Fakedelic Holdings Co., Ltd.

Trademark Trial and Appeal Board

Mar 31, 2008

No. 78816943 (T.T.A.B. Mar. 31, 2008)

Mailed: 3/31/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fakedelic Holdings Co., Ltd.
________

Serial No. 78816943
_______

Danielle I. Mattessich and Brian H. Batzli of Merchant &
Gould for Fakedelic Holdings Co., Ltd.

Rebecca J. Povarchuk, Trademark Examining Attorney, Law
Office 115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Fakedelic Holdings Co., Ltd. filed an application to
register the mark SLY for goods identified in International
Classes 9, 14, 18 and 25. When the trademark examining
attorney issued a final refusal with respect to Class 25
only, applicant filed a request to divide. Pursuant to
this request, the goods listed in Classes 9, 14 and 18 were
placed in “child” application serial no. 78978874. That
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78816943
2
application was published in the Official Gazette, and no
opposition was filed.
The goods listed in Class 25 remain in the
present “parent” application. These goods are
identified as follows:
clothing not used in connection with or
for the promotion of the sport of
basketball, namely, bandanas,
bathrobes, belts, belts made of
leather, bikinis, blouses, blousons,
boots, bottoms, brassieres, camisoles,
caps, coats, corsets, coveralls, denim
jackets, denim pants, down jackets,
dress shirts, dress suits, dresses, ear
muffs, fitted swimming costumes with
bra cups, flight suits, footwear, fur
coats and jackets, fur hats, fur muffs,
fur stoles, golf caps, golf shirts,
golf shoes, halter tops, hats,
headwear, heels, hoods, jackets, jeans,
jerseys, knit shirts, knitted caps,
knitted underwear, ladies’ underwear,
leather coats, leather jackets, leather
pants, leather shoes, leg warmers,
lingerie, loungewear, mantles,
miniskirts, mules, neck bands,
neckerchiefs, neckties, negligees,
nightwear, overalls, parkas, polo
shirts, ponchos, pumps, rain boots,
robes, sandals, shawls, shirts, shoes,
shorts, short-sleeved or long-sleeved
t-shirts, short-sleeved shirts,
shoulder pads for clothing, skirts,
socks, stockings, stoles, suits,
suspenders, sweat pants, sweaters, tank
tops, ties, tops, tuxedos, t-shirts,
underclothes, vests, v-neck sweaters,
wraps, and wrist bands.1

1 Application Serial No. 78816943, filed February 16, 2006,
alleging a bona fide intention to use the mark in commerce.
Ser No. 78816943
3
The examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant’s mark, when applied to
applicant’s goods, so resembles the previously registered
mark SLY for
clothing, namely, hosiery, footwear, T-
shirts, sweatshirts, sweatpants, pants,
tank tops, jerseys, shorts, pajamas,
sport shirts, rugby shirts, sweaters,
belts, ties, nightshirts, hats, warm-up
suits, jackets, parkas, coats, cloth
bibs, head bands, wrist bands, aprons,
boxer shirts, slacks, caps, ear muffs
and gloves; all to be used in
connection with or for the promotion of
the sport of basketball2

as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
The examining attorney maintains that the marks are
identical and the goods are closely related. The examining
attorney essentially contends that the fact registrant’s
goods are used in connection with the promotion of the
sport of basketball and applicant’s goods are not so used
is not a basis on which to distinguish otherwise identical
and/or closely realated goods. In support of the refusal,
the examining attorney submitted excerpts of third-party

2 Registration No. 2563959, issued April 23, 2002.
Ser No. 78816943
4
websites and articles retrieved from the Internet.
Applicant argues that registrant uses its mark in an
ornamental fashion in connection with a basketball team’s
mascot, whereas applicant intends to utilize SLY as a
trademark for fashionable clothing not used in connection
with or for the promotion of basketball. Applicant has
submitted evidence to show that registrant’s mark
references “Sly,” the mascot of the New Jersey Nets
professional basketball team. Applicant further contends
that its goods will be sold in retail clothing stores (not
in sports merchandise stores) to consumers looking to
purchase trendy, upscale clothing. In response to the
examining attorney’s evidence regarding the similarity
between the goods, applicant argues that, at best, the
evidence demonstrates that manufacturers of sports clothing
also market clothing for use in playing various sports.
Applicant also maintains that the cited mark is not strong
and, in connection therewith, applicant submitted seven
third-party registrations of marks comprising, in part, the
term “SLY.” Finally, applicant contends that the target
customers for registrant’s and applicant’s clothing are
highly sophisticated and will be readily able to
distinguish between the marks and goods sold thereunder so
that they will not be confused as to source or origin. In
Ser No. 78816943
5
addition to the third-party registrations, applicant
submitted a dictionary definition of “sly” and excerpts
from applicant’s and registrant’s websites.
We first turn our attention to an evidentiary matter.
Applicant’s brief was accompanied by several exhibits, all
but one made of record during the prosecution of the
application. Exhibit A includes the specimens of use
submitted in support of the cited registration; applicant
requests that the Board accept them into the record by way
of judicial notice because the specimens were not available
via the Office’s TDR database until May 11, 2007, that is,
after applicant’s submission of its last response before
filing the appeal.
Trademark Rule 2.142(d) provides that the record in an
application should be complete prior to the filing of the
appeal. The specimens were available prior to the appeal,
and applicant had an opportunity to file a request for
reconsideration, accompanied by the specimens, prior to the
appeal. It is also possible to request remand of an
application to submit additional evidence after appeal, if
good cause can be shown. See TBMP §1207.02 (2d ed. rev.
2004). What is not acceptable is for an applicant simply
to submit evidence with an appeal brief, at a point where
the examining attorney has no opportunity to submit
Ser No. 78816943
6
evidence in response. Applicant’s submission of the
specimens with its appeal brief is untimely. Moreover, the
Board does not take judicial notice of registrations and/or
their file histories, including the specimens. See In re
Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998). Accordingly,
the specimens have not been considered.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also: In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, 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 (CCPA 1976).
The marks are identical in appearance, sound, meaning,
and commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). Further, the cited
mark is arbitrary. The identity between the marks weighs
heavily in favor of a finding of likelihood of confusion.
Ser No. 78816943
7
Applicant’s argument that the cited mark is entitled
to only a narrow scope of protection is not persuasive. In
this connection applicant introduced seven third-party
registrations of marks comprising, in part, “SLY,” but only
five of the registrations cover clothing items. The five
registered marks are as follows: SLY FOX (with a humanized
fox swinging a golf club); SLY 5; SLY BOOGY; SLY SHARK
CLOTHING AA; and SLYX CLOTHING. These registrations do not
serve to show that SLY has a suggestive meaning for
clothing, such that the scope of protection for the cited
registration should be limited. In four of the
registrations SLY is used as an adjective modifying an
object or a number, while because the cited mark is SLY per
se, it gives a different commercial impression. Further,
SLYX in SLYX CLOTHING would not perceived as the word “SLY”
at all. Nor do these registrations demonstrate use of the
marks that are the subjects thereof in the marketplace or
that the purchasing public is familiar with the use of
those marks and has learned to distinguish between them.
See, e.g., Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d
1004, 177 USPQ 462, 463 (CCPA 1973); and AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ
268, 269 (CCPA 1973) [“The existence of [third-party]
registrations is not evidence of what happens in the market
Ser No. 78816943
8
place or that customers are familiar with them...”]. In
any event, even if applicant had established that the
third-party marks on which it relies are in use, none of
these marks in the clothing field is as similar to
registrant’s mark as is applicant’s mark; in fact, to
reiterate, applicant’s mark is identical in every respect
to registrant’s arbitrary mark. Thus, the du Pont factor
of the nature and number of similar marks in use on similar
goods does not favor applicant, while the strength of the
cited mark favors a finding of likelihood of confusion.
We next turn to a consideration of the goods. We
note, at the outset of considering this du Pont factor,
that the greater the degree of similarity between
applicant’s mark and the cited registered mark, the lesser
the degree of similarity between applicant’s goods and
registrant’s goods that is required to support a finding of
likelihood of confusion. In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001). If the marks are the same, as in
this case, it is only necessary that there be a viable
relationship between the goods in order to support a
finding of likelihood of confusion. In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983). The proper inquiry is not whether the goods could
be confused, but rather whether the source of the goods
Ser No. 78816943
9
could be confused. In re Rexel, Inc., 223 USPQ 830, 831
(TTAB 1984).
In determining the issue of likelihood of confusion in
ex parte cases, the Board must compare applicant’s goods as
set forth in its application with the goods as set forth in
the cited registration. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). The thrust of applicant’s argument is based
on the exclusionary language in its identification
comprising a variety of clothing items – “not used in
connection with or for the promotion of the sport of
basketball” – compared with the limiting language – “all to
be used in connection with or for the promotion of the
sport of basketball” – in registrant’s identification
comprising various clothing items.
We find that the specific exclusion from applicant’s
identification of the purpose of registrant’s clothing
items is insufficient by itself to compel a finding that
applicant’s clothing items are not related to those of
registrant. In the present case, the identifications of
goods include some identical items, such as belts, shirts,
sweaters, ear muffs, caps, coats, pants, sweatpants,
pajamas/nightwear, wrist bands, and footwear/shoes.3 It is

3 See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986 (CCPA 1981) [likelihood of confusion found on
Ser No. 78816943
10
common knowledge that in today’s wearing apparel market,
sports-oriented and team-oriented clothing items on the one
hand, and fashion-oriented clothing items on the other, are
often interchangeable. Moreover, contrary to the gist of
applicant’s argument, the respective clothing items would
travel in the same trade channels. Sports-oriented
clothing items are sold in retail stores, such as Wal-Mart,
as are general clothing items. As indicated above,
applicant’s and registrant’s identifications include
several identical items, including belts, ear muffs, wrist
bands and caps. These identical clothing items, whether
basketball-oriented or general fashion items displaying the
same arbitrary mark, are likely to be sold in close
proximity to each other in the same department of the same
store. As to relevant purchasers, it hardly need be said
that the same classes of consumers, including ordinary
ones, purchase such goods.
Applicant’s argument that “[t]he complexity and
expense related to fashion and the purchase of clothing
also dictates that consumers acquiring such goods expend a
significant amount of care and sophistication when making
purchasing decisions” (Brief, p. 10) is not persuasive.

basis of overlap of any item encompassed by the identifications
of goods].
Ser No. 78816943
11
The problem with applicant’s argument is that the
identifications of goods are not limited as to price, and
therefore we must presume that the clothing items cover the
entire range of price, from expensive to inexpensive. Many
of the items listed (e.g., ear muffs and wrist bands)
likely are relatively inexpensive and bought on impulse.
See B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500,
1507 (TTAB 2007). The Internet articles about how
consumers buy clothing supports the notion that the
purchase of clothing often involves an impulse decision.
Even assuming, however, that the purchase of
applicant’s and registrant’s clothing would involve a
deliberate decision, this does not mean that the purchasers
are immune from confusion as to the origin of the
respective clothing items, especially when the identity
between the marks and the similarity between the goods
outweigh any sophisticated purchasing decision. See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819
(TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL
Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) [similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and
expensive goods]. In other words, no matter how carefully
Ser No. 78816943
12
a purchaser examines the marks, they would not be able to
distinguish them because they are identical.
In sum, we base our finding of likelihood of confusion
primarily on the fact that the arbitrary marks are
identical, coupled with the relatedness of goods that move
in identical trade channels to identical ordinary consumers
who may purchase on impulse.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.