Dare Fashion LLC

Trademark Trial and Appeal BoardAug 31, 2021

88748614 (T.T.A.B. Aug. 31, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: August 31, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Dare Fashion, LLC Serial No. 88748614 _____ Nina Yablok of Law Office of Nina Yablok for Dare Fashion, LLC. John E. Michos, Trademark Examining Attorney, Law Office 118, Michael W. Baird, Managing Attorney. _____ Before Larkin, Dunn and English Administrative Trademark Judges. Opinion by English, Administrative Trademark Judge: Dare Fashion, LLC (“Applicant”) seeks registration on the Principal Register of the standard character mark DARE for “Women’s clothing, namely, dresses and tops” in International Class 25.1 1 Application Serial No. 88748614; filed January 6, 2020 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming first use at least as early as October 1, 2006 and first use in commerce at least as early as October 14, 2006. References to the prosecution history are to the USPTO Trademark Status and Document Retrieval system (TSDR) by page number in the downloadable .pdf format. Citations to the briefs are to TTABVUE, the Board’s online docket system. Serial No. 88748614 - 2 - The Examining Attorney has refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the standard character mark DARE for “apparel, namely, tops and bottoms, t-shirts, shirts, sweatshirts, tank tops, jackets, coats, hats, caps, visors, beanies, scarves, gloves”2 and the typed mark D.A.R.E. for “clothing, namely tee shirts, jackets, sweat shirts, polo shirts, shorts, caps, ponchos, wrist bands,”3 both in International Class 25 and owned by the same entity (“Registrant”). When the refusal was made final, Applicant requested reconsideration and appealed. The Examining Attorney denied the request for reconsideration and the appeal proceeded.4 The appeal is fully briefed.5 2 Registration No. 5386780; issued January 23, 2018. 3 Registration No. 1965136; issued April 2, 1996; twice renewed. The registration covers goods in additional classes, but the Examining Attorney limited his arguments to the goods in Class 25. A typed mark is the legal equivalent of a standard character mark. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (explaining that in 2003 there was a non-substantive change in nomenclature from a “typed mark” to a “standard character mark”). 4 The appeal was dismissed on April 14, 2021 because Applicant did not f ile a brief. 9 TTABVUE. On April 16, 2021, Applicant filed a request to set aside the dismissal along with its appeal brief. 10 TTABVUE. The Board “accepted” the request and reinstated the appeal on April 19, 2021. 11 TTABVUE. 5 We have considered the evidence attached to Applicant’s reply brief only to the extent it was made of record during prosecution. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“The record in the application should be complete prior to the filing of the appeal. Evidence should not be filed with the Board after the filing of a notice of appeal.”). We discourage the practice of attaching materials in the record to briefs for the reasons discussed in In re Michalko, 110 USPQ2d 1949, 1950 (TTAB 2014) (“Parties to Board cases occasionally seem to be under the impression that attaching previously-filed evidence to a brief and citing to the attachments, rather than to the original submission is a courtesy or a convenience to the Board. It is neither.”). Applicant’s Internet evidence does not include the required URL addresses and/or dates, In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018), but any objection to the evidence on this Serial No. 88748614 - 3 - We affirm the refusal to register. I. Analysis Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on likelihood of confusion. In re E. I. DuPont de Nemours & Co, 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co. Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor for which there is argument and evidence. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2 Software, Inc. v. M2 Commc’ns., Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relatedness of 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 basis has been waived because the Examining Attorney did not inform Applicant of this deficiency and treated Applicant’s Internet evidence as of record. In re Mueller Sports Meds., Inc., 126 USPQ2d 1584, 1586 (TTAB 2018) (objection may be deemed waived if examining attorney fails to object and advise applicant of the proper way to make Internet evidence of record). Serial No. 88748614 - 4 - characteristics of the goods and differences in the marks.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). We discuss these factors and the other relevant DuPont factors below. Because the punctuation in the cited mark D.A.R.E. arguably contains an additional point of difference with Applicant’s mark, we confine our analysis to whether there is a likelihood of confusion between Applicant’s mark and the standard character mark DARE subject to Registration No. 5386780 (the “Cited Mark” or “Cited Registration”). Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611, at *6 (TTAB 2020) (confining 2(d) analysis to most similar pleaded mark); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010) (comparing applicant’s mark to most similar cited mark). A. Similarity or Dissimilarity of the Marks Applicant does not dispute that its mark is identical to Registrant’s standard character mark in appearance and sound. Applicant, however, argues that the “connotation and commercial impact” of the marks is different because the “connotation of [Applicant’s mark] is trendy dresses that show off a woman’s curves” Serial No. 88748614 - 5 - whereas “Registrant’s mark stands for ‘Drug Abuse Resistance Education’” so the Cited Mark connotes “an anti-drug campaign.”6 Applicant’s argument is misplaced. The restrictions to which Applicant points (dresses highlighting women’s curves v. an anti-drug message) are not reflected in Applicant’s application and the Cited Registration. We cannot consider extrinsic arguments concerning how the marks are actually used. Rather, we must consider the connotations and commercial impressions of the marks as they appear in the application and Cited Registration for the goods as identified therein. In re i.am.symbolic, llc, 123 USPQ2d at 1749 (“The Board properly analyzed likelihood of confusion based on the mark as applied to the goods recited in Symbolic’s application compared to registrants’ marks and the goods recited in their registrations.”); In re Embiid, 2021 USPQ2d 577, at *18 (TTAB 2021) (“[T]here is no evidence here, or other reason to find, that the mark TRUST THE PROCESS has one meaning when used with shoes, and a second and different meaning when used with shirts and sweatshirts, based on the nature of the respective goods.”). There is nothing in the respective identifications of goods that would result in the identical mark DARE having one meaning for Applicant’s goods and a second and different meaning for Registrant’s goods. The identity of the marks strongly supports a finding that confusion is likely. 6 Reply Brief, 13 TTABVUE 3-4. Serial No. 88748614 - 6 - B. Similarity or Dissimilarity of the Goods, Channels of Trade, and Class of Consumers Under the second DuPont factor we consider “[t]he similarity or dissimilarity and nature of the goods or services” and under the third DuPont factor we consider “the similarity or dissimilarity of established, likely-to-continue trade channels.” DuPont, 177 USPQ at 567; see also In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018). We must base our comparison of the goods on the identifications in Applicant’s application and the Cited Registration.7 See Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The goods need not be identical or directly competitive for there to be a likelihood of confusion.8 The evidence need only establish that the goods are related in some manner, or the conditions surrounding their marketing are such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source. Coach Servs. Inc. v. Triumph Learning LLC, 688 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); 7 In its appeal brief, 10 TTABVUE 5, Applicant states that it “is happy to limit the description of goods from “apparel, namely, tops and bottoms, t-shirts, shirts, sweatshirts, tank tops, jackets, coats, hats, caps, visors, beanies, scarves, gloves,” which is Registrant’s identification of goods, to “Women’s clothing, namely, dresses and tops,” which is already Applicant’s current identification of goods. December 28, 2020 Request for Reconsideration, TSDR 3. 8 Accordingly, Applicant’s argument in its reply brief that “Registrant does not sell dresses” is immaterial. 13 TTABVUE 6. Serial No. 88748614 - 7 - In re Rexel, Inc., 223 USPQ 830, 831 (TTAB 1984). It is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed in the identification of goods or services in a particular class. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, at *6 (TTAB 2019); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015). The goods here are identical and legally identical, in part. Applicant’s application and the Cited Registration both cover “tops,” and the “t-shirts, shirts, sweatshirts, tank tops, jackets and coats” identified in the Cited Registration are encompassed within the broad identification of “tops” in the application.9 In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). Applicant makes several arguments about the purported “competitive distance” between Applicant’s and Registrant’s goods,10 namely, that: (1) Applicant sells “Gothic, Victorian, Renaissance, Steampunk, and Bohemian dresses for ‘curvy women’” whereas Registrant is “a not for profit organization providing educational resources for schools and police departments; and presenting programs and conferences in the field of drug abuse prevention” that incidentally sells “slogan 9 We take judicial notice that a “top” is “[a] garment worn on the upper body.” MERRIAM- WEBSTER ONLINE DICTIONARY, www.merriam-webster.com/dictionary/top (last visited August 25, 2021). In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006) (“As a general rule, the Board may take judicial notice of dictionary evidence.”). 10 Reply Brief, 13 TTABVUE 6. Serial No. 88748614 - 8 - oriented items, promoting an anti-drug campaign”;11 (2) Applicant’s goods are “fashion items” while Registrant’s clothing is purchased to make an “anti-drug statement”; (3) Applicant and Registrant “offer a SMALL range of clothing types and styles, being sold for different purposes”;12 (4) the Cited Mark is a “significant feature of the registrant’s clothing” intended to promote an anti-drug message while “[A]pplicant’s mark is on its label [and] is not a feature of its goods”;13 and (5) “[s]omeone looking to buy a D.A.R.E. t-shirt would not buy applicant’s dresses[.]”14 The first four arguments are an impermissible attempt to limit the scope of the goods identified in Applicant’s application and the Cited Registration. “It is well established that the Board may not read limitations into an unrestricted registration or application.” In re i.am.symbolic, llc, 123 USPQ2d at 1748; See also, e,g., In re Dixie Rests., 41 USPQ2d at 1534 (“Indeed, the second DuPont factor expressly mandates consideration of the similarity or dissimilarity of the [goods or] services ‘as described in an application or registration.’”). Registrant’s goods are not limited to clothing that makes “an anti-drug statement” nor are Applicant’s goods restricted as to the style of clothing. We must assume that Applicant and Registrant offer all types of the identified clothing. There is no “competitive distance” between the goods here because they are, in part, identical and legally identical. 11 Id. at 4, 7. 12 Id. at 7. 13 Id. at 7-8. 14 Id. at 4. Serial No. 88748614 - 9 - As for the fifth argument, the issue is not whether consumers will confuse the goods themselves but rather whether consumers will confuse the source of the goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ at 831. Turning to the channels of trade, Applicant argues that it sells its goods through “various mass marketing retail clothing outlets such as Amazon, Sears, and Walmart in addition to Applicant’s website and its Facebook and Etsy pages” whereas “Registrant has one exclusive merchandise provider, named darecatalog.com. Even on Amazon, darecatalog.com, is shown as the exclusive licensed vendor, and the products are specifically listed as ‘officially licensed’ in the headline of the product.” 15 Applicant further argues that the target consumers are different because Applicant’s consumers are “curvy women” looking for gothic, Victorian and renaissance clothing while Registrant’s goods are purchased by consumers seeking to convey an anti-drug message.16 Again, as when we compare the goods, we are bound to compare the trade channels and classes of consumers for the goods identified in the involved application and Cited Registration. Octocom Sys., 16 USPQ2d at 1787; see also In re Detroit Athletic Co., 128 USPQ2d at 1052. There are no restrictions as to trade channels or target consumers in the application or Cited Registration, and Applicant’s and Registrant’s goods are identical and legally identical, in part. Accordingly, we must presume that 15 Id. at 7. 16 Id. at 4. Serial No. 88748614 - 10 - the identical and legally identical goods travel in identical channels of trade. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same). In view of the foregoing, the second and third DuPont factors strongly support a finding of likelihood of confusion. C. Strength of the Cited Mark Evidence of third-party use bears on the strength or weakness of a mark. In re i.am.symbolic, llc, 123 USPQ2d at 1751; Jack Wolfskin Ausrustung Fur Draussen GmbH & Co KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Contending that the registered mark is entitled to only a narrow scope of protection, Applicant argues “[c]learly the fact that when there are 39,800,000 hits when googling ‘dare’ + ‘Clothing’ OR ‘Clothes’ only a few of which hits are Applicant (on the first page) ‘dare’ even with the limitation of clothing or clothes is a very popular association … and an extremely weak mark.”17 Applicant’s Google search results have limited probative value. Applicant submitted only a few pages of results and the results are truncated so it is difficult to 17 Appeal Brief, 10 TTABVUE 4. Serial No. 88748614 - 11 - ascertain the nature of the references. See, e.g., In re Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006) (rejecting an applicant’s attempt to show weakness of a term in a mark through citation to a large number of GOOGLE “hits” because the results lacked sufficient context). From what we can discern, many of the references are to Applicant and Registrant while other results do not make any reference to the term “dare.” The remaining results are as follows:18  Dare – Online Store – Texas Located: “Make a fashion statement with our original products. From Animal Crossing to other themes. Excellent Section of accessories and Tees for Any Occasion. Shop Dare Now!”;  Virginia Dare Dress Co.;  Dare2b active wear;  Silver Dare Fashion Women’s Clothes at Walmart.com;  If You Dare Clothing on zazzle.com;  Dare to Be Vintage – listed as a clothing business on the Better Business Bureau website;  Fairdare: “I dare you to wear, care for, and repair your clothes | dare you to buy only ….”;  BEST OF TRUTH OR DARE QUESTIONS: Appears to be a suggestion for a “dare” in the game Truth or Dare that involves changing clothes with someone of the opposite gender; 18 June 12, 2020 Office Action Response, TSDR 17-18; December 28, 2020 Request for Reconsideration, TSDR 5-6. Serial No. 88748614 - 12 -  “500+Dare to wear ideas in 2020”; “500+Dare to Wear….!! ideas in 2020”; “Dare To Go Sheer This Fall with These 10 So-Chic Pieces”; and “Dare To Be Different – No Glory Clothing”:19 Appear to be pages on the social media cite Pinterest;  “Do you dare count your clothes? | The Fearse Family”: Appears to be a blog;  Dare to Wear – Goodbye Valentino: Appears to be a blog about “making your own clothes”; and  Dare to wear longer – Bamboo clothing: “Do you dare to wear longer. We’ve become so used to thinking that we must wash our clothes after every wear that few of us even question it.”20 These references, only a handful of which appear to be to marks for clothing, are simply not the quantity or type of evidence sufficient to demonstrate that the Cited Mark is weak, particularly given the identity of the marks, goods, and channels of trade. See In re i.am.symbolic, 123 USPQ2d at 1751 (evidence of third-party use for the same or similar goods fell short of “ubiquitous” or “considerable” use); Jack Wolfskin, 116 USPQ2d at 1136 (discussing “voluminous evidence” of registration and use of paw print design elements); Juice Generation, 115 USPQ2d at 1674 & n.1 (referring to evidence of “a considerable number,” 26 third-party marks). We find the registered mark is entitled to a normal scope of protection. Accordingly, the strength of the Cited Mark is neutral in our likelihood of confusion analysis. 19 This reference is to a Pinterest page with a country code in South Korea. 20 These references are to a U.K. website, bambooclothing.co.uk. Serial No. 88748614 - 13 - D. Absence of Evidence of Actual Confusion Applicant further argues that it “has been using Dare associated with the sale of daring women’s outfits since 10/15/2006 and Registrant has been using DARE associated with the sale of tshirts etc. since 1988. Applicant has received no notice of conflict[.]”21 We construe this as an argument that there has been no actual consumer confusion. Generally, the “lack of evidence of actual confusion carries little weight, especially in an ex parte context” and that is the case here. In re Majestic Distilling Co. Inc., 65 USPQ2d at 1205 (internal citation omitted). We have little evidence pertaining to the nature and extent of use by Applicant and Registrant so we cannot conclude that there has been a meaningful opportunity for confusion to have occurred. Double Coin Holdings, 2019 USPQ2d 377409, at *9 (explaining that “for the absence of actual confusion to be probative, there must have been a substantial opportunity for confusion to have occurred”); Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the absence of actual confusion depends on there being a significant opportunity for actual confusion to have occurred). We also do not know whether Registrant is aware of any instances of actual confusion. In re Guild Mort. Co., 2020 USPQ2d 10279, *7 (TTAB 2020) (“[I]n this ex parte context, there has been no opportunity to hear from Registrant about whether it is aware of 21 Reply Brief, 13 TTABVUE 8. In making this argument, Applicant mentions “the market interplay between the parties.” Id. We do not construe this as a reference to the tenth DuPont factor, namely, “[t]he market interface between applicant and the owner of the prior mark” because this factor concerns whether there are any agreements or prior dealings between Applicant and Registrant and there is no such evidence of record. Serial No. 88748614 - 14 - any reported instances of confusion. We therefore are getting only half the story.”); In re Opus One Inc., 60 USPQ2d at 1817 (absence of actual confusion in ex parte cases “entitled to limited probative weight” because the Board generally has no information regarding whether registrant is aware of any actual confusion and it is difficult to determine whether there has been a significant opportunity for confusion to have occurred). In any event, the test under Section 2(d) is not actual confusion but likelihood of confusion. In re Kangaroos U.S.A., 223 USPQ 1025, 1027 (TTAB 1984). Accordingly, the absence of any actual confusion is neutral in our likelihood of confusion analysis. II. Conclusion Applicant’s mark and the Cited Mark are identical and identify identical and legally identical goods, in part, sold through identical channels of trade to the same ordinary purchasers. The strength of the Cited Mark and the absence of actual confusion are neutral factors. Accordingly, we find that Applicant’s standard character mark DARE is likely to cause confusion with the identical Cited Mark DARE.22 Decision: The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act is affirmed. 22 Applicant asserts that DARE “is a significant mark for the Applicant given Amazon’s benefits to registered owners of US Trademarks” and “[t]o deny Applicant access to [such benefits] because of a questionable ‘confusion’ with a company selling different products and an extremely weak mark is contrary to the spirit of trademark laws.” Appeal Brief, 10 TTABVUE 4-5. The evidence, however, demonstrates that confusion is not merely “questionable,” but very likely.