Thomas E. Guess v. Lead Consortium Investments

This Opinion is Not a
Precedent of the TTAB

Mailed: September 25, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Thomas E. Guess

v.

Lead Consortium Investments
_____

Opposition No. 91227660
to Application Serial No. 86836660
_____

Anthony J. Biller of Michael Best & Friedrich LLP for Thomas E. Guess.

Rick Ruz of Rick Ruz PLLC for Lead Consortium Investments.
_____

Before Kuczma, Heasley and Dunn,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

Lead Consortium Investments (“Applicant”) filed an intent-to-use based

application to register the mark HONOR&GREED (standard character claim) for:

Clothing, namely, T-shirts, hats, pants, sweatpants,
sweatshirts, socks, sweaters, button-up shirts, leggings,
long sleeved shirts, shorts, tank tops, belts, bikinis, and
scarves in International Class 25.1

1Application Serial No. 86836660 was filed on December 2, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Opposition No. 91227660

Thomas E. Guess (“Opposer”) opposes registration of Applicant’s proposed mark

on the ground of priority and likelihood of confusion under Section 2(d) of the

Trademark Act, 15 U.S.C. §1052(d), based on his ownership of:

Registration No. 4308943 for the mark GREED (standard character claim) for:

Hats; Hooded sweatshirts; Jackets; Jeans; Pants; Shirts;
Shoes, in International Class 25,

alleging dates of first use and first use in commerce on
November 21, 2011;2

and Registration No. 4372249 for the mark GREED IS GOLD (standard character

claim) for:

Hats; Hooded sweatshirts; Jackets; Jeans; Pants; Shirts, in
International Class 25,

alleging dates of first use and first use in commerce as of
October 2012.3

Opposer alleges that he acquired rights in the marks identified above (“Opposer’s

marks”) prior to Applicant. Opposer also alleges that Applicant’s proposed mark so

resembles Opposer’s marks that it is likely to cause confusion or mistake, or to

deceive.

2Registration No. 4308943 issued on the Principal Register on March 26, 2013; Sections 8 &
15 combined declaration accepted and acknowledged; Declaration of Thomas Guess (Guess
Declaration) paragraph No. 15, Exhibit L (24 TTABVUE 5, 61).
3 Registration No. 4372249 issued on the Principal Register on July 23, 2013; Sections 8 &
15 combined declaration accepted and acknowledged; Guess Declaration, paragraph No. 16,
Exhibit N (24 TTABVUE 5, 63). The Guess Declaration dated September 27, 2018, identifies
“shoes” as one of the goods covered in Registration No. 4372249. However, in the Combined
Declaration of Use and Incontestability filed with the USPTO by Mr. Guess on August 1,
2018 for Registration No. 4372249, shoes were deleted from the Registration.

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Opposition No. 91227660

In its Answer to the Notice of Opposition, Applicant denied the salient allegations

and alleged affirmative defenses, including that Opposer does not have priority of use

of Applicant’s HONOR&GREED mark, that Opposer’s marks and Applicant’s

proposed mark are not similar in appearance, sound, connotation or commercial

impression, that purchasers of Opposer’s and Applicant’s goods are sophisticated,

that Opposer’s goods are more expensive that Applicant’s goods, and that “Opposer

has no examples of any actual confusion amongst consumers with regards to

Applicant’s mark and Opposer’s marks.”4 These defenses are not true affirmative

defenses but constitute amplifications of Applicant’s denials of the allegations of

likelihood of confusion. See Trademark Rule 2.106, 37 CFR §2.106; TRADEMARK TRIAL

AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 311.02(d) (June 2019).

I. The Record

The record includes the pleadings and, by operation of Trademark Rule 2.122(b),

37 C.F.R. § 2.122(b), the file of the involved application. In addition, the parties

submitted the following testimony and evidence.

Opposer’s Evidence

Opposer introduced the Declaration of Thomas Guess (24 TTABVUE) along with

the following Exhibits:

Exhibit A: promotional materials for Opposer’s goods (24
TTABVUE 10-12);

4 7 TTABVUE.

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Opposition No. 91227660

Exhibit B: pages from https://greed.nyc/ (24 TTABVUE
13);

Exhibit C: page from https://greedisgold.com (24
TTABVUE 14);

Exhibits D: page from Facebook https://www.facebook.co
m/GREEDNEWYORK/ for Greed products (24 TTABVUE
15-18);

Exhibit E: greednewyork page showing posts, follower and
following (24 TTABVUE 19);

Exhibit F: GREED pages from http://greednewyork
.tumblr.com/ (24 TTABVUE 20-34);

Exhibit G: advertisement of GREED showcased by Estate
Boutique on April 5th, 2013 (24 TTABVUE 35);

Exhibit H: Online advertising for GREED showcased by
Estate Boutique on April 5th, 2013 (24 TTABVUE 36);

Exhibit I: November 27, 2017 Facebook page featuring
GREED t-shirts https://www.facebook.com/GREEDNEW
YORK/ (24 TTABVUE 37);

Exhibit J: GREED® First Collection Linesheet (24
TTABVUE 38-58);

Exhibit K: copy of Registration No. 4308943 for GREED
(24 TTABVUE 59-60);

Exhibit L: Trademark Electronic Search System (TESS)
report for Registration No. 4308943 for GREED (24
TTABVUE 61);

Exhibit M: copy of Registration No. 4372249 for GREED
IS GOLD (24 TTABVUE 62-63);

Exhibit N: TESS report for Registration No. 4372249 for
GREED IS GOLD (24 TTABVUE 64);

Exhibit O: July 13, 2017 TTAB Order sustaining
Opposition No. 91233669 in favor of Opposer Thomas E.
Guess (24 TTABVUE 64);

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Opposition No. 91227660

Exhibit P: Instagram page at https://www.instagram .com
/honorandgreed/ showing HONOR & GREED products (24
TTABVUE 65-68);

Exhibit Q: Trademark Application Serial No. 86836660
for HONOR&GREED (24 TTABVUE 69-73);

Exhibit R: Opposer’s Interrogatory Nos. 1-25 to Applicant
and Applicant’s Response to Opposer’s Interrogatories (24
TTABVUE 74-93);

Applicant’s Evidence

Applicant introduced no evidence.

In addition to the foregoing, both Opposer and Applicant submitted trial briefs

and Opposer submitted a reply brief.

II. The Merits

Even though Applicant filed no testimony or evidence, Opposer must prove his

standing, priority and likelihood of confusion by a preponderance of the evidence.

Weider Publn’s, LLC v. D & D Beauty Care Co., LLC, 109 USPQ2d 1347, 1353 (TTAB

2014); see also Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13

USPQ2d 1307, 1311 (Fed. Cir. 1989) (plaintiff’s burden is to establish the case by a

preponderance of the evidence). Opposer, as the party in the position of plaintiff in

this proceeding, bears the burden of proof, and if that burden cannot be met, the

opposed mark must be registered. B&B Hardware, Inc. v. Hargis Industries, Inc., 135

S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015) (“The party opposing registration bears

the burden of proof, see [37 C.F.R.] § 2.116(b), and if that burden cannot be met, the

opposed mark must be registered, see 15 U. S. C. § 1063(b).”).

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Opposition No. 91227660

For purposes of our likelihood of confusion analysis, we focus on Opposer’s pleaded

Registration No. 4308943 for the GREED mark. We find the mark in that registration

to be the most pertinent of Opposer’s pleaded registrations for our DuPont analysis.

If we find a likelihood of confusion as to this registration, we need not find it as to the

other. On the other hand, if we do not reach that conclusion, we would not find it as

to his other pleaded registration. See Fiserv, Inc. v. Electronic Transaction Systems

Corp., 113 USPQ2d 1913, 1917 (TTAB 2015); In re Max Capital Group Ltd., 93

USPQ2d 1243, 1245 (TTAB 2010).

III. Standing and Priority

Standing is a threshold issue that must be proven by the plaintiff in every inter

partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111

USPQ2d 1058, 1062 (Fed. Cir. 2014) cert. denied, 135 S. Ct. 1401 (2015). Opposer

bears the burden of proving both standing to oppose and at least one valid ground for

refusal of registration. Ritchie v. Simpson, 170 F.3d 1092, 1095, 50 USPQ2d 1023,

1025 (Fed. Cir. 1999) and Sanyo Watch Co., Inc. v. Sanyo Electric Co., Ltd., 691 F.2d

1019, 215 USPQ 833, 834 (Fed. Cir. 1982). Because Opposer has properly made its

pleaded Registrations for the GREED and GREED IS GOLD marks of record, and

Applicant does not contest priority, Opposer has established standing to oppose

registration of Applicant’s mark and its priority is not an issue as to those services

covered by the registrations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55

USPQ2d 1842, 1844 (Fed. Cir. 2000); King Candy Co. v. Eunice King’s Kitchen, Inc.,

496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).

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Opposition No. 91227660

IV. Likelihood of Confusion

In determining whether there is a likelihood of confusion, we must analyze all of

the probative facts in evidence that are relevant to the factors set forth in In re E.I.

du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also

Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir.

2018) (DuPont “articulated thirteen factors to consider when determining likelihood

of confusion”). “‘Not all of the DuPont factors are relevant to every case, and only

factors of significance to the particular mark need be considered.’” Id. (quoting In re

Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). Two key

considerations are the similarities between the marks and the similarities between

the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co. 544

F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We have also addressed other DuPont

factors for which the parties have submitted evidence or argument.

Similarity of the Goods, Trade Channels and Classes of
Purchasers

We first look to the second DuPont factor, which involves the “similarity or

dissimilarity and nature of the goods or services as described in an application or

registration.” Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,

110 USPQ2d 1157, 1159 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Comput. Servs.

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

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Opposition No. 91227660

Opposer has registered its GREED mark for clothing items including some of the

same clothing items set forth in Applicant’s application namely, hats, pants,

sweatshirts and shirts.5 Thus, the goods are identical-in-part.

Inasmuch as Applicant’s clothing includes some goods identical to those listed in

Opposer’s Registration, and neither has any restrictions or limitations as to nature,

type, channels of trade, or classes of purchasers, the goods are presumed to travel in

the same channels of trade, and to be rendered to the same class of purchasers. See

Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005

(Fed. Cir. 2002); American Lebanese Syrian Associated Charities Inc. v. Child Health

Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey,

31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they

must be presumed to travel in the same channels of trade, and be sold to the same

class of purchasers.”). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,

1908 (Fed. Cir. 2012) (absent restrictions in the application and registration, identical

goods are presumed to travel in the same channels of trade to the same class of

purchasers; the Board was entitled to rely on this legal presumption in determining

likelihood of confusion). Thus, the channels of trade and classes of purchasers, at a

minimum, overlap.

5Opposer’s goods include “hooded sweatshirts” which are encompassed by “sweatshirts” in
Applicant’s application.

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Opposition No. 91227660

In view of the foregoing, Applicant’s goods are identical to at least some of

Opposer’s goods, and travel in at least some of the same trade channels and are sold

to some of the same classes of purchasers, thus supporting a finding of likelihood of

confusion under the second and third DuPont factors.

Number and Nature of Similar Marks in Use on Similar Goods

Applicant contends that Opposer’s marks, “GREED, and by extension GREED IS

GOLD,” are weak marks because “[t]he word GREED is suggestive, has an obvious

connotation, and is frequently used as part of trade names and marks.” In support,

Applicant argues there are a “plethora of trade names and marks that incorporate

the word GREED,” requesting the Board to take judicial notice of registrations

Applicant attached to Applicant’s Trial Brief and those offered as exhibits in its

Cross-Motion for Summary Judgment.6

Opposer objects to Applicant’s attempt to introduce third-party registrations into

evidence, arguing that those registrations must be introduced during the testimony

period and were not so introduced. A party that wishes to make such third-party

registrations of record in an inter partes proceeding may do so by filing, during its

testimony period, plain copies of the registrations, printouts or copies of information

of the registrations from the USPTO’s electronic database records, together with a

notice of reliance thereon specifying the registrations and indicating generally their

relevance and associating the registrations with one or more issues in the case. See

6Applicant’s Trial Brief p. 13, Exhibits A and B (26 TTABVUE 14, 19-32, 33-39), see also
Applicant’s Cross-Motion for Summary Judgment, Exhibits E and F (19 TTABVUE 57-70,
71-77).

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Opposition No. 91227660

W. R. Grace & Co. v. Herbert J. Meyer Indus., Inc., 190 USPQ 308, 309 n.5 (TTAB

1976) (reference to third-party registrations in answer, without filing copies with a

notice of reliance, was insufficient to make them of record); 37 C.F.R. 2.122(e) and (g);

TBMP § 704.03(b)(1)(B). A party cannot make a third-party registration of record

simply by referring to the registration in its brief or pleading. See Jansen Enterprises,

Inc. v. Rind, 85 USPQ2d 1104, 1110 (TTAB 2007) (respondent’s mere reference in his

brief to the third-party registrations did not suffice to make them of record); Edison

Bros. Stores, Inc. v. Brutting E.B. Sport-Int’l GmbH, 230 USPQ 530, 531 n.8 (TTAB

1986) (it is applicant’s sole responsibility to introduce the evidence on which it wishes

to rely during its trial period in accordance with the rules thus, reference to

applicant’s registration in its brief does not make it of record). Accordingly, the third-

party registrations identified in Applicant’s Brief, attached as exhibits to Applicant’s

Cross-Motion for Summary Judgment7 and as copies attached to its Trial Brief, are

not of record and the Board will not take judicial notice of them. See UMG Recordings

Inc. v. O’Rourke, 92 USPQ2d 1042, 1046 (TTAB 2009) (“The Board does not take

judicial notice of registrations that reside in the Patent and Trademark Office.”)

(citing Corporate Fitness Programs Inc. v. Weider Health and Fitness Inc., 2 USPQ2d

1682, 1683-84, n.3 (TTAB 1987)).

7Evidence submitted in connection with the parties’ cross motions for summary judgment is
not automatically of record at trial; it must be properly introduced in evidence during the
appropriate trial period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d
1464, 1465 n.2 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911, 913 n.4 (TTAB 1983); Am.
Meat Inst. v. Horace W. Longacre, Inc., 211 USPQ 712, 716 n.2 (TTAB 1981).

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Opposition No. 91227660

Even if we took judicial notice of the third-party registrations cited by Applicant,

they would not affect the outcome of this case. Of the third-party registrations cited

by Applicant, there are only three active registrations that cover clothing items.8

“[T]he controlling inquiry is the extent of third-party marks in use on ‘similar’ 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)). These

three third-party registrations for marks containing the term “greed” are few in

8See Exhibits A and B attached to Applicant’s Trial Brief: Registration Nos. 4346699 for
GREEDSPEED (apparel, namely, footwear and headwear; t-shirts; hats; caps; headbands;
outerwear, namely, coats, jackets; active and athletic wear, namely, sweatsuits, sweatshirts,
sweatpants; athletic shoes and hiking boots; children’s clothing, namely, shirts, tops, pants,
pajamas, headwear and footwear), 3650330 for CHAPEL & GREED (clothing, namely, tee
shirts; jeans; shorts; shirts), 4299565 for GREED WHOEVER OPPRESSES THE POOR TO
INCREASE HIS OWN WEALTH OR GIVES TO THE RICH, WILL ONLY COME TO
POVERTY. PROVERBS 22:16. WALLSTREET WASHINGTON PEOPLE ARE YOU
LISTENING? (stylized) (caps; hooded sweat shirts; T-shirts) (26 TTABVUE 20, 22, 35).
Registration Nos. 4051610 for EGO AND GREED, 4286762 for GREED AMERICA’S
GREATEST PASTIME, and 4110512 for HOW’S THE ’08 CHANGE AND GREED
WORKING FOR YOU? (26 TTABVUE 21, 36, 37) have been cancelled. Inasmuch as cancelled
registrations are evidence only that the registrations issued, they are of no probative value.
See, e.g., Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307,
1309 (Fed. Cir. 1989) (“[A] cancelled registration does not provide constructive notice of
anything”); Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1606 (TTAB 2018); WeaponX
Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1042 n.21 (TTAB
2018).
The remaining registrations are for non-related goods and services and are therefore not
relevant. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (quoting
Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir.
2015) (“evidence of third-party use of similar marks on similar goods ‘can show that
customers have been educated to distinguish between different marks on the basis of minute
distinctions.”’)).

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Opposition No. 91227660

number, and fall well short of the “voluminous” and “extensive” evidence presented

in Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium

Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), (at least

fourteen relevant third-party uses or registrations of record), and Juice Generation,

Inc. v. GS Enterprises, LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015)

(at least twenty-six relevant third-party uses or registrations of record). Therefore,

this evidence would be insufficient to diminish the scope of protection afforded to

Opposer’s registered mark.

Similarity of the Marks

We next consider the DuPont factor focusing on the similarity or dissimilarity of

the marks in their entireties as to appearance, sound, connotation and commercial

impression. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En

1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); DuPont, 177 USPQ at

567. The test is whether the marks are sufficiently similar in their entireties such

that confusion is likely to result. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,

108 (TTAB 1975). We make the determination of the similarity of the marks with the

understanding that where the goods are identical, “the degree of similarity [between

the marks] necessary to support a conclusion of likelihood of confusion declines.”

Century 21 Real Estate v. Century Life of America, 23 USPQ2d at 1700; see also Shen

Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004).

Applicant’s mark HONOR&GREED, and OPPOSER’s mark GREED, are similar

in sound and appearance to the extent that they both contain the word “greed.”

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Opposition No. 91227660

Indeed, Applicant’s mark incorporates Opposer’s GREED mark in its entirety. Marks

have frequently been found to be similar where one mark, such as Applicant’s mark

HONOR&GREED, incorporates the entirety of another mark, such as Opposer’s

mark GREED. See The Wella Corp, v. California Concept Corp., 558 F.2d 1019, 194

USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT similar to CONCEPT); In re

Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and

VANTAGE TITAN confusingly similar); In re United States Shoe Corp., 229 USPQ

707, 709 (TTAB 1985) (CAREER IMAGE similar to CREST CAREER IMAGES); In

re Champion Int’l Corp., 196 USPQ 48, 49 (TTAB 1977) (CHECK MATE similar to

HAMMERMILL MICR CHECK-MATE); La Maur, Inc. v. Matney, 167 USPQ 559

(TTAB 1970) (ITALIAN STYLE mark similar to STYLE mark).

Turning to the connotation of the marks, we look to the definitions of “honor”

meaning “honesty, fairness, or integrity in one’s beliefs and actions;” and “greed”

meaning “excessive or rapacious desire, especially for wealth or possessions.”9

Opposer argues that based on such definitions “Applicant’s mark connotes fame and

desire while Registrant’s also connotes desire. . . . Applicant uses ‘greed’ in the same

9 Definitions from , © 2019 Dictionary.com, LLC based on The Random
House Unabridged Dictionary, © Random House, Inc. 2019. The Board may take judicial
notice of information from dictionaries. B.V.D. Licensing Corp. v. Body Action Design Inc.,
846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (“dictionaries and encyclopedias may be
consulted”). Inasmuch as Applicant cited no source for the definitions provided in its Brief
(see Applicant’s Trial Brief pp. 11-12 (26 TTABVUE 12-13)) and Opposer provided online
definitions (dated January 9, 2018 in its Brief filed on March 15, 2019) but did not request
judicial notice (see Brief of Opposer p. 11 (25 TTABVUE 12)), we have provided the foregoing
definitions.

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Opposition No. 91227660

way Registrant does, to mean the same thing.”10 Applicant disagrees noting that the

words “honor” and “greed” when placed together in its mark HONOR&GREED evoke

“completely different images in the minds of relevant consumers” than Opposer’s

marks with Applicant’s mark “begin[ning] with the additional term HONOR.”11 Thus,

according to Applicant, its use of a double entendre creates a different commercial

impression from Opposer’s marks in the minds of relevant consumers.12

“For trademark purposes, a ‘double entendre’ is an expression that has a double

connotation or significance as applied to the goods or services.” TMEP § 1213.05(c),

cited in In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017). Arguing that

its mark is a double entendre that creates a different commercial impression,

Applicant presents no supporting evidence explaining what the two connotations of

HONOR&GREED are. The word “honor” in Applicant’s mark does not change or

detract from the meaning of “greed” or present a new meaning to the mark. Thus,

shared the commercial impression of both Applicant’s and Opposer’s marks is “greed.”

We note that Opposer registered, and Applicant seeks to register, their marks

GREED and HONOR&GREED in standard characters. Under the rule, the parties

will not be restricted to any particular display of the mark, and thus are free to adopt

the identical stylization. Trademark Rule 2.52. See also In re Viterra, 101 USPQ2d at

1909; In re Mighty Leaf Tea, 94 USPQ2d at 1260; Cunningham v. Laser Golf, 55

10 Brief of Opposer p. 11 (25 TTABVUE 12).
11 Applicant’s Trial Brief p. 11 (26 TTABVUE 12).
12 Applicant’s Trial Brief p. 12 (26 TTABVUE 13).

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Opposition No. 91227660

USPQ2d at 1847. While the parties are not obligated to maintain their current uses

of the mark, we note that Applicant has used its mark with the terms “honor” and

“greed” shown in two different stylized fonts drawing separate attention to each of

the words in Applicant’s mark. The GREED portion of Applicant’s mark shown in

script forms a separate image from the word HONOR shown in standard case letters.

Use of the mark in this manner further supports the similarity of Applicant’s mark

and Registrant’s GREED mark:

Applicant’s goods13 Registrant’s goods14

In determining the commercial impressions or connotations created by Applicant’s

and Opposer’s marks, we must consider the marks in relation to the parties’ identified

goods. See Coach Services, Inc. v. Triumph Learning LLC, 96 USPQ2d 1600 (TTAB

2010), aff’d 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012); Embarcadero

Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1835 (TTAB 2013). Inasmuch

as Applicant’s applied-for mark is to be used on some of the identical clothing items

as set forth in Opposer’s registration, and it is similar in sound and appearance and

13 Guess Declaration, Exhibit P (24 TTABVUE 67).
14 Guess Declaration, Exhibit I (24 TTABVUE 37).

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Opposition No. 91227660

even more importantly, it connotes a similar meaning and commercial impression as

that of Opposer’s mark, Applicant’s mark HONOR&GREED is similar to Registrant’s

mark GREED. This factor supports a finding of likelihood of confusion.

V. Conclusion

Applicant’s applied-for mark HONOR&GREED is similar to Opposer’s registered

mark GREED. Based on the identity-in-part of the goods set forth in the application

and Opposer’s registration, together with the identical trade channels and classes of

customers, the DuPont factors of the similarity of the goods, trade channels and

customers favor a finding of likelihood of confusion. Moreover, when marks appear

on identical goods, as they do in-part here, the degree of similarity between the marks

necessary to support a finding of likelihood of confusion declines. See Century 21 Real

Estate v. Century Life, 23 USPQ2d at 1700; Top Tobacco LP v. North Atlantic

Operating Co., 101 USPQ2d 1163, 1173 (TTAB 2011). Therefore, the similarity

between Applicant’s applied-for mark HONOR&GREED and the cited registered

mark GREED taken together with the legally identical nature of at least some of the

goods and the presumably similar trade channels and customers for such goods,

creates a likelihood of confusion as to the source of the respective goods.

Decision: In view of the foregoing, the opposition is sustained under § 2(d) of the

Trademark Act.

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