This Opinion is Not a
Precedent of the TTAB

Mailed: September 11, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Twinsiez, Inc.
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Serial No. 87675017
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Jessica A. Capasso of Amster Rothstein & Ebenstein LLP
for Twinsiez, Inc.

Joseph Greene, Trademark Examining Attorney, Law Office 125,
Heather Biddulph, Managing Attorney.1

_____

Before Ritchie, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

Twinsiez, Inc. (“Applicant”) seeks to register on the Principal Register the

standard character mark ETCHED for “[s]hoes for babies and children” in

International Class 25.2

Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C.

§ 1052(d), on the ground that Applicant’s applied-for mark so resembles the

1 Amanda Galbo was the original Examining Attorney assigned to this application.
2 Application Serial No. 87675017, filed November 7, 2017 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
Serial No. 87675017

registered mark ETCHED in standard characters on the Principal Register for

“[c]lothing, namely, underwear, lingerie, corsets, hosiery, beachwear, bikinis,

swimsuits, loungewear, pajamas, nightgowns, control undergarments, shorts,

camisoles, dresses, jumpers, bras and panties” in International Class 25,3 that it is

likely to cause confusion or mistake or to deceive.

Applicant’s appeal of the final refusal is now briefed.4 For the reasons explained

below, we affirm the refusal to register.

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 a likelihood of confusion. In re E. I. du Pont

de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See

also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.

2003). We must consider each du Pont factor for which there is evidence or argument.

See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir.

2019). When analyzing these factors, the overriding concerns are not only to prevent

buyer confusion as to the source of the goods, but also to protect the registrant from

adverse commercial impact due to use of a similar mark by a newcomer. See In re

Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). In any

3 Registration No. 4600284, registered September 9, 2014.
4 In denying Applicant’s first Request for Reconsideration, the Examining Attorney withdrew
the final refusal under Section 2(d) based on Registration No. 4994948 for the standard
character mark ETCHED on the Supplemental Register for “jewelry.” See February 4, 2019
Request for Reconsideration and February 25, 2019 Denial. On March 22, 2019, Applicant
filed a second Request for Reconsideration which was denied on April 11, 2019. 4, 5
TTABVUE.

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Serial No. 87675017

likelihood of confusion analysis, two key considerations are the similarities between

the marks and the similarities between the goods. See In re Chatam Int’l Inc., 380

F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”). These factors, and the

other relevant du Pont factors, are discussed below.

A. The Marks

The first du Pont likelihood of confusion factor involves an analysis of 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) (citing du Pont, 177 USPQ at 567). “Similarity in any one of these elements

may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC,

126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812

(TTAB 2014)).

It is undisputed that Applicant’s and Registrant’s standard character marks are

identical in appearance and sound. As such, the marks “have the potential to be used

. . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411

(TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).

Applicant likens this case, however, to In re Sydel Lingerie Co., Inc., 197 USPQ

629 (TTAB 1977) (no likelihood of confusion found between BOTTOMS UP for ladies’

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Serial No. 87675017

and children’s underwear and BOTTOMS UP for men’s suits, coats and trousers) and

In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (PLAYERS for men’s

underwear and PLAYERS for shoes not likely to cause confusion because the term

“players” implies a fit, style, color, and durability suitable for outdoor activities when

applied to shoes, but “implies something else, primarily indoors in nature” when

applied to men’s underwear) in which the Board found that identical marks projected

different meanings and commercial impressions when considered in relation to the

identified goods.5 As Applicant contends, “the term ETCHED [in the cited

registration] implies a precise cut and resulting fit that is specifically focused on

supporting women and their individual comfort” with regard to women’s bras and

lingerie. Applicant’s Brief, p. 5; 7 TTABVUE 6. Applicant focuses on Registrant’s

marketing strategy of targeting women and their individual life experiences as

engendering a distinctive meaning and commercial impression: “we are all etched by

our physical and emotional experiences, journeys and histories.” Excerpt from

Registrant’s website www.etchedwoman.com submitted with August 16, 2018

5Applicant also relies on a federal district court case, Taj Mahal Enterprises, Ltd. v. Trump,
745 F. Supp. 240 (D.N.J. 1990), in which no likelihood of confusion was found between the
marks TAJ MAHAL for “restaurant services” and TAJ MAHAL for a casino complex in New
Jersey. Applicant’s Brief p. 3; 7 TTABVUE 4. In a federal district court proceeding, there is
an opportunity for a more fully developed factual record, and consideration of actual market
conditions. Consistent therewith, the district court’s decision in Taj Mahal was based on
other considerations such as the plaintiff’s limitation of its services to a single Indian
restaurant in Washington D.C. for 25 years and evidence of no actual confusion. Id. at 248-
51.

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Serial No. 87675017

Response to Office Action, pp. 7-9.6

We find, however, that this is not a situation where the same marks are used to

identify goods so dissimilar as to engender different connotations or commercial

impressions. Applicant overlooks that the cited registration also includes clothing

items unrestricted by age such as “shorts,” “dresses,” “swimsuits” and “jumpers”

which could be worn by “babies and children,” the consumers set forth in Applicant’s

identification of goods. Moreover, because the cited registration is unrestricted as to

gender, several of the apparel items, such as shorts and swimsuits could be for men.

Even considering Registrant’s explanation of the term “ETCHED” on its website, the

same explanation could be applied to Registrant’s identified goods. As such,

Applicant’s and Registrant’s marks engender similar connotations and commercial

impressions as well. This first du Pont factor therefore weighs heavily in favor of

finding a likelihood of confusion.

B. The Goods

Next, we compare the goods as they are identified in the involved application and

cited registration, the second du Pont factor. See Stone Lion Capital Partners, LP v.

Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom

Sys., Inc. v. Hous. Computs, Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.

Cir. 1990) and Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d

1001 (Fed. Cir. 2002). The goods need not be identical or even competitive to find a

6Record citations are to the downloadable .pdf version of the Trademark Search and Data
Retrieval (TSDR) database. Applicant’s submission of this evidence with its brief was
superfluous.

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Serial No. 87675017

likelihood of confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56

USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d

1894, 1898 (Fed. Cir. 2000). They need only be “related in some manner and/or if the

circumstances surrounding their marketing are such that they could give rise to the

mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v.

Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)

(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Evidence of

relatedness may include news articles and/or evidence from computer databases

showing that the relevant goods are used together or used by the same purchasers;

advertisements showing that the relevant goods are advertised together or sold by

the same manufacturer or dealer; and/or copies of prior use-based registrations of the

same mark for both applicant’s goods and the goods listed in the cited registration.

See, e.g., In re Davia, 110 USPQ2d at 1817 (finding pepper sauce and agave related

where evidence showed both were used for the same purpose in the same recipes and

thus consumers were likely to purchase the products at the same time and in the

same stores). Where identical marks are involved, as is the case here, the degree of

similarity between the goods that is required to support a finding of likelihood of

confusion declines. In re i.am.symbolic, llc, 116 USPQ2d at 1411 (citing In re Shell

Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315,

123 USPQ2d 1744 (Fed. Cir. 2017).

Applicant argues that the involved goods are unrelated because its shoes are

designed for babies and children. By contrast, Applicant asserts Registrant’s women’s

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Serial No. 87675017

lingerie and related clothing would not be worn by babies and children. Applicant’s

argument is unconvincing. As noted above, the cited registration is not limited to

women’s clothing and includes items other than undergarments and lingerie such as

“shorts,” “dresses,” and “jumpers” which could be worn by “babies and children,” the

targeted consumers in Applicant’s identification. For example, it is not uncommon for

parents to shop for children’s dresses with coordinating shoes. Thus, we can glean

from the identifications themselves that the involved goods are complementary

clothing items that can be worn and used together by consumers. See In re Martin’s

Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984)

(“[C]omplementary use has long been recognized as a relevant consideration in

determining a likelihood of confusion.”).

Furthermore, the Examining Attorney has submitted substantial evidence

demonstrating that it is common for Applicant’s and Registrant’s goods to be sold

under the same mark by entities manufacturing both sets of goods:

Ralph Lauren (https://www.ralphlauren.com) offering baby
and toddler shoes as well as women’s shorts, dresses and
bathing suits under the Ralph Lauren mark. See February
20, 2018 Office Action, pp. 10-17.

Old Navy (http://www.oldnavy.com) offering baby and
children’s shoes as well as women’s dresses, shorts,
swimsuits, underwear and camisoles under the Old Navy
mark. See id at 18-25.

Nike (https://store.nike.com) offering baby and toddler
shoes as well as women’s dresses, shorts, sport bras,
swimsuits and underwear under the Nike mark. See
September 24, 2018 Final Office Action, pp. 6-11

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Serial No. 87675017

Gap (http://www.gap.com) offering children’s shoes as well
as women’s dresses, shorts, swimsuits, and underwear
under the Gap mark. See id at 17-21.

Kate Spade (http://www.katespade.com) offering baby and
children’s shoes as well as women’s dresses, and swimsuits,
under the Kate Spade mark. See id at 22-27.

Calvin Klein (http://www.calvinklein.com) offering baby
shoes as well as women’s dresses, shorts, swimsuits,
pajamas, underwear and bras under the Calvin Klein
mark. See id at 34-41.

H&M (http://ww2.hm.com) offering children’s shoes as well
as women’s camisoles, pajamas, shorts, swimwear,
lingerie, underwear and bras under the H&M mark.
February 25, 2019 Denial of Request for Reconsideration,
pp. 4-16.

Forever 21 (https://www.forever21.com) offering children’s
shoes as well as women’s dresses, camisoles, shorts,
swimsuits, pajamas, underwear and bras under the
Forever 21 mark. See id at 17-27.

Adidas (https://www.adidas.com) offering baby and
children’s shoes as well as women’s dresses, shorts,
swimsuits, and bras under the Adidas mark. See id. at 28-
33.

Under Armor (https://underarmor.com) offering children’s
shoes as well as women’s shorts, swimsuits, underwear and
bras under the Forever 21 mark. See id. at 35-41.

Applicant criticizes this evidence, asserting that because it is from online retail

stores selling a wide variety of goods it is less probative. Applicant’s argument is

misplaced. The Examining Attorney’s evidence is from business-to-consumer (B2C)

online clothing and shoe manufacturers for goods sold under the same brand name

online directly to the consumer. These types of entities are distinct from online

retailers offering a wide variety of goods such as Amazon. In any event, even if we

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Serial No. 87675017

accorded this evidence reduced weight, there is more than enough of it to find a

relationship between the goods.

In view thereof, we find that the goods identified in the application and

registration are related and complementary in nature. As such, this second du Pont

factor also favors a finding of likelihood of confusion.

C. Channels of Trade

Next we consider established, likely-to-continue channels of trade, the third du

Pont factor. Because the identifications in the application and cited registration have

no restrictions on channels of trade, we must presume that the goods travel in all

channels of trade appropriate for such goods, which the record shows include direct

business to consumer (“B2C”) manufacturer operated web sites specializing in shoes

and clothing. See In re Viterra, 101 USPQ2d at 1908 (quoting Hewlett-Packard Co. v.

Packard Press, Inc., 62 USPQ2d at 1005). In addition, both parties’ goods may be

encountered by the same prospective consumers, which includes members of the

general public shopping for infant and children’s shoes, dresses and shorts.

As such, the third du Pont factor regarding the similarity or dissimilarity of

established, likely to continue trade channels also favors a finding of likelihood of

confusion.

D. Conditions of Sale

We turn now to the conditions under which the goods are likely to be purchased,

e.g., whether on impulse or after careful consideration, as well as the degree, if any,

of sophistication of the consumers. Purchaser sophistication or degree of care may

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Serial No. 87675017

tend to minimize likelihood of confusion. Conversely, inexpensive items purchased on

impulse may tend to have the opposite effect. Palm Bay, 73 USPQ2d at 1695.

Applicant argues that the purchasers of Applicant’s and Registrant’s goods are

“fashion conscious retail consumers [who] exercise a high degree of care in purchasing

and are considered sophisticated.” Applicant’s Brief, p. 9; 7 TTABVUE 10.

Elaborating, Applicant contends that this is especially true of women purchasing bras

and intimate apparel and parents shopping for baby and children’s shoes.

While we agree that consumers of women’s bras and intimate apparel as well as

children’s shoes may take more care, the cited registration includes other items such

as shorts, dresses and pajamas that may require a lesser degree of care. In addition,

the identifications in the application and cited registration include shoes and apparel

items at no specified price point. We cannot assume, as Applicant urges, that these

items are rendered to different classes of buyers in different marketing contexts.

Rather, we must assume that the types of buyers overlap to include both the

sophisticated fashionista as well as the ordinary bargain hunter. Ordinary consumers

of baby and children’s shoes and apparel are likely to exercise only ordinary care, and

given the lack of price restrictions in the identifications, they may even buy

inexpensive items on impulse. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54

USPQ2d 1894, 1899 (Fed. Cir. 2000) (“When products are relatively low-priced and

subject to impulse buying, the risk of likelihood of confusion is increased because

purchasers of such products are held to a lesser standard of purchasing care.”).

Accordingly, this factor is neutral.

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Serial No. 87675017

E. Strength of the Cited Mark

We will now consider the number and nature of similar marks in use on similar

goods and the commercial strength of the cited mark. In an ex parte appeal, “[t]he

purpose of [an applicant] introducing third-party uses is to show that customers have

become so conditioned by a plethora of such similar marks that customers have been

educated to distinguish between different such marks on the bases of minute

distinctions.” Palm Bay, 73 USPQ2d at 1694. See also 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); Juice Generation, Inc. v. GS Enters. LLC, 794

F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted).

“[T]he strength of a mark is not a binary factor” and “varies along a spectrum from

very strong to very weak.” Juice Generation, 115 USPQ2d at 1675-76 (internal

citations omitted). “The weaker [the Registrant’s] mark, the closer an applicant’s

mark can come without causing a likelihood of confusion and thereby invading what

amounts to its comparatively narrower range of protection.” Id. at 1676 (internal

citations omitted). See also Palm Bay, 73 USPQ2d at 1693 (“Evidence of third-party

use of similar marks on similar goods is relevant to show that a mark is relatively

weak and entitled to only a narrow scope of protection.”). “In determining the

strength of a mark, we consider both its inherent strength based on the nature of the

mark itself and its commercial strength, based on the marketplace recognition value

of the mark.” Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research

Institute, 101 USPQ2d 1022, 1028 (TTAB 2011) (citing Tea Board of India v. Republic

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Serial No. 87675017

of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) and MCCARTHY ON TRADEMARKS AND

UNFAIR COMPETITION § 11:83 (4th ed. 2011) (“The first enquiry focuses on the inherent

potential of the term at the time of its first use. The second evaluates the actual

customer recognition value of the mark at the time registration is sought or at the

time the mark is asserted in litigation to prevent another’s use.”)).

Active third-party registrations may be relevant to show that a mark or a portion

of a mark is descriptive or suggestive. See, e.g., also Jack Wolfskin, 116 USPQ2d at

1136; Juice Generation, 115 USPQ2d at 1675-76; In re Hartz Hotel Servs., Inc., 102

USPQ2d 1150, 1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388

(TTAB 1991); In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB

1988); Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). Properly

used in this limited manner, third-party registrations are similar to dictionaries

showing how language is generally used. See, e.g., Tektronix, Inc. v. Daktronics, Inc.,

534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976); In re J.M. Originals Inc., 6

USPQ2d 1393, 1394 (TTAB 1987); United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d

1172, 1174 (TTAB 1987).

Relying on a single third-party registration for the mark ETCHED BEAUTIES for

“dresses; jackets; shorts; shirts; tank tops,” Applicant argues that the cited mark

ETCHED is weak for clothing. See Registration No. 5690375 attached to March 14,

2019 Request for Reconsideration, pp. 9-14. A single third-party registration, with no

evidence of third-party uses, fails to show that “customers have become so conditioned

by a plethora of such similar marks that customers have been educated to distinguish

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between different such marks on the bases of minute distinctions.” Palm Bay, 73

USPQ2d at 1694. See also Jack Wolfskin, 116 USPQ2d at 1136; Juice Generation, 115

USPQ2d at 1675-76 (internal citations omitted). Indeed, Applicant appears to

misunderstand the appropriate level of evidence to support a determination that a

cited mark is weak. See In re Inn at St. John’s, 126 USPQ2d at 1745-46 (discussing

limited probative value of a few third-party registrations in absence of evidence of

third-party use). Accordingly, this factor is neutral.

F. Other Factors

The thirteenth and final du Pont factor pertains to “any other established fact

probative of the effect of use.” du Pont, 177 USPQ at 567.

Applicant contends that because the Examining Attorney withdrew its initial

Section 2(d) refusal based on Registration No. 4994948 for the standard character

mark ETCHED on the Supplemental Register for “jewelry,” Applicant’s mark is also

entitled to registration. Applicant postulates that there is even less likelihood of

confusion here since none of the goods in the cited registration are intended for

babies. Again, Applicant misses the point that the cited registration is unrestricted

as to age and gender and includes apparel items that could be worn by babies. This

factor is therefore neutral.

II. Conclusion

We have carefully considered all of the evidence made of record, as well as all of

the arguments related thereto, including any evidence and arguments not specifically

discussed in this opinion. As indicated earlier, the identical nature of the marks

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weighs heavily in finding a likelihood of confusion. This, coupled with the related,

complementary nature of the goods and overlapping trade channels leads us to the

conclusion that prospective consumers are likely to confuse the involved goods as

originating from or associated with or sponsored by the same entity. The remaining

factors discussed above are neutral, and we treat as neutral any du Pont factors for

which there is no evidence of record.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.

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