This Opinion is not a
Precedent of the TTAB

Mailed: June 7, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Wasser
_____

Serial No. 87487916
_____

Ryan S. Spiegel, Esq. of Paley Rothman,
for Frances Wasser.

John Sullivan, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.

_____

Before Kuczma, Greenbaum and Larkin,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

Frances Wasser (“Applicant”) seeks registration on the Principal Register of the

mark FRANCIEPANTS (in standard characters) for, as amended:

Undergarments, in International Class 25.1

The Trademark Examining Attorney refused registration of Applicant’s mark

under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing Registration No.

1 Application Serial No. 87487916 was filed on June 13, 2017, based upon Applicant’s claim
of first use anywhere at least as early as April 19, 2017 and first use in commerce at least as
early as June 5, 2017.
Serial No. 87487916

4466618 owned by Western Glove Works (“Registrant”), for the mark FRANCY (in

standard characters) for skirts in International Class 25, as a bar to registration.2

When the refusal was made final, Applicant appealed and requested

reconsideration. After the Examining Attorney denied the request for

reconsideration, the appeal was resumed. We reverse the refusal to register.

I. Likelihood of Confusion

Our determination under § 2(d) is based on an analysis of all probative facts in

evidence that are relevant to the factors bearing on the issue of likelihood of confusion

enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,

567 (CCPA 1973), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293,

113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311,

65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two

key considerations are the similarities between the marks and the similarities

between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co.,

544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, certain other factors were

also argued and considered. The remaining factors are treated as neutral.

A. Similarity of Goods, Customers and Trade Channels

We turn first to the du Pont factor involving the similarity or dissimilarity of the

goods identified in Applicant’s application and the cited Registration. du Pont, 177

USPQ at 567. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,

2 Registration No. 4466618 issued on January 14, 2014.

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Serial No. 87487916

110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Comp.

Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is

legion that the question of registrability of an applicant’s mark must be decided on

the basis of the identification of goods set forth in the application regardless of what

the record may reveal as to the particular nature of an applicant’s goods, the

particular channels of trade or the class of purchasers to which the sales of goods are

directed.”)); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Thus, the

evidence Applicant submits showing the actual use of the respective marks by

Applicant and Registrant is not relevant to registration of her mark.

Turning to the identifications of goods, Applicant’s goods are “undergarments,”

while the goods listed in the cited Registration are “skirts.” The second du Pont factor

“considers whether the consuming public may perceive [the respective goods and

services of the parties] as related enough to cause confusion about the source or origin

of the goods and services.” Hewlett Packard Co. v. Packard Press, Inc., 281 F.2d 1261,

62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (citing Recot, Inc. v. Becton, 214 F.3d 1322,

54 USPQ2d 1894, 1898 (Fed. Cir. 2000)). Applicant’s and Registrant’s goods need not

be identical or directly competitive to find a likelihood of confusion. As a general

matter, they need only to be related in some manner or the conditions surrounding

their marketing are such that they would be encountered by the same purchasers

under circumstances that would give rise to the mistaken belief that the goods come

from a common source. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d

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Serial No. 87487916

1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); On-line Careline Inc. v. Am. Online

Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000).

Evidence of the relatedness of the goods may include advertisements showing that

the relevant goods are advertised together or sold by the same manufacturer or

dealer. See TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”)

§ 1207.01(a)(vi) (Oct. 2018). The Examining Attorney submits evidence from the

websites of the following recognized brand names advertising products of the type

listed in Registrant’s registration and Applicant’s application that are offered under

the same trademark:

ASOS, Calvin Klein and GAP
(provided in the September 12, 2017 Office Action),3

Forever21, H&M, Madewell, Tommy Hilfiger and Venus
(provided in the November 8, 2017 Final Office Action),4

and

J.Crew, Title Nine, City Chic, Petit Bateau and Wolford
(provided in the Request for Reconsideration Denied).5

This website evidence shows “undergarments” and “skirts” being offered for sale by

the above-identified well-known brands under the same marks and through the same

trade channels. Thus, consumers are accustomed to seeing the goods at issue offered

3 September 12, 2017 Office Action at TSDR 13-15, 21-22, 28-29.
The Trademark Status & Document Retrieval (“TSDR”) citations refer to the electronic file
database for the involved application. All Board citations to the TSDR database in this
decision are to the downloadable .pdf version of the documents.
4 November 8, 2017 Final Office Action at TSDR 12-13; 19-20; 23, 26-27; 33-34; 39-40.
5May 29, 2018 Request for Reconsideration Denied at TSDR 54-55; 56-58; 59-60; 61-63; 64-
65.

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Serial No. 87487916

for sale under the same marks by the same trademark owner, supporting the

relatedness of Applicant’s and Registrant’s goods and that they are sold through the

same trade channels to the same classes of consumers. See, e.g., In re Davey Prods.

Pty Ltd., 92 USPQ2d 1198, 1203-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91

USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

The Examining Attorney also submits a representative sample of eight third-party

registrations6 of marks for use in connection with goods that are identical to or very

similar to those of Registrant and Applicant to show that it is common for a single

entity to register the same mark for undergarments and skirts. While third-party

registrations are not evidence that the marks shown therein are in commercial use,

or that the public is familiar with them, such registrations that individually cover a

number of different items and are based on use in commerce have probative value to

the extent that they serve to suggest that the listed goods are of a kind that may

emanate from a single source under a single mark. See In re Aquamar, Inc., 115

USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6

USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co., 29 USPQ2d

1783, 1785-86 (TTAB 1993). Indeed, these third-party registrations, which include

6 See Registration Nos. 5412453 (including dresses and undergarments), 5421675 (including
skirts and undergarments), 5429247 (including ladies undergarments and skirts), 5433138
(including dresses and undergarments), 5445159 (including skirts and undergarments),
5461088 (including undergarments and skirts), 5466426 (including skirts and
undergarments, underwear), 5470305 (including dresses and undergarments), identified in
the May 29, 2018 Request for Reconsideration Denied at TSDR 66, 69, 74, 80, 82, 84, 86, 88.
The Examining Attorney also submitted copies of Registration Nos. 5461985 and 5470724 for
undergarments and clothing items not including skirts (TSDR 72, 77), which are less relevant
as the goods in these registrations cover clothing items that do not include Registrant’s goods.

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Serial No. 87487916

Applicant’s and Registrant’s goods, provide additional evidence that Applicant’s

undergarments and Registrant’s skirts are products which may emanate from a

single source, thus supporting their relatedness.

In support of her position, Applicant cites the Board’s decision in H.D. Lee Co. v.

Maidenform Inc., 87 USPQ2d 1715, 1729 (TTAB 2008), where the dissimilarity of the

marks and of the types of clothing on which the marks were used resulted in the

dismissal of the opposition. That case differs from this case. The opposer’s evidence

that its clothing was related to applicant’s undergarments was found not to be

persuasive of a likelihood of confusion. 87 USPQ2d at 1725. While the Board noted

that women may buy undergarments as part of an ensemble, or that they may

purchase an undergarment because the cut of specific clothing requires a certain

undergarment, the opposer failed to introduce any evidence, or make any arguments

in support of such position. Thus, the opposer did not meet its burden of proving that

applicant’s intimate apparel and opposer’s outerwear were related.

Here, however, the evidence shows that the same entities offer Applicant’s and

Registrant’s goods under the same marks, and that the relevant goods are sold or

provided through the same trade channels to the same classes of customers. In

further support of the relationship between Applicant’s undergarments and

Registrant’s skirts, the Examining Attorney submits copies of website articles

encouraging women to consider the type of undergarments to wear with skirts:

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Serial No. 87487916

Cosmopolitan7:

9 Ways to Banish Panty Lines Without Going
Commando

…

2. Camouflage your VPL with a print.
The busier the print, the better it will be at hiding your
panty lines.

…

4. Try an old-school slip.
. . . Just make sure to run both the skirt and the slip
through a wire hanger a few times before you put them on
to discharge any static electricity.

Bustle8:

10 Best Undies For Skirts & Dresses When You Want
More Coverage, Because Wind

. . . they specifically make female underwear for
underneath dresses and skirts.

This Maidenform boyshort panty is ideal for tighter and
shorter skirts or dresses . . . .

This six pack of full coverage briefs . . . provide coverage
and convenience that you’re looking for underneath a dress
or skirt.

. . . adorable lace tiered safety pants. . . . it doesn’t show
underneath your skirts and dresses . . . .

7 Request for Reconsideration Denied, Cosmopolitan: https://www.cosmopolitan.com/style-
beautyfashion/advice/a5855/ways-to-banish-panty-lines/ at TSDR 30-32.
8 Id., Bustle: https://www.bustle.com/articles/173512-10-best-undies-for-skirts-dresses-when
-you-want-more-coverage-because-wind at TSDR 36-37, 39, 41.

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Serial No. 87487916

LooksGud9:

How to wear right type of underwear with different
dresses?

. . . Girls wear a variety of dresses and hence require
different types of underwear for different occasions. . . .

1. Skater skirts or Mini-Dresses
2. Office Wears
Go for a composite piece of underwear with office
trousers or skirts . . .
3. Loose Skirts or Dresses

wikiHow to do anything . . . 10
How to Keep Your Underwear from Showing

Method 1 Choosing the Right Underwear

1 Wear a thong. A thong is the go-to underwear of choice
for fashion stylists for many reasons – they’re completely
invisible under even the tightest pants and skirts . . . Wear
a thong underneath a pair of tight fitting jeans or skirt.

2 Try a G-string. . . . G-strings are also a good choice if
you’re planning to wear a sheer dress or skirt.

3 Experiment with boyshorts. . . . Boyshorts are cut similar
to briefs . . . they are less likely to be noticed underneath
tight pants or skirts.

Method 2 Concealing Your Underwear Without Changing
It

…

3 Add another layer. If you’re wearing a tight skirt, try
creating a barrier between your underwear and your skirt.
You can do this by adding a layer of tights or pantyhose, or
by slipping a light slip under your skirt.

9Id., LooksGud: https://www.looksgud.in/blog/best-underwear-for-dresses-bodycon-tightfit-
wedding/ at TSDR 45-47.
10Id., wikiHOW: https://www.wikihow.com/Keep-Your-Underwear-from-Showing at 49-50,
53.

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Serial No. 87487916

These articles highlight that the decision as to which type of undergarment to wear

with skirts involves multiple factors, including comfort, style, coverage and avoiding

visible lines from the undergarments, confirming the close relationship between

Applicant’s undergarments and Registrant’s skirts.

Under the third du Pont factor, channels of trade, Applicant contends that her

exclusive trade channel is her website; she has never sold goods in any brick-and-

mortar retail establishments.11 In her Affidavit, Applicant explains that her products

are sold in an “online catalog at FranciePants website lovefranciepants.com” and that

“FranciePants products are not, and have never been, sold in any brick-and-mortar

retail establishments. On occasion we have sold our products at tables or booths

during an event . . . but otherwise our sales are exclusively through our website.”12

Because Registrant’s goods are not sold on Applicant’s website, Applicant argues that

there is “no likelihood that a consumer would encounter both goods or both marks in

the same sales platform.”13 That Registrant apparently advertises for wholesale

inquiries, which Applicant argues is an entirely different channel of trade and

customer base than the retail customers to whom Applicant sells,14 does not matter.

11Applicant’s Appeal Brief p. 11 (9 TTABVUE 15); May 8, 2018 Request for Reconsideration
at TSDR 22 (4 TTABVUE 22), Affidavit of Frances “Francie” Wasser ¶¶ 9-10, at TSDR 27 (4
TTABVUE 27); see also TSDR 95-103 (4 TTABVUE 95-103). In her Affidavit, Ms. Wasser also
states that “on occasion” her products have been sold “at tables or booths during an event.”
The TTABVUE citations refer to the electronic docket database.
12 Wasser Affidavit ¶ 10, at TSDR 27 (4 TTABVUE 26-27).
13 Request for Reconsideration at p. 6, at TSDR 22 (4 TSDR 22).
14 Applicant’s Appeal Brief p. 13 (9 TTABVUE 17).

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Serial No. 87487916

Because there are no limitations as to channels of trade in the recitation of goods in

either Applicant’s application or the cited Registration, we must presume that the

identified goods move in all channels of trade normal for such goods. See Citigroup

Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.

2011); In re I-Coat Co., LLC., 126 USPQ2d 1730, 1737-38 (TTAB 2018); In re Thor

Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any

restrictions or limitations into the registrant’s description of goods.”). Based on the

evidence showing the relatedness of the goods and the same classes of customers, the

channels of trade at minimum overlap favoring a finding of likelihood of confusion

under the third du Pont factor. In re Wilson, 57 USPQ2d 1863, 1866 (TTAB 2001).

Thus, the evidence shows the relatedness between Applicant’s and Registrant’s

goods and that the same entities provide the Applicant’s and Registrant’s goods in

the same trade channels under the same marks to the same classes of customers. The

second and third du Pont factors weigh in favor of a finding of likelihood of confusion.

In re Wilson, 57 USPQ2d 1863, 1867 (TTAB 2001).

B. Similarity of the Marks

It is well settled that marks are compared in their entireties for similarities in

appearance, sound, connotation and commercial impression. Stone Lion Capital

Partners v. Lion Capital, 110 USPQ2d at 1160 (Fed. Cir. 2014) (quoting Palm Bay

Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 73

USPQ2d 1689, 1691 (Fed. Cir. 2005)). Similarity in any one of these elements may be

sufficient to find the marks confusingly similar. In re Davia, 110 USPQ2d 1810, 1812

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Serial No. 87487916

(TTAB 2014); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007));

In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).

Looking at Applicant’s and Registrant’s marks, they both begin with nicknames

for “Frances,” namely, “Francie” and “Francy,” respectively.15 While “Francie” and

“Francy” sound the same Applicant contends that the different spelling in her mark

versus the cited mark impacts the meaning of her mark. According to Applicant, her

mark is a creative play on the combination of her nickname “Francie” together with

the “fancy-pants” expression whereas, the term “Francy” in the cited Registration “is

not used in a broader branding or marketing manner, but rather as a descriptor or

identifying name of one particular type of denim skirt.”16

Applicant argues that the Examining Attorney fundamentally misconstrues the

commercial impression and connotation of her mark,17 submitting the following

online dictionary definitions of “fancy-pants” in support:18

Pretentious or fancy in an extreme or excessive way. Use
of this phrase often indicates the speaker’s annoyance.19

15 Applicant acknowledges that FRANCIE is a nickname for “Frances.” Applicant’s Appeal
Brief p. 4 (9 TTABVUE 8); October 31, 2017 Response to Office Action at TSDR 8. The
evidence submitted by the Examining Attorney confirms that FRANCY is also a nickname
for “Frances.” Examining Attorney’s Appeal Brief at 11 TTABVUE 6; Request for
Reconsideration Denied at TSDR 7-11.
16 Applicant’s Appeal Brief pp. 4, 12 (9 TTABVUE 8, 16).
17 Applicant’s Appeal Brief p. 4 (9 TTABVUE 8).
18Applicant’s Appeal Brief p. 4 (9 TTABVUE 8) citing to “May 8, 2018 Request for
Reconsideration, TSDR pp.17-36, 73-79” (TSDR 32-51, 88-94).
19Id. at TSDR 32, Idioms by The Free Dictionary (https://idioms.thefreedictionary.com/fancy-
pants).

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Serial No. 87487916

Overly elaborate, swanky or pretentious–especially of
dress. Also applied to people who act in that manner.20

Slang. fancy or snobbish; foppish; dandified.21

: overly elegant or refined: LA-DI-DA22

[informal] Superior or high-class in a pretentious way.23

[adjective] • upscale24

[noun] 1. Alternative spelling of fancy pants. 2. Someone
fancy, silly or attractive. [adjective] overly fancy with little
function; newfangled; complicated. [noun] 1. (US) A person
wearing fancy clothing; a member of a social elite. 2. A
person very concerned with their appearance.25

Based on the foregoing definitions, Applicant contends that “fancy-pants” is a

“well-established colloquial expression with a definition of snobbish, pretentious, or

overly refined.”26 While acknowledging that Registrant’s mark FRANCY has a

20 Id. at TSDR 35-36, The Phrase Finder (/index.html) https://www.phrases.org.uk/meanings
/fancy-pants.html. This evidence is from a British website addressing the questions “What’s
the meaning of the phrase ‘Fancy-pants’?” and “What’s the origin of the phrase ‘Fancy-
pants’?” Because it notes that “[t]his is an American phrase” and provides the history from
its first use in print in a newspaper in the state of Maine, it is deemed probative. See
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE § 1208.03 (June
2018).
21 Id. at TSDR 37, Dictionary.com (http://www.dictionary.com/browse/fancy-pants).
22 Id. at TSDR 39 Merriam-Webster Dictionary, 2018 Merriam-Webster, Incorporated (https:
//www.merriam-webster.com/dictionary/fancy-pants).
23Id. at TSDR 46, Oxford Dictionaries (https://en.oxforddictionaries.com/definition/us/fancy-
pants).
24Id. at TSDR 88, The Online Slang Dictionary (American, English, and Urban slang).
©1996-2018 by The Online Slang Dictionary (http://onlineslangdictionary.com/meaning-
definition-of/fancy-pants).
25 Id. at TSDR 93, Your Dictionary, ©1996-2018 Love To Know, Corp. (www.your dictionary
.com/fancy-pants).
26 Applicant’s Appeal Brief p. 4 (9 TTABVUE 8).

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Serial No. 87487916

common pronunciation to the first two syllables of her FRANCIEPANTS mark,27

Applicant asserts that the first portion of her mark “cannot be separated from the

second portion and treated as a dominant or independent piece with a stand-alone

impression when the suggestive nature of the mark inherently involves the entire

phrase holistically.”28 She argues her mark is suggestive of this unitary expression

necessarily comprised of the two words “fancy” and “pants,” which has a distinct

meaning from the word “fancy” standing alone.29 Thus, according to Applicant, even

if the FRANCIE portion of her mark and the entirety of Registrant’s mark are both

plays on the word “fancy,” the contexts are so different as to create completely distinct

commercial impressions.30

Applicant’s mark is a creative play on the colloquial expression “fancy-pants”

resulting from the combination of her nickname (“Francie” from her name Frances

Wasser) with the word “pants.”31 Thus, Applicant’s mark is a unitary mark that has

a different meaning and connotation from Registrant’s mark, resulting in her mark

having a different, distinct commercial impression from the cited mark.32 A mark is

unitary when “its elements are inseparable,” i.e., they

combine to show that the mark has a distinct meaning of
its own independent of the meaning of its constituent

27 October 31, 2017 Response to Office Action p. 2, TSDR 6.
28Applicant’s Appeal Brief p. 5 (9 TTABVUE 9); Request for Reconsideration after Final
Action p. 2, TSDR 18.
29 Applicant’s Appeal Brief p. 5 (9 TTABVUE 9).
30 Applicant’s Appeal Brief p. 4 (9 TTABVUE 8).
31Affidavit of Frances “Francie” Wasser ¶¶ 5-6, TSDR 26 submitted with May 8, 2018
Request for Reconsideration (4 TTABVUE 26); Applicant’s Appeal Brief p. 4 (9 TTABVUE 8).
32 Applicant’s Appeal Brief p. 4 (9 TTABVUE 8).

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Serial No. 87487916

elements. In other words, a unitary mark must create a
single and distinct commercial impression. This test for
unitariness requires the Board to determine “how the
average purchaser would encounter the mark under
normal marketing of such goods and also … what the
reaction of the average purchaser would be to this display
of the mark.

Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir.

1991) (quoting In re Magic Muffler Serv., 184 USPQ 125, 126 (TTAB 1974)); In re

Ginc UK Ltd., 90 USPQ2d 1472, 1476 (TTAB 2007); In re Brown-Forman Corp., 81

USPQ2d 1284, 1287 (TTAB 2006).

While the marks both begin with the similar woman’s nicknames Francy and

Francie, when considered as a whole, Applicant’s unitary mark and the cited mark

have different commercial impressions. This key factor weighs strongly against a

finding of likelihood of confusion.

C. Other du Pont Factors

Lastly, Applicant argues that other du Pont factors warrant consideration.

Turning to the fifth and sixth du Pont factors, which Applicant admits are usually

applied to argue that “when a prior mark is famous then it is stronger, and thus there

is more likelihood of confusion, and that when there are many similar marks already

in use on similar goods, a prior mark is weaker and less entitled to protection under

Section 2(d),” Applicant concedes that this does not apply to this case, but asserts

that the “contrapositive must also be true.”33 That is, if Registrant’s mark “is not

famous, then it is entitled to less protection. Likewise, if the number and nature of

33 Applicant’s Appeal Brief p. 14 (9 TTABVUE 18).

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Serial No. 87487916

similar marks in use on similar goods is de minimis – including [Registrant’s mark]

– then such obscurity and nonuse of Registrant’s mark makes it weaker.”34 Applicant

is incorrect. Inasmuch as this is an ex parte appeal, the fame of Registrant’s mark is

not an issue before us.

Under the seventh and eighth du Pont factors, i.e., the nature and extent of any

actual confusion and the length of time during and condition under which there has

been concurrent use without evidence of confusion, Applicant points to her Affidavit

where she states that “Applicant is not aware of any instance of actual confusion,

despite at least a year of concurrent use.”35 The fact that an applicant in an ex parte

case is unaware of any instances of actual confusion is generally entitled to little

probative weight in the likelihood of confusion analysis inasmuch as the Board

generally has no way to know whether the registrant likewise is unaware of any

instances of actual confusion, nor is it usually possible to determine that there has

been any significant opportunity for actual confusion to have occurred, especially in

this case where Applicant has indicated that it has only used its mark for “at least a

year of concurrent use.” See, e.g., In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB

2001); In re Jeep Corp., 222 USPQ 333, 337 (TTAB 1984); In re Barbizon Int’l, Inc.,

217 USPQ 735, 737 (TTAB 1983). In any event, Applicant’s uncorroborated statement

of no known instances of actual confusion is of little evidentiary value. See In re

Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (self-serving

34 Id.
35 Applicant’s Appeal Brief p. 14 (9 TTABVUE 18).

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Serial No. 87487916

testimony of appellant’s corporate president’s unawareness of instances of actual

confusion was not conclusive that actual confusion did not exist or that there was no

likelihood of confusion).

Relying on the ninth du Pont factor, Applicant argues that Registrant’s mark

“appears to be used only on a single product within a family of brands, cutting against

any likelihood of confusion.”36 While use on a wide variety of goods (such as with a

house mark or family of marks) weighs in favor of likelihood of confusion, see e.g., In

re Wilson, 57 USPQ2d at 1867, Applicant has not cited any cases, nor are we aware

of any, that stand for the reverse proposition.

Applicant next argues that the twelfth du Pont factor, the extent of potential

confusion, i.e., whether de minimis or substantial, is also a relevant consideration.

According to Applicant, any potential confusion (of which Applicant maintains there

would be none) would be de minimis at most in view of the differences in the marks,

the goods, the trade channels and the limited uses of the marks (namely Registrant’s

use for only one single product versus Applicant’s house mark), and given no actual

confusion.37 As set forth above, the relatedness of the goods in this case which are

sold in the same trade channels to the same consumers weighs in favor of a likelihood

of confusion, and thus the potential for confusion cannot be deemed to be de minimis.

Lastly, Applicant notes that Registrant’s registration issued over a prior third-

party registration for the mark FRANCIE PANTS, Registration No. 3338692 (for

36 Applicant’s Appeal Brief p. 13 (9 TTABVUE 17).
37 Applicant’s Appeal Brief p. 14 (9 TTABVUE 18).

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Serial No. 87487916

shorts; socks; tights; undergarments; which Applicant acknowledges has since been

cancelled). While recognizing that this is “perhaps not a direct DuPont factor,”

Applicant argues that Registration No. 3338692 did not prevent the registration of

Registrant’s mark, thus weighing against a likelihood of confusion in this case.38

Neither the Examining Attorney nor the Board is bound to approve for

registration Applicant’s mark based solely upon the registration of another assertedly

similar mark. Each application must be decided on its own merits, and decisions

regarding other registrations do not bind either the agency or this court. In re Nett

Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior

registrations had some characteristics similar to [applicant’s] application, the PTO’s

allowance of such prior registrations does not bind the Board or this court.”); see also

In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014).

In view of the foregoing, these factors are neutral.

D. Conclusion

The commercial impression conveyed by Applicant’s FRANCIEPANTS mark is

“fancy-pants,” which is very different from the commercial impression of a woman’s

nickname, or even the descriptive term “fancy,” conveyed by the cited mark FRANCY.

In balancing the du Pont factors, we conclude that the relatedness of Applicant’s

goods, i.e., undergarments, and Registrant’s goods, skirts, and their presumed

availability to the same customers in the same trade channels, are outweighed by the

38Applicant’s Appeal Brief p. 15 (9 TTABVUE 19) citing to “May 8, 2018 Request for
Reconsideration, TSDR pp. 166-168” at TSDR 181-183.

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Serial No. 87487916

dissimilarity of the marks due to their different commercial impressions, such that

there is no likelihood of confusion as to the source or sponsorship of the goods sold

under the cited registered mark FRANCY.

Decision: The refusal to register Applicant’s mark FRANCIEPANTS under § 2(d)

of the Trademark Act is reversed.

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