M & M Footwear Inc.

Trademark Trial and Appeal Board

Sep 30, 2020

88290320 (T.T.A.B. Sep. 30, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: September 30, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re M & M Footwear Inc.
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Serial No. 88290320
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Mark C. Comtois and Meghan C. Killian of Duane Morris LLP,
for M & M Footwear Inc.
Harini Ganesh, Trademark Examining Attorney, Law Office 122,
Kevin Mittler, Managing Attorney.
_____

Before Taylor, Shaw and Dunn,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
M & M Footwear Inc. (“Applicant”) seeks registration on the Principal Register of
the mark NAVATEX, in standard characters, for “Boots; Footwear; Waterproof
boots,” in International Class 25.1
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used in connection

1 Application Serial No. 88290320 was filed on February 5, 2019, under Sections 1(b) and
44(e) of the Trademark Act, 15 U.S.C. §§ 1051(b) and 1126(e), based upon Applicant’s claim
of a bona fide intent to use the mark in commerce, and on Applicant’s claim of ownership of
Canadian Registration No. TMA341824, issued June 17, 1988 and renewed.
Serial No. 88290320
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with the goods indicated above, so resembles the mark NAVTECH for “Blazers;
Jackets; Pants; Shorts; Sweaters; Swim trunks; Vests,” in International Class 25,2 on
the Principal Register as to be likely to cause confusion, to cause mistake, or to
deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the request for reconsideration and
the appeal resumed. The case is fully briefed. We affirm the refusal to register the
mark.
I. 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 issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis
Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must
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). 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

2 Registration No. 5224534 issued June 9, 2016.
Serial No. 88290320
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inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”); see also In re
i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The number and nature of similar marks for similar goods
Before reaching the degree of similarity of the marks, we address Applicant’s
evidence and argument under the sixth DuPont factor, “[t]he number and nature of
similar marks in use on similar goods,” DuPont, 177 USPQ at 567, as this may impact
the scope of protection accorded the cited registration. The Federal Circuit has held
that evidence of the extensive registration and use of similar marks by others in the
field can be powerful evidence of a mark’s weakness. Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1674 (Fed. Cir. 2015). The strength of a mark may be assessed
based on its conceptual strength arising out of the nature of the mark itself and its
commercial strength, derived from the marketplace recognition of the mark. See In
re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010).
Of course, because Registrant’s mark is registered without any claim of acquired
distinctiveness, it is presumptively valid and distinctive for the identified goods.
Trademark Act Sections 7(b) and 33(a), 15 U.S.C. §§ 1057(b) and 1115(a); In re Fiesta
Serial No. 88290320
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Palms LLC, 85 USPQ2d 1360, 1363 (TTAB 2007). Nonetheless, we may acknowledge
the weakness of a registered mark in the course of a DuPont analysis. In re Fat Boys
Water Sports LLC, 118 USPQ2d 1511, 1517-18 (TTAB 2016).
Applicant argues that registration of similar marks by others in the clothing field
is evidence of the cited mark’s weakness:
Based on the amount of registered third-party NAV-
formative marks in International Class 25 owned by
different trademark owners, the Trademark Office has
already determined that NAV-formative marks are
commonly used in the industry for the same and/or highly
similar goods. Thus, by extension, the evidence confirms
that consumers are accustomed to distinguishing between
NAV-formative marks by looking to other elements and
that the Cited Mark is entitled to a very limited scope of
protection.3
In support of its position that the cited mark is weak and entitled only to a limited
scope of protection, Applicant introduced into the record copies of a number of third-
party registrations issued to different entities for NAV-formative marks identifying
various articles of clothing. The following nineteen registrations are the most
pertinent:4
Mark Reg. No. Relevant Goods
N NAVISIMA and design 6032192 Bandanas; Belts; Hats; Hoodies;
Neckties; Socks; Suspenders; T-shirts

3 Applicant’s Br., p. 13, 7 TTABVUE 14.
4 May 16, 2019 response to office action. All marks issued on the Principal Register in typed
or standard characters unless otherwise noted. We have not considered pending applications
or cancelled registrations. Pending applications are evidence only of the fact that they have
been filed. In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009). A
cancelled registration is not evidence of any existing rights in the mark. See Action Temp.
Servs. v. Labor Force, 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989). An expired or
cancelled registration is evidence of nothing but the fact that it once issued. Sunnen Prods.
Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987).
Serial No. 88290320
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Mark Reg. No. Relevant Goods
NAVONTIE (stylized) 5833661 Beachwear; Stockings; Loungewear;
Shoulder scarves; Sleeping garments;
Ties as clothing; Women’s athletic tops;
Yoga pants
NAVOKU 5649158 A variety of clothing articles
including, jackets, pants, swimwear,
vests, boots, and footwear
NAVIS MARINE 5880821 Waterproof jackets and pants
N NAVISKIN and design
and
NAVISKIN
5535845
and
5535111
A variety of clothing articles
including jackets, pants, sweaters,
swimwear, and footwear
NAV 5542126 T-shirts; Sweatshirts; Hats
NAVANTE 5364308 A variety of clothing articles
including jackets, pants, shorts,
sweaters, bikinis, vests, and footwear
NAVIANO 5472034 Clothing, namely, veils; clothing,
namely, dresses, including wedding
dresses
NAVARRO and design

5066555 A variety of clothing articles
including, jackets, pants, and bathing
suits
NAVIO 4987830 Clothing, namely, ties and hats
NavSS and design 5009017 Shirts; Shoes; Shorts
NAVALO 4942343 Footwear
NAVS and design 4576018 Hats; Jackets; Polo shirts; T-shirts
NAVEN 4560251 A variety of clothing articles
including jackets, pants, bathing suits,
and footwear
NAVITAT
and
NAVITAT and design
4558242
and
4578294
Shirts, t-shirts, sweatshirts, hats,
jackets
NAVISTAR 4427688 Baseball caps, collared shirts, golf
shirts, hats, jackets, polo shirts, sports
shirts, sweatshirts, and tee shirts
NAVABI 4247982 Clothing, namely, shirts, blouses,
tops, pullovers, vests, dresses, skirts,
pants, shorts, jackets, coats
Serial No. 88290320
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Because Applicant did not provide evidence of any third-party use of NAV-
formative marks for the same or similar goods, we have no evidence of commercial
weakness. See Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (“Evidence of third-party
use of similar marks on similar goods is relevant to show that a mark is relatively
weak and entitled to only a narrow scope of protection.”); Tao Licensing, LLC v.
Bender Consulting Ltd., 125 USPQ2d 1043, 1059 (TTAB 2017) (“As to commercial
weakness, ‘the probative value of third-party trademarks depends entirely upon their
usage’”) (quoting Palm Bay, 73 USPQ2d at 1693). However, third-party registrations
alone may be relevant, in the manner of dictionary definitions, “to prove that some
segment of the [marks] has a normally understood and well recognized descriptive or
suggestive meaning, leading to the conclusion that that segment is relatively weak.”
Juice Generation, 115 USPQ2d at 1675 (internal quotation marks omitted). See also
Jack Wolfskin, 116 USPQ2d at 1136.
The foregoing evidence therefore impacts only the conceptual strength of NAV-
formative marks. Although no particular meaning has been offered for the prefix
NAV, the fact that the foregoing NAV-formative marks have been registered by
different entities suggests that NAV-formative marks have some conceptual
weakness in association with clothing, according Registrant’s mark a narrower scope
of protection than that to which an inherently distinctive mark is normally entitled.
See Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122
USPQ2d 1733, 1734 (Fed. Cir. 2017) (stating that likelihood of confusion fame varies
Serial No. 88290320
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along a spectrum from very strong to very weak). That said, none of the cited third-
party registrations include both NAV and TEX or TECH. In other words, Applicant’s
mark and the cited mark are more similar to each other than to any of the third-party
marks. Moreover, even weak marks are entitled to protection against confusion. See
Max Capital Grp., 93 USPQ2d at 1246; see also King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974).
This DuPont factor weighs slightly against finding a likelihood of confusion.
B. The similarity or dissimilarity of the marks in their entireties in terms
of appearance, sound, connotation and commercial impression.
We next turn to the DuPont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. DuPont, 177 USPQ at 567. “Similarity in
any one of these elements may be sufficient to find the marks confusingly similar.” In
re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola
Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the
similarity in either form, spelling or sound alone is likely to cause confusion.”)
(citation omitted). The emphasis of our analysis must be on the recollection of the
average purchaser who normally retains a general, rather than specific, impression
of trademarks.
Applicant’s mark is NAVATEX in standard characters. The cited mark is
NAVTECH, also in standard characters. The marks have a number of similarities.
With regard to sound, both of the marks are similar in pronunciation differing in only
one syllable and a slight difference in the respective endings. That is, both begin with
Serial No. 88290320
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similar NAVA- or NAV- prefixes, and end with the similar sounding words, TEX or
TECH. Although there is no correct way to pronounce a mark, the terms NAVATEX
and NAVTECH would likely be pronounced in a similar way. See In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“[T]here is no correct
pronunciation of a trademark, and consumers may pronounce a mark differently than
intended by the brand owner.”).
With regard to connotation and commercial impression, there is no evidence that
NAVATEX or NAVTECH, when viewed in their entireties, have any particular
meaning or that they are anything other than coined terms. Regarding the
constituent elements of the marks, Applicant does not argue that NAVA- and NAV-
have different meanings. Instead, Applicant argues that the suffixes distinguish the
marks:
[The] Cited Mark’s suffix “-tech” provides a connotation
distinct from that of Applicant’s Mark. “Tech” is a common
abbreviation for the word “technology” . . . As such, Cited
Registrant’s NAVTECH mark implies that Registrant’s
clothing items have a technical benefit or are comprised of
technologically advanced material or structure. . . .
In stark contrast, the suffix “-atex” or “-tex” of Applicant’s
NAVATEX Mark, as well as Applicant’s Mark as a whole,
has no discernable meaning.
Accordingly, the different connotations between
NAVTECH as clothing with advanced technology and
NAVATEX as a made up word would be perceived and
appreciated by the relevant consumers, and the overall
distinctive commercial impressions between the marks are
sufficient to avoid a likelihood of confusion.”5

5 Applicant’s Br., p. 16-17, 7 TTABVUE 17-18.
Serial No. 88290320
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We disagree that the marks have significantly different commercial impressions.
We doubt whether purchasers would perceive any significantly different meanings in
the marks based on the difference in spelling between “-TEX” and “-TECH.” Rather,
it is likely that purchasers would view both marks as suggesting the same general
idea, namely that Applicant’s “waterproof, cold weather boots and footwear”6 are
made of high performance textiles suited to different weather conditions; and that
Registrant’s clothing is made of “technologically advanced material”7 because, as
indicated on Registrant’s website, the goods are made of fabric that is “moisture
wicking” and “water repellant”.8 Because the marks NAVATEX and NAVTECH are
similar in structure and sound, and since both are coined terms with no established
overall meaning on this record, we find that they create similar connotations and
commercial impressions.
With regard to appearance, we note that both marks, being in standard
characters, are not limited to any particular font style, size, or color and, therefore,
could be used in a typeface similar to each other. See, e.g., Viterra, 101 USPQ2d at
1908 (holding that the specific font style of a mark cannot serve as the basis to
distinguish it from a mark in standard character form).
When we view the marks in their entireties, we find the marks will sound similar
to consumers calling for the goods with which they are used. See In re Viterra, 101

6 Applicant’s Br., p. 17, 7 TTABVUE 18.
7 Id. at 17, 7 TTABVUE 18.
8 Applicant Request for Reconsideration of January 7, 2020, TSDR 69.
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USPQ2d at 1911. Regarding connotation and commercial impression, the slight
variations in spelling do not impact the similar connotation suggested by all of the
marks. We therefore find the connotation and commercial impression to be similar as
well.
For the foregoing reasons, we find that the marks are similar. This DuPont factor
favors a finding of likelihood of confusion.
C. The nature and similarity or dissimilarity of the goods, the
established, likely-to-continue trade channels, and the classes of
purchasers.
We next consider the similarity of Applicant’s goods with the goods in the cited
registration. They need not be identical or even competitive to find a likelihood of
confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56
USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54
USPQ2d 1894, 1898 (Fed. Cir. 2000). The goods need only be “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) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
Applicant’s goods are “Boots; Footwear; [and] Waterproof boots”, whereas
Registrant’s goods are “Blazers; Jackets; Pants; Shorts; Sweaters; Swim trunks; [and]
Vests”. In support of the refusal to register, the Examining Attorney submitted
approximately eleven third-party registrations covering footwear and most, if not all,
Serial No. 88290320
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of the clothing items identified in the cited registration.9 Although these registrations
are not evidence that the marks shown therein are in use or that the public is familiar
with them, they nonetheless have probative value to the extent that they serve to
suggest that the identified goods are products which are produced and/or marketed
by a single source under a single mark. See In re Infinity Broad. Corp., 60 USPQ2d
1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993). The Examining Attorney also submitted Internet website evidence showing
that clothing and footwear are sold together under the same mark (Tommy Hilfiger,
L.L. Bean, Timberland, Calvin Klein, Donna Karan, Nautica (Registrant), Dockers,
Columbia, Eddie Bauer, Lands’ End, North Face, Patagonia, and Title Nine).10 These
websites either show commonly-branded clothing and footwear on the same page, or
provide descriptive links on the top of each web page to other sections of the same
website (e.g., men’s and women’s clothing and shoes) to locate the clothing and
footwear.
Based on the record before us, we find Applicant’s and Registrant’s goods are
sufficiently related. See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991)
(ESSENTIALS in stylized form for women’s shoes against ESSENTIALS for women’s
clothing, namely, pants, blouses, shorts, and jackets); In re Apparel Ventures, Inc.,
229 USPQ 225 (TTAB 1986) (SPARKS BY SASSAFRAS in stylized form for women’s
separates, namely blouses, skirts and sweaters against SPARKS in stylized form for

9 Office Action of April 17, 2019, TSDR 2-36.
10 Office Action of April 17, 2019, TSDR 37-77; Office Action of July 18, 2019, TSDR 2-80;
Denial of Request for Reconsideration of February 18, 2020, TSDR 2-11.
Serial No. 88290320
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shoes, boots and slippers); In re Pix of Am., Inc., 225 USPQ 691 (TTAB 1985)
(NEWPORTS for women’s shoes against NEWPORT for outer shirts); In re Alfred
Dunhill Ltd., 224 USPQ 501 (TTAB 1984) (DUNHILL in stylized lettering for various
items of men’s clothing including belts against DUNHILL for shoes); In re Kangaroos
U.S.A., 223 USPQ 1025 (TTAB 1984) (BOOMERANG for athletic shoes against
BOOMERANG and design for men’s shirts).
Applicant argues that the goods are different because its goods are “sturdy and
practical waterproof, cold weather boots and footwear” whereas the Registration
“does not include footwear, let alone specific types of cold weather boots. . . . Rather,
Registrant provides dressy, premium clothing items, such as blazers, vests, and
jackets.”11 This argument is unpersuasive. In making our determination regarding
the relatedness of the goods, we must look to them as identified in the application
and cited registration, which are broadly worded. See Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014)
(quoting Octocom Sys., Inc. v. Hous. Computs. Servs. 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 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.”)). In particular, Applicant’s

11 Applicant’s Br., p. 17-18, 7 TTABVUE 18-19.
Serial No. 88290320
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footwear and Registrant’s jackets, pants, sweaters and vests are broadly worded and
could include any style or be intended for use in any season.
As to the channels of trade and classes of purchasers, neither the application nor
registration contain any limitation or restriction as to trade channels or classes of
purchasers for the respective goods, and we accordingly presume that the goods are
sold in all normal trade channels for such goods and to all normal classes of
purchasers of such goods. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In
addition, the Internet website evidence provided by the Examining Attorney is
probative to show that clothing and footwear are sold in the same channels of trade
to the same class of purchasers.
We find that the DuPont factors regarding the similarity of goods, channels of
trade, and classes of purchasers favor a finding of likelihood of confusion.
D. Conclusion
Having considered all the evidence and arguments on the relevant DuPont factors,
we conclude that there is a likelihood of confusion between Applicant’s mark,
NAVATEX, for the goods identified above, and the cited mark, NAVTECH, for the
identified goods. The marks are similar in sound, connotation and commercial
impression, and the goods are related and travel in the same channels of trade to the
same classes of consumers. These findings outweigh any slight conceptual weakness
in the cited mark.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.