Seaside Community Development Corp.v.Jessica Whitman

Trademark Trial and Appeal Board

Jun 25, 2014

No. 91200093 (T.T.A.B. Jun. 25, 2014)

Mailed: June 25, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Seaside Community Development Corp.
v.
Jessica Whitman
_____

Opposition No. 91200093
_____

Rochelle D. Alpert of Morgan Lewis Bockius LLP, for Seaside Community
Development Corporation.

Jessica Whitman, pro se.
_____

Before Mermelstein, Ritchie, and Hightower, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On August 16, 2010, Jessica Whitman (“Applicant”) applied to register
SEASIDE ROYALTY, in standard character form, for “blouses; dresses;
jackets; pants; shirts; shorts; skirts; swim wear,” in International Class 25.”1
On June 1, 2011, Seaside Community Development Corporation (“Opposer”),
filed an opposition to the registration of Applicant’s mark on the ground that

1 Application Serial No. 85108645, filed August 16, 2010, alleging a bona fide intent
to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91200093
2
Applicant’s mark is likely to cause confusion with Opposer’s marks. Opposer
asserted in its Notice of Opposition that it owns Registration No. 1877936 for
SEASIDE, in typed drawing form,2 for, among other things, “architectural
design services and retail gift, book, clothing and shoe store services” in
International Class 42;3 Registration No. 3801151 for SEASIDE, in standard
character form, for “coffee,” in International Class 30;4 and Registration No.
3846308 for THE SEASIDE STYLE, in standard character form, for “on-line
retail store services featuring gifts, housewares, home furnishings, clothing,
shoes and sundries; promoting the goods and services of others via a global
computer network,” in International Class 35.5
In her Answer, Applicant made the following relevant admissions:
1. “Applicant admits that the name SEASIDE has been used for the past
thirty years, primarily in the area of real estate development but also
to include retail store services, coffee, other goods and clothing to a
minor extent.” (Answer at para 1);
2. “Applicant admits that the name SEASIDE was trademarked some
time ago, prior to applicant’s filing for the trademark for SEASIDE
ROYALTY.” (Id. at para 2);

2 “Prior to November 2, 2003, ‘standard character’ drawings were known as ‘typed’
drawings. The mark on a typed drawing was required to be typed entirely in capital
letters. A typed mark is the legal equivalent of a standard character mark.” TMEP
§ 807.03(i) (April 2014).
3 Registered February 7, 1995. Section 8 and 15 affidavits accepted and
acknowledged. Renewed. This registration also has services in other classes.
Registered with a claim of acquired distinctiveness “in whole.”
4 Registered June 8, 2010.
Opposition No. 91200093
3
3. “Applicant admits that THE SEASIDE STYLE was also trademarked
prior to applicant’s filing for the trademark for SEASIDE ROYALTY”
(Id. at para. 3);
4. “Applicant admits that Seaside has owned and used the marks
SEASIDE and THE SEASIDE STYLE well prior to applicant filing for
her desired mark.” (Id. at para 5); and
5. “Applicant admits that SEASIDE has expended substantial time and
effort in promoting the marks SEASIDE and THE SEASIDE STYLE
and in developing goodwill for those names.” (Id. at para 6).
Without specifically claiming any affirmative defenses, and without filing
any counterclaims, the Answer further states: “Seaside is a generic word that
is common among trademarks and business names.” (Id. at para 14). The
Answer denies that there is a likelihood of confusion. Id.
Both parties filed briefs, and Opposer filed a reply brief.
The Record and Evidentiary Issues
The record consists of the pleadings; the file of the involved application;
and Opposer’s Notice of Reliance on status and title copies of its pleaded
trademark registrations as well as excerpts from printed publications, third-
party registrations submitted to show the relatedness of the goods and
services at issue in this proceeding, discovery responses, Internet evidence of
Opposer’s use of its marks, an Office Action from another application, and
others of Opposer’s registrations including THE SEASIDE TIMES, SEASIDE

5 Registered September 7, 2010.
Opposition No. 91200093
4
COTTAGE RENTAL AGENCY, THE MERCHANTS OF SEASIDE, and
SEASIDE FARMERS MARKET.
On the last day of its testimony period, Applicant served on Opposer, but
did not file, a Notice of Reliance. Opposer filed a Motion to Strike, objecting to
any consideration of the unfiled documents contained therein as untimely
and in large part inappropriate material for notice of reliance. Applicant filed
an opposition to the Motion to Strike, which included the content of the
Notice of Reliance, and which the Board construed as a motion to reopen
Applicant’s testimony period. The Board denied the motion in an Order dated
October 26, 2013, finding that Applicant’s stated reason of misunderstanding
the Board’s prior order did not constitute the required “excusable neglect.”
Although Applicant appears to challenge that ruling in her brief, we have no
reason to revisit the issue.6
Priority and Standing
Standing is a threshold issue that must be proven in every inter partes
case. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982) ("The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely
because of the allegations in its [pleading]."). To establish standing in an

6 We add here that, as pointed out by Opposer in its Motion to Strike, the vast
majority of the documents included by Applicant were inappropriate material for
notice of reliance or were otherwise improperly submitted. Furthermore, even had
we considered the portion of Applicant’s Notice of Reliance that did not fall into the
latter categories, it would not have changed our decision in this proceeding.

Opposition No. 91200093
5
opposition, opposer must show both “a real interest in the proceedings as well
as a ‘reasonable’ basis for his belief of damage.” See Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
As a result of Opposer’s submission of status and title copies of its
Registration Nos. 1877936 (SEASIDE), 3801151 (SEASIDE) and 3846308
(THE SEASIDE STYLE), Opposer has established its standing. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
Cir. 2000). Likewise, these registrations make it unnecessary for opposer to
show priority with respect to the marks and goods set out in the
registrations. King Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974). We note further that priority (to the extent it is
relevant) was not disputed, and was admitted, by Applicant. See Answer at
Para. 5.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
relevant, probative evidence in the record related to a likelihood of confusion.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). In any likelihood of confusion analysis, two key
Opposition No. 91200093
6
considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard
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 the du Pont factors for which there is relevant argument and
evidence. For purposes of our likelihood of confusion analysis, we focus on the
most relevant pleaded registration, Registration No. 1877936 (SEASIDE).
We find this mark to be the most relevant of Opposer’s pleaded registrations
for our du Pont analysis. Accordingly, if we find a likelihood of confusion as to
this pleaded registration, we need not find it as to the others. On the other
hand, if we don’t reach that conclusion, we would not find it as to the other
pleaded registrations either. See In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).
The Goods and Channels of Trade
The recitation of services covered by Opposer’s Registration No.
1877936 for SEASIDE includes “architectural design services and retail gift,
book, clothing and shoe store services,” This includes retail services in the
field of clothing. Applicant’s identification of goods includes various clothing
items, namely “blouses; dresses; jackets; pants; shirts; shorts; skirts; swim
wear.” Retail store services have frequently been found to be related to goods
sold by those retail stores. See, e.g., In re Hyper Shoppes (Ohio), Inc., 837
Opposition No. 91200093
7
F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGGS for retail grocery and
general merchandise store services likely to be confused with BIGGS for
furniture); The Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629,
1640 (TTAB 2007) (women’s clothing stores and cosmetics found to be
related); In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (“It is clear that
consumers would be likely to believe that jewelry on the one hand and retail
stores selling jewelry on the other emanate from or are sponsored by the
same source if such goods and services are sold under the same or similar
marks.”); In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992) (“As we
have said before there is no question that store services and the goods which
may be sold in that store are related goods and services …”); see also 4 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
§ 24:25 (4th ed. updated June 2014) (“Where the services consist of retail sales
services, likelihood of confusion is found when another mark is used on goods
which are commonly sold through such a retail outlet.”).
Additionally, Opposer submitted evidence of third-party registrations that
include on the one hand retail store services featuring clothing, and on the
other hand items of clothing included in applicant’s identification of goods.
These third-party registrations serve to suggest that the goods are of a type
which may emanate from a single source under a single mark. See In re
Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). In short, because
Opposition No. 91200093
8
Opposer’s identification encompasses the retail sale of Applicant’s goods, this
factor weighs in favor of finding a likelihood of confusion.
As for the channels of trade, Applicant’s and Opposer’s identifications of
goods and services include no limitations as to channels of trade or classes of
consumers, and their goods and services are therefore presumed to move in
all normal channels of trade for those goods and services and to be available
to all classes of consumers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637
F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC,
80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640
(TTAB 1981); see also Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“Even assuming
there is no overlap between Stone Lion’s and Lion’s current customers, the
Board correctly declined to look beyond the application and registered marks
at issue. An application with ‘no restriction on trade channels’ cannot be
‘narrowed by testimony that the applicant’s use is, in fact, restricted to a
particular class of purchasers.’”). Accordingly, we must presume that
Applicant’s clothing is sold through retail outlets like Opposer’s, and to the
same consumers.
Finally, Applicant admits in the Answer that Opposer both offers clothing
retail services and sells clothing under the SEASIDE mark, stating:
“Applicant admits that the name SEASIDE has been used for the past thirty
years, primarily in the area of real estate development but also to include
Opposition No. 91200093
9
retail store services, coffee, other goods and clothing to a minor extent.”
(Answer at para 1). This factor therefore also weighs in favor of finding a
likelihood of confusion.
The Marks
We consider and compare the appearance, sound, connotation and
commercial impression of the marks in their entireties. Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). In comparing the marks, we are
mindful that the test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial impression that
confusion as to the source of the goods offered under the respective marks is
likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the
recollection of the average consumer, who retains a general rather than
specific impression of the marks. Winnebago Industries, Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Analyzing the sight and sound of the marks in their entireties, we find
that Applicant’s SEASIDE ROYALTY mark consists of, and incorporates in
Opposition No. 91200093
10
full, the term SEASIDE, which constitutes the entirety of Opposer’s mark in
Registration No. 1877936. Applicant argues that the addition of the term
“ROYALTY” changes the appearance, sound, and commercial impression of
the mark significantly. However, as our precedent dictates “it is often the
first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered.” Presto Products, Inc. v. Nice-Pak Products Inc.,
9 USPQ2d 1895, 1897 (TTAB 1988); see also Palm Bay Imports, 73 USPQ2d
at 1692.
Applicant asserts in her Answer that “Seaside is a generic word that is
common among trademarks and business names.” (Answer at Para. 14).
Applicant did not bring a counterclaim on genericness or any other ground.
Nevertheless, we understand Applicant to be arguing that the term
“SEASIDE” as applied to Opposer’s pleaded goods and services is weak. As
discussed above, Applicant’s Notice of Reliance is not of record and there is
no evidence of third-party use of the term SEASIDE. While we accept that
the term may indeed be suggestive for some clothing items, including those
worn by the sea, it is not so weak that it is not entitled to protection against
Applicant’s mark for goods closely related to Opposer’s services. We find
sufficient similarity between SEASIDE ROYALTY and SEASIDE in sight,
sound, and commercial impression that this du Pont factor weighs in favor of
finding likelihood of confusion.

Opposition No. 91200093
11
Variety of Goods and Services
Given Opposer’s significant number of marks employing the term
SEASIDE, for a variety of goods and services, we think it appropriate to
invoke the ninth du Pont factor. One of the circumstances mentioned in the
ninth du Pont factor is the variety of goods on which a prior mark is used.
See, e.g., In re Wilson, 57 USPQ2d 1863, 1867 (TTAB 2001) (use on a wide
variety of goods weighs in favor of likelihood of confusion); In re Hitachi
High-Technologies Corp., 109 USPQ2d 1769, 1774 (TTAB 2014) (“While we
have previously applied this factor to assess the variety of goods used under
the same mark, we think it appropriate in the circumstances presented here
to note the variety of chromatography-related goods offered under Optimize’s
various OPTI-formative marks.”); Time Warner Entertainment Co. v. Jones,
65 USPQ2d 1650, 1663 (TTAB 2002) (“We find that the ninth du Pont factor
(the variety of goods on which a mark is used) weighs in opposr’s favor. The
evidence establishes that opposer has licensed its Road Runner marks for use
on a large number of diverse products.”). This factor weighs in favor of
finding a likelihood of confusion.
Fame
Fame, where it exists, plays a dominant role in cases featuring a famous
or strong mark. Kenner Parker Toys Inc. v. Rose Arts Industries, Inc., 963
F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Famous marks are accorded
more protection precisely because they are more likely to be remembered and
Opposition No. 91200093
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associated in the public mind than a weaker mark. Id. A famous mark is one
“with extensive public recognition and renown.” Id. See also Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73
USPQ2d at 1694.
Opposer asserts in its Notice of Opposition that it has used the SEASIDE
mark for “thirty years” (Notice of Opposition at para. 1) and that it has
“expended substantial time and effort in promoting its SEASIDE® and THE
SEASIDE STYLE® marks.” (Id. at para. 6). Applicant in her Answer
admitted that “the name SEASIDE has been used for the past thirty years”
(Answer at para. 1) and that “SEASIDE has expended substantial time and
effort in promoting the marks SEASIDE and THE SEASIDE STYLE in
developing goodwill for those names.” (Id. at para. 6). We do not construe this
as an admission of fame.
Opposer also submitted with its Notice of Reliance evidence of news
articles dated between 1990 and 2013 from such publications as The New
York Times, USA Today, and Time Magazine discussing Opposer and its
Seaside community. However, the smattering of articles is insufficient for a
finding of fame. Furthermore, to the extent there has been any showing that
Opposer’s SEASIDE mark is well known, it is for real estate services, not for
retail clothing and on-line retail clothing services. Accordingly, the fifth du
Pont factor is neutral.

Opposition No. 91200093
13
Consumer Sophistication
Applicant urges us to consider the consumer sophistication and degree of
purchaser care likely to be exercised for the goods at issue in this proceeding,
arguing that she “seeks to manufacture and sell high-end clothing.” (Appl’s
brief at 2). In this regard, as with the other du Pont factors, we are bound by
the parties’ respective identifications of goods. Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods
set forth in the application regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular channels of trade or
the class of purchasers to which the sales of goods are directed.”) (citations
omitted).
While both Applicant’s and Opposer’s clothing goods and services may be
sold to knowledgeable, sophisticated consumers, in view of the nature of the
goods and the lack of limitations in the class of purchasers, we must presume
that they would also be purchased by the general consumer, including
ordinary purchasers of such goods and services. There is no evidence that
ordinary purchasers of clothing or retail services in the field of clothing
exercise a heightened degree of care in such transactions. We deem this
fourth du Pont factor to be neutral.
Conclusion
Opposition No. 91200093
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Considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, in comparing applicant’s SEASIDE ROYALTY
mark to Opposer’s Registration No. 1877936 (SEASIDE), we conclude that
the goods and services are related, and are likely to be marketed through the
same channels of trade to generally unsophisticated consumers, the marks
are similar, and Opposer has shown that it owns a number of SEASIDE
marks for other goods and services. Accordingly, we find a likelihood of
confusion with this registration for “clothing and shoe store services.”7
DECISION: The opposition is sustained as to Registration No. 1877936.

7 In view of our finding, there is no need for us to consider
likelihood of confusion as to Opposer’s other pleaded marks.