Wet Holdings (Global) Ltd.v.Paul S. Doran and Alykhan Tharani

Trademark Trial and Appeal Board

Feb 25, 2021

92069595 (T.T.A.B. Feb. 25, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 25, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Paul S. Doran
v.
Wet Holdings (Global) Ltd.
_____

Opposition No. 91239701
_____

Wet Holdings (Global) Ltd.
v.
Paul S. Doran and Alykhan Tharani
_____
Cancellation No. 92069595

Paul S. Doran, pro se and Alykhan Tharani, pro se.

Edwin D. Schindler, Esq. for Wet Holdings (Global) Ltd.
_____
Before Wolfson, Heasley and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Opposition No. 91239701 & Cancellation No. 92069595

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I. Background and Evidentiary Record
This consolidated proceeding1 consists of:
(1) an opposition based on priority and likelihood of confusion, filed by Paul S.
Doran (“Doran”) to the application of Wet Holdings (Global) Ltd. (“Wet
Holdings”) to register the mark ,2 with a
disclaimer of WATER ENHANCING TECHNOLOGIES, for “Apparatus for the
cleansing, purification and pH enhancement of water; water conditioning
apparatus for producing coherent water; apparatus for cleansing grey water;
apparatus for the recovery of water waste; water treatment apparatus, namely,
water conditioning units for changing the structure and resonance of water

1 The Board consolidated these proceedings on November 16, 2018, and designated
Opposition No. 91239701 as the parent case. 13 TTABVUE 2. TTABVUE citations in this
decision are to the record in the parent case unless otherwise indicated. “TTABVUE” refers
to the Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6
(TTAB 2014). Specifically, the number preceding TTABVUE corresponds to the docket entry
number, and any numbers following TTABVUE refer to the page number(s) of the docket
entry where the cited materials appear.
2 Application Serial No. 87582805 was filed on August 24, 2017, based on Wet Holdings’
alleged bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b). The application includes the following Description of the Mark: “The
mark consists of a blue drop of water with the stylized word ‘WET’ spelled in the drop of
water and with the gray stylized wording ‘WATER ENHANCING TECHNOLOGIES’
appearing underneath the drop of water. The color white appears as background only and is
not a claimed feature of the mark.” The colors blue and gray are claimed as features of the
mark.
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molecules for the enhancement of residential, commercial, and industrial
water supplies” in International Class 11.
(2) a cancellation based on priority and likelihood of confusion, filed by Wet
Holdings against the pleaded registration owned by Doran and Alykhan
Tharani (“Tharani”) (jointly, “Registrants”) for the mark ,3
with a disclaimer of WATER ENHANCEMENT TECHNOLOGY, for “Water
treatment apparatus, namely, water conditioning units for changing the
structure and resonance of water molecules for the enhancement of residential,
commercial, and industrial water supplies” in International Class 11.
The parties agree that a likelihood of confusion exists between their respective
marks, and their dispute centers on priority.4 The consolidated proceeding is fully
briefed.5

3 Registration No. 5392693 issued January 30, 2018 from an underlying application filed
November 14, 2016, for which a statement of use was filed claiming first use and use in
commerce on November 21, 2017. The registration includes the following Description of the
Mark: “The mark consists of the letters ‘WET’ above the words ‘Water Enhancement
Technology.’” Color is not claimed as a feature of the mark.
4 4 TTABVUE 3 (Wet Holdings’ statement that it “admits that the respective trademarks of
the parties are confusingly similar and that a likelihood of confusion exists….”); Cancel. No.
92069595, 1 TTABVUE 5 (Wet Holdings’ Petition, stating “[a] likelihood of confusion exists
between the respective trademarks of Wet Holdings and Respondents….”); 4 TTABVUE 3
(Opposers’ Answer, stating “Respondents do agree that a likelihood of confusion exists
between the respective trademarks … as said trademarks are used for the same, similar or
related and/or competing goods….”).
5 In a December 2, 2020 Order, 21 TTABVUE, the Board granted Opposer’s motion to reopen
their time to file an opening brief, and accepted Wet Holdings’ July 10, 2020 opening brief
and Opposers’ August 5, 2020 rebuttal brief. The Board allowed Wet Holdings until December
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The parties had the benefit of a discovery conference conducted with Board
participation. The post-conference order reflects that they discussed the procedures
for properly taking and submitting testimony, and that the parties were directed to
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 700 on trial
procedure and how to introduce evidence. 15 TTABVUE 10.6 The order also stated,
“No paper, document, or exhibit will be considered as evidence in the case unless it
has been introduced in evidence in accordance with the applicable rules.” Id.
None of the parties timely submitted any evidence. See 37 C.F.R. § 2.121(a) & (b).
Opposer Doran also did not submit a trial brief by the deadline, so the Board issued
an order allowing Doran time to show cause why the Board should not treat his
failure to file a brief as a concession of the case. 16 TTABVUE. Doran responded that
he had not lost interest in the case, and Tharani joined in the response, indicating
that the two pro se litigants also retained an interest in the cancellation proceeding.
17 TTABVUE at 3.
The response included a motion to reopen the testimony period, id., which the
Board denied. 21 TTABVUE. The Board’s order stated in relevant part that “Doran
and Tharani did not submit any evidence until they filed it in connection with their
August 5, 2020 rebuttal brief. While the delay in submitting an opening brief was not
substantial, there was a lengthy delay in Doran and Tharani’s filing of evidence,” and

19, 2020 to file its rebuttal brief in the cancellation proceeding, and Wet Holdings did so prior
to the deadline. 21 TTABVUE 7.
6 The order noted the Registrants’ pro se status, the Board having strongly advised them to
obtain legal counsel, and that if the Registrants chose to proceed without counsel, they would
be required to familiarize themselves with Board procedures and rules. 15 TTABVUE 2.
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“evidence must be made properly of record pursuant to the relevant Trademark
Rules, and not merely attached to a brief.” Id. at 5 & n.3 (citing Swiss Watch Int’l Inc.
v. Federation of the Swiss Watch Ind., 101 USPQ2d 1731, 1734-35 (TTAB 2012)
(declaration and exhibits submitted with brief not an acceptable way to make
evidence of record)).
Despite clear guidance from the Board regarding the schedule for and manner of
submitting evidence, none of the parties introduced evidence during their respective
testimony periods. Rather, the parties attached exhibits to their briefs in this case,
which fails to satisfy the Board’s rules and the scheduling order regarding the timing
of and procedure for introducing evidence. Accordingly, these proffered exhibits are
not part of the record and receive no consideration. See Baseball America Inc. v.
Powerplay Sports Ltd., 71 USPQ2d 1844, 1846 n.8 (TTAB 2004) (materials submitted
outside of applicant’s assigned testimony period and which failed to comply with the
Board’s evidentiary rules given no consideration); TBMP § 706 (“Evidence not
obtained and filed in compliance with the rules of practice governing inter partes
proceedings before the Board will not be considered by the Board.”).
As a result, the record in this consolidated proceeding consists only of the file of
Wet Holdings’ opposed application and the file of Registrants’ challenged registration,
which form part of the record without any action by the parties under Trademark
Rule 2.122(b), 37 C.F.R. § 2.22(b).
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II. Entitlement to a Statutory Cause of Action7
Entitlement to a statutory cause of action must be established 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, 109 USPQ2d 2061, 2067 n.4 (2014)).
A party in the position of plaintiff may oppose registration of a mark or petition to
cancel a registration when he or she demonstrates an interest falling within the zone
of interests protected by the statute, 15 U.S.C. §§ 1063 & 1064, and 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).
Doran’s pleaded registration (which he co-owns with Tharani) establishes his
statutory entitlement to the opposition based on alleged likelihood of confusion
between the registered mark and Wet Holdings’ mark. See Coach Servs. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012);
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000). Wet Holdings’ statutory entitlement to petition to cancel the pleaded
registration is inherent in its position as defendant in the opposition. See Harry
Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1428 (TTAB 2014)

7 Board 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.” Despite the change in
nomenclature, the substance of our analysis of this issue in our prior decisions and those of
the Federal Circuit interpreting Sections 13 and 14 remain equally applicable. See
Spanishtown Enters., Inc. v. Transcend Resources, Inc., 2020 USPQ2d 11388, at *2 (TTAB
2020).
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(“Applicant has standing based on opposers’ assertion of their marks and
registrations against applicant in their notice of opposition”); Anthony’s Pizza & Pasta
Intl. Inc. v. Anthony's Pizza Holding Co., 95 USPQ2d 1271, 1274 (TTAB 2009)
(“Defendant has standing to cancel plaintiff’s pleaded registration by virtue of being
the defendant in the consolidated proceeding, and the fact that plaintiff has asserted
its registration against defendant.”), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010). Thus,
in both the opposition and the cancellation, the party in the position of plaintiff has
demonstrated an interest falling within the zone of interests protected by the
respective provisions of the statute, and a reasonable basis for inferring proximate
causation of damage.
III. Priority
Priority is an issue in both the opposition and the cancellation proceeding because,
although Registrants’ registration is of record, Wet Holdings has petitioned to cancel
it. See Massey Junior Coll., Inc. v. Fashion Inst. of Tech., 492 F.2d 1399, 181 USPQ
272, 275 n.6 (CCPA 1974) (“prior use need not be shown by a plaintiff relying on a
registered mark unless the defendant counterclaims for cancellation”). Thus, the
parties in this case bear the burden of establishing priority in connection with their
respective claims of likelihood of confusion. To establish priority on a likelihood of
confusion claim under Section 2(d) of the Trademark Act, the party must prove by a
preponderance of the evidence that, vis-à-vis the adverse party, it owns proprietary
rights in “a mark or trade name previously used in the United States . . . and not
abandoned . . . .” Threshold.TV, Inc. v. Metronome Enters., Inc., 96 USPQ2d 1031,
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1036-37 (TTAB 2010) (citing Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317,
209 USPQ 40, 44 (CCPA 1981)).
Because the only evidence of record consists of the files of the opposed application
and pleaded registration, their filing dates determine priority.8 “The allegation in an
application for registration, or in a registration, of a date of use is not evidence on
behalf of the applicant or registrant; a date of use of a mark must be established by
competent evidence.” Trademark Rule 2.122(b)(2); 37 C.F.R. § 2.122(b)(2).
Particularly relevant in this case, “‘competent evidence’ … includes either party’s
application or registration for the relevant mark, for when an application or
registration is of record, the party may rely on the filing date of the application for
registration, i.e., its constructive use date. The result is that either party in this case
may rely on the filing date of its various applications -- without further proof -- to
establish priority.” Central Garden & Pet Co. v. Doskocil Mfg. Co., Inc., 108 USPQ2d
1134, 1139-40 (TTAB 2013) (citing Syngenta Crop Protection Inc. v. Bio-Chek LLC,
90 USPQ2d 1112, 1119 (TTAB 2009); Brewski Beer Co. v. Brewski Bros. Inc., 47
USPQ2d 1281, 1284 (TTAB 1998) (“petitioner or respondent may rely on its
registration for the limited purpose of proving that its mark was in use as of the
application filing date”)).
The November 14, 2016 filing date of the underlying application that resulted in
Registrants’ pleaded registration establishes their constructive use date for purposes

8 We do not consider or address the parties’ priority arguments that rely on the exhibits to
the briefs, which are not part of the record.
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of priority. This priority date precedes the August 24, 2017 filing date of Wet
Holdings’ application. Accordingly, Doran has priority in the opposition, satisfying
this element of his likelihood of confusion claim. By contrast, Wet Holdings lacks
priority, and therefore its likelihood of confusion claim in the cancellation proceeding
fails.
IV. Opposer Doran’s Likelihood of Confusion Claim
As noted above, the parties agree that a likelihood of confusion exists between
their respective marks.9 We concur.
Our determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a 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, hereinafter referred to as “DuPont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). A likelihood of
confusion analysis often focuses on 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

9 18 TTABVUE 10 (Registrants’ Brief, stating that “Opposer/Respondent contend there is
overwhelming likelihood of confusion”); 19 TTABVUE 11 (Wet Holdings’ Brief, stating that
“Doran and Wet Holdings agree that their respective marks are confusingly similar, thereby
rendering the outcome of Doran’s Opposition and Wet Holdings’ related Petition for
Cancellation a “priority of use” contest”); Cancel. No. 92069595, 1 TTABVUE 5 (Wet
Holdings’ Petition, stating “[a] likelihood of confusion exists between the respective
trademarks of Wet Holdings and Respondents….”); 4 TTABVUE 3 (Opposers’ Answer, stating
“Respondents do agree that a likelihood of confusion exists between the respective
trademarks … as said trademarks are used for the same, similar or related and/or competing
goods….”).
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the goods and differences in the marks.”). Indeed, given that the entire record in this
case consists only of the subject application file and pleaded registration file, these
are the only DuPont factors for which we have evidence. The parties do not argue any
other factors.
If likelihood of confusion exists with respect to any of Wet Holdings’ identified
goods in its single-class application, the opposition must be sustained. See Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981).
A. The Goods, Trade Channels and Classes of Consumers
The identifications of goods in both the application and registration at issue
include “water treatment apparatus, namely, water conditioning units for changing
the structure and resonance of water molecules for the enhancement of residential,
commercial, and industrial water supplies.” Thus, the goods are identical in part, and
the second DuPont factor weighs heavily in favor of a likelihood of confusion.
Under the third DuPont factor, because the goods overlap, we presume as a matter
of law that the trade channels also overlap, at least in part. See Am. Lebanese Syrian
Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB
2011) (where the services were legally identical, “the marketing channels of trade and
targeted classes of consumers and donors are the same”); see also 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
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entitled to rely on this legal presumption in determining likelihood of confusion).
Thus, the third DuPont factor also weighs heavily in favor of likely confusion.
B. Similarity of the Marks
With respect to the marks, we must compare and
“in their entireties as to appearance, sound, connotation and commercial impression.”
Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). The test
assesses not whether the marks can be distinguished in a side-by-side comparison
such as shown above, but rather whether their overall commercial impressions are so
similar that confusion as to the source of the goods offered under the respective marks
is likely to result. Coach Servs., 101 USPQ2d at 1721; see also Edom Labs. v. Lichter,
102 USPQ2d 1546, 1551 (TTAB 2012). Similarity in any one of the elements of
appearance, sound, meaning, or commercial impression suffices to support a
determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 390
F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either
form, spelling or sound alone is likely to cause confusion”); In re Inn at St. John’s,
LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810,
1812 (TTAB 2014)), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019). We also bear in
mind that, at least with respect to the identical goods, when turning to the marks,
“the degree of similarity necessary to support a conclusion of likely confusion
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declines.” Century 21 Real Estate v. Century Life of Am., 970 F.2d 874, 23 USPQ2d
1698, 1701 (Fed. Cir. 1992); see also Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367,
127 USPQ2d 1797, 1801 (Fed. Cir. 2018).
The marks share very similar wording – WET WATER ENHANCING
TECHNOLOGIES, on the one hand, and WET WATER ENHANCEMENT
TECHNOLOGY on the other hand. The first two words of each mark, WET WATER,
are identical, and the first part of a mark “is most likely to be impressed upon the
mind of a purchaser and remembered.” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9
USPQ2d 1895, 1897 (TTAB 1988); see also Palm Bay Imps., 73 USPQ2d at 1692. Also,
both marks share in common the presentation of the first word WET in a much larger
font than the remaining wording. The third words in the marks are variations of the
same root – ENHANCING and ENHANCEMENT. The fourth words in the mark are
the plural and singular version of the same word. We find that despite these minor
word variations, the closeness of the wording contributes to the visual similarity of
the marks, but even more so, to their similarity in sound and overall connotations,
particularly because “the average customer … retains a general rather than specific
impression of marks.” In re i.am.symbolic, llc, 127 USPQ2d 1627, 1630 (TTAB 2018)
(citations omitted).
Although Wet Holdings’ “blue drop of water” design adds a visual difference
between the marks, the design element merely depicts and reinforces the words WET
and WATER in Wet Holdings’ mark, and consumers therefore are unlikely to rely on
the design for source indication to distinguish Wet Holdings’ mark from the registered
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mark. The block-letter fonts used in both marks are relatively unremarkable, and do
not distinguish the marks. Overall, we find that the marks look similar and sound
almost the same.
As for connotation and commercial impression, the literal portion of Wet Holdings’
mark is very close to that in the registered mark, and neither the minor variations in
wording between the marks nor the design element in Wet Holdings’ mark change
the meaning or impression of either mark. The marks overall have the same
connotation, and the commercial impressions are quite similar.
Given the nearly identical sound, the similarity in appearance, and the strong
similarities in connotation and commercial impression of the marks at issue, the first
DuPont factor weighs in favor of a finding of likely confusion.
V. Conclusion
Based on the similarity between the marks for identical goods presumed to travel
in the same channels of trade to the same classes of purchasers, we conclude that a
likelihood of confusion exists. 15 U.S.C. § 1052(d).
Decision: The opposition is sustained. The petition to cancel is denied.