Rocket Trademarks Pty Ltd.v.Phard S.p.A.

Trademark Trial and Appeal Board

Feb 25, 2011

No. 91172486 (T.T.A.B. Feb. 25, 2011)

Oral Hearing: Mailed:
July 13, 2010 February 25, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Rocket Trademarks Pty Ltd.

v.

Phard S.p.A.
_____

Opposition No. 91172486
to application Serial No. 76519886
filed on June 5, 2003
_____

Duane M. Byers of Nixon & Vanderhye, P.C. for Rocket
Trademarks Pty Ltd.

Michael J. Striker for Phard S.p.A.
______

Before Seeherman,1 Grendel, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Rocket Trademarks Pty Ltd. (hereinafter, “opposer”),
has opposed the application of Phard S.p.A. (“applicant”),
an Italian corporation, to register the following mark:

1 Administrative Trademark Judge James T. Walsh participated in
the oral hearing held before the Board on July 13, 2010. He has
since retired from federal service. Therefore, Judge Ellen
Seeherman has been substituted for Judge Walsh as a member of the
panel deciding this case. The change in the composition of the
panel does not necessitate a rehearing of the oral argument.
See, In re Bose, 772 F.2d 866, 227 USPQ 1, 4 (Fed. Cir. 1985).
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91172486
2

for the following goods:
Printing paper, postcard paper, wrapping paper, writing
and drawing paper, address and shipping adhesive
labels, notebooks, memo paper, sketch books, coin,
photograph and stamp albums, pencils, pens, crayons,
pastels, rubber erasers, photograph mounts,
photographs, magnetic blackboards, drawing paper,
letter holders, writing tablets, calendars, diaries,
and postcards in International Class 16;

Leather and imitation leather sold in bulk; goods made
of these materials, namely, bags, handbags, briefcases,
suitcases, wallets, document cases, purses, trunks and
traveling bags, animal skins and hides; umbrellas,
parasols and walking sticks, whips, harness and
saddlery in International Class 18; and

Clothing, namely, jackets, shirts, coats, trousers,
pullovers, ties, socks, stockings, gloves, scarves,
hats, swimsuits, tracksuits, t-shirts, underwear,
jeans, nightwear, shoes, boots, slippers and belts in
International Class 25.2

As the ground for opposition to the registration of
applicant’s mark in all three classes of goods, opposer
alleges that it (and its predecessor in interest and related
companies) “has adopted and continuously used the term

2 Application Serial No. 76519886, based on an Italian
registration under Section 44(e). The application has been
accorded a priority date of December 23, 2002, under Section
44(d), based on the date of filing of the application for the
Italian registration.

Opposition No. 91172486
3
ELEMENT as a trademark for goods in, inter alia,
International Classes 16, 18, 25 and 28, and for services in
International Class 35” and that such use has been “long
prior to any date of first use upon which applicant can
rely”; that it is the owner of ten registrations and one
application for trademarks that include the term ELEMENT;3
that opposer has successfully policed its marks; and that
“applicant’s trademark so resembles opposer’s previously
used, registered and applied for ELEMENT trademarks as to be
likely, when used in connection with the goods set forth in
applicant’s application...to cause confusion, mistake or
deception within the meaning of Section 2(d) of the
Trademark Act.” Opposer’s pleaded registrations, which were
made of record by submitting status and title copies via
notice of reliance, include the following:
ELEMENT (in typed characters) for:
clothing, namely T-shirts, sweatshirts, sweatpants,
pants, shorts, hats and caps in International Class
25, and sporting goods, namely skateboards and
skateboard accessories, namely, wheels and trucks;
and toys, namely, fingerboards in International
Class 28;4

ELEMENT (in typed characters) for:
footwear, namely sport shoes in International Class
25;5

3 The notice of opposition was amended pursuant to a motion
granted by the Board on June 24, 2009. By way of the amendment,
inter alia, opposer pleaded ownership of additional
registrations.
4 Registration No. 2641494, issued on October 29, 2002. Section
8 declaration accepted.
5 Registration No. 3055790, issued on January 31, 2006.
Opposition No. 91172486
4
ELEMENT (in typed characters) for:
bags, namely, beach bags, all-purpose sport bags,
carry bags, barrel bags, tote bags, waist packs,
backpacks, knapsacks, school bags, satchels,
shoulder bags, waist bags, clutch bags, hand bags,
cosmetic bags sold empty, jewelry bags for travel,
leather bags for packing merchandise, leather and
textile shopping bags, mesh shopping bags, wallets,
purses, clasps, cases, namely, travel cases,
overnight cases, briefcases, document cases, credit
card cases, business card cases, cosmetic cases,
toiletry cases and vanity cases sold empty, jewelry
cases of leather or textile, key cases and key
chains, travel goods in this class, namely, travel
bags, luggage trunks, luggage cases, luggage bags,
luggage tags and straps for luggage, umbrellas in
International Class 18;6

ELEMENT (in standard characters) for:
retailing and wholesaling services, namely, retail
and wholesale store services featuring cosmetics,
jewelry and watches, sunglasses and videos, luggage
and bags, wallets and purses, clothing, footwear,
headgear, and sporting goods; retail store outlets
featuring cosmetics, jewelry and watches, sunglasses
and videos, luggage and bags, wallets and purses,
clothing, footwear, headgear, and sporting goods;
customer loyalty services featuring loyalty card
programs; discount card schemes, namely,
administration of a discount program for enabling
participants to obtain discounts on goods and
services through the use of a discount membership
card; incentive schemes, namely, retail store
services in the field of cosmetics, jewelry and
watches, sunglasses, videos, luggage, bags, wallets,
purses, clothing, footwear, headgear and sporting
goods featuring a bonus incentive program for
customers; promoting the goods and services of
others by offering discounts on hotels, motels,
inns, resort accommodations; restaurants, car
rentals, tours, cruises, air fares, and tour
packages; business management and office work
services; providing information regarding discount
shopping services for shoppers, travelers, and
businesses; arranging and conducting marketing
promotional entertainment, sporting and cultural
events for others; franchising business services,
namely, services rendered by a franchise, namely,

6 Registration No. 3190386, issued on January 2, 2007.
Opposition No. 91172486
5
assisting in the running or management of a
commercial enterprise in International Class 35;7

ELEMENTALITY (in standard characters) for, inter
alia,:
paper, cardboard, and goods made from these
materials, not included in other classes, namely,
printed matter and printed publications; advertising
and promotional materials; covers and inserts for
records, tapes, compact discs, DVDs, CD-ROMs, films,
video tapes; signs and signboards in this class;
posters; stickers namely bumper stickers in
International Class 16.8

In its answer, applicant denied all salient allegations
in the notice of opposition.
The record includes the pleadings and the file of the
opposed application, by operation of Trademark Rule
2.122(b)(1).
Opposer filed the deposition testimony transcripts of
Mr. Johnny Travis Schillereff, President and founder of
Element (a sister company of opposer and wholly-owned, along
with opposer, by Australian company Billabong).9 During its
testimony period, opposer also introduced, under notice of
reliance, status and title copies of the pleaded

7 Registration No. 3346567, issued on December 4, 2007.
8 Registration No. 3512530, issued on October 7, 2008.
9 Mr. Schillereff’s deposition was taken during opposer’s
testimony period on June 2, 2009; a second deposition was taken
during opposer’s rebuttal testimony period on December 3, 2009.
Transcripts thereof were filed with the Board. Opposer did not
attach copies of the deposition exhibits with the first
deposition testimony transcript, but filed them separately under
its notice of reliance. The proper procedure for filing
deposition exhibits is to attach them to the copy of the
transcript being filed. Opposer properly attached copies of the
corresponding exhibits with the rebuttal testimony transcript of
Mr. Schillereff.
Opposition No. 91172486
6
registrations; copies of deposition exhibits10; printouts of
search results from a website (www.yoox.com) for “ELEMENT
branded goods” that purportedly include its own as well as
applicant’s goods; and copies of documents from the USPTO
database that purportedly show opposer’s efforts to police
its trademarks. Under a second notice of reliance, filed
during its rebuttal testimony period, opposer introduced
additional copies of documents from a USPTO database that
purportedly show opposer’s efforts to police its trademarks;
printouts from the USPTO TESS database purportedly
“confirming the ‘dead’ status or dieing (sic) status of
various third party trademark registrations...that were
included in [applicant’s exhibit submitted during its
testimony period]”; and a copy of a registration that
recently issued to opposer for the mark ELEMENT EDEN.
Applicant filed the deposition testimony, with
exhibits, of Ms. Olga Fuchs, an office manager for the law
firm representing applicant. The deposition exhibits
include internet printouts pertaining to purported purchases
made by Ms. Fuchs of goods sold under trademarks that
include the term ELEMENT(S); photographs of goods that Ms.
Fuchs states she purchased and that are sold under
trademarks that include the term ELEMENT(S); and a list of
third-party registrations, as well as certified copies of

10 From Schillereff deposition taken on June 2, 2009.
Opposition No. 91172486
7
the registrations, for marks that include the term
ELEMENT.11
Opposer and applicant have filed trial briefs, and
opposer filed a reply brief.
Applicant’s Evidentiary Objections
In its trial brief, applicant objected to various
internet printouts that were introduced by opposer as
exhibits to the Schillereff deposition.12 Applicant
contends that the printouts were not properly authenticated
by Mr. Schillereff inasmuch as he did not have personal
knowledge regarding when the printouts were accessed from
the internet or who actually conducted the internet
searches. Applicant furthermore argues that this is a
‘substantive’ objection and is thus properly raised for the
first time in its trial brief.
We disagree with applicant’s characterization of the
objection as purely substantive; rather, we find that this
objection is more procedural in nature and was not timely
raised and has been waived. See TBMP § 707.03(c) (2d ed.
rev. 2004); see also, Mag Instrument, Inc. v. The Brinkmann
Corporation, 96 USPQ2d 1701 (TTAB 2010), citing Pass &

11 Because these are third-party registrations, it was unnecessary
to introduce them by providing title and status copies prepared
by the USPTO. Plain copies from the USPTO's electronic database
would have sufficed. Trademark Rule 2.122(e); see also TBMP §
704.03(b)(1)(B) (2d ed. rev. 2004).
12 In particular, applicant objects to Schillereff Exhibits 4-
11,15,23,25-39, and 45-37.
Opposition No. 91172486
8
Seymour, Inc. v. Syrelec, 224 USPQ 845, 847 (TTAB 1984)
(objection on grounds of improper authentication of exhibits
waived). In any event, the Board has changed its practice
regarding authentication of internet evidence, holding that
a document obtained from the internet may be admitted into
evidence pursuant to a notice of reliance in the same manner
as a printed publication in general circulation, in
accordance with Trademark Rule 2.122(d), so long as the date
the internet document was accessed as well as its source
(the internet address or URL) are provided and the party
filing the notice of reliance indicates the general
relevance of the document. Safer, Inc. v. OMS Investments,
Inc., 94 USPQ2d 1031 (TTAB 2010). Here, the documents were
introduced as exhibits to Mr. Schillereff’s deposition and
they were submitted under a notice of reliance. The URL or
internet address of the documents is visible on the
documents and the date the documents were accessed is either
provided in the notice of reliance or on the documents. Mr.
Schillereff’s testimony provides the relevance of such
documents. Even had opposer not submitted the internet
materials via notice of reliance, but only filed them as
exhibits with the testimonial deposition of Mr. Schillereff
(as it should have done, see footnote 8), the reasoning of
the Safer decision is applicable. That is, so long as it
possible to determine the source and date of retrieval for
Opposition No. 91172486
9
the internet documents, and the witness testifies as to
their general relevance, they may be introduced as testimony
deposition exhibits even if the witness has not personally
obtained or downloaded the documents.
In view of the above, applicant’s objection to the
exhibits on the ground that they have not been properly
authenticated is overruled.
Applicant also moved to strike certain sections of
opposer’s trial brief wherein opposer argued that applicant
“may have had intent” to cause confusion by filing the
application and that actual confusion “may exist” based on
recent trademark use by applicant. Applicant offers a
cursory argument that the issues raised in these sections of
opposer’s brief were not pleaded by opposer and are thus
“inappropriate...for this consideration in this proceeding.”
Brief, p. 8. We disagree with applicant that these
paragraphs raise unpleaded issues. Rather, opposer pleaded
a likelihood of confusion ground for opposition and the
aforementioned issues are two possible factors that may be
considered in a likelihood of confusion analysis. The Board
is capable of weighing the relevance and strength or
weakness of arguments presented in briefs; this precludes
the need to “strike” arguments.
Opposition No. 91172486
10
Opposer’s Evidentiary Objections
Opposer has raised several objections involving the
testimony of Olga Fuchs and the exhibits introduced by way
of her testimony. First, opposer objects to the
introduction of Fuchs Deposition Exhibits 1-34 (comprising
third-party website materials, a list of registrations taken
from the USPTO TESS database, and certified copies of third-
party registrations) because these documents were not
previously produced in response to opposer’s discovery
requests. Second, opposer objects to Ms. Fuchs’ testimony
because she testified that she lacked knowledge regarding
the facts of this proceeding. Opposer also argues that Ms.
Fuchs’ testimony and exhibits lack relevance because they
have a limited time frame and that certain exhibits
(Exhibits Nos. 1, 19 and 25) pertain to or ultimately derive
from foreign websites. Finally, opposer objects to Exhibits
30-32 and related testimony to the extent that they involve
conversations between Ms. Fuchs and retailers and thus
constitute hearsay.
Regarding opposer’s objection to the exhibits on the
basis that they were not previously produced in response to
opposer’s discovery requests, it is clear that the objected-
to documents were obtained or created by applicant in
anticipation of its testimony period and were not responsive
documents that were already within its possession or control
Opposition No. 91172486
11
when applicant was responding to document requests. As Ms.
Fuchs testified, she was instructed by counsel for applicant
(her employer) to conduct an “online search for the word
‘element’ with respect to clothing, luggage and paper, and
to order products from located websites...” Fuchs dep.
4:24-5:3. She then found the information via the internet
and printed out documents that comprise the exhibits or
obtained the USPTO-certified copies of registrations.
A party need not investigate third-party use in
response to discovery requests, Sports Authority Michigan
Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1788 (TTAB 2001)
(no obligation to search for third-party uses). Opposer’s
objection, in essence, is that it was somehow prejudiced by
not having the documents produced earlier in response to its
discovery requests. However, opposer was not put at a
disadvantage. Again, applicant had no duty to conduct an
investigation of third-party use during discovery and,
certainly, applicant’s attempt to present evidence of third-
party use of the term ELEMENT should not have come as a
surprise because it is common practice to introduce third-
party use to demonstrate that a mark is weak and, therefore,
entitled to only a narrow scope of protection.13 The

13 Under the Board’s current rules, each party is required to make
pretrial disclosures that will summarize the subjects on which a
witness will testify and the exhibits that will be introduced
during the testimony of that witness. However, this case was
Opposition No. 91172486
12
documents introduced as exhibits to Ms. Fuchs’ deposition
were equally accessible to opposer, i.e., they were publicly
available via the internet. Finally, opposer had thirty
days between the close of applicant's testimony period and
the opening of its rebuttal period to prepare any rebuttal
against the evidence of third-party use. Accordingly,
opposer’s objection to the Fuchs’ testimony deposition
exhibits on the basis that the documents were not previously
produced in response to opposer’s discovery requests is
overruled.
Opposer’s objection that Ms. Fuchs lacked the requisite
knowledge to testify in this proceeding is not well taken.
We find that Ms. Fuchs was capable of testifying regarding
the subject matter covered in her deposition. We also
decline to strike any testimony or exhibits on the basis
that it lacks relevance due to a limited time frame or
because certain exhibits pertain to or ultimately derive
from foreign websites. Nevertheless, we are cognizant of
any limitations in the testimony and accompanying exhibits
and have accorded the evidence the probative value it
merits. That is, rather than striking any evidence, we
consider the probative value of the evidence, and this
includes any inherent limitations. For example, we agree

commenced prior to the Board’s adoption of its current rules and
the parties were not required to make pretrial disclosures.

Opposition No. 91172486
13
with opposer that evidence of use of the term ELEMENT
outside the United States has little to no relevance with
regard to the issue of how the term is perceived by American
consumers.
Finally, we sustain opposer’s objection to Exhibits 30-
32 and related testimony to the extent that applicant is
offering these for the truth of the matter asserted in
telephone conversations between Ms. Fuchs and employees of
retail stores. Ms. Fuchs testified that certain items were
for sale (or “in stock”) at stores based on what she was
told by the store employees, information that is clearly
hearsay. Cf. Anthony’s Pizza & Pasta International, Inc.
v. Anthony’s Pizza Holding Company, Inc., 95 USPQ2d 1271
(TTAB 2005) (testimony regarding how third parties answered
their telephones is not hearsay because deponent is merely
testifying as to what she heard and not whether the
statement is true or not). Accordingly, we strike as
hearsay and give no consideration to any purported
statements made by employees of the retail websites to Ms.
Fuchs, and we also give no consideration to any handwritten
notes to this effect made by Ms. Fuchs on the exhibits. We
do not, however, exclude the exhibits outright inasmuch as
they have been authenticated and, on their face, show that
the public may have been exposed to those internet websites
and therefore may be aware of the advertisements contained
Opposition No. 91172486
14
therein. See Life Zone Inc. v. Middleman Group Inc., 87
USPQ2d 1953, 1956 n.5 (TTAB 2003); Sports Auth. Mich. Inc.,
63 USPQ2d at 1798; and TBMP § 704.08 (“Even if properly made
of record, however,... Internet printouts[] would only be
probative of what they show on their face, not for the truth
of the matters contained therein, unless a competent witness
has testified to the truth of such matters.”).
Standing and Priority
Opposer has established its standing in this proceeding
through its pleaded registrations, which are of record, for
several marks that include the term ELEMENT. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
2000); Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982).
Also, because opposer’s pleaded registrations are of
record, Section 2(d) priority is not an issue in this case
as to the marks and the goods covered by the registrations
vis-à-vis applicant’s mark and goods. King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). To the extent necessary, we address the issue
of opposer’s common law priority of use in the discussion
(to follow) regarding similarity of the parties’ goods.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
Opposition No. 91172486
15
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).
And, although opposer relies on and has made of record
approximately twelve registrations, we limit our analysis to
the five registrations referenced at the beginning of this
decision (as well as any common law rights) vis-à-vis
applicant’s proposed mark and the goods identified in the
opposed application.14
1. Similarity of the Parties’ Goods
We initially address the du Pont factor involving the
similarity or dissimilarity of opposer’s goods in relation
to applicant’s goods. In this regard, it is well-settled
that when comparing the goods set out in an application and
registrations, we are limited to the goods as they are
identified and it is improper to import any extraneous
limitations:
[W]here the goods in a cited registration are broadly
described and there are no limitations in the
identification of goods as to their nature, type,
channels of trade or classes of purchasers, it is
presumed that the scope of the registration encompasses
all goods of the nature and type described, that the

14 We have selected these registrations on the basis that they are
for marks and/or cover goods and services that, when considered
vis-à-vis the applied-for mark and identified goods, are most
likely to support a finding of likelihood of confusion. See,
e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243 (TTAB 2010).
We note further that opposer has not pleaded or argued that it
has a family of marks.
Opposition No. 91172486
16
identified goods move in all channels of trade that
would be normal for such goods, and that the goods
would be purchased by all potential customers.

In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart
Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958);
see also, Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Thus, where an
identification of goods is broadly constructed, we must
allow for all possible items that may fall within the
identification. Inasmuch as opposer has opposed all three
classes of goods in the subject application, we address the
similarity of goods for each class, keeping in mind that a
likelihood of confusion may be found with respect to a
particular class based on any item within the identification
of goods for that class. Tuxedo Monopoly Inc. v. General
Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981).
a. International Class 25
Applicant “readily agrees that there is a definite
overlap of goods” with registrant’s various articles of
clothing covered by the registered ELEMENT mark. Brief, p.
27. A cursory review of the goods identified in the subject
application with those covered by opposer’s registered
ELEMENT mark confirms there are several identical or
overlapping items, e.g., t-shirts (or “shirts”), hats,
shoes, and tracksuits (or sweatpants and sweatshirts).
Opposition No. 91172486
17
There is no question that the parties’ goods identified in
Class 25 are legally identical in part.
b. International Class 16
Applicant asserts that opposer “simply failed to show
any meaningful use of its mark in this class at all.”
However, as previously referenced, opposer is the owner of
the registered mark ELEMENTALITY for goods in International
Class 16. This registration includes the broad term
“printed matter [made of paper and cardboard]” and therefore
encompasses several of applicant’s more specifically-
identified goods such as “calendars” and “postcards.”
Opposer has also demonstrated prior common law use of the
mark ELEMENT with respect to “stickers” and “decals.”15 Mr.
Schillereff testified that opposer has been selling stickers
and decals bearing the mark ELEMENT continuously since 1991.
Schillereff dep. 38:18-39:2. Mr. Schillereff elaborated
that applicant’s sales of these stickers and decals do not
“compete” with the sales of opposer’s other goods, but that
the stickers were “a huge marketing component of the company
because we use them to market the brand and give away, I
would almost say, the majority for free.” Schillereff dep.

15 In its brief, opposer asserts common law rights with respect to
“insignia, badges, patches, pictures/posters, and books,” in
addition to “decals and stickers.” Brief, p. 39 (citing to “Fact
22” for support). However, Fact 22 of opposer’s brief references
evidence (the Schillereff testimony) pertaining to use of the
mark on “decals” and “stickers” only.

Opposition No. 91172486
18
41:14-21. However, despite any common law rights opposer
may have in the mark for stickers and decals, the record
does not support a relationship between opposer’s decals and
stickers and any of the goods identified in the subject
application. Although applicant’s “address and shipping
adhesive labels” may be similar in physical form to
opposer’s decals and stickers, the respective goods are
considerably different in nature and serve very different
purposes. Applicant’s labels are for shipping and opposer’s
stickers and decals are, as Mr. Schillereff explained, a
“marketing component” for opposer.
c. International Class 18
Opposer has registered the ELEMENT mark for goods that
overlap with or are encompassed by the goods listed in the
subject application. Specifically, the subject application
covers “bags” (made of leather and imitation leather) and
this encompasses many of the goods listed in opposer’s
ELEMENT registrations, i.e., “school bags, all-purpose sport
bags, carry bags, barrel bags, tote bags,...school bags,
satchels, shoulder bags, waist bags, clutch bags, hand bags,
cosmetic bags sold empty...leather and textile shopping
bags, mesh shopping bags, [and]...travel bags.” Even where
they do not overlap or encompass one another, many of the
parties’ goods, as identified, are closely related, e.g.,
applicant’s “purses” and opposer’s “clutch bags.”
Opposition No. 91172486
19
d. Conclusion
Opposer’s registered mark, ELEMENT, covers goods that,
in part, are legally identical to the goods listed in
International Classes 18 and 25 of the application.
Opposer has not demonstrated that it has rights (either
common law or through its registrations) in the mark ELEMENT
for goods related to those identified in International Class
16 of the subject application. Opposer’s registered mark,
ELEMENTALITY, on the other hand, identifies goods that, in
part, are legally identical to those listed in International
Class 16 of the application.
2. Trade Channels and Classes of Purchasers
As already noted, in the absence of any restrictions or
limitations in opposer’s registrations and the subject
application, we must assume the identified goods are sold
through all the normal and usual trade channels for such
goods to all the usual purchasers of such goods. See
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1987). Accordingly, where we have found
that the parties’ goods are overlapping and/or identical, we
must presume that those same goods would be found in the
same channels of trade and be subject to purchase by the
same class(es) of consumers.
Opposition No. 91172486
20
3. The Marks
We now turn to the du Pont factor concerning the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and 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).
Here, the obvious single similarity between the
parties’ respective marks is that they share the term
ELEMENT in one form or another. Specifically, opposer has
registered the marks ELEMENT and ELEMENTALITY, and
applicant’s mark

includes the term ELEMENTS.
Despite sharing an ELEMENT-formative term, we find the
parties’ marks, overall, to be dissimilar. This is mainly
due to the dominant role of the term ZU in applicant’s mark.
The term ZU appears significantly larger and very
prominently above the smaller font-sized ELEMENTS.16 ZU

16 Opposer has introduced evidence attempting to show that
applicant uses a mark wherein the terms “ZU” and “ELEMENTS”
appear together in a uniformly-sized font. However, for purposes
of this proceeding and in determining the issue of likelihood of
confusion, we are only concerned with applicant’s proposed mark
Opposition No. 91172486
21
visually dominates applicant’s mark and, consequently, is
the term that will most likely be impressed in the minds of
consumers.
As to sound, applicant’s mark will clearly be
pronounced differently as it begins with the term ZU. This
term differentiates the mark from opposer’s marks, even
though pronunciation of the term ELEMENTS in applicant’s
mark is nearly identical to opposer’s ELEMENT mark, and has
some similarity in sound to the ELEMENTALITY mark to the
extent that the first three syllables are the same.
As to any connotation or commercial meaning conveyed by
the parties’ marks, applicant states that the term ZU is a
“coined fanciful term” and there is nothing in the record to
contradict this assertion. However, because ZU can be
pronounced like the word “zoo” consumers may attribute a
connotation based on the meaning of that word and, viewing
the mark in its entirety, ZU ELEMENTS, it could have the
connotation of things pertaining to a zoo. With regard to
the shared term, ELEMENT(S), applicant argues that it
“conjures up an image of the outdoors” and is somewhat
suggestive because “clothing, after all, protects one from
the elements.” Brief, p. 22. Opposer, on the other hand,
argues that its ELEMENT mark is “meant to connote a

for which it seeks registration, namely, as shown on the drawing
page of the application.

Opposition No. 91172486
22
contemporary, lifestyle, fashionable brand” and that
consumers will understand both parties’ marks as having that
connotation. Brief, p. 37.
The term “element” has several defined meanings,
including:
1. A fundamental, essential, or irreducible constituent
of a composite entity.
2. elements The basic assumptions or principles of a
subject.
...
5. One of four substances, earth, air, fire, or water,
formerly regarded as a fundamental constituent of the
universe.
...
7. elements The forces that constitute the weather,
especially severe or inclement weather: outside paint
that had been damaged by the elements.
8. An environment naturally suited to or associated
with an individual: He is in his element when
traveling. The business world is her element...17

Applicant has submitted numerous third-party
registrations and some evidence of third-party use of marks
incorporating the term ELEMENT(S) in connection with
clothing. Depending on its context, the term ELEMENTS may
be understood as evoking one or more of the above-defined
meanings in relation to clothing. For example, the record
demonstrates that several third parties have adopted marks
that incorporate the term “elements” in a manner suggestive

17 The American Heritage Dictionary of the English Language,
Fourth Edition copyright 2000 by Houghton Mifflin Company
(updated in 2009). The Board may take judicial notice of
dictionary definitions. 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).

Opposition No. 91172486
23
of their clothing items’ ability to protect from the
weather.18 Also, applicant has submitted at least twelve
third-party registrations for ELEMENTS marks in which the
word is used in a manner similar to that in applicant’s
mark.19 That so many third parties have adopted marks that
include the term ELEMENTS indicates that the term has some
measurable significance in the clothing industry along the
lines of the term’s first defined meaning, as in “essential”
clothing items or the “fundamentals” for apparel or one’s
wardrobe. While these registrations are not evidence that
said marks are in actual use, their existence indicates the
term ELEMENTS may be recognized as having some significance
for apparel. Tektronix, Inc. v. Daktronics, Inc., 187 USPQ
588, 592 (TTAB 1975) (the third-party registrations may be
considered in the same manner as a dictionary to show a
possible meaning or significance in a particular trade).
The fact that the USPTO has allowed so many registrations

18 Registrations nos.: 3463408 (ELEMENTS ALL WEATHER CONDITIONS
for coats), 2734510 (AGAINST THE ELEMENTS for “men’s clothing”),
and 2809782 (BRAVE THE ELEMENTS for “jackets, pants, hats, gloves
and boots...”).
19 Registrations nos.: 1457558 (BASIC ELEMENTS for “shirts, t-
shirts, pants, jackets and shorts”), 2056080 (CLASSIC ELEMENTS
for clothing), 2919619 (GRACE ELEMENTS for variety of women’s
clothing), 2751429 (REI E1 ELEMENTS for clothing), 2174608
(ELEMENTS OF STYLE for clothing), 1540635 (BASIC OPTIONS BY BASIC
ELEMENTS for “men’s shirts”), 3165719 (DESIGN ELEMENTS BY DONNA
DEGNAN for clothing), 1761466 (PRIME ELEMENTS, “elements”
disclaimed, for “men’s and women’s clothing”), 2715253 (NATURAL
ELEMENTS BY DIANE GILMAN for “women’s wearing apparel”), 2988792
(DS ELEMENTS stylized for wide variety of apparel), 2031210
(BOSTONIAN ELEMENTS for footwear), and 3189562 (UNITED ELEMENTS
stylized for various articles of clothing).
Opposition No. 91172486
24
containing a shared term may be used “to establish that
[the] portion common to the marks involved in a proceeding
has a normally understood and well-known meaning [and] that
this has been recognized by the [USPTO]...; and that
therefore the inclusion of [the shared term] in each mark
may be an insufficient basis on which to predicate a holding
of confusing similarity.” Red Carpet Corp. v. Johnstown
American Enterprises Inc., 7 USPQ2d 1404, 1406 (TTAB 1988).
The circumstances of this case are akin to those in
Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313
(TTAB 2005). In Knight Textile, the applicant was allowed
to register the mark NORTON MCNAUGHTON ESSENTIALS in the
face of an opposition filed by the owner of the mark
ESSENTIALS for, in part, identical items of clothing. The
Board found that the registered mark (i.e., the shared term)
was “highly suggestive as applied to the parties’
[clothing]” and that applicant’s addition of its house mark
sufficed to distinguish the marks. Id. at 1315. In this
case, there are a significant number of registrations
indicating that the shared term ELEMENTS likewise has a
suggestive connotation in connection with clothing. And,
while the degree of suggestiveness of ELEMENTS may not reach
the level of the shared term in the Knight Textile case, it
does detract from the notion that consumers would be
confused simply because of applicant’s use of the term
Opposition No. 91172486
25
ELEMENTS in its mark. In other words, purchasers viewing
applicant’s mark on clothing are likely to focus on the
larger, more prominent and more distinctive term, ZU, while
attributing a meaning to the latter, smaller term ELEMENTS
that it is suggestive of apparel items that are “essential”
or “fundamental” to a wardrobe. We hasten to add that we
find a degree of suggestiveness in the term ELEMENTS only in
connection with clothing; we make no such finding with
regard to the other goods in International Classes 16 and
18. Nevertheless, even without a finding of suggestiveness
with regard to the Class 16 and 18 items, the inclusion of
ZU in applicant’s mark, with the different appearance,
pronunciation and connotation it gives to the mark, is
sufficient to distinguish applicant’s mark from opposer’s
mark.
In sum, we find that this du Pont factor weighs in
favor of applicant and against finding a likelihood of
confusion. Although applicant’s mark practically
incorporates opposer’s ELEMENT mark, the term ZU dominates
applicant’s mark and is very different from opposer’s marks.
With respect to opposer’s ELEMENTALITY mark vis-à-vis
applicant’s mark, we find even less in common and this
factor accordingly weighs in favor of applicant and against
finding a likelihood of confusion.
Opposition No. 91172486
26
4. Extent of Third-Party Use of Similar Marks
The sixth du Pont factor requires consideration of any
evidence pertaining to the number and nature of similar
marks in use on similar goods. Our primary reviewing court,
the Federal Circuit, has stated that “[e]vidence of third-
party use of similar marks on similar goods is relevant to
show that a mark is relatively weak and entitled to only a
narrow scope of protection.” Palm Bay Imports Inc., 73
USPQ2d at 1693, citing, General Mills, Inc. v. Kellogg Co.,
824 F.2d 622, 626-27 (8th Cir. 1987); and J. Thomas
McCarthy, 2 McCarthy on Trademarks and Unfair Competition §
11:88 (4th ed. 2001).
After careful consideration of the entire record before
us, we find that there is a degree of weakness in the term
ELEMENT(S), when used as a trademark, or as a component part
thereof, in connection with clothing items. The testimony,
with exhibits, of Ms. Fuchs shows that other entities have
used the term ELEMENT(S) (either alone or in conjunction
with other terms) on various clothing items.20 For example,
Ms. Fuchs testified that she was able to purchase a women’s
skirt being sold under the brand GRACE ELEMENTS from the

20 Ms. Fuchs also testified regarding a few purchases she made
with respect to non-clothing goods, e.g., bags, rolling papers,
etc., being sold under ELEMENT-formative marks. The very limited
number of such third-party ELEMENT-branded goods does not rise to
a level necessary to show weakness of the term ELEMENT in
connection with said non-clothing goods.

Opposition No. 91172486
27
Boscov’s online retail store,21 a pair of BROOKS ELEMENT
running shorts,22 a FIFTH ELEMENT T-shirt from the REI
online retail store,23 CLASSIC ELEMENTS women’s 2-piece knit
pajamas from the Sears online retail store,24 and a
LIVESTRONG ELEMENT women’s sports (running) jacket from the
Nike online retail store.25 In addition, Ms. Fuchs
testified that she was able to purchase shirts from online
retail stores named ELEMENT ECOWEAR26, BTC ELEMENTS,27 and
THE GREEN ELEMENT.28
Despite any limitations in the probative value of this
evidence, there are so many usages that we cannot dismiss
them as de minimis; rather, they tend to show that consumers
are able to distinguish among ELEMENT(S) marks based on
other terms in the marks. We agree with opposer that the
internet search and the purchases were conducted within a
short period of time and do not indicate any length of time
the marks have been in use. Moreover, there is no
indication as to the volume of sales for any of the
purchased items nor level of exposure to the relevant
purchasing public. See Penguin Books Ltd. v. Eberhard, 48
USPQ2d 1280, 1284 n.5 (TTAB 1998) (white pages listings do

21 Fuchs dep. 16:12-20, Exhibit 10.
22 Fuchs dep. 11:16-20, Exhibit 5.
23 Fuchs dep. 25:17-21, Exhibit 18.
24 Fuchs dep. 20:5-14, Exhibit 14.
25 Fuchs dep. 24:1-25:3, Exhibit 17.
26 Fuchs dep. 34:3-15, Exhibit 26.
27 Fuchs dep. 28:8-12, Exhibit 21.
Opposition No. 91172486
28
not show that the public is aware of the companies); but see
In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565 n.16 (TTAB
1996) (“the magnitude of applicant’s evidentiary record is
such that even allowing for these possibilities [some of the
entities are out of business, are small enterprises, are in
remote locations, or have reached only a miniscule portion
of the relevant public], there is still a significant body
of evidence of third-party use”). Although the items
purchased from third-party websites do not rise to the level
of the evidence in In re Broadway Chicken Inc., the number
is significant enough that we regard the public as having at
least some exposure to other marks containing the term
ELEMENT(S).
Accordingly, we find, because of the suggestiveness of
ELEMENT(S) and the third-party use of this term in
connection with clothing items, the mere fact that the
parties’ marks both contain the term ELEMENT(S) is not a
sufficient basis on which to find likelihood of confusion.
This du Pont factor favors applicant with respect to its
goods in Class 25.
5. Fame of Opposer’s Mark(s)
When fame is present it plays a dominant role in the
determination of likelihood of confusion. See Bose Corp. v.
QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305

28 Fuchs dep. 29:6-12, Exhibit 22.
Opposition No. 91172486
29
(Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys,
Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992). However, it is the duty of a
party asserting that its mark is famous to clearly prove it.
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
In its main brief, opposer asserts that its ELEMENT
mark is “well known” and has “acquired and posess[es] a
favorable reputation reflected in a substantial amount of
goodwill,” with regard to “clothing, bags and paper goods.”
Brief, p. 41. It is in its reply brief that opposer first
claims that its ELEMENT-formative trademarks are “famous in
its business area,” which it defines as “contemporary,
relevant fashion clothing and related goods.” Reply, p. 9.
Inasmuch as opposer asserts that its mark is “famous” for
the first time in its reply brief and this issue was not
raised by applicant in its brief, it is improper rebuttal
argument. See TBMP § 801.03(2d ed. rev. 2004) (The
plaintiff’s reply brief “must be confined to rebutting the
defendant’s brief”).
Even if we were to construe opposer’s arguments in its
main brief as asserting fame, opposer has not established
that its ELEMENT mark (or any one of its other ELEMENT-
formative marks) is famous. Opposer primarily relies on the
Opposition No. 91172486
30
Schillereff testimony and evidence regarding use of its
ELEMENT mark since 1991, as well as annual sales figures and
approximate advertising expenditures for goods sold under
its mark.29 Although the sales and advertising numbers
appear impressive on their face, opposer has offered no
context for these figures. That is, it is nearly impossible
to gauge the level of success of goods bearing the mark or
the degree of exposure the general public has had to the
mark. The extent to which consumers have been exposed to
opposer’s goods under its marks vis-à-vis sales of its
competitors’ goods remains unknown, and thus it is not
possible to determine whether opposer’s evidence of
financial success translates into fame of its pleaded marks.
Ultimately, opposer’s evidence falls short of establishing
that its ELEMENT mark, or any of its other marks, is famous.
See Leading Jewelers Guild Inc., 82 USPQ2d at 1904.
Accordingly, this du Pont factor is neutral.
6. Other du Pont Factors
Several other du Pont factors were argued by the
parties. We find that either the parties failed to submit
sufficient evidence to substantiate the arguments or the

29 The portions of Mr. Schillereff’s testimony in this regard were
designated “confidential.” We have, of course, considered all
evidence of record, but are mindful of the portions designated as
“confidential” and thus refer to such materials in only general
terms.
Opposition No. 91172486
31
factors simply remain neutral in our likelihood of confusion
analysis.
In particular, we note opposer’s reliance on materials
obtained from the third-party retail website www.yoox.com
that purportedly “indicate[] that the retailer is confused
by the parties’ products or is creating confusion.” Brief,
p. 14. Opposer likens this to an instance of actual
confusion. We disagree with this conclusion. First,
applicant’s mark, as applied for, is not the same as that
displayed on the website. Second, there is no indication
that any confusion is present; rather, it appears that a
search on the website retrieved different branded clothing
items, including applicant’s and opposer’s goods. This
evidence is more relevant to a finding involving the
similarity of the trade channels of the parties’ clothing
goods – which we have already found, for purposes of this
decision, to be the same.
Balancing of the du Pont Factors -- Conclusion
We readily acknowledge that several of the factors
relevant to our ultimate determination weigh in favor of
finding a likelihood of confusion. We have found that
opposer has prior rights in the mark ELEMENT on goods that
are identical, in part, to those in the subject application
for International Classes 18 and 25; and that opposer has
prior rights in the mark ELEMENTALITY on goods that
Opposition No. 91172486
32
encompass certain goods in International Class 16 of the
subject application. We have further noted that we must
assume, where the goods are identical or encompass one
another, the trade channels and classes of purchases are the
same. However, outweighing the aforementioned findings is
the factor involving the dissimilarity of the parties’
marks, combined with the suggestive nature and weakness of
the term ELEMENT(S), as used in connection with clothing.
The dominance and arbitrary nature of the term ZU in
applicant’s mark and the overall dissimilarity of the
parties’ respective marks prevents the likelihood of
confusion. We are mindful that applicant’s mark contains
the term ELEMENTS, nearly identical to one of opposer’s
marks, but when consumers view applicant’s mark they will
focus much less on the term ELEMENTS because it appears
below the coined term ZU and in much smaller font size and,
with respect to clothing, has some suggestive meaning. The
term ELEMENT(S) is also used by several third parties in
connection with clothing items, indicating that consumers
are able to distinguish between various ELEMENT(S) marks
based on other terms in the marks. Ultimately, we find,
based on a preponderance of the evidence, that there is not
a likelihood of confusion between any of opposer’s pleaded
marks and applicant’s mark, ZU ELEMENTS.
Opposition No. 91172486
33
Decision: The opposition is dismissed as to each of
the three classes.