Purl NYC, LLCv.Ellen Rodgers

Trademark Trial and Appeal Board

Mar 12, 2008

No. 91167331 (T.T.A.B. Mar. 12, 2008)

Mailed:
March 12, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Purl NYC, LLC

v.

Ellen Rodgers
_____

Opposition No. 91167331
to application Serial No. 76579542
filed on March 3, 2004
_____

Jodi Sax, Esq. for Purl NYC, LLC.

James R. Menker of Smith, Gambrell & Russell, LLP for Ellen
Rodgers.
______

Before Seeherman, Holtzman and Drost, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Purl NYC, LLC has opposed the application of Ellen
Rodgers (an individual) to register PURL DIVA, in standard
character form, with the word PURL disclaimed, as a mark for
“retail store services, namely, a yarn shop featuring yarn,
fibers, sewing and knitting accessories and materials,
knitting and sewing kits, knitting books, knitting
magazines, knitting videos, patterns, knitting needles,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91167331
2
crochet hooks, knitting tools and equipment, sewing tools
and equipment, spinning tools and equipment, weaving tools
and equipment, felting tools and equipment, clothing,
blankets and toys.”1
The opposition is based on the ground of likelihood of
confusion. Specifically, opposer has alleged that it has
been using the marks PURL and PURL SOHO in commerce since at
least as early as June 2002; that it has four pending
applications for the marks PURL and PURL SOHO, including
applications for these marks in Class 35 for retail, mail
order and catalog services and online retail services which
feature yarn, knitting supplies and merchandise, and related
items; that opposer has written a best-selling knitting
book, is the subject of myriad articles and books on
knitting, expends significant amounts on advertising
annually, has a presence at all of the top knitting events
in the country, and grosses over $1 million per year in
sales.
Applicant has denied the allegations of the notice of
opposition in her answer.
Before discussing what is in the record, we note that
the parties stipulated that testimony could be submitted in

1 Application Serial No. 76579542, filed March 3, 2004, based on
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b) (intent-to-
use). The application originally included services in Class 41,
but applicant moved to divide the application, and the motion was
granted by the Board on October 25, 2007.
Opposition No. 91167331
3
the form of affidavits. The parties have also raised a
number of objections and filed motions to strike. The Board
considered the motions to strike in a 14-page order that
issued on October 25, 2007, and we will not revisit them
here. As for the objections, opposer raised a number of
objections at pp. 31-33 of its trial brief to specific
statements or paragraphs in the affidavits submitted by
applicant. We regard the objections as being, for the most
part, overly technical or based on a misreading of trademark
law. We will not burden this opinion with an exhaustive
discussion of each objection, but overrule them for the
following reasons:
Objection 1. Applicant’s evidence that
she has registered various domain names
is relevant as evidence of her business
efforts.

Ojbection 2. Opposer has objected to
applicant’s statement that none of her
customers has confused her business or
name with opposer’s business. Opposer
argues that applicant has not
established that she has asked every
single one of her customers, and that
she has no personal knowledge of the
state of mind of all her customers.
Opposer is unduly parsing the statement.
A fair reading of the testimony is that
no customer has indicated any confusion
with regard to opposer, and we regard it
as such.

Objection 3. Paragraphs 17, 18, 19 and
23 of Ellen Rodger’s affidavit reflect
the results of searches applicant did on
the Internet and other sources, while
Paragraph 5 of Kerstin Glick’s affidavit
lists yarn shops, knitting blogs, books
Opposition No. 91167331
4
and magazines she has encountered that
have “pur” in their names. Such
evidence is relevant to the strength of
opposer’s mark, whether or not the
stores are using the mark “in commerce”
or used the mark prior to opposer’s use.

Objection 4. Opposer objects to
evidence that “purl” is the name of a
stitch in knitting because it “is
general knowledge and not contested.”
Opposer claims that because of this the
“evidentiary offering here is also
redundant, a waste of time and is a
needless presentation of cumulative
evidence.” However, there is no
stipulation in the record that “purl” is
a stitch, and without proof, the Board
would have to take judicial notice of
the meaning of the word.

Objection 5. Applicant’s concluding
reasons in her affidavit as to why she
believes confusion is not likely, while
entitled to little probative value, is
not redundant. As for the mention of a
logo, while she cannot rely on her logo
because it is not part of the mark for
which registraton is sought, the mention
is so brief and is so tangential to the
paragraph as a whole that we have
considered the entire paragraph for
whatever probative value it may have.

Objection 6. Opposer objects to the
“cookie cutter” language used in the
affidavits of applicant’s 16 witnesses.
We find it ironic that opposer should
complain of “cookie cutter” language in
view of the fact that the affidavits
submitted by opposer as rebuttal
testimony also have “cookie cutter”
language. As for the substance of the
statements, they are relevant as to the
strength of opposer’s mark, regardless
of whether the third parties used their
“PURL” names prior to opposer’s use or
are using the marks in commerce.

Opposition No. 91167331
5
Objection 7. Opposer objects, on the
basis of relevance, prejudice, lack of
personal knowledge and speculation, to
the statements made by applicant’s
various witnesses that they “would not
be confused into thinking two yarn
stores are related or connected simply
because they both use the term ‘purl’ in
the names of the stores.” Opposer
claims that “these affiants have no
basis for contending that they would not
be confused just because, ostensibly,
they haven’t been confused yet.” We
consider these statements as reflecting
the witnesses’ views relating to the
weight they would give to the word
“purl” in a trademark for a yarn store.
This information is relevant, and
certainly within their personal
knowledge. As for the claim that the
probative value of the statements is
outweighed by their prejudicial effect,
Board proceedings are not tried before a
jury, and the Board not only has seen
these statements in ruling on the
objection, but does not view them as
prejudicial in any event.

Applicant, too, has raised objections to opposer’s
evidence. Specifically, applicant objects to the rebuttal
testimony submitted by opposer as not constituting proper
rebuttal because it should properly have been part of
opposer’s case-in-chief. Opposer has responded that this
evidence is in response to applicant’s evidence 1)
contesting the distinctiveness of opposer’s marks;
2) challenging opposer’s position in the industry; and
3) denying that yarn is subject to impulse purchases.
Opposer also asserts that the appropriate remedy for
applicant, if she had a problem with the evidence, was to
Opposition No. 91167331
6
file a motion to strike within 20 days of receipt of the
evidence, and that to allow applicant to now seek to exclude
the evidence would be improper and highly prejudicial to
opposer.
With regard to the latter point, it is acceptable for
an applicant to object, in its brief, to rebuttal testimony
on the basis that it is improper. If rebuttal testimony
should have been properly submitted as part of the opposer’s
case-in-chief, the applicant’s delaying until the filing of
its brief cannot be prejudicial because the opposer cannot
cure the defect. As to the substantive points, some of the
rebuttal evidence submitted by opposer goes to the
distinctiveness of its mark. One of the claims applicant
made in her brief is that opposer’s mark PURL is merely
descriptive, and therefore that opposer cannot demonstrate
that it has any trademark rights at all. Applicant is
correct that opposer must show that it acquired trademark
rights prior to applicant’s use or constructive use of her
mark, since opposer’s claim of likelihood of confusion is
based on its common law rights. See Otto Roth & Company,
Inc. v. Universal Foods Corp., 209 USPQ 40 (CCPA 1981).
However, an opposer must be apprised, prior to trial, that
there is a question as to whether its claimed trademark is
not distinctive, and applicant did not assert this in her
answer to the notice of opposition or in any other paper
Opposition No. 91167331
7
filed prior to the opening of opposer’s testimony period.
Accordingly, the Board will not consider whether opposer’s
mark is descriptive, but will treat it as inherently
distinctive.2 In view thereof, applicant’s evidence as to
the descriptiveness of opposer’s mark has not been
considered, and consequently opposer’s rebuttal testimony
regarding the inherent or acquired distinctiveness of its
mark is irrelevant, and will not be considered either.
The other purposes for which the rebuttal testimony has
been submitted is, as noted, to rebut applicant’s evidence
challenging opposer’s “position in the industry and denying
that yarn is subject to impulse purchases.” Reply brief,
p. 10. We note that the affidavits also give the witnesses’
opinion on whether there is a likelihood of confusion.
Opposer’s attorney, who is also a rebuttal witness, has
testified regarding a so-called survey she conducted, and
which she submitted as an exhibit to her affidavit. This
survey concerned, inter alia, whether the survey respondents
confused applicant’s mark with opposer’s. Opposer has also
used the results of the survey to support its argument that
its PURL mark is famous.
We consider all of this evidence, which go to the
factors of the fame of opposer’s mark, the conditions of

2 We must still assess the strength of the mark in the
likelihood of confusion analysis.

Opposition No. 91167331
8
purchase, and whether consumers are confused, to be properly
part of opposer’s case-in-chief. The fact that opposer is
attempting to make of record a survey as part of rebuttal
testimony highlights how unfair it would be to treat this
evidence as proper rebuttal. It is obvious from the
trademark cases involving surveys that no survey is perfect,
and that problems with surveys can range from minor to so
major that they make the survey of no probative value
whatsoever. Allowing a plaintiff to wait until the rebuttal
period to submit survey results would deprive the defendant
of an opportunity to challenge the metholodology or results
of the survey by the testimony of its own witnesses, or to
submit a survey countering the evidence of the plaintiff’s
survey. Opposer itself recognizes that it is “well
established that challenges to survey methodology go to the
weight given the survey, not its admissibility,” reply
brief, p. 11, but if opposer were permitted to submit a
survey as part of its rebuttal testimony, applicant would
not have the opportunity to challenge the survey methodology
with the testimony of its own witnesses. Applicant’s
objections to the rebuttal testimony are well taken, and
none of the rebuttal testimony has been considered.3

3 Aside from the survey evidence, the affidavit of opposer’s
attorney introduces evidence that had previously been introduced
by the affidavit of Ms. Hoverson, which was timely filed during
opposer’s testimony period. Those exhibits are already of
record.
Opposition No. 91167331
9
Applicant has also objected to our consideration of
opposer’s applications, stating that these applications were
not properly made of record because opposer did not submit
copies of the actual applications, but instead proffered
only printouts from the USPTO’s TESS database. Applicant is
correct that, at the time of the testimony periods in this
proceeding, a party could not make its own registration (or
application) of record merely by submitting, under a notice
of reliance, a copy of the TESS printout.4 However, opposer
did not merely submit the TESS copies of its claimed
applications with a notice of reliance; rather, these copies
formed an exhibit to the affidavit of Ms. Hoverson. Ms.
Hoverson testified as follows:

With respect to the testimony about conditions of purchase,
opposer’s witness, Ms. Hoverson, testified during opposer’s
opening testimony period that “It is well established (ask any
knitter) that yarn is an impulse purchase.” ¶ 12. Applicant’s
evidence regarding this du Pont factor was apparently submitted
in response to that testimony. All but one of the affidavits of
the non-party witnesses submitted by applicant contain the
identical statement, “I am very careful and deliberate in
purchasing yarn and other knitting supplies,” and the rebuttal
affidavits of opposer’s non-party witnesses (with the exception
of opposer’s attorney) all include the statement, “I am of the
opinion that many yarn purchases are impulse purchases.” Whether
or not the purchase of yarn is an impulse purchase or a careful
purchase is not determined by the sheer number of witness who say
one thing or the other. Further, the application is not for
“yarn,” but for retail store services featuring the purchase of
yarn. Therefore, even if we were to have considered opposer’s
rebuttal testimony on this point, it would not affect our
decision herein.
4 The trademark rules were subsequently amended, effective
November 1, 2007, to allow a plaintiff to make its pleaded
registration of record by submitting a current printout of
information from the electronic database records of the USPTO
showing the current status and title of the registrations.
Trademark Rule 2.120(d)(1).
Opposition No. 91167331
10
...Applicant has applied for a mark for
virtually identical goods and services
as has PURL. See Exhibit “E”, attached
hereto and incorporated herein by this
reference, showing Applicant’s Purl Diva
Mark, and Opposer’s PURL and PURLSOHO
Marks, the subject of this Opposition.
PURL also has subsequent, additional
pending marks, consisting of PURL BEE,
PURL PATCHWORK and PURL (Design), which
are also attached as part of Exhibit “F”
and incorporated herein by this
reference.
¶ 7.

Although rather inartfully put,5 we consider this
statement to be sufficient to show that opposer is the owner
of the applications shown in the exhibit.6 However, this
testimony is not sufficient to show that the applications
are still active. As a result, the applications are not of
record herein. We should add that, even if the applications
were of record, they would have no effect on our decision.
Opposer cannot rely on the dates of use recited in the
applications to show use of the respective marks on those
dates. Because a use-based application requires use only as
of the date the application is filed, any use prior to the

5 In view of the fact that the testimony was provided by
affidavit, and therefore the statements could be carefully
crafted and reviewed, we are surprised at the lack of precision
of the language in the affidavit.
6 We note that one of the applications lists opposer per se as
the owner (Serial No. 78604369 for PURL for services), while the
other applications list the applicant as “Purl NYC, LLC Joelle
Hoverson, USA Member; Jennifer Hoverson, USA, Member.” We deem
this ownership listing to convey that opposer is the applicant,
and the Joelle and Jennifer Hoverson are “members” of opposer.
Again, we are surprised that Ms. Hoverson’s affidavit did not
mention, let alone explain, this discrepancy.

Opposition No. 91167331
11
filing date must be proved by testimony or other evidence as
to when such use actually occurred. The mere recitation by
a witness of the dates of use as they appear in an
application, without testimony that the dates recited in
fact represent the actual use of the mark, is insufficient
to prove use on those dates.
Applicant has also criticized some of the evidence
submitted by opposer. The criticism is not technically an
objection to our considering the evidence, but goes more to
the weight to be accorded it, and we will therefore discuss
it, as appropriate, in our analysis.
Finally, although not specifically raised by opposer,
we note that some of the evidence submitted by applicant
pursuant to her notice of reliance may not be made of record
in this manner. Because opposer listed only the evidence it
made of record in its description of the record, and did not
discuss these portions of applicant’s notice of reliance, we
cannot say that opposer treated this material as being of
record. Accordingly, we have not considered Exhibits 20-31,
consisting of webpages from the site www.manta.com, and
Exhibits 32-37, taken from the website
http://smallbusiness.dnb.com. These webpages constitute
neither printed publications nor official records. See
Trademark Rule 2.122(e); Raccioppi v. Apogee Inc., 47 USPQ2d
1368 (TTAB 1998).
Opposition No. 91167331
12
The record, thus, includes the pleadings; the file of
the opposed application; the affidavit, with exhibits, of
opposer’s witness Joelle Hoverson; the affidavit, with
exhibits, of applicant, Ellen Rodgers; the affidavits of
applicant’s witnesses Debra H. Foster, Jennnifer
Zemienieski, Linnea Hartsuyker, Lisa Daehlin, Melissa
Walters, Annabelle Verhoye, Alison Green Will, Rachel C.
Ambrose, Cherylyn R. Brubaker, Laurie Ovadia, Peggy L.
Shelly, Stacy S. Kim, Mary Ahn, Cristina Post, Kerstin Glick
and Jennifer Lynne Pauk; and certain printed publications
and official records, submitted by applicant under notice of
reliance.
The case has been fully briefed. The Board previously
granted applicant’s motion to strike the “rebuttal
affidavit” of opposer’s attorney, Jodi Sax, dated June 25,
2007, which was filed along with opposer’s reply brief.
Needless to say, any argument in the reply brief that was
based on the affidavit and accompanying exhibits has also
been disregarded.
Findings of Fact
Opposer’s evidence which is properly of record consists
solely of the affidavit of Joelle Hoverson, who has stated
both that she is “an owner/member of [opposer],” ¶ 1, and
that “I own the yarn store PURL in Soho, New York.” She has
also referred to PURL as “my yarn store.” ¶ 2. We reconcile
Opposition No. 91167331
13
these statements by viewing Ms. Hoverson’s ownership of the
yarn store as being through her ownership of opposer. As a
result, we make a finding of fact that opposer is the owner
of the yarn store PURL, which is located in the Soho area of
New York City. The store sells yarn, knitting supplies,
books, patterns and notions. It opened for business in
August 2002 and the mark PURL has been used in connection
with the business since that date. Opposer also has a
retail website at purlsoho.com. In February 2005 opposer
opened a second store in Soho, a fabric store called PURL
PATCHWORK, and opposer has an online journal for fiber
artists and crafters called THE PURL BEE.
Ms. Hoverson has written a book, Last Minute Knitted
Gifts, which was published in 2004, but it is not clear from
the testimony whether opposer owns the rights to it, or Ms.
Hoverson does as an individual. In its notice of opposition
opposer alleged that it had written the book.
Applicant is the owner of Harpswell Harmony, LLC,
through which she operates a retail yarn shop in Brunswick,
Maine under the mark PURL DIVA that sells yarn and
knitting/crochet accessories and provides classes in
knitting. She chose the name because, as pronounced in
Maine, it sounds like “pearl diver,” and therefore is a play
on that term. On June 17, 2006 applicant formally opened
the PURL DIVA yarn shop.
Opposition No. 91167331
14
Standing
Oppposer has established its standing by its evidence
that it operates a yarn shop under the name PURL.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Applicant has
argued that opposer has not shown its standing because it
has not proved its allegations that applicant’s mark is
likely to cause confusion with its PURL mark. However, the
case applicant cited for this point, Boswell v. Mavety Media
Group Ltd, 52 USPQ2d 1600 (TTAB 1999), does not stand for
the proposition that an opposer must prove its ground for
opposition to establish standing, only that it must prove
the allegations of its standing. Opposer has done so.
Priority
Opposer does not have any registrations, and therefore
priority is in issue. Compare, King Candy Company v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). Further, opposer has not properly made its
applications of record, and in any event could not rely on
them to establish priority because they have filing dates
subsequent to the filing date of applicant’s application.
Accordingly, opposer must rely on its common law rights and
must prove it acquired trademark rights prior to applicant’s
use/constructive use. See Otto Roth & Company, Inc. v.
Opposition No. 91167331
15
Universal Foods Corp., supra. Opposer’s mark, although
highly suggestive for a yarn store (whether a bricks and
mortar store or an online store), is inherently distinctive,
and therefore opposer acquired rights in PURL as a mark for
a retail yarn store as of the time it began using it.
The evidence of record shows that opposer began using
PURL as a mark for a retail yarn store in August 2002, and
therefore oposer obtained rights in PURL for retail yarn
store services as of that date.7 As far as any use of PURL
for online store services, the testimony of opposer’s
witness is not clear because she has used “PURL”
interchangeably to refer to opposer, the trademark, and the
retail yarn store. There is no definite statement in her
affidavit that opposer has used PURL as a trademark for
online store services. The only evidence we have that may
pertain to such use is an advertisement, described infra,
which shows PURL in script form, with the words “shop
online.” Even if we were to regard this advertisement as

7 In her brief applicant points out that opposer failed to
supply documentary evidence in support of Ms. Hoverson’s
testimony that opposer first used the mark PURL in August 2002.
However, while documentary evidence may be necessary when
testimony is unclear or contradictory, here Ms. Hoverson’s
statements as read in the context of the affidavit are sufficient
to show that the mark PURL was used as a mark for opposer’s
retail yarn store as of August 2002, and therefore no supporting
documentary evidence is required. In any event, opposer has
submitted as an exhibit an excerpt from a publication dated
August 29, 2002 that mentions the store PURL. See “Time Out New
York,” Exhibit B to Hoverson affidavit. This exhibit serves to
corroborate Ms. Hoverson’s testimony that the PURL mark was in
use for retail store services as of August 2002.
Opposition No. 91167331
16
sufficient evidence that opposer renders online retail store
services under the mark, the earliest date we can ascribe to
such usage is February 2005, based on the fact that
opposer’s store PURL PATCHWORK is mentioned in the ad, and
opposer did not open that store until then. This date is
subsequent to the filing date of applicant’s application.
As for the trademark PURLSOHO, which opposer has also
claimed as a mark, the record is unclear about trademark use
of this term. Ms Hoverson states in her affidavit that
opposer “has been using ...its PURLSOHO mark in interstate
commerce since November 2002,” ¶ 8, but she does not
identify the goods or services in connection with which this
mark has been used.8 Unfortunately opposer has not
submitted as exhibits either pictures of its mark as used in
connection with its retail store services or a copy of what
appears on its website from which we can determine whether
opposer has made use of the mark PURLSOHO for such services.

8 In fact, the testimony that we do have raises more questions
about what the goods or services might be than it answers. For
example, opposer stated in its reply brief that the November 2002
date given in the affidavit was in error, and that November 2002
was the date of first use and September 1, 2003 was the date of
first use in commerce. If the mark were being used for online
retail store services we do not understand why opposer is making
a distinction between first use and first use in commerce; if the
mark is being used for opposer’s retail store services offered at
its New York City location, again we do not understand why
opposer is making this distinction in the dates, since opposer,
according to Ms. Hoverson’s affidavit, was making use of the mark
PURL in interstate commerce in connection with retail store
services since August 2002, and therefore the retail store was
operating in commerce as of that date.

Opposition No. 91167331
17
Because it is opposer’s burden to establish that it has
common law rights, we cannot accept vague statements in
place of such proof. In short, the record does not reflect
for what goods or services the mark PURLSOHO is or has been
used.9 A mere statement that the mark has been used,
without any indication of the goods or services with which
the mark has been used, is insufficient for us to find that
opposer has obtained trademark rights in PURLSOHO, since a
trademark, ipso facto, must be used to identify particular
goods or services.
The only documentary evidence we have of opposer’s
trademark use of any mark is an advertisement which Ms.
Hoverson states has appeared in “Vogue Knitting,”
“Interweave Knits” and “Interweave Crochet.” This
advertisement shows the word “purl” in cursive font, below
which are the words “shop online,” centered within a
“wreath” made of skeins of yarn, with the words
“purlsoho.com” appearing in large letters below the wreath.
Below that, in smaller type, are the words “visit our
shops!” with the name “Purl” and its address in New York,
and “Purl Patchwork” with its address. We do not view this

9 Needless to say, we cannot look to the services identified in
opposer’s pending application for PURLSOHO to ascertain its
services. First, the application was not properly made of record
and second, for the same reason that the dates of use recited in
an application cannot be accepted as proof that the mark was used
on those dates, the identification of goods or services in the
Opposition No. 91167331
18
as use of the trademark PURLSOHO, although it appears to be
use of “purlsoho.com.” However, opposer has not claimed
that “purlsoho.com” is a trademark, and has identified it
only as a web address for its website. In addition, as
noted above, this advertisement includes a reference to
opposer’s shop PURL PATCHWORK, which Ms. Hoverson stated
opened in February 2005, subsequent to the March 3, 2004
filing date of applicant’s application. Therefore, it is
not evidence of pre-2005 use of any of the marks shown
therein.
Accordingly, we find that opposer has not established
trademark rights in PURLSOHO per se for any goods or
services, and therefore it cannot show priority of use
through any common law rights for the mark PURLSOHO.10
Opposer has also made reference to the marks PATCHWORK
and PURL BEE. The applications for these marks were not
pleaded in the notice of opposition, nor do we find that the
issue of likelihood of confusion with respect to these marks
was tried, such that we could consider the pleadings amended

application is not proof that the mark was used on in or
connection with those goods or services on the listed dates.
10 Several months after final briefing of this case, opposer filed
a motion to amend its pleading to assert ownership of a
registration for PURLSOHO, which had issued (after briefing was
completed) from opposer’s pleaded application. The Board denied
this motion on October 25, 2007, and therefore the registration
is not of record, nor have we considered the registration or any
rights which opposer may have obtained by virtue of it. However,
our finding that opposer has not established priority for
PURLSOHO does not affect the ultimate result in this opposition,
since PURL DIVA is more similar to PURL than it is to PURL SOHO.
Opposition No. 91167331
19
pursuant to Rule 15(b) of the Federal Rules of Civil
Procedure. Although in opposer’s reply brief opposer states
that applicant has not addressed opposer’s subsequently
filed marks PURL PATCHWORK and PURL BEE, p. 15, in Ms.
Hoverson’s affidavit she states that opposer’s PURL and
PURLSOHO marks are “the subject of this Opposition.” ¶ 3.11
Also, in its main brief opposer addresses the issue of
likelihood of confusion only with respect to the two pleaded
marks. The very statement of issues as recited in that
brief is “Whether Applicant’s proposed PURL DIVA mark so
resembles Opposer’s PURL and PURL DIVA [sic] marks as to be
likely to cause confusion as to source or origin in
violation of section 2(d) of the Lanham Act, 15 U.S.C.
section 1052(d).” p. 6. Thus, we do not consider any
likelihood of confusion claim that opposer may have based on
the marks PURL PATCHWORK and PURL BEE. We also point out
that, in any event, opposer has not established priority of
use of these marks. There is no evidence that opposer began
using the marks prior to the March 3, 2004 filing date of
applicant’s application; on the contrary, Ms Hoverson’s
affidavit states that the store PURL PATCHWORK opened in
February 2005.

11 Indeed, in the next sentence of paragraph three, Ms. Hoverson
states that opposer has subsequent additional pending marks, PURL
BEE, PURL PATCHWORK and PURL (design), and the clear implication
is that these marks are not the basis for opposer’s bringing the
opposition.
Opposition No. 91167331
20
As for applicant, the record shows that applicant did
not make actual use of her mark until 2006; therefore, the
earliest date on which she is entitled to rely is March 3,
2004, the filing date (and constructive use date) of her
application.12 Because opposer has established that it made
use of PURL for retail yarn store services as of August
2002, opposer has established its priority with respect to
this mark for these services.
Likelihood of confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
Because the only mark for which opposer has established
priority is PURL for retail yarn store services, we confine
our discussion on the issue of likelihood of confusion to
whether applicant’s mark for her identified services is

12 Opposer has argued that applicant cannot rely on her filing
date as her constructive use date until her application issues
into a registration. This is not a correct statement of the case
law. See Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d
1711, 1714 (TTAB 1993) (to prevail on a [Section 2(d)] claim,
[opposer] must plead and prove that it has a proprietary interest
in [its mark] and that the interest was obtained prior to the
filing date of applicant's intent-to-use application); see also,
Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164, 1172, n.5 (TTAB
2001).
Opposition No. 91167331
21
likely to cause confusion with PURL for retail yarn store
services.13
Opposer contends that its mark PURL is famous. We
therefore begin our analysis with the factor of fame because
this factor plays a dominant role in cases featuring a
famous or strong mark. Kenner Parker Toys Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992).
According to Ms. Hoverson’s affidavit, “PURL sells in
excess of One Million Dollars per year in merchandise.”
¶ 3. Applicant has criticized this figure as being vague
and unsubstantiated by any documentary evidence. We agree
that the figure is rather vague, and even on its face it
raises questions for us. For example, if we view the
statement as indicating annual sales of $1 million per year
for each year that opposer was in business, we find it
somewhat odd that opposer had a similar level of sales
during its first year as a start-up operation, and in 2005
when it had opened a second store. Obviously, if opposer’s
statement refers to sales of $1 million for the most recent
year or two that opposer was operating, that has an impact
on the determination of whether the mark is famous.
However, even if we accept the $1 million annual sales

13 The issue of whether opposer has a family of marks was neither
pleaded nor argued by opposer.

Opposition No. 91167331
22
figure, it is not clear from Ms. Hoverson’s affidavit what
portion of these sales is attributed to opposer’s retail
store services under the mark PURL, what portion is
attributed to sales made through opposer’s website, what
portion is made under the mark PURL PATCHWORK or even what
portion is attributed to Ms. Hoverson’s books, assuming that
opposer is the owner of any rights to the book and profits
from its sales.14 The fact that, according to Ms.
Hoverson’s testimony, opposer’s website, purlsoho.com,
receives 4,000 visitors per day, and that it has a mailing
list of over 16,000 customers from all over the world from
its website alone, suggests that a significant portion of
opposer’s $1 million annual sales could have been made
through the website. However, because opposer did not
submit any pages from its website, and there is no testimony
as to what marks appear on the website, we cannot consider
the evidence regarding website “hits” to have any probative
value with respect to the fame of the trademark PURL.
Opposer also spends “in excess of $40,000 per year in
advertising.” ¶ 3. Again, we cannot determine from Ms.
Hoverson’s affidavit how the advertising is broken down
among opposer’s various business ventures. Based on the
exhibit showing the advertising (described in our discussion

14 Some of this confusion is caused by the fact that in her
affidavit Ms. Hoverson has chosen to identify both opposer and
the yarn store as “PURL.”
Opposition No. 91167331
23
of priority), the ad appears to be primarily for opposer’s
on-line sales. Also, Ms. Hoverson testified that this ad
has appeared “in every issue of Vogue Knitting, Interweave
Knits and Interweave Crochet.” ¶ 3. However, in view of
Ms. Hoverson’s testimony that PURL PATCHWORK did not open
until February 2005, and the advertisement tells viewers to
visit the Purl Patchwork shop, this advertisement could not
have appeared in every issue of these publications since the
PURL store opened.
Ms. Hoverson testified that opposer’s store PURL has
been written up in various magazines in the United States
and abroad.15 Publicity in foreign publications, without
evidence of circulation in the United States, does not
demonstrate fame of the mark in the United States. Hard
Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2ds 1400, 1405
(TTAB 1998). As a result, we give the articles that
appeared in the UK publication “Rowan Knitting and Crochet,”
the Australian publications “Qantas” and “Get Creative” and
the two Korean magazines, written in Korean, no probative
value. There are five articles from U.S. publications: a
two-page article about Ms. Hoverson and PURL in “The Oprah
Magazine”; a one-paragraph mention of the PURL store in

15 Again opposer has used the term “PURL” without making a
distinction between opposer itself and its retail store called
PURL, but from the exhibits showing the write-ups we conclude
that the references are to the store.

Opposition No. 91167331
24
“Time Out New York”; a three-quarter page photo and text
about Ms. Hoverson and her shop PURL, also featuring a
stocking kit available at the store in “Lucky”; a listing of
the store in the “Zagat Survey” of “New York City Shopping”;
and one paragraph, with the heading “Purl,” in “City.”16 In
addition, the book The Martha Rules, 10 Essentials for
Achieving Success As you Start, Build, or Manage a Business,
by Martha Stewart, has three pages devoted to Joelle
Hoverson, which talks about how she went about starting her
store, “Purl.” The store has also been mentioned in
celebrity magazines and websites. “In Touch Weekly” has a
photo with the text that Kate Hudson and Uma Thurman “ran
into each other at the knitting shop Purl in New York.”
“Life & Style Weekly” has a photo with two lines of text
stating that Kate Hudson “inspected the yarns on offer at
the knitting shop Purl in NYC’s Soho on April 7.”
“Celebrity Living” has a two-page spread with photos of Uma
Thurman and Kate Hudson, and text mentioning that both shop
at Purl, and quoting “Purl owner Joelle Hoverson." A box of
text has the prominent title “Cool Tools from Purl in NYC.”
The website Eonline has, in the column “The Awful Truth,” a
brief mention at the end of the article that Drew Barrymore

16 Ms. Hoverson’s affidavit also references a mention in “The
Wall Street Journal,” but the copy of the exhibit that was
submitted is so blurred that we cannot make out any of the text.
Accordingly, we have given it no probative value. Hard Rock Cafe
Licensing Corp. v. Elsea, supra at 1405, n.13.
Opposition No. 91167331
25
popped into Purl. Ms. Hoverson has also appeared on Martha
Stewart’s television program, “Martha,” and opposer’s stores
PURL and PURL PATCHWORK have been mentioned. And Ms.
Hoverson’s book, “Last Minute Knitted Gifts,” mentions Purl
on the flyleafs of both the front and back cover, as well as
in the preface. This book had sold 60,000 copies as of the
time Ms. Hoverson signed her affidavit in October 2006.
Finally, we note that several of the affidavits
submitted by applicant, from people who knit, state that
they are familiar with PURL in New York/Soho.
On the basis of the record before us, we cannot find
that PURL is a famous mark for retail yarn store services.
As noted, because of the lack of clarity of the testimony,
we cannot view the figures of $1 million per year in sales
and $40,000 in advertising as referring only to sales under
the trademark PURL, and advertising for only the mark PURL.
Even if, arguendo, these were the sales and advertising
figures for the PURL trademark for retail yarn store
services, these sales have occurred over a very limited time
(four years). Further, we have no context for these
figures, in terms of knowing whether the sales and
advertising figures are extremely high for retail yarn store
businesses. See Bose Corp. v. QSC Audio Products Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002)
(“Consequently, some context in which to place raw
Opposition No. 91167331
26
statistics [raw numbers of product sales and advertising
expenses] is reasonable”). Although in its brief opposer
makes the statement that its $40,000 per year adveritisng
expenditures are “a huge amounts [sic] for an independent
boutique yarn store,” p. 8, the characterization of this
amount is not supported by any evidence. We can only say
that opposer’s sales and advertising figures do not approach
those in other cases in which marks were found to be famous.
See the following figures, as quoted in Bose Corp. v. QSC
Audio Products Inc., supra at 63 USPQ2d 1306:
Nina Ricci, S.A.R.L. v. E.T.F. Enters.,
Inc., 889 F.2d 1070, 1072, 12 USPQ2d
1901, 1902 (Fed. Cir. 1989) (NINA RICCI
for perfume, clothing and accessories:
$200 million in sales, over $37 million
in advertising over 27 years); Kimberly-
Clark Corp. v. H. Douglas Enter., Ltd.,
774 F.2d 1144, 1146-47, 227 USPQ 541,
542 (Fed. Cir. 1985) (HUGGIES for
diapers: over $300 million in sales over
9 years, $15 million in advertising in
one year); Specialty Brands Inc. v.
Coffee Bean Distribs., Inc., 748 F.2d
669, 674-75, 223 USPQ 1281, 1284 (Fed.
Cir. 1984) (SPICE ISLANDS for teas,
spices and seasonings: $25 million
annually in sales for spices, $12
million between 1959 and 1981 for tea,
“several million” in advertising, in use
for 40 years); Giant Food, Inc. v.
Nation's Foodservice, Inc., 710 F.2d
1565, 1567-68, 218 USPQ 390, 392-93
(Fed. Cir. 1983) (GIANT FOOD for
supermarket services and food products:
sales over $1 billion in one year,
“considerable amounts of money” in
advertising, 45 years use); DuPont, 476
F.2d at 1361, 177 USPQ at 567; Planters
Nut & Chocolate Co. v. Crown Nut Co.,
305 F.2d 916, 917-18, 134 USPQ 504, 506
Opposition No. 91167331
27
(CCPA 1962) (MR. PEANUT DESIGN for nuts
and nut products: $350 million in sales,
$10 million in advertising over 10
years).

Nor does the evidence of the references to the PURL
store in the various publications and the television program
demonstrate fame of the mark. Many can best be described as
passing references that are not likely to be noted or
remembered by readers. The focus of many of the articles,
as well as the feature in The Martha Rules, is on Ms.
Hoverson herself and her efforts to open a business, rather
than on the trademark for that business. In sum, although
the store and its trademark have received some publicity,
and some of the knitters who submitted declarations on
behalf of applicant are aware of the store, this evidence is
not sufficient for us to conclude that PURL is a famous mark
for retail yarn store services.
In view of the extreme deference that is accorded to a
famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of a
plaintiff asserting that its mark is famous to clearly prove
it. Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811,
1819 (TTAB 2005). Opposer has simply failed to show that in
this case.
On the other hand, there is no denying that PURL is a
highly suggestive mark for a retail yarn store, as “purl” is
Opposition No. 91167331
28
one of the main stitches in knitting and the word is also
used as the verb form to indicate knitting with this
stitch.17 Opposer acknowledges that “purl” “has the
generally understood meaning of relating to knitting.”
Brief, p. 24.
Further, applicant has submitted evidence that many
yarn stores, whether traditional bricks and mortar stores or
online, use the term “PURL” or variations thereof in their
trademarks. Applicant’s witnesses (identified as people who
knit), testified about various yarn stores with “purl” or a
variation thereof in their marks, including Knit Purl in
Oregon, Purly Gates in Georgia, Purls in Arizona, Cultured
Purl in Pennsylvania, Knit-n-Purl in Michigan and Stitch,
Piece ‘n Purl in Ohio. Lorna’s Laces, which opposer has
identified as a supplier of its yarns, lists (in addition to
opposer) in its directory of retailers carrying their yarns,
Cozy Knit & Purl in Colorado, Knit2Purl2 in Delaware, Knit-
N-Purl in Michigan, Purl by the Sea in New York, Purls in
Arizona, Cultured Purls in Washington, Knit-N Purl in
Tennessee, Stitch, Piece ‘N Purl, Inc. in Ohio and String of
Purls in Nebraska. Exhibit 55 to Rodgers affidavit. The
online SweaterBabe.com yarn shop directory lists, along with

17 The American Heritage Dictionary of the English Language, 4th
ed. © 2000. “Purl: n. 1. Inversion of a knit stitch; purl
stitch. v. (transitive) 1. To knit (yarn) with a purl stitch.
(intransitive) 1. To do knitting with a purl stitch.” Exhibit 5
of applicant’s notice of reliance.
Opposition No. 91167331
29
many of the stores set forth above, Knit One, Purl Two in
Rhode Island, Purl’s Yarn Emporium in North Carolina,
Sakonnet Purls in Rhode Island, Knit-N-Purl in New York,
Gifted Purl in Illinois and Knit, Purl and Co. in
California. Exhibit 36 to Rodgers affidavit. Another
online yarn shop directory, The Daily Knitter, Rodgers
exhibit 35, lists Purls The Yarn Studio in Iowa, Black Purl
in Wisconsin, Purls and Girls in California, Sewpurlatives
in Georgia, Knit And Purl in New Jersey, Rita’s Knit One
Purl Two in New York, Knit One ‘Purl One in California, Knit
N Purl in Indiana, Purls From Heaven in New York, and Knit 1
Purl 2 in Virginia, along with many of those listed in the
SweaterBabe.com directory and applicant’s witnesses’
affidavits. The online superpages.com telephone directory
lists Purls & Girls in Turlock, CA (Rodgers exhibit 22) and
Purls From Heaven in Cedarhurst, NY (Rodgers exhibit 26),
while insider pages.com lists Genuine Purl in Chattanooga,
TN (Rodgers exhibit 25) and AllPages. Com lists Knit Purl &
Co in Tarzana, CA (Rodgers Exhibit 30).
In addition, applicant has made of record webpages from
many online retail yarn stores, including String of Purls,
with a street address in Omaha, Nebraska (Rodgers exhibit
5); Stitch, Piece ‘n Purl with an address in Ohio (Rodgers
exhibit 8); Knit Purl, with a street address in Portland,
Oregon (Rodgers exhibit 9); as well as webpages from bricks
Opposition No. 91167331
30
and mortar yarn stores, e.g., Purls of Yarn in
Pleasantville, NY (Rodgers exhibit 7); Knit, Purl & Beyond,
LLC in New Hampshire (Rodgers exhibit 14); Purl Garden in
Georgia (Rodgers exhibit 28) and Bead & Purl in Rhinebeck,
NY (Rodgers exhibit 31).
Opposer has claimed that the evidence of third-party
use has no relevance and has “little probative value, as the
information in and of itself does not show that these stores
are using the mark in commerce in any particular way, have
used the mark prior to PURL, or that the public is fmailiar
with the use of the word ‘purl’ in the names of these
stores.” Reply brief, p. 14. However, evidence on the du
Pont factor of third-party use certainly is relevant to the
determination of likelihood of confusion. Further, the
affidavits of applicant’s non-party witnesses show that
these witnesses are familiar with the marks recited in their
affidavits, and the listings in various directories and the
website evidence of online retail yarn stores show valid
service mark use. All of this evidence is sufficient for us
to conclude that people who buy yarn from retail or online
retail yarn stores are likely to have been exposed to third-
party marks containing the word PURL. Whether or not these
third-party uses were prior to opposer’s use, or were used
in commerce, is irrelevant to our consideration of this du
Pont factor. We are not determining whether their rights
Opposition No. 91167331
31
are superior to opposer’s, or whether they have met the
necessary “use in commerce” requirement to obtain a
registration; we consider this evidence in order to
determine whether there have been so many third-party uses
of the term PURL for yarn stores that consumers will
distinguish among them by looking to other elements in the
marks.
The highly suggestive meaning of “purl,” and the number
of yarn stores that use “purl” in their marks, demonstrates
that the term “purl” is not entitled to a broad scope of
protection, and that consumers are able to differentiate
among various “purl” yarn stores by looking to other
elements in the marks. See King Candy Company v. Eunice
King’s Kitchen, Inc., supra.
With this in mind, we consider applicant’s mark PURL
DIVA vis-à-vis opposer’s mark PURL. Obviously, both marks
contain the word PURL, and to that extent there are
similarities in appearance and pronunciation. However,
applicant’s mark is not merely the word PURL, but is PURL
DIVA. As previously discussed, PURL is a highly suggestive
term, and the mere presence in two marks of a common, highly
suggestive portion is usually insufficient to support a
finding of likelihood of confusion. Tektronix, Inc. v.
Daktronics, Inc., 534 F. 2d 915, 189 USPQ 693 (CCPA 1976).
Instead, consumers will look to the arbitrary word DIVA in
Opposition No. 91167331
32
applicant’s mark as a distinguishing element, and this word
is therefore entitled to greater weight in the likelihood of
confusion analysis. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (in articulating
reasons for reaching a conclusion on the issue of likelihood
of confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
entireties). Further, PURL DIVA has a very different
connotation from PURL alone. Applicant has explained that
in Maine, where her store is located, PURL DIVA would be
pronounced the same as “pearl diver,” and therefore her mark
has a double entendre which would be readily recognized. In
this connection, the third-party uses made of record by
applicant show that other yarn stores have capitalized on
the fact that “purl” and “pearl” sound the same, and have
adopted marks in which “purl” has such a connotation. See,
e.g., Purly Gates, Cultured Purl, Purl by the Sea and String
of Purls. Even if applicant’s mark were to be pronounced as
“dee-va,” the connotation is of a woman who knits (purls)
who is “admired, glamorous or distinguished.” In this
connection, we take judicial notice of the definition of
“diva” as meaning “an admired, glamorous or distinguished
Opposition No. 91167331
33
woman.”18 In either case, the connotation of PURL DIVA is
very different from the connotation of PURL per se.
Further, these overall differences in appearance and
pronunciation, and most particularly in connotation, result
in the marks conveying very different commercial
impressions.
Because of the differences in the marks, and the
limited scope of protection to be accorded to opposer’s mark
in view of its highly suggestive nature, we find that
opposer has failed to prove its pleaded ground of likelihood
of confusion. Although all du Pont factors on which there
is evidence must be considered, different factors may play a
greater or lesser role in any given case. See In re E.I. du
Pont de Nemours & Co., supra, Kellogg Co. v. Pack’em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991). The factors of the differences in the marks, the
weakness of opposer’s mark due to the highly suggestive
nature of the word PURL, and the third-party uses of PURL
marks for yarn store services outweigh the fact that
opposer’s and applicant’s retail store services must be

18 The New Oxford American Dictionary, 2d ed. © 2005. The Board
may take judicial notice of dictionary definitions. University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
Opposition No. 91167331
34
deemed to be legally identical, and to be rendered in the
same channels of trade to the same classes of consumers.19
We have also considered opposer’s argument that yarn is
purchased on impulse and without care. However, applicant
is seeking registration of her mark for retail yarn store
services, not for yarn per se, and opposer is claiming
trademark rights in a mark used for retail yarn store
services. Thus, the fact that yarn is relatively
inexpensive or is an impulse purchase is beside the point.
The question is not whether someone standing in a yarn store
might confuse the trademarks for different skeins of yarn
displayed next to each other because he or she would just
“grab” a skein without closely examining the trademark. We
must consider the conditions of purchase as they pertain to
consumers availing themselves of the services at issue--
retail yarn store services. Opposer has taken the position
that there is a “knitting community,” brief, p. 15, peopled
by consumers who are avid knitters. Such knitters will know
the shops that they wish to patronize, and are likely to be
discriminating about choosing a store because they are
concerned about selection, help, service and the like.
Even if the decision to buy yarn is made on impulse, they

19 We are aware that opposer’s retail store services are rendered
from a bricks and mortar facility in New York, and applicant’s
retail store is located in Maine. However, because applicant is
not seeking a concurrent use registration, we cannot treat the
services as having any geographic separation.
Opposition No. 91167331
35
will be aware of the trademark of the store which they enter
to purchase the yarn. These avid knitters, as shown by the
affidavits submitted by applicant, are aware of third-party
yarn stores that have the word “purl” in their trademarks,
and will not assume a connection between applicant and
opposer simply because both parties use marks with this
word. Even if we assume that consumers of the parties’
services include more casual knitters, who will visit a yarn
store on a more occasional basis, they are still likely to
note the name of the store which they are patronizing. And,
as we discussed in our comparision of the marks, even less
sophisticated consumers will not confuse PURL and PURL DIVA
merely because both marks contain the highly suggestive term
“purl.”
Finally, opposer has asserted that there is evidence of
actual confusion. However, there is no evidence of record
that shows such confusion.20 Accordingly, we regard this du
Pont factor as neutral.
In conclusion, we find that because of the highly
suggestive nature of opposer’s mark, the evidence of
third-party use of marks containing the word PURL or a
variation thereof for retail and online retail yarn stores,
and the differences in opposer’s mark and applicant’s mark,
applicant’s mark PURL DIVA for retail yarn store services is
Opposition No. 91167331
36
not likely to cause confusion with opposer’s mark PURL,
despite the fact that the services are the same, and will be
rendered in the same channels of trade to the same classes
of consumers.
Decision: The opposition is dismissed.

20 As indicated supra, the survey which opposer relies on to show
purported actual confusion has not been considered.