Perfectly Posh, LLCv.Jacqueline Abner-Pongratz

Trademark Trial and Appeal Board

Jun 4, 2020

91241488 (T.T.A.B. Jun. 4, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 4, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Perfectly Posh, LLC
v.
Jacqueline Abner-Pongratz
_____

Opposition No. 91241488
_____

H. Matthew Horlacher of Holland & Hart LLP
for Perfectly Posh, LLC
William E. O’Brien of Law Office of William E. O’Brien LLC
for Jacqueline Abner-Pongratz.
_____

Before Bergsman, Adlin and English,
Administrative Trademark Judges.

Opinion by English, Administrative Trademark Judge:
Jacqueline Abner-Pongratz (“Applicant”) seeks to register on the Principal
Register the standard character mark POSH GOTH1 and the design mark

1 Application Serial No. 87609820, filed September 15, 2017, based on a claim of an intent to
use the mark under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
Citations are to the TTABVUE docket entry and electronic page numbers where the
document or testimony appears. Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB
2014).
Opposition No. 91241488
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,2 both for “bath soaps; cosmetic preparations for body care;
cosmetics; perfumes” in International Class 3.
In its consolidated notice of opposition, Perfectly Posh, LLC (“Opposer”) alleges
that it is “a leading distributor of naturally based pampering skincare, cosmetic, and
scented products throughout the United States,” and that it sells “through its website
at www.perfectlyposh.com and through Perfectly Posh Independent Consultants[.]”3
As grounds for opposition, Opposer alleges lack of bona fide intent to use, fraud, and
priority and likelihood of confusion under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), based on:4

2 Application Serial No. 87646907, filed October 16, 2017, based on a claim of an intent to use
the mark under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
3 Consolidated Notice of Opposition, 1 TTABVUE 5-6, ¶¶ 1 and 3.
4 Opposer also alleges in its consolidated notice of opposition and argues in its brief that
Applicant did not own the involved marks when she filed her applications. Non-ownership,
however, is not available as a claim against applications, like the ones here, filed based on
intent to use. Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d
370880, *4-5 (TTAB 2019) (explaining that a non-ownership claim is not available against an
application filed under Section 1(b) of the Trademark Act because “[t]here is no statutory
requirement that the filer of an intent-to-use application be the owner of the mark at the
time of filing of the intent-to-use application.”). See also Hole In 1 Drinks, Inc. v. Latjay, 2020
USPQ2d 10020, *5 (TTAB 2020) (same). Accordingly, we have not considered the issue of
non-ownership.
In addition, Opposer argues in its brief that it owns a “family” of POSH-formative marks. 18
TTABVUE 18 and 33-36. Opposer, however, did not plead a family of marks. Nor have such
rights been tried by implied consent. Accordingly, we have not considered Opposer’s
arguments based on a family of marks. See Productos Lacteos Tocumbo S.A. de C.V. v.
Opposition No. 91241488
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• Prior use and registration of the standard character mark PERFECTLY
POSH5 and the design mark ,6 both for “personal care
products, namely, hand lotion, hand balm, hand soap, body lotion, body butter,
body balm, body soap, body mist spray, face lotion, face oils, face creams,
exfoliating masks, shampoos, hair conditioners, massage cream, massage
balm, massage oil, bath fizzies, bath beads, bath salts, non-medicated foot
cream, non-medicated foot balm, non-medicated foot lotion, non-medicated lip
balm, lip tint, perfume, perfume oils, nutritional oils for cosmetic purposes,
essential oils for personal use, essential oils for aromatherapy use, lip
exfoliators, mineral powders for use as cosmetic makeup, mineral makeup,
aromatic oils, non-medicated aromatic body mists, aromatic lotions, aromatic
bath salts, nonmedicated aromatic bombs for the skin and body for adding color
and scent to bath water, bath milks, beauty milks, cosmetic milks for the skin

Paleteria La Michoacana, Inc., 98 USPQ2d 1921, 1927 (TTAB 2011) (“Petitioner’s reference
to a family of marks in its brief will not be considered because this claim was neither pleaded
nor tried by the parties.”).
5 Registration No. 4348174; registered June 4, 2013; partial Section 8 accepted and Section
15 acknowledged.
6 Registration No. 4452650; registered December 17, 2013. The registration contains the
following description: “The mark consists of the wording ‘perfectly posh’ surrounded on each
end by a curly bracket and asterisk.” Color is not claimed as a feature of the mark. This
registration also covers goods in Class 5, namely, “scented and perfumed air and room
freshener sprays and fresheners.”
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and body” in International Class 3; and “rendering technical assistance in the
nature of advertising, marketing, and promotional services by developing
advertising campaigns for web pages and print media, for the purpose of
assisting in the establishment and operation of distributorships, person to
person, wholesale and retail selling services in the field of personal care
products” in International Class 35.

• Prior use of the design mark for the goods and services
listed above;7 and
• Prior use of the marks POSH GOTH8 and PERFECTLY POSH GOTH
through use of the domain name poshgoth.po.sh, the username
PERFECTLY POSH GOTH on YouTube, and #POSHGOTH on
Instagram, Twitter, and Facebook by Andrea Lipomi, Opposer’s
independent consultant and predecessor-in-interest.

7 Application Serial No. 87689357, filed November 17, 2017 based on a claim of first use and
first use in commerce in October 2011. The application contains the following description of
the mark: “The mark consists of the wording ‘PERFECTLY POSH’ with two asterisks, with
the wording ‘PERFECTLY’ underlined, all within a shaded circle.” Color is not claimed as a
feature of the mark.
8 In its consolidated notice of opposition, Opposer refers to its mark both as POSHGOTH,
without a space, and POSH GOTH, with a space. For consistency, we use POSH GOTH, with
a space, as Opposer primarily has done in its brief.
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In her answer, Applicant denies the salient allegations in the consolidated Notice
of Opposition and, under the heading “Affirmative Defenses,” pleads: (1) failure to
state a claim, laches, acquiescence, estoppel, waiver, unclean hands and fraud; (2)
Opposer does not have priority, Opposer’s marks “are not valid trademarks,” and
“Opposer cannot claim exclusive rights in Opposer’s marks and/or has abandoned or
lost its rights in those marks” because Opposer cannot show continuous use or that
its marks have developed significant goodwill and because Opposer has “misused its
marks”; and (3) Opposer’s marks are “entitled to only a very narrow scope of
protection” because “‘POSH’ is a weak term[.].”9 Applicant did not pursue the
affirmative defenses of laches, acquiescence, or waiver so we deem these defenses
waived. See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419,
1422-23 n.7 (TTAB 2014); Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107
USPQ2d 1750, 1752 n.6 (TTAB 2013). Failure to state a claim is not an affirmative
defense. Applicant’s allegations of “abandonment” in item 2 are impermissible
collateral attacks with respect to Opposer’s registered marks in the absence of a
counterclaim. Trademark Rule 2.106(b)(3)(ii) (attack on validity of pleaded
registration must be made by counterclaim or separate petition to cancel); see also,
e.g., Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1626
n.1 (TTAB 2007) (absent a counterclaim, Board cannot consider arguments against
the validity of a pleaded registration). Accordingly, we have considered the
allegations in item 2 only to the extent they amplify Applicant’s denials with respect

9 Answer, 4 TTABVUE 5-7.
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to Opposer’s pleaded common law marks. We treat the “affirmative defense” in item
3 as an amplification of Applicant’s denial that her marks are likely to cause
confusion with Opposer’s marks.
For the reasons explained below, we dismiss the consolidated opposition.10
I. The Record and Evidentiary Objections
The record includes the pleadings, and pursuant to Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application files.
Opposer introduced the testimony declarations of LaRane Kasteler, Opposer’s
Department Head for Compliance and Regulatory, and Andrea Lipomi, an
Independent Consultant for Opposer and Opposer’s predecessor-in-interest,11 as well

10 The case is fully-briefed, but Opposer has moved to strike Applicant’s brief on grounds that
it “contains no table of contents, index of cases, or description of the record[.]” 21 TTABVUE
6. Based on the particular facts here, Opposer’s motion is granted. Trademark Rule 2.128(b),
37 C.F.R. § 2.128(b). Accordingly, we have not considered Applicant’s brief or Opposer’s
rebuttal thereto (except for that portion pertaining to the motion to strike).
11 Declaration of LaRane Kasteler, 12 TTABVUE; Declaration of Andrea Lipomi, 13
TTABVUE.
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as a notice of reliance on:12
• Printouts from the USPTO Trademark Status and
Document Retrieval (“TSDR”) showing the current status
and title of Opposer’s pleaded registrations and pleaded
application;
• Screenshots from Applicant’s website and Twitter,
Facebook and Etsy pages; and
• Applicant’s responses to Opposer’s interrogatories and
document requests.
Applicant introduced her own declaration13 and a notice of reliance on the
following documents:14
• Screenshots from Applicant’s Facebook page;
• Email receipts from Facebook, Amazon, and Shopify to Applicant;
• Domain name registration receipt for poshpoisons.com;
• Opposer’s responses to Applicant’s interrogatories;

12 Both parties also filed under notice of reliance documents authenticated through
testimony. The better practice would have been to have attached the authenticated
documents to the appropriate declaration(s).
Neither party objected to the manner in which documents were submitted so we have not
excluded any documents that may not have been properly introduced. Morgan Creek Prods.,
Inc. v. Foria Int’l, 91 USPQ2d 1134, 1136 (TTAB 2009) (deeming materials applicant
improperly submitted under notice of reliance stipulated into the record because opposer
treated the entire notice of reliance as of record); General Elec. Co. v. Graham Magnetics Inc.,
197 USPQ 690 (TTAB 1977) (deeming parties to have stipulated to evidence improperly
submitted under notice of reliance where both parties did it and neither objected).
Some of the evidence Opposer filed under seal is not confidential. “We treat only testimony
and evidence that is truly confidential or commercially sensitive as such.” Noble House Home
Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1416 n. 21 (TTAB 2016).
Opposer’s Brief, 18 TTABVUE 26. Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g) (“The Board
may treat as not confidential that material which cannot reasonably be considered
confidential, notwithstanding a designation as such by a party.”).
13 Applicant’s Declaration, 16 TTABVUE.
14 Applicant’s Notice of Reliance, 17 TTABVUE.
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• Registration certificates and applications for third-party POSH-formative
marks;15 and
• Screenshots from websites displaying third-party POSH-formative marks
and from Instagram displaying social media handles incorporating the term
POSH.
Opposer raises three objections to Applicant’s evidence related to third-party
marks. First, Opposer argues that this evidence should be excluded because
Applicant should have produced it in response to discovery requests. Applicant has
testified that she gathered the third-party-mark evidence during trial “[o]n or about
August 14, 2019.”16 Because it is clear that the documents were collected for trial and
were not in Applicant’s possession or control when she responded to Opposer’s
discovery requests, this objection is overruled. See Rocket Trademarks Pty. Ltd. v.
Phard S.p.A., 98 USPQ2d 1066, 1071-72 (TTAB 2011) (objected-to documents were
obtained or created by applicant in anticipation of trial and were not responsive
documents that were already in its possession or control when it responded to
document requests); see also Sheetz of Del., Inc. v. Doctor’s Assoc. Inc., 108 USPQ2d
1341, 1348 (TTAB 2013) (a party need not investigate third-party use to respond to
discovery requests); Sports Auth. Mich. Inc. v. PC Auth. Inc., 63 USPQ2d 1782, 1788
(TTAB 2001) (no obligation to search for third-party uses to respond to discovery
requests). In addition, Opposer was not put at a disadvantage by Applicant’s third-

15 Many of the registration certificates are duplicates, which complicated our review of the
record.
16 Opposer’s Notice of Reliance, 8 TTABVUE 34 and 79, ¶¶ 25 and 27.
Opposition No. 91241488
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party use and registration evidence because it is common practice to introduce such
evidence to demonstrate the lack of conceptual or inherent strength of a plaintiff’s
mark, the third-party use and registration evidence was equally accessible to
Opposer, and Opposer had thirty days between the close of Applicant’s testimony
period and the opening of Opposer’s rebuttal testimony period to prepare and
introduce any rebuttal against the evidence of third-party use and registration. See
Sheetz of Del., 108 USPQ2d at 1348.
Second, Opposer objects that “Applicant has not provided the current status of the
cited registrations and applications via a TSDR report as required by TBMP Section
704.03(b)(1)(B).”17 The plain copies of the third-party registration certificates and
applications that Applicant submitted are sufficient to make these third-party
registrations and applications of record. See Weider Pubs., LLC v. D&D Beauty Care
Co., 109 USPQ2d 1347, 1350 (TTAB 2014) (plain copies of third-party applications
admissible as official records under Trademark Rule 2.122(e)); Rocket Trademarks
Pty. Ltd., 98 USPQ2d at 1070 n.11 (“A party that wishes to make such a third-party
registration of record in a Board inter partes proceeding may do so by filing, during
its testimony period, a plain copy of the registration, a printout or a copy of
information of the registration from the Office’s electronic database records ….”);
Merritt Foods Co. v. American Submarine, 209 USPQ 591, 593 n.16 (TTAB 1980)
(comparing the procedure for introducing third-party registrations with the
requirements for introducing one’s own registrations and explaining the reasons for

17 Opposer’s Brief, 18 TTABVUE 51.
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the different treatment). In any event, Applicant testified as to the current status of
the registrations and applications.18 Accordingly, this objection is overruled.
Third, Opposer objects to the relevance of some of Applicant’s third-party
evidence.19 This objection concerns the weight rather than the admissibility of the
evidence and, therefore, this objection is overruled. We have considered this evidence
for whatever probative value it may have.
In addition to the foregoing, Opposer objects to Applicant’s testimony to the extent
Applicant speculates as to the knowledge and intent of others. These objections are
sustained. We have not considered Applicant’s speculative testimony.
II. Standing
Opposer must prove its standing by showing a “real interest” in the outcome of the
proceeding and a “reasonable” basis for believing that it will suffer damage if
Applicant’s marks are registered. Trademark Act Section 13, 15 U.S.C. § 1063;
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
1062 (Fed. Cir. 2014). A “real interest” is a “direct and personal stake” in the outcome
of the proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed.
Cir. 1999).
Opposer has properly introduced its pleaded registrations showing that the
registrations are subsisting and owned by Opposer.20 Coach Servs. v. Triumph

18 Applicant’s Declaration, 16 TTABVUE 79-96, ¶ 27.
19 Opposer’s Brief, 18 TTABVUE 51-52.
20 Opposer’s Notice of Reliance, 8 TTABVUE 11-18 and 23-30.
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Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012);
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000). Because these registrations form the basis of a plausible Section 2(d) claim,
Opposer has established its standing. See Lipton Indus. Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
III. Section 2(d) Claim
A. Opposer’s Pleaded Common Law Marks
We address first whether Opposer has proven prior use of its pleaded unregistered
marks POSH GOTH and PERFECTLY POSH GOTH because these marks are closer
to Applicant’s marks than Opposer’s pleaded registered marks. Opposer must prove
by a preponderance of the evidence that it acquired common law rights before any
date on which Applicant may rely. Embarcadero Techs., Inc. v. RStudio, Inc., 105
USPQ2d 1825, 1834 (TTAB 2013); see also Hydro-Dynamics, Inc. v. George Putnam
& Co., Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987). In considering the
evidence of common law priority, “we look at the evidence as a whole, as if each piece
of evidence were part of a puzzle which when fitted together, establishes prior use.”
See West Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663
(Fed. Cir. 1994).
For priority purposes, Applicant is entitled to rely on the filing dates of her
involved applications, i.e. September 15, 2017 and October 16, 2017, as her
constructive dates of first use. See Zirco Corp. v. Am. Tel. and Tel. Co., 21 USPQ2d
1542, 1544 (TTAB 1991) (“[T]here can be no doubt but that the right to rely upon the
Opposition No. 91241488
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constructive use date comes into existence with the filing of the intent-to-use
application and that an intent-to-use applicant can rely upon this date in an
opposition brought by a third party asserting common law rights.”). The record shows
that on May 30, 2018, Ms. Lipomi assigned to Opposer her common law rights in the
POSH GOTH and PERFECTLY POSH GOTH marks “used as a WebID (e.g., an
Internet domain name, URL, subdomain name, email address, or social media
handle, address, or name).”21 Accordingly, we must consider Ms. Lipomi’s use of
POSH GOTH and PERFECTLY POSH GOTH to determine whether Opposer has
priority in these marks. See Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783, 1790
n.9 (TTAB 2006) (“[T]he law is well established that an assignee stands in the shoes
of its assignor.”).
Ms. Lipomi testified that she uses the “PERFECTLY POSH, PERFECTLY POSH
GOTH, and POSH GOTH Marks on several point-of-sale materials, including but not
limited to business cards and shipping labels,” but she has not testified about when
she started using the business cards and shipping labels and there is no other
evidence as to when she commenced such use.22 Accordingly, there is no basis for
finding that these uses predate Applicant’s constructive first use dates.

21 The assignment is under seal at 15 TTABVUE. It is unclear why the document is
confidential. It does not contain any financial or other information that would appear to be
commercially sensitive. The language we have quoted cannot reasonably be considered
confidential because Opposer’s priority claim is based, in part, on allegations and public
evidence that Ms. Lipomi used the alleged marks as part of a domain name, subdomain name,
and social media handle. Trademark Rule 2.116(g).
22 Ms. Lipomi also testified that since September 2015 she has “used the poshgoth.po.sh
website and the PERFECTLY POSH GOTH and POSH GOTH Marks continuously in
association with my business as an Independent Consultant for Perfectly Posh.” Lipomi
Declaration, 13 TTABVUE 2-3, ¶¶ 2 and 4; see also Kasteler Declaration, 12 TTABVUE 9,
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Ms. Lipomi also testified to spending “countless hours per year in promotional
efforts, including hosting private events, attending conferences, recruiting new
Independent Consultants, and promoting PERFECTLY POSH products on social
media under the PERFECTLY POSH GOTH and POSH GOTH Marks.”23
Promotional use (i.e. “non-technical” use) of a mark is sufficient to support priority
where “the use of the mark has created in the minds of the relevant public an
association between the goods or services and their source.” Central Garden & Pet
Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1142-43 (TTAB 2013). Importantly:
purchaser perception must involve more than an insubstantial number of
potential customers. … In other words, advertising of sufficient clarity
and repetition to create the required identification must have reached a
substantial portion of the public that might be expected to purchase the
[goods or] service[s]. Thus, the user must prove that the ‘necessary
association’ was created among more than an insubstantial number of
potential customers. Otherwise, he cannot show ‘significant impact on the
purchasing public.’

T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1882-83 (Fed. Cir.
1996) (“An unbroken line of precedents of both this court and the Board make clear
that activities claimed to constitute analogous use must have substantial impact on
the purchasing public.”); see also Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (for purposes of analogous use, the
activities claimed to create an association in the minds of the purchasing public

¶ 25. The record does not include screenshots of the poshgoth.po.sh website. The one use of
poshgoth.po.sh on a website (at perfectlyposh.artisancraftfestival.com, as opposed to a social
media account) is dated January 8, 2019, which is after Applicant’s constructive dates of first
use. Opposer’s Notice of Reliance, 8 TTABVUE 204.
23 This information was improperly filed under seal. Promotional efforts by their nature are
public. Trademark Rule 2.116(g).
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between the mark and goods “must reasonably be expected to have a substantial
impact on the purchasing public[.]”).
Opposer did not submit any testimony regarding the size of the market for
“naturally-based skincare, cosmetic and scented products,”24 and the only evidence of
consumer exposure to Ms. Lipomi’s promotions are the number of “views” and “likes”
on the social media screenshots. Absent evidence of market size, and given that
Opposer’s products are general consumer products, we cannot conclude that more
than a negligible portion of the general consuming public of naturally-based skincare,
cosmetic, and scented products were exposed to Ms. Lipomi’s promotions before
Applicant’s constructive dates of first use.25 T.A.B. Sys., 37 USPQ2d at 1883.
We are not persuaded by Opposer’s argument that Applicant has testified to Ms.
Lipomi’s prior trademark use and “cannot now argue that Opposer’s use of the POSH
GOTH Marks is non-trademark use after she complained of infringement by the very
same use in 2017 to Ms. Lipomi, YouTube, and Perfectly Posh.”26 Applicant has
acknowledged Ms. Lipomi’s promotional use, but not that a substantial segment of
the relative purchasing public was exposed to Ms. Lipomi’s use as necessary to give
rise to protectable rights based on analogous use.

24 Kasteler Declaration, 12 TTABVUE 2-3, ¶¶ 2-5; Lipomi Declaration, 13 TTABVUE 3, ¶¶ 2-
4 (testifying to Opposer’s products as “naturally-based”).
25 Advertising expenditures can “support an inference of public identification” but Ms.
Lipomi’s advertising expenditures (filed under seal) are de minimis and do not support such
an inference.
26 Opposer’s Brief, 18 TTABVUE 27.
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In sum, Opposer has not demonstrated prior proprietary rights in the marks
POSH GOTH or PERFECTLY POSH GOTH. Accordingly, Opposer’s Section 2(d)
claim based on the POSH GOTH and PERFECTLY POSH GOTH marks must fail,
subject to Applicant establishing constructive use through registration of her marks.
15 U.S.C. § 1068; Trademark Rule 2.129(d), 37 C.F.R. § 2.129(d).
B. Opposer’s Pleaded Registered Marks
Opposer has made its pleaded registrations of record, which Applicant has not
counterclaimed to cancel, so priority is not an issue with respect to the marks
PERFECTLY POSH and for the goods and services identified in the
pleaded registrations. See Top Tobacco LP v. N. Atl. Op. Co., 101 USPQ2d 1163, 1169
(TTAB 2011) (citing King Candy, Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
82 USPQ 108 (CCPA 1974)); see also Massey Junior Coll., Inc. v. Fashion Inst. of
Tech., 492 F.2d 1399, 181 USPQ 272, 275 n.6 (CCPA 1974) (“prior use need not be
shown by a plaintiff relying on a registered mark unless the defendant counterclaims
for cancellation.”); Itel Corp. v. Ainslie, 8 USPQ2d 1168, 1169 (TTAB 1988) (“because
of the existence of opposer’s valid and subsisting registration, it need not prove prior
use as to the services recited therein”).
Turning to likelihood of confusion, we focus our analysis on whether there is a
likelihood of confusion between Applicant’s marks and Opposer’s standard character
mark PERFECTLY POSH because if there is no likelihood of confusion between these
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marks then Applicant’s marks are not likely to be confused with Opposer’s design
mark, which includes additional points of difference. See Max Capital Grp. Ltd., 93
USPQ2d 1243, 1245 (TTAB 2010) (confining 2(d) analysis to one of two cited marks).
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) (“Du Pont”); see
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). We consider each Du Pont 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); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232,
1242 (TTAB 2015) (“While we have considered each factor for which we have
evidence, we focus our analysis on those factors we find to be relevant.”).
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.”). We
discuss these factors, and the other relevant Du Pont factors below.
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1. Similarity or Dissimilarity of the Goods
We must base our comparison of the goods on the identifications in Applicant’s
applications and Opposer’s registration. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 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). It is sufficient for a finding of likelihood of confusion if relatedness is
established for any item encompassed in the identification of goods or services in a
particular class. Tuxedo Monopoly, Inc. v. General 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).
Both Applicant’s applications and Opposer’s registration cover “perfumes.” The
term “cosmetics” in Applicant’s applications also is broad enough to encompass “lip
tint,” “nutritional oils for cosmetic purposes,” “mineral powders for use as cosmetic
makeup,” and “mineral makeup” in Opposer’s registrations. See In re Hughes
Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly
worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly
identified ‘residential and commercial furniture.’”). Accordingly, the goods are in part
legally identical, which weighs heavily in support of a likelihood of confusion.
2. Similarity or Dissimilarity of the Trade Channels and Classes of
Consumers

Because the goods are in part legally identical and there are no restrictions or
limitations in the applications or registrations, we must presume that the channels
Opposition No. 91241488
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of trade and classes of purchasers for the parties’ goods are the same. See Cai v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); In re
Viterra Inc., 671 F.3d 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). These factors also weigh heavily in favor of likelihood of
confusion.
3. Sophistication of the Purchasers
Opposer argues that the parties’ goods “are relatively low-priced and thus subject
to impulse purchasing” increasing the risk of confusion.27 There are no price
restrictions in the parties’ identifications of goods and the evidence shows that both
parties market their cosmetic and personal care products at price points under $25.
Because the goods are relatively inexpensive and frequently replaceable, they may be
subject to impulse purchase. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1441 (TTAB
2012); Kimberly-Clark Corp. v. H. Douglas Enters., Ltd., 774 F.2d 1144, 227 USPQ
541, 542 (Fed. Cir. 1985) (purchasers of “relatively inexpensive and frequently
replaceable … products have long been held to a lesser standard of purchasing care”).
Accordingly, this factor too supports a finding of likely confusion.

27 Opposer’s Brief, 18 TTABVUE 39.
Opposition No. 91241488
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4. Strength of Opposer’s Registered Mark
The strength of Opposer’s mark affects the scope of protection to which it is
entitled. Accordingly, before comparing the marks, we assess the strength of
Opposer’s mark considering both its conceptual strength based on the nature of the
mark itself and its commercial strength based on consumer recognition of the mark.
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 meaning).”).
With respect to conceptual strength, “third-party registrations can be used in the
manner of a dictionary definition to illustrate how a term is perceived in the trade,
industry, or ordinary parlance.” RxD Media, LLC v. Application Dev. LLC, 125
USPQ2d 1801, 1812 (TTAB 2018) (citing Juice Generation, Inc. v. GS Enters. LLC,
794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015)). The following use-based
registrations issued to different third-parties for the same or highly related goods and
services:28

28 Applicant’s Notice of Reliance, 17 TTABVUE 78-83, 85, 90-91, 97-98, 101, 114-115, 118-
119, 134-135, 141-142, 158-159, 162-163, 180-183, 188-189, 220-221, 287-288, 307-308, 315-
316, 340-341, 372-373, 389-390, 406-407, 444-445, 535-536, 586-587, 692-693, 786-787, and
798-799.
Opposition No. 91241488
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Reg. No. Mark Pertinent Goods/Services
5299065

POSH COLLECTION
(COLLECTION disclaimed)
Cosmetics; cosmetics and
make-up; private label
cosmetics
5480074

POSH PLUSH COSMETICS
(COSMETICS disclaimed)
Lipstick; makeup
5402394

PURE, POSH & PLAYFUL Cosmetics, cosmetic
preparations; toiletry bags
sold filled with cosmetics;
online retail store services
featuring cosmetics and
beauty products
5681221
5681213
5718112
5397814

POSH & POP
(POSH disclaimed in first 3
registrations)
Applicator sticks for
applying make-up; cosmetic
brushes; foam toe
separators for use in
pedicures; sponges for
applying makeup;
Online retail store services
featuring manicure and
pedicure sets and
accessories, namely, emery
boards, pumice stones, nail
files,
and nail clippers and toe
separators; Cosmetic bags;
cosmetic bags sold empty;
Sleep masks
3565899

POSH Manicure and pedicure
implements, namely, nail
clippers, nail files, nail
cleaners and nail buffers.
4904290

POSH Clear acrylic drawer
organizer for cosmetics,
hair styling tools, and
beauty care products
5064588 POSH PETS (PETS disclaimed) Shampoo-conditioners;
shampoos
5715365 POSH HAIR DISTRICT Hair conditioner; hair
products, namely,
thickening control creams;
shampoos
Opposition No. 91241488
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Reg. No. Mark Pertinent Goods/Services
5299065

POSH COLLECTION
(COLLECTION disclaimed)
Cosmetics; cosmetics and
make-up; private label
cosmetics
5480074

POSH PLUSH COSMETICS
(COSMETICS disclaimed)
Lipstick; makeup
5402394

PURE, POSH & PLAYFUL Cosmetics, cosmetic
preparations; toiletry bags
sold filled with cosmetics;
online retail store services
featuring cosmetics and
beauty products
4768619 POSH BOUTIQUE (Stylized)
(BOUTIQUE disclaimed)
Retail store services
featuring fragrances, lip
gloss
5029491

PISH POSH PATCHOULI’S
(Section 2(f) as to
PATCHOULI’S)
Retail store services and
online retail store services
featuring bath and body
care products, cosmetics,
home scent products,
fragrances; custom
blending of scents for bath
and body care products
4312778

THE POSH KITTEN On-line retail store services
and retail store services
featuring fashion and
beauty products, namely,
soaps, scent sprays, bath
salts, lotions, lip balm, lip
moisturizers, lip scrubs,
makeup cases and bags
4874604

YOUNG N POSH & Design
(YOUNG Disclaimed)
Retail store and on-line
retail store services
featuring merchandise
geared towards girls and
boys, namely, perfume and
lotions
4532565 POSH & Design Medical spa services,
namely, minimally invasive
cosmetic and body fitness
therapies
4406823 POSH & CLEVER CONCEPT
BOUTIQUE
Cosmetology services
Opposition No. 91241488
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Reg. No. Mark Pertinent Goods/Services
5299065

POSH COLLECTION
(COLLECTION disclaimed)
Cosmetics; cosmetics and
make-up; private label
cosmetics
5480074

POSH PLUSH COSMETICS
(COSMETICS disclaimed)
Lipstick; makeup
5402394

PURE, POSH & PLAYFUL Cosmetics, cosmetic
preparations; toiletry bags
sold filled with cosmetics;
online retail store services
featuring cosmetics and
beauty products
5345191 POSH YOURSELF Beauty consultation
services in the selection and
use of cosmetics,
fragrances, beauty aids,
personal care products, and
bath, body and beauty
products
4880387

POSH BLOWDRY BAR
(BLOWDRY BAR disclaimed)
Beauty salon services;
beauty salons
5030601 POSH AND SPARKLE
(SPARKLE disclaimed)

Blow-outs
5610936

POSHMANIPEDI Eyelash extension services;
manicure services; nail care
salons and services
4318590

SIMPLY POSH AESTHETIC
(ASTHETIC disclaimed)
Health spa services, namely
body wraps, mud
treatments, seaweed
treatments, hydrotherapy
baths, and body scrubs;
health spa services,
namely, laser treatments
for facials; medical spa
services, namely, minimally
and non-invasive cosmetic
and body fitness therapies
4957096

POSH STILETTO On-line journals, namely
blogs featuring beauty,
fashion and lifestyle
4217801 POSH NAILS (Stylized) (NAILS
disclaimed)
Nail care salons
Opposition No. 91241488
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Reg. No. Mark Pertinent Goods/Services
5299065

POSH COLLECTION
(COLLECTION disclaimed)
Cosmetics; cosmetics and
make-up; private label
cosmetics
5480074

POSH PLUSH COSMETICS
(COSMETICS disclaimed)
Lipstick; makeup
5402394

PURE, POSH & PLAYFUL Cosmetics, cosmetic
preparations; toiletry bags
sold filled with cosmetics;
online retail store services
featuring cosmetics and
beauty products
4091541

POSH BEAUTY & Design
(BEAUTY disclaimed)
Computer services, namely,
creating an on-line
community for registered
users to participate in
discussions, getting
feedback from their peers,
form virtual communities,
and engage in social
networking featuring
beauty services.

The ubiquity of registrations for marks incorporating the term “POSH” for goods
and services identical and closely related to those covered by Opposer’s registration
is “powerful” evidence that the “POSH” portion of Opposer’s mark has a well-
recognized descriptive or highly suggestive meaning in the personal care, cosmetic,
and beauty field. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co KGAA v. New
Millennium Sports, 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015) (“[E]xtensive
evidence of third-party use and registrations is ‘powerful on its face,’ even where the
specific extent and impact of the usage has not been established.”) quoting Juice
Generation, 115 USPQ2d at 1674. Accordingly, the “POSH” segment of Opposer’s
mark is extremely weak.
Opposition No. 91241488
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We next turn to Applicant’s evidence of third-party use. Proof of third-party use
of similar marks for similar goods bears on the commercial strength of a mark. See
Juice Generation, 115 USPQ2d at 1674. Applicant testified that “[o]n or around
August 14, 2019” she “completed a Google search of the term “POSH” and located
approximately 25 different users of the term in connection with cosmetics and
perfume products, none of which appear to be belong to the Opposer.”29 Applicant
included in her declaration and submitted with her notice of reliance screenshots
from her search results.30 Many of the screenshots consist solely of product images
like the examples here:

29 Applicant’s Declaration, 16 TTABVUE 45, ¶ 26.
30 Id. at 45-78; Applicant’s Notice of Reliance, 17 TTABVUE 883-914.
Opposition No. 91241488
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Opposition No. 91241488
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Others screenshots are of websites or products with pricing information as shown
below:
Opposition No. 91241488
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Opposition No. 91241488
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Opposition No. 91241488
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Opposition No. 91241488
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Applicant further testified that “[o]n or about August 14, 2019” she “completed a
search of the Instagram website and located approximately 76 different uses of the
term “POSH” used in connection with, or related to cosmetics.”31 Included in her
declaration are screenshots of her Instagram search results showing a number of
third-party Instagram handles incorporating the word “posh” combined with the word
“cosmetic(s),” or “beauty,” or other generic personal-care-related terms.32 One of the
screenshots is reproduced here:

31 Applicant’s Declaration, 16 TTABVUE 34, ¶ 25.
32 Id. at 35-44.
Opposition No. 91241488
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The screenshots of third-party cosmetic websites and products for sale are the
strongest evidence of record that consumers have been exposed to POSH-formative
marks in the marketplace. We give less weight to the screenshots showing only
product images because there is no evidence that these products are or have been
offered for sale. Similarly, Applicant’s Instagram screenshots are limited in probative
value because they do not show the content of the social media accounts associated
with the handles.33 Cf. In re Int’l Bus. Machines Corp., 81 USPQ2d 1677, 1679 n.3
(TTAB 2006) (listings of search results from Google database of limited probative
value because the excerpts are extremely truncated). Still, this evidence on its face
shows that consumers may have been exposed to these product images and social
media handles. Cf. Rocket Trademarks Pty Ltd., 98 USPQ2d at 1072 (internet
printouts “on their face, show that the public may have been exposed to those internet
websites and therefore may be aware of the advertisements contained therein”).
Even though some of the third-party evidence has limitations, and the record does
not show the extent and impact of the third-party uses, we find that the evidence,
taken as a whole, is “powerful on its face,” Jack Wolfskin, 116 USPQ2d at 1136; Juice
Generation, 115 USPQ2d at 1674, and supports that consumers in the marketplace
have become conditioned to encountering and distinguishing between POSH-
formative marks in the cosmetic, personal care, and beauty field based on minute
differences between the marks. See also Anthony’s Pizza & Pasta Int’l Inc. v.

33 In addition, at least a few of the handles appear to be for accounts directed to consumers
outside the United States.
Opposition No. 91241488
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Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009), aff’d, 415 Fed.
Appx. 222 (Fed. Cir. 2010)
Opposer urges us to find that its mark is commercially strong based on its volume
of sales and advertising expenditures, both of which are significant,34 the popularity
of its social media accounts, and its charitable activities.35 This evidence suggests
that Opposer has developed some level of brand recognition. See Bose Corp. v. QSC
Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (recognizing
that strength of a mark may be measured by sales and advertising figures); Weider
Publ’ns, LLC, 109 USPQ2d at 1354 (same). Nevertheless, any recognition does not
overcome either Opposer’s place as just “one of many” sellers of POSH cosmetics, or
the conceptual or inherent weakness of “Posh” when used in connection with
cosmetics as shown by the evidence of third-party use and registration.
Opposer also argues that it “maintains a policing and enforcement program to
protect its rights”36 pointing to its successful opposition against an application for the
mark ELEGANTLY POSH, a cancellation action currently pending against a
registration for POSH COLLECTION, and a request for extension of time to oppose
that it has obtained with respect to an application for the mark LELE POSH

34 Filed under seal at 15 TTABVUE.
35 Opposer’s Brief, 18 TTABVUE 19. Ms. Kasteler has testified that Opposer has nearly
180,000 Facebook followers, approximately 77,500 Instagram followers, 12,600 Twitter
followers, and more than 7500 YouTube subscribers. Kasteler Declaration, 12 TTABVUE 4-
5 ¶ 11.
36 Opposer’s Brief, 18 TTABVUE 18.
Opposition No. 91241488
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COSMETICS.37 Enforcement efforts are pertinent to the strength of a mark. Burns
Philp Food Inc. v. Modern Prods. Inc., 24 USPQ2d 1157, 1158 n.2 (TTAB 1992)
(policing efforts go to the strength of the mark); Po Folks, Inc. v. Kourtney Folks Rest.,
Inc., 231 USPQ 313, 315 (TTAB 1986) (same); 2 J. Thomas McCarthy, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION §11.91 (5th ed. 2020) (an “active program of
prosecution of infringers ... enhances the distinctiveness and strength of a mark”).
But Opposer’s activities fall far short of a rigorous enforcement program that would
give rise to strong rights.38 Indeed, despite Opposer’s enforcement activities, a
number of third-party POSH-formative marks are in use and have been registered
for relevant goods and services.
Despite the brand recognition strength developed by Opposer for its PERFECTLY
POSH mark, we find that the “POSH” portion of Opposer’s mark is so conceptually or
inherently weak and diluted by third party use that it will not act as a bar to the
registration of every mark that includes the word “Posh.” “[I]t will only bar the
registration of marks ‘as to which the resemblance to [PERFECTLY POSH] is
striking enough to cause one seeing it to assume that there is some connection,
association or sponsorship between the two.’” Anthony’s Pizza, 95 USPQ2d at 1278
(quoting Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983)).

37 Id. at 18 and 30. Opposer improperly filed this information under seal; it is publicly
available through TTABVUE.
38 Opposer argues that it “is not required to police and enforce against uses of its
PERFECTLY POSH Marks that are relatively insignificant or present a low risk of
weakening its trademark rights.” Id. at 31-32. That is true, but the number of third-party
uses and registrations of record significantly affects the strength of Opposer’s PERFECTLY
POSH marks.
Opposition No. 91241488
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5. Similarity or Dissimilarity Between the Marks
We next consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. Stone Lion, 110
USPQ2d at 1160 (Fed. Cir. 2014); DuPont, 177 USPQ at 567. 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., 101 USPQ2d at 1721. 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 at
1438; Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because
the goods at issue are cosmetics that may be purchased on impulse, the average
purchaser is an ordinary consumer.
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 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.”). It is not improper,
however, to give more weight to a dominant feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. Stone Lion, 110
Opposition No. 91241488
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USPQ2d at 1161 (citing In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985)); In re Chatam Int’l, Inc., 71 USPQ2d at 1946.
Both Applicant’s marks and Opposer’s mark share the term “posh” but, as we have
discussed, “posh” is a weak term for Applicant’s and Opposer’s goods that carries little
trademark significance. Accordingly, even relatively minor differences between the
marks may be sufficient to avoid finding that the marks are similar. See Am. Lebanese
Syrian Associated Charites, Inc. v. Child Health Research Inst., 101 USPQ2d 1022,
1031 (TTAB 2011) (where the common element in the marks is highly suggestive, the
additional matter in the marks may serve to distinguish the marks). The inclusion of
the word “perfectly” as the first word in Opposer’s mark creates a four-syllable mark
with an alliteration. In contrast, Applicant’s marks are comprised of two, four letter
one-syllable words, POSH GOTH, that are somewhat visually similar sharing a
middle letter “o” and ending with an “h.” As a result, there are significant visual and
aural differences between the parties’ marks. The design element in Applicant’s
design mark creates an additional point of distinction in appearance.
The meaning and commercial impression of the marks also is different. The term
“perfectly” in Opposer’s mark modifies the word “posh” conveying the aspirational
message that using Opposer’s goods will make the consumer flawlessly elegant and
fashionable. Applicant’s mark is a paradox with a completely different meaning and
commercial impression. The term “posh,” conveying elegance, contrasts with the
meanings of the word “goth”: “rock music marked by dark and morbid lyrics” and “a
person who wears mostly black clothing, uses dark dramatic makeup, and often has
Opposition No. 91241488
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dyed black hair.”39 The macabre design element in Applicant’s design mark reinforces
the importance of the term “goth” in Applicant’s marks.
The differences between the marks weigh heavily against a finding that the marks
are likely to be confused.
6. Absence of Actual Confusion
There is no evidence regarding the extent of Applicant’s use of the POSH GOTH
mark so we cannot assess whether there has been a meaningful opportunity for actual
confusion to have occurred in the marketplace. See Double Coin Holdings Ltd. v, 2019
USPQ2d 377409 at *9 (citing Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d
1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The absence of any showing of actual
confusion is of very little, if any, probative value” where evidence of as to the use of
Applicant's merchandise during the time in question was not presented)); Barbara’s
Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value
of the absence of actual confusion depends on there being a significant opportunity
for actual confusion to have occurred). This factor is neutral.

39 Merriam-Webster online dictionary, last visited June 4, 2020 (https://www.merriam-
webster.com/dictionary/Goth). The Board may take judicial notice of definitions from
dictionaries, including online dictionaries that exist in printed format. See e.g., In re S.
Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018).

Opposition No. 91241488
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7. Any Other Established Fact Probative of the Effect of Use
Opposer argues that Applicant filed the involved applications in bad faith because
“Applicant had direct knowledge of Opposer and Opposer’s Marks, and their priority
and believed that they conflicted with her own mark, at the time she submitted her
Applications for POSH GOTH to the USPTO.”40 Bad faith adoption of a mark is
strong evidence that confusion is likely. L.C. Licensing Inc. v. Berman, 86 USPQ2d
1883, 1891 (TTAB 2008). Applicant first used the POSH GOTH mark in connection
with the retail sale of clothing in January 2015. In May 2015, she started promoting
perfume on Facebook under the POSH GOTH user name.41 There is no evidence that
Applicant was even aware of Opposer’s PERFECTLY POSH marks in 2015.
Moreover, Applicant filed the applications days after she learned about and objected
to Ms. Lipomi’s social media use of the #poshgoth hashtag, the poshgoth.po.sh domain
name and the PERFECTLY POSH GOTH YouTube Channel.42 Accordingly, it is
reasonable to infer that Applicant filed the applications to protect her rights in the
POSH GOTH marks, not to ride on the coattails of Opposer’s PERFECTLY POSH
marks. There simply is no basis for finding that Applicant acted in bad faith.
8. Conclusion
The parties’ goods are in part identical, but Opposer’s mark is both conceptually
and commercially very weak and there are significant differences between the marks

40 Opposer’s Brief, 18 TTABVUE 39.
41 Applicant’s Declaration, 16 TTABVUE 4, ¶¶ 4-6.
42 Id. at 14 and 16-24, ¶¶ 8 and 10-16.
Opposition No. 91241488
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in overall appearance, sound, connotation and commercial impression. Accordingly,
we find that Applicant’s marks are not likely to cause confusion with Opposer’s
pleaded PERFECTLY POSH marks.
IV. Lack of Bona Fide Intent to Use
The basis for Opposer’s lack of bona fide intent to use claim is that Applicant did
not have the right to file her applications because Opposer owned superior rights in
the marks POSH GOTH, PERFECTLY POSH GOTH, and PERFECTLY POSH.43
Such a claim typically arises where parties claim rights in a mark “based on shared
circumstances” such as a former business relationship. Hole in 1 Drinks, Inc., 2020
USPQ2d 10020 *6 (“[T]he Board has previously held that the same operative facts
regarding parties claiming superior rights based on shared circumstances may
support different claims depending on whether they arise in a use-based application,
in which case the appropriate claim is lack of ownership, or in an intent-to-use
application, in which case the appropriate claim is lack of bona fide intent to use.”).
Here, the parties had no prior relationship that would give rise to such a claim and
Opposer did not introduce any other evidence to show that Applicant lacked a bona
fide intent to use her marks when she filed the applications.
V. Fraud
Opposer argues that Applicant committed fraud because, when Applicant filed her
applications, she knew that Opposer had superior rights in the marks POSH GOTH,
PERFECTLY POSH GOTH and PERFECTLY POSH and believed that a likelihood

43 Consolidated Notice of Opposition, 1 TTABVUE 9-10, ¶¶ 21-22.
Opposition No. 91241488
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of confusion would result from her use of the applied-for marks.44 As we have
discussed, Opposer has not proven rights in POSH GOTH or PERFECTLY POSH
GOTH before Applicant’s constructive first use dates. Nor has Opposer established
that Applicant’s marks are likely to cause confusion with the PERFECTLY POSH
marks. Moreover, there is no evidence that Applicant had a subjective intent to
deceive the Office when she filed her applications as necessary to establish fraud. In
re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009) (“Subjective
intent to deceive, however difficult it may be to prove, is an indispensable element in
the analysis.”). For these reasons, Opposer has not proven fraud.
VI. Decision
Opposer’s priority and likelihood of confusion claims based on common law rights
in the marks POSH GOTH and PERFECTLY POSH GOTH are dismissed with
prejudice, subject to Applicant’s establishment of constructive use. See 15 U.S.C.
§ 1068; Trademark Rule 2.129(d), 37 C.F.R. § 2.129(d). The remaining claims in the
consolidated opposition are dismissed with prejudice.45

44 Opposer’s Brief, 18 TTABVUE 39 and 41-46.
45 Applicant’s affirmative defenses of estoppel, unclean hands and fraud are moot and need
not be considered.