Nine Dots LLC

Trademark Trial and Appeal Board

Jun 26, 2009

No. 77377797 (T.T.A.B. Jun. 26, 2009)

Mailed:
26 June 2009
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nine Dots LLC
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Serial No. 77377797
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Peter J. Vranum of Gordon, Herlands, Randolph & Cox LLP for
Nine Dots LLC.

Kristen E. Carlson, Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).

_______

Before Holtzman, Drost, and Taylor, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On January 22, 2008, applicant, Nine Dots LLC, filed
an intent-to-use application (No. 77377797) to register the
mark FOR EVERY WALK OF LIFE THERE IS ALWAYS ONE, in
standard character form, on the Principal Register for
“clothing, namely, shirts, vests, sweaters, shoes, caps,
bandanas, shorts, sweat shirts, pants, belts for clothing,
socks, swimwear, jackets, rainwear, blouses, dresses,
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 77377797
2
footwear, hosiery, scarves, hats, head bands, pajamas,
lingerie and sleepwear” in Class 25.
The examining attorney refused to register applicant’s
mark under Section 2(d) of the Trademark Act (15 U.S.C.
§ 1052(d)) on the ground that applicant’s mark is
confusingly similar to the mark in Registration No. 3156528
for the mark FOR EVERY WALK IN LIFE in standard character
form for:
Footwear accessories, namely, non-skid rubber soles to
attach to shoes; partial and full insoles, removable
rubber soles and footwear attachments with spikes for
non-slip traction, for use with shoes, boots, and ski
boots; embossed heel grips of rubber, heel cushion
inserts for primarily non-orthopedic purposes;
clothing, namely vests, pants, sweaters, shirts,
pajamas, gloves, scarves, hats, hoods, dickeys, bibs,
coveralls; outdoor apparel, namely anoraks, pullovers,
jackets, and ski wear in Class 25 (emphasis added).1

After the examining attorney made the refusal final,
this appeal and a request for reconsideration followed.
Inasmuch as this case involves a refusal under Section
2(d), we analyze the facts as they relate to the relevant
factors set out in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). We keep in
mind that “[t]he fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the

1 Issued October 17, 2006. The registration also contains goods
in Classes 1 and 3 that are not relevant to this appeal.
Ser. No. 77377797
3
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We begin by comparing applicant’s and registrant’s
goods, which are in part identical. Both applicant’s and
registrant’s identifications of goods include “clothing
namely” shirts, vests, sweaters, pants, jackets, scarves,
hats, and pajamas. In addition, applicant’s sweat shirts
are included within registrant’s goods identified broadly
as “shirts.” Since there are no restrictions in either
identification of goods, these goods are identical. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). Also, when “marks
would appear on virtually identical goods or services, the
degree of similarity necessary to support a conclusion of
likely confusion declines.” Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992). Furthermore, because the
application and registration include identical goods, we
must conclude that the purchasers and channels of trade of
applicant’s and registrant’s goods are also identical.
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.2d 1261,
62 USPQ2d 1001, 1005 (Fed. Cir. 2002) (“[A]bsent
restrictions in the application and registration, goods and
services are presumed to travel in the same channels of
Ser. No. 77377797
4
trade to the same class of purchasers”) and Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications
thereof as to trade channels and purchasers, these clothing
items could be offered and sold to the same classes of
purchasers through the same channels of trade”).
Next, we must compare “the similarity or dissimilarity
of 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, 1691 (Fed. Cir. 2005) (quoting
du Pont, 177 USPQ at 567). We begin by looking at the
individual components of the mark. In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)
(“[T]here is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests
on consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable”).
Here, the marks are FOR EVERY WALK OF LIFE THERE IS
ALWAYS ONE and FOR EVERY WALK IN LIFE. Applicant’s mark is
similar to registrant’s mark because it begins with the
same words “FOR EVERY WALK … LIFE.” It is different
Ser. No. 77377797
5
because its fourth word is the preposition “Of” as opposed
to registrant’s “In,” and it adds the clause “There is
always one.” Applicant argues (Brief at 3-4) that:
The cited mark is a clever play on the products which
may be used “for every walk in life.” Each time one
walks and dons shoes the registrant’s products will be
used. The Applicant’s mark on the other hand has a
completely different meaning and connotation which is
figurative. The phrase “walk of life” does not
pertain to the physical act of walking but rather
refers to an occupation, profession or social class.

With its Request for Reconsideration, applicant has
submitted examples of how the phrase “walk of like” has
been used in various publications. See, e.g. Wall Street
Journal dated April 19, 2006 (“Windfalls can be
disorienting for people no matter what their walk of
life”). See also Response dated August 12, 2008,
thefreedictionary.com (“walk of life – careers in
general”).
There are two problems with applicant’s argument.
First, consumers would have to notice the slight difference
between the two-letter prepositions in the fourth word in
the marks and remember it when they encounter the marks at
different times. Many consumers are unlikely to do this.
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 similar in
terms of their overall commercial impression that
confusion as to the source of the goods or services
offered under the respective marks is likely to
Ser. No. 77377797
6
result. The focus is on the recollection of the
average purchaser, who normally retains a general
rather than a specific impression of trademarks.

Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d
1844, 1848 (TTAB 2004). See also Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573,
574 (CCPA 1973).
Second, even to consumers who may remember the
difference in the prepositions, the examining attorney has
included evidence (emphasis added) to show that the
expression “Walk in Life” can also be used in a similar
manner as the expression “Walk of Life.”
He loved people regardless of their walk in life, and
people loved him.
Orlando Sentinel, February 21, 2008.

The goal was not merely to provide material goods, but
to put those being assisted on a better walk in life.
Arizona Republic, September 28, 2007.

Who is your audience?
Everyday people from all walks in life.
Indianapolis Star, April 27, 2008.

I am here for the message of love and hope for
everyone, no matter their walk in life.
Denver Post, May 26, 2008.
Everyone comes from a different walk in life and adds
his or her own personal layer to the team.
Sun-Sentinel (Fort Lauderdale, FL), February 5, 2007.

Club members come from all walks in life.
Tampa Tribune, May 11, 2008.

Libraries provide a place for the community to gather,
promoting reading and literacy, act as a resource for
small businesses and level the playing field in terms
Ser. No. 77377797
7
of providing access to the world of information via
the Internet no matter your walk in life or level of
income.
Herald Times Reporter (Manitowoc, Wisconsin), August
10, 2008.

While applicant argues that registrant’s mark is a
“clever play on the products” and it refers to “[e]ach time
one walks and dons the registrant’s shoes,” we point out
that registrant’s goods are actually footwear accessories
and registrant’s shirts, vests, pants, sweaters, pajamas,
and jackets are identical to applicant’s. Therefore, the
meaning and commercial impression of the expressions “Walk
of Life” and “Walk in Life” can be the same.
Applicant also adds the expression “There is always
one” to its mark. While the expression is a difference
between the marks, it does not result in marks that are
dissimilar. Both marks begin almost identically, “For
Every Walk __ Life.” The fact that applicant has taken
almost the entire registered mark and added “There is
Always One” to it would not change the fact that the marks
have almost identical beginnings. Many potential
purchasers are likely to believe that registrant has now
simply added an additional phrase to its mark. The
expression can be viewed as a slightly laudatory term
perhaps suggesting the broad range or appeal of the “For
Every Walk” clothing items. See, e.g., Hoover Co. v. Royal
Ser. No. 77377797
8
Appliance Manufacturing Co., 238 F.3d 1357, 57 USPQ2d 1720,
1722 (Fed. Cir. 2001) (“‘Number One in Floorcare’ is a
generally laudatory phrase”). For many purchasers, the
expression is likely to add additional information to the
initial part of the “For Every Walk __ Life” mark but not
to lead purchasers to understand that the sources of the
products are different. See Pickering & Co., Inc. v. Bose
Corp., 181 USPQ 602, 603 (TTAB 1974) (“When both slogans
are considered in their entireties, as they must be, there
is little doubt but that they are substantially similar in
sound and appearance. And, after a consideration of all
the evidence herein, we are clearly of the opinion that
applicant’s slogan ‘YOU CAN HEAR THE DIFFERENCE NOW.’ so
resembles the slogan ‘FOR THOSE WHO CAN HEAR THE
DIFFERENCE’”). See also In re Chatam International Inc.,
380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“With
respect to JOSE, the Board correctly observed that the term
simply reinforces the impression that GASPAR is an
individual’s name. Thus, in accord with considerable case
law, the JOSE term does not alter the commercial impression
of the mark.” The marks JOSE GASPAR GOLD and GASPAR’S ALE
were determined to be similar); and In re Computer Systems
Center Inc., 5 USPQ2d 1378, 1381 (TTAB 1987) (“‘CSC
Ser. No. 77377797
9
ADVANCED BUSINESS SYSTEMS’ is substantially similar to the
cited mark ‘CSC’”).
The evidence shows that for many purchasers the marks’
meanings and commercial impressions would be similar and
their pronunciations and appearances would likewise be
similar because their initial components are pronounced and
look virtually the same. The presence of the additional
expression in applicant’s mark and the different
prepositions have been considered but ultimately, when we
consider the marks in their entireties, their similarities
in sound, appearance, meaning, and commercial impression
outweigh their differences. Many purchasers are likely to
focus on the beginning of applicant’s mark, which is almost
identical to the entire registered mark. For these
purchasers, it would be the dominant part of applicant’s
mark and the only part of registrant’s mark. Palm Bay
Imports, 73 USPQ2d at 1692 (“To be sure, CLICQUOT is an
important term in the mark, but VEUVE nevertheless remains
a ‘prominent feature’ as the first word in the mark and the
first word to appear on the label. Not only is VEUVE
prominent in the commercial impression created by VCP’s
marks, it also constitutes ‘the dominant feature’ in the
commercial impression created by Palm Bay’s mark”). We add
that many of the goods in this case are identical, which
Ser. No. 77377797
10
means that marks do not need to be as close for there to be
confusion.
Ultimately, because registrant’s and applicant’s goods
overlap and the marks are similar, we conclude that
confusion is likely in this case.
Decision: The refusal to register applicant’s mark
FOR EVERY WALK OF LIFE THERE IS ALWAYS ONE under Section
2(d) of the Trademark Act is affirmed.