Vice Media Canada Inc. and Vice Media LLCv.Stephan S. Dalal

Trademark Trial and Appeal Board

Sep 29, 2020

91234676 (T.T.A.B. Sep. 29, 2020)

Mailed: September 29, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Vice Media Canada Inc. v. Vice Media LLC
v.
Stephan S. Dalal
___

Opposition No. 91234676
___

John Pelosi and Angelo DiStefano of Pelosi Wolf Efron & Spates LLP
for Vice Media Canada Inc. and Vice Media LLC.

Stephan S. Dalal, pro se.
______
Before Wellington, Adlin and Hudis,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Stephan S. Dalal seeks registration of the mark VICELIFE, in standard
characters, for a wide variety of apparel, including “t-shirts,” “sweat shirts” and
“athletic apparel, namely … pants … hats and caps ….” in International Class 25.1
In their notice of opposition, Opposers Vice Media Canada Inc. and Vice Media LLC

1 Application Serial No. 87077350 was filed on June 20, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on an alleged bona fide intent to use the mark in
commerce.
This Opinion is not a
Precedent of the TTAB
Opposition No. 91234676
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allege prior use and registration of the mark VICE, in typed form, for “clothing for
men, women, and children, namely … t-shirts …sweatshirts … pants … hats, and
caps” in International Class 25,2 and ownership of a multiclass application to register
the mark VICELAND, in standard characters, for, inter alia, “clothing, namely, t-
shirts … sweatshirts” and “headgear, namely, caps, hats …” in International Class
25.3 As grounds for opposition, Opposers allege that use of Applicant’s mark would be
likely to cause confusion with Opposers’ marks under Trademark Act Section 2(d), 15
U.S.C. § 1052(d).4 In his answer, Applicant denies the salient allegations in the notice
of opposition.
I. The Record
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, Opposers
introduced:
Testimony Deposition of Applicant, and the exhibits
thereto (“Dalal Tr.”). 12 TTABVUE 2-120.5

2 Registration No. 3053079, issued January 31, 2006; renewed.
3 Application Serial No. 87009077 was filed on April 21, 2016 under Trademark Act Section
1(b), based on an alleged bona fide intent to use the mark in commerce. It appears that after
trial, this application was divided, with the Class 25 goods now in child application Serial
No. 87983321.
4 Opposers sought leave to amend the notice of opposition to add a claim that Applicant lacked
a bona fide intention to use his mark on the filing date of the involved application, but their
motion for leave to amend was denied as untimely. 14 TTABVUE; 19 TTABVUE.
5 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. 91234676
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Testimony Declaration of Kim Patel, Opposer Vice Media
LLC’s Director, Global Corporate Strategy, and the
exhibits thereto (“Patel Dec.”). Id. at 121-210.

Testimony Declaration of Michael S. Palmisciano, an
attorney with Opposers’ former law firm, and the exhibits
thereto (“Palmisciano Dec.”). Id. at 211-256.

Testimony Declaration of Clark A. Freeman, another
attorney with Opposers’ former law firm (“Freeman Dec.”).
Id. at 257-258.

Applicant did not take any testimony or introduce any other evidence.
II. Opposers and Their Marks
Ms. Patel refers to Opposers collectively as “Vice” and avers that they are “sister
companies and well-known media companies that operate in North America and
throughout the world.” Id. at 122 (Patel Dec. ¶ 5). “Vice” started as a “small
counterculture magazine” in 1994, and is now “a multi-billion dollar global digital
media and broadcasting empire that operates throughout the United States.” Id.
(Patel Dec. ¶ 7).
Opposers’ “vice.com” website “features original youth-oriented reporting on
current events, trends, and counterculture and averages approximately 42.1 million
unique visitors per month,” while the Vice YouTube page “has over 10.6 million
subscribers and its videos have over 2 billion views.” Id. (Patel Dec. ¶¶ 8-9). Opposers’
Emmy Award-winning television show “Vice” (on HBO) has aired 113 episodes over
six seasons. Id. at 122-23 (Patel Dec. ¶ 10). Opposers offer additional television
programs under the VICE mark, and operate the VICELAND cable network which
launched in 2016 and is available in over 70 million homes in the United States. Id.
at 123 (Patel Dec. ¶¶ 11, 13).
Opposition No. 91234676
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Opposers branched out into the clothing business in 2017. Id. at 125 (Patel Dec.
¶ 18). Specifically, through a licensing deal with Urban Outfitters, Opposers sell
VICE-branded clothing in Urban Outfitters online and traditional stores. Id. at 126
(Patel Dec. ¶ 26-28). And, through a licensing agreement with Lakai, Opposers offer
VICELAND-branded clothing on the “lakai.com” website. Id. at 125-26 (Patel Dec.
¶¶ 22-25). Opposers also offer VICE-branded clothing on their “vice.com” website. Id.
at 126-127 (Patel Dec. ¶¶ 29-32). The following are representative depictions of
Opposer’s VICE and VICELAND clothing and footwear:

Opposition No. 91234676
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Id. at 126, 127, 201, 209, 211 216 (Patel Dec. ¶¶ 24-25, 28 and 31-32 and Exs. I and
J) and (Palmisciano Dec. ¶ 2 and Ex. A).
III. Opposers’ Section 2(d) Claim
Before addressing whether the parties’ marks are likely to be confused, we must
first consider whether Opposers are entitled to bring this proceeding. If they are we
must then consider whether priority is at issue and if it is which party has it. See 15
U.S.C. §§ 1052(d) and 1063.
A. Opposer’s Entitlement to Statutory Cause of Action6
To establish entitlement to a statutory cause of action under Section 13 of the
Trademark Act, such as a cause of action for likelihood of confusion, a plaintiff must
demonstrate a real interest in the proceeding and a reasonable belief of damage.
Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020
USPQ2d 10837 at *3 (Fed. Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen.
Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012);
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). Here,
Opposers have established their entitlement to bring this proceeding because they
have a “real interest” and a “reasonable belief of damage.” Australian Therapeutic,
2020 USPQ2d 10837 at *3. Indeed, Opposers’ pleaded registration, which was

6 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. 91234676
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properly made of record, 1 TTABVUE 14, establishes that Opposers are 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).
B. Priority
Because Applicant has not counterclaimed to cancel Opposers’ pleaded
registration, priority is not at issue with respect to the mark and goods identified
therein. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974). In any event, Opposers have established common law use of their
marks for clothing, prior to Applicant’s filing date. 12 TTABVUE 125- (Patel Dec. ¶¶
18-32 and Exs. I and J).
C. Will the Marks and Sources of the Goods Be Confused?
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. 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.”). Opposers bear the burden of establishing that there is a
Opposition No. 91234676
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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). We focus our analysis on Opposers’ pleaded registration for VICE
for clothing.7
1. The Goods and Services
The parties’ goods are identical in-part because there is no difference between
Opposer’s “clothing for men, women, and children, namely … t-shirts …sweatshirts”
and Applicant’s “t-shirts” and “sweatshirts.” In addition, Opposer’s “clothing for men,
women, and children, namely … pants … hats, and caps” encompasses Applicant’s
more narrowly defined “athletic apparel, namely … pants … hats and caps ….”
Because the goods are in-part identical, we must presume that the channels of
trade and classes of purchasers 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); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028

7 While Ms. Patel claims in her declaration that “Opposers own a family of registered and
common law trademarks for the VICE mark, VICELAND mark and other VICE-formative
marks,” 12 TTABVUE 124 (Patel Dec. ¶ 17), Opposers failed to so plead, and the issue was
not tried. We have therefore considered each of Opposers’ pleaded marks separately, without
regard to Opposers’ “family” argument. Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria
La Michoacana Inc., 98 USPQ2d 1921, 1927 (TTAB 2011) (“Petitioner’s reference to a family
of marks in its brief will not be considered because this claim was neither pleaded nor tried
by the parties.”).

Opposition No. 91234676
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(TTAB 2011). These factors weigh heavily in support of finding a likelihood of
confusion.
The identity of the goods and services 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 Group Ltd., 93 USPQ2d 1243, 1248
(TTAB 2010).
2. The Marks
The marks are quite similar “in their entireties as to appearance, sound, connota-
tion 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) (quot-
ing du Pont, 177 USPQ at 567). Indeed, Applicant’s mark incorporates the entirety of
Opposers’ VICE mark as its first component and merely appends to it the word LIFE.
This distinction is insufficient to prevent confusion between the sources of the parties’
identical goods. See In re Mighty Leaf Tea, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010) (find-
ing ML in standard characters confusingly similar to ML MARK LEES in stylized form);
In re Chica Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007) (affirming refusal to register
CORAZON BY CHICA & Design based on a registration of CORAZON in stylized format); In
re Apparel Ventures, Inc. 229 USPQ 225, 226 (TTAB 1986) (“Applicant has chosen as its mark
the same word already registered by registrant and simply added ‘by sassafras’ to it. The
words ‘by sassafras’ indicate to prospective purchasers that ‘sassafras’ is the name of the
entity which is the source of the ‘SPARKS’ brand clothing. Prospective purchasers do not
Opposition No. 91234676
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necessarily know or care which business calls itself ‘sassafras,’ but they would assume that
when ‘SPARKS’ appears on two similar products they both come from the same source.”).
Indeed, VICE is the dominant portion of Applicant’s mark and the entirety of
Opposers’ mark. It is dominant in Applicant’s mark because it comes first. 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 Imports Inc., 73 USPQ2d at 1692;
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992).
Further, the trailing term in Applicant’s mark, LIFE, is not particularly
distinctive, especially for clothing products. It conveys a “lifestyle,” and clothing
associated with that lifestyle. In fact, as Applicant indicated in response to Opposer’s
Interrogatory No. 2, he “seeks to protect a mark associated with a life style Applicant
founded in anticipation of selling goods or services.” 12 TTABVUE 82. Applicant’s
testimony explains further:
Opposition No. 91234676
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12 TTABVUE 44. In other words, VICELIFE connotes the “VICE” lifestyle, another
reason why VICE is the dominant portion of Applicant’s mark.
Notwithstanding that Opposers failed to plead or prove ownership of a “family” of
VICE marks, we also have considered that Opposers use not only the mark VICE, but
also the mark VICELAND and additional marks that begin with the element VICE,
including VICE MEDIA, increasing the likelihood that consumers will perceive
Applicant’s VICELIFE mark as one more variation of Opposers’ VICE mark. Id. at
124-25, 131-162, 175-198 (Patel Dec. ¶ 17 and Exs. A-C, E-H). See Humana Inc. v.
Humanomics Inc., 3 USPQ2d 1696, 1700 (TTAB 1987) (“The fact that Humana has
itself used variations of its house mark by adding matter to it, e.g. HUMANA CARE
Opposition No. 91234676
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and HUMANA CARE PLUS, increases the likelihood that HUMANOMICS would be
perceived as another variation. We do not consider the above to be a ‘family of marks’
result ….”); Varian Associates, Inc. v. Leybold-Heraeus Gesellschaft mit Beschrankter
Haftung, 219 USPQ 829, 833 (TTAB 1983).
In short, when considered in their entireties, we find that Opposers’ mark VICE
and Applicant’s mark VICELIFE are more similar than dissimilar in appearance,
sound and meaning. They also convey the same essential commercial impression –
clothing somehow associated with “VICE.” This factor also weighs in favor of finding
a likelihood of confusion, especially because the goods are in-part identical.
3. The Strength of Opposers’ Mark
We agree with Opposers that their VICE mark is conceptually strong. In fact,
there is no evidence that VICE is anything other than arbitrary for clothing. See The
Nautilus Grp. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1181
(Fed. Cir. 2004).
Opposers’ VICE mark is also commercially strong for its media offerings. Indeed,
Opposers’ YouTube videos have been viewed more than 2 billion times, their
“vice.com” website draws approximately 42.1 million unique visitors per month, their
Viceland cable network is available in more than 70 million United States homes,
Opposers’ programming has won numerous awards and Opposers have received
unsolicited media coverage in The New York Times, Washington Post, USA Today,
NBC News, Hollywood Reporter and CNN. 12 TTABVUE 122-24 (Patel Dec. ¶¶ 9-16).
While there is no evidence that the VICE mark is also commercially strong for
clothing, its strength for Opposers’ media products and services weighs in Opposers’
Opposition No. 91234676
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favor. See L’Oreal S.A. and L’Oreal USA, Inc. v. Marcon, 102 USPQ2d 1434, 1438
(TTAB 2012) (“Assuming that applicant is correct that opposer is famous (only) for
its cosmetic products, the effect of such fame is that customers are more likely to
presume an association with opposer whenever the same or similar mark is used
on other products, even if they are not as closely related as might otherwise be
required.”). This factor also supports a finding of likelihood of confusion.
4. Whether the Goods are Subject to Impulse Purchase
Opposers argue that the parties’ goods are “common and inexpensive,” and that
as a result there is an increased likelihood of confusion. On the “vice.com” store,
Opposers’ VICE-branded t-shirts, which are among the goods identified in both the
involved application and Opposers’ pleaded registration, sell for $30.00. 12
TTABVUE 209-10. We agree with Opposers that consumers would be unlikely to
exercise a significant degree of care in purchasing t-shirts and hats as those items
are identified in Applicant’s involved application and Opposers’ pleaded registration.
T-shirts and hats may come in a variety of forms and be sold within a wide range of
prices, but neither Opposers’ nor Applicant’s identification of goods contains any
limitations as to price, or type of consumers, and we must therefore consider not just
high fashion t-shirts and caps, but also low-end, inexpensive t-shirts and caps. We do
not need evidence to know that clothing purchasers often wear simple, plain, mass
market, low-cost t-shirts and hats. We must base our decision on the “least
sophisticated potential purchasers” for the goods. See e.g. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162-63 (Fed.
Cir. 2014). This factor also supports a finding of likelihood of confusion.
Opposition No. 91234676
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IV. Conclusion
Because the parties’ goods are in-part identical, the channels of trade and classes
of consumers are presumed to overlap and the marks are similar, confusion is likely.8

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

8 Applicant’s argument that confusion is unlikely because the examining attorney approved
Applicant’s mark for publication, 20 TTABVUE 3, is not well taken. 15 U.S.C. §1063; Formica
Corp. v. Saturn Plastics & Engineering Co., 185 USPQ 251, 253 (TTAB 1975) (“it is well
settled that a finding by the Examiner of Trademarks on the basis of an ex parte showing is
not binding on the Trademark Trial and Appeal Board in a subsequent inter partes
proceeding wherein an opposer is contesting the applicant's right to register the mark”).