Masonlee, Inc., dba Michelle Mason

Trademark Trial and Appeal Board

Jun 27, 2014

No. 85694174 (T.T.A.B. Jun. 27, 2014)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: June 27, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Masonlee, Inc., dba Michelle Mason
________

Serial No. 85694174
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Ginam Lee of Lee Counsel APLC for Masonlee, Inc., dba Michelle Mason.

Deborah E. Lobo, Trademark Examining Attorney, Law Office 109 (Dan
Vavonese, Managing Attorney).
_______

Before Cataldo, Bergsman and Masiello,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Masonlee, Inc., dba Michelle Mason
(“Applicant”) to register on the Principal Register the mark MASON BY
MICHELLE MASON (standard characters) for the following goods in
International Class 25:1

1 Application Serial No. 85694174 was filed on August 2, 2012 under Section 1(a) of
the Trademark Act, based upon applicant’s assertion of 2002 as a date of first use of
the mark anywhere and in commerce.
“The name(s), portrait(s), and/or signature(s) shown in the mark identifies
MICHELLE MASON, whose consent(s) to register is made of record.”
Applicant claims ownership of prior Registration No. 3208895 for the mark
MICHELLE MASON for “clothing, namely jackets, sweaters, tops, bottoms, skirts,
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Athletic apparel, namely, shirts, pants, jackets, hats and caps,
athletic uniforms; Baseball caps and hats; Bathing suits;
Bathing suits for men; Belts; Belts for clothing; Blouses;
Bottoms; Caps; Clothing, namely, wrap-arounds; Coats; Coats
for men and women; Coats made of cotton; Coats of denim;
Combinations; Denim jackets; Denims; Drawers; Dress shirts;
Dress suits; Dresses; Dresses made from skins; Dressing gowns;
Evening dresses; Hats; Headbands for clothing; Hooded sweat
shirts; Hoods; Jackets; Jeans; Knit bottoms; Knit dresses; Knit
skirts; Ladies' suits; Leather belts; Leather coats; Leather hats;
Leather pants; Leather skirts; Leisure suits; Lingerie; Maternity
clothing, namely, shirts, tops, blouses, pants, jackets, dresses,
lingerie, hats, coats, skirts, suits, socks, hats, jumpsuits;
Maternity lingerie; Men's and women's jackets, coats, trousers,
vests; Men's socks; Men's suits; Men's suits, women's suits;
Pants; Scarves; Shifts; Shirts; Shirts and short-sleeved shirts;
Shirts and slips; Shirts for infants, babies, toddlers and
children; Shirts for suits; Short-sleeved or long-sleeved t-shirts;
Short-sleeved shirts; Skirts; Skirts and dresses; Socks; Suit
coats; Suits; Suits of leather; Sweat shirts; Sweat suits;
Sweaters; Swim suits; Swimwear; T-shirts; Tee shirts; Top
coats; Tops; Track suits; Training suits; Trench coats; Wearable
garments and clothing, namely, shirts; Wedding dresses;
Women's clothing, namely, shirts, dresses, skirts, blouses;
Woven bottoms; Woven dresses; Woven skirts.

The Trademark Examining Attorney refused registration under
Section 2(d) of the Trademark Act on the ground of likelihood of confusion
with the following two marks previously registered on the Principal Register:
Registration No. 0731581 (‘581 Reg.) for the mark MASON (typed
form)2 for “footwear made wholly or partly of leather-namely,

pants, dresses, suits, shirts, coats, blouses, trench coats, jeans and lingerie;
headwear, namely scarves, hats and caps; swimwear, belts, gloves; footwear, namely
shoes, boots, socks and sandals.”
Serial No. 85694174

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shoes, oxfords, slippers, and boots,” in International Class 25;3 and
Registration No. 4020375 (‘375 Reg.) for the mark THE MASON
(standard characters) for “gloves,” in International Class 25.4
When the refusal was made final, Applicant appealed. Applicant and
the Examining Attorney filed main briefs and Applicant filed a reply brief.
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, though not exclusive, considerations are the similarities
between the marks and the similarities between the goods. 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).
‘581 Reg.
For purposes of our analysis of the du Pont factors as they apply to the
instant refusal to register, we will concentrate our discussion on cited

2 A mark depicted as a typed drawing is the legal equivalent of a standard character
mark. See Trademark Rule 2.52, 37 C.F.R. §2.52.
3 Issued to Mason Shoe Manufacturing Co. on May 15, 1962 under Section 2(f) of the
Trademark Act. Section 8 affidavit accepted; Section 15 affidavit acknowledged.
Third Renewal.
4 Issued to Big Time Holdings, Inc. on August 30, 2011.
Serial No. 85694174

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Registration No. 0731581 (‘581 Reg.) for the mark MASON (typed form) for
“footwear made wholly or partly of leather-namely, shoes, oxfords, slippers,
and boots.” We find this registration to be the most relevant for our du Pont
analysis, and we proceed accordingly. Since this is the most relevant
registration, if we find a likelihood of confusion, we need not find it as to the
other. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
The Goods
We begin by comparing Applicant’s goods with those of Registrant. In
making our determination under the second du Pont factor, we look to the
goods as identified in the involved application and cited registrations. See
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be decided on the basis
of the identification of goods set forth in the application regardless of what
the record may reveal as to the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to which the sales of
goods are directed.”). See also Paula Payne Products v. Johnson Publishing
Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
involving the issue of likelihood of confusion must be decided on the basis of
the respective descriptions of goods.”).
Serial No. 85694174

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In this case, Applicant’s goods include a wide variety of clothing items
and Registrant’s goods are recited as “footwear made wholly or partly of
leather-namely, shoes, oxfords, slippers, and boots.” The Examining
Attorney, in support of her contention that the goods at issue are
commercially related, has made of record examples of web pages from third-
party e-commerce sites offering goods under the same mark that are similar
in nature to those of both Applicant and Registrant, including the following:5
eddiebauer.com/ (clothing, including shirts, pants and swimwear;
shoes);

llbean.com/ (clothing, including shirts, pants and sweaters; shoes);

ralphlauren.com/ (clothing, including shirts, pants, dresses and
sweaters; shoes);

jcrew.com/ (clothing, including shirts, pants, swimwear, suits, ties and
hats; shoes);

papayaclothing.com/ (clothing, including shirts, pants, dresses,
swimwear, shoes);

cabelas.com/ (clothing, including shirts and sweatshirts; footwear);

rei.com/ (footwear; clothing, including shirts, pants, jackets, athletic
wear, dresses, skorts, hats and swimwear; children’s clothing);

ae.com/ (shoes; clothing, including shorts, pants, shirts, jackets, skirts
and swimwear);

mytheresa.com/ (clothing, including sweaters; shoes);

nordstroms.com/ (shoes; clothing, including pants, sweaters, tops,
dresses, skirts, jackets, shorts, shirts, suits, ties and coats);

macy’s.com/ (shoes; clothing, including pants, dresses, shirts, tops,
jackets, skirts and swimwear);

5 Examining Attorney’s June 20, 2013 final Office action, Attachments 1-184.
Serial No. 85694174

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barneys.com/ (clothing, including dresses, pants shorts, tops and shirts;
shoes); and

lennyshoe.com/ (clothing, including jackets and tops; footwear).
These websites demonstrate that certain of Applicant’s various items of
clothing and Registrant’s footwear and shoes are marketed and sold together
under a single mark. We find that customers therefore would readily
perceive both Applicant’s and Registrant’s goods as being related. Moreover,
it is not necessary for the examining attorney to prove likelihood of confusion
with respect to each item of goods identified in Applicant’s single-class
application; if there is likelihood of confusion with respect to any of
Applicant’s identified goods, the refusal of registration must be affirmed. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981). The evidence of record in this case indicates that the
goods of Applicant and Registrant are commercially related apparel that are
marketed and sold together under a common designation, and thus may be
encountered together by consumers. The similarity of the goods is a factor
that weighs in favor of a finding of likelihood of confusion.
Channels of Trade and Classes of Consumers
In this case, neither Applicant’s nor Registrant’s identification of goods
recites any limitations on the channels of trade in which the goods may be
encountered or the classes of consumers to whom they may be marketed.
Absent any such restrictions, the goods are presumed to move in all normal
Serial No. 85694174

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channels of trade and be available to all classes of potential consumers of
such goods. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In each
case, the customers would include ordinary consumers of clothing, footwear
and shoes; and the channels of trade would include retail and wholesale
apparel stores and other distribution channels for clothing, footwear and
shoes (including the online stores discussed above).
The overlap in trade channels and classes of purchasers are factors
that further weigh in favor of a finding of likelihood of confusion.
The Marks
We turn then to the first du Pont factor, i.e., whether Applicant’s
MASON BY MICHELLE MASON mark and Registrant’s MASON mark are
similar or dissimilar when viewed in their entireties in terms of appearance,
sound, connotation and overall commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). We note initially that the test under
the first du Pont factor is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial impression that
confusion as to the source of the goods or services offered under the respective
marks is likely to result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression
of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
Serial No. 85694174

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1975). Since the products at issue are identified generally is items of
clothing, shoes and footwear, the average purchaser is an ordinary consumer.
Applicant attempts to distinguish its mark MASON BY MICHELLE
MASON from Registrant’s mark MASON by adding “By Michelle Mason.”
However, rather than distinguishing the marks, Applicant’s addition of “By
Michelle Mason” may lead consumers already familiar with Registrant’s
mark MASON to mistakenly believe that “By Michelle Mason” is a house
mark that is used with some of Registrant’s goods, or that it denotes a
particular designer of certain goods under the MASON mark. On the other
hand, those familiar with Applicant’s mark upon encountering Registrant’s
mark may mistakenly believe that the goods emanate from the same source
and that “By Michelle Mason” merely further identifies that single source.
See In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (SPARKS
BY SASSAFRAS is similar to SPARKS). See also Sakes & Co. v. TFM Indus.,
Inc., 5 USPQ2d 1762, 1764 (TTAB 1987) (FOLIO BY FIRE ISLANDER is
similar to FOLIO); In re Dennison, 220 USPQ 1015, 1016 (TTAB 1983)
(KAGAROO is similar to KANGAROO BY DENNISON). In other words, we
find that consumers are likely to view the marks as variations on each other,
but pointing to a common source. See In Re Mighty Leaf Tea, 601 F.3d 1342,
94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (ML is likely to be perceived as a
shortened version of ML MARK LEES.).
Serial No. 85694174

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Applicant further argues that Registrant’s MASON mark is a surname
having an additional meaning as a “skilled worker who builds by laying units
of substantial material (as stone or brick).6 Accepting Applicant’s argument
in this regard, we observe that the term MASON in Applicant’s MASON BY
MICHELLE MASON has the same dual significance. Thus, the term
MASON has the same connotation in both marks, regardless of the inherent
or commercial strength of the term. Furthermore, to the extent the term
MASON comprising Registrant’s mark and appearing twice in Applicant’s
mark would be perceived as suggesting a stone mason, there is no evidence to
suggest that such term would have a different connotation when applied to
Applicant’s goods than it would when applied to those of Registrant. As a
result, even allowing for any surname or other significance of the term
MASON, the fact that Applicant has incorporated the registered mark
greatly increases the level of similarity between the marks.
In view of the foregoing, we find that the similarities between the
marks outweigh the differences, and that this du Pont factor also weighs in
favor of a finding of likelihood of confusion.

6 Merriam-Webster Dictionary Online. The Board grants Applicant’s request to
take judicial notice of this dictionary definition. In re Premiere Distillery, LLC, 103
USPQ2d 1483, 1484 (TTAB 2012); University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).

Serial No. 85694174

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Actual Confusion
Another du Pont factor discussed by Applicant and the Examining
Attorney is the lack of instances of actual confusion. Applicant asserts7 that
the absence of actual confusion since 2002 suggests no likelihood of confusion.
However, as pointed out by the Examining Attorney, it is not necessary to
show actual confusion in order to establish likelihood of confusion. See Weiss
Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed.
Cir. 1990). Particularly in an ex parte proceeding, where we have no
evidence regarding the extent or manner of use of Registrant’s mark (nor any
other input from Registrant), Applicant’s assertion of the absence of actual
confusion is of little probative value in our determination on the issue of
likelihood of confusion because the Board cannot readily determine whether
there has been a significant opportunity for actual confusion to have
occurred, such that the absence of confusion is meaningful. See In re Opus
One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Kangaroos U.S.A., 223
USPQ 1025, 1026-7 (TTAB 1984). In those situations where the Board has
recognized the absence of actual confusion as probative in an ex parte setting,
there existed a “confluence of facts” which together strongly suggested that
the absence of confusion was meaningful and should be given probative
weight. See In re Opus One Inc., 60 USPQ2d at 1817. There is no evidence
that such a “confluence of facts” is present in this record.

7 Brief, p. 8-9.

Serial No. 85694174

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Applicant’s Prior Registration
We also consider the thirteenth du Pont factor in this case, namely,
any other established probative fact. Applicant owns a prior registration for
the mark MICHELLE MASON for various items of clothing and footwear.
Applicant asserts that its prior mark recites goods including footwear and
has coexisted with the cited mark for years.
The coexistence of the cited registration with Applicant’s prior
registration does not compel a finding that there is no likelihood of confusion.
To the extent that Applicant is making an equitable estoppel argument, it is
not well taken. The present application attempts to register a mark that is
not the same as the registered mark, but rather a mark that is actually closer
to the registered mark than are Applicant’s three previously registered
marks. Further, as discussed earlier, the goods are related. As is often
stated, each case must be decided on its own facts, and occasionally an
applicant with a registration for the same or very similar marks may be
unable to obtain subsequent registrations. See In re Sunmarks Inc., 32
USPQ2d 1470, 1472 (TTAB 1994). See also In re Nett Designs Inc., 236 F.3d
139, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if prior registrations had
some characteristics similar to [applicant’s] application, the PTO’s allowance
of such prior registrations does not bind the Board or this court.”). Further,
any suggestion that there has been no actual confusion between the marks,
based on the coexistence of Applicant’s previously issued registration and the
Serial No. 85694174

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cited registration, is entitled to little probative value in the context of this ex
parte appeal. In re Majestic Distilling Co., Inc., 65 USPQ2d at 1205.
Summary
Neither Applicant nor the Examining Attorney has discussed any of
the remaining du Pont factors. We note, nonetheless, that none seems to be
applicable, inasmuch as we have no evidence with respect to them.
In light of the foregoing, we conclude that consumers familiar with
Registrant’s goods sold under its above-referenced MASON mark would be
likely to believe, upon encountering Applicant’s goods offered under its
MASON BY MICHELLE MASON mark that the goods originated with or are
associated with or are sponsored by the same entity.
Decision: The refusal to register is affirmed as to Registration No.
0731581.8

8 In view of this decision, we need not consider the Examining Attorney’s refusal to
register as to the remaining cited registration.