Wrangler Apparel Corp.v.Jackiem Wright

Trademark Trial and Appeal Board

Sep 23, 2021

91244732 (T.T.A.B. Sep. 23, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 23, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Wrangler Apparel Corp.
v.
Jackiem Wright
_____

Opposition No. 91244732
_____

Paul J. Kennedy and Sean P. McConnell of Troutman Pepper Hamilton Sanders
LLP for Wrangler Apparel Corp.

Andrew Williams of The Williams Law Group,
for Jackiem Wright.
_____

Before Cataldo, Bergsman and Goodman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Jackiem Wright (“Applicant”) seeks registration on the Principal Register of the
letter “W” and design, reproduced below, for “clothing, namely, shirts, pants, shorts,
sweaters, tops, jackets, swimwear, hooded sweatshirts, hats, beanies, and caps,” in
International Class 25.1

1 Application Serial No. 87846864 was filed on March 23, 2018, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere at
least as early as April 1, 2015, and first use in commerce at least as early as January 1, 2018.

Opposition No. 91244732
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The description of the mark reads as follows:
The mark consists of a bold letter “w” with a bold band
striking across the center of the “w” from left to right.
Color is not claimed as a feature of the mark.
Wrangler Apparel Corp. (“Opposer”) filed a Notice of Opposition against the
registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d). Opposer claimed ownership of seven registered marks for different
stylizations of the letter “W,” including the following:
● Registration No. 3322277 for the letter “W,” reproduced below, for “jeans, casual
pants, shorts, skirts, shirts, blouses, vests, jackets, diaper covers,” in International
Class 15;2

2 Registered October 30, 2007; renewed. The description of the mark reads, “The mark
consists of Stitching in shape of W.”
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● Registration No. 3777026 for for “headgear, namely, caps,” in
International Class 25;3 and
● Registration No. 4656517 for for “clothing, namely, tops; belts,” in
International Class 25.4
Opposer also alleged use of other “Wrangler ‘W’ marks at common law, before it
obtained registrations, and long before the filing dates of Applicant’s application.”5
Applicant, in his Answer, denied the salient allegations of the Notice of
Opposition. Applicant also pleaded 13 purported affirmative defenses that are
amplifications of Applicant’s defense to Opposer’s likelihood of confusion claim rather
than true affirmative defenses, and we construe them as amplifications of his
defenses.
Citations to the record and briefs reference TTABVUE, the Board’s online docket
system. See, e.g., New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596, *2 n.1
(TTAB 2020).

3 Registered April 20, 2010; renewed. The description of the mark reads, “The mark consists
of the letter “W.”
4 Registered December 16, 2014; Sections 8 and 15 combined declaration has been accepted
and acknowledged. The registration did not include a description of the mark.
5 Notice of Opposition ¶5 (1 TTABVUE 11).
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I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s application. The parties introduced the
testimony and evidence listed below:
A. Opposer’s testimony and evidence
1. Notice of reliance on copies of articles in printed publications in
general circulation referring to Opposer’s use of its WRANGLER
mark and its “W” marks;6 and
2. Testimony declaration of Allen Montgomery, Opposer’s Vice
President and General Manager – Western Wrangler.7
B. Applicant’s testimony and evidence
1. Applicant’s testimony declaration;8
2. Testimony declaration of Sammy Saleh, a graphic artist who helped
Applicant create his “W” logo;9

3. Testimony declaration of Lacy M. Brown, a clothing designer who
assists Applicant;10 and

4. Testimony declaration of Duran Searles, Applicant’s independent
creative consultant and brand ambassador.11

6 17 TTABVUE.
7 18-22 TTABVUE. The USPTO posted the portions of the Montgomery declaration Opposer
designated confidential at 21 TTABVUE.
8 30-31 TTABVUE. The USPTO posted the portions of Applicant’s declaration Applicant
designated confidential at 31 TTABVUE.
9 32 TTABVUE 2-6.
10 32 TTABVUE 7-9
11 32 TTABVUE 10-12.
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II. Entitlement to a Statutory Cause of Action12
Entitlement to a statutory cause of action, formerly referred to as “standing” by
the Federal Circuit and the Board, is an element of the plaintiff’s case in every inter
partes case. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277
(Fed. Cir. 2020), cert. denied, ___ S. Ct. ___ (2021); Australian Therapeutic Supplies
Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir. 2020),
reh’g en banc denied 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), petition for
cert. filed; Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish entitlement to a statutory
cause of action, a plaintiff must demonstrate: (i) an interest falling within the zone of
interests protected by the statute and (ii) a reasonable belief in damage proximately
caused by the registration of the mark. Corcamore, 2020 USPQ2d 11277 at *4. See
also Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
Opposer attached to the Notice of Opposition copies of its pleaded registrations
printed from the USPTO Trademark Status and Document Retrieval system (TSDR)
showing the current status of and title to the registrations.13 Pursuant to Trademark
Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), Opposer’s pleaded registrations may be

12 Even though we now refer to standing as entitlement to a statutory cause of action, our
prior decisions and those of the Federal Circuit interpreting “standing” under §§ 1063 and
1064 remain applicable.
13 1 TTABVUE 19-42.
Opposition No. 91244732
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made of record by attaching to the Notice of Opposition copies of Opposer’s pleaded
registrations printed from the USPTO electronic databases showing status and title.
Because Opposer has properly introduced into evidence copies of its pleaded
registrations showing the status of and title to the registrations, Opposer has
established its entitlement to a statutory cause of action. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Primrose Ret. Cmtys.,
122 USPQ2d 1030, 1032 (TTAB 2016) (standing established based on pleaded
registration made of record).
III. Priority
Because Opposer has properly made of record copies of its pleaded registrations,
and Applicant did not counterclaim to cancel them, priority is not an issue as to the
marks and goods covered by the registrations. See Mini Melts, Inc. v. Reckitt
Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d. 1400, 182 USPQ 108, 110 (CCPA 1974)).
IV. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing on the likelihood of confusion.
DuPont, 177 USPQ at 567, cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. 138, 113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co.,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen
DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie
Opposition No. 91244732
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Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) and DuPont,
177 USPQ at 567). “Not all DuPont factors are relevant in each case, and the weight
afforded to each factor depends on the circumstances. Any single factor may control
a particular case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d
994, 2020 USPQ2d 10341, *3 (Fed. Cir. 2020) (citing Dixie Rests., 41 USPQ2d at 1406-
07).
“Each case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA
1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”). See also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l v. Kappa
Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The similarity or dissimilarity and nature of the goods.
As noted above, Applicant is seeking to register its stylized letter “W” mark for
“clothing, namely, shirts, pants, shorts, sweaters, tops, jackets, swimwear, hooded
Opposition No. 91244732
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sweatshirts, hats, beanies, and caps.” Opposer has registered its stylized “W” marks
for, inter alia, caps, tops, casual pants, shorts, and shirts. The goods are in part
identical.
Under this DuPont factor, Opposer need not prove, and we need not find,
similarity as to every product listed in the descriptions of goods. It is sufficient for
Opposer to establish that any item encompassed by the description of goods in a
particular class in the application is related. Tuxedo Monopoly, Inc. v. Gen. Mills Fun
Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea,
LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); General Mills Inc. v. Fage Dairy
Processing Indus. SA, 100 USPQ2d 1584, 1588 n.1 (TTAB 2011), judgment set aside
on other grounds, 110 USPQ2d 1679 (TTAB 2014); Apple Computer v. TVNET.Net,
Inc., 90 USPQ2d 1393, 1397 (TTAB 2007). Accordingly, Applicant’s argument that
“the goods do not completely overlap,” is irrelevant.14
This DuPont factor weighs in favor of finding likelihood of confusion.
B. Established, likely-to-continue channels of trade and classes of
consumers.
Because the goods are in part identical, we presume that the channels of trade
and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to
travel in same channels of trade to same class of purchasers); In re Yawata Iron &
Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally

14 Applicant’s Brief, p. 12 (53 TTABVUE 17).
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identical goods, the channels of trade and classes of purchasers are considered to be
the same); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018)
(“Because the services described in the application and the cited registration are
identical, we presume that the channels of trade and classes of purchasers are the
same.”); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB
2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst.,
101 USPQ2d 1022, 1028 (TTAB 2011).
This DuPont factor weighs in favor of finding likelihood of confusion.
C. Conditions under which and customers to whom the parties make sales.

As noted above, the goods at issue are clothing without any restrictions or
limitations as to style, material, channels of trade, or price. When there are no such
restrictions or limitations, we treat the goods as including inexpensive as well as more
costly products that may be purchased by ordinary consumers who buy inexpensive
clothing on impulse. See Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014) (recognizing Board
precedent requiring consideration of the “least sophisticated consumer in the class”).
See also In re Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992) (finding
that all purchasers of wine may not be discriminating because while some may have
preferred brands, “there are just as likely to be purchasers who delight in trying new
taste treats.”).
This DuPont factor weighs in favor of finding likelihood of confusion.
D. The strength of Opposer’s “W” marks, including fame and the number
and nature of similar marks in use in connection with similar goods.
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In determining the strength of a mark, we consider both its inherent strength,
based on the nature of the mark itself, and its commercial strength, based on the
marketplace recognition value of the mark. See In re Chippendales USA, Inc.,
622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is
measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc.,
101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by
assessing its inherent strength and its commercial strength); Tea Bd. of India v.
Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); 2 MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 11:80 (5th ed. 2021) (“The first enquiry
focuses on the inherent potential of the term at the time of its first use. The second
evaluates the actual customer recognition value of the mark at the time registration
is sought or at the time the mark is asserted in litigation to prevent another’s use.”).
Market strength is the extent to which the relevant public recognizes a mark as
denoting a single source. Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d at 1899.
1. Inherent Strength
Because Opposer’s marks are registered on the Principal Register, with no claim
of acquired distinctiveness under Section 2(f), we presume they are inherently
distinctive, i.e., that they are at worst suggestive of the 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”).
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In fact, the various styles of Opposer’s letter “W” marks are arbitrary when used
in connection with clothing because the letter “W” has no meaning when applied to
such products. See Nautilus Group, Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330,
71 USPQ2d 1173 (Fed. Cir. 2004) (defining an arbitrary mark as a “known word used
in an unexpected or uncommon way” and observing that such marks are typically
strong). See also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) Palm Bay Imps. Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1693 (Fed. Cir. 2005) (arbitrary terms are conceptually strong trademarks).
Applicant did not introduce any third-party registrations or other evidence of
similar marks registered or used to identify clothing to show Opposer’s “W” marks
have descriptive or suggestive significance, thus, decreasing their inherent or
conceptual strength.15
We find that Opposer’s “W” marks are inherently or conceptually strong marks.

15 Applicant, in his brief, contends “a cursory search of the Trademark Electronic Search
System (“TESS”) for ‘W’ results in over 35,000 different marks that are in the TESS
database.” Applicant concedes that not all of registrations are limited solely to the letter “W”
or to clothing. However, many are for the letter “W” for clothing. Applicant’s Brief, pp. 15-16
and Exhibits 2-6 (53 TABVUE 21-22 and 37-50). Applicant did not introduce this evidence
during his testimony period. We cannot consider exhibits and other evidentiary materials
attached to a party’s brief on the case unless they were properly made of record during the
time for taking testimony. See, e.g., Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 71345, at
*2 (TTAB 2020) (exhibits attached to brief not considered); Norris v. PAVE: Promoting
Awareness, Victim Empowerment, 2019 USPQ2d 370880, at *2 (TTAB 2019) (inserted
screenshots and hypertext link within the text of reply brief, if not previously and properly
introduced into the record, not considered); Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d
1953, 1955 (TTAB 2008) (“[W]hile exhibits to briefs are not explicitly prohibited by the
Trademark Rules, the Board will usually ignore them, because they comprise either untimely
evidence or unnecessary copies of timely evidence.”). Applicant may not use his brief as a
vehicle for introducing evidence.
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2. Commercial Strength
Opposer contends its “W” marks are famous.16 Fame, if it exists, plays a dominant
role in the likelihood of confusion analysis because famous marks enjoy a broad scope
of protection or exclusivity of use because they have extensive public recognition and
renown. Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897
(Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Indus. Inc., 963 F.2d 350,
22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
“‘[L]ikelihood of confusion fame ‘varies along a spectrum from very strong to very
weak.’’” Joseph Phelps Vineyards, LLC v. Fairmount Holdings, LLC, 857 F.3d 1323,
122 USPQ2d 1733, 1734 (Fed Cir. 2017) (quoting Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059,
1063 (Fed. Cir. 2003))).
Fame may be measured indirectly by the volume of sales of and advertising
expenditures for the goods and services identified by the mark at issue, “the length
of time those indicia of commercial awareness have been evident,” widespread critical
assessments and through notice by independent sources of the products identified by
the marks, as well as the general reputation of the products and services. Bose Corp.,
63 USPQ2d at 1305-06, 1309. Although raw numbers of product sales and advertising
expenses sometimes suffice to prove fame, raw numbers alone may be misleading.

16 Notice of Opposition ¶4 (1 TTABVUE 11); Opposer’s Brief, p.11 (39 TTABVUE 17).
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Some context in which to place raw numbers may be necessary (e.g., the
substantiality of the sales or advertising figures for comparable types of products or
services). Id. at 1309.
Finally, because of the extreme deference that we accord a famous mark in terms
of the wide latitude of legal protection it receives, and the dominant role fame plays
in the likelihood of confusion analysis, it is the duty of the party asserting that its
mark is famous to prove it clearly. Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing Leading Jewelers
Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)).
Opposer introduced the following testimony and evidence to prove that its “W”
marks are famous:
● Notice of reliance on a printed publication entitled “International Business
Touch,” Business of Fashion (June 17, 2013) stating the following:
Today, Wrangler stands for not only the cowboy theme but
also the western roots and tradition of the brand. The
signature “W” letter embroidered on the back pockets has
become one of the most recognizable symbols in the world
of denim.17
● An article in Persimmon Hill Magazine, “The Jeans That Won The West”
(Winter 2004) describing Opposer as a model for marketing to a lifestyle.
So, the next time you see that fancy stitched W or the
leather rope-embossed, back pocket patch, take another
look.18

17 17 TTABVUE 12-13.
18 20 TTABVUE 147.
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●Opposer first used a stylized letter “W” in connection with western jeans in
1947.19
● Opposer uses its stylized “W” letter marks “across an entire line of denim, casual
apparel, footwear, and accessories.”20
● Opposer markets and promotes its clothing displaying the “W” marks “across
nearly every available media outlet,” including newspapers and circulars, television,
radio, as well as social media, including Facebook, Twitter, Instagram and
Pinterest.21
● Opposer has called attention to its stylized “W” marks in advertising by using
taglines such as “The W Back It Up,” “Wremember – the ‘W’ is Silent,” and “Look for
the W.”22 However, most of the advertising expressly calling attention to the stylized
letter “W” does not have a date within the last ten years. For example, there is an
advertisement in a Lyceum Theater Playbill dated April 12, 1954, referring to the
“W” on the hip pocket as the hallmark.23 On the other hand, there is a reference in
an unidentified source referring to Opposer and “those eternally flattering W pockets”
dated April 2007.24

19 Montgomery Decl. ¶7 (18 TTABVUE 3).
20 Montgomery Decl. ¶11 (18 TTABVUE 3).
21 Montgomery Decl. ¶¶ 14-16 (18 TTABVUE 4-5).
22 Montgomery Decl. ¶¶20-22 and Exhibit 16 (18 TTABVUE 6 and 20 TTABVUE 108-189).
23 20 TTABVUE 138-140.
24 20 TTABVUE 143.
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● Opposer’s “products are also widely available to ordinary consumers both online
and through a network of nearly 900 retail outlets around the world, including mass
retailers such as Target, Walmart, K-Mart, JCPenney, Kohl’s, and Sears.”25
● Opposer’s worldwide revenues and advertising expenditures are substantial by
any standard.26 Opposer did not expressly provide testimony or evidence regarding
its sales or advertising expenditures in the United States. Information concerning
foreign activities generally are irrelevant in an opposition proceeding. Double J of
Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612 (TTAB 1991);
Johnson & Johnson v. Salve S.A., 183 USPQ 375, 376 (TTAB 1974) (foreign use of
mark creates no rights in mark in U.S.). Because Opposer did not provide any
testimony or other evidence regarding its sales and advertising expenditures in the
United States or the percentage of its business related to the United States, the
worldwide sales revenues and advertising expenditures do not help us analyze the
fame or commercial strength of Opposer’s stylized “W” marks.
Opposer’s testimony and evidence regarding the use of its stylized “W” marks
prove that those marks are commercially strong, but not famous. First, substantially
every reference to Opposer’s products display both Opposer’s WRANGLER mark, as
well as a stylized letter “W.” Opposer does not present the stylized letter “W” to

25 Montgomery Decl. ¶25 (18 TTABVUE 6).
26 Montgomery Decl. Exhibit 18 (21 TTABVUE 4) (Confidential). Because Opposer designated
its advertising expenditures and sales revenues confidential, we refer to them only in general
terms.
Opposition No. 91244732
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consumers alone apart from the WRANGLER mark. Opposer’s failure to display or
refer to the stylized “W” marks as stand-alone marks is not dispositive. However:
The distinction between uniform coupling of the famous
house mark with the product marks and communication to
consumers that typically gives significant independent
reference to the product apart from the house mark is
important, because in the latter instance the consumer has
a basis on which to disassociate the product mark from the
house mark.
Bose Corp., 63 USPQ2d at 1307. On this record, the consumer has had no opportunity
to disassociate the stylized letter “W” from the WRANGLER mark. “If a product mark
is used in tandem with a famous house mark … [and] has independent trademark
significance, it should not be a great burden to substantiate the point.” Id. at 1308.
Second, the unsolicited media noting the stylized “W” marks does not support
finding that the stylized “W” marks are famous.
Nevertheless, because Opposer sells its clothing to large U.S. retailers such as
Target, Walmart, and Kohl’s, advertises through all available media, and the clothing
displays the stylized letter “W,” we can extrapolate from its worldwide advertising
expenditures and sales revenues that its clothing line is successful and, therefore, it
is a commercially strong, albeit not famous mark. Thus, Opposer’s stylized letter “W”
marks fall on the strong side of the spectrum from very strong to very weak.
In sum, because Opposer’s stylized letter “W” marks are inherently or
conceptually strong and are commercially strong, Opposer’s stylized letter “W” marks
are entitled to a broad scope of protection.
E. The similarity or dissimilarity of the marks.
We now turn to the DuPont likelihood of confusion factor focusing on the similarity
Opposition No. 91244732
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or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. DuPont, 177 USPQ at 567. “Similarity in any one of these
elements may be sufficient to find the marks confusingly similar.” In re Inn at St.
John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d
1810, 1812 (TTAB 2014)); accord Krim-Ko Corp. v. Coca-Cola Bottling 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.”) (citation omitted).
In comparing the marks, we are mindful that where, as here, the goods are in part
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the goods. Coach
Servs., 101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of Am.,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind,
85 USPQ2d 1104, 1108 (TTAB 2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797,
1801 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d at 1721). While we can
consider the individual features of the marks, ultimately the question is whether the
marks in their entireties are similar. In re Shell Oil, 992 F.2d 1204, 26 USPQ2d 1687,
1688 (Fed. Cir. 1993).
Opposition No. 91244732
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The proper focus is on the recollection of the average customer, who retains a
general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas
Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975). In this opposition, because the goods at issue are
clothing without any restrictions or limitations, the relevant average customer is an
ordinary consumer.
Applicant is seeking to register the mark reproduced below:

Opposer has registered the marks reproduced below:

The nature of stylized letter marks is that they are both visual and oral indicia of
source, and we must weigh both in the context in which they occur. See, e.g., Georgia-
Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ 697, 699 (CCPA 1980):
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It must be remembered that [registrant’s] trademark
consists of highly stylized letters and is therefore in the
gray region between pure design marks which cannot be
vocalized and word marks which are clearly intended to be.
In Georgia-Pacific, the court observed that even if consumers could vocalize the
letter portion of a design mark, the similarity of sound is not dispositive of whether
there is likelihood of confusion. Because consumers view a design and do not speak
it, we cannot treat a stylized letter design simply as a word mark. In re Burndy Corp.,
300 F.2d 938, 133 USPQ 196, 197 (CCPA 1962) (the marks, design marks based on
the letter “B” have “great dissimilarities between them which can be fully appreciated
only from seeing them.”). See also In re Electrolyte Labs., Inc., 913 F.2d 930,
16 USPQ2d 1239, 1240 (Fed. Cir. 1990).
In Textron Inc. v. Maquinas Agricolas “Jacto” S.A., 215 USPQ 162, 163-64 (TTAB
1982), the Board surveyed prior cases involving stylized letters and observed the
following:
[H]ighly stylized, highly contrasting letter/design
combinations tend to fall on the “no likelihood” side of the
adjudicative balance and rather clear portrayals of the
letters involved in the compared marks tend to result in
“likelihood of confusion” findings.
In this regard, the stylized letter marks at issue in this opposition are not so highly
stylized that they are akin to design marks. The marks at issue are clearly the letter
“W” and consumers will recognize them as much. Applicant concedes as much.27

27 Applicant’s Brief, p. 11 (53 TTABVUE 16) (Applicant’s mark and Opposer’s marks “are all
intended to represent or consist of a creative variation of the letter ‘W.’”).
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Thus, what is important is not whether people will confuse the marks, but whether
the marks will be likely to confuse people into believing that the clothing products so
identified emanate from the same source. Kangol Ltd. v. KangaROOS U.S.A. Inc.,
974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992) (citing Paula Payne Prods. Co. v.
Johnson Publishing Co. , 473 F.2d 901,177 USPQ 76, 77 (CCPA 1973); Columbian
Steel Tank Co. v. Union Tank & Supply Co., 277 F.2d 192, 125 USPQ 406, 409 (CCPA
1960)). Given the identity of the products and channels of trade, the degree of
consumer care, and strength of Opposer’s marks, we find that the parties’ marks are
similar in appearance, sound, meaning and commercial impression.
Applicant argues that the marks are not similar because Applicant’s mark
“consists of the bold letter ‘w’ with a bold band striking across the center of the ‘w’
from left to right” while Opposer’s marks are not bold letters with any band striking
across the center. The only similarity is that the marks are the letter “W.”28
If consumers were to study the marks, the differences in appearance and
commercial impression might become apparent. However, purchasers simply do not
take the time to study marks and see the differences. B.V.D. Licensing Corp. v. Body
Action Design, Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (the
purchasing public does not indulge in recognitional contortions but sees things as
they are); In re Johnson Prods. Co., Inc., 220 USPQ2 539, 540 (TTAB 1983) (“It is
undeniable that if the mark is carefully examined, the two overlapping ‘S’s can be

28 Applicant’s Brief, p. 11 (53 TTABVUE 16).
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discerned. What is more significant, however, is that this sort of studied analysis of
the mark is unlikely to occur in the marketplace where these products are sold.”).
It is undeniable that there are differences between Applicant’s mark and
Opposer’s marks. However, “[e]xact identity is not necessary to generate confusion as
to source of similarly-marked goods.” Bridgestone Ams. Tire Operations LLC v. Fed.
Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012). Because the test is
not a side-by-side comparison of the marks, the marks are sufficiently similar that
the average customer, who retains a general recollection rather than a specific
impression of the marks, will believe that the goods emanate from the same source.
The similarities of the marks outweigh the dissimilarities.
F. The nature and extent of any actual confusion.

Applicant points out that Opposer did not present evidence of any surveys, or any
other evidence of actual confusion.29 Applicant contends that if Opposer would have
introduced a survey, “such surveys would have indicated that actual confusion does
not exist.”30 In addition, Applicant explains that because it has used its mark in
commerce since January 1, 2018, there has been over 3.5 years of concurrent use
without any reported instances of confusion.31 According to Applicant, these DuPont
factors weigh heavily against finding likelihood of confusion.32

29 Applicant’s Brief, p. 17 (53 TTABVUE 22).
30 Id.
31 Id. Applicant testified that around April 1, 2015, he first began using his mark on hoodies
and t-shirts. Applicant’s Decl. ¶9 (30 TTABVUE 3).
32 Id.
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First, survey evidence is not required. In re Yale Sportswear Corp., 88 USPQ2d
1121, 1125 n.6 (TTAB 2008); Hilson Research Inc. v. Society for Human Res.
Mgmt., 27 USPQ2d 1423, 1426 (TTAB 1993). In addition, the only way for Applicant
to know what a survey would show would be to have conducted his own survey.
However, because Applicant did not introduce a survey, his prognostication regarding
the survey results is not persuasive.
Second, the absence of any reported instances of confusion is meaningful only if
the record indicates appreciable and continuous use by Applicant of his mark for a
significant period of time in the same markets as those served by Opposer under its
mark. Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB
2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words, for the absence of
actual confusion to be probative, there must have been a reasonable opportunity for
confusion to occur. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287
(TTAB 2007) (the probative value of the absence of actual confusion depends upon
there being a significant opportunity for actual confusion to have occurred); Red
Carpet Corp. v. Johnstown Am. Enters. Inc., 7 USPQ2d 1404, 1406-1407 (TTAB
1988); Central Soya Co., Inc. v. N. Am. Plant Breeders, 212 USPQ 37, 48 (TTAB 1981)
(“the absence of actual confusion over a reasonable period of time might well suggest
that the likelihood of confusion is only a remote possibility with little probability of
occurring”).
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While we base the analysis of the similarity or dissimilarity and nature of the
goods, established, likely-to-continue channels of trade, and classes of consumers on
the identification of goods in the application and Opposer’s pleaded registrations,
actual confusion requires us to look at actual market conditions to the extent there is
evidence of such conditions in the record. In re Guild Mortg. Co., 2020 USPQ2d 10279,
*6 (TTAB 2020).
Applicant “primarily sells its products directly to consumers through its own on-
line store at www.wrighteousllc.com.”33 Applicant advertises his products on his
website and through social media, including Facebook, Twitter, Instagram and
YouTube.34 He also uses brand ambassadors and influencers.35 Applicant’s 2018-2020
annual sales have been de minimis.36
Lacy Brown, a clothing designer who assisted Applicant, testified that Applicant’s
clothing and Opposer’s clothing “cater to two different demographics.”37 Duran
Searles, a creative consultant for Applicant, further testified that he characterizes
Applicant’s clothing as a “street wear brand,” whereas Opposer’s clothing products
are for “old white guys in Cowboy hats.”38 Accordingly, Duran Searles concluded that

33 Applicant’s Decl. ¶35 (30 TTABVUE 6). See id. at ¶42 (30 TTABVUE 7)
34 Applicant’s Decl. ¶21 (30 TTABVUE 4).
35 Applicant’s Decl. ¶23 (30 TTABVUE 4).
36 Applicant’s Decl. Exhibits O-Q (31 TTABVUE). Because Applicant designated his sales
confidential, we may refer to them only in general terms.
37 Brown Decl. ¶9 (32 TTABVUE 8).
38 Searles Decl. ¶¶8 and 12 (32 TTABVUE 11).
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Opposer and Applicant are not competitors, the parties cater to different
demographics, and the parties market their products in different markets.39
The only common denominator between the parties is that they both have a social
media presence incorporating Facebook, Twitter, Instagram, etc. However, every
business and many individuals have a social media presence. Based on the record
before us, there has not been a reasonable opportunity of confusion to occur.
Accordingly, we find this DuPont factor to be neutral.
G. Conclusion
Because the marks are similar, the goods are in part identical and we presume
the goods are offered in the same channels of trade to the same classes of consumers,
we find Applicant’s mark for “clothing, namely, shirts, pants, shorts,
sweaters, tops, jackets, swimwear, hooded sweatshirts, hats, beanies, and caps” is
likely to cause confusion with Opposer’s registered marks for “jeans, casual
pants, shorts, skirts, shirts, blouses, vests, jackets, diaper covers” and for
caps and tops.
Decision: We sustain the opposition.

39 Searles Decl. ¶¶9 and 10 (32 TTABVUE 11).