Sock It To Me, Inc.v.DK-GA, Inc.

Trademark Trial and Appeal Board

May 6, 2021

91246688 (T.T.A.B. May. 6, 2021)

Mailed: May 6, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Sock It To Me, Inc.
v.
DK-GA, Inc.
___

Opposition No. 91246688
___

Sheila Fox Morrison and Steven E. Klein of Davis Wright Tremaine LLP
for Sock It To Me, Inc.

Richard G. Sanders of Aaron & Sanders, PLLC
for DK-GA, Inc.
______
Before Cataldo, Mermelstein and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant DK-GA, Inc. seeks registration of SOCK EM’, in standard characters,
for “footwear; hosiery; slippers; socks; undergarments; underwear” in International
Class 25, and “retail store services featuring footwear, undergarments, apparel and
accessories; on-line retail store services featuring footwear, undergarments, apparel
This Opinion is not a
Precedent of the TTAB
Opposition No. 91246688
2
and accessories” in International Class 35.1 In its notice of opposition, Opposer Sock
It To Me, Inc. alleges prior use and registration of SOCK IT TO ME, in standard
characters, for “socks and stockings” (with SOCK disclaimed),2 and for “underwear;
intimate apparel, namely, panties, boxers, and briefs” (without a disclaimer),3 both
in International Class 25. Opposer also alleges prior common law use of the mark for
retail store services. As its sole ground for opposition, Opposer alleges that use of
Applicant’s mark would be likely to cause confusion with Opposer’s mark. In its
answer, Applicant admits that Opposer owns its pleaded registrations4 and that some
of the parties’ goods are identical, but otherwise denies the salient allegations in the
notice of opposition.
I. The Record and Evidentiary Objections
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s involved application. In addition, Opposer
introduced:

1 Application Serial No. 87953368, filed June 7, 2018 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), claiming first use in commerce on September 15, 2017.
2 Registration No. 4173688, issued July 17, 2012 (the “’688 Registration”); Section 8 Affidavit
accepted, Section 15 Affidavit acknowledged.
3 Registration No. 5224375, issued June 13, 2017 (the “’375 Registration”).
4 Applicant also admitted during discovery that Opposer’s pleaded registrations are “valid
and subsisting.” 14 TTABVUE 6-7 (Applicant’s responses to Request for Admission Nos. 2
and 4). Citations to the record reference TTABVUE, the Board’s online docketing system. The
number preceding “TTABVUE” corresponds to the docket entry number(s), and any
number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the
cited materials appear.

Opposition No. 91246688
3
Testimony Declaration of Carrie Atkinson, its majority
owner, President and Secretary and the exhibits thereto
(“Atkinson Dec.”). 11 TTABVUE.

First Notice of Reliance on dictionary definitions and an
Internet printout (“Opp. NOR 1”). 13 TTABVUE.

Second Notice of Reliance on some of Applicant’s discovery
responses, including documents Applicant produced during
discovery5 (“Opp. NOR 2”). 18 TTABVUE.

Rebuttal Notice of Reliance on additional discovery
responses “for the purpose of completeness,” and additional
documents Applicant produced during discovery;
documents from terminated Board proceedings in which
Opposer was a party; the file of a third-party registration;
and an Internet printout (“Reb. NOR”). 33 TTABVUE.

Rebuttal Testimony Declaration of Iwa Hooe, its Chief
Executive Officer (“Hooe Reb. Dec.”). 35 TTABVUE.

Applicant introduced:
Testimony Declaration of Derek Friedman, its director,
and the exhibits thereto (“Friedman Dec.”). 26 TTABVUE.

First Notice of Reliance on some of Opposer’s discovery
responses and documents from terminated Board
proceedings (“App. NOR 1”). 28 TTABVUE.

Second Notice of Reliance on third-party registrations
(“App. NOR 2”). 29 TTABVUE.

Third Notice of Reliance on documents Opposer produced
during discovery (“App. NOR 3”). 31 TTABVUE.

Fourth Notice of Reliance on Internet printouts (“App.
NOR 4”). 32 TTABVUE.

5 The parties stipulated that “any documents produced by one party pursuant to a request
for production of documents under Federal Rule of Civil Procedure 34 are authentic under
Federal Rules of Evidence 901-903 and may be made of record by the other party through
notices of reliance alone; provided, however, that as to any such document, either party may
object to the document or its contents on any other proper ground, such as hearsay.” 10
TTABVUE.
Opposition No. 91246688
4
Applicant’s objection to Ms. Atkinson’s testimony about events between June 8,
2013 and September 19, 2019, because she was not Opposer’s CEO at the time, 40
TTABVUE 44, is overruled. As Applicant acknowledges, Ms. Atkinson testified that
even though she was not CEO during the time in question, she nevertheless
“remained active in the management of the business.” Id.; 11 TTABVUE 3 (Atkinson
Dec. ¶ 4). Ms. Atkinson also testified that she has “personal knowledge of the facts”
about which she testified. 11 TTABVUE 2 (Atkinson Dec. ¶ 2).
Applicant’s objections to Ms. Hooe’s testimony are also overruled, because she did
not testify about Mr. Friedman’s motivations or thoughts, nor did she “quot[e] Celina
Sanchez for the truth of the matter asserted.” Like Ms. Atkinson, Ms. Hooe also
testified that she has personal knowledge of the relevant facts.
Opposer’s hearsay objections to Internet printouts Applicant submitted via notice
of reliance alone, without accompanying testimony, are also overruled. Opposer is of
course correct that because they are not accompanied by testimony, these materials
may not be considered for the truth of the matters asserted therein. Nevertheless,
they are admissible for what they show on their face. Safer Inc. v. OMS Inv. Inc., 94
USPQ2d 1031, 1037 n.14 and 1040 (TTAB 2010). Moreover, sometimes what Internet
printouts and printed publications show on their face is relevant to trademark cases,
including likelihood of confusion cases. Harry Winston, Inc. & Harry Winston S.A. v.
Bruce Winston Corp., 111 USPQ2d 1419, 1428 (TTAB 2014) (“such materials are
frequently competent to show, on their face, matters of relevance to trademark claims
(such as public perceptions), regardless of whether the statements are true or false.
Opposition No. 91246688
5
Accordingly, they will not be excluded outright, but considered for what they show on
their face.”). See also In re Ayoub Inc., 118 USPQ2d 1392, 1399 n.62 (TTAB 2016);
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USQ2d 1458, 1467 n.30
(TTAB 2014).
Opposer’s conclusory objection to Exhibits 37-42 of App. NOR 4 based on Fed. R.
Evid. 1006, 37 TTABVUE 42, is also overruled. The Rule applies to “a summary,
chart, or calculation.” It is not at all clear that these exhibits constitute a “summary,
chart, or calculation” under the Rule. We have considered them for what they show
on their face.
Opposer’s relevance objections, 37 TTABVUE 42-43, are overruled. Suffice it to
say, “we simply accord the evidence whatever probative value it deserves, if any at
all … Ultimately, the Board is capable of weighing the relevance and strength or
weakness of the objected-to testimony and evidence in this specific case, including
any inherent limitations, and this precludes the need to strike the testimony and
evidence.” Hunt Control Sys. Inc. v. Koninkijke Philips Elecs. N.V., 98 USPQ2d 1558,
1564 (TTAB 2011). See also Grote Indus., Inc. v. Truck-Lite Co., 126 USPQ2d 1197,
1200 (TTAB 2018) (“We also remind the parties that our proceedings are tried before
judges not likely to be easily confused or prejudiced. Objections to trial testimony on
bases more relevant to jury trials are particularly unnecessary in this forum.”) (citing
U.S. Playing Card Co. v. Harbro LLC, 81 USPQ2d 1537, 1540 (TTAB 2006)); RxD
Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1804 (TTAB 2018); Kohler
Opposition No. 91246688
6
Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1478 (TTAB 2017) (quoting Luxco,
Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB 2017)).
Opposer simultaneously points out that Applicant has no expert witnesses in this
case and objects to a number of documents as “improper expert opinions.” 37
TTABVUE 43. Because Applicant has no expert witnesses and the documents in
question are admissible under Safer, Opposer’s objection is moot.
Opposer’s “objection” based on “completeness,” 37 TTABVUE 43-44, is not
construed as a true objection. All discovery materials submitted as trial evidence have
been considered pursuant to Trademark Rule 2.120(k)(5) and the parties’
stipulation.6
II. The Parties
Opposer’s predecessor-in-interest Sock It To Me, LLC was organized in 2004 and
Opposer was formed in 2007. 11 TTABVUE 2 (Atkinson Dec. ¶ 3). Opposer “designs
and sells its own line of high-quality socks and underwear (such as panties, boxers
and briefs) branded with the SOCK IT TO ME trademark,” as depicted below:

6 We should point out that the parties’ counsel in this case have also been involved in other
Board proceedings concerning Opposer’s SOCK IT TO ME mark, including Opposition No.
91236423, in which essentially all of the parties’ evidentiary objections were either overruled
or moot, as here. Reviewing prior rulings on evidentiary objections in SOCK IT TO ME (and
other) Board cases may be useful to parties contemplating whether to assert evidentiary
objections in future cases.
Opposition No. 91246688
7
Id. at 3, 19, 25 (Atkinson Dec. ¶ 5 and Ex. A). Opposer has used the SOCK IT TO ME
mark in the United States for socks since October 2004 and for underwear since
November 30, 2015. Id. (Atkinson Dec. ¶ 7).
Opposer “sells its socks and underwear under the SOCK IT TO ME brand direct-
to-consumers online and through seasonal kiosks in malls, as well as at wholesale to
third party retailers.” Id. at 4 (Atkinson Dec. ¶ 10). “[S]ince at least as early as
February 2010,” Opposer has maintained an online store accessible through the
domain name “sockittome.com,” shown below:

Id. at 4, 39, 42 (Atkinson Dec. ¶ 11 and Ex. B).
Applicant “operates and manages two different retail chains, Sock Em’ and
Sportsfan, both of which sell clothing and related accessories.” 26 TTABVUE 2
(Friedman Dec. ¶ 3). Like Opposer, Sock Em’, which opened its first store in 2017,
Opposition No. 91246688
8
“focuses on novelty socks, underwear and related goods.” Id. at 2, 4 (Friedman Dec.
¶¶ 3, 14). It has seven stores in the Denver/Boulder metropolitan area and an “online
e-commerce site.” Id. at 2, 4 (Friedman Dec. ¶¶ 4, 15). “Some of the goods at Sock Em’
are house branded.” Id. at 3 (Friedman Dec. ¶ 5).
Applicant chose the name and mark SOCK EM’ because it was “short, memorable
and very distinctive,” and “also sounded like ‘sock emporium,’ which is what the store
would aspire to be.” Id. at 3 (Friedman Dec. ¶ 7).
III. Opposer’s Entitlement to Statutory Cause of Action7
Entitlement to a statutory cause of action is a requirement in every inter partes
case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370,
2020 USPQ2d 10837 at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control
Components, Inc., 572 U.S. 118, 125-26 (2014)). A party in the position of plaintiff
may oppose registration of a mark when doing so is within its zone of interests and it
has a reasonable belief in damage that is proximately caused by registration of the
mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at * 6-7
(Fed. Cir. 2020) (holding that the test in Lexmark is met by demonstrating a real
interest in opposing or cancelling a registration of a mark, which satisfies the zone-
of-interests requirement, and a reasonable belief in damage by the registration of a
mark, which demonstrates damage proximately caused by registration of the mark).

7 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, 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 Sections 13 and 14 remain
equally applicable.
Opposition No. 91246688
9
Here, Opposer’s pleaded registrations, 1 TTABVUE 8-9, establish that Opposer is
entitled to oppose registration of Applicant’s mark on the ground of likelihood of
confusion. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000). In any event, “Applicant concedes standing.” 40 TTABVUE 16.
IV. Priority
Because Applicant has not counterclaimed to cancel either of Opposer’s pleaded
registrations, priority is not at issue with respect to the marks and goods identified
therein. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974). As for Opposer’s retail store services, Ms. Atkinson’s testimony is
sufficient to establish that Opposer used SOCK IT TO ME for at least online retail
stores before Applicant’s first use in 2017. 11 TTABVUE 4 (Atkinson Dec. ¶ 11).
Applicant is simply wrong in arguing that “[t]here is no, direct, reliable evidence
that Opposer used SOCK IT TO ME in connection with its online shop before 2020.”
40 TTABVUE 21. Ms. Atkinson’s testimony is “direct, reliable evidence,” even if the
accompanying documents do not explicitly indicate that they (or similar materials)
were accessible before Applicant’s first use date. Applicant’s suggestion that “a spec-
imen” is necessary to establish prior trademark rights is a non-sequitur. The stand-
ard for establishing priority in an inter partes case is different than the standard for
establishing the right to register a trademark. See Malcolm Nicol & Co. v. Witco
Corp., 881 F.2d 1063, 11 USPQ2d 1638, 1639 (Fed. Cir. 1989) (“in relying on § 2(d) of
the Lanham Act as a ground of opposition, it is not necessary that an opposer prove
prior use of a similar term in a strict trademark sense”); Central Garden & Pet Co. v.
Doskocil Mfg. Co., Inc., 108 USPQ2d 1134, 1142 (TTAB 2013).
Opposition No. 91246688
10
V. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record 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) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services. See 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.”). Opposer bears the burden of establishing that there
is a likelihood of confusion by a preponderance of the evidence. Cunningham, 55
USPQ2d at 1848. We consider the likelihood of confusion factors about which there
is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d
1160, 1162-63 (Fed. Cir. 2019).
As the parties point out, Opposer recently tried two likelihood of confusion cases
before this Board in which, as here, it asserted likelihood of confusion with its SOCK
IT TO ME mark. In the first, Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611
(TTAB 2020) (the “Fan Case”), we found no likelihood of confusion and dismissed
Opposer’s challenge to the mark SOCK IT UP for socks; in the second, Sock It To Me,
Inc. v. Hordijczuk, 2020 BL 304244 (TTAB 2020) (non-precedential) (the “Hordijczuk
Case”), we again found no likelihood of confusion and dismissed Opposer’s challenge
to the mark SOCK DIRTY TO ME for socks. In this case, we find that Applicant’s
Opposition No. 91246688
11
mark SOCK EM’ is closer to SOCK IT TO ME than either SOCK IT UP or SOCK
DIRTY TO ME, and as a result, this case has a different outcome than the Fan and
Hordijczuk Cases.
A. The Goods and Services, Channels of Trade, Classes of Consumers
and Conditions of Sale
The parties’ goods are obviously identical in part, because the pleaded
registrations identify “socks” and “underwear,” and so does the involved application.
Moreover, to the extent that the goods are in-part identical, we must presume that
the channels of trade and classes of purchasers for these goods are as well. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though
there was no evidence regarding channels of trade and classes of consumers, the
Board was entitled to rely on this legal presumption in determining likelihood of
confusion); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research
Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
The identity of the goods and their overlapping channels of trade and classes of
purchasers not only weigh heavily in favor of finding a likelihood of confusion, but
also reduce the degree of similarity between the marks necessary to find a likelihood
of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 94 USPQ2d
at 1260; In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
As for Opposer’s services, in connection with which it has established prior
common law rights, they are closely related to Applicant’s goods on their face. Indeed,
retail store services are often found to be related to goods offered thereby. In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (“we have held
Opposition No. 91246688
12
that confusion is likely where one party engages in retail services that sell goods of
the type produced by the other party”); In re Hyper Shoppes (Ohio), Inc., 837 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); In re H.J.
Seiler Co., 289 F.2d 674, 129 USPQ 347 (CCPA 1961) (“a customer who attends a
banquet which he knows is catered by the appellant would, when he encounters a
food product in the grocery store under an almost identical mark, naturally assum[e]
that it came from the catering firm”); 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.”); see also In re Accelerate s.a.l., 101 USPQ2d 2047, 2050 (TTAB 2012)
(affirming refusal to register COLOMBIANO COFFEE HOUSE for “providing food
and drink” based on registered certification mark COLOMBIAN for “coffee”); In re
Opus One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001) (affirming refusal to register
OPUS ONE for restaurant services based on a likelihood of confusion with the same
mark for wine); In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992) (finding “that
store services and the goods which may be sold in that store are related goods and
services”). We do not need evidence to know that consumers searching for socks and
underwear may search for these goods in sock and underwear stores, whether online
Opposition No. 91246688
13
or in person, and thus Opposer’s online retail store services are closely related to
Applicant’s goods.8
Moreover, sock and underwear stores such as Opposer’s (and Applicant’s) online
store are obviously typical channels of trade for socks and underwear. Similarly, there
is overlap between sock and underwear consumers and shoppers at sock and
underwear stores. Thus, the channels of trade and classes of consumers for these
services are largely the same, which also weighs heavily in favor of finding a
likelihood of confusion.
Finally, as Opposer points out, the goods in question, socks and underwear, are
inexpensive, selling for as little as $1.50 per pair, and “bought by the general public
online or off the shelf via retail and mass merchandisers and department stores under
conditions in which consumers will not take great care in making their purchases.”
11 TTABVUE 9, 184-282 (Atkinson Dec. ¶¶ 23-24 and Exs. G1-G4). This factor also
weighs heavily in favor of finding a likelihood of confusion.
B. Strength of Opposer’s Mark
Before comparing the marks, we consider the strength of Opposer’s mark, as that
impacts the scope of protection to which it is entitled. There are two types of strength:

8 To the extent Applicant argues that Opposer’s online retail services are not related to
Applicant’s goods, we are unpersuaded. Not only does the nature of Opposer’s online stores
and our case law belie the argument, but so does Mr. Friedman’s testimony that “Sock Em’”
is a “retail chain” with “seven stores … [and] an online e-commerce site” that sells “novelty
socks and undergarments.” 26 TTABVUE 2, 3 (Freedman Dec. ¶¶ 3-4, 6). To the extent
Applicant argues that retail store services provided online are substantively different than
retail store services provided in person in a physical store, we fail to see a meaningful
distinction. Socks and underwear are related to the retail sale of socks and underwear,
whether the retail sale is online or in the “real world.”
Opposition No. 91246688
14
conceptual and commercial. 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 … and its marketplace strength ….”).
Turning first to conceptual strength, because Opposer’s mark is registered for
socks and underwear, we must presume that it is inherently distinctive, i.e., that it
is at worst suggestive of those goods. 15 U.S.C. § 1057(b) (registration is “prima facie
evidence of the validity of the registered mark”); In re Fiesta Palms, LLC, 85 USPQ2d
1360, 1363 (TTAB 2007) (when mark is registered on the Principal Register, “we must
assume that it is at least suggestive”). While Opposer’s mark is thus valid and
inherently distinctive for the goods identified in the pleaded registrations, the record
reveals that the mark is suggestive for the socks identified in the ’688 Registration
and thus conceptually somewhat weak for those goods, as well as Opposer’s sock store
services.
Obviously, the first word in Opposer’s pleaded mark, SOCK in SOCK IT TO ME,
is generic for socks. This finding is supported by, and the reason for, Opposer’s
disclaimer of SOCK in the ’688 Registration, which is essentially an admission that
the term was not distinctive at the time of registration. See In re Carlson, 91 USPQ2d
1198, 1200 (TTAB 2009) and Bass Pro Trademarks LLC v. Sportsman’s Warehouse,
Inc., 89 USPQ2d 1844, 1851 (TTAB 2008). See also Alcatraz Media Inc. v. Chesapeake
Marine Tours Inc., 107 USPQ2d 1750, 1762 (TTAB 2013), aff’d mem., 565 Fed. Appx.
900 (Fed. Cir. 2014). It is also supported by a number of third-party registrations for
Opposition No. 91246688
15
marks containing the term SOCK/SOCKS which are used for socks. 29 TTABVUE.9
In several of those registrations, the term SOCKS is disclaimed. Id. at 8, 10, 12, 16.
See also Fan Case, 2020 USPQ2d *9-10 (“we find that the mark [SOCK IT TO ME],
taken as a whole, is inherently distinctive, although its strength is somewhat limited
by its first word, SOCK, which is generic for socks”).
On the other hand, we must consider the mark as a whole, and when we do we
find that the phrase SOCK IT TO ME is a true double entendre. In fact, as Applicant
points out, “[t]he parties mostly agree that the idiomatic phrase ‘sock it to me’ means
to deliver a physical blow or, metaphorically, to deliver a forceful comment or
reprimand.” 40 TTABVUE 15. See also 13 TTABVUE 10 (“sock it to (someone)” is
slang for “[t]o deliver a forceful comment, reprimand, or physical blow to someone
else”) and id. at 50 (“sock it to someone” is an informal phrase meaning “to say or do
something to someone in a very strong and direct way”); 26 TTABVUE 6 (Freedman
Dec. ¶ 28 (“As far as I know, ‘sock it to me’ means to have another deliver a physical
blow, or, metaphorically, to provide difficult information or news.”). Indeed, when
used as a verb, “sock” means “to hit, strike, or apply forcefully.” 13 TTABVUE 7.
We therefore find that Opposer’s mark conveys the phrase’s slang/informal
meaning. But in the context of Opposer’s socks, it also conveys a second meaning:
that Opposer offers socks, and by visiting Opposer’s online store, or otherwise
purchasing Opposer’s socks, consumers will be, essentially, hit or “socked” with socks.

9 Sometimes, third-party registrations may function as a dictionary, by showing “the sense
in which a mark is used in ordinary parlance.” Juice Generation, Inc. v. GS Enter., LLC, 794
F.2d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015).
Opposition No. 91246688
16
The sock field apparently lends itself to true double entendres, as third parties have
registered marks such as THINK OUTSIDE THE SOCKS, SCHOOL OF SOCK and
SOCKSMITH for socks. 29 TTABVUE 7, 11, 13. True double entendres such as these
and Opposer’s pleaded mark are distinctive, notwithstanding that they may contain
terms which would be merely descriptive standing alone. In re Colonial Stores Inc.,
394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Tea & Sympathy, Inc., 88 USPQ2d
1062 (TTAB 2008).
In short, we find here, as we found in the Fan Case, “that Opposer’s [pleaded]
mark [SOCK IT TO ME], taken as a whole, is inherently distinctive, although its
conceptual strength is somewhat limited by the first word of the mark, which is
generic.” Fan Case, 2020 USPQ2d 10611 * 11.
As for commercial strength, Opposer has been fairly successful. It has sold “more
than 12 million pairs of socks branded with the SOCK IT TO ME trademark in the
United States” since 2004. 11 TTABVUE 4 (Atkinson Dec. ¶ 12). While Opposer
designated its gross revenues from 2007-2017 as confidential, Opposer’s sock sales
grew significantly during that time and they are substantial. Opposer’s advertising
expenses (also confidential) are not insubstantial, but it is not clear whether they all
relate to or promote the SOCK IT TO ME mark. Opposer has enjoyed some media
attention, including in well-known national publications such as the Wall Street
Journal, Inc., Vogue and Forbes. 11 TTABVUE 7-8, 142, 151, 166-181 (Atkinson Dec.
¶ 19 and Ex. F).
Opposition No. 91246688
17
In total, Opposer’s commercial strength evidence, while far from overwhelming,
reveals that Opposer’s mark is recognized by a fair number of sock consumers, and
we have balanced this against the mark’s suggestiveness. We find that overall,
Opposer’s pleaded mark is entitled to no less than an average scope of protection.
C. Comparing the Marks
We consider the marks “in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
(quoting du Pont, 177 USPQ at 567). Here, while the marks have a number of
similarities and a number of differences, we find that their similarities outweigh the
differences.
With respect to appearance and sound, the marks are similar because they both
begin with SOCK, and different because IT TO ME in Opposer’s mark and EM’ in
Applicant’s mark look and sound different. Notwithstanding that SOCK is generic for
some of the goods in question, it may not be ignored, and it comes first in both marks,
increasing its significance in our analysis of whether there is a likelihood of confusion.
Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
often the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”); see also, Palm Bay Imps. Inc., 73 USPQ2d at 1692;
Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992).
More importantly, in both marks SOCK is part of a phrase, and thus to consider
the marks “in their entireties” requires consideration of each phrase’s meaning and
Opposition No. 91246688
18
commercial impression. In both marks, SOCK is used not only as a generic noun to
indicate the goods on offer, but also in this context as a much more distinctive verb,
to convey being hit or “socked.” In fact, Opposer’s mark uses SOCK in the well-known
expression “sock it to me,” to convey as another (“double”) meaning that Opposer
provides socks, perhaps forcefully or eagerly. Alternatively, some consumers could
perceive the mark as conveying that Opposer’s customers are so enthusiastic about
socks that they will seek them out aggressively and receive them with great
appreciation. Consumers are likely to perceive Applicant’s mark similarly, with
SOCK acting both as a generic noun to indicate the goods in question, and
simultaneously as a more distinctive verb to convey providing or “hitting” multiple
customers (“EM’”) with socks. Indeed, “‘em” is an informal pronoun meaning “them.”
13 TTABVUE 33, 35, 37. While Applicant’s mark places the apostrophe at the end of
the term rather than the beginning, apparently intending to convey the impression
of a “sock emporium,” we find that consumers would perceive this term in Applicant’s
mark as meaning “them.” In fact, multiple dictionaries define “‘em” as meaning
“them” and none define “‘em” or for that matter “em’” with an apostrophe at the end
of the term as meaning “emporium.” As Applicant concedes, its mark could mean
“deliver a physical blow to them” or “provide them with socks,” 40 TTABVUE 35, and
in either event it would convey a similar meaning as and create a similar commercial
impression to Opposer’s mark. As Applicant puts it, “Applicant’s stores, indeed,
provide customers with socks.” Id. at 36.
Opposition No. 91246688
19
In other words, Opposer’s mark conveys “ME” getting “hit” or “socked” by socks,
while Applicant’s mark conveys “THEM” getting “hit” or “socked” by socks. This
distinction is not particularly significant. The parties each use SOCK as both a
generic noun and a distinctive verb in double entendres which simultaneously
describe the goods and convey getting “hit” or “socked” by socks. The marks convey
such similar meanings and commercial impressions that consumers familiar with
Opposer’s SOCK IT TO ME socks and underwear or its SOCK IT TO ME sock and
underwear stores may perceive Applicant’s mark SOCK EM’ as a new line of
Opposer’s goods or services, perhaps directed to providing multiple individual family
members or members of other groups with identical socks, or socks which all fit
within a chosen theme.
We are unpersuaded by Applicant’s evidence that “Opposer’s National Sales Man-
ager admitted there was no likelihood of confusion between the marks.” 40 TTABVUE
38-41. Opposer’s National Sales Manager merely tracks the performance of regional
independent sales agents; it is “not a senior sales position and was not part of [Op-
poser’s] leadership.” 35 TTABVUE 3 (Hooe Dec. ¶ 6). The National Sales Manager in
question “had no role or responsibility for trademark matters,” and “was not author-
ized to speak on behalf of [Opposer] regarding trademark matters.” Id. at 3, 4 (Hooe
Dec. ¶¶ 7, 15). Moreover, and obviously, when those with responsibility for and au-
thority over Opposer’s trademark matters looked at the issue, they decided to bring
this proceeding and take it through trial. In any event, “[u]nder no circumstances,
may a party’s opinion, earlier or current, relieve the decision maker of the burden of
Opposition No. 91246688
20
making his own ultimate conclusion on the entire record.” Interstate Brands Corp. v.
Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153 (CCPA 1978).
VI. Conclusion
The parties’ goods are identical and Opposer’s retail sock and underwear stores
are obviously closely related to Applicant’s socks and underwear; the parties’ goods
and services also travel in overlapping channels of trade to the same consumers.
Under these circumstances, the parties’ marks are similar enough, especially in
meaning and commercial impression, that consumer confusion is likely.

Decision: The opposition to registration of Applicant’s mark on the ground of
likelihood of confusion is sustained.