So Sweet LLCv.Dong Yun Park and Jung Ae Park

Trademark Trial and Appeal Board

Jan 22, 2007

No. 91160319 (T.T.A.B. Jan. 22, 2007)

Mailed: January 22, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

So Sweet LLC
v.
Dong Yun Park and Jung Ae Park.
_____

Opposition No. 91160319
to application Serial No. 76384690
filed on March 20, 2002
_____

Howard F. Mandelbaum of Levine & Mandelbaum for So Sweet
LLC.

David Belasco for Dong Yun Park and Jung Ae Park.
______

Before Seeherman, Kuhlke and Bergsman, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicants, Dong Yun Park and Jung Ae Park, individuals
and citizens of the Republic of Korea, seek registration of
the mark ANGEL JEANS (in typed form)1 for goods identified
in the application as “clothing, namely, jeans, denim

1 Prior to November 2, 2003, standard character drawings were
known as typed drawings and typed drawings that are still pending
after November 2, 2003 are acceptable under the old rules. See
TMEP § 807.03(i).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91160319
2
jackets, denim dresses, denim skirts” in International Class
25.2 The word JEANS is disclaimed.
Opposer, So Sweet LLC, opposed registration of
applicants’ mark on the grounds that, as applied to
applicants’ goods, the mark so resembles opposer’s
previously used marks ANGELS SO SWEET for “women’s, girls’
and children’s jeans, pants, skirts, including denim skirts,
shorts, shirts, knit tops, jackets, including denim jackets,
jumpers, and dresses, including denim dresses,” “ANGELS and
Design” for “women’s, girls’ and children’s jeans, pants,
skirts, including denim skirts, shorts, shirts, knit tops,
jackets, including denim jackets, jumpers, and dresses,
including denim dresses,” and “ANGELS JEANSWEAR BRAND and
Design” for “women’s, girls’ and children jeans, pants,
skirts, including denim skirts, shorts, shirts, knit tops,
jackets, including denim jackets, jumpers and dresses,
including denim dresses” as to be likely to cause confusion,
to cause mistake, or to deceive under Trademark Act Section
2(d), 15 U.S.C. §1052(d).3

2 Serial No. 76384690, filed March 20, 2002. The application is
based on allegations of first use and use in commerce of April,
1999 under Trademark Act Section 1(a), 15 U.S.C. §1051(a).

3 In its brief, opposer also argues what appears to be a claim
that applicants are not the owners of the mark in issue. This
claim was not set forth in the notice of opposition and the
record does not reflect that the issue was tried by either
express or implied consent of the parties. Fed. R. Civ. P.
15(b). We cannot say, based on the questions raised during
cross-examination of Mr. Park, that applicants were aware that
the issue of ownership had been tried. In addition, contrary to
Opposition No. 91160319
3
Applicants filed an answer by which they denied the
salient allegations of the notice of opposition. Applicants
also asserted the affirmative defenses of laches, unclean
hands, and acquiescence. However, the only affirmative
defense pursued in the brief was “laches and estoppel”;
therefore, we consider the other defenses waived. In
addition, applicants have only referenced a laches defense
and no other form of estoppel, nor was any other form of
estoppel pleaded. In view thereof, we have only considered
the laches defense. Applicants’ argument on this issue is
set forth below:
Opposer did not notify Applicants in any of the
first five years of the Applicants’ use of the
ANGEL JEANS mark in connection with denim apparel.
Instead, Opposer waited until Applicants
sufficiently invested in the creation, promotion,
and use of their mark, and filed for Federal
Registration of their mark to finally mention
their use and fear of injury to their business ...
The notice did not come until Opposer filed the
instant Opposition on April 28, 2004. Notably,
Applicants’ use of its ANGEL JEANS mark was very
public ... Opposer’s lack of action demonstrates
Opposer’s own belief that consumers are unlikely
to be confused in the marketplace and, in any
event, consented to Applicants’ use of their mark.
Further, any argument of likelihood of confusion
should be barred under a laches and estoppel
defense since Opposer’s five year inaction is
indicative of a lack of confusion.

Br. pp. 32-33.

opposer’s contention, the inclusion in applicants’ answer of the
statement “Applicant has made prior or concurrent use of its
trademark Angel Jeans in United States Commerce than [sic]
Opposer’s use of its alleged trademarks” did not raise the issue
of applicants’ ownership of the mark.
Opposition No. 91160319
4
Applicants’ assertion of laches as an affirmative
defense is unavailing in this case. When the right to
register is at issue, the earliest date the affirmative
defense of laches may begin to run is the date the
application is published for opposition. National Cable
Television Association, Inc. v. American Cinema Editors,
Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991).
See also Bridgestone/Firestone Inc. v. Automobile Club de
l’Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1462-63
(Fed. Cir. 2001).
The evidence of record consists of the pleadings
herein; the file of the opposed application; the testimony
depositions (with exhibits) of Mr. Carl Eckhaus, opposer’s
president, and Mr. Dong Yun Park. In addition, on rebuttal
opposer submitted notices of reliance upon applicants’
responses to opposer’s interrogatories, and a certified copy
of Articles of Incorporation of the corporation Hip & Hip,
Inc. The parties also filed main briefs and opposer filed a
reply brief.
As a preliminary matter, we must first determine which
of opposer’s marks are in issue in this case. In its brief
and Mr. Eckhaus’ deposition opposer frequently refers to its
“ANGELS” marks; however, opposer has pleaded one mark in
typed form, “ANGELS SO SWEET,” and two marks that consist of
words and designs, referred to by opposer as “ANGELS and
Opposition No. 91160319
5
design” and “ANGELS JEANSWEAR BRAND and design.” Opposer
did not include in the pleadings a picture of these marks or
describe the design; however, in the pleading opposer
referenced two trademark applications that relate to these
alleged marks inasmuch as they are for combined words and
design marks for the same goods, and printouts of these
applications from the Trademark Electronic Search System
(TESS) were introduced into the record under the testimony
of Mr. Eckhaus. The drawings from the applications are
shown below:

In its reply brief, opposer argues that “Applicants’
analysis of likelihood of confusion between the marks of the
parties is seriously flawed insofar as it is limited to
Opposer’s registered mark ANGELS SO SWEET and the marks of
two of Opposer’s applications for trademark registration,
i.e., ANGELS and hearts design, and ANGELS JEANSWEAR BRAND
DESIGN and design. The evidence shows that Opposer’s use of
ANGELS as a word mark for jeans and other garments has never
been limited to the form of its marks that were or are
pending in the Patent and Trademark Office.” Reply Br. pp.
5-6. However, opposer’s pleading is so limited that we
cannot say that applicants were fairly apprised of any other
Opposition No. 91160319
6
marks claimed by opposer. Nor do we consider the pleadings
amended by implied consent under Fed. R. Civ. P. 15(b) to
assert any additional ANGELS marks. On the contrary,
applicants’ cross examination of Mr. Eckhaus wherein
applicants focused on the above-noted marks and applicants’
brief, which is restricted to the above-noted marks, shows
that applicants considered only the pleaded registration and
the two pleaded applications to be opposer’s marks.
Therefore, we will confine our decision to the following
three marks.
ANGELS SO SWEET

STANDING
As discussed below, opposer has established trademark
rights in the marks ANGELS SO SWEET, and
(hereinafter, unless otherwise noted, we will refer to all
three marks as “the ANGELS marks”) as used in connection
with pants, shorts, skirts, overalls (all of which include
denim varieties, i.e., jeans), and has demonstrated a real
interest in preventing registration of the proposed mark.
Opposition No. 91160319
7
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed.
Cir. 1999); Jewelers Vigilance Committee, Inc. v. Ullenberg
Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Thus, opposer has established its
standing.
PRIORITY
Turning first to the issue of priority, although
opposer pleaded one registration, opposer did not submit a
status and title copy of this registration during the trial
period. The copy attached as Exhibit 7 to the deposition of
Carl Eckhaus is merely a copy of the registration and Mr.
Eckhaus did not testify as to the current status of the
registration. See Alcan Aluminum Corp. v. Alcar Metals
Inc., 200 USPQ 742, 744 n.5 (TTAB 1978). In addition,
applicants’ admission in their answer regarding opposer’s
allegations that it has registered its trademark ANGELS SO
SWEET is limited to an admission only “to the extent that it
[paragraph 2] refers to matters of the public record with
the United States Trademark Office, applicant admits so much
as the public record reveals.” We cannot treat this
statement as an admission that opposer is the current owner
of the registration. Therefore, opposer must rely on its
common law use to prove its priority in the mark ANGELS SO
Opposition No. 91160319
8
SWEET, as well as in the marks which are the subject of its
pending applications.
Applicants may rely on the filing date of their
application, March 20, 2002; in addition, the record shows
that applicants first used their mark in the United States
in April of 1999. See Park Dep. pp. 74-78. Thus, in order
to establish priority, opposer must show that it used its
mark(s) in connection with its goods prior to April, 1999.
Opposer’s witness, Mr. Eckhaus, testified that since at
least November 1997 opposer has used the ANGELS marks on
pants sold to companies throughout the United States. See
Eckhaus Dep. pp. 6-9; 23, 24; 89-90. In addition, Mr.
Eckhaus testified that since 1997 opposer has used the
ANGELS marks on jeans and denim skirts. Eckhaus Dep. pp.
15, 18.
Opposer’s testimony regarding these sales is supported
by documentary evidence in the form of invoices for various
sales. In addition, opposer has submitted and identified
various labels that are placed on the clothing and has
submitted examples of the clothing items (skirts, shorts,
jeans) with the labels and tags attached to them.
In view of the evidence and testimony presented as to
opposer’s use prior to applicants’ use in April, 1999,
opposer has established its priority with respect to its
common law rights in the ANGELS marks for pants, skirts, and
Opposition No. 91160319
9
shorts, including denim varieties (i.e., jeans). Moreover,
applicant does not dispute this. Br. p. 6 (“Opposer has
provided evidence as to the use of its of the marks [sic] as
early as November 25, 1997.”)
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 Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, however, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We turn first to a consideration of the goods, channels
of trade and class of purchasers. Applicants’ identified
jeans and denim skirts are identical to opposer’s jeans and
jean skirts. In addition, applicants’ denim jackets and
denim dresses are related clothing items to opposer’s jeans
and jean skirts, in that they are made of the same material,
such that consumers would assume that they come from the
Opposition No. 91160319
10
same source if they were sold under confusingly similar
marks.
Applicants argue that their goods are distinguished
from opposer’s goods by their “style” in that their goods
are “appealing to a vastly different consumer by their
trendier, sexier, more suggestive clothing styles...[and
t]his difference in goods means a difference in the trade
channels for their goods [which] is evidenced by the fact
that although both applicants’ and Opposer’s goods are sold
in retail clothing stores throughout the country, of the
hundreds of stores Applicants’ apparel is sold in, and the
hundreds of stores Opposer sells in, only 8 stores have been
identified as also being retailers for both Applicant and
Opposer.” Br. p. 21. Applicants also argue that their
goods, in contrast to opposer’s goods, will be relatively
expensive, ranging in price from $60 to $120 (Park Dep. p.
92), and opposer’s goods are “positioned financially lower,”
ranging in price from $24 to $46 (Eckhaus Dep. p. 92);
therefore, opposer's goods are in a “lower” market. In
discussing the marketing differences between their products,
applicants’ reliance on a line of infringement cases is not
useful in this context because they deal with present
marketing. In this opposition, we have to determine
likelihood of confusion on the assumption that applicants
may sell their goods in every market at any price inasmuch
Opposition No. 91160319
11
as we are concerned with the goods as identified in the
application, and there are no restrictions in the
application.
There is sufficient evidence in the record
demonstrating the overlap in trade channels. As admitted by
applicant, the parties’ goods are sold in some of the same
stores (Park Dep. p. 79). Thus, the channels of trade are,
to some extent, identical. Even aside from this, we do not
find the difference in price point sufficient to consider
the respective goods to be sold in different channels of
trade. The difference is not that great that, even if the
parties’ goods were limited to the current pricing
structure, consumers would not encounter both parties’
goods, whether in the same store or in other retail outlets.
Moreover, inasmuch as there is no limitation in applicants’
identification, if applicants were to obtain a registration,
it would receive all the presumptions of Section 7(b),
including the presumption that the goods would be sold in
all appropriate channels of trade, including those in which
opposer’s goods are sold. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002); and Octocom Systems Inc. v. Houston Computer Services
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987).
We also find that the goods are sold to the same class
of purchasers. Opposer’s goods are sold to women and girls,
Opposition No. 91160319
12
including teenage girls, see e.g., Eckhaus Dep. Exh. Nos.
57, 61 and 63, and applicants’ goods are sold to “females
between early teens to fifty years of age.” Jung Park
Response to Interrogatory No. 15(a). Thus, potential
purchasers of the parties’ goods overlap and come from the
general public.
In view of the above, the du Pont factors of the
similarity of the goods, channels of trade and class of
purchasers favor a finding of likelihood of confusion.
As to the level of care in the purchasing decision,
clothing generally is an ordinary consumer item which would
not be purchased with the same level of care as, for
example, computer equipment. Potential purchasers are from
the general public and it is also the case that clothing
includes a wide range of products and pricing. Although it
may be that consumers would exercise some higher level of
care with regard to at least more expensive clothing, the
parties’ goods are not priced so high to find that this
factor would offset the other du Pont factors, in particular
with regard to clothing in the lower price range of
applicants’ goods. In addition, given that these goods are
ordinary consumer items and potential purchasers would not
necessarily know the price range of products of the parties,
they are not likely to assume different sources for the
goods based on a perceived price difference. See In re
Opposition No. 91160319
13
Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor
Corp., 221 USPQ 558 (TTAB 1983). Most importantly, as
discussed below, because of the strong similarities in the
marks, ordinary consumers, even if they exercise some care
in their purchasing decisions, are not likely to distinguish
between the sources of these identical and closely related
goods. Therefore, we do not find the level of care or the
sophistication of the potential purchasers to offset the
other du Pont factors in this case.
We turn then to the first du Pont factor, i.e., whether
applicants’ mark ANGEL JEANS and opposer’s marks ANGELS SO
SWEET, ANGELS and heart design and ANGELS JEANSWEAR BRAND
DESIGN and heart and diamond design are similar or
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. The test, under this du Pont factor, 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
impressions that confusion as to the source of the goods
offered under the respective marks is likely to result. The
focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression
Opposition No. 91160319
14
of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
We begin by noting that opposer’s marks are strong
marks to the extent that ANGELS is an arbitrary designation
and inherently distinctive. Applicants attempt to show that
opposer’s ANGELS marks are not strong for clothing by
relying on opposer’s responses to applicants’ interrogatory
no. 36 which reads as follows:
State whether Opposer is aware of any past or
present third-party uses or registrations of the
designation ANGELS and or any variation thereof
with respect to any goods or services, and if so,
identify each such third party and the goods or
services for which the designation has been or is
used or registered.

Opposer’s response is a list of approximately 81 marks
that include the word ANGEL or ANGELS. While a registration
number is given for each entry, the goods are not listed and
the registrations have not been made of record. More
importantly, there is nothing in the record to indicate that
these marks are in use on similar goods to those in issue in
this case. Third-party registrations are not evidence of
use and, thus, are of little probative value in an analysis
of the strength of the marks. AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973).
Third-party registrations may be “useful to demonstrate the
sense in which a term is used in ordinary parlance and they
can show that a particular term has been adopted by those
Opposition No. 91160319
15
engaged in a certain field or industry and that said term
has less than arbitrary significance with respect to certain
goods or services.” In re Dayco Products-Eaglemotive, Inc.,
9 USPQ2d 1910, 1912 (TTAB 1988) (IMPERIAL adopted by others
in the vehicular field to refer to that term’s ordinary
significance as a laudatory designation). However, because
the registrations were not made of record, we do not know
the goods for which the various ANGEL(S) marks are
registered, and therefore cannot determine whether ANGEL has
a particular significance in the clothing industry. Thus,
this list has little probative value.
The word ANGELS is the dominant element in opposer’s
marks ANGELS and heart design inasmuch as it is by the words
that consumers will call for or refer to the goods. In re
Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB
1987). As for opposer’s mark ANGELS JEANSWEAR BRAND DESIGN
and heart and diamond design, in view of the prominent
visual appearance of ANGELS in comparison to the additional
wording JEANSWEAR BRAND DESIGN, as well as the descriptive
nature of this additional wording, it is likely that
consumers will use the word ANGELS to call for the goods.
Similarly, in applicants’ mark the word JEANS is the generic
term for the goods and is disclaimed; thus, ANGEL is the
dominant element in applicants’ mark. “That a particular
feature is descriptive [or otherwise lacking in
Opposition No. 91160319
16
distinctiveness] ... with respect to the involved goods or
services is one commonly accepted rationale for giving less
weight to a portion of a mark...” In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Therefore, the dominant elements of each mark, ANGELS and
ANGEL, are entitled to the most weight in our analysis under
the first du Pont factor. Id. Except for the
pluralization, these elements are identical. In re Belgrade
Shoe, 411 F.2d 1352, 162 USPQ 227, 227 (CCPA 1969)
(pluralization not a material difference). In view of the
similarity of the dominant elements, the marks as a whole
are similar in sound and connotation, and even though there
are some differences in appearance due to the design
components and additional descriptive wording in opposer’s
marks, these differences are not sufficient to distinguish
applicants’ mark from opposer’s; overall they convey similar
commercial impressions.
Applicants also note that opposer’s marks depict ANGELS
in cursive script. However, applicants’ mark is in typed
form and could appear in any reasonable form of stylization,
and because applicants sometimes use ANGELS JEANS in a
cursive script it is certainly reasonable to assume they
will continue to do so. Park Dep. Exhs. L and S.
With regard to opposer’s mark ANGELS SO SWEET, as shown
below, opposer uses its mark with the word ANGELS depicted
Opposition No. 91160319
17
in larger script so that it is visually the most prominent
part of the mark, far more prominent than the words SO
SWEET.

In view thereof, we also find that ANGELS is the
dominant element of the mark ANGELS SO SWEET. While the
addition of the modifying words SO SWEET does present a
difference between this mark and applicants’ mark, we do not
find it sufficient to obviate a likelihood of confusion.
Overall we find that the similarities in the parties’
marks outweigh the differences. Thus, the similarity of the
marks weighs in favor of a finding of likelihood of
confusion.
Finally, opposer argues that there has been actual
confusion and points to evidence consisting of misdirected
bills from a shipping company (Eckhaus Dep. p. 71 Exh. No.
Opposition No. 91160319
18
66) which were mailed to opposer for shipping done for
applicants. As noted by applicants, this evidence only
serves to show that the shipper “mistyped the address and
not that they were actually confused as to which company
sent them their apparel.” Br. p. 30. On the other hand,
applicants argue that there has been no confusion by the
“ultimate customer” despite five years of concurrent and
overlapping use in at least eight retail stores. We do not
find the evidence presented by opposer on this factor to be
probative for the reasons articulated by applicants and
because the shipper is not the consumer of the goods.
However, we are not persuaded by applicants’ argument that
the parties’ presence in eight retail stores without
evidence of actual confusion shows that confusion is not
likely. There is nothing in the record that shows how the
parties’ clothing was displayed or to what extent both
parties’ items were sold at the same store. Moreover, it is
notoriously difficult to obtain evidence of actual
confusion. Thus, although longstanding concurrent use
without confusion can weigh in favor of a finding of no
likelihood of confusion, such compelling circumstances have
not been presented in this case. Compare, Genesco Inc. v.
Martz, 66 USPQ2d 1260 (TTAB 2003) (twenty years of
contemporaneous use significant amount of time, Board found
this factor neutral or in applicant’s favor). In any event,
Opposition No. 91160319
19
it is unnecessary to show actual confusion to establish
likelihood of confusion. Herbko Intern., Inc., v. Kappa
Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002).
Considering the respective marks in their entireties,
we conclude that the evidence of record as it pertains to
the relevant du Pont factors clearly supports a finding of
likelihood of confusion as to opposer’s ANGELS marks, and
that registration of applicants’ mark, ANGEL JEANS,
therefore, is barred under Trademark Act Section 2(d).
Decision: The opposition is sustained.