Naboso Technology, LLC

This Opinion is not a
Precedent of the TTAB

Mailed: February 27, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board

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In re Naboso Technology, LLC

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Serial No. 87236262

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S. Roxanne Edwards, Klemchuk LLP, for Naboso Technology, LLC.

Samuel R. Paquin, Trademark Examining Attorney, Law Office 101, Ronald R. Suss-
man, Managing Attorney.

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Before Mermelstein, Kuczma, and Heasley, Administrative Trademark
Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Naboso Technology, LLC, filed an application1 to register NABOSO (in standard

characters) on the Principal Register for goods including:2

Orthotics for feet. International Class 10.

Flooring comprised of rubber adapted for physical fitness,
performance, and rehabilitation activities. International
Class 19.

Yoga mats. International Class 27.

1Filed November 14, 2016, alleging a bona fide intent to use the mark in commerce. Trade-
mark Act § 1(b); 15 U.S.C. § 1051(b).
2The application includes additional goods in International Classes 10 and 28 that are not
at issue in this appeal.
Serial No. 87236262

Personal mats for use in connection with exercise and phys-
ical fitness. International Class 28.

Applicant appeals from the Examining Attorney’s final partial refusal to register

pursuant to Trademark Act § 2(d), 15 U.S.C. § 1152(d), on the ground that Applicant’s

mark — as used on the goods listed above — is likely to cause confusion in view of

the marks and goods in the following four registrations:

Reg. No. Reg. Date3 Mark Goods Disclaimer
2040104 Feb. 25, 1997 • Orthotics for normalizing the position of bones, lig- ARCH
aments, and tendons for feet, legs, hips and back. SUPPORTS
International Class 10.

2326646 Mar. 7, 2000 • Orthotics for normalizing the position of bones, lig-
BAREFOOT aments and tendons for feet, legs, hips and back.
International Class 10.

2746817 Aug. 5, 2003 BAREFOOT • Rubber floor mats. International Class 27.

3038723 Jan. 10, 2006 • Silk eye pillows containing aromatic and non-aro- YOGA CO.
matic substances for relief from headaches, insom-
nia and sinus discomfort. International Class 5.
• Yoga mat bags, namely, sports bags for carrying
yoga mats or exercise mats. International Class 18.
• Yoga accessories, yoga products and yoga props,
namely, personal yoga exercise mats, personal yoga
exercise rugs, personal yoga exercise blankets, per-
sonal yoga exercise straps, and personal yoga exer-
cise blocks. International Class 28.

We reverse the refusal to register.

I. Discussion

A. Applicable Law

Our determination under Trademark Act § 2(d) is based on an analysis of the pro-

3In each case affidavits of continued use and renewals pursuant to Trademark Act §§ 8–9
have been accepted and granted.

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Serial No. 87236262

bative facts in evidence that are relevant to the factors bearing on the issue of likeli-

hood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ

563, 567 (CCPA 1973); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201

(Fed. Cir. 2003). In considering the evidence, we keep in mind that “[t]he fundamental

inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the

essential characteristics of the goods and differences in the marks.” Federated Foods,

Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see In

re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).

B. Analysis

1. Similarity or dissimilarity and nature of the goods, trade
channels, and relevant purchasers

In comparing the goods in question, “[t]he issue to be determined . . . is not

whether the goods . . . are likely to be confused but rather whether there is a likeli-

hood that purchasers will be misled into the belief that they emanate from a common

source.” Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB

1989). It is not necessary that the parties’ goods be similar or even competitive to

support a finding of likelihood of confusion. It is sufficient if the goods are related in

some manner or that the conditions surrounding their marketing are such that they

would be encountered by the same persons under circumstances that could, in light

of the similarity of the marks, give rise to the mistaken belief that the goods come

from or are associated with the same source. In re Albert Trostel & Sons Co., 29

USPQ2d 1783, 1786 (TTAB 1993).

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Serial No. 87236262

The Examining Attorney maintains that Applicant’s goods at issue “include, en-

compass, [?]or overlap” with goods in the cited registrations. Ex. Att. Br. 10 TTABVUE

14. As the Examining Attorney notes, “[A]pplicant does not dispute that the goods

are related.” Id. We consider the goods as to which registration has been refused.

a. “Orthotics for feet”

Applicant’s goods in International Class 10 include “orthotics for feet.” The goods

in the ’646 Registration4 include “orthotics for normalizing the position of bones, lig-

aments and tendons for feet, legs, hips and back.” Because the goods in the cited reg-

istration include “orthotics . . . for feet,” they encompass, and are to that extent iden-

tical to, Applicant’s “orthotics for feet.” Although the Registrant’s orthotics are lim-

ited in purpose (“for normalizing the position of bones, ligaments and tendons”), Ap-

plicant’s orthotics are not so limited, and must be considered to include orthotics for

feet suitable for all purposes — including those specified in the cited registration.

Unless expressly limited, goods identified in an application or registration must be

considered to include all goods of the type described. In re Elbaum, 211 USPQ 639,

640 (TTAB 1981) (citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119

USPQ 139 (CCPA 1958)).

The fact that these goods are identical in part means that we must also assume

that the relevant purchasers and channels of trade are identical to the same extent.

4 The ’104 and ’646 registrations are commonly owned and identify the same goods. The mark
in the ’104 registration consists of the words BAREFOOT ARCH SUPPORTS and the design of a
foot, while the ’646 registration is for the standard-character mark BAREFOOT. As between
these two registrations, we concentrate on the latter because the mark is closest to Appli-
cant’s.

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Serial No. 87236262

In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); In re

Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are le-

gally identical, they must be presumed to travel in the same channels of trade, and

be sold to the same class of purchasers.”); see In re Viterra Inc., 671 F.3d 1358, 101

USPQ2d 1905, 1908 (Fed. Cir. 2012) (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). Accordingly, because Ap-

plicant’s orthotics are identical to goods identified in the ’646 registration, we also

find their channels of trade and usual purchasers to be the same.

b. “Yoga mats” and “Personal mats. . .”

Applicant’s goods in International Class 27 are “yoga mats,”5 and its goods in Class

28 include “personal mats for use in connection with exercise and physical fitness.”

The goods identified in the ’723 registration include “yoga exercise mats” in Interna-

tional Class 28. We find the Registrant’s “yoga exercise mats” to be identical to Ap-

plicant’s “yoga mats.” Likewise, because Applicant’s “personal mats for use in connec-

tion with exercise and physical fitness” (in Class 28) could be used for “yoga exercise,”

5 As originally filed, the application included “yoga mats” in Class 28. While correct at the
time of filing, effective January 1, 2017, “yoga mats” were re-classified in Class 27, in com-
pliance with a revision in the Nice Classification. In his first office action, the Examining
Attorney required Applicant to move “yoga mats” to International Class 27, Ofc. Action (Feb.
21, 2017), and Applicant complied, Resp. to Ofc. Action (Mar. 27, 2017). Although Applicant
should have been given the option to either retain the classification as filed or conform to the
new classification, TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1401.09 (Oct.
2017), the requirement is not before us on appeal, and the classification of goods or services
is irrelevant to the determination of likelihood of confusion. Jean Patou Inc. v. Theon Inc., 9
F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993).

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Serial No. 87236262

they encompass the Registrant’s “yoga exercise mats,” and are to that extent identi-

cal.

And again, because these goods are identical, we further find the respective chan-

nels of trade and usual purchasers to be the same.

c. “Flooring comprised of rubber. . .”

Applicant’s International Class 19 goods are identified as “flooring comprised of

rubber adapted for physical fitness, performance, and rehabilitation activities.” The

goods in the ’817 registration are identified as “rubber floor mats.” The cited Regis-

trant’s floor mats are not limited as to their purpose or use, so we must consider them

to include rubber floor mats “adapted for physical fitness, performance, and rehabil-

itation activities.” See Elbaum, 211 USPQ at 640.

We construe flooring, as identified by Applicant, to refer to a floor covering which

would be permanently installed in a room for use in “physical fitness, performance,

and rehabilitation activities.”6 While the term mat (as used in the ’817 registration’s

“rubber floor mats”) does not have the connotation of a permanent floor covering, a

mat can clearly be used as a temporary floor covering for the same or similar purposes

as Applicant’s flooring, i.e., as a “thick pad or cushion”7 used for “physical fitness,

6 We take judicial notice of the definition of flooring as “1: FLOOR, BASE” or “2: material for
floors.” MERRIAM-WEBSTER DICTIONARY flooring http://www.merriam-webster.com (visited
Feb. 26, 2019). The Board may take judicial notice of dictionary definitions, Univ. of Notre
Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
7We take judicial notice of the definition of mat as “1 . . . c: a large thick pad or cushion used
as a surface for wrestling, tumbling, and gymnastics.” MERRIAM-WEBSTER DICTIONARY mat
http://www.merriam-webster.com (visited Feb. 26, 2019).

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Serial No. 87236262

performance, and rehabilitation activities.” Although Applicant’s rubber flooring is

not identical to the Registrant’s rubber floor mats, it is similar in its nature, purpose,

and use, and we accordingly find the two to be similar.

Because these goods are not identical, we do not apply any presumption as to their

channels of trade or usual purchasers, and neither Applicant nor the Examining At-

torney introduced any evidence relevant to this question. We accordingly consider the

factors addressing the channels of trade and buyers to whom sales are made to be

neutral with respect to Applicant’s flooring.

***

We conclude that Applicant’s goods subject to the refusal are identical or similar

to the goods identified in the cited registrations, and that (with the exception of Ap-

plicant’s flooring) the channels of trade and relevant purchasers are the same. These

du Pont factors favor a finding that confusion is likely.

2. Strength of the Prior Marks; Number and Nature of Similar Marks
in Use on Similar Goods.

Applicant argues that marks comprising the term BAREFOOT “are weak and enti-

tled to a narrow scope of protection.” App. Br., 8 TTABVUE 21. As evidence of this

weakness, Applicant points to the co-existence of the cited registrations, as well as

third-party registrations, and evidence of third-party use. Id. at 21–22. “A mark’s

strength is measured both by its conceptual strength (distinctiveness) and its mar-

ketplace strength (secondary meaning).” In re Chippendales USA Inc., 622 F.3d 1346,

96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (citing J. Thomas McCarthy, MCCARTHY ON

TRADEMARKS AND UNFAIR COMPETITION § 11.83 (4th ed. 2008)).

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Serial No. 87236262

a. Market or commercial strength

Under the sixth du Pont factor, we consider “[t]he number and nature of similar

marks in use on similar goods.” Du Pont, 177 USPQ at 567. As Applicant notes, “[i]f

the evidence establishes that the consuming public is exposed to third-party use of

similar marks on or in connection with similar goods . . . , this evidence ‘is relevant

to show that a mark is relatively weak and entitled to only a narrow scope of protec-

tion.’?” App. Br., 8 TTABVUE 21 (quoting Palm Bay Imps., Inc. v. Veuve Clicquot

Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir.

2005)). Because the inference Applicant seeks to establish is that the public is accus-

tomed to seeing similar marks used on similar goods, we look to evidence that the

public is actually exposed to the asserted third-party marks. In the context of deter-

mining market or commercial strength, “[t]he probative value of third-party trade-

marks depends entirely upon their usage.” Palm Bay, 73 USPQ2d at 1693.

With its request for remand and reconsideration, Applicant listed eleven registra-

tions comprising the terms BAREFOOT, BARE FOOT, or BARE FEET for a variety of goods

and services. 4 TTABVUE 7–9. Attached to the filing as exhibits were registration

certificates for the first six listed registrations. 4 TTABVUE 12, 25, 30, 32, 34, 43.

Web pages were submitted showing the actual use of four of the marks covered in

these registrations.

We first note that the submitted registration certificates are not proper evidence

of the registrations. To make a third party registration of record, a copy of the regis-

tration showing the current status of and title to the registration must be submitted.

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1208.02

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Serial No. 87236262

(June 2018). The registration certificates filed by Applicant are inadequate because

they reflect the status of and title to the registrations on the day the registrations

issued, not contemporaneous with when they were submitted in evidence.8 But in

responding to Applicant’s request for reconsideration, the Examining Attorney did

not object to any of Applicant’s evidence or advise Applicant that the registration

certificates were inadequate to make the registrations of record. Instead, the Exam-

ining Attorney considered the registrations on the merits. See Ofc. Action (Dec. 19,

2017) (continuing and maintaining final refusal). Further, although registration cer-

tificates were filed for the first six listed registrations, no evidence of the remaining

five listed registrations was submitted. But again, the Examining Attorney did not

object to Applicant’s reliance on its list of registrations, or advise Applicant that the

listed registrations were not properly of record. See TBMP § 1208.02. Accordingly, we

consider the record on appeal to include (1) the first six registrations; and (2) the list

of the remaining registrations “for whatever limited probative value such evidence

may have.” In re Broyhill Furniture Indus. Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB

2001).

While we will partially consider Applicant’s third-party registrations, we note in

agreement Applicant’s own observation that the question is whether “the consuming

public is exposed to third-party use of similar marks on or in connection with similar

8 For future reference, a copy of the complete Trademark Status and Document Retrieval
(TSDR) Status page for the registration, made reasonably contemporaneous with its submis-
sion, is competent evidence of a registration and its title and status. The registration certifi-
cate is unnecessary.

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Serial No. 87236262

goods.” App. Br. 8 TTABVUE 21 (quoting Palm Bay, 73 USPQ2d at 1693). Although

third-party registrations are relevant, the registrations by themselves “have little ev-

identiary value” on the question of commercial weakness because “[t]he purchasing

public is not aware of registrations reposing in the Patent Office.” Smith Bros. Mfg.

Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); see also AMF

Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269–70 (CCPA 1973)

(“The existence of [third-party] registrations is not evidence of what happens in the

market place or that customers are familiar with them. . . .”). “The probative value of

third-party trademarks depends entirely upon their usage.” Palm Bay, 73 USPQ2d

at 1693.

Applicant submitted evidence of the use of four of the third-party registered

marks:

• BARE FEET WANTED — Reg. No. 4884085 for “electric floor heating systems,
namely, cables and mats for floor heating systems sold as a system.” 4
TTABVUE 12. Evidence shows use of the mark in the advertisement of
heated flooring systems.

• BAREFOOT SCIENCE — Reg. No. 3631418 for “non-orthotic orthopaedic insoles
having a proprioceptive neuromuscular stimulative effect.” 4 TTABVUE 25.
Evidence shows use of the mark on customizable insoles used to alleviate
various health conditions.

• VIVOBAREFOOT — Reg. No. 4303162 for handbags, purses, all-purpose car-
rying bags, wallets, etc. in Class 18; footwear, clothing, headwear, etc. in
Class 25; providing instruction and training in walking, sporting activities,
exercise and fitness, etc. in Class 41. 4 TTABVUE 34. Evidence shows use
of the mark on footwear.

• BARE FOOT — Reg. No. 1983825 (FOOT disclaimed) for “foot care products,
namely foot lotions, foot scrubs and foot cleansing and softening gels.” Evi-
dence shows use of the mark on foot scrub, overnight foot treatment, and
foot butter. 4 TTABVUE 43.

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Serial No. 87236262

The goods on which the first two third-party registered marks are used — “electric

floor heating systems,” and “non-orthotic orthopaedic insoles” — are related, albeit

not closely, to the “rubber floor mats” in the cited ’817 Registration and “orthotics” in

the cited ’104 and ’646 Registrations. On the other hand, while the “all-purpose car-

rying bags” identified in the ’162 third-party Registration are similar to the “yoga mat

bags” in the cited ’723 Registration, Applicant’s evidence indicates use of the VI-

VOBAREFOOT mark only on footwear. 4 TTABVUE 36–41. And we see no relevance at

all to the registration and use of BARE FOOT for “foot care products, namely foot lotions,

foot scrubs and foot cleansing and softening gels.”

In sum, none of the cited uses covers goods substantially similar to those of the

cited Registrants. As the Federal Circuit recently emphasized, under the sixth du

Pont factor, “the controlling inquiry is the extent of third-party marks in use on ‘sim-

ilar’ goods or services. . . . ‘It is less relevant that [the mark] is used on unrelated

goods or services. . . .’?” Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908

F.3d 1315, 128 USPQ2d 1686, 1694 (Fed. Cir. 2018) (quoting Century 21 Real Estate

Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992)).9

Moreover, the evidence does not show use by a substantial number of third parties or

that the use by the identified third parties is so substantial as to have been likely to

affect consumers’ perception of the cited Registrants’ marks.

9 Although we have considered them, we give Applicant’s other listed third-party registra-
tions — those for which Applicant did not provide any evidence of use — little weight in
considering the commercial strength of the cited marks, as there is no indication that the
relevant public is aware of the registered marks or that they are in use so as to affect the
public’s perception. Smith Bros., 177 USPQ 462–63.

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Serial No. 87236262

b. Inherent strength

We next consider the inherent conceptual strength, or distinctiveness of the marks

in the cited registrations. For this purpose, we consider evidence probative of any

meaning the cited marks may have that is suggestive or descriptive of the goods or

services for which they are registered.

We take judicial notice of the fact that the term “barefoot,” which is common to all

of the cited marks, means with the feet bare. MERRIAM-WEBSTER DICTIONARY barefoot

http://www.merriam-webster.com (visited Feb. 26, 2019). “Barefoot” is suggestive of

the goods in the cited registrations because such goods may be used on or with bare

feet. The orthotics identified in the ’646 Registration and the floor mats and yoga

exercise mats identified in the ’817 and ’723 Registrations can be used on or with bare

feet, and the term BAREFOOT as used in all three registrations is suggestive of them.

Although they have little probative value when considering the market or com-

mercial strength of a mark, “third-party registrations are relevant evidence of the

inherent . . . strength of a mark or term because they are probative of how terms are

used in connection with the goods or services identified in the registrations.” In re

Morinaga Nyugyo K.K., 120 USPQ2d 1738, 1745 (TTAB 2016). As discussed, Appli-

cant submitted (or listed) eleven third-party registrations for marks including BARE-

FOOT or BARE FOOT registered for goods or services relating to feet. 4 TTABVUE 7–9.

The most probative of these is Registration No. 4954514, MASAI BAREFOOT TECHNOL-

OGY (BAREFOOT TECHNOLOGY disclaimed) for “orthopedic footwear; orthopedic soles;

orthopedic shoes.” The goods in this registration appear related to the “orthotics”

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Serial No. 87236262

identified in the cited ’646 Registration, and the mark was registered with a dis-

claimer suggesting recognition that BAREFOOT is descriptive of such goods. Although

the goods and services in the remaining third-party registrations do not appear as

closely related to those in the cited registrations, they are sufficient to show that

BAREFOOT is generally suggestive of foot-related goods and services.

In addition to the word BAREFOOT, the mark in the ’723 Registration includes the

words YOGA CO., which is disclaimed, and appears to be descriptive of the Registrant’s

identified yoga equipment. While descriptive, generic, or otherwise disclaimed matter

is not removed from the mark, and we must consider the marks in their entireties,

the “descriptive component of a mark may be given little weight in reaching a conclu-

sion on the likelihood of confusion.” Cunningham v. Laser Golf Corp., 222 F.3d 943,

55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In re Nat’l Data Corp., 753 F.2d

1056, 224 USPQ 749, 752 (Fed. Cir. 1985)).

We conclude that BAREFOOT, as used in the cited registrations is somewhat sug-

gestive of the identified goods.

c. Coexistence of cited marks

Finally, Applicant cites the coexistence on the register of the four cited registra-

tions as evidence that BAREFOOT is weak. App. Br., 8 TTABVUE 21. To the extent that

Applicant is relying on the cited registrations as evidence that the decisions of prior

Examining Attorneys to allow registration of the cited marks is evidence that confu-

sion is not likely between them and Applicant’s mark, we disagree.

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Serial No. 87236262

Although it is somewhat unusual to see four registrations (owned by three enti-

ties) cited as a bar to registration, it must be noted that the subject application covers

a number of goods in different classes. As for the cited registrations, except for the

commonly owned ’104 and ’646 Registrations, it is not at all obvious that any of the

cited registrations are in conflict with each other. More importantly, the question

before us is the registrability of Applicant’s mark in view of the cited registrations.

We are not bound by the decisions of the Examining Attorneys who deemed the cited

marks registrable. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566

(Fed. Cir. 2001). And while we do not suggest that any mistake was made in register-

ing the cited marks, “the existence of confusingly similar marks already on the regis-

ter will not aid an applicant to register another confusingly similar mark.” Lilly Pu-

litzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (citing

In re Helene Curtis Indus., Inc., 305 F.2d 492, 134 USPQ 501 (CCPA 1962)).

3. Similarity or dissimilarity of the marks.

In a likelihood of confusion analysis, we compare the marks in their entireties for

similarities and dissimilarities in appearance, sound, connotation, and commercial

impression. Palm Bay, 73 USPQ2d at 1692. “The proper test is not a side-by-side

comparison of the marks, but instead whether the marks are sufficiently similar in

terms of their commercial impression such that persons who encounter the marks

would be likely to assume a connection between the parties.” Coach Servs., Inc. v.

Triumph Learning LLC, 668 F.3d 1356, 1377, 101 USPQ2d 1713, 1721 (Fed. Cir.

2012) (citation and internal quotation marks omitted).

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Serial No. 87236262

a. Pronunciation

While “there is no single ‘correct’ pronunciation of a trademark that is not a com-

mon English word,” Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399,

1401–02 (TTAB 2010), we can imagine no reasonable way to pronounce NABOSO that

would bear any similarity at all to the likely English pronunciation of the registered

marks.

b. Appearance

Applicant seeks registration of NABOSO in standard characters. The mark in the

cited ’723 registration is registered in “special form,” see Trademark Rule 2.52(b), and

includes the stylized words BAREFOOT YOGA CO. and a foot design. The marks in the

’646 and ’817 registrations consist solely of the word BAREFOOT, in standard charac-

ters.

A standard-character mark is one that is applied for or registered “without claim

to any particular font style, size, or color.” Trademark Rule 2.52(a), 37 C.F.R.

§ 2.52(a). A registrant is not limited to “?‘reasonable manners’ of depicting its stand-

ard-character mark.” Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98

USPQ2d 1253, 1258?59 (Fed. Cir. 2011). We thus consider that Applicant’s mark

could be used in any stylization, including the same stylization as that used by the

cited Registrants. Nonetheless, even if identical in font style, size, or color, the ap-

pearance of Applicant’s mark would be considerably more dissimilar than similar to

those in the cited registrations because of the entirely different words used in them,

and the design in the ’723 Registration.

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Serial No. 87236262

The mark in the ’723 Registration includes the words BAREFOOT YOGA CO. and the

design of a stylized foot. YOGA CO. is disclaimed, and appears to be descriptive of the

Registrant’s identified yoga equipment. While descriptive, generic, or otherwise dis-

claimed matter is not removed from the mark, and we must consider the marks in

their entireties, the “descriptive component of a mark may be given little weight in

reaching a conclusion on the likelihood of confusion.” Cunningham v. Laser Golf

Corp., 55 USPQ2d at 1846 (quoting In re Nat’l Data Corp., 224 USPQ at 752).

The foot design in the ’723 Registration is comparatively large, visually dominat-

ing and surrounding the wording BAREFOOT YOGA CO. Although it is often said that

“[i]n the case of a composite mark containing both words and a design, the verbal

portion of the mark is the one most likely to indicate the origin of the goods to which

it is affixed,” Viterra, 101 USPQ2d at 1908 (internal quotation marks and citations

omitted), there is no doubt that the design element of a word-and-design mark may

sometimes have important, or even dominant significance. See Kangol Ltd. v. Kanga-

ROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945, 1945?46 (Fed. Cir. 1992). In the

’723 Registration, the wording comprises the suggestive term BAREFOOT and the de-

scriptive YOGA CO., both of which are dominated by the relatively large and distinctive

design of a stylized foot. We find that the design in the ’723 Registration assumes a

highly significant, possibly dominant, role in the perception of the mark as a whole.

Nat’l Data Corp., 224 USPQ at 751 (“[T]here is nothing improper in stating that, for

rational reasons, more or less weight has been given to a particular feature of a mark,

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Serial No. 87236262

provided the ultimate conclusion rests on consideration of the marks in their entire-

ties. Indeed, this type of analysis appears to be unavoidable.”). The design of the ’723

Registration — and to a much lesser extent, the descriptive wording YOGA CO. — fur-

ther distinguish it from Applicant’s mark in appearance.

c. Meaning

The gravamen of the Examining Attorney’s refusal to register is that Applicant’s

mark, NABOSO, means barefoot in Czech, and under the “doctrine of foreign equiva-

lents,” NABOSO should be considered identical in meaning to BAREFOOT in the cited

registrations. Applicant does not dispute the Examining Attorney’s translation, but

rather disputes the application of the doctrine of foreign equivalents to the Czech

language:

The doctrine of foreign equivalents applies to words or
terms from common, modern languages, which encom-
passes all but dead, obscure, or unusual languages. How-
ever, the doctrine “is not an absolute rule and should be
viewed merely as a guideline” and, therefore, does not ap-
ply to every foreign word that appears in a trademark or
service mark. Even if Czech is considered a modern lan-
guage,[10] the doctrine only applies to common modern lan-
guages. Since Czech is not spoken by an appreciable num-
ber of the U.S. population, it should not be characterized as
a “common” language for purposes of the doctrine of foreign
equivalents.

App. Br., 8 TTABVUE 8–9 (citations omitted).

10Czech is undoubtedly a “modern” language. The evidence of record indicates that Czech is
currently spoken by “about 10 million” people in the Czech Republic and about 200,000 people
in other countries. Ofc. Action (Feb. 21, 2017) (Penn Language Center, https://plc.sas.up-
enn.edu/czech (Feb. 21, 2017)); Resp. to Ofc. Action (Mar. 27, 2017), Exh. A (2009–2013 U.S.
Census data (Czech spoken in U.S. households)). Czech is clearly not a “dead” language such
as Old English. See In re Winegard Co., 162 USPQ 261, 263 (TTAB 1969).

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Serial No. 87236262

We need not reach Applicant’s arguments. Even where the doctrine of foreign

equivalents applies, it establishes only the similarity of the terms in meaning or con-

notation, and “such similarity as there is in connotation must be weighed against the

dissimilarity in appearance, sound, and all other factors, before reaching a conclusion

on likelihood of confusion as to source.” In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ

111, 113 (Fed. Cir. 1983). While it is true that a likelihood of confusion may be found

where the marks are similar in meaning alone, such similarity is not necessarily suf-

ficient. Sure-Fit Prods. Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295, 297

(CCPA 1958) (“Assuming arguendo that the marks RITE-FIT and SURE-FIT are similar

in meaning, we are of the opinion that they are so distinct in sound and appearance

as to overcome such similarity in meaning.” (internal quotation marks omitted)). Any

conclusion on the likelihood of confusion must be predicated on consideration of the

marks in their entireties, and in light of the evidence bearing on the other du Pont

factors. Because it would not change the result, we will assume, without finding, that

the doctrine of foreign equivalents applies to the Czech language, and that Appli-

cant’s mark, NABOSO, is therefore identical in meaning to the word BAREFOOT in the

cited marks.

***

The marks at issue are entirely different in pronunciation and (except for styliza-

tion) appearance. Although we have assumed that the marks are identical or similar

in meaning, we conclude that, when considered in their entireties, Applicant’s mark

is more dissimilar than similar to the marks in the cited registrations.

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Serial No. 87236262

C. Balancing the factors.

As we have found, Applicant’s goods are identical or related in part to those in the

cited registrations and (except for Applicant’s flooring) share the same customers and

channels of trade. But we have also found BAREFOOT to be suggestive, and therefore

inherently weak. Such weakness does not eliminate the possibility of confusion, but

it is a factor which must be considered. We have also found Applicant’s mark dissim-

ilar to those in the cited registrations in their pronunciation and appearance. Even

assuming that prospective purchasers would consider Applicant’s mark to be identi-

cal in meaning to the word BAREFOOT in the cited registrations, such similarity is not,

on this record,11 sufficient to support a finding that confusion is likely.

II. Conclusion

Having carefully considered all of the evidence and argument of record, we find

that the record does not support the refusal to register under Trademark Act Sec-

tion 2(d).

Decision: The refusal to register is reversed.

11 We note that our decision is without prejudice to any inter partes proceeding that might be
filed by an aggrieved party. It is possible that we would reach a different result on a more
complete record such as may be adduced in an inter partes proceeding.

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