
Fam” on its website, which also features Chevy Woods:

Cancellation No. 92063682
12

Id. at 47, 49 (Evans Dec. Ex. 2).10
Petitioner sponsored a live webcast of a Machine Gun Kelly concert. 40 TTABVUE
325 (Petitioner’s response to Interrogatory No. 16). Machine Gun Kelly helps promote
Respondent’s goods:

30 TTABVUE 429 (Petitioner’s NOR Ex. Q).
Petitioner offers a “Mystery Box” promotion, depicted below on the left. 32
TTABVUE 4 (Evans Dec. ¶ 13). Respondent also offers a “Mystery Box” promotion,
depicted below on the right. Id.; 30 TTABVUE 258-59 (Hage-Boutros Disc. Tr. 56-57).

10 Only the names of “Ethik Fam” members appear in Evans Dec. Ex. 2, which does not
include their photographs.
Cancellation No. 92063682
13

32 TTABVUE 4, 250, 254 (Evans Dec. ¶ 13 and Exs. 14, 16).
Respondent offers an “Ethiklife” blog on its “ethiklife.com” website:

Cancellation No. 92063682
14
Id.at 5, 54 (Evans Dec. ¶ 16 and Ex. 2). Petitioner’s website includes an ETHIKALIFE
section:

Id. at 5, 17 (Evans Dec. ¶ 16 and Ex. 1).
Respondent “admits that [Respondent’s] products and [Petitioner’s] products are
marketed and sold to the same target consumers.” 30 TTABVUE 181 (Respondent’s
Response to Request for Admission No. 11).
D. Alleged Actual Confusion
Petitioner alleges that retailers and potential customers have been actually
confused between Petitioner and Respondent. Specifically:
Ms. Tsay of Oaklandish, an apparel company which carries
Petitioner’s goods, received a “brand book” from
Respondent, and “[b]ased on the name of the brand and
apparel designs,” thought “this brand book was part of
[Petitioner’s] clothing line.” She did not understand “why a
different representative was reaching out” to her. She then
forwarded the e-mail to Mr. Burton stating “this is the
streetwear brand I was confused about.” 31 TTABVUE 2-6
Cancellation No. 92063682
15
(Tsay Dec. ¶¶ 2-6 and Ex. 1); 33 TTABVUE 2 (Burton Dec.
¶ 4).

A 2016 Agenda Show Facebook post depicts Travis
Pastrana wearing Petitioner’s ETHIKA shorts, but “tags”
Respondent rather than Petitioner. 34 TTABVUE 4, 58
(White Dec. ¶ 15 and Ex. 9).

A few social media and web posts “tag” both “#ethika” and
“#ethik.” Id. at 4, 60, 63-98, 102-114, 117-122 (White Dec.
¶ 16 and Ex. 10).11

The vendor/distributor “Joe@ClothingTown” forwarded a
picture of an ETHIK rug to Petitioner requesting one for
his own store. 36 TTABVUE 2, 5 (Lindahl Dec. ¶ 4 and Ex.
1).

Petitioner made a sales call to Evolve, which responded
that it was already working with “Jonathan,” who it was
later revealed worked for Respondent. Id. at 3, 7-15
(Lindahl Dec. ¶ 6 and Ex. 2)

On the other hand, Ms. Chapin testified that when she was a buyer for apparel
retailer KPG Enterprise d/b/a Nexus, the company’s stores stocked both Petitioner’s
ETHIKA products and Respondent’s ETHIK products, but she “never encountered,
nor have been made aware of, any instances of actual confusion.” 41 TTABVUE 2-3
(Chapin Dec. ¶¶ 4-7). Respondent himself is also not aware of any actual confusion.
41 TTABVUE 4-6 (Hage-Boutros Dec. ¶¶ 2-14).
III. Petitioner’s Section 2(d) Claim
Before addressing whether the parties’ marks are likely to be confused, we must
first consider whether Petitioner is entitled to bring this proceeding. If it is we must

11 Exhibit 10 includes multiple copies of several of the posts.
Cancellation No. 92063682
16
then consider whether Petitioner has established priority. See 15 U.S.C. §§ 1052(d)
and 1064.
A. Petitioner’s Entitlement to Statutory Cause of Action12
To establish entitlement to a statutory cause of action under Section 14 of the
Trademark Act, such as a cause of action for likelihood of confusion, a plaintiff must
demonstrate a real interest in the proceeding and a reasonable belief of damage.
Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020
USPQ2d 10837 at *3 (Fed. Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen.
Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012);
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). Here,
Petitioner’s pleaded registrations, which were properly made of record, 35 TTABVUE
3, 22-177 (Cook Dec. ¶ 6 and Exs. 3, 4), establish that Petitioner is entitled to seek
cancellation of Respondent’s involved Registration on the ground of likelihood of
confusion. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000).
B. Priority
Because both parties own registrations, priority is at issue. Double Coin Holdings
Ltd. v. Tru Dev., 2019 USPQ2d 377409 at *4 (TTAB 2019). Respondent failed to

12 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this
inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature,
our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain
equally applicable.
Cancellation No. 92063682
17
introduce any evidence of the specific date of first use of its involved mark, and is
therefore limited to relying on the filing date of his application which matured into
the involved Registration, September 16, 2014. See Brewski Beer Co. v. Brewski Bros.
Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) (a party “may rely on its registration for
the limited purpose of proving that its mark was in use as of the application filing
date”). Petitioner’s pleaded registrations issued well before that date, and in any
event, Petitioner submitted testimony establishing its prior use of its pleaded marks.
35 TTABVUE 4-5 (Cook Dec. ¶¶ 8-14). Petitioner therefore has priority.
C. Will the Marks and Sources of the Goods Be Confused?
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods. 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.”). We also consider any likelihood of confusion factors about
which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
Cancellation No. 92063682
18
Petitioner bears the burden of establishing that there is a likelihood of confusion
by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848; West Florida
Seafood, Inc. v. Jet Rest., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed. Cir. 1994).
Indeed, “a presumption of validity attaches to” Respondent’s involved Registration.
West Florida Seafood, 31 USPQ2d at 1662; Cerveceria Centroamericana S.A. v.
Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989).
We focus here on Petitioner’s pleaded Registration No. 3313394 for the mark
ETHIKA in typed form. If we find confusion likely between Respondent’s involved
mark and Petitioner’s mark in typed form, we need not consider the likelihood of
confusion between Respondent’s mark and the mark and goods in Petitioner’s other
pleaded registration. On the other hand, if we find no likelihood of confusion between
Respondent’s mark and Petitioner’s mark in typed form, we would not find confusion
likely between Respondent’s mark and Petitioner’s other pleaded mark. In re Max
Capital Grp., 93 USPQ2d 1243, 1245 (TTAB 2010).
1. The Goods, Channels of Trade and Classes of Purchasers

The parties’ goods are legally identical in-part because “headwear,” identified in
Petitioner’s registration, encompasses the “hats and caps” identified in Respondent’s
involved Registration. We need not go beyond our finding that Petitioner’s and
Respondent’s goods are legally identical in-part. It is sufficient for a finding of
likelihood of confusion if legal identity is established for any item encompassed by
the identification of goods in a particular class. Tuxedo Monopoly, Inc. v. Gen. Mills
Fun Grp., 648 F.2d 1335, 209 USPQ 986 (CCPA 1981).
Cancellation No. 92063682
19
Because the goods are in-part legally identical, we must presume that their
channels of trade and classes of purchasers are as well. In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence
regarding channels of trade and classes of consumers, the Board was entitled to rely
on this legal presumption in determining likelihood of confusion); American Lebanese
Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d
1022, 1028 (TTAB 2011). In any event, as discussed above, the parties’ trade channels
and consumers overlap, and the parties’ employ many of the same marketing
strategies and tactics. These factors weigh heavily in support of finding a likelihood
of confusion.
The identity of the goods and their overlapping channels of trade and classes of
purchasers not only weigh heavily in favor of finding a likelihood of confusion, but
also reduce the degree of similarity between the marks necessary to find a likelihood
of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 94 USPQ2d
at 1260; In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
2. The Marks
The marks are quite similar “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). Indeed, the dominant portion of
Respondent’s mark includes the entirety of Petitioner’s mark, and merely adds an “a”
to the end of it.
Cancellation No. 92063682
20
More specifically, ETHIK is the dominant portion of Respondent’s mark because
the disclaimed wording CLOTHING CO. is descriptive or generic and thus entitled to
less weight in our analysis. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be given little weight in reaching
a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1985)).
Furthermore, while the term ETHIK in Respondent’s mark is depicted in stylized
lettering, this is irrelevant because Petitioner’s mark is in typed form, and could
therefore be displayed in any font, size or color, including in a manner similar to
Respondent’s display of the term ETHIK. In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1909 (Fed. Cir. 2012).
Similarly, while Respondent’s mark includes a design component, clothing
consumers are likely to call for the goods by the term ETHIK, making this term more
important than the design or the non-distinctive words CLOTHING CO. In re Viterra,
101 USPQ2d at 1911 (“the verbal portion of a word and design mark likely will be the
dominant portion”); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB
1987) (holding that “if one of the marks comprises both a word and a design, then the
word is normally accorded greater weight because it would be used by purchasers to
request the goods or services” and “because applicant’s mark shares with registrant’s
mark that element responsible for creating its overall commercial impression, the
marks are confusingly similar”). This principle is especially applicable here because
Cancellation No. 92063682
21
according to both the involved Registration itself, and Respondent’s testimony, the
design component of Respondent’s mark consists of “interconnecting straight lines
arranged in a manner that spells out ‘ETHIK’.” Registration; 41 TTABVUE 4 (Hage-
Boutros Dec. ¶ 5) (referring to design component of Respondent’s involved mark “as
a stylistic spelling of the word ‘ethik’”). In other words, the design merely highlights
and calls further attention to the term ETHIK.
Obviously, Petitioner’s mark ETHIKA and the dominant ETHIK portion of
Respondent’s mark look and sound almost identical. Moreover , consumers familiar
with Petitioner’s mark who encounter Respondent’s may not notice that it omits the
“A” at the end. In fact, we must focus on the recollection of the average purchaser,
who normally retains a general rather than a specific impression of trademarks. In
re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (citing Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106 (TTAB 1975)). See Geigy Chem. Corp. v. Atlas Chem. Indus., Inc.,
438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971) (finding a likelihood of confusion due
in part to “the fallibility of memory over a period of time”). Some consumers could
even perceive Respondent’s mark as a modification of Petitioner’s mark which
identifies the same source.
The marks also convey similar meanings. A Transworld Business article
introduced by Respondent quotes Petitioner’s founder Malcolm McCassy as saying
that ETHIKA has come to “stand for Ethnicity, Ethics, and Athletics.” 40 TTABVUE
701 (emphasis added). Respondent’s mark ETHIK also conveys ethics, and “ethik” is
German for “ethic.” 30 TTABVUE 168 (Respondent’s response to Interrogatory No. 1)
Cancellation No. 92063682
22
and 329-30 (Resp. Disc. Tr. 127-28). Even consumers who are unaware of the meaning
of either party’s mark may very well take from ETHIK the same meaning they take
from ETHIKA, particularly when the marks are used on identical goods.
In short, the dominant portion of Respondent’s mark is highly similar to
Petitioner’s mark in sound, appearance and meaning, and the marks create similar
commercial impressions, especially when used on identical goods. This factor also
weighs in favor of finding a likelihood of confusion.13
3. Alleged Actual Confusion
Actual confusion “is strongly indicative of a likelihood of confusion.” Thompson v.
Haynes, 305 F.3d 1369, 64 USPQ2d 1650, 1655 (Fed. Cir. 2002). Here, while
Petitioner has presented some evidence which suggests, at least, that Respondent’s
mark may call to mind Petitioner’s or vice versa, we do not find it particularly
probative of actual confusion.
Specifically, it is not clear that Ms. Tsay did anything more than notice the
similarities between the parties’ marks and goods, and to the extent her testimony
reveals temporary confusion, the issue seems to have been cleared up quickly. In fact,
Ms. Tsay was apparently not confused to the point of accepting Respondent’s goods
as Petitioner’s, but rather seems to have merely inquired of Petitioner about any
connection and to have been told that there was no connection.

13 There is no evidence or argument concerning the strength of Petitioner’s marks. We find
that Petitioner’s pleaded marks are inherently distinctive, and entitled to protection against
similar marks used for related goods.
Cancellation No. 92063682
23
The evidence of mistaken social media “tags” is superficial, and not supported by
any testimony or other evidence regarding exactly what the social media users
thought, or why they “tagged” the posts the way they did. Similarly, it is not clear
exactly what “Joe@ClothingTown” or Evolve thought about any perceived connection
between Petitioner and Respondent, and it appears that neither purchased one
party’s goods assuming they were connected somehow to the other party. This type of
evidence would be significantly more persuasive if “Joe@ClothingTown” or a witness
with Evolve testified (and were subject to cross-examination). See Corporate Fitness
Programs, Inc. v. Weider Health and Fitness, Inc., 2 USPQ2d 1682, 1691 (“we agree
with applicant’s contention that the testimony is of little probative value in the
absence of testimony from the third persons themselves as to whether they were
confused and, if so, what caused their confusion”); Toys “R” Us, Inc. v. Lamps R Us,
219 USPQ 340, 346 (TTAB 1983) (“One important defect, which might have been
revealed had the involved customers been available for cross-examination, is that
there is nothing to indicate whether the reason for the question as to affiliation was
the result of the similarity of the marks. While this might possibly be inferred from
the absence of any other apparent reason, the point is too important to be established
by means of an inference … The fact that questions have been raised as to the possible
relationship between firms is not by itself evidence of actual confusion of their
marks.”). This factor is neutral.
Cancellation No. 92063682
24
IV. Conclusion
Because the parties’ goods are in-part identical, the channels of trade and classes
of consumers are presumed to and in fact do overlap and the marks are similar,
confusion is likely.

Decision: The petition to cancel Respondent’s Registration No. 4834883 on the
ground of likelihood of confusion is granted.