Garan Services Corp.v.The Ultimate Green Store, LLC

Trademark Trial and Appeal Board

May 20, 2021

91239649 (T.T.A.B. May. 20, 2021)

This Opinion is Not a
Precedent of the TTAB

Hearing Held: April 15, 2021 Mailed: May 20, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Garan Services Corp.

v.

The Ultimate Green Store, LLC
_____

Opposition No. 91239649
_____

G. Roxanne Elings of Davis Wright Tremaine LLP,
for Garan Services Corp.

Laura Meyer for The Ultimate Green Store LLC.
_____

Before Wellington, Lynch, and Dunn,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
The Ultimate Green Store LLC (“Applicant”) seeks registration on the Principal
Register of the mark ORGANIMALS in standard characters for the following goods:
“Textiles, namely, bed blankets and baby swaddling blankets, and textile
goods, namely, bed sheets, duvet covers, comforters, mattress pads and
mattress protectors, in the nature of mattress covers, for adults, children
and infants” in International Class 24; and

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“Clothing, namely, baby clothing in the nature of one-piece garment for
infants and toddlers, newborn skullcaps, newborn booties, baby pajamas,
adult pajamas and adult bathrobes” in International Class 25;1

Garan Services Corp. (“Opposer”) opposes registration of the applied-for mark in
both classes of goods on the ground of likelihood of confusion.2 Opposer pleads
common law rights in and registration of various GARANIMAL and GARANIMALS-
formative marks, including registrations for the mark GARANIMALS (in standard
characters) for the following goods:
“bedding, namely, bed sheets, comforters, blankets, receiving blankets,
plush blankets, flannel blankets, swaddle blankets; throws, crib bumpers,
bassinet sheets, sheet savers, mattress pads, fabric valances, fabric diaper
stackers” in International Class 24;3 and

“clothing, namely, shirts, pants, tops, shorts, sundresses, sleepwear and
hosiery” in International Class 25.4

Opposer alleges that “[b]y virtue of [Opposer’s] long, continuous, and extensive
use of the trademark GARANIMALS, said mark has become and is a famous

1 Application Serial No. 87498967 was filed on June 21, 2017, based on Applicant’s allegation
of a bona fide intent to use of the mark, for both classes of goods, in commerce under Section
1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
2 Opposer argues in its brief the additional, unpleaded ground of Applicant’s lack of a bona
fide intent to use the mark in commerce. A plaintiff may not rely on an unpleaded claim in
its brief, and to pursue an unpleaded claim, a plaintiff's pleading must be amended
under Fed. R. Civ. P. 15(b) to assert the claim, or the claim must have been tried by express
or implied consent. Fed. R. Civ. P. 15(b); see, e.g., Hornby v. TJX Cos. Inc., 87 USPQ2d 1411,
1415 (TTAB 2008). Here, none of those actions or pre-conditions are present; we therefore do
not consider the unpleaded ground of lack of a bona fide intent to use the mark.
3 Reg. No. 4191352 issued on August 14, 2012; Section 8 affidavit accepted and Section 15
declaration acknowledged.
4 Reg. No. 1393358 issued on May 13, 1986; renewed. The mark is described in the underlying
application’s drawing as a “typeset” mark. Effective November 2, 2003, Trademark Rule 2.52,
37 C.F.R. § 2.52, was amended to replace the term “typed” drawing with “standard character”
drawing. Thus, a mark depicted as a “typeset” drawing is the legal equivalent of a standard
character mark. See In re Brack, 114 USPQ2d 1338, 1339 n.2 (TTAB 2015).
Opposition No. 91239649

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trademark with respect to children’s clothing, bedding, toys and books;”5 that
“Applicant’s trademark ORGANIMALS is confusingly similar to the trademark
GARANIMALS, and Applicant’s aforesaid mark is or will be used on products that
are the same as, similar to, or commercially related to the products supplied and
distributed by Garan under the trademark GARANIMALS;”6 and that Applicant’s
mark “is therefore likely to cause confusion, to cause mistake or to deceive potential
purchasers as to the source of Applicant’s products and/or likely to cause potential
purchasers to mistakenly believe that Applicant or Applicant’s products are affiliated
with, sponsored by or associated with Garan or with Garan’s products.”7
In its answer, Applicant admits Opposer’s ownership of the pleaded registrations
and that these registrations are valid and subsisting.8 Applicant otherwise denies the
salient allegations of the Notice of Opposition, specifically stating that “Opposer’s
marks are not famous.”9

5 1 TTABVUE 9 (Not. of Opp. ¶ 13).
6 Id. at 12 (Not. of Opp. ¶ 19).
7 Id. at 11-12 (Not. of Opp. ¶ 18).
8 5 TTABVUE 2 (Answer ¶ 1).
9 Id.; set forth in ¶ 1 of “Affirmative Defenses.” Applicant’s “affirmative defenses” are not true
affirmative defenses, but appear to be amplifications or arguments as to why it does not
believe there is a likelihood of confusion between the parties’ marks. DeVivo v. Ortiz, 2020
USPQ2d 10135, *1 (TTAB 2020); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720
(TTAB 2008) (an affirmative defense is “[a] defendant's assertion raising new facts and
argument that, if true, will defeat the plaintiff's or prosecution's claim, even if all allegations
in the complaint are true,” citing BLACK'S LAW DICTIONARY (7th ed. 1999)). Nevertheless, an
answer may include affirmative assertions that may not rise to the level of affirmative
defenses but, nonetheless, amplify the denials. See TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (TBMP) § 311.02(d) (June 2020).
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Opposer filed a brief in this opposition proceeding. Although Applicant did not file
a trial brief, we note that it is not required to do so. Rather, the onus is on Opposer,
as the party in the position of plaintiff in this proceeding, to prove its case by a
preponderance of the evidence. B&B Hardware, Inc. v. Hargis Industries, Inc., 575
U.S. 138, 113 USPQ2d 2045, 2049 (2015) (“The party opposing registration bears the
burden of proof, see § 2.116(b), and if that burden cannot be met, the opposed mark
must be registered, see 15 U.S.C. § 1063(b)”); Centroamericana, S.A. v. Cerveceria
India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1311 (Fed. Cir. 1989) (plaintiff’s burden
is to establish the case by a preponderance of the evidence).
An oral hearing was held on April 15, 2021, and both parties appeared.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
Applicant’s application file. Because Opposer submitted electronic copies of its
pleaded registrations, showing their current status and title, with the Notice of
Opposition, the registrations are therefore of record.10 Trademark Rule 2.122(d).
Opposer, during its main trial period, submitted:
• Testimony declaration, with exhibits, of Jerald Kamiel, president and CEO of
Opposer’s parent company.11

• Notice of reliance on copies of its pleaded registrations.12

10 1 TTABVUE 13-107 (copies of registrations from Office electronic database “TESS”).
Additionally, as discussed, Applicant admitted Opposer’s ownership of the pleaded
registrations and that they are valid and subsisting.
11 18 TTABVUE (copy designated “Confidential”) and 19 TTABVUE (public copy).
12 17 TTABVUE.
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Applicant, during its trial period, submitted:
• Testimony declaration, with exhibits, of Laura G. Meyer.13
During its rebuttal trial period, Opposer submitted:
• Rebuttal Testimony declaration of Jerald Kamiel, (“public version” only and
without exhibits);14

• Several notices of reliance on various materials, including printouts of online
news articles regarding Opposer’s business and goods; printouts of Google
search results for “Garanimals Memes”; printouts from Opposer’s Facebook
page; printouts from the Twitter website; various screen shots from an episode
of The Tonight Show Starring Jimmy Fallon; and other printouts from the
YouTube, The Shophound, Wikipedia, Amazon and Sears websites.15

II. Opposer’s Entitlement to Statutory Cause of Action
Entitlement to a statutory cause of action is a threshold issue in every inter partes
case. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370,
2020 USPQ2d 10837, *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control
Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)). A party in the

13 24, 48 TTABVUE. It seems Applicant attempted to file the exhibits to the declaration
separately (at 23 TTABVUE, identified in docket as “Confidential Defendant’s Notice of
Reliance”). However, the 23 TTABVUE entry is void of any exhibits. Applicant has filed a
Motion to Correct the Record, with the entire Testimony Declaration of Ms. Meyer and
related exhibits. 48 TTABVUE. We hereby grant Applicant’s motion and the Meyer
Testimony Declaration and related exhibits are considered of record.
14 27 TTABVUE (“Public Version”); Opposer did not submit any of the related exhibits with
this “public” version. A “confidential version” of the declaration (36 TTABVUE), with the
exhibits, as well as three notices of reliance (33-34 and 37 TTABVUE), were filed on July 28,
2020. However, Opposer’s rebuttal testimony period closed on July 27, 2020. A party may
introduce testimony and evidence only during its assigned testimony period(s) and absent
leave from the Board, untimely evidence may not be considered. Trademark Rule 2.121(a),
37 C.F.R. § 2.121(a); see also Baseball Am. Inc. v. Powerplay Sports, 71 USPQ2d 1844, 1846
n.8 (TTAB 2004) (documentary evidence submitted outside assigned testimony period given
no consideration); M-Tek Inc. v. CVP Sys. Inc., 17 USPQ2d 1070, 1072 (TTAB 1990) (untimely
deposition stricken). Accordingly, these materials are not considered.
15 28-32, 35 TTABVUE.
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position of plaintiff may oppose registration of another’s mark where such opposition
is within the zone of interests protected by the statute, 15 U.S.C. § 1063, and the
plaintiff’s reasonable belief in damage is proximately caused by registration of the
defendant’s mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d
11277, *6-7 (Fed. Cir. 2020).16
Under the statute, “[a] claim of likelihood of confusion that is not wholly without
merit, including prior use of a confusingly similar mark, may be sufficient ‘to
establish a reasonable basis for a belief that one is damaged.” DeVivo v. Ortiz, 2020
USPQ2d 10153 at *2. Opposer’s pleaded, valid, and subsisting registrations for the
mark GARANIMALS, which are of record, establish its entitlement to oppose
registration of Applicant’s mark. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Primrose Ret. Comm’s., LLC v. Edward
Rose Senior Living, LLC, 122 USPQ2d 1030, 1032 (TTAB 2016). Applicant does not
contest Opposer’s statutory entitlement to oppose its application.

16 Standing to file an opposition under the statute is now termed entitlement to a statutory
cause of action. Major League Soccer, LLC v. F.C. Int’l Milano S.p.A., 2020 USPQ2d 11488,
at *5 n. 18 (TTAB 2020). Despite the change, our prior decisions on “standing” and those of
the Federal Circuit interpreting Sections 13 and 14 remain equally applicable. Corcamore v.
SFM, 2020 USPQ2d 11277 at *4. As the Court of Appeals for the Federal Circuit has
observed, there is “no meaningful, substantive difference between the analytical frameworks”
in the prior “standing” case law, under which a plaintiff must show a real interest in the
proceeding and a reasonable basis for its belief in damage, see Empresa Cubana Del Tabaco
v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), and the current
“entitlement” case law, under which a plaintiff must show an interest falling within the zone
of interests protected by statute and damage proximately caused by registration. Corcamore
v. SFM, 2020 USPQ2d 11277 at *4.
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III. Priority Is Not at Issue
Because Opposer’s pleaded registrations are of record, and Applicant has not
counterclaimed to cancel them, priority is not at issue in connection with the
likelihood of confusion claim as to the marks and goods covered by the pleaded
registrations. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1436 n.7
(TTAB 2012). See also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464,
1469 (TTAB 2016).
IV. Likelihood of Confusion
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), prohibits the registration of a
mark that [c]onsists of or comprises a mark which so resembles a mark registered in
the Patent and Trademark Office as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. The
fundamental purposes underlying Section 2(d) are to prevent confusion as to source
and to protect registrants from damage caused by registration of confusingly similar
marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331
(1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163
(1995); In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 566
(CCPA 1973) (“DuPont”).
In this case, although Opposer pleaded common law rights in and ownership of
several GARANIMALS-formative registered marks, we focus our likelihood of
confusion analysis on Opposer’s pleaded registrations for the standard character
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mark GARANIMALS because this mark, and the goods covered by the pleaded
registrations, bears the strongest resemblance to Applicant’s standard character
mark, ORGANIMALS, and the goods identified in the application.17 If we do not find
confusion likely between this registered mark and Applicant’s mark, we would also
not find confusion likely between Opposer’s other marks and Applicant’s mark. In re
Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
Our analysis is based on all of the probative evidence of record. DuPont, 177 USPQ
567 (setting forth likelihood of confusion factors to be considered, referred to as
“DuPont factors”). In making our determination, we consider each DuPont factor for
which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned to each
DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City
Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various
evidentiary factors may play more or less weighty roles in any particular
determination”). In any likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities between 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

17 We specifically refer to Opposer’s pleaded registrations identified in Notes 3-4.
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effect of differences in the essential characteristics of the goods and differences in the
marks.”).
A. Relatedness of the Goods and Their Trade Channels
We begin our analysis with the DuPont factors regarding the similarity or
dissimilarity of the parties’ respective goods, DuPont, 177 USPQ at 567, as well as
the “similarity or dissimilarity of established, likely-to-continue trade channels.” Id.
Our determinations in connection with these factors are based on the “nature of the
goods or services as described in an application or registration.” Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159 (Fed. Cir.
2014); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990).
The goods listed in the application and Opposer’s registrations in part are the
same, or encompass one another and thus are legally identical for both classes of
goods. For example, in Class 24, both the application and the pleaded Reg. No.
4191352 include “bed sheets,” “bed(ding) blankets,” and “comforters.” In Class 25,
Applicant’s “baby clothing in the nature of one-piece garment for infants and
toddlers” and its “baby pajamas, adult pajamas” are encompassed, respectively, by
Opposer’s more broadly described “clothing, namely, shirts, pants, and tops” and
“sleepwear” in its pleaded Reg. No. 1393358. It is sufficient for a finding of likelihood
of confusion as to a particular class if relatedness is established for any item of
identified goods within that class in the application. Tuxedo Monopoly, Inc. v. Gen.
Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
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Where, as here, the goods are in part identical or legally identical because one
listed item encompasses another, we presume that the channels of trade and classes
of purchasers for those identical goods are also the same. See 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); In
re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where
there are legally identical goods or services, the channels of trade and classes of
purchasers are considered to be the same); Am. Lebanese Syrian Associated Charities
Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
Accordingly, the second and third DuPont factors therefore weigh heavily in favor
of finding likelihood of confusion.
B. Alleged Fame of Opposer’s GARANIMALS mark
We turn next to the fifth DuPont factor, which considers the “fame” or strength of
the prior mark, DuPont, 177 USPQ at 567. Fame, if it exists, plays a dominant role
in the likelihood of confusion analysis because famous marks enjoy a broad scope of
protection or exclusivity of use. A famous mark has extensive public recognition and
renown. Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897
(Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992). Fame, or strength of a mark, “may be measured
indirectly by the volume of sales and advertising expenditures in connection with the
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[goods or services] sold under the mark, and other factors such as length of time of
use of the mark; widespread critical assessments; notice by independent sources of
the [goods or services] identified by the mark[]; and the general reputation of the
[goods or services].” Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d
1043, 1056 (TTAB 2017). The determination of the strength or fame of a mark is not
a binary analysis, but rather is the examination of a continuum from the weakest to
the most famous. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d
1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (“The TTAB applied a legally incorrect
standard in applying an all-or-nothing measure of ‘fame,’ more akin to dilution
analysis.”).
Opposer argues that its GARANIMALS mark “originated in 1972 and has since
become a fixture in American culture.”18 Opposer contends that “[b]ased on the
longevity in popularity and success of GARANIMALS, it is no surprise that the brand
is an integral part of American culture and enjoys a high degree of recognition
nationally, in particular for its connection to a system of mixing and matching
separates.”19
Through the testimony of Jerald Kamiel, president and CEO of Opposer’s parent
company, with related exhibits, Opposer has established that its GARANIMALS
brand is very well-known in the United States in connection with clothing. Although

18 41 TTABVUE 10.
19 Id. at 15.
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some of Kamiel’s testimony has been designated “confidential,”20 we note the
following non-confidential testimony:
• “Sales of approximately 200 million units of GARANIMALS clothing each year,
with over four billion retail sales dollars over the last five years alone,
representing a significant market share.”21

• Opposer (and its parent company) have “invested tens of millions of dollars to
market and advertise the GARANIMALS brand. In the last five years alone,
[Opposer] has expended in excess of 35 million dollars on marketing and
advertising.”22

• GARANIMALS is one of the two top selling children’s apparel brands in the
United States; 23

• Based on a brand study conducted by an outside group and commissioned by
Opposer, “GARANIMALS brand awareness is ahead of competitors with their
own brick and mortar stores such as Old Navy, Children’s Place and Baby
Gap.”24

• The GARANIMALS brand has received unsolicited media attention from
various media outlets, including The Academy Awards Show, The Tonight
Show With Jimmy Fallon, Saturday Night Live, Glee, Shameless, and news
stories reported in The Wall Street Journal, Newsweek, Entertainment
Weekly, The Washington Post, GQ and The New York Times.25

• GARANIMALS products are sold in all of the Walmart retail stores
(approximately 4,000 stores), located throughout the United States;26

• “For the last five years or so, Opposer has “advertis[ed] on Facebook and at one
time built over 1,000,000 ‘likes’ which indicates that people are seeing

20 Again, we have not considered Kamiel’s “confidential” rebuttal testimony (at 36 TTABVUE)
that was untimely filed (see Note 14). However, we have considered his initial “confidential”
testimony (at 18 TTABVUE).
21 27 TTABVUE 3.
22 Id.
23 19 TTABVUE 20.
24 27 TTABVUE 4.
25 27 TTABVUE 4.
26 19 TTABVUE 20.
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[Opposer’s] advertising” and Opposer advertises on Instagram and other major
online platforms.27

• Opposer “has consistently marketed the GARANIMALS brand on multiple
platforms such as mail, print (Parents, American Baby and People en Español),
television (network and cable channels including ABC Family, Animal Planet,
Discovery, MTV, Bravo, Fuse, WE, VH1, CMTV, E!, Lifetime, POP and 23
Spanish language networks such as Univision, Telemundo, and
ESPNDeportes), and social media (Facebook, Instagram and YouTube).”28

• “In 2019, [Opposer’s] Facebook advertising around the GARANIMALS brand
reached over ten (10) million people and resulted in over 35 million impressions
(number of people reached through additional engagement).”29

Based on this record, we find that Opposer’s GARANIMALS brand on clothing
may be placed close to the “famous” end of the spectrum of strength of marks for
purposes of a likelihood of confusion analysis. Opposer’s sales and advertising figures
are impressive and its place as the number two top-selling children’s apparel brand
in the United States persuades us that the brand remains popular with consumers of
children’s clothing. The unsolicited media attention, in various news articles with
nationwide publication and as well as mentions on popular entertainment shows,
reflects the extent of public awareness of the GARANIMALS brand for children’s
clothing.
Accordingly, we find the fifth DuPont factor favors Opposer, and its
GARANIMALS brand is entitled to a broader than normal scope of protection. Tao
Licensing, 125 USPQ2d at 1056.

27 Id. at 6-7.
28 Id. We point out again, however, that Opposer’s exhibits regarding the unsolicited
media attention are not of record (see Note 14).
29 Id.
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C. Similarity of the Marks
We now address the first DuPont factor, which considers the “similarities or
dissimilarities of the marks in their entireties as to appearance, sound, connotation
and commercial impression.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d
1047, 1049 (Fed. Cir. 2018) (quoting DuPont, 177 USPQ at 177). “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 1742, 1746 (TTAB 2018) (quoting In re Davia, 110
USPQ2d 1810, 1812 (TTAB 2014)), aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019).
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 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 v. Marcon, 102 USPQ2d
1438; Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
It also bears mentioning that when in part identical goods are at issue, as is the
case here, the degree of similarity of the marks that is necessary to find a likelihood
of confusion is not as great as where the goods are disparate. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
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In comparing the marks, we initially find strong visual and aural similarities
between Opposer’s GARANIMALS mark and Applicant’s ORGANIMALS mark.
Because each mark comprises the term ANIMALS preceded by three letters, they are
visually extremely close. Moreover, the fact that the marks share two of the same
first 3 letters—GAR and ORG—followed by the same 7 letters, ANIMALS, makes
them also appear alike. In terms of sound, because the common term ANIMALS is a
dictionary term in ordinary use with a recognized pronunciation, the last three
syllables of the marks will pronounced in the same or very similar manner.30
As to their meaning or connotation, both marks are coined terms and do not have
any recognized meaning. However, it is likely consumers will discern the word
“animals” within each mark. Although it has no significance in connection with the
involved goods, this may connote a playful “animal” theme in connection with the
goods, particularly the bedding products and clothing for children.
In her declaration, Applicant’s CEO, Laura G. Meyer, states that Applicant’s mark
ORGANIMALS is “born out of the word ‘organic’ coupled with the word ‘animals.’”31
However, “[t]he derivation of a mark is of no particular significance if the end result
is a mark confusingly similar to a previously registered mark.” In re Iowa Paint Mfg.
Co., Inc., 149 USPQ 230, 231 (TTAB 1966) (citing Meyer Chem. Co. v. Anahist Co.,

30 Keeping in mind that there is no correct pronunciation of a coined term trademark, the last
three syllables of the marks may be identical should consumers verbalize the first three
letters of each mark to make a single syllable, i.e., “GAR-A-NI-MALS” and “ORG-A-NI-
MALS.”
31 48 TTABVUE 9. Ms. Meyer also avers that many of Applicant’s goods are “organic and eco-
friendly products.” Id. at 7. However, there is no description or restriction within the
identification of goods as to the composition of the Applicant’s bedding or clothing.
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Inc., 263 F.2d 344, 120 USPQ 483, 484 (CCPA 1959) (“How the mark came to be
adopted is not material to the issue.”)). Even should prospective consumers recognize
Applicant’s mark as a telescoped term for ORGANIC ANIMALS, in view of the fame
of Opposer’s mark, the consumers may perceive ORGANIMALS as an organic
extension of Opposer’s famous GARANIMALS product line of clothing and bedding
goods. New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596, *15 (TTAB 2020)
(“given the relative commercial strength of Opposer's NEW ERA mark, consumers
are likely to perceive hats and caps sold under Applicant's PRO ERA mark as an
extension of Opposer's NEW ERA athletic cap product line.”)
Viewing the marks in their entireties, we find they are overall more similar than
not. They are visually and aurally extremely similar, and are likely to engender a
similar common commercial impression involving “animals.” Accordingly, this
DuPont factor supports a finding of a likelihood of confusion.
D. Other Factors
Applicant submitted a copy of its registration for the mark ORGANIMALS on
“organic stuffed animals made from organic cotton and other earth-friendly
materials.”32 Applicant’s CEO, Ms. Meyer, avers that:33
Although stuffed animals were the first products manufactured under the
ORGANIMALS label, it was always my intention to expand the line into
organic baby and children’s bedding and clothing (the categories relevant
to this opposition). The Ultimate Green Store, therefore, filed for the
trademark in those categories. Simultaneously with the filing, many hours
and dollars were spent for the development of ORGANIMALS clothing and
bedding.

32 48 TTABVUE 20. Reg. No. 5531193 issued July 31, 2018.
33 Id. at 10.
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However, the issue before us in this appeal is to determine the registrability of
Applicant’s mark for the involved goods. Applicant’s ownership of a registration for
the same mark for different goods is not a factor in our likelihood of confusion
determination. Cf. In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399 (TTAB
2012) (“[U]nique situation of coexistence of an applicant’s existing registration with
a cited registration for over five years, when the applicant’s applied-for mark is
substantially similar to its existing registered mark, both for identical goods,” was
probative and relevant under thirteenth DuPont factor.)
Applicant also appears to invoke the eighth DuPont factor involving “the length of
time during and conditions under which there has been concurrent use without
evidence of actual confusion.” DuPont, 177 USPQ at 567. Ms. Meyer states in her
declaration that:34
While the current ORGANIMALS products produced by The Ultimate
Green Store are in a different class of goods from the class of goods that
are the subject of this action, some of the Ultimate Green Store’s best-
selling categories are, and have been for over a decade, for the class of goods
that are the subject of this action, namely, baby clothing and baby bedding.
…
[N]ever once has a customer emailed us, messaged us through our social
media channels that we promote and sell ORGANIMALS on, or through
the marketplaces we sell ORGANIMALS on (including Amazon.com,
Walmart.com and Ebay.com) ever expressing in writing any [confusion]
about what ORGANIMALS products are or demonstrating any thought
that what we are selling might be under the Garanimals brand name.
Further, never has a customer written us through any channel looking for
Garanimal children’s clothing.
…

34 Id. at 11-12.
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[N]ever has a customer called our customer service line verbally expressing
any confusion about what ORGANIMALS products are. Never has a
customer called us thinking we sell Garanimals or looking for Garanimals.

We are not persuaded by Ms. Meyer’s testimony. First, we note that the
application at issue is based on Applicant’s allegation of an intent to use its mark on
the goods identified in the application. There is no documentary evidence showing
Applicant’s mark being used in commerce for any of the involved goods. Prior use by
Applicant of its mark on stuffed animals is not a substitute. There needs to be
evidence showing that there has been sufficient opportunity relating to the extent of
use of Applicant’s and Registrant’s marks on the involved goods that would enable us
to determine whether there have been meaningful opportunities for instances of
actual confusion to have occurred in the marketplace. See Cunningham v. Laser Golf,
55 USPQ2d 1847. See also In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009)
(suggestion that there has been no actual confusion between the marks, based on the
coexistence of applicant’s previously issued registration and the cited registration,
entitled to little probative value in the context of an ex parte appeal). On this record,
we lack the necessary contextual evidence “such that we could make a finding as to
the ‘length of time during and conditions under which there has been concurrent use
without evidence of actual confusion.’” In re Guild Mortg. Co., 2020 USPQ2d 10279
*25 (TTAB 2020).
In any event, we note that “the relevant test is likelihood of confusion, not actual
confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1053 (Fed.
Cir. 2018). Accordingly, the eighth DuPont factor is neutral.
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E. Conclusion
Opposer has met its burden in proving by a preponderance of the evidence that
confusion is likely between its registered mark, GARANIMALS, and Applicant’s
mark, ORGANIMALS. That is, in weighing the factors that the marks are very
similar, some of the goods within each class are identical or legally identical and they
will be marketed to the same customers through the same trade channels, we find
confusion is likely. Also, our finding that Opposer’s mark is a very well-known brand
for children’s clothing further weighs in favor of finding confusion likely. Indeed,
there are no factors to help show that confusion is not likely.
Decision: The opposition is sustained on the ground of likelihood of confusion as
to the goods in Classes 24 and 25.