Jolinda-Millan

Trademark Trial and Appeal Board

Aug 5, 2011

No. 77128897 (T.T.A.B. Aug. 5, 2011)

Mailed: August 5, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re JolindaMillan
________

Serial No. 77128897
_______

Edwin D. Schindler forJolindaMillan.

Ellen J.G. Perkins, Trademark Examining Attorney, Law
Office 110, (Chris A.F. Pedersen, Managing Attorney).
_______

Before Grendel, Taylor and Wolfson,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

JolindaMillan(“applicant”) filed an application to
register the standard character mark HUMBLE SOLJAH WEAR for
cloth bibs; clothing for wear in judo practices;
clothing for wear in wrestling games; clothing,
namely, arm warmers; clothing, namely, folk costumes;
clothing, namely, knee warmers; clothing, namely, neck
tubes; clothing, namely, wrap-arounds; corsets; hoods;
infant and toddler one piece clothing; infant cloth
diapers; jerseys; mantles; mufflers; non-disposable
cloth training pants; paper hats for use as clothing
items; parts of clothing, namely, gussets for tights,
gussets for stockings, gussets for bathing suits,
gussets for underwear, gussets for leotards and
Ser. No.77128897
2
gussets for footlets; perspiration absorbent underwear
clothing; shifts; short sets; shoulder wraps;
swaddling clothes; ties; tops; wraps; bed jackets;
denim jackets; down jackets; fishermen's jackets; fur
coats and jackets; fur jackets; heavy jackets; jacket
liners; jackets; light-reflecting jackets; long
jackets; men and women jackets, coats, trousers,
vests; rain jackets; rainproof jackets; ski jackets;
sleeved or sleeveless jackets; smoking jackets; sports
jackets; suede jackets; waterproof jackets and pants;
wind resistant jackets; wind-jackets; balloon pants;
capri pants; cargo pants; denims; jogging pants;
leather pants; pants; ski pants; snow pants; sweat
pants; dresses; bathing suits; bathing suits for men;
body suits; flight suits; gym suits; jogging suits;
judo suits; karate suits; ladies' suits; men's suits;
snow suits; suits; sweat suits; track suits; training
suits; warm up suits; wet suits for water-skiing and
sub-aqua; blouses; thermal underwear; underwear; woven
or knitted underwear; coats

in International Class 25.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as intended to be used in connection with
its goods, so resembles the mark SOLJAH, previously
registered on the Principal Register in typed or standard
characters for “T-shirts and hats” in International Class
25,2 as to be likely to cause confusion, mistake or
deception.
When the refusal was made final, applicant appealed.

1Application Serial No. 77128897 was filed on March 12, 2007,
based upon applicant’s assertion of a bona fide intent to use the
mark in commerce, and including a disclaimer of “WEAR” apart from
the mark as shown.

2 Registration No. 1877687 issued on February 7, 1995. Section 8
and 15 affidavits accepted and acknowledged. First renewal.
Ser. No.77128897
3
Likelihood of Confusion
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, 567 (CCPA 1973).See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis
two key, though not exclusive, considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Marks
We first turn our attention to a comparison of the
marks. In determining the similarity or dissimilarity of
the marks, we must compare the marks in their entireties as
to appearance, sound, connotation and commercial
impression. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). The test is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
Ser. No.77128897
4
similar in their entireties that confusion as to the source
of the goods offered under the respective marks is likely
to result.
In this case, the marks are similar to the extent that
they share the arbitrary termSOLJAH. In applicant’s mark,
the phrase HUMBLE SOLJAH is the most notable portion of the
mark because it maintains its arbitrary significance in
connection with clothing. Moreover, because the adjective
“humble” modifies the word “soljah” (e.g., what type of
soljah), the word “soljah” is the dominant element of
applicant’s mark. On the other hand, the term “wear” is
merely descriptive or generic as applied to clothing.3
It is well settled that more weight may be given to
the dominant feature of a mark in determining the
commercial impression of the mark, as long as the mark is
considered as a whole and not in a dissected, piecemeal
fashion. Considering applicant’s mark as a whole, it is
rational to conclude that more weight would be given to the
arbitrary phrase HUMBLE SOLJAH (and dominant word SOLJAH)
and less weight to the descriptive or generic word WEAR.
See In re National Data Corp., 753 F.2d 1056, 1058, 224
USPQ 749, 751 (Fed. Cir. 1985); In re Kysela Pere et Fils

3See Applicant’s Brief, p. 3: “Appellant has disclaimed the word
‘WEAR,’ which is acknowledged to be descriptive of Appellant’s
goods.”
Ser. No.77128897
5
Ltd., 98 USPQ2d 1261, 1267 (TTAB 2011) (“In comparing the
marks we are guided by the principle that, in articulating
reasons for reaching a conclusion on the issue of
likelihood of confusion, 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 a consideration of the marks
in their entireties.”).
Turning to the connotations of the marks, we find that
they engender similar meanings. The term “soljah” is close
to the word “soldier” in pronunciation, and applicant
argues that the understood or slang meaning of “soljah” is
that of a “thug soldier of the streets.”4 Regardless of the
fact that applicant’s suggested meaning of the term is
unsupported by the record,5 any slang meaning of the word
“soljah” that may exist is inherent in both marks. The
term would have the same connotation and significance in
applicant’s mark as it does in the registered mark. Thus,

4 Applicant’s Brief, p. 5.
5Because we do not consider evidence attached to a party’s brief,
applicant’s introduction of evidence of the meaning of the term
“soljah,” attached only to its brief, is inadmissible. Trademark
Rule 2.142(d).Moreover, the Board does not take judicial notice
of definitions residing in online dictionaries that are not shown
to have been published in printed format. Cf. In re
CyberFinancial.Net Inc.,65 USPQ2d 1789, 1790 (TTAB 2002)(Board took
judicial notice of online dictionary definition because “as
indicated in the Web page printout,” the dictionary was available
in book form.).

Ser. No.77128897
6
as indicated above, the phrase “humble soldier” may be seen
as describing a type, or kind, of “soljah.” Potential
buyers of applicant’s goods could consider that applicant’s
mark identifies a line of clothing (the “humble soljah”
line) for one market segment while opposer’s mark
identifies a line of clothing (the “soljah” line) for a
different market segment, and that both emanate from the
same source of origin.
Applicant further argues that because the term SOLJAH
has a slang meaning, “consequently, the term SOLJAH, which
is the totality of the mark of the applied registration[,]
is quite weak.”6 This argument fails to recognize that
whether a mark is inherently “weak” is considered in
relation to the goods or services with which the mark is
used. The fact that “soljah” may have a slang meaning in
another context is irrelevant to whether it has any meaning
when applied to clothing. As noted above, the mark is
arbitrary in this context. And, as recognized by
applicant, it has been incorporated in its entirety into
applicant’s mark. In this case, the incorporation of
registrant’s entire mark in applicant’s mark underscores
the similarity between the marks. “When one incorporates
the entire arbitrary mark of another into a composite mark,

6Ibid.
Ser. No.77128897
7
inclusion in the composite mark of a significant,
nonsuggestive element will not necessarily preclude a
likelihood of confusion.” The Wella Corp., v. California
Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA
1977); see also In re West Point-Pepperell, Inc., 468 F.2d
200, 175 USPQ 558 (CCPA 1972) (WEST POINT PEPPERELL and
griffin design for fabrics is likely to cause confusion
with WEST POINT for woolen piece goods); Hunt Control
Systems, Inc. v. Koninklijke Philips Electronics N.V., 98
USPQ2d 1558, 1566 (TTAB 2011)(SENSE AND SIMPLICITY for
goods in Class 9 likely to cause confusion with SIMPLICITY
for goods in Class 9); and Trek Bicycle Corp. v. Fier, 56
USPQ2d 1527, 1530 (TTAB 2000) (TREKNOLOGY for travel and
all-purpose athletic bags likely to cause confusion with
opposer’s mark TREK for bicycles).
As a result of the foregoing, we find that the marks
are similar in meaning, appearance and pronunciation, and,
when viewed in their entireties convey highly similar
commercial impressions. Accordingly, this du Pont factor
favors a finding of likelihood of confusion.
The Goods
We now turn our attention to the identified goods,
noting that it is not necessary that the goods at issue be
similar or competitive, or even that they move in the same
Ser. No.77128897
8
channels of trade, to support a holding of likelihood of
confusion. It is sufficient instead that the respective
goods are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods are such that they would or could be encountered by
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, applicant’s goods include “paper hats
for use as clothing items; tops.” These goods overlap with
“t-shirts and hats,” the goods of the cited registration.
Paper hats are a type of hat, and t-shirts are a type of
“tops.” Thus, applicant and registrant sell legally
identical types of clothing.
Channels of Trade
In making our determination regarding the relatedness
of the parties’ goods, we must look to the goods as
identified in the involved application and cited
registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
Ser. No.77128897
9
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”)
As previously noted, applicant’sand registrant’s goods
overlap.Neither identification of goods contains any
limitations as to trade channels or intended consumers.
Accordingly, both applicant’s and registrant’s goods are
presumed to move in all normal channels of trade and be
available to all classes of potential consumers, including
consumers of each other’s goods. See In re Elbaum, 211
USPQ 639, 640 (TTAB 1981).
In addition, applicant’s goods include various types
of pants (“balloon pants; capri pants; cargo pants; jogging
pants; leather pants; pants; ski pants; snow pants; sweat
pants”) and “bathing suits; bathing suits for men.” The
examining attorney has made of record the results of a
search she conducted on the Google computerized database.
The Google search contains print outs showing one company’s
Ser. No.77128897
10
offer of men’s t-shirts and swimwear;7 another company’s
offer of both women’s t-shirts and tops;8 and a third
company’s offer of both “Bermudas, crops & shorts” and
“tops-tees & Tanks.”9 This evidence supports the conclusion
that applicant’s and registrant’s goods may be sold through
similar trade channels.
Summary
In summary, weighing all of the evidence of record as
it pertains to the relevant du Pont factors, we find that a
likelihood of confusion exists.
Decision: The refusal of registration is affirmed.

7Final Office Action, print out from www.speedousa.com.
8 Id., print out from www.championusa.com.
9 Id., print out from www.nyandcompany.com.