Bergsman
Wellington*
Ritchie
This Opinion is Not a
Precedent of the TTAB
Mailed: September 25, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Dream Labs, LLC
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Serial No. 87290299
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David B. Sunshine and Brianne L. Polito of Cozen OConnor P.C. for
Dream Labs, LLC
Xheneta Ademi, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
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Before Bergsman, Wellington, and Ritchie,
Administrative Trademark Judges.
Opinion by Wellington, Administrative Trademark Judge:
Dream Labs, LLC (Applicant) seeks registration of the standard character mark
RILEY on the Principal Register for the following goods and services:1
Bath robes; Pajamas; Sleep masks; Slippers, in International Class 25; and
Retail store services featuring gel eye masks, candles, perfumed candles,
scented candles, pillows, mattresses, mattress toppers, bedding, namely,
pillow covers, pillow cases, mattress covers, comforters, bed blankets,
comforter covers, sheets, sheet covers, duvet covers, throws, quilts, pillow
shams, bed skirts and mattress pads, bath linens, namely, towels, bath
1Application Serial No. 87290299 was filed on January 5, 2017, and is based on Applicants
claim of a bona fide intent to use the mark in commerce, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
Serial No. 87290299
towels, hand towels, wash cloths, bath sheets, shower curtains, bath robes,
bath mats and bath rugs, slippers, pajamas, and sleep masks; On-line
retail store services featuring gel eye masks, candles, perfumed candles,
scented candles, pillows, mattresses, mattress toppers, bedding, namely,
pillow covers, pillow cases, mattress covers, comforters, bed blankets,
comforter covers, sheets, sheet covers, duvet covers, throws, quilts, pillow
shams, bed skirts and mattress pads, bath linens, namely, towels, bath
towels, hand towels, wash cloths, bath sheets, shower curtains, bath robes,
bath mats and bath rugs, slippers, pajamas, and sleep masks, in
International Class 35.
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the following two
registered marks, owned by different entities:
RILEY (in standard characters)
(Reg. No. 4845847)2 for:
Jeans; Shorts; Skirts; Sweatpants; Sweatshirts; T-shirts; Tank-tops, in
International Class 25; and
RG RILEY (in standard characters)
(Reg. No. 4375767)3 for:
Wholesale distributorships featuring clothing and general consumer
merchandise, in International Class 35.
Specifically, the Examining Attorney cites solely to Reg. 847 as a bar to
registration for the Class 25 goods, and to Reg. 767 as a bar to registration with
respect to the Class 35 services.4
2 Registration No. 4845847 issued on November 29, 2016.
3Registration No. 54375767 issued on July 30, 2013; Sections 8 and 15 affidavits accepted
and acknowledged. The registration is based on a claim of acquired distinctiveness, under
Section 2(f), as to the mark in whole, and contains a statement that the name(s), portrait(s),
and/or signature(s) shown in the mark does not identify a particular living individual.
4 9 TTABVUE 6 (Examining Attorneys Brief, Notes 1-2).
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Serial No. 87290299
After the refusal was made final, Applicant filed an appeal and requested
reconsideration. Reconsideration was denied by the Examining Attorney, the
proceeding was resumed, and the appeal has been briefed. For the following reasons,
we affirm the refusal as to the goods in Class 25 and the services in Class 35.
I. Applicable Law
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor for
which there is argument and evidence of record. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2 Software, Inc. v. M2 Commcns,
Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v.
GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (While we have considered
each factor for which we have evidence, we focus our analysis on those factors we find
to be relevant.). [E]ach 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); 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 Intl,
Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. Degree of Strength or Weakness of the Shared Term RILEY
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Serial No. 87290299
We begin our likelihood of confusion analysis by first addressing a key point of
contention between Applicant and the Examining Attorney namely, the degree of
strength or weakness in the name RILEY. Applicant argues that RILEY is weak in
light of the numerous third party registrations and uses of marks containing RILEY
in connection with apparel.5 Applicant submitted third-party registration and use
evidence and, based thereon, argues that the cited registrations are only entitled to
a narrow scope of protection. The Examining Attorney, on the other hand, asserts
that the evidence is insufficient to establish that the word RILEY is weak or
diluted.6
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. American Lebanese Syrian Associated
Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB
2011) (citing Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB
2006) and McCarthy on Trademarks and Unfair Competition § 11:83 (4th ed. 2011)
(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.)). [T]he strength of a mark is not a binary factor and varies along a
spectrum from very strong to very weak. Juice Generation, 115 USPQ2d at 1675-76
5 6 TTABVUE 11.
6 9 TTABVUE 10.
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Serial No. 87290299
(internal citations omitted). The weaker [the Registrant’s] mark, the closer an
applicant’s mark can come without causing a likelihood of confusion and thereby
invading what amounts to its comparatively narrower range of protection. Id. at
1676 (internal citations omitted). See also Palm Bay, 73 USPQ2d at 1693 (Evidence
of third-party use of similar marks on similar goods is relevant to show that a mark
is relatively weak and entitled to only a narrow scope of protection.).
As to any inherent weakness, RILEY is not a coined term but is a recognized
surname as well as a given (first) name. The Examining Attorney notes that the
predominant meaning of the term is that of an Irish surname, that also has
increasing popularity as a unisex given name.7 The mere fact that Riley is a name
does not necessarily result in the term being inherently weak. Wet Seal Inc. v. FD
Management Inc., 82 USPQ2d 1629, n.20 (TTAB 2007) (The fact that ARDEN is a
surname does not automatically render the mark weak or entitled to only a narrow
scope of protection.). Section 2(d) … does not set forth special rules regarding the
registration of marks involving surnames in determining the issue of likelihood of
confusion. Hunt Foods & Indus., Inc. v. Gerson Stewart Corp., 367 F.2d 431, 151
USPQ 350, 352 (CCPA 1966). We further find that there is insufficient evidence that
consumers will view RILEY as being primarily merely a surname. Brooks v.
Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1829 (TTAB 2009) (case citations
omitted) (A personal name mark, unless it is primarily merely a surname, is
79 TTABVUE 8, at Note 3, in explaining why a surname refusal was not issued, and citing
to Wikipedia evidence attached to Office Action issue on October 10, 2017, at TSDR 10-12.
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Serial No. 87290299
registrable on the Principal Register without a showing of secondary meaning, and
thus is deemed to be inherently distinctive under the Lanham Act if the record shows
that it is used in a manner that would be perceived by purchasers as identifying the
services in addition to the person.) Accordingly, we do not find the term, as
registered, to be inherently weak.
In terms of commercial weakness, however, the sixth du Pont factor includes
consideration of the number and nature of similar marks, if any, that are in use on
similar goods or services. The purpose of [an applicant] introducing third-party uses
is to show that customers have become so conditioned by a plethora of such similar
marks that customers have been educated to distinguish between different such
marks on the bases of minute distinctions. Palm Bay, 73 USPQ2d at 1694. See also
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed.
Cir. 2015) (internal citations omitted).
In support of its argument that RILEY is a commercially weak mark, Applicant
submitted printouts from various third-party websites showing the name RILEY (or
what appears to be a phonetically equivalent name) used in marks in connection with
retail store services featuring clothing. We find the most relevant examples to
include:
1. RILEY BOUTIQUE (www.rileyboutique.com);8
8 Printouts attached to Applicants response filed September 18, 2017, TSDR p. 24.
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Serial No. 87290299
2. RACHEL RILEY (www.rachelriley.com);9
3. RILEYLAND FASHIONS (www.rileylandfashions.bigcartel.com);10
4. WILKES & RILEY (www.wilkesandriley.com);11
5. BLAKE AND RILEY (www.blakeandriley.com);12
6. LAUREN AND RILEY (www.laurenandriley.com);13
7. RILEYS (www.shoprileysclothing.com);14
8. MAX & RILEY (www.shopmaxandriley.com);15
9. RILEY GRACE (www.shoprileygrace.com);16
10. RILEY & MCCORMICK (www.realcowboys.com);17
11. SASSY RILEY (www.sassyriley.com);18 and
12. RILEY BLAKE DESIGNS (www.rileyblakedesigns.com).19
Applicant also submitted printouts from various retail websites showing different
womens apparel items being offered for sale under a mark containing the term
RILEY. This includes Riley Relaxed Straight jeans and a Riley Tee shirt offered
9 Id., TSDR p. 25.
10 Id., TSDR p. 30
11 Id., TSDR p. 33
12 Id., TSDR p. 34
13 Id., TSDR p. 35
14 Attached to Applicants response filed April 9, 2018, TSDR p. 49.
15 Id., TSDR p. 50.
16 Id., TSDR p. 51.
17 Id., TSDR p. 55.
18 Id., TSDR p. 51.
19 Id., TSDR p. 51.
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Serial No. 87290299
for sale on the Revolve website (www.revolve.com),20 and a Riley Off-the-Shoulder
Textured Silk Blouse offered for sale by Neiman Marcus
(www.neimanmarcus.com).21 The retail clothing store Anthropologie
(www.anthropologie.com) offers a Riley Striped Knit Dress for sale.22
We have also reviewed Applicants submission of copies of 12 third-party
registrations for marks containing the term RILEY (or a similarly spelled term, e.g.,
REILEY, REILLY, RYLEE, etc.).23 The most relevant of these registrations are the
following the following that cover apparel: J. RILEY (Reg. No. 4955518); RILEY +
JAMES (Reg. No. 4346998); REESE + RILEY NEW YORK (Reg. No. 5076588);
WILKES & RILEY (Reg. No. 5096470); REILEY JADE (Reg. No. 4435088); RYLEE
+ CRU (Reg. No. 5258815); and REILLY with design (Reg. No. 1913419).24 Although
these registrations, by themselves, are not evidence that the marks are in use in
commerce or that consumers are even aware of them, they are relevant to prove that
some segment of the composite marks which both contesting parties use has a
normally understood and well-recognized descriptive or suggestive meaning, leading
to the conclusion that that segment is relatively weak. Juice Generation, 115
USPQ2d at 1675 (quoting Textronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
20 Printouts attached to Applicants response filed September 18, 2017, TSDR p. 26-28.
21 Id., TSDR p. 32.
22 Attached to Applicants response filed April 9, 2018, TSDR p. 55.
23 Copies attached to Applicants responses filed September 18, 2017 and April 9, 2018.
24The other registrations have less relevance because they either have additional matter
that makes the inclusion of RILEY or similar term less significant or they cover unrelated
services and goods.
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Serial No. 87290299
693, 694 (CCPA 1976)). In other words, the registrations help further show how third-
parties may adopt a mark containing the name RILEY.
Based on the evidence before us, there is some commercial weakness in the term
RILEY when used in connection with retail services featuring apparel as well as in
connection with use of this term on apparel. We are reminded, however, that
weakness is not a binary question. Rather, we weigh this weakness of the name
RILEY into our analysis involving the similarity of the marks and ultimately into our
conclusion whether there is likelihood of confusion.
We continue our likelihood of confusion analysis. In doing so, and in view of the
fact that the Examining Attorney cites one registered mark with respect to
Applicants goods in Class 25 and a second registered mark with respect to
Applicants services in Class 35, we separate our findings as to each class.
B. Refusal as to Applicants Class 25 Goods
The Examining Attorney has cited the registered, standard character mark
RILEY (in standard characters) for Jeans; Shorts; Skirts; Sweatpants; Sweatshirts;
T-shirts; Tank-tops as a bar to registration of the same mark by Applicant for Bath
robes; Pajamas; Sleep masks; Slippers.
1. Identical Marks
Under the first du Pont factor, we compare the involved marks in their entireties
as to appearance, sound, connotation and commercial impression. Viterra, 101
USPQ2d at 1908 (quoting du Pont, 177 USPQ at 567); see also Palm Bay Imps. Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
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Serial No. 87290299
1689, 1691 (Fed. Cir. 2005). In this case, the marks are identical and thus this factor
weighs strongly in favor of finding confusion likely.
2. Related Goods and Same Trade Channels
With respect to the second and third du Pont factors, the similarity of the goods
and their channels of trade, we must make our determinations as to these factors
based on the goods as they are identified in the application and cited registration. See
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
The goods need not be the same and a likelihood of confusion may be found even
when the respective goods are not competitive or intrinsically related. Joseph
Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733,
1737 (Fed. Cir. 2017). Instead, likelihood of confusion can be found if the respective
products are related in some manner and/or if the circumstances surrounding their
marketing are such that they could give rise to the mistaken belief that they emanate
from the same source. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (internal citations omitted).
Finally, we also keep in that the involved marks here are identical and in such
situations the relatedness of the goods required to support a finding of likelihood of
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Serial No. 87290299
confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015)
(internal citation omitted), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).
The Examining Attorney has submitted evidence showing goods like Applicants,
e.g., pajamas, bath robes, and slippers, being offered for sale under the same mark as
the more general apparel items listed in the registration, all under the same mark on
the same retail website.25 For example, Gap (www.gap.com) sells jeans shorts
tees and tops sleepwear.26 Other examples of retailers selling the same goods
under the same mark include American Eagle Outfitters (www.ae.com), Victorias
Secret (www.victoriassecret.com), Soma (www.soma.com), and Kensie
(www.kensier.com).
The record clearly establishes relatedness of the involved goods and that they are
offered in the same type of retail outlets to the same classes of consumers.
Accordingly, the du Pont factors involving the relatedness of the goods, as well as the
channels of trade and classes of consumers to whom the goods are being offered, all
weigh in favor of finding a likelihood of confusion.
3. Conclusion
Given the identity of the marks and our finding that the goods are closely related
and will be offered to the same classes of purchasers in the same trade channels, we
find that confusion is likely. We make this ultimate finding as to Applicants Class 25
goods despite our finding of weakness of the term RILEY in connection with clothing
25 Attached to Office Actions issued on March 21, 2017, Octoboer 10, 2017, and May 4, 2018.
26 March 21, 2017 Office Action, TSDR pp. 6-23.
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Serial No. 87290299
and retail clothing services. That is, in spite of any narrowing of the scope of
protection for Registrants mark, we find it is still entitled to protection against
registration of identical mark for closely related goods. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 1401 182 USPQ 108, 109 (CCPA 1974); see also
In re i.am.symbolic, 127 USPQ2d 1627, 1636 n.13 (TTAB 2018).
C. Refusal as to Applicants Class 35 Services
We turn now to the Examining Attorneys refusal to register RILEY for retail store
services featuring a variety of bed, bath and linen products, including bath robes;
pajamas; sleep masks; [and] slippers, on the basis that it is likely to be confused with
the registered, standard character mark RG RILEY for Wholesale distributorships
featuring clothing and general consumer merchandise.
1. Similarity of the Marks
Here, there is the obvious similarity between the marks stemming from their
shared use of the name RILEY. The marks differ only because Applicant has omitted
the initials that preface the registered mark, RG RILEY. Thus the marks are overall
visually and aurally quite similar. In terms of connotation, Registrants mark will
most likely be perceived as identifying an individual with the surname RILEY and
given name initials of RG. Applicants mark can either be understood as identifying
an individuals first name RILEY or last name. To the extent consumers understand
Applicants mark in the latter sense, as a surname, the consumer may mistakenly
believe it is a reference to the same owner or individual associated with Registrants
services, and merely including a variation of Registrants mark without first initials.
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Serial No. 87290299
Accordingly, we find the marks are more similar than dissimilar. This factor
weighs in favor of finding a likelihood of confusion.
2. Relatedness of the Services
The record demonstrates that Applicants retail services are related to
Registrants wholesale clothing and general consumer merchandise services to the
extent that consumers may be accustomed to the same entity offer goods for sale at
the online retail and wholesale level. The Examining Attorney submitted printouts
from several different third-party websites showing the offering of retail and
wholesale services for clothing as well as other general consumer goods.27 For
example, the Spinster Sisters Co. website (www.spinstersistersco.com) offers a
variety of consumer merchandise, including shirts and bath & body products, that
can be purchased online directly and the website offers instructions on How to Order
Wholesale.28
We further point out that Registrants field of wholesale services includes general
consumer merchandise, and this may include many of the same specific products
that are listed in the application as Applicant offering at the retail level, e.g., candles,
perfumed candles, scented candles, pillows, mattresses, mattress toppers, bedding,
namely, pillow covers, pillow cases, mattress covers, comforters, bed blankets,
comforter covers, sheets, sheet covers, duvet covers, throws, quilts, pillow shams, bed
skirts and mattress pads, bath linens, namely, towels, bath towels, hand towels, wash
27Attached to Office Actions issued on October 10, 2017 (at TSDR 8-16), May 4, 2018 (at
TSDR 7-43.
28 October 10, 2017 Office Action, TSDR 8-12.
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Serial No. 87290299
cloths, bath sheets, [and] shower curtains. In other words, these are all products that
Registrant may be selling as general consumer merchandise at the wholesale level.
3. Conclusion
In view of the similarity of the marks and evidence showing that Applicants and
Registrants services are of a type that may emanate from a single source, we find
that consumers are likely to be confused. Again, we carefully considered and weighed
into our analysis Applicants evidence demonstrating some weakness in the term
RILEY in connection with clothing and retail clothing services. We also keep in mind
that the marks are not identical. Nevertheless, for the reasons explained above, we
find the marks remain overall quite similar and consumers are likely to believe both
are referring to the same individual. To the extent there is some uncertainty as to the
level of weakness of the term RILEY and the ability of consumers to distinguish
marks with this based on otherwise minimal differences, we resolve any doubt in
favor of Registrant. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1003 (Fed. Cir. 2002) (This court resolves doubts about the likelihood
of confusion against the newcomer because the newcomer has the opportunity and
obligation to avoid confusion with existing marks.); In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993).
Decision: For the aforementioned reasons, the refusal under Section 2(d) to register
Applicants mark as to both Classes 25 and 35 is affirmed.
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