91249960 (T.T.A.B. Jul. 1, 2021)

Knix Wear Inc.v.529 LLC

Trademark Trial and Appeal BoardJul 1, 2021

91249960 (T.T.A.B. Jul. 1, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: July 1, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Knix Wear Inc. v. 529 LLC _____ Opposition No. 91249960 (parent) Cancellation No. 92072908 _____ Andrew N. Spivak of Mosaic Legal Group PLLC for Knix Wear Inc. Robert W. Clarida of Reitler Kailas & Rosenblatt LLC for 529 LLC. _____ Before Greenbaum, Goodman, and English, Administrative Trademark Judges. Opinion by English, Administrative Trademark Judge: Defendant, 529 LLC, seeks registration on the Principal Register of the stylized mark for “underwear; briefs; bikinis; thong underwear; shorts; maternity underwear” in International Class 25.1 Defendant also 1 Application Serial No. 88338552; filed March 13, 2019 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on an allegation of a bona fide intent to use the mark in Opposition No. 91249960 (parent) Cancellation No. 92072908 - 2 - owns a Principal Register registration for the standard character mark KNICKEY for the same goods.2 In its notice of opposition and petition for cancellation, Plaintiff alleges priority and likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on prior use of an alleged family of “KNIX” marks and prior use and registration of the following standard character marks comprising that family:  KNIXY for “body shapers; headbands; lingerie; shirts; t-shirts; undergarments”;3  KNIX for “body shapers; hosiery; leggings; leotards; lingerie; underwear (none of the aforesaid relating to or promoting the sport of basketball)”;4 and “bras; brassieres; camisoles; loungewear; shirts; shorts; swim wear; swimwear; tank-tops; tank tops; sports bras”;5 commerce. The application contains the following description: “The mark consists of the word ‘KNICKEY’ in a stylized typeface.” Color is not claimed as a feature of the mark. 2 Registration No. 5892161; filed April 3, 2018; registered October 22, 2019 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on allegations of first use anywhere on September 10, 2018 and first use in commerce on November 4, 2018. 3 Registration No. 4726015; filed December 11, 2012; issued April 28, 2015; Section 8 affidavit accepted; Section 15 affidavit acknowledged. 4 Registration No. 4971267; filed December 11, 2012; issued June 7, 2016. 5 Registration No. 5981000; filed January 31, 2019; issued February 11, 2020. In the notice of opposition and petition for cancellation, Plaintiff pleaded the underlying application because the registration had not yet issued. By pleading the application, Plaintiff placed Defendant on sufficient notice that it would rely on the resulting registration. UMG Recordings, Inc. v. O’Rourke, 92 USPQ2d 1042, n.12 (TTAB 2009). Opposition No. 91249960 (parent) Cancellation No. 92072908 - 3 -  KNIXWEAR for “headbands; lingerie; shirts; swim wear; t-shirts; undergarments; none of the aforesaid relating to or in the promotion of the sport of basketball”;6  KNIXTEEN for “headbands; lingerie; shirts; swim wear; t-shirts; undergarments; underwear; anti-sweat underwear; ladies’ underwear; men’s underwear”;7 and  FITKNIX for “body shapers; headbands; lingerie; shirts; underwear.”8 In its answers, Defendant makes some admissions that we refer to in this opinion to the extent pertinent.9 Defendant otherwise denies the salient allegations. The cases are fully briefed. Because the cases involve common questions of law and fact, we sua sponte consolidate them and issue a single written decision. Fed. R. Civ. P. 42(a)(2); Wise F&I, LLC, et al. v. Allstate Ins. Co., 120 USPQ2d 1103, 1105 (TTAB 2016) (sua sponte consolidation due to common questions of law and fact). Each proceeding, however, retains its separate character. Wise v. Allstate, 120 USPQ2d at 1105. In reaching our decision, we have taken into account any differences in the issues raised by the respective pleadings.10 Id. 6 Registration No. 5489269; filed October 19, 2016; issued June 12, 2018. 7 Registration No. 5468530; filed October 5, 2017; issued May 15, 2018. 8 Registration No. 4726014; filed December 11, 2012; issued April 28, 2015; Section 8 affidavit accepted; Section 15 affidavit acknowledged. 9 In each answer, Defendant also asserted an “affirmative defense” of failure to state a claim upon which relief can be granted. Defendant, however, did not argue failure to state a claim by motion or at trial so it has forfeited this “affirmative defense.” 10 The parties would have saved time and resources if they had filed a motion to consolidate after the cancellation proceeding was filed. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 4 - For the reasons explained, the opposition is sustained and the petition for cancellation is granted. I. Evidentiary Issues and Record Deemed Stipulations The parties submitted some of the same documents through witness testimony and under notice of reliance. Many of the documents are not properly authenticated by witness testimony or admissible under notice of reliance, but because both parties ignored the rules and neither raised any objections, we deem the parties to have stipulated that the documents are properly of record and we have considered the documents for whatever probative value they may have, with a few exceptions.11 We have considered Defendant’s responses to Plaintiff’s document requests only to the extent Defendant responded that there are no responsive documents, and we have considered only Defendant’s admissions to Plaintiff’s requests for admission. City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1674 n.10 (TTAB 2013) (responses to document requests are admissible solely for purposes of showing that a party has stated that there are no responsive documents); Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB 2008) (denials of requests for admission not admissible; the denial of a request for admission 11 In addition to Plaintiff submitting two copies of much of its own evidence, Defendant resubmitted much of the same evidence Plaintiff had already introduced. This was unnecessary and complicated our review of the record. Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a) (“When evidence has been made of record by one party in accordance with [the applicable] rules, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence.”); see also Nazon v. Ghiorse, 119 USPQ2d 1178, 1181 n.6 (TTAB 2016); ITC Entm’t Grp. Ltd. v. Nintendo of Am. Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998) (filing duplicative submissions is a waste of time and resources and is a burden on the Board). Opposition No. 91249960 (parent) Cancellation No. 92072908 - 5 - establishes neither the truth nor the falsity of the assertion, but rather leaves the matter for proof at trial). In addition, we have not considered Defendant’s submission of its own supplemental responses to Plaintiff’s interrogatories.12 Trademark Rule 2.120(k)(5), 37 C.F.R. § 2.120(k)(5) (subject to certain exceptions not applicable here, “an answer to an interrogatory ... may be submitted and made part of the record only by the receiving or inquiring party.”); Daniel J. Quirk, Inc. v. Village Car Co., 120 USPQ2d 1146, 1151 (TTAB 2016) (citing Charles A. Wright, Arthur R. Miller et al., 8B FEDERAL PRACTICE AND PROCEDURE 3d § 2180 (April 2021 update) (“Older cases said that a party could not ordinarily introduce his or her own answers to an opponent’s interrogatories, since they would be self-serving statements. ... But a more correct explanation would be that a party’s own statements are hearsay when offered by the party to prove the truth of the matter asserted, and that they fall within no recognized hearsay exception.”)). We further deem Defendant as having stipulated to the current status and title of Plaintiff’s pleaded registrations. Plaintiff did not properly make its pleaded registrations of record by introducing status and title copies of its registrations. Trademark Rule 2.122(d)(1). Nor did Plaintiff properly introduce the registrations through witness testimony. Plaintiff’s Chief Executive Officer, Joanna Griffiths, testified to Plaintiff’s ownership of the pleaded registrations but she did not testify 12 Defendant’s Notice of Reliance, 13 TTABVUE 21-22. Defendant also submitted its responses to Plaintiff’s first set of interrogatories, document requests, and requests for admission. Because Plaintiff introduced these documents, we have considered them. Plaintiff’s Notice of Reliance, 7 TTABVUE 8-19, 24-46. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 6 - as to their current status. Trademark Rule 2.122(d)(2). In its brief, however, Defendant has treated Plaintiff’s pleaded registrations as “evidence of record” so we do too. Floralife, Inc. v. Floraline Int’l Inc., 225 USPQ 683, 684 n.6 (TTAB 1984) (“[A]pplicant has not contested opposer’s ownership of the relied upon registrations, nor questioned that they are still in force. In fact, applicant’s counsel assumes that they are properly of record as part of opposer’s case in his recitation of the record…. Accordingly, we treat the registrations’ currency and their ownership by opposer as having been stipulated.”). The Record The record includes the pleadings, and by operation of law, the files of Defendant’s involved application and registration.13 Trademark Rule 2.122(d), 37 C.F.R. § 2.122(d). As noted above, we also deem Plaintiff’s pleaded registrations as part of the record. In addition, Plaintiff introduced:14 13 Accordingly, it was unnecessary for Defendant to file a copy of its application for the stylized mark , Opposition, 13 TTABVUE 52-57, and a printout from the Office’s Trademark Status and Document Retrieval (TSDR) database for its standard character mark registration. Cancellation, 9 TTABVUE 44-46. 14 The parties submitted substantially similar evidence and briefs in both proceedings. Unless otherwise noted, we cite to the evidence and briefs in the parent opposition proceeding. We have considered the evidence attached to Plaintiff’s briefs only to the extent it was introduced during trial. Life Zone v. Middleman Grp., 87 USPQ2d at 1955 (“[W]hile exhibits to briefs are not explicitly prohibited by the Trademark Rules, the Board will usually ignore them, because they comprise either untimely evidence or unnecessary copies of timely evidence[.]”). Opposition No. 91249960 (parent) Cancellation No. 92072908 - 7 - 1. A notice of reliance on:  Defendant’s responses to Plaintiff’s interrogatories, requests for admission, and document requests in both the cancellation and opposition proceeding, including documents Defendant produced;15  Dictionary definitions for the words “knicks” and “knicker”;16  Screenshots identified as from “[Plaintiff’s] social media sites, including Facebook, Instagram, Pinterest, Twitter, and YouTube”;17  Screenshots identified as from “[Plaintiff’s] websites knix.com [and] knixteen.com”;18  Documents identified as “[p]rinted and online publications referencing [Plaintiff’s] brand and goods”;19  Documents purporting to show “[Plaintiff’s] dated usage of its marks” and “additional evidence of [Plaintiff’s] use of its marks”;20 and  A document identified as “[Plaintiff’s] letter to [Defendant] asserting rights in its marks,” dated June 19, 2019.21 15 Opposition, 7 TTABVUE 7-85; 8 TTABVUE (confidential); Cancellation, 6 TTABVUE 7-81; 7 TTABVUE (confidential). 16 7 TTABVUE 87-95. 17 7 TTABVUE 97-101. 18 7 TTABVUE 102-130. 19 7 TTABVUE 131-170. 20 7 TTABVUE 171-237. 21 7 TTABVUE 238-241. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 8 - 2. Declaration of Joanna Griffiths, Plaintiff’s founder and Chief Executive Officer, and exhibits.22 Defendant introduced:23 1. A Notice of reliance on:  Dictionary definitions for the terms “nix” and “nixie”;24  Screenshots identified as from “[Defendant’s] website: https://www.knickey.com”; 25  Screenshots identified as from “[Defendant’s] social media accounts, including Instagram, Facebook, and Twitter”;26  Spreadsheet identified as “Printed and online publications referencing [Defendant’s] brand and goods.”27  Internet printouts identified as “[w]ebsites of retailers that sell [Defendant’s] goods and online publication referencing one such retailer”;28  A document identified as “[Defendant’s] December 2017 Comprehensive Trademark Search Report for the word mark ‘KNICKEY’”;29  A document identified as “[Defendant’s] Brand Development Proposal, dated April 7, 2018”;30 and 22 9 TTABVUE. 23 We do not list documents Defendant submitted that are duplicative of the evidence Plaintiff introduced. 24 13 TTABVUE 60-63. 25 13 TTABVUE 65-68. 26 13 TTABVUE 69-127. 27 13 TTABVUE 128-131. 28 13 TTABVUE 132-154 29 13 TTABVUE 155-162. 30 13 TTABVUE 163-206. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 9 -  A document identified as “[Plaintiff’s] social media correspondence with [Defendant], dated November 16, 2020.”31 2. Declaration of Cayla O’Connell, founder and Chief Executive Officer of Defendant.32 II. Entitlement to a Statutory Cause of Action Entitlement to a statutory cause of action must be established in every inter partes case.33 See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *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 position of plaintiff may oppose an application or petition to cancel a registration when such opposition is within the zone of interests protected by the statute, 15 U.S.C. §§ 1063, 1064, and the plaintiff has a reasonable belief in damage that is proximately caused by registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020). Plaintiff’s pleaded registrations are sufficient to demonstrate Plaintiff’s entitlement to a statutory cause of action. Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1032 (TTAB 2016) (pleaded registration demonstrated entitlement to bring a statutory cause of action); Barbara’s Bakery v. 31 13 TTABVUE 207-208. 32 14 TTABVUE. 33 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting “standing” under §§ 1063 and 1064 remain applicable. See Spanishtown Enters., Inc. v. Transcend Res., Inc., 2020 USPQ2d 11388, at *2 (TTAB 2020). Opposition No. 91249960 (parent) Cancellation No. 92072908 - 10 - Landesman, 82 USPQ2d 1283, 1285 (TTAB 2007) (pleaded registration of record and opposer’s likelihood of confusion claim was plausible). III. Priority and Likelihood of Confusion Because Plaintiff’s pleaded registrations are of record, and Defendant did not counterclaim to cancel any of them, priority is not an issue in the opposition as to the marks and goods covered by the registrations. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). As for priority in the cancellation proceeding, the registrations of each party offset each other and Plaintiff must, in the first instance, establish prior rights. Brewski Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1284 (TTAB 1998); American Standard Inc. v. AQM Corp., 208 USPQ840, 841 (TTAB 1980). Plaintiff is entitled to rely on the filing dates of the applications underlying its pleaded registrations to establish priority. Christian Broadcasting Network Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1565 (TTAB 2007) (where both petitioner and respondent are owners of registrations, petitioner must prove priority of use and may rely on filing date of its application for registration to do so). All but one of Plaintiff’s registrations have filing dates that predate Defendant’s filing date of April 3, 2018: KNIXY (R/N 4726015), KNIX (R/N 4971267) and FITKNIX (R/N 4726014), filed December 11, 2012; KNIXWEAR (R/N 5489269), filed October 19, 2016; and KNIXTEEN (R/N 5468530), filed October 5, 2017. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 11 - Defendant has not established use of its involved mark before these dates.34 Accordingly, Petitioner has priority in its pleaded registered marks KNIXY, KNIX, FITKNIX, KNIXWEAR and KNIXTEEN for the goods in the identified registrations. See, e.g., Calypso Tech. Inc. v. Calypso Capital Mgmt. LP, 100 USPQ2d 1213, 1219- 20 (TTAB 2011) (petitioner’s priority established based on filing date of the underlying application which matured into its pleaded registration); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1851 (TTAB 2008) (same). We need not determine whether Plaintiff has prior common law rights in the mark KNIX for the goods in Plaintiff’s Reg. No. 598100035 nor its pleaded family of marks because we focus our Section 2(d) analysis on Plaintiff’s registered KNIXY mark. It is the pleaded mark that is the most similar to Defendant’s mark. Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611, at *6 (TTAB 2020) (confining 2(d) analysis to most similar pleaded mark); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010) (comparing applicant’s mark to most similar cited mark). Likelihood of Confusion To prevail on its Section 2(d) claim, Plaintiff must prove priority and likelihood of confusion by a preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Hydro-Dynamics Inc. v. George Putnam & Co., 811 F.2d 147, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987). 34 O’Connell Declaration, 14 TTABVUE 5, ¶ 25 (identifying March 12, 2018 as Defendant’s date of first use). 35 The application underlying this registration has a later filing date of January 31, 2019. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 12 - Our determination under Section 2(d) is based on 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) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2 Software, Inc. v. M2 Commc’ns., Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006). 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 effect of differences in the essential characteristics of the goods and differences in the marks.”). 1. Similarity or Dissimilarity of the Goods, Trade Channels and Classes of Consumers Under the second DuPont factor we consider “[t]he similarity or dissimilarity and nature of the goods” and under the third DuPont factor we consider “the similarity or dissimilarity of established, likely-to-continue trade channels.” DuPont, 177 USPQ at 567; see also In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018). We must base our comparison of the goods and trade channels on the identifications in Plaintiff’s KNIXY registration and Defendant’s involved application and registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, Opposition No. 91249960 (parent) Cancellation No. 92072908 - 13 - 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Plaintiff’s KNIXY registration covers “body shapers; headbands; lingerie; shirts; t-shirts; undergarments.” Defendant’s application and registration cover “underwear; briefs; bikinis; thong underwear; shorts; maternity underwear.” An “undergarment” is “a piece of underwear”36 and “lingerie” is “women’s underwear and night clothes of silk, nylon, lace, etc.”37 Accordingly, Plaintiff’s goods are, in part, legally identical to Defendant’s goods. It is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed in the identification of goods in a particular class. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, *6 (TTAB 2019); In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015). Turning to the third DuPont factor, there are no trade channel restrictions in Plaintiff’s registration and Defendant’s application and registration. Accordingly, and because the goods are legally identical, in part, we must presume that there is some overlap in trade channels and classes of consumers. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); In re Viterra Inc., 671 F.3d 36 https://www.collinsdictionary.com/dictionary/english/undergarment (last visited June 25, 2021) (American English definition from WEBSTER’S NEW WORLD COLLEGE DICTIONARY, 4th ed.). We take judicial notice of this definition. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006) (“As a general rule, the Board may take judicial notice of dictionary evidence.”). 37 https://www.collinsdictionary.com/dictionary/english/lingerie (last visited June 25, 2021) (American English definition from WEBSTER’S NEW WORLD COLLEGE DICTIONARY, 4th ed.). Opposition No. 91249960 (parent) Cancellation No. 92072908 - 14 - 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same). The second and third DuPont factors therefore weigh heavily in favor of finding a likelihood of confusion. 2. Similarity or Dissimilarity of the Marks Under the first DuPont factor, we consider the “similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” DuPont, 177 USPQ at 567; see also Stone Lion, 110 USPQ2d at 1160. 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 S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). We do not predicate our analysis on a dissection of the involved marks; we consider the marks in their entireties. Stone Lion, 110 USPQ2d at 1160; Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ Opposition No. 91249960 (parent) Cancellation No. 92072908 - 15 - 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). Defendant argues that the shared “kni-” prefix in the parties’ marks is “not a distinctive element on which a likelihood of confusion can properly be found” because “the common ‘derived meaning’” of the prefix is “knickers,” a term generic for underwear.38 Defendant further argues that “[t]he remaining elements of the parties’ marks are readily distinguishable” and quotes the Trademark Manual of Examining Procedure (TMEP) explaining that “‘additions or deletions to marks may be sufficient to avoid a likelihood of confusion if the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive.’”39 There is no evidence that the prefix “kni-” is an abbreviation for the word “knickers.” As discussed below, at most the prefix is suggestive of “knickers.” Accordingly, this is not a case where “matter common to the mark is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive.” Moreover, the marks are very similar in their entireties. Plaintiff’s and Defendant’s marks are structurally similar. They are two syllable marks starting with the letters “KNI” and ending with a “Y.” There is an additional letter “E” in the last syllable of Defendant’s mark KNICKEY, but “y” and “ey” sound the same. The middle letter “X” in Plaintiff’s mark and the “K” in Defendant’s mark 38 Defendant’s Brief, 16 TTABVUE 12, 15-16. 39 Id. at 16. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 16 - are somewhat visually similar, and the letter “X,” pronounced “ˈeks,”40 sounds somewhat similar to the “CK” letters in Defendant’s mark. We find that the marks are not “readily distinguishable” in appearance and sound. See Mag Instrument, Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1715 (TTAB 2010) (likelihood of confusion between MAG STAR from MAXSTAR); Alfacell v. Anticancer Inc., 71 USPQ2d 1301, 1305 (TTAB 2004) (ONCASE confusingly similar to ONCONASE); Kabushiki Kaisha Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985) (“[T]he term ‘SEYCOS’ is simply so close in appearance and pronunciation to ‘SEIKO’ as to make source confusion inevitable when the marks are used in connection with identical goods.”); In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) (applicant’s mark CAYNA (stylized) confusingly similar to CANA); Hercules v. Nat’l Starch, 223 USPQ 1244, 1246 (TTAB 1984) (NATROSOL and NATROL is similar because “the clearly dominant aspect of both marks is that the first four letters and the final two are the same”). As to connotation, Defendant admits that its mark “is derived from the word KNICKERS,”41 Fed. R. Civ. P. 36(b), and that Plaintiff “itself uses … KNIXY Knickers with Fresh Fit Technology.”42 See Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 704.06 (2021) (“Statements in a brief may serve as admissions against interest by the party that made them.”) (citing Robinson v. Hot Grabba Leaf, 40 https://www.merriam-webster.com/dictionary/x (last visited June 25, 2021) (emphasis added). We take judicial notice of the phonetic spelling of the letter “x.” 41 7 TTABVUE 26, Response to Request for Admission 23. 42 Defendant’s Brief, 16 TTABVUE 16. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 17 - LLC, 2019 USPQ2d 149089, at *8 (TTAB 2019) (statements in brief regarding term ‘grabba’ considered admissions), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019)); see also Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1458 (Fed. Cir. 1992) (“Ordinarily, for a word mark we do not look to the trade dress, which can be changed at any time…. But the trade dress may nevertheless provide evidence of whether the word mark projects a confusingly similar commercial impression.”) (internal citation omitted); see also Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984). Defendant further acknowledges: “It is not disputed that [the parties’ marks] share the common prefix KNI-, [and] both parties concede that these letters are a reference to the term ‘knickers,’ which is a generic term for both parties’ goods.”43 Although identified as “chiefly British,” the definition of “knickers” as “underwear” is in an American English dictionary, Merriam-Webster, suggesting that U.S. consumers are likely to be familiar with this meaning of the word. We agree that both parties’ marks are likely to connote “knickers” because the parties’ marks begin with the same or similar first syllable as the word “knickers” and the marks identify “underwear” and related goods.44 Accordingly, the marks share a similar commercial impression. 43 Defendant’s Brief, 16 TTABVUE 12; 7 TTABVUE 88-90 definition of “knickers” (Merriam- Webster Dictionary); 44 Defendant “introduced evidence … that the terms ‘Nix’ and ‘Nixie’ actually have a completely unrelated dictionary definition, meaning ‘a water sprite of Germanic folklore.’” Defendant’s Brief, 16 TTABVUE 17. There is nothing in the record to suggest that consumers Opposition No. 91249960 (parent) Cancellation No. 92072908 - 18 - We are not persuaded by Defendant’s argument that “the so-called ‘font’ in which [Defendant’s] stylized mark is rendered is not a font at all, but a specially-created design in which the distinctive curved elements of the ‘K’s suggest parts of the body on which [Defendant’s] goods would be worn: .”45 As an initial matter, the mark is described in Defendant’s application not as a design mark but as “the word ‘KNICKEY’ in a stylized typeface.” Further, we “must determine ‘how the average purchaser would encounter the mark under normal marketing of such goods and also … what the reaction of the average purchaser would be to this display of the mark.’” Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (quoting In re Magic Muffler Serv., 184 USPQ 125, 126 (TTAB 1974)). Defendant’s Internet materials show Defendant’s use of the design to evoke a person’s bottom as shown below: would focus on the “nix” portion of Plaintiff’s mark and recognize it as meaning “a water sprite of Germanic folklore” – a definition that is not relevant to Plaintiff’s goods. 45 Defendant’s Brief, 16 TTABVUE 18. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 19 - We are not convinced that consumers would recognize the design as part of the stylization of the letter “k” in Defendant’s mark, such that consumers would perceive Defendant’s mark as “suggest[ing] parts of the body on which [Defendant’s] goods would be worn,” particularly given that the design is turned with the point facing up when used to suggest a person’s bottom rather than turned to the left in the letter “k.” But even if consumers were to perceive Defendant’s stylized mark as resembling “parts of the body on which [Defendant’s] goods would be worn,” Plaintiff’s KNIXY mark is registered in standard characters so that Plaintiff is not limited in the manner in which it may display its KNIXY mark.46 Squirtco v. Tomy 46 Moreover, any such connotation is somewhat related to the connotation of “knickers” and underwear. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 20 - Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Sys., LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1998). Accordingly, we must assume that Plaintiff could display its mark in a stylization similar to Defendant’s stylized mark. In re Aquitaine Wine, 126 USPQ2d 1181, 1186 (TTAB 2018) (“Since Registrant’s mark is a standard character mark, we must consider that the literal elements of the mark (the words and the letters) may be presented in any font style, size or color, including the same font, size and color as the literal portions of Applicant’s mark. This is because the rights associated with a standard character mark reside in the wording per se and not in any particular font style, size, or color.”) (citing Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011)). In sum, we find that the marks KNIXY and KNICKEY, including in the stylized format , are in their entireties very similar in appearance, sound, connotation and commercial impression. Accordingly the first DuPont factor weighs in favor of finding a likelihood of confusion. 3. Strength of the Plaintiff’s Mark We next assess the strength of Plaintiff’s KNIXY mark. There is no evidence regarding the commercial strength of the mark (e.g. extent of Plaintiff’s sales or advertising, third-party marks in use) so we consider the mark’s conceptual strength based on the nature of the mark itself. In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary Opposition No. 91249960 (parent) Cancellation No. 92072908 - 21 - meaning).”). Defendant argues that “the common prefix at issue here, KNI-, is hardly ‘unique’ as [Plaintiff] claims, but is in fact conceded to be a reference to the word ‘knickers,’ a generic term for women’s underwear.”47 Plaintiff’s mark KNIXY is registered on the Principal Register without a claim of acquired distinctiveness and thus is entitled to a presumption of validity. 15 U.S.C. § 1057(b). Ultimately, the “kni-” prefix in Plaintiff’s mark may be understood as suggestive of Plaintiff’s goods, but the mark in its entirety is not weak. We find that Plaintiff’s KNIXY mark is entitled to a normal scope of protection. 4. Absence of Actual Confusion The seventh and eighth DuPont factors are “[t]he nature and extent of any actual confusion” and “[t]he length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.” DuPont, 177 USPQ at 567. Plaintiff has “continuously used its KNICKY mark for the goods in its registration “[s]ince at least as early as May 2, 2013.”48 Defendant argues that it “has made use of its mark since at least March 12, 2018 … with no evidence whatsoever of actual confusion.”49 47 Defendant’s Brief, 16 TTABVUE 15. We do not construe Defendant as arguing that Plaintiff’s KNIXY mark is generic or merely descriptive because this would be an impermissible collateral attack against Plaintiff’s registration. Trademark Rule 2.106(b)(3)(ii), 37 C.F.R. § 2.106(b)(3)(ii), and Trademark Rule 2.114(b)(3)(ii), 37 C.F.R. 2.114(b)(3)(ii); Cf. Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1884 nn.5 and 12 (TTAB 2006) (a showing of descriptiveness or genericness of part of a mark does not constitute a collateral attack on the registration); McCormick & Co. v. Hygrade Food Prods. Corp., 124 USPQ 16, 17 (TTAB 1959) (allegation that registered mark is weak does not constitute a collateral attack on validity of opposer’s registrations). 48 Griffiths Declaration, 9 TTABVUE 4, ¶ 7. 49 Defendant’s Brief, 16 TTABVUE 7; O’Connell Declaration, 14 TTABVUE 5, ¶ 25. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 22 - The parties’ marks have been in concurrent use for three years and both parties’ market goods on the Internet, but the record does not reflect the extent of the parties’ sales or advertising.50 Accordingly, we cannot ascertain whether there has been a meaningful opportunity for actual confusion to have occurred. Double Coin Holdings, 2019 USPQ2d 377409, at *9 (TTAB 2019) (“The absence of any reported instances of confusion is meaningful only if the record indicates appreciable and continuous use by [Tru] … of its mark for a significant period of time in the same markets as those served by [Double Coin] … under its mark[].”) (quoting Citigroup v. Capital City Bank Grp., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011)). Moreover, it is well-settled that proof of actual confusion is not necessary to establish a likelihood of confusion.51 See, e.g., In re Detroit Athletic Co., 128 USPQ2d at 1053; Weiss Assocs. Inc. v. HRL Assocs. Inc. 902 F.2d 1546, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990); Double Coin Holdings, 2019 USPQ2d 377409, at *8. Accordingly, the seventh and eighth DuPont factors are neutral in our analysis. 50 The record includes a spreadsheet listing media outlets and other information that it appears Defendant produced during discovery. Defendant’s Notice of Reliance, 13 TTABVUE 129-131. But Defendant’s mark does not appear in the spreadsheet and there is no testimony regarding the document so the nature of the data is unclear. 51 Defendant argues that “[c]ontrary” to evidence of actual confusion, on November 16, 2020, “personnel from [Plaintiff], identified as emily@knix.com, sent an unsolicited chat message to [Defendant] inquiring about [Defendant’s] recycling program and asking if ‘it’s something we could create here [at Plaintiff’s company].’” Defendant’s Brief, 16 TTABVUE 10 (citing the O’Connell Declaration, 14 TTABVUE 5, 169, ¶ 17 and Ex. 16). We have no direct testimony from the identified employee, but even if the employee were not confused, this does not mean that there has been no actual consumer confusion. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 23 - 5. Thirteenth DuPont Factor Defendant raises two additional arguments that we consider under the thirteenth DuPont factor. First, Defendant essentially argues that it adopted its mark in good faith because it “timely conducted a trademark search before selecting and filing [Defendant’s] word mark KNICKEY with the United States Patent and Trademark Office (“USPTO”), and that this search report did not make any mention of [Plaintiff] or [Plaintiff’s] allegedly similar marks.”52 This argument is not persuasive. While evidence of an applicant’s bad faith adoption of its mark is relevant to the determination of likelihood of confusion, the converse is not true. Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1834 (TTAB 2012). “Good faith adoption of a mark will not prevent a finding of likelihood of confusion.” Id.; see also Mag Instrument, 96 USPQ2d at 1713 (“[E]vidence on applicant’s behalf that it is seeking to register the mark in good faith does very little to obviate a finding of a likelihood of confusion because it is expected that applicants are acting in good faith.”). Second, Defendant relies on the fact that the Examining Attorney did not cite Plaintiff’s registered marks as a bar to Defendant’s mark:53 Like the Examining Attorney, [Defendant] recognizes that no confusion is likely. Significantly, the [Plaintiff’s] has failed to come forward with any fresh evidence as to the parties’ marks, the goods and services sold under those marks, or the parties’ respective channels of trade, or indeed evidence as to any other duPont factor, that the Examining Attorney did not have the means to address simply from the face of the parties’ respective filings in the USPTO. [Plaintiff’s] lengthy recitation of alleged 52 Defendant’s Brief, 16 TTABVUE 6. 53 Defendant’s Brief, 16 TTABVUE 7. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 24 - similarities as to the marks, the goods, and the channels of trade says nothing that the Examining Attorney could not have resolved – and clearly did resolve, in [Defendant’s] favor – from the parties’ applications themselves, under the precedents and presumptions set forth in the Trademark Manual of Examining Procedure[.] This argument also is without merit. Hilson Research Inc. v. Society for Human Res. Mgmt., 27 USPQ2d 1423, 1439 (TTAB 1993) (“[T]he fact that the Trademark Examining Attorney, in the ex parte examination of [Applicant’s] applications, did not cite [Opposer’s] previously registered mark[s] is irrelevant.”); see also McDonald’s Corp. v. McClain, 37 USPQ2d 1274, 1277 (TTAB 1995). It is well-settled that the Board is not bound by an Examining Attorney’s determination. Hilson Research, 27 USPQ2d at 1439. For these reasons, the thirteenth DuPont factor is neutral. 6. Balancing the DuPont Factors The goods covered by Plaintiff’s KNIXY registration and Defendant’s involved application and registration are legally identical, in part, and we must presume that there is some overlap in the parties’ trade channels and classes of consumers. The parties’ marks are also very similar in appearance, sound, connotation and commercial impression. The strength of Plaintiff’s KNIXY mark, the absence of any evidence of actual confusion, and the thirteenth DuPont factor are neutral. Accordingly, we find that Defendant’s KNICKEY mark in standard characters and in the stylized format is likely to cause confusion with Plaintiff’s KNIXY mark. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 25 - IV. Laches Defense Tried by Implied Consent Defendant argues in its brief that Plaintiff “did not oppose [Defendant’s] previously-filed word mark KNICKEY when it had the opportunity to do so” and “now belatedly asserts a likelihood of confusion.”54 To the extent this argument can be construed as asserting a laches defense, Defendant did not plead any such affirmative defense.55 Plaintiff, however, responded to Defendant’s argument so we deem the parties to have tried laches by implied consent.56 Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *6 (TTAB 2020) (“[T]he Board has found that an issue was tried by implied consent where the non-offering party raised no objection to the introduction of evidence on the issue and in its brief treated the evidence as being of record, or discussed the issue in its brief as though it were part of the pleading.”) (quoting Morgan Creek Prods., Inc. v. Foria Int’l Inc., 91 USPQ2d 1134, 1138 (TTAB 2009) (internal quotation marks omitted)); Citigroup v. Capital City Bank Grp., 94 USPQ2d at 1655-56 (Board deemed unpleaded affirmative defense to have been tried by implied consent pursuant to Fed. R. Civ. P. 15(b)), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011). 54 Defendant’s Brief, 16 TTABVUE 7-8. 55 We do not construe Defendant as having argued a prior registration (e.g. Morehouse) defense. Such a defense is unavailable where, as here, Plaintiff has petitioned to cancel the prior registration upon which Defendant relies. Saint-Gobain Abrasives Inc. v. Unova Indus. Automation Sys. Inc., 66 USPQ2d 1355, 1359 (TTAB 2003) (citing Estate of Ladislao Jose Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB 1991)). 56 Plaintiff’s Rebuttal Brief, 17 TTABVUE 9-10. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 26 - Laches arises when a party has unreasonably delayed in asserting its rights against another and the latter has suffered material prejudice as a result of the delay. Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, at *8 (TTAB 2020). “[L]aches begins to run no earlier than the date the involved mark was published for opposition (if there was actual knowledge [of trademark use]), and no later than the issue date of the registration[.]” Ava Ruha Corp. v. Mother’s Nutritional Ctr., Inc., 113 USPQ2d 1575, 1580 (TTAB 2015); see also Christian Broad. Network, 84 USPQ2d at 1572 (In “the absence of actual notice before the close of the opposition period, the date of registration is the operative date for calculating laches.”). There is no evidence that Plaintiff was aware of Defendant’s standard character mark when the underlying application was published for opposition on September 11, 2018. Accordingly, the period of delay for laches with respect to Defendant’s registered mark runs from October 22, 2019, the date the registration issued. Plaintiff filed its petition for cancellation on December 2, 2019, less than six weeks after the registration issued. With respect to Defendant’s application, Defendant’s Chief Executive Officer, Cayla O’Connell, testified that Defendant “first became aware of [Plaintiff] and its trademarks when [she] received a LinkedIn message from [Plaintiff’s] founder Joanna Griffiths on January 16, 2019.”57 Accordingly, Plaintiff was aware of Defendant’s stylized mark when the application was published for opposition on 57 O’Connell Declaration, 14 TTABVUE 3-4, ¶ 18. Opposition No. 91249960 (parent) Cancellation No. 92072908 - 27 - March 13, 2019. Plaintiff opposed the application less than four months later on July 2, 2019. Plaintiff’s “delays” of less than six weeks in the cancellation proceeding and less than four months in the opposition are minimal. Because Defendant has not shown that Plaintiff unreasonably delayed in asserting its rights, Defendant’s laches defense fails. V. Conclusion Plaintiff has proven its entitlement to a statutory cause of action as well as a claim of priority and likelihood of confusion based on its KNIXY mark. Defendant has failed to establish a defense of laches. Decision: The opposition is sustained and the petition for cancellation is granted.