Aheto-Tosu, Agbeko-Kwasi

Trademark Trial and Appeal Board

Sep 30, 2014

No. 85604586 (T.T.A.B. Sep. 30, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 30, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Aheto-Tosu, Agbeko-Kwasi
_____

Serial No. 85604586
_____

Luke Brean of Breanlaw, LLC,
for Aheto-Tosu, Agbeko-Kwasi
April K. Roach, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
_____

Before Quinn, Zervas and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Aheto-Tosu, Agbeko-Kwasi (“Applicant”) seeks registration on the Principal
Register of the mark for
A-shirts; Athletic apparel, namely, shirts, pants, jackets,
footwear, hats and caps, athletic uniforms; Dress pants;
Dress shirts; Long-sleeved shirts; Open-necked shirts;
Over shirts; Pants; Shirts and short-sleeved shirts; Shirts

Serial N

T
wording
today k
the ma
ALKEB
T
mark un
that Ap
for “app
jackets,
applican

1 Applica
Register
applicati
first use
2 The ori
‘ALEK B
continen
exaggera
3 Reg. No
was not
o. 85604586
for s
sleev
Sport
Class
he descrip
‘ALKE B
nown as A
in Alkebu
ULAN has
he Tradem
der Sectio
plicant's m
arel and
coats, sk
t's identif

tion Serial
. No basis fo
on to the P
anywhere a
ginal descri
U LAN’ bro
t with the w
ted period
. 2838252 i
disclaimed.

uits; Shor
ed shirts;
s shirts w
25.1
tion of th
U LAN’ in
frica and t
-Lan (Afri
been disc
ark Exam
n 2(d) of
ark so re
sportswear
irts and p
ied goods,

No. 856045
r filing wa
rincipal Reg
nd use in c
ption of the
ken up in t
ord Expres
at the end o
ssued on M

t-sleeved
Sport shir
ith short s
e mark,
forming
he wordin
ca) island
laimed.
ining Att
the Tradem
sembles th
, namely,
ants” in
it is likely
86 was file
s provided.
ister and b
ommerce si
mark was
hree parts
sion stylize
f the letter
ay 4, 2004
- 2 -
or long sl
ts; Sports
leeves; T-s
as amende
the shape
g ‘EXPRE
, today kn
orney has
ark Act,
e register
shirts, sw
Class 253
to cause
d on April 2
On August
ased the ap
nce at least
: “The mark
forming an
d in half cu
‘n’ in Expre
and was ren
eeved t-sh
pants; Sp
hirts in In
d, is: “Th
of the m
SSION’ at
own as M
refused re
15 U.S.C.
ed mark,
eatshirts,
that, as u
confusion
1, 2012 on
28, 2012, A
plication u
as early as
consists of
icon of the
rve at the b
ssion.”
ewed. The
irts; Shor
orts shirt
ternation
e mark c
ainland of
the bottom
adagasca
gistration
§ 1052(d)
sweatpan
sed in co
or mistake
the Supple
pplicant am
pon Applica
July 19, 20
[s]tylized i
today know
ottom of ic
word, “ALK
t-
s;
al
onsists of
the conti
stretchin
r.”2 The w
of Applica
on the gro
ts, hats, c
nnection
or to dec
mental
ended the
nt’s claim o
07.
n bold lette
n African
on forming
EBU-LAN
the
nent
g to
ord
nt’s
und
aps,
with
eive.
f
rs
an
”
Serial No. 85604586

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In addition, the Examining Attorney objected to the amendment of the drawing
from: to on the ground that the deletion
of the shape of the white hang tag and the green stitching on applicant’s shirt
constitutes a material alteration of the mark.
After the Examining Attorney made the refusal and the requirement final,
Applicant appealed. We affirm the refusal to register under Section 2(d) and reverse
the requirement for an amended drawing and claim of color.
I. Amendment of the Drawing.
As depicted, supra, the drawing originally submitted by Applicant consisted
of a photograph that included a depiction of a portion of the front of a black shirt
with green stitching around the collar and green laces down the front. Next to the
green stitching was a white hang tag on which the following was depicted:
. The photograph was taken on a white surface. The Examining
Attorney considers the green stitching, the black shirt, the white background of the
hang tag and the white surface on which the shirt lies to be a portion of the mark.
As Applicant described in the application, “[t]he mark consists of [s]tylized in bold
Serial No. 85604586

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letters ‘ALEK BU LAN’ broken up in three parts forming an icon of the today
known African continent with the word Expression stylized in half curve at the
bottom of icon forming an exaggerated period at the end of the letter ‘n’ in
Expression.”4 When the application was filed, instead of filing an appropriate
drawing, Applicant filing pro se, erroneously filed a photograph of a black shirt with
green stitching on a white surface. On the top of shirt is a white hang tag bearing
the following depiction .5 Applicant, through her attorney,
submitted an amended drawing in which the shirt, stitching, white surface and
hang tag were deleted. The request to accept the amended drawing was denied on
the ground that the amendment constituted a material alteration of the mark and
was thus prohibited.
It is not necessary for us to determine whether the amendment constitutes a
material alteration of the mark. Instead, we must determine whether the shirt,
stitching, white surface and hang tag were intended to be parts of the mark.

4 As requested by the Examining Attorney in the Office Action dated August 8, 2012,
Applicant amended the description to: “The mark consists of the wording ‘ALKE BU LAN’
forming the shape of the continent of Africa and the wording ‘EXPRESSION’ in black on a
white hang tag attached to a green cord necklace on a black surface with white at the
bottom corners.” In the Response dated April 8, 2013, the statement was amended to: “The
mark consists of the wording ‘ALKE BU LAN’ in forming the shape of the mainland of the
continent today known as Africa and the wording ‘EXPRESSION’ at the bottom stretching
to the main Alkebu-Lan (Africa) island, today known as Madagascar.”
5 The original drawing is identical to the specimen filed on April 8, 2013, which is identified
as “shirt with a hang tag.”
Serial No. 85604586

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“Applicants often submit drawings and descriptions of marks depicting trade dress
and containing matter that is: (1) not part of the mark; (2) functional; (3)
nondistinctive and capable; (4) nondistinctive and incapable; (5) inherently
distinctive; or (6) a combination of these factors.” TMEP §1202.02(c) (2014).
Further, to satisfy the requirements of Trademark Rule 2.52, the drawing and
description of such a mark must accurately depict the mark the Applicant intends
to register.” Trademark Rule, 2.52, 37 C.F.R. §2.52. If the drawing does not meet
the requirements of Trademark Rule 2.52, the Examining Attorney must require
the applicant to submit a substitute drawing and a substitute description of the
mark.
As discussed, supra, in the application, Applicant’s description of the mark
limited it to: the term “ALKE BU LAN” in a stylized and highlighted form, broken
up into three parts forming a depiction of “the today known African continent” with
the word “Expression” in stylized form under the depiction of the continent with “an
exaggerated period at the end of the letter ‘n’.” This description accurately describes
the depiction on the hang tag. Instead of requesting that Applicant submit a
substitute drawing to reflect the mark depicted on the hang tag, the Examining
Attorney requested the Applicant, who was pro se, to enter a new description of the
mark to include the other matter in the original drawing. Applicant attempted to
comply with the Examining Attorney’s requirements in her response to the second
Office Action. She retained counsel prior to responding to the third Office Action.
Counsel verified that the shirt (black background), hang tag, and “green cord
Serial No. 85604586

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necklace” were not parts of the mark and Counsel submitted a new drawing
depicting only the content on the hang tag. We agree that the amended drawing
accurately depicts the mark the Applicant intends to register. Accordingly, we
accept the amended drawing filed on August 8, 2013.
II. Likelihood of Confusion.
Our determination of the issue of likelihood of confusion is based on an
analysis of 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, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis, 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 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
While Applicant restricted her arguments regarding likelihood of confusion to
the similarities between the marks, the Examining Attorney properly also
addressed both the similarities in the goods and the channels of trade, all of which
are relevant to our determination.
We start our analysis with the second du Pont factor, the similarity or
dissimilarity of the goods. Our determination must be based on the goods as they
are identified in the registration and application. In re Dixie Restaurants Inc., 41
USPQ2d at 1534. See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
Serial No. 85604586

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1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The
identification of goods in both the application and the cited registration include the
following identical articles of clothing: “shirts, jackets, pants, hats, and caps.”
Because these goods are legally identical, we may find that there is a likelihood of
confusion under Section 2(d) with respect to all of the goods (other articles of
clothing) in the application. See, e.g., Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (If there is a likelihood of
confusion involving any of the goods set forth in the application and cited
registration, the refusal applies to all of the goods in the same class).; and Shunk
Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA 1963). Edom
Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (“We need not
consider applicant’s remaining goods because likelihood of confusion as to one of the
products listed in applicant’s description of goods in that class is sufficient to
support a conclusion that the opposition should be sustained.”). Accordingly, we find
that the second du Pont factor heavily favors a finding of likelihood of confusion.
We look next at the third du Pont factor, the similarity or dissimilarity of
established, likely to continue trade channels, noting that Applicant’s and
Registrant’s identifications of goods contain no limitations as to channels of trade.
Therefore, they are presumed to encompass all goods of the type described, and the
goods are presumed to move in all normal channels of trade and be available to all
classes of consumers for those goods. Stone Lion Capital Partners, L.P. v. Lion
Serial No. 85604586

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Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“An
application with ‘no restriction on trade channels’ cannot be ‘narrowed by testimony
that the applicant’s use is, in fact, restricted to a particular class of purchasers.’”);
Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB
2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); see also In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no
evidence regarding channels of trade, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion).
The legally identical nature of Applicant’s and Registrant’s goods and their
overlapping channels of trade not only weigh heavily in favor of a finding of
likelihood of confusion, but also reduce the degree of similarity of the marks
necessary to find a likelihood of confusion. In re Viterra, 101 USPQ2d at 1908; In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
With that in mind, we turn to the first du Pont factor, the similarity of the
marks. In comparing the marks we consider the appearance, sound, connotation
and commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).

Serial N

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- 9 -
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Serial No. 85604586

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“ALKEBULAN” is the first word in Applicant’s mark and is depicted in larger and
bolder font.
As stated in an article introduced by the Examining Attorney, “Alkebulan” is
the “mother of mankind,” “cradle of creation,” and “land of the spirit people”; and
was “the name recognized and used by the majority of inhabitants of the [African]
continent prior to systemic renaming of places by then European leaderships during
what was known as ‘New World’ expansion initiatives.”6 Rather than requesting
Applicant to translate “’Alkebulan’ as ‘mother of mankind,’ ‘cradle of creation,’ and
‘land of the spirit people,’” the Examining Attorney, relying on this article, required
Applicant to submit the following translation: “The English translation of
‘Alkebulan’ in the mark is ‘Africa.’” Office Action dated August 8, 2012. The
Examining Attorney did not provide either a dictionary definition for “Alkebulan” or
a translation from any foreign dictionary to support her translation requirement.
Moreover, we were unable to find any English dictionary definition for “Alkebulan.”7
However, Applicant did not contest the translation requirement and in her
response, dated August 28, 2012, Applicant entered the requested translation (“The

6 Article on the Transformative Thinking website (www.aktosu.com), entitled “Alkebu-Lan:
Reconnecting Values,” Exhibit to Office Action dated August 8, 2012.
7 Since the Board may take judicial notice of dictionary definitions, including online
dictionaries that exist in printed format or have regular fixed editions, we reviewed a
number of on-line dictionaries, including Merriam Webster Online (www.merriam-
webster.com), Dictionary.com (dictionary.reference.com), Cambridge Free English
Dictionary (Dictioanry.combridge.org.us) and OneLook Dictionary (www.onelook.com).
See Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); See also In re Red Bull GmbH,
78 USPQ2d 1375, 1377 (TTAB 2006).

Serial No. 85604586

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English translation of ‘Alkebulan’ is “Africa.”). It is of note that “Alkebulan” is also
translated as “Africa” in the cited registration.
In the Office Action dated August 8, 2012, the Examining Attorney also
advised the Applicant that the mark was not eligible for registration on the
Supplemental Register and that amendment to the Principal Register was required.
Again, Applicant complied with the requirement. While not requested, Applicant
voluntarily disclaimed the term “ALKEBULAN.”8 There is nothing in the record
indicating why Applicant entered the disclaimer. Further, “ALKEBULAN” is not
disclaimed in the cited registration. Based on the foregoing, we find that
“ALKEBULAN” is inherently distinctive when used on or in connection with
Applicant’s and Registrant’s articles of clothing.
As our primary reviewing Court has stated:
[T]he presence of an additional term in the mark does not
necessarily eliminate the likelihood of confusion if some
terms are identical. See, e.g., China Healthways Inst., Inc.
v. Wang, 491 F.3d 1337, 1341 [83 USPQ2d 1123] (Fed.
Cir. 2007) (the common word in CHI and CHI PLUS is
likely to cause confusion despite differences in the marks’
designs); In re West Point–Pepperell, Inc., 468 F.2d 200,
201 [175 USPQ 558] (CCPA 1972) (WEST POINT
PEPPERELL likely to cause confusion with WEST
POINT for similar goods); Lilly Pulitzer, Inc. v. Lilli Ann
Corp., 376 F.2d 324 [153 USPQ 406] (CCPA 1967) (THE
LILLY as a mark for women's dresses is likely to be
confused with LILLI ANN for women's apparel including
dresses); In re United States Shoe Corp., 229 USPQ 707

8 While not requested by the Examining Attorney, Applicant voluntarily disclaimed the
word “ALKEBULAN” in its Response dated August 28, 2012. Voluntary disclaimers of any
component of a mark sought to be registered are permitted. Section 6(a) of the Trademark
Act, 15 U.S.C. §1056(a); TMEP § 1213.01(c). See In re MCI Commc’ns Corp., 21 USPQ2d
1534 (Comm’r Pats. 1991) (Section 6(a) permits an applicant to disclaim matter voluntarily,
regardless of whether the matter is registrable or unregistrable).
Serial No. 85604586

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(TTAB 1985) (CAREER IMAGE for women's clothing
stores and women's clothing likely to cause confusion with
CREST CAREER IMAGES for uniforms including items
of women's clothing).”
In re Mighty Leaf Tea, 94 USPQ2d at 1260 (finding likelihood of confusion between
the mark ML for personal care and skin care products and for skin
care products.). In this case, Applicant’s mark and the mark in the cited registration
contain the identical word, and the addition of the word “EXPRESSION” does not
eliminate the likelihood of confusion between the two marks, nor does the design
elements, which we note both include depictions of the continent of Africa.
Thus, the first du Pont element weighs in favor of a finding of likelihood of
confusion.
Having considered all the evidence and argument on the relevant du Pont
factors, we find that Applicant’s mark is likely to cause confusion with the cited
registration.
Decision: The refusal to register Applicant’s mark ALKEBULAN
EXPRESSION & design under Section 2(d) is affirmed and the rejection of the
amended drawing is reversed.