International Apparel Group, LLC

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Application of:
Applicant: International Apparel Group, LLC Examining Attorney: Jay C. Besch
Serial No.: 77/100,409 Law Office: 108
Filed: February 6, 2007
Docket: 119293-011200
Mark: X-FACTOR
Int’l Class: 25

Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

RESPONSE

Applicant International Apparel Group, LLC (“Applicant”) hereby submits this Response
to the Office Action issued on March 28, 2011 for the mark X-FACTOR for “Clothing directed
to the high-intensity sportswear market, namely, t-shirts, board shorts, pants, sweaters, jackets,
hats, socks, shoes, underwear, blouses, skirts, bandanas, and bathing suits” in International Class
25, Application Serial No. 77/100,409. (This Office Action revived the instant application and
granted Applicant six months from March 28, 2011 to respond to the requirement(s) and/or
refusal(s) in the outstanding Office Action that had issued on June 30, 2010.)

Section 2(d) — Likelihood of Confusion Refusal

The Examining Attorney refused registration of Applicant’s mark X-FACTOR under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a finding of a likelihood of
confusion with the mark in U.S. Registration No. 3505713 (the “Cited Registration”) for X
FACTOR SPORTSWEAR for “clothing, namely, men’s, women’s, and children’s pants, shorts,
shirts, t-shirts, vests, skirts, jackets, coats, sport coats, sweaters, sweatshirts, sweatpants, hats,
headbands, ties, socks and shoes” in International Class 25. Applicant respectfully disagrees
with the Examining Attorney’s refusal to register Applicant’s mark.

The Court of Customs and Patent Appeals in In re E.I. DuPont DeNemours & Co., 476
F.2d 1357, 1361, 177 U.S.P.Q. (BNA) 563, 567 (C.C.P.A 1973) identified factors to be
considered in deciding whether there is a likelihood of confusion between marks, including (1)
the similarity or dissimilarity of the marks in their entireties as to sound, appearance, connotation
and commercial impression, (2) the similarity or dissimilarity and nature of the goods or services
as described in an application or registration in connection with which a prior mark is in use; (3)
the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions
under which and buyers to whom sales are made, e.g., “impulse” vs. careful, sophisticated
purchasing; (5) the number and nature of similar marks in use on similar goods; (6) the nature
and extent of any actual confusion, and the length of time during and conditions under which
there has been concurrent use without evidence of actual confusion; and (7) any other established

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fact probative of the effect of use. As to the significance of these factors, the court stated that
“each case must be decided on its own facts. There is no litmus rule which can provide a ready
guide to all cases.” Id.

The Lanham Act supports refusal of registration based on confusion only where such
confusion is likely. The fact that confusion may be possible will not support a finding of
likelihood of confusion. In re Massey-Ferguson, Inc., 222 U.S.P.Q. 367, 368 (T.T.A.B. 1983),
quoting Witco Chemical Co. v. Whiffield Chemical Co., 164 U.S.P.Q. 43 (C.C.P.A. 1969)
(“[w]e are not concerned with mere theoretical possibilities of confusion, deception or mistake or
with de minimus situations but with the practicalities of the commercial world, with which
trademark laws deal”). Applicant submits that careful analysis of these factors as applied to the
specific facts herein supports registration of its mark.

1. There is a Crowded Field of Marks Incorporating the Terms “X” and
“FACTOR” and Therefore Applicant’s Mark May Coexist

A review of the U.S. Patent & Trademark Office (“PTO”) database reveals that the PTO
has registered or approved for registration/published a large number of marks that include the
terms “X” and “FACTOR” for a variety of goods and services. For example, the PTO has
contemporaneously registered or approved for registration the following 52 marks:

MARK REG. NO. APP. NO. . CLASS AND GOODS/SERVICES STATUS

XFACTOR 3912197 77885741 (Int. Cl. 10) dental instruments, namely, dental REGISTERED
files
3926495 77798236 (Int. Cl. 41) physical fitness conditioning classes; REGISTERED
physical fitness consultation; physical fitness
instruction; physical fitness training services;
providing a web site featuring information on
exercise and fitness
3829336 77734644 (Int. Cl. 36) charitable fundraising services REGISTERED

XFACTOR 3711978 77722775 (Int. Cl. 29) edible oils REGISTERED
GOLD
THE 3638724 77611430 (Int. Cl. 35) online retail store services featuring REGISTERED
XFACTOR consumer electronics and general consumer
WHEN merchandise related to electronics
SHOPPING
ELECTRONICS
GATORADE 3661923 77561516 (Int. Cl. 5) nonalcoholic, vitamin and/or REGISTERED
XFACTOR nutritionally fortified fruit flavored beverages
3662714 77509495 (Int. Cl. 45) internet based social networking, REGISTERED
introduction, and dating services
3688178 77506796 (Int. Cl. 12) automotive parts and accessories in REGISTERED
the nature of steering and suspension systems and
parts for steering and suspension systems,
namely, upper and lower ball joints, inner tie
rods, outer tie rods, control arms, control arm and
ball joint assemblies, idler arms, pitman arms,
stabilizer link kits, sway bar kits and bushings,
drag links, centre links, strut and shock mounts,

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MARK REG. NO. APP. NO. . CLASS AND GOODS/SERVICES STATUS

control arm bushings; parts for automotive
suspension and wheel alignment systems,
namely, shims, spacers, wedges, nuts, bolts,
washers, sleeves, bearings braces and caps
THE X 3688174 77505664 (Int. Cl. 12) automotive parts and accessories in REGISTERED
FACTOR the nature of steering and suspension systems and
CHASSIS parts for steering and suspension systems,
PARTS namely, upper and lower ball joints, inner tie
rods, outer tie rods, control arms, control arm and
ball joint assemblies, idler arms, pitman arms,
stabilizer link kits, sway bar kits and bushings,
drag links, centre links, strut and shock mounts,
control arm bushings; parts for automotive
suspension and wheel alignment systems,
namely, shims, spacers, wedges, nuts, bolts,
washers, sleeves, bearings braces and caps
3512323 77419870 (Int. Cl. 45) online dating services REGISTERED

XFACTOR 3585573 77380601 (Int. Cl. 42) computer services, namely, creating REGISTERED
DESIGNS and maintaining web sites for others; computer
services, namely, designing and implementing
network web pages for others; computer services,
namely, designing and implementing web sites
for others; computer services, namely, managing
web sites for others
CUPIDS X 3477731 77225835 (Int. Cl. 45) computer dating services REGISTERED
FACTORS
XFACTOR 3323161 77103576 (Int. Cl. 7) marine propulsion units, namely stern REGISTERED
drives, marine stern drive replacement
assemblies and parts therefore
XFACTOR 3566390 77055390 (Int. Cl. 14) diamonds; jewelry made of REGISTERED
diamonds
X FACTOR 3249710 78957290 (Int. Cl. 13) fireworks REGISTERED

XFACTOR 3235292 78756444 (Int. Cl. 7) outdoor power equipment, namely REGISTERED
mowing decks for lawn mowers
XFACTOR 3151084 78751461 (Int. Cl. 9) dvds featuring golf and golf REGISTERED
instruction
ENGINEERED 3050625 78554277 (Int. Cl. 40) manufacture of sensors and detectors REGISTERED
TO MANAGE to order and specification of others
YOUR
XFACTOR
X FACTOR 3505713 76618526 (Int. Cl. 25) clothing, namely, men’s, women’s, REGISTERED
SPORTSWEAR and children’s pants, shorts, shirts, tshirts, vests,
skirts, jackets, coats, sport coats, sweaters,
sweatshirts, sweatpants, hats, headbands, ties,
socks and shoes
XFACTOR 3105020 78454763 (Int. Cl. 13) fireworks REGISTERED
ROCKETS
XFACTOR 3298734 78375460 (Int. Cl. 41) educational services, namely, REGISTERED
providing instruction, training and courses in the
field of golf
XFACTOR 3030322 78355740 (Int. Cl. 9) computer software, namely, software REGISTERED
to facilitate parallel processing on multiple cups
with the purpose of increasing computer and
computational efficiency, and instruction

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MARK REG. NO. APP. NO. . CLASS AND GOODS/SERVICES STATUS

manuals provided therewith
XFACTOR 2964585 76544717 (Int. Cl. 29) high vitamin buffer oil REGISTERED

GATORADE 2940832 78264749 (Int. Cl. 32) noncarbonated fruit flavored drinks REGISTERED
XFACTOR
XFACTOR 2868631 76494616 (Int. Cl. 7) power driven tools for cutting metal, REGISTERED
namely, end mills
XFACTOR 2732269 78158288 (Int. Cl. 9) data communications module, REGISTERED
namely, a selective availability antispoofing
module for receiving and managing signals
within a global positioning system receiver
2849370 78153178 (Int. Cl. 17) elongated tape having a pressure REGISTERED
sensitive adhesive on one side

XFACTOR 2846547 78151486 (Int. Cl. 17) elongated tape having a pressure REGISTERED
sensitive adhesive on one side
XFACTOR 2668988 76384565 (Int. Cl. 36) financial services, namely providing REGISTERED
financial analysis, financial research and
investment research services
XFACTOR 2772253 (Int. Cl. 9) protective eyewear and sunglasses REGISTERED

FACTOR X 2485171 76122805 (Int. Cl. 28) jump ramps for skateboards, inline REGISTERED
skates, and bicycles
X FACTOR 2900064 75806138 (Int. Cl. 12) bicycles, bicycle accessories and REGISTERED
parts therefor; namely, saddles and saddle covers,
handlebars; water bottle racks which attach to
bicycles, air pumps, bicycle locks, bicycle racks
for vehicles and cycling bags
XFACTOR 1435538 73620379 (Int. Cl. 16) publications, particularly comic REGISTERED
books and magazines and stories in illustrated
form
FACTOR X 85302038 (Int. Cl. 41) providing fitness and exercise PUBLISHED
FITNESS facilities
THE X 85228172 (Int. Cl. 15) musical instruments, namely guitars; PUBLISHED
FACTOR musical instrument accessories, namely, stands,
cases, carrying bags and storage bags
THE X 85228183 (Int. Cl. 18) back packs; bags for sports; bum PUBLISHED
FACTOR bags; duffel bags; handbags; holdalls; leather
bags, suitcases and wallets; umbrellas
THE X 85228194 (Int. Cl. 21) bath sponges; boxes for dispensing PUBLISHED
FACTOR paper towels; bread bins; candle holders; charms
for attachment to beverage glassware for
identification purposes; mugs; combs; containers
for household use; cups; dinnerware; dishware;
hair, nail and tooth brushes; electric
toothbrushes; ironing board covers; lunch boxes;
plates; waste baskets; ceramic tissue box cover;
toilet tissue holder; dispensers for liquid soaps;
dispensers for paper towels; soap dispensers;
toilet paper dispensers; toothbrush holders; soap
dishes; soap holders; shower caddies
THE X 85228201 (Int. Cl. 24) bath gloves; bath linen; bath sheets PUBLISHED
FACTOR and towels; beach towels; bed and table linen;

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MARK REG. NO. APP. NO. . CLASS AND GOODS/SERVICES STATUS

covers for cushions; curtains; duvet covers;
handkerchiefs; pillow covers; wall hangings of
textile; hooded towels; kitchen towels; towel
sets; towels; quilts; bed sheets; dust ruffles;
fabric window coverings and treatments, namely,
curtains, draperies, sheers, swags and valances
THE X 85228216 (Int. Cl. 26) barrettes; belt buckles; clothing PUBLISHED
FACTOR hooks; hair accessories, namely, twisters, claw
clips, hair sticks, hair clips, hair extensions, hair
elastics; nonelectric hair curlers; nonelectric hair
rollers; ornamental novelty badges, pins and
buttons
85205450 (Int. Cl. 29) frozen foods and entrees, consisting PUBLISHED
primarily of meat, seafood, poultry or vegetables;
fruit jams, jellies and compotes; nut butters

THE X 85205456 (Int. Cl. 29) frozen foods and entrees, consisting PUBLISHED
FACTOR primarily of meat, seafood, poultry or vegetables;
fruit jams, jellies and compotes; and, nut butters
THE X 85108926 (Int. Cl. 5) feeding stimulants for animals PUBLISHED
FACTOR
XFACTOR 85098023 (Int. Cl. 3) adhesives for cosmetic use; after sun PUBLISHED
creams; aftershave creams; aftersun gels; aftersun
milks; aftersun oils; aftershave cologne; age spot
reducing creams; aloe vera gel for cosmetic
purposes; antiaging cream; antiaging cream
containing a retinoic ingredient not for medical
purposes; antiaging creams; antifreckle creams;
antiwrinkle cream; antiwrinkle creams;
antibacterial skin soaps; antiperspirants and
deodorants for personal use; antiperspirants for
personal use; aromatic body care products,
namely, body lotion, shower gel, cuticle cream,
shampoo, conditioner, nonmedicated lip balm,
soap, body polish, body and foot scrub and
nonmedicated foot cream; aromatic preparations,
namely, body sprays; astringents for cosmetic
purposes; baby bubble bath; bath and shower gels
and salts not for medical purposes; bath beads;
bath cream; bath crystals; bath fizzies; bath
flakes; bath foam; bath foams; bath gel; bath
gels; bath herbs; bath lotion; bath milks; bath oil;
bath oils; bath oils and bath salts; bath oils for
cosmetic purposes; bath pearls; bath powder;
bath salts; bath salts; bath soaps; bath soaps in
liquid, solid or gel form; bathing lotions; beauty
creams; beauty creams for body care; bleaching
preparations for cosmetic purposes; body and
beauty care cosmetics; body cream; body cream
soap; body creams; body mask cream; body
spray used as a personal deodorant and as
fragrance; bubble bath; chalk for cosmetic use;
cleaner for cosmetic brushes; cleansing creams;
cloths or tissues impregnated with a skin
cleanser; cocoa butter for cosmetic purposes;
cold cream; cold creams; cologne; cologne water;
colognes, perfumes and cosmetics; coloring

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MARK REG. NO. APP. NO. . CLASS AND GOODS/SERVICES STATUS

preparations for cosmetic purposes; concealers.
Concealers for face and skin; conditioners;
cosmetic balls; cosmetic creams; cosmetic
creams for skin care; cosmetic facial blotting
papers; cosmetic hair dressing preparations;
cosmetic hair filling powders for covering bald
and thinning spots on the scalp; cosmetic hair
regrowth inhibiting preparations; cosmetic
masks; cosmetic massage creams; cosmetic
milks; cosmetic oils; cosmetic oils for the
epidermis; cosmetic olive oil for the face and
body; cosmetic pads; cosmetic pencils; cosmetic
preparations; cosmetic preparations against
sunburn; cosmetic preparations for body care;
cosmetic preparations for eye lashes; cosmetic
preparations for skin renewal; cosmetic
preparations for slimming purposes; cosmetic
preparations for the care of mouth and teeth;
cosmetic preparations for the hair and scalp;
cosmetic preparations, namely, firming creams;
cosmetic preparations, namely, firming lotions;
cosmetic preparations, namely, skin balsams;
cosmetic products in the form of aerosols for skin
care; cosmetic products in the form of aerosols
for skincare; cosmetic products taken orally,
namely, pills that induce bronzing of the skin;
cosmetic rouges; cosmetic soaps; cosmetic
sunprotecting preparations; cosmetic suntanning
preparations; cosmetic suntan lotions; cosmetic
suntan preparations; cosmetics; cosmetics and
cosmetic preparations; cosmetics and makeup;
cosmetics in general, including perfumes;
cosmetics in the form of milks lotions and
emulsions; cosmetics, namely, compacts;
cosmetics, namely, lip primer; cosmetics,
namely, lip repairers; cream soaps; creams for
cellulite reduction; cuticle cream; decorative
transfers and skin jewels for cosmetic purposes;
deodorant for personal use; deodorants and
antiperspirants for personal use; deodorants for
body care; deodorants for personal use;
depilatory creams; disinfecting perfumed soaps.
Disposable wipes impregnated with cleansing
chemicals or compounds for face, skin; eau de
cologne; eau de colognes; eau de parfum; eau de
perfume; eau de toilette; eau de toilette and eau
de cologne; eaudecologne; eaudetoilette; eaux de
cologne; eaux de toilette; essential oils as
perfume for laundry purposes; essential oils for
personal use; exfoliant creams; exfoliants for
face, scalp and skin; eye …
85022276 (Int. Cl. 16) posters, calendars, notebooks, PUBLISHED
binders, daily organizers, memo pads, stickers,
playing cards, writing paper, envelopes, greeting
cards, paper coasters, paper mats, newspapers for
general circulation, books and magazines in the
field of talent shows; newsletters, photographs,

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MARK REG. NO. APP. NO. . CLASS AND GOODS/SERVICES STATUS

postcards, trading cards, cardboard standup
cutouts featuring photographs and artwork in the
field of talent shows; prepaid phone debit cards
without magnetic coding; trading card milk bottle
caps; personal checks; paper party decorations;
paper party bags; paper party favors, paper party
hats; paper nonmagnetically encoded gift card
holders; paper cake decorations; all of the above
in the field of entertainment and relating to an
ongoing television series featuring a talent
competition
85022278 (Int. Cl. 28) target games, board games and card PUBLISHED
games, kites, toy action figures, disctype toss
toys, toy bows and arrows, balls of all kinds,
dolls, doll playsets, plush toys, toy vehicles, toy
bucket and shovel sets, roller skates, toy model
hobby craft kits, toy rockets, toy guns, toy
holsters, musical toys, jigsaw puzzles, badminton
sets, bubble making wands and solution sets, toy
figurines, toy banks, puppets, toy balloons,
yoyos, skateboards, toy scooters, toy and novelty
face masks, stand alone video game machines,
lcd game machines; hand held unit for playing
electronic games, but specifically excluding dice
games and computer software games; lottery
tickets and scratch cards for playing lottery
games; confetti; coinoperated amusement
machines
85022285 (Int. Cl. 41) entertainment services in the nature PUBLISHED
of a continuing television talent show;
entertainment services, namely, providing an
online computer game; entertainment services,
namely, providing digitized print and visual
information about a television series via a global
computer network; entertainment services in the
nature of a sweepstakes; entertainment services
in the nature of an amusement park attraction,
namely, a themed area
XFACTOR 77954235 (Int. Cl. 28) cue sticks PUBLISHED

XFACTOR 77926727 (Int. Cl. 28) fishing rods and fishing rod cases; PUBLISHED
fishing reels; fishing jigs; fishing tackle; fishing
rods and reel combinations; fishing tackle kits
comprised of lures, artificial baits, fishing lines,
and/or hooks; fishing lure kits comprised of
assorted artificial lures and baits; fishing tackle
boxes
THE X 77910457 (Int. Cl. 28) target games, board games and card PUBLISHED
FACTOR games, kites, toy action figures, disctype toss
toys, toy bows and arrows, balls of all kinds,
dolls, doll playsets, plush toys, toy vehicles, toy
bucket and shovel sets, roller skates, toy model
hobby craft kits, toy rockets, toy guns, toy
holsters, musical toys, jigsaw puzzles, badminton
sets, bubble making wands and solution sets,
modeled plastic toy figurines, toy banks, puppets,
toy balloons, yoyos, skateboards, toy scooters,

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MARK REG. NO. APP. NO. . CLASS AND GOODS/SERVICES STATUS

face masks, stand alone video game machines,
lcd game machines; hand held unit for playing
electronic games other than those adapted for use
with an external display screen or monitor, but
specifically excluding dice games and computer
software games; lottery tickets and scratch cards
for playing lottery games; confetti; coinoperated
amusement machines; playing cards
THE X 77910459 (Int. Cl. 16) posters, calendars, notebooks, PUBLISHED
FACTOR binders, daily organizers, memo pads, stickers,
writing paper, envelopes, greeting cards, paper
coasters, paper mats, newspapers for general
circulation, books and magazines in the field of
reality shows, newsletters in the field of reality
shows, photographs, postcards, trading cards,
cardboard standup cutouts featuring photographs
or artwork, prepaid phone debit cards without
magnetic coding, trading card milk bottle caps,
customized personal checks, paper party
decorations, paper party bags, paper party favors,
gift card holders, and paper cake decorations
XFACTOR 77875697 (Int. Cl. 1) fabric protectant for mattress covers, PUBLISHED
mattress pads and ticking fabric
77787212 (Int. Cl. 43) restaurant, bar and catering services PUBLISHED

The existence of all of these registered marks and marks that have been approved for
registration/published indicates that there is a crowded field of marks that include the terms “X”
and “FACTOR.” Because of this crowded field, consumers are likely able to distinguish
between marks that incorporate the terms “X” and FACTOR.” If all of these marks may co-exist
without a likelihood of confusion, so too should Applicant’s mark and the mark in the Cited
Registration be able to coexist without a likelihood of confusion.

2. Applicant’s Mark and the Mark in the Cited Registration are Different

As discussed above, the PTO has registered numerous marks containing the terms “X”
and “FACTOR” in connection with a variety of goods and services, thus Applicant’s X-
FACTOR mark should also proceed to registration. “When considering the similarity of the
marks, ‘[a]ll relevant facts pertaining to the appearance and connotation must be considered.”
Trademark Manual of Examining Procedure (“TMEP”) § 1207.01(b) (quoting Recot, Inc. v.
M.C. Becton, 214 F.3d 1322, 1329 (Fed. Cir. 2000)). Moreover, “[i]n evaluating the similarities
between marks, the emphasis must be on the recollection of the average purchaser who normally
retains a general, rather than specific, impression of trademarks.” TMEP § 1207.01(b) (quoting
Sealed Air Corp. v. Scott Paper Co., 190 U.S.P.Q. 106, 108 (T.T.A.B. 1975)).

The appearance of Applicant’s mark is different from the appearance of the mark in the
Cited Registration. Applicant’s mark is comprised of a letter followed by a hyphen and one

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word, while the mark in the Cited Registration contains a letter followed by two words.
Moreover, Applicant’s mark consists seven letters and a total of eight characters, whereas the
mark in the Cited Registration consists of 17 letters and 20 characters. In other words, more than
half of the mark in the Cited Registration is not part of Applicant’s mark, and the mark in the
Cited Registration is more than twice as long as Applicant’s mark. The presence of the word
“SPORTSWEAR” in the mark in the Cited Registration, as well as the hyphen in Applicant’s
mark, create significant differences in the appearance, sound, meaning and commercial
impression of the respective marks, especially from the perspective of the average purchaser.

The sound of the mark in the Cited Registration is also different from the sound of
Applicant’s mark. Because the mark in the Cited Registration contains the additional word
“SPORTSWEAR,” this mark and Applicant’s mark sound different when they are pronounced.
There are five syllables in the mark in the Cited Registration, but just three syllables in
Applicant’s mark, so when vocalized the marks are quite distinct. These factors render the
respective marks different such that they convey different commercial impressions to the average
consumer.

3. Applicant’s Mark and The Mark In the Cited Registration Should Be
Considered In Their Entireties and Not Dissected

It is well-settled that when comparing marks for confusing similarity, the marks must be
considered in their entireties. Prof’l Art Distrib., Inc. v. Internationaler Zeichenverbank Fur
Kunstdruckpapier, E.V., 11 U.S.P.Q.2d 1735, 1736 (Fed. Cir. 1989); EA Eng’g. Science and
Tech., Inc. v. Envtl Audit, Inc., 12 U.S.P.Q.2d 1294, 1297 (C.D. Cal. 1989). Trademarks need to
be viewed in their entireties because trademarks are considered by the consuming public in their
entireties. Consumers do not break out components of a trademark. In re Hearst Corp., 25
U.S.P.Q.2d 1238, 1239 (Fed. Cir. 1992) (reversing the TTAB’s refusal to register VARGA GIRL
for use on calendars on the grounds that it was likely to be confused with VARGAS as a mark
for calendars).

When Applicant’s mark and the mark in the Cited Registration are considered in their
entireties, the differences described above distinguish the marks. Indeed, marks more similar to
each other than those in the instant case consistently have been found not to be confusingly
similar. Mushroom Makers, Inc. v. R.G. Barry, 199 U.S.P.Q. 65 (2d Cir. 1978), cert. denied 439
U.S. 1116 (1979) (MUSHROOMS women’s footwear and MUSHROOM women’s sportswear
are not confusingly similar); Interstate Brands Corp. v. Celestial Seasonings, Inc., 198 U.S.P.Q.
151 (C.C.P.A. 1978) (RED ZINGER for herb tea not likely to cause confusion with ZINGERS
for cakes); Taco Time Int’l, Inc. v. Taco Town, Inc., 217 U.S.P.Q. 268 (T.T.A.B. 1982) (TACO
TOWN and TACO TIME for restaurant services not likely to cause confusion); Merit Food Co.
v. Am. Submarine, 209 U.S.P.Q. 591 (T.T.A.B. 1980) (BOMBER for sandwiches for
consumption on or off the premises, does not resemble BOMB for frozen confections, that
confusion is likely); Vitarroz Corp. v. Borden, Inc., 209 U.S.P.Q. 969 (2d Cir. 1981) (BRAVO’S
for crackers not confusingly similar to BRAVOS for tortilla chips).

Applicant respectfully submits that, even though it is well-settled that marks should be
considered in their entireties as to appearance, sound and meaning, the Examining Attorney has
disregarded this rule by claiming that “Applicant’s mark does not create a distinct commercial

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impression because it contains the same common wording as registrant’s mark, and there is no
other wording to distinguish it from registrant’s mark.” Merely because both marks include the
letter “X” and the word “FACTOR” does not render the additional word “SPORTSWEAR” in
the mark in the Cited Registration, or the hyphen in Applicant’s mark, insignificant.

4. Purchaser’s of Applicant’s Goods Are Sophisticated Purchasers

Where the relevant class of purchasers is composed of professional, or commercial
purchasers, it is reasonable to assume that such buyers are capable of a higher degree of
discrimination when faced with similar marks. 4 McCarthy on Trademarks and Unfair
Competition § 23:101 (4th ed.); Checkpoint Sys., Inc. v. Check Point Software Technologies,
Inc., 269 F.3d 270, 283 (3d Cir. 2001); Sunbeam Lighting Co. v. Sunbeam Corp., 183 F.2d 969,
972 (9th Cir. 1950), cert. denied, 340 U.S. 920 (1951). Thus, where an ordinary consumer may
be confused by any perceived similarity between marks, because of his or her knowledge and
experience in a particular field, a professional purchaser will not be confused.

Here, the identification of goods in Applicant’s application indicate that the goods that
Applicant offers in connection with its mark are “directed to the high-intensity sportswear
market.” Consumers of Applicant’s goods are persons with experience in or knowledge of the
sportswear market. As such, purchasers of Applicant’s goods can be classified as
“sophisticated” or “professional” buyers able to more easily differentiate between marks.

CONCLUSION

Based on the above, Applicant has addressed all of the Examining Attorney’s objections
to its application, and respectfully requests that its application be accepted for publication.
Please charge any fees to Deposit Account No. 50-2638.

Respectfully submitted,

GREENBERG TRAURIG, LLP

Date: September 28, 2010 /Bradley D. Blanche/______
By: Bradley D. Blanche
2450 Colorado Avenue, Suite 400 E
Santa Monica CA 90404
Phone: (949) 732-6539
Fax: (310) 586-7800

Attorney for Applicant
International Apparel Group, LLC

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