My Style S.r.l.

This Opinion is Not a
Precedent of the TTAB

Hearing: July 11, 2019 Mailed: September 27, 2019

U NITED STATES P ATENT A ND T RADEMARK O FFICE
Trademark Trial and Appeal Board
————
In re My Style S.r.l.
_____

Serial No. 86698170

_____

Margaret S. Millikin of Millikin McKay PLLC
for My Style S.r.l..

Bridget A. McCarthy, Trademark Examining Attorney, Law Office 125,
Mark Pilaro, Managing Attorney.
_____

Before Wolfson, Adlin and Coggins, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Applicant My Style S.r.l. seeks registration of the mark MY STYLE BAGS (BAGS

disclaimed) in the stylized form shown below

for the following goods in International Class 18:

Casual bags in the nature of handbags, sport bags, baby
bags, travel bags, luggage, beauty bags, namely, toiletry
bags sold empty, and brief cases; accessory bags in the
nature of shirt carriers, tie cases, back packs, suit carriers,
Serial No. 86698170

beauty cases, namely, cosmetic cases sold empty and
toiletry bags sold empty; shopping bags made of leather,
suede, cotton, linen, wool, and waterproof materials;
handbags; sling bags; holdalls; folding bags in the nature
of handbags, garment bags for travel, duffel bags, shirt
carriers, tie cases, back packs and suit carriers; all-purpose
sport bags; satchels; beach bags; flexible bags for garments
in the nature of garment bags for travel, luggage, brief
cases, shirt carriers, tie cases, back packs, suit carriers;
umbrella covers; carriers for suits, shirts and dresses; tie
cases; shoe cases for travel; boot cases for travel; briefcases;
all-purpose small bags for men in the nature of travel bags,
athletic bags and business cases; multi-purpose purses;
wallets; pocket wallets; coin purses; credit card cases and
holders; business card cases; key cases; rucksacks; small
rucksacks; fanny packs; slings for carrying infants; bags for
carrying babies’ accessories; diaper bags; vanity cases, not
fitted; travel bags; overnight bags; luggage tags.1

The Examining Attorney refused registration under Section 2(d) of the Trademark

Act on the ground that Applicant’s mark so resembles the registered mark

MYSTYLE, in standard characters, for “Bags and cases specially adapted for holding

or carrying portable telephones and telephone equipment and accessories; Battery

cases; Beeper carrying cases; CD cases; Carrying cases for electronic equipment,

namely, cell phones and tablet computers; CD cases,”2 that use of Applicant’s mark

1 Application Serial No. 86698170, filed July 20, 2015 under Sections 1(b) and 44(e) of the
Trademark Act. Applicant later amended the application by deleting the Section 44(e) filing
basis. The application includes this description of the mark: “The mark consists of the words
‘MY STYLE BAGS’ stylized with hatching and shadowing, wherein the words ‘MY STYLE’
are more prominent than the word ‘BAG’ [sic].”
2 Registration No. 4299009, issued March 5, 2013; Section 8 Affidavit accepted. Although

Registrant’s mark appears on the drawing page as , this does not change the
mark from standard characters to a special form. See In re Calphalon Corp., 122 USPQ2d
1153 n.1 (TTAB 2017) (citing In re Star Belly Stitcher, Inc., 107 USPQ2d 2059 n.1 (TTAB

2
Serial No. 86698170

in connection with Applicant’s goods is likely to cause confusion. After the refusal

became final, Applicant appealed and filed a request for reconsideration which was

denied. Applicant and the Examining Attorney filed briefs and appeared at an oral

hearing.

I. Likelihood of Confusion

Our determination under Section 2(d) is based on an analysis of all of the

probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont

de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth

factors to be considered); 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. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192

USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the

cumulative effect of differences in the essential characteristics of the goods and

differences in the marks.”).

A. The Marks

The marks are quite similar “in their entireties as to appearance, sound,

connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot

Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.

2013)). We display Registrant’s mark in all uppercase letters because a term registered in
“standard character” form is not limited to any particular font style, size, or color.

3
Serial No. 86698170

2005) (quoting du Pont, 177 USPQ at 567). In fact, the only cognizable distinction

between them is that Applicant added the generic or descriptive and disclaimed term

BAGS to the end of Registrant’s mark, and Registrant’s mark does not contain

spacing between the words “my” and “style.” Neither distinction makes a meaningful

difference.

Indeed, the term BAGS in Applicant’s mark is at best descriptive of Applicant’s

goods, and disclaimed, and thus entitled to less weight in our analysis. Cunningham

v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding

descriptive terms, this court has noted that the ‘descriptive component of a mark may

be given little weight in reaching a conclusion on the likelihood of confusion.’”)

(quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985));

see also In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir.

1997) (“DELTA,” not the disclaimed term “CAFÉ,” is the dominant portion of the

mark THE DELTA CAFÉ).

Furthermore, MY STYLE is entitled to greater weight in our consideration of

Applicant’s mark because it will be read first. In re Detroit Athletic Co., 903 F.3d 1297,

128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (“The identity of the marks’ initial two words

is particularly significant because consumers typically notice those words first.”);

Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t

is often the first part of a mark which is most likely to be impressed upon the mind

of a purchaser and remembered”).

We also find that the term BAGS in Applicant’s mark is subordinate to MY STYLE

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Serial No. 86698170

because it is smaller in size. In fact, according to the description of the involved mark,

“the words ‘MY STYLE’ are more prominent than the word ‘BAG’ [sic].”

While Applicant displays its mark in a stylized form (described in the application

as “hatching and shadowing”), this is a distinction without a legal difference. In fact,

Registrant could display its standard character mark in any lettering style or font,

including in the same font and style featuring “hatching and shadowing” as Applicant

displays its mark, heightening the likelihood of confusion. In re Viterra, 101 USPQ2d

at 1909; Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d

1253, 1258-59 (Fed. Cir. 2011); In re Strategic Partners Inc., 102 USPQ2d 1397, 1399

(TTAB 2012). See also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,

1748 (Fed. Cir. 2017) (“Symbolic does not, and cannot, dispute that the mark, I AM

in standard character form, and the registrants’ marks, I AM in standard character,

typed, or stylized form, are pronounced the same way and, at a minimum, legally

identical.”); SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir.

1983) (“[T]he argument concerning a difference in type style is not viable where one

party asserts rights in no particular display. By presenting its mark merely in a typed

drawing, a difference cannot legally be asserted by that party.”).

Finally, it is essentially irrelevant that Applicant’s mark displays MY STYLE as

two words while Registrant’s mark displays MYSTYLE without a space between the

words. See e.g., Stockpot, Inc. v. Stock Pot Rest., Inc., 220 USPQ 52, 54 (TTAB 1983),

aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (finding STOCKPOT and STOCK

POT confusingly similar); In re Best Western Family Steak House, Inc., 222 USPQ

5
Serial No. 86698170

827, 827 (TTAB 1984) (BEEFMASTER and BEEF MASTER found “practically

identical”).

In short, because the marks share the same first two words, and Applicant’s mark

merely adds a smaller, at best descriptive and disclaimed term to the end of

Registrant’s mark, the marks look and sound highly similar. They also convey highly

similar or identical meanings as they are both used for bags or cases, and convey that

the bags or cases are in the owner’s preferred style. Because the marks are so similar,

this factor not only weighs heavily in favor of finding a likelihood of confusion, but

also reduces the degree of similarity between the goods required to support a finding

of likelihood of confusion. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689

(Fed. Cir. 1993); Time Warner Ent. Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002);

In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).

B. The Strength or Fame of Registrant’s Mark

Applicant argues that the cited mark is entitled to only a narrow scope of

protection based solely on a number of third-party registrations which Applicant

made of record. The argument is unpersuasive.

Most of the third-party registrations are for goods or services – such as lunch

boxes, wall decals, toothbrushes, checking account services, sewing machines, bulk

paper, furniture, software, sinks, writing instruments and online retail store services

featuring general consumer goods and merchandise that may be purchased under a

rent-to-own contract – which are unrelated to bags, cases or for that matter any

fashion-related goods or services. March 20, 2017 Request for Reconsideration TSDR

138-148, 152-156, 158-60, 164, 166, 171, 173-75. The question, however, is whether

6
Serial No. 86698170

MYSTYLE is commonly used for the goods in the cited registration, or related goods.

See In re i.am.symbolic, 123 USPQ2d at 1751-52 (“Symbolic has not pointed to any

record evidence to support a finding that multiple third parties use the mark I AM

for the listed goods in its class 3 and 9 applications.”); In re Inn at St. John’s, LLC,

126 USPQ2d 1742, 1746 (TTAB 2018); Century 21 Real Estate Corp. v. Century Life

of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) (“The relevant du Pont

inquiry is ‘[t]he number and nature of similar marks in use on similar goods’ … It is

less relevant that ‘Century is used on unrelated goods or services such as ‘Century

Dental Centers’ or ‘Century Seafoods.’”) (quoting Weiss Assocs. v. HRL Assocs., 902

F.2d 1546, 14 USPQ2d 1840, 1842 (Fed. Cir. 1990)).

Other third-party registrations on which Applicant relies are for different marks,

which are less similar to the cited mark than is Applicant’s involved mark. These

include MISTYLE, and MYSTUDYSTYLE. March 20, 2017 Request for

Reconsideration TSDR 157, 179-80, 187. These too fail to establish that the cited

MYSTYLE mark is not entitled to protection against Application’s mark, because the

marks in these registrations are not as similar to Registrant’s mark as is Applicant’s.

See In re Inn at St. John’s, 126 USPQ2d at 1745-46.

The only third-party registrations which include the term MY STYLE and are at

least arguably used for bags or fashion-related items or services are: JUST MY

STYLE for hosiery, socks, pantyhose and tights (Reg. No. 2966151);

MYSTYLEROCKS for on-line retail store services featuring clothing and accessories

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Serial No. 86698170

(Reg. No. 4824660); for jewelry making and bag decorating kits (Reg. No.

3775455); MY STYLE. MY WAY. for luggage, book bags and wallets (Reg. No.

3911342); MY STYLE! MY STUFF! for jewelry (Reg. No. 3551712); for

software listing fashion and beauty service providers (Reg. No. 4987088); PICK MY

STYLE for mobile apps for users to gain feedback in the field of fashion and style

(Reg. No. 4972542); MYSTYLE. for fashion show exhibitions for commercial purposes

(Reg. No. 3953013); and LOVE MY STYLE for mobile apps for editing and storing

clothing images (Reg. No. 4495844). March 20, 2017 Request for Reconsideration

TSDR 161-62, 168, 170, 172, 183, 185; December 30, 2015 Office Action response

TSDR 30-31, 54-55. These 10 registrations are not sufficient to show that the cited

mark is commercially weak. In fact, generally “third-party registrations are not

evidence of third-party use of the registered marks in the marketplace, for purposes

of the sixth du Pont factor.” In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204

(TTAB 2009) (citing Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d

1542, 1545 (Fed. Cir. 1992)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB

2009); see also AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268,

269 (CCPA 1973) (“The existence of these registrations is not evidence of what

happens in the market place or that customers are familiar with them nor should the

8
Serial No. 86698170

existence on the register of confusingly similar marks aid an applicant to register

another likely to cause confusion, mistake or to deceive.”).3

With respect to conceptual strength, however, Applicant’s third-party registration

evidence is competent and probative. Juice Generation, 115 USPQ2d at 1674-75

(“Third party registrations 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.”) (quoting 2 MCCARTHY ON TRADEMARKS AND UNFAIR

COMPETITION § 11.90 (4th ed. 2015)). Here, the third-party registrations Applicant

introduced establish that the term MY STYLE in the cited mark is conceptually weak.

In fact, the third-party registrations reveal that the term conveys clothes, fashion-

related services and even bags and luggage which are consistent with the buyer’s

personal style. While Registrant’s mark is therefore entitled to a relatively narrow

scope of protection, it is nevertheless settled “that likelihood of confusion, mistake or

deception is to be avoided as much between weak marks as between strong marks.”

In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982) (citing King Candy Co.

3 While there are cases in which evidence of extensive third-party use and registration of a
term has been found to suggest commercial weakness, in this case Applicant has not
established any third-party use of similar marks for similar goods, and in any event Applicant
submitted a relatively modest number of third-party registrations. See In re Inn at St. John’s,
126 USPQ2d at 1745-46 and In re Morinaga Nyugyo K.K., 120 USPQ2d 1738, 1746 n.8 (TTAB
2016). Cf. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015) (finding that Board “too
quickly” dismissed “extensive evidence of third-party registrations” and third-party uses of
similar marks) (emphasis supplied) and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671 (Fed. Cir. 2015).

9
Serial No. 86698170

v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)).

Accordingly, while we agree that Registrant’s mark is conceptually fairly weak, it is

not so weak that Applicant’s highly similar mark is entitled to registration for related

goods.4

Applicant’s unsupported argument that the “Cited Registration is not famous,” 16

TTABVUE 27 (Applicant’s Appeal Brief at 21), is misplaced. “Although we have

previously held that the fame of a registered mark is relevant to likelihood of

confusion, du Pont, 476 F.2d at 1361, 177 USPQ at 567 (factor five), we decline to

establish the converse rule that likelihood of confusion is precluded by a registered

mark’s not being famous.” Majestic Distilling, 65 USPQ2d at 1205. In fact, “in an ex

parte appeal the ‘fame of the mark’ factor is normally treated as neutral because the

record generally includes no evidence as to fame.” In re Mr. Recipe, LLC, 118 USPQ2d

1084, 1086 (TTAB 2016). “[I]t is settled that the absence of such evidence is not

particularly significant in the context of an ex parte proceeding.” In re Davey Prods.,

92 USPQ2d at 1204. Here, too, the fame factor is neutral.

C. The Goods, Their Channels of Trade and Classes of Consumers

The crux of this case is whether the goods are related. Applicant vigorously argues

that they are not, because Registrant’s bags and cases are “specially adapted for

holding specific electronic items,” such as “portable telephones,” whereas Applicant’s

goods are for “transporting items of a personal and intimate relationship to the

4 To the extent Applicant argues that the cited mark is descriptive (as opposed to merely
suggestive) of Registrant’s goods, this is an impermissible collateral attack on the cited
registration. See In re Fiesta Palms, 85 USPQ2d 1360, 1363 (TTAB 2007) (citing In re Dixie
Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997)).

10
Serial No. 86698170

wearer,” such as “habitments, toiletries, shoes and diapers.” 16 TTABVUE 9-10

(Applicant’s Appeal Brief at 3-4). More specifically, Applicant relies on evidence that

a “portable phone” is not a cell, mobile or “smart” phone, but is instead a “device that

replaces the handset cord with a radio link. The handset communicates with a base

station connected to a fixed telephone line.” According to Applicant, a “portable

phone” is the same as a cordless phone, and both require base stations, while mobile

or smartphones do not. 16 TTABVUE 10-11 (Applicant’s Appeal Brief at 4-5); March

20, 2017 Request for Reconsideration TSDR 82-94 (evidence establishing that

portable or cordless phones are different than mobile/smartphones).

The essential problem with Applicant’s argument is that, as Applicant itself points

out later in its Brief, “[t]he nature and scope of a party’s goods or services must be

determined on the basis of the goods or services recited in the application or

registration.” 16 TTABVUE 12 (Applicant’s Appeal Brief at 6) (emphasis in original)

(citing TMEP § 1207.01(a)(iii)). See i.am.symbolic, 123 USPQ2d at 1748 (“It is well

established that the Board may not read limitations into an unrestricted registration

or application.”) (quoting SquirtCo, 216 USPQ at 940); Stone Lion Capital Partners,

LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“It

was proper, however, for the Board to focus on the application and registrations

rather than on real-world conditions, because “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.”) (quoting Octocom Sys., Inc. v. Houston Comp. Servs. Inc., 918

F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Jump Designs LLC, 80

11
Serial No. 86698170

USPQ2d 1370, 1374 (TTAB 2006) (unrestricted and broad identifications are

presumed to encompass all goods of the type described). Here, neither Applicant’s nor

Registrant’s identification of goods includes the limitations Applicant seeks to

impose.

Indeed, Applicant identifies “casual … handbags … and briefcases,” “handbags;

sling bags; holdalls,” “satchels,” “briefcases; all-purpose small bags for men in the

nature of travel bags,” and “multi-purpose purses.” None of these goods is limited to

carrying or “transporting items of a personal and intimate relationship to the

wearer,” whether those items are “habitments, toiletries, shoes and diapers,” or any

other goods. Thus, these goods identified in the involved application could hold or be

used to carry portable phones, tablet computers, or other electronic goods.

Similarly, even if we accept Applicant’s argument that “portable telephones” do

not include cell or mobile phones,5 Registrant’s goods are not limited to use in

connection with “portable telephones.” They also include “bags and cases specially

adapted for holding or carrying … telephone equipment and accessories,” and

“carrying cases for electronic equipment, namely, cell phones ….” The term

5 The argument is belied by The American Heritage Dictionary’s and Collins English
Dictionary’s definitions of “cell phone” as, respectively, “A portable telephone that sends and
receives radio signals through a network of short range transmitters …” and “a portable
telephone operated by cellular radio in full.” August 22, 2017 Denial of Request for
Reconsideration TSDR 11, 12. PC Magazine’s “encyclopedia” defines a “portable phone” as
including both cordless phones as Applicant defines them and “cellular-based phone[s].” Id.
at 16.

12
Serial No. 86698170

“equipment” means “the implements used in an operation or activity,”6 and thus the

identified “telephone equipment” includes phones themselves, without respect to

whether they are landline or mobile phones. Furthermore, Registrant’s “carrying

cases for electronic equipment” specifies that the cases will be used for “cell phones.”

Thus, Applicant’s bags and briefcases, and Registrant’s bags and cases, could be used

for mobile phones.

In short, for all of these reasons, Applicant’s and Registrant’s goods are in part

legally identical. This also weighs heavily in support of finding a likelihood of

confusion.

In any event, even if we agreed with Applicant’s semantic arguments that the

goods are not legally identical because mobile phones are not “telephone equipment,”

or because “briefcases” are not “carrying cases,” there is more than enough evidence

in the record to establish that Applicant’s and Registrant’s goods are related

nonetheless. For example, Disney and Baggalini offer carrying cases for tablet

computers which are among Registrant’s identified goods, and cases, satchels,

handbags or wallets, which are among Applicant’s identified goods, under the marks

MINNIE MOUSE and BAGGALLINI, respectively:

6See https://www.merriam-webster.com/dictionary/equipment. The Board may take judicial
notice of dictionary definitions, including online dictionaries that exist in printed format or
have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014),
aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold TV Inc. v. Metronome
Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010).

13
Serial No. 86698170

14
Serial No. 86698170

August 22, 2017 Denial of Request for Reconsideration TSDR 20, 27, 35; September

20, 2016 Office Action TSDR 8-14. Kate Spade offers handbags, such as Applicant

identifies in its application on the one hand, and a crossbody bag for phones, which

encompasses Registrant’s bags for holding portable phones (even under Applicant’s

limited definition of portable phones) on the other, both under the KATE SPADE

designer mark:

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Serial No. 86698170

August 22, 2017 Denial of Request for Reconsideration TSDR 51, 70. Designers

Michael Kors and Rebecca Minkoff both offer phone cases which encompass

16
Serial No. 86698170

Registrant’s “carrying cases for … cell phones,” and satchels or handbags which are

among the goods identified in the involved application, under the MICHAEL KORS

and REBECCA MINKOFF marks, respectively:

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Serial No. 86698170

Id. at 126, 127, 157, 185. Brighton offers travel bags, which are identified in the

involved application, and a “tech pouch,” which like Registrant’s identified carrying

cases for tablet computers, is intended for an iPad mini, a type of tablet computer:

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Serial No. 86698170

September 20, 2016 Office Action TSDR 17, 19. The record contains many other

similar examples of the same marks being used for goods that fall within the cited

registration’s identification of goods on the one hand, and the involved application’s

identification of goods on the other. August 22, 2017 Denial of Request for

Reconsideration TSDR 17-194; September 20, 2016 Office Action TSDR 9-41.

In addition, the Examining Attorney made of record a number of use-based, third-

party registrations, having different owners, which show that the same marks are

registered for goods falling within the involved application’s identification of goods on

the one hand, and the cited registration’s identification of goods on the other,

including:

(Reg. No. 4619299) is registered for “bags and cases
specially adapted for holding or carrying portable
telephones,” as well as “bags, namely, all-purpose carrying
bags” and “satchels.”

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Serial No. 86698170

FREEBIRD (Reg. No. 4041166) is registered for “protective
carrying cases specially adapted for … tablet computers”
and “handbags,” “duffel bags” and “all-purpose carrying
bags.”

(Reg. No. 4199548) is registered for “carrying
cases for mobile computers” and “handbags.”

PETUNIA (Reg. No. 4174413) is registered for “tablet
computer cases,” and “travel bags,” “duffel bags” and “hand
bags.”

PIRONICS (Reg. No. 4365313) is registered for “bags and
cases specially adapted for holding or carrying portable
telephones and telephone equipment and accessories” and
“handbags.”

SOLEWOOD (Reg. No. 4219292) is registered for “bags and
cases specially adapted for holding or carrying portable
telephones and telephone equipment and accessories,”
“duffel bags for travel” and “travel bags.”

PAPAYA! (Reg. No. 4271158) is registered for “bags and
cases specially adapted for holding or carrying portable
telephones and telephone equipment and accessories” and
“key cases.”

ICLUTCH (Reg. No. 4255411) is registered for “carrying
cases for electronic equipment, namely, tablet computers”
and “clutch bags.”

EVEREST (Reg. No. 4538431) is registered for “bags for
carrying electronic computer equipment and
communication devices and their accessories” and “duffel
bags,” “travel bags” and “satchel bags.”

(Reg. No. 4548851) is registered for “carrying cases for
portable computers,” “protective cases for … tablet
computers” and “handbags.”

URBAN EXPRESSIONS (Reg. No. 4211669) is registered
for “carrying cases for mobile computers,” “cosmetic bags

20
Serial No. 86698170

sold empty” and “handbags.”

September 20, 2016 Office Action TSDR 57-110. “Third-party registrations which

cover a number of differing goods and/or services, and which are based on use in

commerce, although not evidence that the marks shown therein are in use on a

commercial scale or that the public is familiar with them, may nevertheless have

some probative value to the extent that they may serve to suggest that such goods or

services are of a type which may emanate from a single source.” In re Mucky Duck

Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re Davey Prods., 92

USPQ2d at 1203.

The evidence of extensive third party use and registration of the same marks for

goods such as those identified in the involved application on the one hand and goods

such as those identified in the cited registration on the other makes clear that even

if the goods are not legally identical, they are closely related.7 This factor therefore

also weighs heavily in favor of finding a likelihood of confusion.

Of course, to the extent that the goods are legally identical, we must presume that

the channels of trade and classes of purchasers for those goods are also the same. See

In re Viterra Inc., 101 USPQ2d at 1908 (even though there was no evidence regarding

channels of trade and classes of consumers, the Board was entitled to rely on this

legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel

7To the extent Applicant argues that the goods are unrelated because they are in different
International Classes, the argument is unavailing. Jean Patou Inc. v. Theon Inc., 9 F.3d 971,
29 USPQ2d 1771, 1774 (Fed. Cir. 1993) (stating that classification is for the convenience of
the Office and “wholly irrelevant to the issue of registrability under section 1052(d), which
makes no reference to classification”).

21
Serial No. 86698170

Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical

goods, the channels of trade and classes of purchasers are considered to be the same);

Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101

USPQ2d 1022, 1028 (TTAB 2011).

To the extent the goods are not legally identical, the Examining Attorney’s

evidence has established that the channels of trade and classes of consumers in fact

overlap. Indeed, goods such as those identified in the involved application and goods

such as those identified in the cited registration are sold via the same designer,

fashion and department store websites, and on the same sections of those websites.

These same sources offer bags and cases for portable phones and tablet computers

and bags and cases for personal and other items to the same consumers in the same

marketplaces. Thus, these factors also weigh in favor of finding a likelihood of

confusion.

D. Conditions of Sale and Purchaser Care and Sophistication

Finally, Applicant argues that confusion is unlikely because: its “targeted

customers” will “pay a high degree of attention” in purchasing Applicant’s goods; the

goods will be “marketed in luxury and upmarket retail operations and online;”

Applicant “is an Italian manufacturer having a reputation for fine leather, cloth and

material goods which are of high quality construction and made from carefully

selected materials;” and Applicant’s goods are “expensive luxury items, ranging from

about €50 (about US$57) for a small travel beauty bag to more than €600 (about $750)

for a single travel bag;” and “Applicant’s goods may be personalized with embroidered

initials, names or logos ….” 16 TTABVUE 25 (Applicant’s Appeal Brief at 19)

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Serial No. 86698170

(emphasis in original). Applicant’s argument is unavailing, for the same essential

reason its arguments about the goods are unavailing. In fact, because there are no

trade channel, price or other similar limitations in Applicant’s identification of goods,

we must presume that ordinary and unsophisticated consumers will purchase

Applicant’s goods, and we must base our decision on the “least sophisticated potential

purchasers” for the goods as identified. Stone Lion, 110 USPQ2d at 1163 (quoting

Gen. Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011),

judgment set aside on other grounds, 2014 WL 343267 (TTAB 2014)). This factor is

therefore neutral.

II. Conclusion

The marks are quite similar, the goods are if not legally identical then at least

closely related and the channels of trade and classes of consumers overlap. Confusion

is therefore likely, notwithstanding the conceptual weakness of Registrant’s mark.

Decision: The refusal to register Applicant’s proposed mark under Section 2(d) of the

Trademark Act is affirmed.

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