SAND CPH A/Sv.Xiuling Guo

Trademark Trial and Appeal Board

Jun 11, 2020

91237844 (T.T.A.B. Jun. 11, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 11, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Sand CPH A/S
v.
Xiuling Guo
_____

Opposition No. 91237844
_____

Miriam D. Trudell and Caroline E. Bryce of Sheridan Ross P.C.
for Sand CPH A/S.

Lawrence J. Crain of Greer, Burns & Crain, Ltd.
for Xiuling Guo.
_____

Before Kuhlke, Shaw and Heasley,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Xiuling Guo, seeks registration of the mark
for “Clothing apparel, namely, scarves, mufflers,
dresses, skirts, sweaters, coats, ponchos, jumpers, gloves, caps, blouses,” in
International Class 25.1

1 Serial No. 87370054, filed March 14, 2017, based on an allegation of first use in August
2015 and first use in commerce on August 5, 2016 under Section 1(a) of the Trademark Act,
Opposition No. 91237844

2

Opposer, Sand CPH A/S, has opposed registration of Applicant’s mark on the
ground that, as used in connection with Applicant’s goods, the mark so resembles
Opposer’s previously used and registered standard character mark SAND, for a
variety of goods and services including clothing in International Class 25 and retail
services, featuring, inter alia, clothing in International Class 35, as to be likely to
cause confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Not. of
Opp., 1 TTABVUE. By its answer, Applicant admits that “the USPTO records reflect
the alleged averments of paragraph 2” regarding Opposer’s pleaded registration, the
allegations regarding Applicant’s application, and that “some of the Class 25 goods
covered in U.S. Application Serial No. 87380054 are highly related to, if not identical
to, the Class 25 goods covered in U.S. Registration No. 3046413 and are highly similar
to, if not identical to, the clothing goods sold in the retail store services covered in
Class 35 in U.S. Registration No. 3046413.” Ans. ¶¶ 2, 3, 4, 10, 8 TTABVUE 4, 6, and
denies the remaining salient allegations.2

15 U.S.C. § 1051(a). The application includes the following description of the mark: The mark
consists of the term “SANDRIVER” with a design of a sheep. Color is not claimed as a feature
of the mark.
2 Applicant’s “affirmative defenses” are for the most part amplifications of its denials.
Applicant did not pursue the insufficiently pleaded laches affirmative defense at trial, so it
is deemed waived. See, e.g., Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107
USPQ2d 1750, 1753 (TTAB 2013) (respondent’s affirmative defense of failure to state a claim
not argued in brief deemed waived), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Miller v.
Miller, 105 USPQ2d 1615, 1616 n.3 (TTAB 2013) (affirmative defense of unclean hands
deemed waived because applicant failed to argue and present evidence regarding the defense
at trial). Moreover, in general laches is not a proper defense against an opposition. Nat’l Cable
Television Ass’n Inc. v. Am. Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed.
Cir. 1991).
Opposition No. 91237844

3

I. RECORD
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of the application subject to the notice of
opposition. Opposer submitted notices of reliance on: (1) USPTO Trademark Status
& Document Retrieval system (TSDR) printout of its pleaded Registration No.
3046413, which shows that the registration is subsisting and owned by Opposer;3 (2)
Applicant’s discovery responses;4 (3) excerpts from the printed publications Levy’s
and John Craig;5 printouts from Opposer’s website and third-party retailer websites;6
and printouts of articles from online publications.7
Applicant submitted her testimony declaration (“Guo Decl.”) with accompanying
exhibits.8 In addition, Applicant submitted a notice of reliance on: (1) dictionary
definition for the word SAND;9 (2) TSDR printouts of twenty third-party use-based
registrations for marks that include the word SAND for a variety of clothing items;10
(3) printouts of thirteen third-party web pages showing SAND as part of a brand
name for a variety of clothing items;11 (4) printouts of five third-party websites

3 21 TTABVUE 5-16. Pleaded registrations may be made of record by submitting “a current
copy of information from the electronic database records of the Office showing the current
status and title of the registration.” Trademark Rule 2.122(d), 37 C.F.R. § 2.122(d).
4 21 TTABVUE 17-60.
5 21 TTABVUE 62-196; 22 TTABVUE 5-156.
6 23 TTABVUE 8-340.
7 23 TTABVUE 342-50.
8 24 TTABVUE 231.
9 24 TTABVUE 3-6.
10 24 TTABVUE 7-89.
11 24 TTABVUE 91-143.
Opposition No. 91237844

4

showing use of the word SAND to refer descriptively to a color tone for clothing
items;12 (5) TSDR printout of Opposer’s registration showing it is not incontestable;13
(6) printouts of Applicant’s web pages showing use of Applicant’s mark;14 (7) copy of
a study entitled “Sand River – Breaking Into the Luxury Cashmere Market”;15 and
(8) copy of a decision from the European Intellectual Property Office (EUIPO) denying
invalidation for Applicant’s registration.16
II. SECTION 2(d) CLAIM
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Opposer must prove, by a
preponderance of the evidence, that it has priority with respect to its asserted SAND
mark vis-à-vis Applicant’s mark , and that Applicant’s
use of its mark in connection with the goods identified in its application is likely to

12 24 TTABVUE 147-64.
13 24 TTABVUE 166-68.
14 24 TTABVUE 170-77.
15 24 TTABVUE 179-216. Applicant characterized this as a printed publication. This type of
material is not considered a printed publication in general circulation appropriate for
submission under notice of reliance. However, it was also properly introduced under
Applicant’s testimony declaration. Guo Decl. ¶ 11, Exh. 4, 24 TTABVUE 233, 286.
16 24 TTABVUE 333-43.
Opposition No. 91237844

5

cause confusion, mistake, or deception as to the source or sponsorship of those
services. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed.
Cir. 2000).
A. Standing and Priority
Opposer’s pleaded and proven registration is summarized below:
Registration No. 3046413 for the standard character mark
SAND for “Footwear and headwear; men’s, women’s
clothing, namely, beachwear and coverups; clothing belts;
blazers; blouses; coats; culottes; peddle-pushers; dresses;
gowns; dressing and night gowns; gloves; jackets; jeans;
jerseys; jumpers; jumpsuits; leggings; mittens; overalls;
overcoats; pants; pantsuits; pullovers; robes; scarves;
shawls; suits; skirts; shorts; slacks; sleepwear; trousers;
smocks; tuxedos; stockings; suit coats; suspenders; sweat
suits, pants, shorts and shirts; sweaters; vests; shirts; t-
shirts; tank tops; ties; tights; topcoats; tops; underclothes;
undergarments; underwear; camisoles; undershirts,
chemise; underpants; slips; socks; neckties; neckerchiefs;
bandanas; mufflers,” in International Class 25 and “Retail
store services, featuring footwear and headwear; men’s,
women’s clothing, namely, beachwear and cover-ups;
clothing belts; blazers; blouses; capes; coats; culottes;
peddle-pushers; dresses; gowns; dressing and night gowns;
gloves; jackets; jeans; jerseys; jumpers; jumpsuits;
leggings; mittens; overalls; overcoats; pants; pantsuits;
pullovers; robes; scarves; shawls; suits; skirts; shorts;
slacks; sleepwear; trousers; smocks; tuxedos; stockings;
suit coats; suspenders; sweat suits, pants, shorts and
shirts; sweaters; vests; shirts; t-shirts; tank tops; ties;
tights; topcoats; tops; underclothes; undergarments;
underwear; camisoles; undershirts, chemise; underpants;
slips; socks; neckties; neckerchiefs; bandanas; mufflers,” in
International Class 35, filed on July 16, 2004, issued on
January 17, 2006, Section 71 affidavit accepted on
February 1, 2016.
Because Opposer has made its pleaded registration properly of record, Opposer has
established its standing to oppose registration of Applicant’s mark and its priority is
Opposition No. 91237844

6

not in issue with respect to the marks and goods and services in the registration. See
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058
(Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999);
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982);
and King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974). Applicant does not dispute Opposer’s standing or priority. App.
Brief, 27 TTABVUE 7.
B. Likelihood of Confusion
Our likelihood of confusion determination under Section 2(d) 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 and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63
(Fed. Cir. 2019) (Board considers each DuPont relevant factor for which there is
evidence and argument). Two key considerations are the similarities between the
marks and the similarities between the goods and services. 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 (CCPA 1976); see also In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1340, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
Opposition No. 91237844

7

1. Relatedness of the Goods and Services, Channels of Trade, Classes of
Purchasers, and Conditions of Sale
We turn first to a consideration of the goods, channels of trade, classes of
purchasers and conditions of sale. We must make our determinations under these
factors based on the goods as they are recited in the registration and application. See
Octocom Sys. Inc. v. Houston Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods set forth
in the application regardless of what the record may reveal as to the particular nature
of an applicant’s goods, the particular channels of trade or the class of purchasers to
which sales of the goods are directed.”); In re Elbaum, 211 USPQ 639 (TTAB 1981).
The subject application and Opposer’s registration contain identical goods
(scarves, mufflers, dresses, skirts, sweaters, coats, jumpers, gloves, blouses) and
legally identical goods (Opposer’s “headwear” encompasses Applicant’s “caps”). We
also find Applicant’s “ponchos” related to Opposer’s various clothing items of
outerwear. It is sufficient for a finding of likelihood of confusion if relatedness is
established for any item encompassed by the identification of goods or services within
a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,
648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110
USPQ2d 1734, 1745 (TTAB 2014).
Because the goods are identical and legally identical and there are no limitations
as to channels of trade or classes of purchasers in either the application or Opposer’s
registration, we must presume that Applicant’s and Opposer’s goods will be sold in
Opposition No. 91237844

8

the same channels of trade and will be bought by the same classes of purchasers. See
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (TTAB 2012); Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987).
The same is true as to the conditions of sale and whether the goods are subject to
more careful purchasing decisions. Because there are no limitations as to type of
clothing, Opposer’s and Applicant’s arguments pertaining to high end or luxury
clothing items based on extrinsic evidence are unavailing. The nature and scope of a
party’s goods or services must be determined on the basis of the goods or services
recited in the application or registration. See, e.g., Stone Lion Capital Partners, L.P.
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (Board
must “give full sweep” to an identification of goods regardless of registrant’s actual
business). We must consider clothing items from all price points and styles, and base
our determination on the least sophisticated consumer of the identified goods. Stone
Lion, 110 USPQ2d at 1163 (cited in In re FCA US LLC, 126 USPQ2d 1214, 1222
(TTAB 2018) (“Board precedent requires our decision to be based on the least
sophisticated potential purchasers.”)). Because Applicant’s identification of goods is
unrestricted and because the clothing items in Opposer’s registration are also
unrestricted, we must assume that these goods are sold to ordinary purchasers who
exercise no more than ordinary care in their purchasing decisions. See In re Fabfitfun,
Inc., 127 USPQ2d 1670, 1673 (TTAB 2018) (no restriction of price in identifications
Opposition No. 91237844

9

required Board to consider degree of care exercised by purchasers of low-cost
cosmetics). Moreover, even though some consumers may take more care in their
clothing purchases, as noted above, the standard of care for purchasing the goods is
that of the least sophisticated purchaser. Alfacell Corp. v. Anticancer, Inc., 71
USPQ2d 1301, 1306 (TTAB 2004).
In view of the above, the similarity of the goods, the channels of trade, classes of
purchasers and conditions of sale favor a finding of likelihood of confusion.
2. Strength of the SAND mark
Before we compare the marks, we address the strength of Opposer’s mark. A
mark’s strength is measured both by its conceptual, or inherent, strength and its
commercial, or marketplace, strength. In re Chippendales USA, Inc., 622 F.3d 1346,
96 USPQ2d 1681, 1686 (Fed. Cir. 2010); see also Bell’s Brewery, Inc. v. Innovation
Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017) (“In determining strength of a mark,
we consider both inherent strength, based on the nature of the mark itself, and
commercial strength or recognition.”).
In the likelihood of confusion context, fame or commercial strength “varies along
a spectrum from very strong to very weak.” Joseph Phelps Vineyards, LLC v.
Fairmount Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017).
A famous mark is one that has extensive public recognition and renown. Bose Corp.
v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002).
Fame, if it exists, plays a dominant role in the likelihood of confusion analysis. Kenner
Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992). In view of the extreme deference that is accorded a famous mark in terms
Opposition No. 91237844

10

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 the party asserting that its
mark is famous to prove it clearly.
The commercial strength of a mark “may be measured indirectly, among other
things, by the volume of sales and advertising expenditures of the goods or services
traveling under the mark, and by the length of time those indicia of commercial
awareness have been evident.” Bose Corp. v. QSC Audio Prods., Inc., 63 USPQ2d at
1305. Conversely, commercial weakness as shown by “the number and nature of
similar marks in use on similar goods” serves to show that “customers have been
educated to distinguish between different such marks on the bases of minute
distinctions.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005).
Opposer argues that it has used the SAND mark “internationally for over 30
years” and that “Opposer is widely recognized as a leader in the fashion industry and
its SAND Mark is famous.” Opp. Brief, 25 TTABVUE 22. In support of this assertion,
Opposer submitted excerpts of advertisements in two magazines (Levy’s and John
Craig);17 excerpts of third-party websites showing the SAND brand displayed;
examples of unsolicited media coverage from Flaunt magazine;18 references to SAND
clothing in connection with clothing worn by celebrities; 19 and excerpts from its

17 21 TTABVUE 84-85, 123, 132; 22 TTABVUE 11, 96, 113, 128-31.
18 23 TTABVUE 342-50.
19 23 TTABVUE 342-50.
Opposition No. 91237844

11

website listing various fashion shows.20 Opposer concludes that its decades of
longstanding and continuous use and the evidence of the general public’s association
of the name with Opposer and recognition of the SAND mark supports a finding that
it is famous.
Opposer offered no testimony to establish its length of use, geographic scope,
amount of sales, or advertising expenditures.21 To establish the length and
geographic extent of use Opposer relies on excerpts from its website. These excerpts,
while admissible for what they show on their face, have little probative value on these
points because the content is hearsay and may not be taken for truth of the matter
asserted. The significance and probative value of the magazine excerpts is not clear.
There is no testimony as to how many views there are of the references or the
circulation for the magazines. There are excerpts from fashion magazines for 2014,
2016 and 2018, but there is nothing in the record to establish how frequently or for
how long the advertisements have run. The celebrity mentions shown on websites
that include the URL and date of run from 2014-2019 point to more prominent
exposure, but the record here is very sparse. In sum, Opposer has failed to show that
its SAND mark is so commercially strong for clothing that we should accord it a
broader scope of protection.

20 23 TTABVUE 15-16.
21 The declarations of use filed in the underlying applications for the pleaded registrations
are not testimony. Trademark Rule 2.122(b)(2), 37 C.F.R. § 2.122(b)(2) (“Statements made in
an affidavit or declaration in the file of an application for registration, or in the file of a
registration, are not testimony on behalf of the applicant or registrant.”).
Opposition No. 91237844

12

On the other hand, Applicant contends that Opposer’s mark is weak in view of
third-party registrations and uses in connection with clothing and clothing-related
goods. App. Brief, 27 TTABVUE 13. A mark’s commercial strength may be curtailed
by third-party use of similar marks with similar goods or services. Jack Wolfskin
Austrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015). Active third-
party registrations may be relevant to show that a mark or a portion of a mark is
descriptive, suggestive, or so common that the public will look to other elements to
distinguish the source of the goods or services. See, e.g., In re i.am.symbolic, 123
USPQ2d at 1751; Jack Wolfskin, 116 USPQ2d at 1136; Juice Generation, 115
USPQ2d at 1674-75.
Applicant points to several third-party registrations and examples of third-party
use of marks that include the word SAND for identical clothing items.
Mark Registration/Goods Use/Goods
SAND STUFF No. 5534535 for Caps being
headwear; coats; dresses;
footwear; hats; headbands;
headwear; jackets; scarves;
shirts; skirts; socks; sweaters; t-
shirts; ties as clothing; trousers;
undergarments 24 TTABVUE 8-
10
www.sandstuffshirts.com
T Shirts 24 TTABVUE 92
KICK SAND No. 5331527 for Beanies; hats;
jackets; shirts; sweatshirts;
swim suits; tops; hooded
sweatshirts; T-shirts 24
TTABVUE 12-14
www.kicksand.com tank
tops, hoodies, sweatshirts,
leggings 24 TTABVUE 96-
101
Opposition No. 91237844

13

Mark Registration/Goods Use/Goods
SAND CLOUD No. 5213877 for bikinis; T-shirts
24 TTABVUE 16-18
www.sandcloud.com Shirts,
hoodies, tank tops 24
TTABVUE 102-04
SOMEWHERE
IN THE SAND
No. 5160322 for Beanies;
Dresses; Hats; Jackets; Pants;
Shorts; Socks; Swimsuits; T-
shirts; Tank-tops; Hooded
pullovers 24 TTABVUE 20-23
https://saltwaterhippie.com
Casual clothing 24
TTABVUE 106
SAND ASSAULT No. 5136388 for Hats; Hoodies;
Shorts; T-shirts; Tank tops 24
TTABVUE 24-26
www.jerichospecialties.com
Caps, t-shirts 24
TTABVUE 108-10

No. 4732952 for clothing,
namely, tops, bottoms,
beachwear, swimwear, hats,
headbands, headwear, jackets,
jerseys, beanies 24 TTABVUE
28-31
https://sandlifeclothing.com
t-shirts, tank tops,
sweatshirts, hoodies, caps,
pants 24 TTABVUE 112-17
LOVE SAND No. 4570182 for hats; jackets;
pants; shirts; sweat shirts;
sweat shirts 24 TTABVUE 32-34

SAND JUNKIE No. 4050172 for clothing,
namely, shirts, tank tops, pants,
shorts, hats, visors, beanies,
sweatshirts and hooded
sweatshirts 24 TTABVUE 36-38

SUN ‘N’ SAND No. 4706081 for hats; sandals;
sarongs 24 TTABVUE 40-43
www.sunnsand.net Hats,
dresses 24 TTABVUE 118-
20
No. 4556731 for apparel,
namely, women’s, men’s and
children’s knit shirts, tee shirts,
woven shirts, hats, caps, fleece
tops, fleece pants, sweaters,
sweater vests, jackets, pajamas,
swim wear, footwear, including
golf shoes; golf pants and golf
shorts 24 TTABVUE 44-47
www.bermudasandsapparel
.com Tops, skirts, dresses,
24 TTABVUE 121-23
HAUTE SAND No. 4275101 for t-shirts 24
TTABVUE 48-51

SAND KNIT No. 3654019 for athletic
uniforms, warm-ups, sweat
suits; award and training
jackets 24 TTABVUE 52-55

Opposition No. 91237844

14

Mark Registration/Goods Use/Goods
GOT SAND? No. 2442832 for shirts, jackets,
pants and hats 24 TTABVUE
56-58

SAND STYLE No. 3057216 for clothing,
namely shirts, jackets, and hats
24 TTABVUE 60-62

SAND & SPIRIT No. 4719275 for clothing, inter
alia, tops and bottoms for
women; dress suits; dresses;
jackets; coats, trousers, vests,
sweatpants for women 24
TTABVUE 64-67

SAND ONER No. 5276240 for body suits; hats;
leggings; pants; shirts; socks;
sweaters; tank-tops; underwear;
bottoms; hoodies; hoods; jackets;
sports caps and hats; sports caps
and hats; tops 24 TTABVUE 68-
71

SKY AND SAND No. 5184429 for women’s
clothing, namely, shirts, dresses,
skirts, blouses 24 TTABVUE 72-
75

FRIENDLY
SAND
No. 2168124 for footwear and
clothing, namely, shirts, hats,
shorts, pants, dresses, coats, and
jackets 24 TTABVUE 76-78

SANDEVER No. 4374090 for clothing, inter
alia, shirts, pants, tank tops,
pullovers, sweatshirts, trousers,
shorts, jackets, coats, tee-shirts,
belts, gloves, caps 24 TTABVUE
81-84

SANDUSA No. 5084170 for apparel, inter
alia, t-shirts, jackets, pants,
pajamas, sandals, shoes,
sweaters, shirts, shorts, shocks,
gloves, hats 24 TTABVUE 87-90

BLUE SAND
TEXTILES
www.thebridebox.com
Custom clothing 24
TTABVUE 125-26
SANDOVAL www.bing.com/shop?q=san
doval t-shirts, hoodies,
Opposition No. 91237844

15

Mark Registration/Goods Use/Goods
jackets, sweatshirts,
pullovers, 24 TTABVUE
128-32
NOBLE SANDS www.noblesands.com
Dresses 24 TTABVUE 134-
36
ROCOCO SAND www.bloomingdales.com
Dresses, 24 TTABVUE 138
www.saksfifthavenue.com
dresses 24 TTABVUE 141-
44

In addition, Applicant submitted examples of third-party websites offering
clothing items for sale using the word “sand” to describe the color of the item, as
shown below:22

Twelve of the twenty examples of third-party trademark use and registration have
a similar structure to Applicant’s mark with the letters forming SAND at the
beginning and a second word or lettering. The remaining examples are not as
probative but they add to the weight of evidence showing the third-party use of the

22 https://us.marinarinaldi.com, https://naadam.co 24 TTABVUE 148-51.
Opposition No. 91237844

16

word “sand” in clothing marks. This evidence demonstrates several third parties
using the word SAND in their marks in connection with identical clothing items, third
parties registering marks that include SAND for clothing items, and third-party
retailers using the word “sand” descriptively to indicate the color of the clothing item.
The examples of use in the record point to consumer exposure to both descriptive uses
and dilutive uses of the word “sand.” Juice Generation, 115 USPQ2d at 1674
(referring to evidence of “a fair number” of third-party marks). Based on this record,
the SAND mark is somewhat conceptually weak and commercially diluted when used
in connection with clothing.
3. Similarity of the Marks
We now consider the similarity or dissimilarity of Applicant’s mark
and Opposer’s mark SAND when compared in their
entireties in terms of appearance, sound, connotation and commercial impression. In
re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir. 2018).
“Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re
White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)). “The proper test is not a side-
by-side comparison of the marks, but instead whether the marks are sufficiently
similar in terms of their commercial impression such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012) (quotation omitted). The marks must be considered in their entireties, but “‘in
Opposition No. 91237844

17

articulating reasons for reaching a conclusion on the issue 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
consideration of the marks in their entireties.”’ Detroit Athletic, 128 USPQ2d at 1051
(quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)).
Finally, based on the findings above, we consider the marks within the context of the
several third-party registrations and uses in the marketplace.
Opposer argues that Applicant’s mark wholly incorporates Opposer’s mark SAND,
that that term is the dominant portion of both marks, and that the word portion of
Applicant’s mark dominates its design element. Opp. Brief, 25 TTABVUE 19.
Opposer characterizes the “RIVER” portion of Applicant’s mark as “non-distinctive”
and asserts that it “does not aid to distinguish between the marks.” Id. Applicant
points out that Opposer has presented no evidence of consumer impressions of the
marks and the “unsubstantiated statements regarding the alleged impression created
by the marks are insufficient to carry Opposer’s burden of proof.” App. Brief, 27
TTABVUE 12.
While both marks contain the word SAND, the similarity ends there. The word
portion in Applicant’s mark SANDRIVER in this stylized form,
, has all of the letters in lower case and in about the
same height. It may be viewed by apparel consumers in various ways: as one word,
as SAN combined with the word DRIVER, as SAND DRIVER telescoping the letter
D, or as SAND RIVER. Opposer relies on the possibility that consumers will perceive
Opposition No. 91237844

18

SAND RIVER, discard the word RIVER and arrive at Opposer’s mark SAND. To the
extent consumers separate the letters to form the words SAND RIVER, this does not
aid in finding similarity. Opposer’s mark connotes simply the word “sand” or suggests
a “sand” color scheme. Applicant’s mark, if interpreted as “sand river,” evokes a place,
possibly where the goat pictured in the mark grazes.23 Champagne Louis Roederer,
S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998)
(CRISTAL not confusingly similar to CRYSTAL CREEK both for wine (including
champagne) because the “former suggested the clarity of the wine within the bottle
or the glass of which the bottle itself was made, the later suggested ‘a very clear …
creek or stream”).
We recognize that “when marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a conclusion of likely confusion
declines,” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992); but given the dissimilarities in appearance,
sound, connotation and commercial impression, and the somewhat weak nature of
the word SAND in connection with clothing, we find the marks are not confusingly
similar when used on clothing.
4. Balancing of the Factors
We have considered all of the evidence pertaining to the relevant DuPont factors,
as well as the parties’ arguments with respect thereto. In balancing the relevant
factors, we find the differences between the marks sufficient to avoid likely confusion

23 Although described as “sheep” in the application, Ms. Guo refers to the design as a “stylized
grassland goat.” Guo Decl. ¶ 4, 24 TTABVUE 232.
Opposition No. 91237844

19

despite the identical goods and trade channels, in particular given the differences in
connotation and overall commercial impression, and the relative weakness of the
shared word “sand” as used on clothing. “No mechanical rule determines likelihood
of confusion, and each case requires weighing of the facts and circumstances of the
particular mark.” In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed.
Cir. 2010) (citing Century 21 v. Century Life, 23 USPQ2d at 1698)). Moreover, even
absent the findings as to the weakness of the term “sand” in connection with clothing,
the dissimilarities in the marks obviates likely confusion. Kellogg Co. v. Pack’em
Enters., 951 F.2d 330, 332-33, 21 USPQ2d 1142, 1144-45 (Fed. Cir. 1991) (“We know
of no reason why, in a particular case, a single duPont factor may not be dispositive”);
see also Champagne Louis Roederer v. Delicato Vineyards, 47 USPQ2d at 1460, 61.
III. Conclusion
Because Opposer has not shown, by a preponderance of the evidence, the existence
of a likelihood of confusion, Opposer has not established its claim under Section 2(d).
Decision: The opposition is dismissed.