Likelihood of Confusion - Conditions Under Which Sales Are Made



As stated in section 1207.01 Likelihood of Confuion of the Trademark Manual of Examination Procedure: In the ex parte examination of a trademark application, a refusal under §2(d) is normally based on the examining attorney's conclusion that the applicant's mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion. (See TMEP §1207.02 concerning §2(d) refusals to register marks that so resemble another mark as to be likely to deceive, and TMEP §1207.03 concerning §2(d) refusals based on unregistered marks. Note: Refusals based on unregistered marks are not issued in ex parte examination.)

The examining attorney must conduct a search of Office records to determine whether the applicant's mark so resembles any registered mark(s) as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application. The examining attorney also searches pending applications for conflicting marks with earlier effective filing dates. See TMEP §§1208 et seq. regarding conflicting marks. The examining attorney must place a copy of the search strategy in the file.

If the examining attorney determines that there is a likelihood of confusion between applicant's mark and a previously registered mark, the examining attorney refuses registration under §2(d). Before citing a registration, the examining attorney must check the automated records of the Office to confirm that any registration that is the basis for a §2(d) refusal is an active registration. See TMEP §716.02(e) regarding suspension pending cancellation of a cited registration under §8 of the Act or expiration of a cited registration for failure to renew under §9 of the Act.

Also, if Office records indicate that an assignment of the conflicting registration has been recorded, the examining attorney should check the automated records of the Assignment Services Branch of the Office to determine whether the conflicting mark has been assigned to applicant.

In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. In ex parte examination, the issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services. The other factors listed in du Pont may be considered only if relevant evidence is contained in the record. See In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003) ("Not all of the DuPont factors may be relevant or of equal weight in a given case, and ‘any one of the factors may control a particular case,'" quoting In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)); In re National Novice Hockey League, Inc., 222 USPQ 638, 640 (TTAB 1984). In an ex parte case, the following factors are usually the most relevant:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  • The relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
  • The similarity or dissimilarity of established, likely-to-continue trade channels.
  • The conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing.
  • The number and nature of similar marks in use on similar goods.
  • A valid consent agreement between the applicant and the owner of the previously registered mark.

The Court of Appeals for the Federal Circuit has provided the following guidance with regard to determining and articulating likelihood of confusion:

The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used (citations omitted). It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark (footnote omitted). On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties (footnote omitted). Indeed, this type of analysis appears to be unavoidable.

In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985).

There is no mechanical test for determining likelihood of confusion. The issue is not whether the actual goods are likely to be confused but, rather, whether there is a likelihood of confusion as to the source of the goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein. Each case must be decided on its own facts.

The determination of likelihood of confusion under §2(d) in an intent-to-use application does not differ from the determination in any other type of application.

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  • The Fourth du Pont factor assesses the conditions under which and buyers to whom sales are made.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Under the fourth du Pont factor (conditions of purchase) we find that applicant's and opposer's beauty pageants will be marketed to and viewed by ordinary consumers, who will not necessarily exercise a great deal of care in viewing or reading about the respective pageants. A television viewer who sees a television listing or an advertisement for applicant's MR. GAY UNIVERSE pageant, or a consumer who encounters press coverage of applicant's pageant, will not exercise great care in determining whether applicant's pageant is affiliated with or related to opposer's pageant. We therefore find that the fourth du Pont factor weighs in favor of a finding of likelihood of confusion.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Applicant contends that consumers are accustomed to distinguishing between the sources of beauty pageants which use MR. and MISS prefixes with the same geographic suffixes, such as MR. AMERICA and MISS AMERICA. There is no evidence in the record to support this contention. The few third party registrations made of record by applicant do not prove that the marks depicted therein are in use or are familiar to consumers, see Miss Universe Inc. v. Drost, supra, and there is no other evidence in the record showing the extent of use, if any, of these third-party marks.
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • Under the fourth du Pont factor (the conditions under which and buyers to whom sales are made), we find that applicant's goods and opposer's goods are marketed to the same classes of customers. Again, no restrictions as to customers are set forth in the respective identifications of goods, and applicant's attempts to limit the purchasers of its maps to professionals and business people accordingly is unavailing. As identified in the application and the registrations, the parties' respective goods are general consumer items which typically are purchased without a great degree of care or sophisticated thought. For these reasons, we find that the fourth du Pont factor weighs in opposer's favor in this case.
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • We find that the normal trade channels and classes of customers for registrant's identified goods include wholesalers and retailers/storeowners, and that applicant's and registrant's trade channels and classes of purchasers therefore are identical, to that extent. These overlaps in trade channels and classes of purchasers weigh in favor of a finding of likelihood of confusion, under the third and fourth du Pont evidentiary factors.
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • Applicant argues that wholesalers and storeowners, the relevant classes of purchasers in this case, are sophisticated and careful purchasers, under the fourth du Pont factor. We will assume that this is true, notwithstanding the absence of any specific evidence in the record to support applicant's counsel's assertion (at page 6 of applicant's Supplemental Reply Brief) that sales of applicant's goods "involve significant amounts of money," and notwithstanding the fact that the "storeowner" purchasers of applicant's and registrant's respective goods must be deemed to include owners of small "mom-and-pop" stores, who would not necessarily be purchasing large and/or expensive quantities of the respective goods on a regular basis.
  • That the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods.
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • Thus, we find that the fourth du Pont factor weighs in applicant's favor in our likelihood of confusion determination. However, in view of our findings on the other relevant du Pont factors, as discussed elsewhere in this opinion, we also find that the sophistication and care of purchasers under the fourth du Pont factor is not controlling in this case, and that it does not render these purchasers immune to source confusion arising from use of these highly similar marks on these related goods. The Court's analysis of this issue in In re Research and Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986) is appropriate here as well: "That the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods. "Human memories even of discriminating purchasers … are not infallible." Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 1406, 168 USPQ 110, 112 (CCPA 1970). Sophistication of buyers and purchaser care are relevant considerations, but are not controlling on this factual record."
  • Case Finding: The class of consumers of ordinary clothes items is the public at large and not likely to exercise a high degree of care in their purchasing decisions, thus increasing the risk of confusion.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • Furthermore, the goods, as identified, include ordinary consumer items such as t-shirts, jackets and swimsuits, and we must assume that the class of consumers for such goods is the public at large, rather than a discriminating or sophisticated market segment. Consumers of at least these ordinary items of clothing are not likely to exercise a high degree of care in their purchasing decisions, thus increasing the risk of confusion. See Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984).
  • Unsophisticated purchasers would be inclined to source confusion when faced with the similar marks and related services.
    • In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999).
      • Furthermore, nothing in this record persuades us that purchasers of the types of services recited in the application and in the registration are necessarily sophisticated purchasers who would be immune to source confusion when faced with the similar marks and related services involved in this case. See Refreshment Machinery Incorporated v. Reed Industries, Inc., 196 USPQ 840 (TTAB 1977).
  • When products are inexpensive and subject to purchase on impulse, the likelihood of confusion increases, and this evidentiary element is accorded more weight than we did before in the balance of likelihood of confusion evidence.
    • Recot, Inc. v. M. C. Becton, Opposition No. 96,518, (TTAB 2000).
      • As we noted in our original decision in this case, the evidence shows that both parties' goods are inexpensive and, therefore, are subject to purchase on impulse. We note also that, in view of the Court's specific emphasis in its remand order that, when products are inexpensive and subject to purchase on impulse, as in this case, the likelihood of confusion increases, we accord this evidentiary element more weight than we did before in the balance of likelihood of confusion evidence.
  • Where neither party's goods or services are limited as to the likely classes of purchasers, given the high costs of subscribing to opposer's products and services, purchasers will be discriminating and exercise a high degree of care in contracting for these products and services.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • Applicant argues that it is clear from this record that purchasers of opposer's products and services will be sophisticated purchasers. Although neither party's goods or services are limited as to the likely classes of purchasers, we agree with applicant that given the costs of subscribing to opposer's products and services, the purchasers will be discriminating and exercise a high degree of care in contracting for these products and services.
  • Although the purchasers of the parties' products are discriminating, it is possible that the users are likely to exercise no more than ordinary care. Both groups must be considered in a likelihood of confusion analysis.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • Nonetheless, even though the purchasers of opposer's products are discriminating, careful and sophisticated (for example, employees or agents of libraries, academic institutions, corporations or government agencies), the classes of consumers for applicant's and opposer's software applications also include the ultimate users of such goods and services (e.g., students, teachers, faculty, researchers, corporate and government employees, and members of the general public). See In re Artic Electronics Co., Ltd. 220 USPQ 836 (TTAB 1983) [although the initial purchasers (i.e., owners of arcades) are sophisticated and careful purchasers of arcade games, in determining likelihood of confusion, consideration must also be given to the ultimate users of the arcade games (i.e., the arcade's customers who are the end users of the goods)].
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • As in Artic Electronics Co, in determining likelihood of confusion, the classes of purchasers for applicant's and for opposer's software applications include not only the sophisticated initial purchasers of the expensive software applications, but also must include the ultimate users of the PROQUEST products and applicant's INQUEST product — school children, teachers, college and graduate students, professors and researchers as well as members of the general public. These users, most of whom neither participate in the decision to purchase the parties' products nor typically pay for opposer's goods and services — cannot be considered sophisticated purchasers and also are not likely to exercise more than ordinary care when confronted with the parties' respective marks and products. Accordingly, although the purchasers of the parties' products are discriminating, we cannot find that the users are likely to exercise more than ordinary care. Applying such reasoning tilts this du Pont factor in opposer's favor as well.
  • While medical professionals are sophisticated and not prone to carelessness, confusion is likely where similar goods are marketed under the similar marks involved herein; there is no reason to believe that medical expertise as to pharmaceuticals will ensure that there will be no likelihood of confusion as to source or affiliation.
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • In considering the conditions of sale of the respective products, we note that the drugs would be prescribed by physicians, dispensed by pharmacists and normally administered by healthcare professionals such as doctors and nurses. We acknowledge that such persons are sophisticated and are not prone to carelessness. Nonetheless, we find that confusion is likely, even among these healthcare professionals, where these similar goods are marketed under the similar marks involved herein; there is no reason to believe that medical expertise as to pharmaceuticals will ensure that there will be no likelihood of confusion as to source or affiliation. See: In re Merck & Co., Inc., 189 USPQ 355 (TTAB 1975). See also: KOS Pharmaceuticals Inc. v. Andrx Corp., ___F.3d___ (3d Cir., No. 03-3977, May 24, 2004). As Dr. John Costanzi testified, contrary to the gist of Dr. Hoffman's remarks on this point, mistakes have been made where cancer patients were given the wrong drug, as a result of name or trademark confusion, with dire consequences (pointing to a reported death due to confusion between Taxol and Taxotere). (Dep. pp. 13-19; and exhibit no. 16 which is an article captioned "Lethal Confusion" retrieved from Forbes.com). See generally: J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §19:149 (4th ed. 2004).
  • Where both professionals and the general public are relevant consumers, the standard of care to be exercised will be equal to that of the least sophisticated consumer in the class.
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • Moreover, as noted above, the parties' drugs, as identified, also could be dispensed outside of the hospital setting, such that the ultimate users will have direct contact with them. As stated in KOS Pharmaceuticals Inc., id., citing Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 285 (3d Cir. 2001), "[w]here both professionals and the general public are relevant consumers, ‘the standard of care to be exercised....will be equal to that of the least sophisticated consumer in the class.'" Thus, we must be sensitive to the fact that patients from the general public will not exercise the degree of care exhibited by medical professionals. As also stated by the Third Circuit in KOS Pharmaceuticals Inc., id.: "While doctors and pharmacists play a gate-keeping role between patients and prescription drugs, they are not the ultimate consumers. Patients are. Courts have noted that drugs are increasingly marketed directly to potential patients through, for example, ‘ask-your-doctor-about-Brand- X' style advertising." [citations omitted].
  • Evidence should be offered to determine the contended class of purchasers.
    • Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006).
      • Although applicant contends that the purchasers of automobile audio equipment are sophisticated, applicant offered no evidence from which we may conclude that purchasers of such equipment are necessarily sophisticated.
  • The substantial similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • With respect to conditions of sale, we recognize that some furniture items may be expensive and are bought after deliberation. On the other hand, the identification of "furniture" in both the application and registration can encompass inexpensive furniture items that may be purchased on impulse or without great care. While there is no evidence on this du Pont factor, even assuming that purchases are carefully made, we find that the substantial similarity of the marks and the identity of the goods clearly outweigh any sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff'd, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) [similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods].
  • Where the purchasers are the same, their sophistication is important and often dispositive because sophisticated consumers may be expected to exercise greater care.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • Thus, the customer base for applicant's and registrant's goods, as determined by the identification of goods, overlaps. However, the common purchasers for applicant's and registrant's goods must be considered sophisticated, and this factor also weighs in favor of applicant. See Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ 1388, 1392 (Fed. Cir. 1992) ("Where the purchasers are the same, their sophistication is important and often dispositive because ‘[s]ophisticated consumers may be expected to exercise greater care.'" Internal citation omitted.)
  • One can expect more careful inquiry in purchasers of expensive rather than inexpensive items.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • One can expect, for example, more careful inquiry in purchasers of expensive rather than inexpensive items." Restatement (Third) of Unfair Competition §20, comment h (1995).
  • When products are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion is increased.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • Therefore, when products are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion is increased. Recot Inc. v. M.C. Becton, supra, 54 UPSQ2d at 1899. ).
  • 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.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • The relatively low cost of the involved clothing items and the fact that they may frequently be purchased on impulse is another factor that increases the likelihood of confusion. See Recot, supra, 54 USPQ2d at 1899 ("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")(citations omitted).
  • Consumer Evaluation.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • In this case, the purchasers of the goods are ordinary consumers who would not exercise a great deal of care in their purchasing decision.
  • Although web pages provide some evidence that the marks are in use, they do not determine to what extent the goods have been sold.
    • The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007)
      • In addition to the third-party registrations, applicant has also submitted what purports to be evidence of third party use of HOG marks. This evidence consists of web pages which applicant's witness obtained from Internet searches….Applicant's witness had not seen any of the foregoing products actually for sale in retail stores, nor could he testify as to whether one could buy the products shown on the websites. Although the web pages provide some evidence that the marks are in use, we cannot determine to what extent the goods have been sold.
  • Case Finding: As there are no restrictions in the classes of purchasers for applicant's cosmetics, the purchasers must be deemed to encompass all the usual purchasers for cosmetics, including the young women who purchase opposer's clothing and shop in opposer's clothing stores.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • The customers for women's clothing and women's clothing stores would be the same or at least overlap with the customers who would purchase applicant's fragrances and other cosmetics. Opposer's target market is young women in their mid-to-late twenties who are looking for clothing that, as described by Ms. Nicholas, is "more hip than classic." Dep., p. 75. As there are no restrictions in the classes of purchasers for applicant's cosmetics, the purchasers must be deemed to encompass all the usual purchasers for cosmetics, including the young women who purchase opposer's clothing and shop in opposer's clothing stores. See J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 1464, 18 USPQ2d 1889 (Fed. Cir. 1991); and CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983). In fact, in referring to the "fragrance profile New Elizabeth Arden Scent" for the product that would eventually become the ARDENBEAUTY fragrance, Mr. Rolleston testified that it is "a fragrance for women, women of every age and every style." Dep., p. 26.
  • It has often been stated that purchasers of products subject to impulse purchase and frequent replacement are held to a lesser standard of purchasing care and, thus, are more likely to be confused as to the source of the goods.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • Given the relatively low cost and the nature of the goods, the parties' clothing and fragrances may be subject to impulse purchase and frequent replacement. It has often been stated that purchasers of such products are held to a lesser standard of purchasing care and, thus, are more likely to be confused as to the source of the goods. See, e.g., Specialty Brands, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984).
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • In addition, the two products may not even be purchased at the same time. Keeping in mind that the parties' clothing and fragrances are relatively inexpensive, and may be subject to purchase on impulse, consumers who had previously purchased opposer's ARDEN B apparel in one of opposer's ARDEN B stores, upon encountering applicant's perfume, under the mark ARDENBEAUTY in a department store, are unlikely to give the matter great thought, but simply assume because of the products' complementary nature, that they come from or are in some way connected with the same company. See Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., supra.
  • Purchasers of relatively inexpensive products are held to a lesser standard of purchasing care.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Further, the record shows that both parties' goods are relatively inexpensive. Ms. Kain states that opposer's clothing and bags range from $15-$100, "depending on the nature of the goods." Ms. Kain later states, and the website printouts from www.walmart.com show, that opposer's clothing ranges in price from $5 to $40.12 Applicant's website shows shirts priced from $20 to $60. It is unlikely that these products would be purchased with the exercise of a great deal of care. See, e.g., Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984) (purchasers of relatively inexpensive products are held to a lesser standard of purchasing care.) FOOTNOTE 12 "From what we can glean from the record, the price difference may depend at least in part on whether the products are branded only with its own marks or are co-branded with team names and logos."
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • We must assume that applicant's tea and the tea of opposer's certification mark users are sold in the same channels of trade, including all the usual retail outlets for tea and to all the same purchasers, including ordinary purchasers. Moreover, it is reasonable to assume that ordinary purchasers of tea are not necessarily discriminating or knowledgeable about those products. Given the inexpensive nature of many teas, as shown by applicant's own evidence, ordinary purchasers would not necessarily be likely to exercise the high degree of care necessary to prevent confusion.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • Furthermore, the purchasers of at least costume items of jewelry are ordinary members of the general public. Considering that this type of jewelry, as applicant points out, is relatively inexpensive, it is therefore likely to be purchased casually and on impulse, thus increasing the risk of confusion. Kimberly- Clark Corp. v. H. Douglas Enter., Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985).
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • Absent restrictions in any of the identifications of goods and recitations of services, Ruben's efforts to distinguish his intended channels of trade and/or classes of consumers must fail. Hewlett-Packard Co., 62 USPQ2d at 1005.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • Rather, because retail coffee and tea beverages and coffee and tea itself are inexpensive products and may be purchased on impulse and without care, consumers devote limited attention to the purchase of such goods and services, and thus are more susceptible to confusion. See Palm Bay Imports Inc., supra at 1695 (Fed. Cir. 2005); Recot, Inc., supra at 1899; Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984); and Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1407 (TTAB 1998). See also 3 J Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 23:95 (4th Ed. 2005).
  • Case Finding: In the absence of any limitations, one must assume that the relevant persons, for purposes of a likelihood of confusion analysis, would overlap for the marks and that "low-end" and "high-end" jewelry retailers, distributors, and vendors would encounter both marks.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • In the absence of any limitations, we must assume, for purposes of our likelihood of confusion analysis, that "low-end" and "high-end" jewelry retailers, distributors, and vendors would encounter both plaintiff's collective membership mark and defendant's collective membership mark and service mark. In short, we cannot draw the distinctions urged by defendant with respect to the relevant persons, but rather must deem them to be, at the very least, overlapping.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • Further, we note that plaintiff's collective membership mark and defendant's collective membership mark may be displayed or promoted in rendering jewelry retail store or distributorship services to consumers so as to advertise the member's affiliation with the respective membership organization even if the jewelry retail store or distributorship services are being offered under a different mark. Boise Cascade Corp. v. Mississippi Pine Manufacturers Association, 164 USPQ 364 (TTAB 1969).
  • Under the circumstances, plaintiff's collective membership mark and defendant's collective membership mark and service mark would be encountered by some of the same members of the relevant public, who could include businesses and vendors of jewelry, as well as the ultimate purchasers of jewelry. Thus, this factor favors a finding of
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • likelihood of confusion.
  • Case Finding: Absent any specific restrictions the relevant class of purchasers for sports goods are all the usual classes of purchasers, including ordinary consumers, and not just sports fans.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Thus, applicant's and opposer's presumptions about who the relevant purchasers for these goods are or what they would know or think when confronted with the respective marks on the goods described in the applications and registrations are not relevant. It must instead be presumed that while sports fans may be among the purchasers of these goods, in the absence of any specific restrictions in the applications or registrations as to the classes of purchasers, we must presume that both applicant's apparel and bags, and opposer's apparel reach all the usual classes of purchasers, including ordinary consumers.
  • A sponsorship partner relationship between the parties, if anything, would enhance the likelihood that even more discerning consumers would be confused as to sponsorship if applicant were to market its goods with a mark similar to the marks of opposer.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • We also note that the WNBA has "sponsorship partner relationships" with companies including Nike, opposer herein. We find that such a relationship, if anything, would enhance the likelihood that even more discerning consumers (assuming, as applicant claims, that sports fans are more discerning) would be confused as to sponsorship if applicant were to market its goods with a mark similar to the marks of opposer.13 See, e.g., Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even of discriminating purchasers...are not infallible.").
  • Case Finding: Bank customers are treated as only exercising ordinary care.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • Thus, for purposes of determining likelihood of confusion, we cannot treat bank customers as exercising more than ordinary care. As for credit card services, the care that is taken in such transactions is on the part of the company offering the service, in terms of the credit-worthiness of the consumer, rather than on the part of the consumer who uses the service. We agree with applicant, however, that real estate brokerage services, whether on the part of the person selling a home or buying one, would be chosen with some degree of care.
  • Case Finding: Customers are treated as exercising some degree of care in selecting real estate brokerage services.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • Thus, for purposes of determining likelihood of confusion, we cannot treat bank customers as exercising more than ordinary care. As for credit card services, the care that is taken in such transactions is on the part of the company offering the service, in terms of the credit-worthiness of the consumer, rather than on the part of the consumer who uses the service. We agree with applicant, however, that real estate brokerage services, whether on the part of the person selling a home or buying one, would be chosen with some degree of care.
  • Case Finding: While opposer's mark is not registered for goods that are the same as or closely related to those identified in applicant's application, opposer has clearly moved into collateral merchandising and into sponsorship of various sporting events, so that consumers, i.e., the general public, encountering the mark on applicant's goods likely will be confused about their origin or sponsorship.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • Also, while opposer's mark is not registered for goods that are the same as or closely related to those identified in applicant's application, opposer has clearly moved into collateral merchandising and into sponsorship of various sporting events, so that consumers, i.e., the general public, encountering the NASDAQ mark on applicant's goods likely will be confused about their origin or sponsorship. See Philip Morris Incorporated v. K2 Corporation, et al., 555 F.2d 815, 194 USPQ 81, 82 (CCPA 1977) (In a case involving identical marks but where goods were held not "competitive or intrinsically related," the Court affirmed the Board's finding of likelihood of confusion, in part due to association of both parties with skiing events.). Given the renown of opposer's mark, the general public may make decisions regarding the purchase of applicant's goods with less care. See Specialty Brands, 223 USPQ at 1284.
  • The relevant class of customers and potential customers of footwear and insoles for footwear would be the general consuming public looking for such goods.
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • In the present case, the relevant class of customers and potential customers of footwear and insoles for footwear would be the general consuming public looking for such goods.
  • The question is whether the relevant classes of purchasers are likely to confuse the source of the goods, not the goods themselves.
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • Respondent contends that the goods "look dramatically different from one another and are used in distinct treatment regimes." More specifically, respondent states that because both products are administered intravenously, the medical professionals administering the products will see that "[a] bag of clear liquid [petitioner's product] is highly distinguishable from a bag of brilliant yellow liquid [respondent's product]." (Brief, p. 18). Simply put, these distinctions are of little moment in our likelihood of confusion analysis which, to reiterate, is based on a comparison of the goods as identified in the involved registrations. Moreover, the question is whether the relevant classes of purchasers are likely to confuse the source of the goods, not the goods themselves.
  • Where the goods would be offered to different classes of purchasers through different channels of trade, it is unlikely that there would be any opportunity for confusion to occur.
    • In re The W.W. Henry Company, L.P., Serial No. 78401595, (TTAB 2007).
      • It seems to us that, because of the nature of the respective goods, they would be offered to different classes of purchasers through different channels of trade. As such, it is unlikely that there would be any opportunity for confusion to occur. See Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992).
  • Absent limitations on trade channels or classes of purchasers, ordinary consumers are among prospective purchasers of the goods. Average purchasers who normally recollect a general rather than a specific impression of trademarks.
    • Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006).
      • As we indicated earlier, neither opposer's nor applicant's identification of goods contains any limitations on trade channels or classes of purchasers and, accordingly, we must include ordinary consumers as among prospective purchasers of the goods. In that circumstance, we keep in mind the recollection of these average purchasers who normally retain a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
  • The existence of marks on the register is not evidence of what happens in the marketplace or that customers are familiar with them.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • The existence of these marks on the register is not evidence of what happens in the marketplace or that customers are familiar with them. AMF Incorporated v. American Leisure Products, Inc., 177 USPQ 268, 269 (CCPA 1973) ("little weight is to be given such registrations in evaluating whether there is likelihood of confusion.").
  • Case Finding: Because applicant's and the registrant's identified services can be rendered to the same consumers, this du Pont factor somewhat favors a finding of likelihood of confusion.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • Because applicant's and the registrant's identified services can be rendered to the same consumers, this du Pont factor somewhat favors a finding of likelihood of confusion.
  • Third-party registrations are not proof of sales of the products shown therein; nor are they evidence that the marks shown therein are in use or that the public is familiar with them, or even aware of them.
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • Third-party registrations are not proof of sales of the products shown therein; nor are they evidence that the marks shown therein are in use or that the public is familiar with them, or even aware of them. See AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973).
  • An applicant does not overcome a likelihood of confusion refusal by pointing to other registrations and arguing that they are as similar to the cited registration as applicant's mark. While third-party registrations may be used to demonstrate that a portion of a mark is suggestive or descriptive, they cannot justify the registration of another confusingly similar mark.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • "As the Board stated in In re Chica Inc, 84 USPQ2d at 1849: ""{A]n applicant does not overcome a likelihood of confusion refusal by pointing to other registrations and arguing that they are as similar to the cited registration as applicant's mark. While third-party registrations may be used to demonstrate that a portion of a mark is suggestive or descriptive, they "cannot justify the registration of another confusingly similar mark." In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987), quoting Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983)."" See also, AMF Inc. v. American Leisure Producs, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (CCPA 1973) Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 325, 153 USPQ 406, 407 (CCPA 1967); In re Helene Curtis Indus., Inc., 305 F.2d 492, 494, 134 USPQ 501, 503 (CCPA 1962)."
  • Case Finding: Determination under the fourth du Pont factor was based on registrant's identified "air compressors and parts therefor" generally, not on the legally irrelevant fact that registrant's actual air compressors might be quite expensive.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Thus, our determination under the fourth du Pont factor must be based on registrant's identified "air compressors and parts therefor" generally, not on the legally irrelevant fact that registrant's actual air compressors might be quite expensive. See In re Opus One Inc., 60 USPQ2d at 1817.
  • Case Finding: Even assuming, arguendo, that customers for applicant's intimate apparel, and for opposer's outerwear, exercise a high degree of care, applicant does not provide any evidence regarding the decision process used by these careful and sophisticated purchasers, the role trademarks play in their decision making process, or how observant and discriminating they are in practice.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Even assuming, arguendo, that customers for applicant's intimate apparel, and for opposer's outerwear, exercise a high degree of care, applicant does not provide any evidence regarding the decision process used by these careful and sophisticated purchasers, the role trademarks play in their decision making process, or how observant and discriminating they are in practice.
  • Case Finding: On this record, there is no basis upon which we might find that air compressors, water pumps and electric motors necessarily are so expensive, or that the purchasers of these goods necessarily are so knowledgeable and careful in purchasing the goods, that the likelihood of confusion arising from the use of identical marks on such goods would be significantly mitigated.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • On this record, there is no basis upon which we might find that air compressors, water pumps and electric motors necessarily are so expensive, or that the purchasers of these goods necessarily are so knowledgeable and careful in purchasing the goods, that the likelihood of confusion arising from the use of identical marks on such goods would be significantly mitigated.
  • Case Finding: Opposer fails to present evidence regarding how the presumably ordinary clothing consumers will react to the ONE FAB FIT mark used in connection with bras, panties, and camisoles, especially in light of the purported strength of the ONE TRUE FIT mark.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • On the other hand, opposer fails to present evidence regarding how the presumably ordinary clothing consumers will react to the ONE FAB FIT mark used in connection with bras, panties, and camisoles, especially in light of the purported strength of the ONE TRUE FIT mark.
  • Case Finding: The conditions under which and buyers to whom sales are made are factors that favor opposer.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • In view thereof, the conditions under which and buyers to whom sales are made are factors that favor opposer.
  • Case Finding: The fourth du Pont factor is at best neutral in this case; it certainly does not weigh significantly in applicant's favor.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • For these reasons, we find that the fourth du Pont factor is at best neutral in this case; it certainly does not weigh significantly in applicant's favor.
  • Case Finding: The marks are so similar that even careful consumers who note the design element in applicant's mark are likely to believe, as discussed above, that the mark is a variation of the registrant's mark, identifying insurance services that emanate from the same source.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • Applicant argues that the purchasers of insurance are careful, and we agree that by the very nature of such services, consumers would exercise care in obtaining them. While this factor favors applicant, it is outweighed by the similarity of the marks and the identity of the services. That is, the marks are so similar that even careful consumers who note the design element in applicant's mark are likely to believe, as discussed above, that the mark is a variation of the registrant's mark, identifying insurance services that emanate from the same source.
  • Case Finding: The problem with the "degree of consumer care" argument made by both parties is that there is no corroborating evidence and it is inconsistent with the description of goods in the application and registration (i.e., not all of the potential consumers for outerwear and under garments are sophisticated consumers).
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Accordingly, the problem with "degree of consumer care" argument made by both parties is that there is no corroborating evidence and it is inconsistent with the description of goods in the application and registration (i.e., not all of the potential consumers for outerwear and under garments are sophisticated consumers).
  • Case Finding: The TTAB could not conclude that the sophisticated purchasers of ultrasound and MRI medical diagnostic equipment would not be confused when the marks TITAN and VANTAGE TITAN are used on these goods. These purchasers are likely to be aware that a single entity can be the source of both such products.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Here, we cannot conclude that the sophisticated purchasers of ultrasound and MRI medical diagnostic equipment would not be confused when the marks TITAN and VANTAGE TITAN are used on these goods. These purchasers are likely to be aware that a single entity can be the source of both such products. Palm Bay, 73 USPQ2d at 1695 ("And even more sophisticated purchasers might be aware that champagne houses offer both types of products under similar marks, and could easily conclude that VEUVE ROYALE was Veuve Clicquot's sparkling wine").
  • Even sophisticated purchasers may be confused.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • However, even sophisticated purchasers may be confused. Imagineering Inc. v. Van Klassens Inc., 53 F.3d 1260, 34 USPQ2d 1526, 1530 (Fed. Cir. 1995) (The "record shows that the buyers of Imagineering's and Van Klassens' furniture are sophisticated. While a sophisticated purchaser might more easily discern distinctions between Van Klassens' and Imagineering's furniture, the record in this case shows that even a trained furniture salesman could not distinguish the two products"); Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1840, 14 USPQ2d 1840, 1841-42 (Fed. Cir. 1990) ("On the issue of sophisticated purchaser, this court also agrees with the Board… The Board took into account the theory, but said that the similarities in the products overshadow the sophistication of the purchasers"); and In re Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999) ("[E]ven careful purchasers are not immune from source confusion").
  • Generally, purchasers of casual, low cost ordinary consumer items exercise less care in their purchasing decisions and are more likely to be confused as to the source of the goods.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • We also note in that regard that the parties' goods are ordinary consumer items available at a relatively low cost. Generally, purchasers of casual, low cost ordinary consumer items exercise less care in their purchasing decisions and are more likely to be confused as to the source of the goods. See Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984). Thus, we are not persuaded by applicant's arguments regarding the assertedly substantial differences in price of the involved goods.
  • In determining the conditions under which the products at issue are sold and the consumers who buy them, where there are no restrictions or limitations in the description of goods in either the application or opposer's registration, the goods of both parties may be inexpensive and bought by ordinary consumers.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • In determining the conditions under which the products at issue are sold and the consumers who buy them, we note there are no restrictions or limitations in the description of goods in either the application or opposer's registration. Therefore, the clothing products of both parties may be inexpensive and bought by ordinary consumers. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that relevant goods are expensive wines sold to discriminating purchasers must be disregarded given the absence of any such restrictions in the application or registration).
  • It is the identification of goods that controls, not what extrinsic evidence may show about the specific nature of the goods. An applicant may not restrict the scope of the goods covered in the cited registration by argument or extrinsic evidence."
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • However, "... it is the identification of goods that controls, not what extrinsic evidence may show about the specific nature of the goods. ... An applicant may not restrict the scope of the goods covered in the cited registration by argument or extrinsic evidence." In re Peregrina Ltd., 86 USPQ2d at 1646.
  • It is well-settled that even careful purchasers who are knowledgeable as to the goods are not necessarily knowledgeable in the field of trademarks or immune to source confusion arising from the use of confusingly similar marks on or in connection with the goods.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Moreover, even if we were to find that the goods are somewhat expensive and that some care would be taken in purchasing the goods, it is well-settled that even careful purchasers who are knowledgeable as to the goods are not necessarily knowledgeable in the field of trademarks or immune to source confusion arising from the use of confusingly similar (and in this case, identical) marks on or in connection with the goods. See Giersch v. Scripps Networks Inc., 90 USPQ2d 1020 (TTAB 2009); In re Wilson, 57 USPQ2d 1863 (TTAB 2001); In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
  • It seems beyond dispute that ultrasound and MRI imaging equipment is expensive and that the purchasers of these products would be sophisticated.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Lastly, we address applicant's argument about the sophistication of the purchasers, which is coupled with the expensive nature of the products. It seems beyond dispute that ultrasound and MRI imaging equipment is expensive and that the purchasers of these products would be sophisticated.
  • Long-standing precedent establishes that third-party registrations cannot assist an applicant in registering a mark that is likely to cause confusion with a previously registered mark.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • Applicant has also argued that various MAX marks coexist on the register. Long-standing precedent establishes that third-party registrations cannot assist an applicant in registering a mark that is likely to cause confusion with a previously registered mark.
  • Sophistication of the purchasers is also an important factor in avoiding confusion, and often dispositive because sophisticated consumers may be expected to exercise greater care.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Sophistication of the purchasers is also an important factor in avoiding confusion. Electronic Design, 21 USPQ2d at 1392 (internal quotation marks omitted) ("Where the purchasers are the same, their sophistication is important and often dispositive because sophisticated consumers may be expected to exercise greater care").
  • The fact that purchasers may study the specimens and determine that applicant's and registrant's imaging devices originate from different sources is not relevant.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • These purchasers, familiar with registrant's products, are likely to participate in purchasing decisions involving applicant's goods, and assume that the products are associated or related in some way. The fact that purchasers may study the specimens and determine that applicant's and registrant's imaging devices originate from different sources is not relevant. We must consider whether the marks TITAN and VANTAGE TITAN when used on the identified goods are confusingly similar. Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 104 n.6 (CCPA 1979) ("Likelihood of confusion occurs upon observance of the mark and goods. It need not await a reading of the book. The mark, not the specimen, is submitted for registration").
  • The next du Pont factor we consider is the conditions of purchase.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • The next du Pont factor we consider is the conditions of purchase.
  • Under the fourth du Pont factor, we consider the conditions of purchase.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Under the fourth du Pont factor, we consider the conditions of purchase.
  • Where there are no restrictions or limitations in the description of applicant's goods or the goods in the cited registration, the description of goods in the application and registration is broad enough to encompass goods encountered by consumers who may not exercise a high degree of care.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • Despite the findings in those cases, as we indicated above, there are no restrictions or limitations in the description of applicant's goods or the goods in the cited registration. Therefore the description of goods in the application and registration is broad enough to encompass inexpensive wallets, handbags, luggage and traveling bags sold in discount stores to consumers who may not exercise a high degree of care. Accordingly, the conditions under which sales are made is a likelihood of confusion factor that weighs in favor of finding that there is a likelihood of confusion.
Cited Fed. Cir. Case In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010) Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009) In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009) In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009) The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008) In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007) In re The W.W. Henry Company, L.P., Serial No. 78401595, (TTAB 2007) Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007) Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007) ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007) The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007) The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007) Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006) In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006) In re Mark Thomas, Serial No. 78334625, (TTAB 2006) Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006) Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006) Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004) The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003) In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001) In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999) Grand Total
Giersch v. Scripps Networks Inc., 90 USPQ2d 1020 (TTAB 2009) 1
In re La Peregrina Ltd., 86 USPQ2d 1645 (TTAB 2008) 1
In re Chica Inc., 84 USPQ2d 1845 (TTAB 2007) 1
Palm Bay Import Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) 2
KOS Pharmaceuticals Inc. v. Andrx Corp., ___F.3d___ (3d Cir., No. 03-3977, May 24, 2004) 1
Checkpoint Sys. Inc. v. Check Point Software Techs. Inc., 269 F.3d 270 (3d Cir. 2001) 1
In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001) 1
In re Wilson, 57 USPQ2d 1863 (TTAB 2001) 1
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000) 2
In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999) 1
Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998) 1
Imagineering Inc. v. Van Klassens Inc., 53 F.3d 1260, 34 USPQ2d 1526 (Fed. Cir. 1995) 1
Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992) 2
J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991) 1
HRL Associates Inc. v. Weiss Associates Inc., 12 USPQ2d 1819 (TTAB 1989), aff'd, Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) 1
Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 14 USPQ 1840 (Fed. Cir. 1990) 1
In re Decombe, 9 USPQ2d 1812 (TTAB 1988) 1
In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987) 1
In re Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986) 1
In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49 (Fed. Cir. 1986) 1
Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985) 1
Specialty Brands Inc. v. Coffee Bean Distributors Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984) 5
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983) 1
In re Artic Electronics Co., Ltd. 220 USPQ 836 (TTAB 1983) 1
Plus Products v. Star-Kist Foods Inc., 220 USPQ 541 (TTAB 1983) 1
Dan Robbins & Associates Inc. v. Questor Corporation, 599 F.2d 1009, 202 USPQ 100 (CCPA 1979) 1
Philip Morris Incorporated v. K2 Corporation, et al., 555 F.2d 815, 194 USPQ 81 (CCPA 1977) 1
Refreshment Machinery Incorporated v. Reed Industries Inc., 196 USPQ 840 (TTAB 1977) 1
In re Merck & Co. Inc., 189 USPQ 355 (TTAB 1975) 1
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975) 1
AMF Inc. v. American Leisure Products Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973) 3
Carlisle Chemical Works Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110 (CCPA 1970) 2
Boise Cascade Corp. v. Mississippi Pine Manufacturers Association, 164 USPQ 364 (TTAB 1969) 1
Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 325, 153 USPQ 406 (CCPA 1967) 1
In re Helene Curtis Indus., Inc., 305 F.2d 492, 134 USPQ 501 (CCPA 1962) 1
Grand Total 6 1 6 5 1 1 1 1 3 1 1 3 1 1 1 1 4 3 1 2 1 45
No Statutes Listed

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