Grace N. Emily, Inc.

Trademark Trial and Appeal Board

Jan 11, 2019

EX (T.T.A.B. Jan. 11, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 11, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Grace N. Emily, Inc.
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Serial No. 87332260
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George Tseng of Lee Anav Chung White Kim Ruger & Richter LLP
for Grace N. Emily, Inc.

Crystal H. Yi, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Acting Managing Attorney.
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Before Bergsman, Wellington, and Greenbaum,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Grace N. Emily, Inc. (“Applicant”) seeks registration on the Principal Register of
the standard character mark VOILA for “Coats for adults and children; Dresses for
adults and children; Outerwear, namely, coats and jackets; Pants for adults and
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children; Shirts for adults and children; Sweaters for adults and children; Tops” in
International Class 25.1
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark
VOILA in standard characters for “mens [sic] and ladies [sic] wrist watches, clocks and
other timepieces” in International Class 14.2
After the Examining Attorney made the refusal final, Applicant filed an appeal.
The appeal has been briefed.
I. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a 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, hereinafter referred to as “du Pont factors”); 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 relatedness of the goods. See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry

1 Application Serial No. 87332260 was filed under Section 1(b) of the Trademark Act, 15
U.S.C. § 1141(b), based on Applicant’s claim of a bona fide intent to use the mark in
commerce.
2 Registration No. 3346666 issued December 4, 2007; renewed.
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mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
A. Identity of the Marks
We compare the marks “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). In this case, the marks are identical and
Applicant acknowledges this point.3 The term VOILA is an interjection of French
origin and is “used to call attention, to express satisfaction or approval, or to suggest
an appearance as if by magic.”4 There is no evidence showing that this term has
significance in connection with any of the goods listed in the involved application or
cited registration.
Because the involved marks are identical in appearance and sound, as well as
connotation and commercial impression, this du Pont factor weighs strongly in favor
of likely confusion.

3 4 TTABVUE 10 (“Applicant acknowledges the identity of the marks in question …”).
4 We sua sponte take judicial notice of the definition, as taken from www.merriam-
webster.com/dictionary/voila. "Voilà." Merriam-Webster, Web. 18 Dec. 2018. The Board may
take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet
Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983), including online dictionaries that exist in printed format or regular fixed editions. In
re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

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B. Relatedness of the Goods; Their Trade Channels, Classes of Consumers
and Purchasing Conditions
We now compare Applicant’s various clothing goods, including coats, pants and
shirts for adults and children, with Registrant’s “mens and ladies wrist watches,
clocks and other timepieces.” In making this comparison, we keep in mind that the
question of relatedness is based on how the goods are identified in the involved
application and registration. Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“It was proper, however, for
the Board to focus on the application and registrations rather than on real-world
conditions, because “the question of registrability of an applicant's mark must be
decided on the basis of the identification of goods set forth in the application.”)
(quoting Octocom Sys., Inc. v. Houston Comp. Servs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990)); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB
2006) (unrestricted and broad identifications are presumed to encompass all goods of
the type described). The same principle holds true when considering the respective
trade channels, classes of consumers and purchasing conditions for the goods. See e.g.,
In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018)
(“The third DuPont factor -- like the second factor -- must be evaluated with an eye
toward the channels specified in the application and registration, not those as they
exist in the real world.”); In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
1748 (Fed. Cir. 2017) (“It is well established that the Board may not read limitations
into an unrestricted registration or application.”).
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We emphasize the aforementioned principles in view of Applicant’s argument that
its goods are, in actuality, directed to a different type of consumer and at a
significantly different price point than the goods of Registrant. Specifically, Applicant
asserts that it “focuses on specifically on low-cost, mass-manufactured clothing
offered to retailers for sale to the consuming public,” citing to evidence that it
submitted during prosecution.5 Applicant cites to additional evidence in contending
that Registrant, on the other hand, “serves a very niche segment of the watch and
timepiece industry” and involve goods that “relate primarily to luxury timepieces
‘adorned with diamonds or precious stones’ offered in ‘highly distinctive collections of
new classics’ with ‘revolutionary timepieces.’”6 These statements, however, are
attempts by Applicant to improperly limit the goods described in the involved
application and cited registration. Put simply, we must construe Applicant’s listed
clothing items to fall in all of the normal price ranges and may be sold in all normal
trade channels for those goods. Likewise, Registrant’s “watches, clocks and other
timepieces” are not limited to expensive watches, but may include those found at the
lowest possible price point.
As to the degree of relatedness necessary for finding a likelihood of confusion, this
is not a binary question. Applicant argues the involved goods are “different, despite
coexisting in the same, fashion industry.”7 Of course the goods are not the same;

5 4 TTABVUE 11.
6 Id. at 12.
7 Id. at 13.
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however, identity of the goods is not necessary and a likelihood of confusion may be
found even when the respective goods are not “competitive or intrinsically related.”
Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122
USPQ2d 1733, 1737 (Fed. Cir. 2017). “Instead, likelihood of confusion can be found ‘if
the respective products are related in some manner and/or if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that they emanate from the same source.’” Coach Servs. Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (internal citations
omitted).
The Examining Attorney attached evidence showing that watches are related to
the various articles of clothing identified in the involved application. This includes
Internet evidence showing third parties offering the respective goods under a single
mark, including: Lacoste, Kate Spade, Hugo Boss, Ralph Lauren, H&M, Brooks
Brothers, Calvin Klein, Ted Baker, and Michael Kors.8 As the Examining Attorney
noted in her brief, the apparel and watches are sold at a variety of price points;9 for
example, H&M offers watches as well as shirts and pants for under $20.10 The H&M
website (www.hm.com) features a variety of apparel and lists “watches” under its
“accessories” drop down menu along with other goods like “belts … hats, scarves &
gloves … jewelry.”11 In a more expensive price range, Lacoste advertises watches with

8 Attached to Office Actions issued on May 8, 2017 and November 20, 2017.
9 6 TTABVUE 7.
10 May 8, 2017 Office Action TSDR at pp. 37-46.
11 Id. at p. 39.
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its crocodile logo for $150-225, and shirts and pants bearing the same mark in the
same price range.12 The record further shows that brands, such as Fendi, Chanel and
Gucci, offer dresses, shirts, and other apparel identified in the application, as well as
watches, at significantly higher price points. This evidence shows that consumers are
accustomed to encountering goods such as Applicant’s various apparel items and
Registrant’s watches being sold under a single mark and offered in various price
ranges. A consumer shopping for apparel in any of the aforementioned price ranges
may likely encounter watches within the same price ranges; and, at least with respect
to the involved goods being offered under $20, we cannot presume a prospective
consumer would exercise a higher level of care in making a purchase.
The Examining Attorney also submitted copies of twenty third-party, use-based
registrations covering some of the same apparel items listed in the involved
application as well as watches. These third-party registrations further suggest that
the listed goods may emanate from the same source. In re Aquamar, Inc., 115
USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470
n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988) (mem.).
The record clearly establishes relatedness of the involved goods. Accordingly, the
du Pont factors involving the relatedness of the goods, as well as the purchasing
conditions and classes of consumers to whom the goods are being offered, all weigh in
favor of finding a likelihood of confusion.

12 Id. at pp. 15-22.
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With respect to the channels of trade, the record does not necessarily establish
that Applicant’s apparel would be found in the same channels of trade as Registrant’s
watches. That is, although the evidence shows that the involved goods are related
and may be sold under a single mark, the same evidence shows them being sold
through the respective source or company’s own website. For example, the Lacoste-
branded clothing and watches are being sold on the Lacoste website and there is no
indication that other brands of clothing or watches are offered through this website.
Thus, on this record, we cannot conclude that Applicant’s clothing and Registrant’s
watches would be featured via the same third-party retail internet site. We do not
weigh this factor in favor of a likelihood of confusion.
II. Conclusion
We have considered all of the evidence in the record and the arguments of the
Examining Attorney and Applicant, including evidence and arguments not
specifically addressed in this decision. Based thereon, we find confusion is likely given
Applicant’s mark is identical to the cited registered mark and our findings that
Applicant’s identified goods, involving various apparel, are related to registrant’s
watches, and the respective goods will be offered to the same classes of consumers
exercising a normal degree of purchasing care. We make this ultimate finding with
the understanding that the evidence does not show the goods will travel in the same
trade channels, but also that where identical marks are involved, as is the case here,
the relatedness of the goods required to support a finding of likelihood of confusion
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declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (internal
citation omitted), aff'd, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).
Decision: The refusal to register Applicant’s mark is affirmed.