The Marshall Retail Group, LLC

This Opinion is Not a
Precedent of the TTAB

Mailed: September 26, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re The Marshall Retail Group, LLC
_____

Serial No. 87293691
_____

Lauri S. Thompson and Shauna L. Norton of Greenberg Traurig, LLP for
The Marshall Retail Group, LLC

Leigh Caroline Case, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.

_____

Before Wellington, Greenbaum and Dunn,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

The Marshall Retail Group, LLC (“Applicant”) seeks registration of the standard

character mark FIRST LADY on the Principal Register for “aprons” in International

Class 25.1

1Application Serial No. 87293691 was filed on January 9, 2017, and is based on Applicant’s
claim of a bona fide intent to use the mark in commerce, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b). On April 25, 2019, subsequent to the filing of the appeal and appeal
briefs, Applicant amended the application to delete “jackets” from the identification and
sought reconsideration of the refusal based on this amendment (12 TTABVUE). The
Examining Attorney accepted the amendment but maintained the refusal (14 TTABVUE).
Serial No. 87293691

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

Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the following two

registered marks (owned by the same entity):

FIRST LADY (in standard characters)
(Reg. No. 3515250)2 for:

Women’s clothing, namely, suits, blazers, jackets, pants, skirts, in International
Class 25; and

FIRST LADY SUITS (in standard characters)
(Reg. No. 2526101)3 for the same goods listed in the previous cited registration,
but also covers “dresses.”

After the refusal was made final, Applicant filed an appeal and twice requested

reconsideration.4 Reconsideration was denied by the Examining Attorney and the

appeal has been briefed. For the following reasons, we affirm the refusal.

I. Applicable Law

When the question is likelihood of confusion, we analyze the facts as they relate

to the relevant factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,

177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311,

65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor for

which there is argument and evidence of record. See In re Guild Mortg. Co., 912 F.3d

1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2 Software, Inc. v. M2 Commc’ns,

Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v.

2 Registration No. 3515250 issued on October 14, 2008; renewed.
3 Registration No. 2526101 issued on January 1, 2002; renewed.
4The first request for reconsideration (4 TTABVUE) involved a pending renewal of one of the
cited registrations, and the second request for consideration involved Applicant’s amendment
to the identification of goods (see Note 1).

-2-
Serial No. 87293691

GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered

each factor for which we have evidence, we focus our analysis on those factors we find

to be relevant.”). “[E]ach case must be decided on its own facts and the differences are

often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386,

387 (CCPA 1973); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d

1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont

factors for which there is record evidence but ‘may focus … on dispositive factors,

such as similarity of the marks and relatedness of the goods’”) (quoting Herbko Int’l,

Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).

We will focus on registrant’s FIRST LADY mark (Reg. No. 3515250) because it

does not have the additional term SUITS and, when considered vis-à-vis the applied-

for mark and identified goods, it is the mark that is most likely to support a finding

of likelihood of confusion. In other words, if confusion is likely based on this

registration, there is no need for us to consider the likelihood of confusion with the

other cited registration. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243,

1245 (TTAB 2010).

A. Identical Marks

Under the first du Pont factor, we compare the involved marks “in their entireties

as to appearance, sound, connotation and commercial impression.” In re Viterra Inc.,

671 F.3d 1358, 101 USPQ2d 1905, 1908 (quoting du Pont, 177 USPQ at 567); see also

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

-3-
Serial No. 87293691

1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). In this case, the marks are identical

and thus this factor weighs strongly in favor of finding confusion likely.

B. Related Goods and Same Trade Channels

With respect to the second and third du Pont factors, the similarity of the goods

and their channels of trade, we must make our determinations as to these factors

based on the goods as they are identified in the application and cited registration. See

Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d

1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,

62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Dixie Rests. Inc., 105 F.3d 1405, 41

USPQ2d 1531, 1534 (Fed. Cir. 1997); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc.,

918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

The goods need not be the same and a likelihood of confusion may be found even

when the respective goods are not “competitive or intrinsically related.” Joseph

Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733,

1737 (Fed. Cir. 2017). “Instead, likelihood of confusion can be found ‘if the respective

products are related in some manner and/or if the circumstances surrounding their

marketing are such that they could give rise to the mistaken belief that they emanate

from the same source.’” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356,

101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (internal citations omitted).

Finally, we also keep in mind that when the involved marks are identical, as is

the case here, the relatedness of the goods required to support a finding of likelihood

-4-
Serial No. 87293691

of confusion declines. See In re i.am.symbolic, 116 USPQ2d at 1411 (internal citation

omitted), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).

The Examining Attorney has submitted screenshot printouts from different

websites showing aprons being offered for sale along with either jackets, pants or

skirts, all under the same mark or house mark on the same retail website.5 These

include a Kate Spade “diner stripe apron” being sold on the same site

(www.katespade.com) as the Kate Spade skirts, jeans, and blazers;6 Nordstrom

(www.shop.nordstrom.com) offering a “Draper James” branded apron and “Draper

James” branded skirt;7 an apron, jeans, and skirt all offered under the Levi’s brand

and with red Levi’s tab logo on the Levi’s website (www.levi.com);8 and the Blair

website (www.blair.com) offering for sale a “print cobbler apron,” denim pants, jacket

and jacket dress.9

The record establishes relatedness of the involved goods because Applicant’s

aprons and registrant’s jackets, pants or skirts, are the types of goods that may be

offered under the same brand. We also note that the goods related on their face

because aprons are intended to be used in conjunction with and protection for clothing

such as skirts and pants. Moreover, the goods may be offered in the same type of

retail outlets to the same classes of consumers – namely the general public shopping

5 Attached to Office Action issued on October 27, 2017.
6 Id. at TSDR pp. 8-12.
7 Id. at TSDR pp. 13-15.
8 Id. at TSDR pp. 16-19.
9 Id. at TSDR pp. 20-22.

-5-
Serial No. 87293691

online for women’s clothing. Accordingly, the du Pont factors involving the

relatedness of the goods, as well as the channels of trade and classes of consumers to

whom the goods are being offered, all weigh in favor of finding a likelihood of

confusion.

C. Applicant’s Prior Registration

Applicant points out that it is the owner of a registration for the same mark,

FIRST LADY, for “caps, socks and t-shirts.”10 Applicant further notes that its

registration issued after registrant’s FIRST LADY SUITS mark registered, but before

the registrant’s FIRST LADY registration. Based on this sequence of registration,

Applicant concludes that the Board “found, on not one, but two different occasions

that these marks were not confusingly similar” and posits that “[t]he likely reason is

that despite sharing the terms ‘FIRST LADY,’ the marks are used in connection with

dissimilar products, and create unique and separate commercial impressions that are

not likely to cause confusion in the marketplace.”11

We consider Applicant’s prior registration argument under the thirteenth du

Pont factor which relates “to ‘any other established fact probative of the effect of

use.”’ In re Strategic Partners, Inc., 102 USPQ2d 1397, 1400 (TTAB

10 7 TTABVUE 3-4. We note that Applicant’s registration, Registration No. 3227319, issued
on April 10, 2007, based on an application filed on March 3, 2006; renewed. Applicant
mentioned ownership of this registration in its response (filed October 6, 2017) to the first
Office Action, and the Examining Attorney acknowledged Applicant’s ownership in the next
Office Action (issued on October 27, 2017). Although a formal claim of ownership should be
listed in the involved application file pursuant to Rule 2.36, the lack of claim of ownership
has no bearing on our ultimate decision in this appeal.
11 Id. at 4.

-6-
Serial No. 87293691

2012) (quoting du Pont, 177 USPQ at 567). In Strategic Partners, the Board

addressed the “unique situation” of coexistence of an applicant’s existing registration

with a cited registration for over five years, and when the applicant’s applied-for

ANYWEAR mark is substantially similar to its existing registered ANYWEARS mark

and both are for identical goods (footwear). The Board noted that the latter registered

mark had co-existed with the cited ANYWEAR BY JOSEPH NATORI (stylized with

a design) mark for jackets, shirts, pants, stretch T-tops and stoles. The Board

ultimately held:

Applicant’s registered mark, a mark that is substantially similar to the
applied-for mark, both covering “footwear,” has coexisted with the cited
mark for over five years. At this stage, applicant’s existing registration is
over five years old, and thus is not subject to attack by the owner of the
cited registration on a claim of priority and likelihood of confusion. Cf. In
re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994). We find that these facts
tip the scale in favor of applicant and a finding of no likelihood of confusion.

Id.

Despite a five-year plus coexistence between Applicant’s prior registration and the

cited registrations, the situation in this proceeding is readily distinguishable from

that in Strategic Partners. Unlike the circumstances in that case, Applicant’s prior

registration here is for goods that are different than that identified in the involved

application. Compare In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745-46 (TTAB

2018) (Strategic Partners distinguished because “Applicant’s applied-for mark —

5IVE STEAKHOUSE and design — moves closer to the cited registration —

5IVESTEAK and design — than the mark in Applicant’s prior registration — 5IVE

RESTAURANT and design — rendering the new mark more similar in appearance,

-7-
Serial No. 87293691

sound, and meaning to Registrant’s mark”). Specifically, Applicant’s prior

registration covers, inter alia, “caps, socks and t-shirts,” and it now seeks registration

for the same mark on “aprons.” These are clearly not the same goods and, for reasons

mentioned supra, we find aprons are related to the goods listed in the cited

registration, namely, pants, skirts and jackets. We further point out that we not privy

to the reasoning or bound by the decisions made by examining attorneys in

determining whether a likelihood of confusion existed between Applicant’s prior

registration and the registered marks cited in this proceeding. The Pierce-Arrow

Society v. Spintek Filtration, Inc., 2019 WL 3834985, *17 (TTAB 2019) (“the Board is

not bound by decisions of examining attorneys”), citing In re Nett Designs Inc., 236

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

had some characteristics similar to Nett Designs’ application, the PTO’s allowance of

such prior registrations does not bind the Board or this court.”)

Accordingly, in contrast to our finding in Strategic Partners, we find that

Applicant’s prior registration in this case does not ‘tip the scale’ and lead us to

conclude that there is no likelihood of confusion.

D. Conclusion

Given the identity of the Applicant’s proposed mark, FIRST LADY, with the

registered mark and our finding that Applicant’s aprons are related to registrant’s

pants, skirts and jackets, and these goods may be offered to the same classes of

purchasers in the same trade channels, we find that confusion is likely.

-8-
Serial No. 87293691

Decision: For the aforementioned reasons, the refusal under Section 2(d) to register

Applicant’s mark is affirmed.

-9-