Genesco Brands Inc.v.Wendy M. Rathjen and Jane M. Burke

Trademark Trial and Appeal Board

Aug 11, 2009

No. 91177209 (T.T.A.B. Aug. 11, 2009)

Mailed: August 11, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Genesco Brands Inc.
v.
Wendy M. Rathjen and Jane M. Burke
_____

Opposition No. 91177209
_____

Tywanda H. Lord, Virginia S. Taylor and Theodore H. Davis Jr. of
Kilpatrick Stockton LLP for Genesco Brands Inc.

Daniel P. Burke and Georgia Damoulakis of Daniel P. Burke &
Associates, PLLC for Wendy M. Rathjen and Jane M. Burke.
______

Before Holtzman, Zervas and Bergsman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicants, Wendy M. Rathjen and Jane M. Burke, have filed
an application to register the mark shown below,

THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Opposition No. 91177209
2
for the following goods in Class 25:1
Baby bibs not of paper; Bandanas; Baseball caps;
Bathing suits; Bathing trunks; Beach coverups;
Beachwear; Bermuda shorts; Bikinis; Blouses; Boxer
briefs; Boxer shorts; Camp shirts; Children's and
infants' cloth bibs; Children's cloth eating bibs;
Children's headwear; Cloth bibs; Fleece pullovers;
Golf shirts; Gym shorts; Hat bands; Hats; Head
sweatbands; Infantwear; Jogging suits; Polo shirts;
Pullovers; Quilted vests; Rugby tops; Shirts; Short-
sleeved shirts; Shorts; Sports bra; Sweat shirts;
Swim wear; T-shirts; Tank tops; Track suits; Vests;
Wraps.

Opposer filed a notice of opposition on May 9, 2007 on the
ground of priority and likelihood of confusion under Section 2(d)
of the Trademark Act. Opposer asserted ownership of eight
registrations "for the JOURNEYS Mark and other marks
incorporating the element JOURNEYS (collectively the 'JOURNEYS
Marks')." The registrations include the typed mark JOURNEYS for
"shoes" in Class 25 (Registration No. 1475093), and for "retail
shoe store services" in Class 42 (Registration No. 1458854); and
six registrations incorporating the term JOURNEYS for, inter
alia, footwear and apparel, and for retail footwear and apparel
store services. In addition, opposer alleges that it has
continuously used "the JOURNEYS Marks" in connection with "a
variety of products and services" since at least as early as
December 17, 1986. Opposer asserts that applicants' mark, when
applied to applicants' goods, so resembles opposer's previously

1 Application Serial No. 78895952 filed May 30, 2006, based on an
allegation of a bona fide intention to use the mark in commerce under
Section 1(b) of the Trademark Act.
Opposition No. 91177209
3
used and registered "JOURNEYS Marks" as to be likely to cause
confusion.
Applicants filed an answer denying the salient allegations
of the opposition.
The record consists of the pleadings; the file of the
involved application; and testimony and notices of reliance by
each party. Opposer submitted the testimony, with exhibits, of
Matthew Hayden, senior buyer for a retail division of Genesco,
Inc., opposer's licensee; and the confidential testimony, with
exhibits, of Christopher Brown, finance manager for the Journeys
division of Genesco, Inc. Opposer filed notices of reliance on
various printed publications; and on status and title copies of
its pleaded registrations showing they are valid and subsisting
and owned by opposer. They are as follows.
JOURNEYS 2

Shoes, in Class 25.

JOURNEYS 3

Retail shoe store services, in Class 42.

4

Footwear and apparel, namely, shoes, boots, hats,
caps, hosiery, shirts, sweatshirts, sweatpants,

2 Registration No. 1475093; issued February 2, 1988; renewed.

3 Registration No. 1458854; issued September 22, 1987; renewed.

4 Registration No. 3099876; issued June 6, 2006.

Opposition No. 91177209
4
coats, jackets, t-shirts, gloves, scarves, shorts,
underwear, pants, and skirts, in Class 25; and

Retail store services in the fields of footwear,
apparel, luggage, handbags, sports bags, backpacks,
jewelry and fashion accessories, in Class 35.

JOURNEYS KIDZ 5

Footwear and apparel, namely, shoes, boots, hats,
caps, hosiery, shirts, sweatshirts, sweatpants,
coats, jackets, t-shirts, gloves, scarves, shorts,
underwear, pants, and skirts, in Class 25; and

Retail store services in the fields of footwear,
apparel, backpacks, sports bags, jewelry and fashion
accessories, in Class 35.

6

Footwear and apparel, namely, shoes, boots, hats,
caps, hosiery, shirts, sweatshirts, sweatpants,
coats, jackets, t-shirts, gloves, scarves, shorts,
underwear, pants, and skirts, in Class 25; and

Retail store services in the fields of footwear,
apparel, backpacks, sports bags, jewelry and fashion
accessories, in Class 35.

JOURNEYS AN ATTITUDE YOU CAN WEAR 7

Shoes, in Class 25; and

Retail shoe store services, in Class 42.
JOURNEYS ZAP CARD 8

5 Registration No. 2952068; issued May 17, 2005; "KIDS" is disclaimed.

6 Registration No. 2957414; issued May 31, 2005; "KIDS" is disclaimed.

7 Registration No. 1558147; issued September 26, 1989; Sections 8 and
15 affidavits accepted and acknowledged.

Opposition No. 91177209
5

Financial services in connection with the issuance
of stored value cards, in Class 36.

9
Providing prepaid payment cards redeemable for
purchases in applicant's retail stores, in Class
36.

Applicants submitted the testimony, with exhibits, of
applicant, Wendy M. Rathjen; and a notice of reliance on five
third-party registrations.
Both parties filed briefs.10
Evidentiary Matters
Opposer argues in its brief that it owns a family of marks
which according to opposer "includes" the following marks:
JOURNEYS; JOURNEYS and design; JOURNEYS KIDZ; JOURNEYS KIDS and
design; JOURNEYS ZAP CARD; JOURNEYS ZAP CARD and design; SHI BY
JOURNEYS; JOURNEYS AN ATTITUDE YOU CAN WEAR; and "JOURNEYS AN
ATTITUTDE THAT...(LOVES, ROCKS, FLIES, SKATES, IS ON FIRE,
etc.)." Brief, p. 19.

8 Registration No. 2620681; issued September 17, 2002; "CARD" is
disclaimed; Sections 8 and 15 affidavits accepted and acknowledged.

9 Registration No. 2501052; issued October 23, 2001; Sections 8 and 15
accepted and acknowledged. The wording in the mark, according to the
Office's TARR records, is "JOURNEYS ZAPCARD."

10 Applicants' motion to accept its late-filed brief was granted by the
Board on April 10, 2009.
Opposition No. 91177209
6
Applicants object to opposer's reliance on a family of
marks, and also to opposer's testimony and evidence regarding the
mark SHI BY JOURNEYS on the basis that opposer failed to plead
these matters in the notice of opposition.
Opposer contends that it adequately pleaded a family of
marks as well as the mark SHI BY JOURNEYS as part of the family
by its general references to its "JOURNEYS Marks," arguing that
these marks were "defined" in the notice of opposition as "the
JOURNEYS mark and other marks incorporating the word JOURNEYS."
Reply Brief, p. 13. In addition, opposer states that in response
to applicants' interrogatory no. 1, which asked opposer to "State
all names under which Opposer does business," opposer identified
SHI BY JOURNEYS as one of the names under which opposer does
business; that in the same response opposer also directed
applicants to websites for retail stores "operating under the
JOURNEYS marks"; that "all of the documents" were admitted into
evidence during trial without objection from applicants; and that
those documents "contained references to the JOURNEYS marks,
including the SHI BY JOURNEYS mark" along with further evidence
of how the marks were advertised and promoted together.
A plaintiff may not rely on an unpleaded claim. The
plaintiff's pleading must be amended (or deemed amended),
pursuant to Fed. R. Civ. P. 15(a) or (b), to assert the matter.
See TBMP §314 (2d ed. rev. 2004) and cases cited therein.
Opposer's general reference in the pleading to its "JOURNEYS
Opposition No. 91177209
7
Marks" and "other marks" incorporating JOURNEYS is insufficient
to provide notice that opposer was attempting base its claim of
likelihood of confusion on a family of marks rather than on each
individual mark in the group. Nor is opposer's reference to
"other marks" fair notice to applicants that opposer intended to
rely on the particular mark SHI BY JOURNEYS as a ground for
opposition. Opposer was clearly aware of its own marks and it
was obligated to plead the specific marks on which it intended to
rely, or to amend the pleading to assert them.
Furthermore, merely identifying SHI BY JOURNEYS as one of a
number of names under which opposer does business in response to
a discovery request, or because the name appeared along with
other names or marks on documents identified by opposer in
response to the request is not sufficient to apprise applicants
that opposer intended to rely on the name, or the mark, in
support of its case. See, e.g., Riceland Foods Inc. v. Pacific
Eastern Trading Corp., 26 USPQ2d 1883, 1884 (TTAB 1993)
(applicant had no notice that opposer intended to rely on use of
unregistered word mark appearing on opposer's packaging).
Opposer did not plead these matters or seek to amend the
pleading to assert them under Fed. R. Civ. P. 15(a). Nor do we
find that these matters were tried by implied consent such that
the pleadings may be deemed amended under Fed. R. Civ. P. 15(b)
to conform to the evidence. Implied consent to the trial of an
unpleaded issue can be found only where the nonoffering party
Opposition No. 91177209
8
(1)raised no objection to the introduction of evidence on the
issue, and (2) was fairly apprised that the evidence was being
offered in support of the issue. TBMP §507.03(b) (2d ed. rev.
2004.) These conditions have not been met in this case.
Applicants expressly objected at trial to consideration of
the mark SHI BY JOURNEYS as irrelevant, and maintained the
objections in their brief. As to a family of marks, we do not
find it clear from opposer's testimony that the evidence was
being offered for a purpose other than to establish opposer's
rights in the individual marks.
Accordingly, applicants' objections to these unpleaded
matters are sustained.11
In any event, opposer did not prove a family of marks. To
establish a family of marks, opposer must prove that prior to
applicants' first use of its mark the marks comprising the family
of marks, or at least a substantial number of them, were used and
promoted together by opposer in such a manner as to create public
recognition coupled with an association of common origin
predicated upon the family feature. See Marion Laboratories v.
Biochemical/Diagnostics, 6 USPQ2d 1215, 1218 (TTAB 1988).
Opposer did not establish use of the marks as a family prior
to applicants' constructive date of first use on May 30, 2006.

11 Applicants did not object to the introduction at trial of other
unpleaded marks such as the various "JOURNEYS AN ATTITUDE THAT ______"
marks and "JOURNEYS IRISH RAD." Thus, we consider the pleading amended
to include claims as to these marks and the evidence relating to these
marks will be considered for whatever probative value it may have.
Opposition No. 91177209
9
Opposer introduced through the testimony of Mr. Hayden a printed
catalog dated "Spring 2006" (Hayden Test., Exh. 5). Because
there is no testimony as to exactly when in 2006 this brochure
was published, we must presume it was not published until after
applicants' first use on May 30, 2006. Other catalogs and
advertisements submitted by opposer were either not in use prior
to applicants' first use date or if they were in use, do not show
use and promotion of all or even a significant number of the
registered marks together.
Therefore, we must determine the issue of likelihood of
confusion based on the individual marks that are the subject of
opposer's registrations,12 and those for which opposer has shown
prior common law use, if any.
STANDING AND PRIORITY
In view of opposer's valid and subsisting registrations,
opposer's standing has been established, and its priority with
respect to the registered marks for the goods and/or services
identified therein is not in issue. King Candy Co., Inc. v.
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
Opposer's record is insufficient to establish prior common
law rights in any additional marks (i.e., the common law marks

12 Opposer argues that even if it does not have a family of marks,
applicants' mark still is confusingly similar to opposer's individual
marks. However, we note that opposer did not analyze the likelihood of
confusion in terms of any individual mark.

Opposition No. 91177209
10
introduced by opposer to which applicant did not raise an
objection). There is no specific testimony regarding first use
of the mark JOURNEYS IRISH RAD, and Mr. Hayden provided only
vague and undocumented assertions regarding the marks "JOURNEYS,
AN ATTITUDE THAT ... (LOVES, ROCKS, FLIES, SOARS, SKATES, IS ON
FIRE, etc.)." Mr. Hayden testified only that opposer first used
"the word 'love'" in 1989 on stickers (Hayden Test., p. 141), and
he did not know if any of the phrases were currently in use.13
Opposer also contends that it uses various design elements
with its JOURNEYS marks such as silhouettes of the human form,
fire, flames, and a globe "such as those incorporated in
applicants' mark" and that opposer had "created thousands of
different stickers with different design elements along with the
JOURNEYS marks." Again, however, there is only indefinite,
unsupported testimony as to opposer's first use of such designs,
and no evidence regarding continuous or current use.14

13 It is not even particularly clear from the testimony what these marks
actually are. When Mr. Hayden was asked, "So..., if I can summarize
your testimony, Genesco uses the Journeys mark in the following ways:
... Journeys, An attitude You Can...fill in the blank?" (emphasis
added), he answered, "Right." Hayden Test., pp. 56-57. However, the
marks Mr. Hayden initially identified did not include the words "you
can."

14 To the extent that opposer is attempting to rely on common law rights
in JOURNEY in singular form such usage was neither pleaded by opposer
nor tried by the parties. This mark was not mentioned by opposer until
its reply brief. And although opposer points to exh. 4 containing a
reference in opposer's catalog to the phrase "Got a Reel Journey?",
when asked on cross-examination whether opposer "ever used the word
'journey' in its singular form in connection with its Journey
business?", Mr. Hayden responded, "No."
Opposition No. 91177209
11
The question of likelihood of confusion will be decided
solely on the basis of opposer's registrations.
LIKELIHOOD OF CONFUSION
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 the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities 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 Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and the
differences in the marks.").
Fame and/or relative strength of opposer's mark
The record shows that the mark JOURNEYS has been in use for
over 20 years in connection with retail stores, primarily
featuring shoes, but also selling other items of apparel such as
t-shirts, hats and socks. The mark is currently used on over 800
stores with locations in all 50 states. Opposer has advertised
and promoted its retail stores over the years on radio,
television, and through print catalogs and nationally distributed
consumer magazines such as Seventeen, Maxim and Complex. In
addition, the JOURNEYS mark has received attention in trade
Opposition No. 91177209
12
publications and in local newspapers. We also note that
opposer's (confidential) sales and advertising figures15 for the
JOURNEYS retail stores covering the years 2002 to 2008 are quite
substantial.16
Opposer does not argue in its brief that the "JOURNEYS" mark
is famous; nor is the record sufficient to demonstrate the
"extensive public recognition and renown" required for fame.
Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d
350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). Nevertheless, the
evidence is sufficient to establish that the mark has achieved
some degree of recognition and strength in the market. In
addition, the mark by its nature is strong and distinctive. The
term appears to be essentially arbitrary for the retail sale of
footwear and apparel, as well as for the goods themselves.
Because JOURNEYS is a strong mark, it is "more likely than a
weak mark to be remembered and more likely to be associated by
the purchasing public with a greater breadth of goods or
services." Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335,209 USPQ 986 (CCPA 1981). A strong mark is also

15 Applicants objected to opposer's introduction of the financial
summary with this information during the deposition of Mr. Brown on the
ground that the document was not produced during discovery. Inasmuch
as this objection was not maintained in applicants' brief, it is
considered waived. See TBMP §707.04 (2d ed. rev. 2004).

16 We note applicants' argument that opposer has provided no context for
these figures. However, because the figures appear impressive on their
face, we find this evidence probative.
Opposition No. 91177209
13
entitled to protection for greater variations on the mark. See
McCarthy on Trademarks and Unfair Competition § 11:73 (4th ed.).
Disputing the strength of opposer's mark, applicants
introduced five third-party registrations for marks having
JOURNEY as a component.17 They are as follows: Reg. No. 2540394
for the mark LIFE IS A JOURNEY. STAY WARM. KEEP DRY for "women's
and children's apparel; namely, coats, jackets, sweaters and
jogging suits"; Reg. No. 2336571 for the mark THE JOURNEY IS THE
REWARD for "jackets, pants, shirts, shorts, hats, sweatshirts,
sweatpants, rain jackets, rain pants, parkas, t-shirts"; Reg. No.
3178765 for the mark YOUR'RE ALREADY ON THE JOURNEY for
"clothing, namely, t-shirts"; Reg. No.2567910 CELEBRATE THE
JOURNEY OF YOGA for "clothing, namely, unitards, tights, tank
tops, t-shirts, shorts, dresses, vests, jackets, sweatshirts, and
shoes for the exercise, fitness, yoga, and health industries";
and Reg. No. 3314690 for the mark JOURNEYS ENCOURAGING WORDS
ALONG LIFE'S WAY. for "greeting cards."
In addition, Ms. Rathjen testified that these marks are in
use, stating that she purchased the following: a jacket with the
mark LIFE JOURNEY STAY WARM KEEP DRY from Nordstrom department
store; a jacket with the mark THE JOURNEY IS THE REWARD appearing
on the packaging from the registrant's website; a "journal" with

17 We construe applicants' argument that the evidence shows that opposer
"does not have exclusive rights to the word 'journey' with respect to
clothes" (Brief, p. 24), as an argument that the mark is weak in the
clothing field and entitled to only a narrow scope of protection.
Opposition No. 91177209
14
the mark YOU'RE ALREADY ON THE JOURNEY from the registrant's
website; and a greeting card from a Hallmark store with the
phrase JOURNEYS ENCOURAGING WORDS. Regarding the mark CELEBRATE
THE JOURNEY, Ms. Rathjen printed out a page from the registrant's
website showing that clothing is sold on the website purportedly
in connection with the mark.
The relevant consideration under this du Pont factor is "the
number and nature of similar marks in use on similar goods." See
du Pont, supra at 567. Greeting cards and journals are not
similar to the goods and/or services in this case which involve
footwear and apparel. Furthermore, applicants have not shown
that the mark CELEBRATE THE JOURNEY, which appears nowhere on the
web page submitted by Ms. Rathjen, is actually in use. The
existence of just two third-party uses is clearly not sufficient
to prove that the term "Journey" is so widely and extensively
used in connection with clothing that purchasers have become
conditioned to look to other elements of the marks to distinguish
the source of such goods. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1694 (Fed. Cir. 2005).
Thus, to the extent this evidence has any probative value,
it is insufficient to outweigh the evidence of the strength of
the term as a mark. We find that opposer’s marks are strong
marks entitled to a broad scope of protection or exclusivity of
use.
Opposition No. 91177209
15
For purposes of discussing the remaining factors, we will
focus on the marks and goods of opposer which can be considered
closest to the mark and goods in the subject application, namely
Registration No. 1475093 for the mark JOURNEYS for shoes; and
Registration No. 3099876 for the mark JOURNEYS and design for
shoes and clothing.
Registration No. 1475093
We turn first to consider whether applicants' mark

for various items of apparel including baseball caps, blouses,
hats, jogging suits, shirts, shorts, sweat shirts and t-shirts,
is likely to cause confusion with the registered mark JOURNEYS,
in typed form, for "shoes."
We begin by noting that goods need not be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is enough that goods are related in some
manner and/or that the conditions surrounding their marketing are
such that they would be likely to be seen by the same persons
under circumstances which could give rise, because of the marks
used thereon, to a mistaken belief that they originate from or
are in some way associated with the same producer. See Hilson
Research, Inc. v. Society for Human Resource Management, 27
Opposition No. 91177209
16
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telephone Corp., 197 USPQ 910 (TTAB 1978).
Shoes, on the one hand, and clothing such as jogging suits,
shirts, t-shirts, and shorts, on the other, are closely related,
complementary articles of everyday wearing apparel. Opposer
itself sells both types of goods under the same mark in its
retail stores. See, e.g., Hayden Dep., Exh. 6. Given the
absence of any limitations in either the application or the
registration, we assume that these closely related goods move
through all the normal channels of trade to all the usual
purchasers, and that the trade channels and purchasers for the
goods overlap. Applicants do not argue otherwise. In addition,
the Board on a number of occasions has found that the use by
different parties of the same or similar marks for both types of
goods is likely to cause confusion. See, for example, In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re Apparel
Ventures, Inc., 229 USPQ 225 (TTAB 1986); and In re Kangaroos
U.S.A., 223 USPQ 1025 (TTAB 1984) and cases cited therein.
We also note that the goods in this case are or can be
inexpensive. Mr. Hayden testified that opposer's t-shirts sell
for as little as $9.99, and certain types of footwear, such as
sandals, for as little as $4.99. Hayden Test., pp. 76-77. It is
well settled that purchasers of casual, low cost ordinary
consumer items are held to a lesser standard of purchasing care
and are more likely to be confused as to the source of the goods.
Opposition No. 91177209
17
See Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748
F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984).
The du Pont factors of the similarity of the goods, channels
of trade, classes of purchasers and conditions of purchase all
favor a finding of likelihood of confusion.
We turn then to a comparison of the marks. In determining
the similarity or dissimilarity of marks, we must consider the
marks in their entireties in terms of sound, appearance, meaning
and commercial impression. See du Pont, supra. See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005).
While marks must be compared in their entireties, "there
is nothing improper in stating that, for rational reasons, more
or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of the
marks in their entireties. Indeed, this type of analysis appears
to be unavoidable." In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
The strong and distinctive term JOURNEYS is opposer's entire
mark. The virtually identical term "JOURNEY" is an essential
element of the phrase LOVE THE JOURNEY in terms of sound. That
word is also significant in conveying the meaning and commercial
impression of applicants' mark. To the extent either mark has a
meaning in relation to shoes and clothing, the meanings are
similar as applied to these closely related goods, both perhaps
Opposition No. 91177209
18
suggesting apparel for traveling or adventure. Applicants argue
that while opposer's mark suggests "a plurality of unplanned,
short trips, with no single direction, but rather every direction
at the same time," applicants' mark, in contrast, connotes one
person's personal life journey, which can only be considered as
one journey." Brief, p. 19. However, applicants' mark simply
reads LOVE THE JOURNEY. The message conveyed by this mark is not
limited to any one journey or to any particular type of journey.
The meanings and overall images are related and complementary.
While the phrase LOVE THE JOURNEY may add to the meaning of
JOURNEYS it does not significantly change the meaning or
commercial impression.
There are clearly differences between the marks in
appearance. Applicants' mark includes a prominent design element
which is not present in opposer's mark. However, "in a composite
mark comprising a design and words, the verbal portion of the
mark of the mark is the one most likely to indicate the origin of
the goods to which it is affixed." CBS, Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 200 (Fed. Cir. 1983). The word portion of a
composite word and design mark is generally accorded greater
weight because it would be used by purchasers to request the
goods. See In re Appetito Provisions Co., 3 USPQ2d 1553, 1554
(TTAB 1987). When referring to applicants' clothing, consumers
will call for LOVE THE JOURNEY. In addition, while the design is
large, it does not overwhelm the wording, but rather draws
Opposition No. 91177209
19
attention to it. The two end figures appear to be holding the
words LOVE THE JOURNEY above their heads. Also, the word JOURNEY
stands out because the flame design visually separates that word
from the other wording in the mark.
Furthermore, opposer's JOURNEYS mark is registered in typed
form. This means that opposer is free to present its mark in a
variety of forms and styles, including the same, slightly curved
style of lettering as applicants use, thereby increasing to some
extent the visual similarity between the marks. See, e.g.,
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1847-48 (Fed. Cir. 2000) (typed drawings are not limited to any
particular rendition of the mark); and Phillips Petroleum v. C.J.
Webb, 442 F.2d 1376, 170 USPQ 35 (CCPA 1971).
While there are differences in the marks, considering the
strong and arbitrary nature of opposer's mark and the scope of
protection to which it is entitled, we find that the similarities
in the marks as a whole are more significant, and that they
outweigh the differences.
This du Pont factor weighs in favor of a finding of
likelihood of confusion.
We note applicants' arguments concerning the absence of
evidence of actual confusion. However, we find this to be a
neutral factor in this case. Applicants' mark has been in actual
use on t-shirts since January 2007, a relatively short period of
time. Applicants introduced no evidence as to the geographical
Opposition No. 91177209
20
scope of its sales under the mark and no specific evidence as to
the extent of use and exposure of their mark during the short
period of overlapping use with opposer's mark. Thus, we have
insufficient evidence to determine whether a meaningful
opportunity for actual confusion has existed. See Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
After considering all the relevant du Pont factors, we find
that applicants' mark is likely to cause confusion with opposer's
registration for JOURNEYS.
Registration No. 3099876
We turn next to a consideration of whether applicants' mark
for goods including Bermuda shorts; boxer briefs; boxer shorts;
hats, baseball caps, shirts, sweatshirts, t-shirts, polo shirts,
short-sleeved shirts, and shorts is likely to cause confusion
with opposer's mark for "footwear and apparel, namely,
shoes, boots, hats, caps, hosiery, shirts, sweatshirts,
sweatpants, coats, jackets, t-shirts, gloves, scarves, shorts,
underwear, pants, and skirts."
Our findings with respect to the strength of opposer's mark
and the lack of evidence of actual confusion are equally
applicable here.
In this case, many of applicants' items, such as hats,
baseball caps, shirts, t-shirts, sweatshirts, boxer shorts are
identical or legally identical to opposer's hats, caps, shirts,
Opposition No. 91177209
21
sweatshirts, t-shirts, shorts and underwear. Because there are
no restrictions in the application or registration as to the
channels of trade for the goods or their classes of purchasers,
these identical goods must be deemed to be sold in the same
channels of trade, including all the usual retail outlets for
such goods, and directed to the same ordinary consumers. See In
re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) ("Because
the goods are legally identical, they must be presumed to travel
in the same channels of trade, and be sold to the same class of
purchasers").
As we noted earlier, given the low cost of items such as t-
shirts, consumers are not likely to exercise a high degree of
care in selecting these goods and would therefore be more prone
to confusion. See Kimberly-Clark Corp. v. H. Douglas Enter.,
Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985).
We turn then to a comparison of the marks, again keeping in
mind the strength of opposer's mark and also the principle that
when marks would appear on identical goods, the degree of
similarity between the marks necessary to support a finding of
likelihood of confusion declines. Century 21 Real Estate v.
Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Here, the word JOURNEYS is the entire literal portion of
opposer's mark, and for the reasons stated earlier, the two marks
have similarities in sound and meaning.
Opposition No. 91177209
22
In terms of appearance, there are greater differences
between the marks in this case because this mark of opposer is
presented in a distinctive, highly stylized form. We find that
the visual differences result in slight differences in commercial
impression. As applicants argue, their design "gives the
impression of unity and tranquility" while opposer's "'arrow'
stylizations give an impression of pandemonium and disorder."
Brief, p. 19. However, we do not find that this difference in
commercial impression distinguishes the marks as a whole. The
word JOURNEYS still creates a strong visual impact apart from the
stylization, and because the word portions of the marks are
similar, and they have similar meanings and commercial
impressions, we find that the marks are sufficiently similar in
terms of their overall commercial impressions.
Thus, this du Pont factor weighs in favor of a finding of
likelihood of confusion.
Because the parties goods are in part identical, and they
are inexpensive, ordinary consumer items that are not necessarily
purchased with a great deal of care, and considering that
opposer's strong and arbitrary mark is entitled to protection for
greater variations on its mark, we find that the marks are
sufficiently similar that confusion is likely to result from the
parties' contemporaneous use of the marks on the goods.

Opposition No. 91177209
23
Conclusion
In view of the foregoing, we find that applicants' mark is
likely to cause confusion with the marks and goods in opposer's
Registration Nos. 1475093 and 3099876. To the extent there is
any doubt as to the likelihood of confusion, it is settled that
such doubt must be resolved in favor of the prior registrant.
Broderick & Bascom Rope Co. v. The Goodyear Tire and Rubber Co.,
531 F.2d 1068, 189 USPQ 412 (CCPA 1976); and Crown Radio Corp. v.
Soundscriber Corp., 506 F.2d 1392, 184 USPQ 221 (CCPA 1974).
Decision: The opposition is sustained and registration to
applicants is refused.