Sisco Textiles N.V.v.Paul Armenta

Trademark Trial and Appeal Board

Jan 26, 2021

91241346 (T.T.A.B. Jan. 26, 2021)

Mailed: January 26, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Sisco Textiles N.V.
v.
Paul Armenta
_____

Opposition No. 91241346
_____

Rochelle D. Alpert, Seth A. Rappaport, and Sharon R. Smith of Morgan, Lewis &
Bockius LLP for Sisco Textiles N.V.

Paul Armenta, pro se.
_____

Before Mermelstein, Bergsman and Greenbaum, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Paul Armenta (Applicant) seeks registration on the Principal Register for two
letter “D” marks (stylized), reproduced below, both for “clothing, namely, bottoms,
hoodies, jackets, shirts, sweatshirts, tank tops; headwear; footwear,” in International
Class 25.

This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
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1

The description of the mark provides “[t]he mark consists of a stylized ‘D’ with a
“person riding a skateboard on the inside of the ‘D.’” Applicant does not claim color
as a feature of the mark.
2

The description of the mark provides “[t]he mark consists of a stylized ‘D’ with a
person riding a surfboard on the inside of the ‘D.’” Applicant does not claim color as a
feature of the mark.

1 Serial No. 87601900 filed September 8, 2017, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in
commerce.
2 Serial No. 87601907 filed September 8, 2017, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in
commerce.
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Sisco Textiles N.V. (Opposer) opposes the registration of Applicant’s marks under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s
marks so resemble Opposer’s registered marks consisting of or comprising a wave
design and a wave design based on common law use for clothing as to be likely to
cause confusion. Opposer pleaded ownership of the registered marks listed below:3
● Registration No. 2204582 for the mark O’NEIL and design, reproduced below,
for, inter alia, “wetsuits, hoods for water sports, wearing apparel, namely, shirts,
pants, jackets, hats, caps and skiwear, namely, pants, jackets,” in International Class
25.4

The description of the mark provides “[t]he consists, in part, of a wave of water above
the stylized wording of ‘O’NEILL.’”
● Registration No. 4348476 for the design reproduced below for, inter alia,
“clothing, namely, shirts, t-shirts, jackets, shorts, board shorts, swimwear, swimming
trunks, swimsuits, sweatshirts, sweaters, socks, scarves; footwear; sports shoes;

3 Opposer attached to the Notice of Opposition copies of the registrations printed from the
USPTO’s Trademark Status and Document Retrieval system (TSDR) showing the then-
current status of and title to the registrations thereby making them of record pursuant to
Trademark Rule, 2.122(d)(1), 37 C.F.R. § 2.122(d)(1).
4 Registered November 17, 1998; first renewal. The USPTO cancelled this registration
January 25, 2021 because Opposer failed to file a second Section 9 renewal application and
Section 8 declaration of use. We will not give this registration any further consideration.
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booties for water sports; oriental slippers; slippers; sandals; headgear, namely, caps,
hats; skiwear, namely, coats, jackets, pants, gloves; wetsuits, dry suits, wetsuit boots
and gloves for surfing, windsurfing and water skiing, as well as for other water sports;
rash guards,” in International Class 25.5

The description of the mark provides “[t]he mark consists of a design of a man on a
surfboard with both arms raised up within two stylized waves.”
Opposer also alleged common law use of the wave design reproduced below for,
inter alia, apparel, swimwear, wetsuits, athletic gear, and footwear.

Applicant, in its Answer, denied the salient allegations in the Notice of Opposition.

5 Registered June 11, 2013; partial Sections 71 and 15 declaration accepted and
acknowledged.
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I. The record
The record includes the pleadings,6 and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s applications for its stylized “D”
trademarks. In addition, the parties introduced the evidence listed below:
A. Opposer’s testimony and evidence.

1. Notice of reliance on a copy of Registration No. 4348476 printed from
the USPTO’s TSDR system showing the current status of and title to the
registration;7
2. Notice of reliance on a copy of the specimen of use supporting the
combined Sections 71 and 15 declaration of use and incontestability for
the mark in Registration No. 4348476;8
3. Notice of reliance on an excerpt from Opposer’s website (us.oneill.com);9
4. Notice of reliance on an excerpt from Opposer’s Instagram account
(instagram.com/oneillusa/);10
5. Notice of reliance on an excerpt from Opposer’s Facebook account
(facebook.com/ONEILL/);11

6 Therefore, it was not necessary for Applicant to introduce a copy of the Notice of Opposition
at 32 TTABVUE 7-28.
7 26 TTABVUE 20-28.
8 26 TTABVUE 30-67.
9 26 TTABVUE 69-185.
10 26 TTABVUE 187-193.
11 26 TTABVUE 195-215.
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6. Notice of reliance on an excerpt from Opposer’s YouTube page
(https//www.youtube.com);12
7. Notice of reliance on excerpts from Opposer’s blog
(us.oneill.com/blogs/news);13
8. Notice of reliance on excerpts from third-party websites referring to
Opposer;14
9. Notice of reliance on excerpts from third-party websites advertising
Opposer’s products and displaying Opposer’s wave design;15
10. Notice of reliance on an excerpt from Applicant’s website
(demandsurfandskate.com);16 and
11. Testimony declaration of Benoit Nasr, O’Neill Brand S.a.r.l.’s
International Brand Director.17

12 26 TTABVUE 217-279. Opposer provided links to 16 videos stating, “These videos are
publicly available on O’Neill’s YouTube channel.” 26 TTABVUE 5-6. Providing only a web
address or a hyperlink without the material attached is not sufficient to introduce it into the
record. TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1789 n.15 (TTAB 2018) (“The
Board does not accept Internet links as a substitute for submission of a copy of the resulting
page.”) (citing In re Olin Corp., 124 USPQ2d 1327, 1332 n.15 (TTAB 2017) (“Because the
information displayed at a link’s Internet address can be changed or deleted, merely
providing a link to a website is insufficient to make information from that site of record.”)).
Therefore, the information in the referenced videos is not of record.
13 26 TTABVUE 281-318.
14 26 TTABVUE 320-435 and 27 TTABVUE 3-144.
15 27 TTABVUE 146-384 and 28 TTABVUE 3-401.
16 28 TTABVUE 403-408.
17 29 TTABVUE. O’Neill Brand S.a.r.l. “is an entity, which is affiliated with the owner of the
trademarks including the logos at issue here.” Nasr Decl. ¶1 (29 TTABVUE 3).
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B. Applicant’s testimony and evidence.

1. Notice of reliance on a partial printout of Applicant’s Registration No.
5426068 for the mark D DEMAND and design printed from TSDR;18
2. Notice of reliance on excerpts from Applicant’s website
(demandsurfandskate.com);19 and
3. Applicant’s testimony declaration.20
II. Entitlement to a statutory cause of action.
Even though Applicant does not contest it, Opposer’s entitlement to a statutory
cause of action, formerly referred to as “standing,”21 is a threshold issue in every inter
partes case. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277
(Fed. Cir. 2020); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC,
965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir. 2020); Empresa Cubana Del Tabaco v.
Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish
entitlement to a statutory cause of action, a plaintiff must demonstrate: (i) an interest
falling within the zone of interests protected by the statute and (ii) proximate
causation. Corcamore, 2020 USPQ2d 11277 at *4. See also Empresa Cubana,
111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed.

18 32 TTABVUE 6.
19 32 TTABVUE 29-31.
20 32 TTABVUE 32-61.
21 Our decisions have previously analyzed the requirements of §§ 1063 and 1064 under the
rubric of “standing.” We now refer to this inquiry as entitlement to a statutory cause of action.
Despite the change in nomenclature, our prior decisions and those of the Federal Circuit
interpreting “standing” under §§ 1063 and 1064 remain applicable.
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Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
189 (TTAB 1982).
Because Opposer has properly introduced into evidence a copy of its pleaded
registration, Registration No. 4348476, showing the registration’s current status and
title, Opposer has established its entitlement to a statutory cause of action.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d
1030, 1032 (TTAB 2016) (standing established based on pleaded registration made of
record).
III. Priority
A. Opposer’s pleaded registrations.
Because Opposer’s pleaded Registration No. 4348476 is properly of record priority
is not an issue as to the mark and goods covered by that registration. See Mini Melts,
Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d. 1400, 182 USPQ 108, 110 (CCPA
1974)).
B. Opposer’s common law rights.
As noted above, Opposer pleaded common law rights in a wave design, reproduced
below, for, inter alia, apparel, swimwear, wetsuits, athletic gear, and footwear.

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Applicant filed intent-to-use applications on September 8, 2017. The filing date of
its applications may serve as Applicant’s constructive date of first use. See Section
7(c) of the Trademark Act, 15 U.S.C. § 1057(c) (“Contingent on the registration of a
mark on the principal register provided by this chapter, the filing of the application
to register such mark shall constitute constructive use of the mark, conferring a right
of priority, nationwide in effect, on or in connection with the goods or services
specified in the registration.”). See also Central Garden & Pet Co. v. Doskocil Mfg.
Co., Inc., 108 USPQ2d 1134, 1140 (TTAB 2013) (applicant is entitled to rely on the
constructive use established by the filing date of its application); Zirco Corp. v. Am.
Tel. & Tel. Co., 21 USPQ2d 1542, 1544 (TTAB 1991) (an applicant may rely on the
filing date of its intent-to-use application as its constructive date of first use).
Benoit Nasr, International Brand Director of O’Neill Brand S.a.r.l., an affiliate of
Opposer, testified Opposer has been using wave design marks in connection with
apparel for “decades.”
Opposer’s Wave Design Marks were first used by Opposer
and its predecessors and authorized business partners,
sponsors, and/or licensees decades ago and have been used
by Opposer and its predecessors and authorized business
partners, sponsors, and/or licensees continuously since in
the United States on and in connection with its products
and related services, including retail stores where its
apparel, sunglasses, surf wear, bags, and footwear are
offered. Attached hereto as Exhibit A are true and correct
copies of images of products bearing the Opposer’s Wave
Design Marks over the years.22

22 Basr Testimony Decl. ¶7 (29 TTABVUE 5).
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Nasr Exhibit A, reproduced below, includes the cover of Opposer’s Fall 2010
Sportswear Catalog displaying the wave design:23

However, Opposer did not provide any pages showing the mark used in connection
with any specific products.
On the other hand, Opposer’s Fall 2012 and Spring 2013 catalogues specifically
show the wave design used in connection with t-shirts.24 An excerpt from Opposer’s

23 29 TTABVUE 47.
24 29 TTABVUE 53-54 and 58-59.
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website shows the wave design used in connection with the sale of hats in September
2016.25
To the extent it relies on common law rights, Opposer must prove its priority by a
preponderance of the evidence. See Giersch v. Scripps Networks Inc., 90 USPQ2d
1020, 1023 (TTAB 2009); Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953,
1960 (TTAB 2008). Where, as here, there is little documentary evidence, oral
testimony should be clear and specific. See Nat’l Blank Book Co. v. Leather Crafted
Prods., Inc., 218 USPQ 826, 828 (TTAB 1993) (oral testimony may be sufficient to
prove the first use of a party’s mark when it is based on personal knowledge, it is
clear and convincing, and it has not be contradicted); Liqwacon Corp. v. Browning-
Ferris Indus., Inc., 203 USPQ 305, 316 (TTAB 1979) (oral testimony may be sufficient
to establish both prior use and continuous use when the testimony is proffered by a
witness with knowledge of the facts and the testimony is clear, convincing, consistent,
and sufficiently circumstantial to convince the Board of its probative value); GAF
Corp. v. Anatox Analytical Servs., Inc., 192 USPQ 576, 577 (TTAB 1976) (oral
testimony may establish prior use when the testimony is clear, consistent, convincing,
and uncontradicted).
Mr. Nasr’s testimony does not clearly indicate when Opposer began using its wave
design trademark or on what products. He testified that Opposer used the wave mark
on apparel and footwear decades ago. While the implication is that Opposer began
using the wave design many years before Applicant filed its intent-to-use application,

25 29 TTABVUE 42.
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Mr. Nasr did not specify any particular date or identify any particular products.
Therefore, after carefully reviewing the record, we find that Opposer used the wave
design in connection with t-shirts as of Fall 2012 and in connection with hats as of
September 2016 and has proven priority only as to those products with respect to its
unregistered wave design mark.
IV. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing on the likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,
113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen
DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) and DuPont,
177 USPQ at 567). “Not all DuPont factors are relevant in each case, and the weight
afforded to each factor depends on the circumstances. Any single factor may control
a particular case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d
994, 2020 USPQ2d 10341, *3 (Fed. Cir. 2020) (citing Dixie Rests., 41 USPQ2d at 1406-
07).
“Each case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA
1973). In any likelihood of confusion analysis, two key considerations are the
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similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”). 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 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. Similarity or dissimilarity and nature of the goods.
Applicant is seeking to register its marks for “clothing, namely, bottoms, hoodies,
jackets, shirts, sweatshirts, tank tops; headwear; footwear.”
As noted above, the description of goods in Opposer’s Registration No. 4348476 for
a wave design is:
Clothing, namely, shirts, t-shirts, jackets, shorts, board
shorts, swimwear, swimming trunks, swimsuits,
sweatshirts, sweaters, socks, scarves; footwear; sports
shoes; booties for water sports; oriental slippers; slippers;
sandals; headgear, namely, caps, hats; skiwear, namely,
coats, jackets, pants, gloves; wetsuits, dry suits, wetsuit
boots and gloves for surfing, windsurfing and water skiing,
as well as for other water sports; rash guards.
Applicant’s description of goods and Opposer’s description of goods both include
shirts, jackets, sweatshirts, footwear, and headwear or headgear, namely, caps and
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hats. Therefore, the description of goods in Applicant’s application and Opposer’s
Registration No. 4348476 are in part identical.
Opposer has established use of its common law wave design in connection with t-
shirts and hats. Applicant’s shirts is broad enough to encompass Opposer’s t-shirts
and Applicant’s headwear is broad enough to encompass Opposer’s hats. Therefore,
Applicant’s description of goods and Opposer’s t-shirts and hats are in part legally
identical.
Under this DuPont factor, Opposer need not prove, and we need not find,
similarity as to each product listed in the description of goods. It is sufficient for us
to find the parties’ goods are related if any item encompassed by the identification of
goods in a particular class in the application and registration related. Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d, 866 F.3d
1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re Aquamar, Inc., 115 USPQ2d 1122,
1126 n.5 (TTAB 2015) (“it is sufficient for finding a likelihood of confusion if
relatedness is established for any item encompassed by the identification of goods
within a particular class in the application.”); Inter IKEA Sys. B.V. v. Akea, LLC,
110 USPQ2d 1734, 1745 (TTAB 2014).
Applicant does not contest that the goods are in part identical.
B. Established, likely-to-continue channels of trade and classes of
consumers.
Because the clothing items described in the applications and Opposer’s pleaded
registration are in part identical, we presume that the channels of trade and classes
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of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (identical goods are presumed to travel in same channels of
trade to same class of purchasers) (cited in Cai v. Diamond Hong, Inc., 901 F.3d 1367,
127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (“With respect to similarity of the
established trade channels through which the goods reach customers, the TTAB
properly followed our case law and ‘presume[d] that the identical goods move in the
same channels of trade and are available to the same classes of customers for such
goods….’”); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA
1968) (where there are legally identical goods, the channels of trade and classes of
purchasers are considered to be the same); United Global Media Grp., Inc. v. Tseng,
112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc.
v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
Where, as here, there is no limitation in Applicant’s identification of goods, we
must presume that Applicant’s apparel is offered in all channels of trade that would
be normal for such goods, and that they would be purchased by all usual customers,
including the channels of trade in which Opposer offers its t-shirts and hats and to
the same classes of consumers to whom Opposer offers its t-shirts and hats identified
by its common law wave design. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637
F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002); CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983).
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Applicant does not contest that the parties offer their apparel in the same
channels of trade to the same classes of consumers.
C. The conditions under which and buyers to whom sales are made.
Opposer’s t-shirts and hats bearing one of Opposer’s wave design marks sells for
approximately $25.26 Opposer’s footwear may sell for as low as $7.27 Applicant’s t-
shirts bearing one of Applicant’s marks as the letter “D” in the word “Demand” sells
for $22 and one of Applicant’s baseball caps bearing one of Applicant’s marks sells for
$22.28 Consumers may purchase these inexpensive products on impulse, without
thoughtful research. In other words, consumers may make their purchasing decision
quickly and on the spot. In such circumstances, consumers may retain only a vague
or general recollection of the mark and are more likely to be confused when later
encountering the same product under a similar mark. Boston Red Sox Baseball Club
Ltd. P’ship v. Sherman, 88 USPQ2d 1581, 1591 (TTAB 2008) (“It is also important to
consider that t-shirts and many other casual, everyday items of wearing apparel
identified in applicant’s application are relatively inexpensive and are therefore likely
to be purchased by consumers on impulse, and without a great deal of care. This is a
factor that increases the likelihood of confusion.”) (citing Recot Inc. v. M.C. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) (“When products are relatively
low-priced and subject to impulse buying, the risk of likelihood of confusion is

26 Nasr Decl. ¶11 (29 TTABVUE 6). See also 29 TTABVUE 42, 43-45, 65-66, 68, 71-72, 74-75,
95, 105-106, 108, 121-122, 125, 174, and 190.
27 29 TTABVUE 44.
28 Applicant’s Decl. Exhibit B (32 TTABVUE 30).
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increased because purchasers of such produces are held to a lesser standard of
purchasing care.”)). See also Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014) (recognizing Board
precedent requiring consideration of the “least sophisticated consumer in the class”).
Cf. In re State Brewing Co., 117 USPQ2d 1958, 1960 and n.4 (TTAB 2016) (taking
judicial notice that “in the absence of any evidence to the contrary, … beer is relatively
inexpensive, subject to impulse purchase[.]”); L’Oreal S.A. v. Marcon, 102 USPQ2d
1434, 1442 (TTAB 2012) (cosmetics and personal care products tend to be relatively
inexpensive and subject to impulse purchase).
This DuPont factor weighs in favor of finding likelihood of confusion.
D. The strength of Opposer’s wave marks, including the number
and nature of similar marks in use in connection with similar
goods.
In determining the strength of a mark, we consider both its inherent strength
based on the nature of the mark itself and its commercial strength, based on the
marketplace recognition value of the mark. See In re Chippendales USA, Inc.,
622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is
measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc.,
101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by
assessing its inherent strength and its commercial strength); Tea Bd. of India v.
Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); 2 MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 11:80 (5th ed. 2020) (“The first enquiry
focuses on the inherent potential of the term at the time of its first use. The second
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evaluates the actual customer recognition value of the mark at the time registration
is sought or at the time the mark is asserted in litigation to prevent another’s use.”).
Market strength is the extent to which the relevant public recognizes a mark as
denoting a single source. Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d at 1899.
In other words, it is similar to acquired distinctiveness. For purposes of analysis of
likelihood of confusion, a mark’s renown may “var[y] along a spectrum from very
strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC,
857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (internal quotations
omitted). The proper standard is the mark’s “renown within a specific product
market,” id., and “is determined from the viewpoint of consumers of like products,”
id. at 1735, and not from the viewpoint of the general public.
1. Inherent Strength
Wave designs used in connection with clothing suggest a connection with
sportswear, swimwear and beachwear. In this regard, Applicant contends that the
use of a wave design is not unique to Opposer and, therefore, Opposer’s wave designs
are weak marks.29 Applicant introduced excerpts from the following third-party
websites:
● Rip Curl (ripcurl.com)30

29 Applicant’s Brief, p. 3 (34 TTABVUE 7).
30 Applicant’s Decl. ¶4 and Exhibit A (32 TTABVUE 34 and 37).
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● Quik Silver (quiksilver.com)31

● Billabong (billabong.com)32

● Koala Surf Company (koala.com)33

In determining the degree of weakness, if any, in the shared terms, we must
“adequately account for the apparent force of [third-party use] evidence,” regardless
of whether “specifics” pertaining to the extent and impact of such use have been
proven. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1674-5 (Fed. Cir. 2015). “[E]xtensive evidence of third-party use and registrations is
‘powerful on its face,’ even where the specific extent and impact of the usage has not
been established.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v.
New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir.
2015) (citing Juice Generation, 115 USPQ2d at 1674).

31 Applicant’s Decl. ¶4 and Exhibit A (32 TTABVUE 34 and 41).
32 Applicant’s Decl. ¶4 and Exhibit A (32 TTABVUE 34 and 48).
33 Applicant’s Decl. ¶4 and Exhibit A (32 TTABVUE 34 and 52).
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Unlike cases in which extensive evidence of third-party use and other evidence in
the record was found to be “powerful on its face” inasmuch as “a considerable number
of third parties use [of] similar marks was shown,” Juice Generation, 115 USPQ2d at
1674, Applicant has presented four such uses, well short of the volume of evidence
found convincing in Jack Wolfskin and Juice Generation. Nevertheless, the third-
party use evidence corroborates our finding that wave designs used in connection
with clothing is suggestive of sportswear, beachwear, and swimwear. However,
Applicant’s marks are closer to Opposer’s marks than the other third-party wave
marks Applicant introduced into evidence.
2. Commercial Strength
Opposer introduced the evidence listed below to establish the commercial strength
of its wave design marks:
● “In 2019, in the United States alone, Opposer’s licensees spent at least
$6,000,000 (2018: $5,000,000) on advertising and promotion of Opposer’s brands,
including its Wave Design Marks.”34
● “Opposer and its predecessors, authorized business partners, sponsors, and
licensees have received in the United States alone for the last five years, in excess of
$800,000,000 in sales revenue related to goods bearing Opposer’s Wave Design
Marks.”35

34 Nasr Decl. ¶14 (29 TTABVUE 7). Opposer’s brands include the O’NEILL trademark. Id.
Exhibits A-F (29 TTABVUE 14-559). There is no testimony as to what percentage of the
advertising and promotion expenditures feature the “Wave Design Marks.”
35 Nasr Decl. ¶15 (29 TTABVUE 7).
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● “[I]n 2019, in the United States alone, Opposer’s licensees’ sales revenue for
Opposer’s brand, including products and services which bear the Opposer’s Wave
Design Marks, was in excess of $170,000,000.”36
● The Surfd website (surfd.com) identifies Opposer as one of the “30 Of The Best
Surf Brands.”37 However, while the blog displays , it does not otherwise refer
to the renown, if any, of Opposer’s wave design marks.
● Huffington Post website (huffpost.com) (June 2, 2017)
Jack O’Neill, Founder Of Iconic Surf Brand, Dies At 94
Jack O’Neill, a pioneer in wetsuit technology and founder
of the iconic California surf brand, died of natural causes
Friday at the age of 94, the Orange County Register
reported.
___
For those who don’t surf, O’Neill’s name is still
recognizable as the popular surf brand with a wave-
like logo seen on T-shirts, sweatshirts and board
shirts, usually worn by anyone who can appreciate a
beach-centered lifestyle.38 (Emphasis added).
We find that Opposer’s wave design marks are commercially strong marks that
fall on the strong side of the spectrum of from very strong to very weak. Joseph Phelps
Vineyards, 122 USPQ2d at 1734.39

36 Nasr Decl. ¶15 (29 TTABVUE 7-8).
37 27 TTABVUE 54.
38 27 TTABVUE 320-321.
39 Opposer’s testimony and evidence fall short of proving that Opposer’s wave design marks
are famous. Opposer’s Brief, pp. 10-13 (33 TTABVUE 16-19). Because of the extreme
deference that we accord 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, Opposer
has the duty to prove the fame of its marks clearly. Coach Servs., Inc. v. Triumph Learning
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In sum, Opposer’s wave marks are commercially strong, suggestive marks that
are entitled to a broad scope of protection.
E. Similarity or dissimilarity of the marks.
We now turn to the DuPont factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression. DuPont, 177 USPQ at 567. In comparing the marks, we are mindful that
where, as here, the goods are in part identical, the degree of similarity necessary to
find likelihood of confusion need not be as great as where there is a recognizable
disparity between the goods. Coach Servs., 101 USPQ2d at 1721; Century 21 Real
Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
“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.” Cai, 127 USPQ2d at 1801 (quoting Coach Servs., 101 USPQ2d
at 1721). See also Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A.,
685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). The proper focus is on the
recollection of the average customer, who retains a general rather than specific
impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d
1005, 169 USPQ 39, 40 (CCPA 1971); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d

LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing Leading Jewelers Guild
Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)).

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1734, 1740 (TTAB 2014); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB
2012). Because the goods at issue are clothing, including t-shirts and hats, the
average customer is an ordinary consumer.
We reproduce the marks below:
Opposer’s Marks Applicant’s Marks

Although Applicant describes its marks as consisting “of a stylized ‘D’ with a
person riding a skateboard or surfboard on the inside of the ‘D,’” the letter “D” is so
highly stylized that we treat it as a design mark.
[W]hen letter marks are presented in a highly stylized
form, so that they are essentially design marks incapable
of being pronounced or conveying any inherent meaning,
then differences in the lettering style and design may be
sufficient to prevent a likelihood of confusion. In these
cases similarity or appearance is usually controlling and
the decision will turn primarily on the basis of the visual
similarity of the marks.
Nike, Inc. v. WNBA Enters., LLC, 85 USPQ2d 1187, 1198 (TTAB 2007) (quoting
Textron, Inc. v. Maquinas Agricolas “Jacto” S.A., 215 USPQ 162, 163 (TTAB 1982)).
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The marks are similar because they all consist of a wave tunnel or breaking wave
design where the wave rolls over creating a horizontal tunnel of air.40 While the waves
in Applicant’s marks and Opposer’s marks break in opposite directions, consumers
are unlikely to distinguish that difference when shopping for clothing. As noted
above, the test for comparing marks is not a side-by-side comparison but the
commercial impression engendered by the marks.
Opposer’s mark and Applicant’s marks feature a surfer or skateboarder
in the wave tunnel. Consumers are likely to see the person in Applicant’s
mark as a surfer rather than a skateboarder inasmuch as the person appears to be
on a surfboard rather than a skateboard.
The wave designs in Opposer’s common law wave design and
Applicant’s marks all consist of black curve comprising the inner and outer edge of
the wave with a white curve between the two black curves. The person in Applicant’s
marks highlight or reinforce the wave design image creating the commercial
impression of surfing or traversing through the wave tunnel.
On close inspection, a consumer viewing Applicant’s mark might
perceive the person in the wave as a skateboarder. If consumers were to study the

40 The third-party wave designs discussed above do not create the same commercial
impression.
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marks, the differences in appearance and commercial impression might become
apparent. However, purchasers simply do not take the time to study marks and see
the differences. B.V.D. Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727,
6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (the purchasing public does not indulge in
recognitional contortions but sees things as they are); In re Johnson Prods. Co., Inc.,
220 USPQ2 539, 540 (TTAB 1983) (“It is undeniable that if the mark is carefully
examined, the two overlapping ‘S’s can be discerned. What is more significant,
however, is that this sort of studied analysis of the mark is unlikely to occur in the
marketplace where these products are sold.”). Thus, at least a significant segment of
consumers will perceive Applicant’s mark as a wave, not as a “quarter pipe as
Applicant contends.41
It is undeniable that there are differences between Applicant’s marks and
Opposer’s marks. However, “[e]xact identity is not necessary to generate confusion as
to source of similarly-marked goods.” Bridgestone Ams. Tire Operations LLC v. Fed.

41 Applicant’s Brief, p. 4 (34 TTABVUE 8). In addition, we do not consider Applicant’s
contention that Applicant’s marks represent the letter D in the word “Demand” because the
word “Demand” is not part of the marks sought to be registered. Id. We base our analysis of
the similarity or dissimilarity of the marks on the marks as depicted in the respective
applications and registrations, without regard to whether the mark will appear with other
marks, such as house marks, or other elements when used. See In re Shell Oil Co., 992 F.2d
1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993) (indicating that applicant’s
assertions that the applied-for mark would appear with applicant’s house mark were not
considered in the likelihood-of-confusion determination); In re Aquitaine Wine USA, LLC,
126 USPQ2d 1181, 1186 (TTAB 2018) (“[W]e do not consider how Applicant and Registrant
actually use their marks in the marketplace, but rather how they appear in the registration
and the application. We must compare the marks as they appear in the drawings, and not on
any labels that may have additional wording or information.”); Mini Melts, Inc. v. Reckitt
Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016) (rejecting applicant’s argument that,
because its mark would appear along with its house mark and other distinguishing matter,
the marks at issue were not confusingly similar).
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Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012). Because the test is
not a side-by-side comparison of the marks, the marks are sufficiently similar that
the average customer, who retains a general recollection rather than a specific
impression of the marks, will believe that the goods emanate from the same source.
The similarities of the marks outweigh the dissimilarities.
We find that Applicant’s marks are similar to Opposer’s marks.
F. Conclusion
Because the marks are similar, the goods are in part identical and we presume
the parties offer the goods in the same channels of trade to the same classes of
consumers, we find that Applicant’s marks and both for
“clothing, namely, bottoms, hoodies, jackets, shirts, sweatshirts, tank tops; headwear;
footwear” are likely to cause confusion with Opposer’s marks for, inter
alia, shirts, jackets, sweatshirts, footwear, and headgear, namely, caps and hats, and
for t-shirts and hats.
Decision: The opposition is sustained and registration to Applicant is refused.