Roots Corporationv.Colorful Roots LLC

Trademark Trial and Appeal Board

Mar 18, 2022

91253202 (T.T.A.B. Mar. 18, 2022)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: March 18, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _______ Trademark Trial and Appeal Board _______ Roots Corporation v. Colorful Roots LLC _______ Opposition No. 91253202 _______ Lauren M. Gregory of Seyfarth Shaw LLP for Roots Corporation. Phylicia D.C. Pearson of the ABOVE THE BAR LAW FIRM PLLC for Colorful Roots LLC. _______ Before Cataldo, Shaw and Lebow, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: Colorful Roots LLC (“Applicant”) seeks registration of the mark COLORFUL ROOTS, in standard characters, for goods identified as: “Clothing, namely, shirts and hats,” in International Class 25.1 1 Application Serial No. 88427428, filed on May 13, 2019 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging a date of first use anywhere of December 1, 2010 and a date of first use in commerce of September 15, 2015. Opposition No. 91253202 2 Roots Corporation (“Opposer”) opposes registration of Applicant’s mark on the ground of priority and likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Opposer claims common law rights in ROOTS and various other ROOTS-formative marks, and pleaded ownership of the following registered marks: Mark Reg. No. Relevant Goods ROOTS (in typed form) 18156102 Footwear; namely, shoes, slippers, boots, gloves, scarves, belts, t-shirts, sweatshirts, clothing of all types; namely, slacks, shirts, socks, jackets, coats, dresses, blouses, skirts and jeans, in International Class 25. BABY ROOTS (in typed form) 2092407 3 Children’s garments, namely shirts, blouses, dresses, pants, suits, pullovers, T-shirts, sweaters, jeans, socks, sweat shirts, shorts, jackets, footwear, namely shoes, slippers and boots, in International Class 25. ROOTS KIDS (in standard characters) 37427514 Children’s garments, namely, pants, pullovers, T-shirts, sweaters, sweat shirts, in International Class 25. ROOTS ATHLETICS (in standard characters) 41582735 Men’s, women’s and children’s clothing, namely, sweatshirts, pullovers, t-shirts, sweatpants, tank tops, shorts, polo shirts, golf shirts, shirts, vests; headgear, namely, hats and caps, in International Class 25. 2 Issued January 11, 1994; twice renewed. Typed form is the predecessor to, and legal equivalent of, a standard character mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (“[U]ntil 2003, ‘standard character’ marks formerly were known as ‘typed’ marks”); see also Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a) (referring to “Standard character (typed) drawing”). 3 Issued September 2, 1997; twice renewed. 4 Issued January 26, 2010; renewed. “KIDS” is disclaimed apart from the mark as shown. 5 Issued June 12, 2012; Sections 8 and 15 affidavits accepted and acknowledged. “ATHLETICS” is disclaimed apart from the mark as shown. Opposition No. 91253202 3 Applicant denied the salient allegations of the notice of opposition. The case is fully briefed. I. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the involved application. Opposer made its four pleaded registrations of record by attaching to the Notice of Opposition printouts obtained from the USPTO’s Trademark Status & Document Retrieval (TSDR) database showing the registrations’ current status as valid and subsisting and title in Opposer. Trademark Rule 2.122(d), 37 C.F.R. § 2.122(d). Opposer introduced status and title copies of the registrations via Notice of reliance as well.6 Id. Opposer also introduced the testimony declaration of James Connell, Opposer’s “Chief of eCommerce and Customer Experience Officer.”7 Applicant introduced the testimony declaration of Brandy Peterson, Applicant’s “Owner and Operator.”8 The parties did not introduce any other evidence or testimony. II. Entitlement to Statutory Cause of Action9 Entitlement to a statutory cause of action must be proven by the plaintiff in every inter partes case. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 6 18 TTABVUE. 7 17 TTABVUE. 8 19 TTABVUE. 9 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Mindful of the Supreme Court’s direction in Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125- 26 (2014), we now refer to this inquiry as entitlement to a statutory cause of action. Despite Opposition No. 91253202 4 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish entitlement to a statutory cause of action under Trademark Act Section 13, 15 U.S.C. § 1063, a plaintiff must demonstrate “an interest falling within the zone of interests protected by the statute and … proximate causation.” Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4 (Fed. Cir. 2020) cert. denied sub. nom., 141 S. Ct. 2671 (2021), (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067-70 (2014)). Stated another way, a plaintiff is entitled to bring a statutory cause of action by demonstrating a real interest in the proceeding and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir. 2020), reh’g en banc denied, 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), cert. denied, 142 S. Ct. 82 (2021); see also Empresa Cubana, 111 USPQ2d at 1062. As noted above, Opposer introduced copies of its pleaded registrations printed from the USPTO’s Trademark Status and Document Retrieval system showing the current status of and title to the registrations. Because Opposer has properly introduced into evidence these copies of its pleaded registrations, Opposer has established its entitlement to a Section 2(d)-based opposition that is not wholly without merit. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus. Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain equally applicable. Opposition No. 91253202 5 Applicant nevertheless argues that Opposer has not established an entitlement to a statutory cause of action because Opposer has not presented evidence that it “would suffer damage if the mark is registered.”10 Specifically, Applicant argues that Opposer “has not suffered any commercial loss due to the use of the COLORFUL ROOTS mark.”11 This argument is unavailing. There is no requirement that actual damage be pleaded or proved in order to establish an entitlement to a statutory cause of action or to prevail in an opposition. See Cunningham, 55 USPQ2d at 1844. Rather, all that is required is a real interest in the proceeding and a reasonable belief of damage. Australian Therapeutic, 2020 USPQ2d 10837, at *3; Spirits Int’l B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1548 (TTAB 2011) (in view of arguable similarities in the marks and relatedness of the goods, opposer has shown a reasonable belief of damage and that it has a real interest in the case). III. Priority Because Opposer’s pleaded registrations are of record, and Applicant did not counterclaim to cancel any of them, priority is not at issue as to the marks and goods covered by the registrations. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d. 1400, 182 USPQ 108, 110 (CCPA 1974)). 10 Applicant’s Br., p. 5, 21 TTABVUE 6. 11 Id at 4, 21 TTABVUE 5. Opposition No. 91253202 6 IV. Likelihood of Confusion Our determination of the issue is based on an analysis of all the probative facts in evidence 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) (“DuPont”). 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 goods or services and the similarities between the marks. See 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 characteristics of the goods and differences in the marks.”). We will focus our DuPont analysis on Opposer’s mark ROOTS in Registration No. 1815610 because this mark and the associated goods are most similar to Applicant’s mark and goods. If we find a likelihood of confusion as to this mark and the associated goods, we need not find it as to Opposer’s other marks. Conversely, if we do not find a likelihood of confusion as to this mark, we would not find it as to Opposer’s other marks. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)). 1. The similarity or dissimilarity of the goods, trade channels, and purchasers We first consider the DuPont factors regarding the similarity or dissimilarity of the parties’ respective goods, their channels of trade, and purchasers. It is not necessary that the goods be identical or competitive, or even that they move in the same channels of trade, to support a finding of likelihood of confusion. Rather, it is sufficient that they are related in some manner, or that the circumstances surrounding their marketing are such that they would or could be encountered by the Opposition No. 91253202 7 same persons in situations that would give rise, because of the similarity of the marks, to a mistaken belief that they originate from the same source or that there is an association or connection between the sources of the goods and services. See Coach Servs. Inc. v. Triumph Learning, LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). Opposer’s goods include “shirts.” Applicant’s applied-for goods also include “shirts.” The parties’ goods are thus, in part, legally identical inasmuch as both identify shirts. It is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed by the identification of goods or services within a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Applicant argues that the goods are dissimilar because Applicant “uses its mark in connection with a line of products which display African-American history and Pan-African culture [whereas] Opposer ROOTS CORPORATION, sells clothing that do not pertain to cultural references[.]”12 According to Applicant: [T]he buying habits of the purchasers involved are also a significant portion of the question. To that extent, COLORFUL ROOTS has developed a very select market of clients, based upon consumers who are seeking to purchase items which display their heritage. . . . Not the general consumer in the channels of trade which involve clothing. The COLORFUL ROOTS brand has developed as a way for African Americans to share their history with each other and display images of pride.13 12 Id. at 4, 21 TTABVUE 5. 13 Id. at 7, 21 TTABVUE 8. Opposition No. 91253202 8 This argument is unpersuasive. In making our determination regarding the relatedness of the goods, we must look to the goods as identified in Applicant’s application and the pleaded registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Comput. Servs. 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.”)). Here, there are no restrictions limiting the sale of the goods to particular consumers or channels of trade. Because the parties’ goods are in-part legally identical without restriction, we also must presume that they are offered in all normal trade channels and to all normal classes of purchasers for such goods. See Stone Lion, 110 USPQ2d at 1161. Thus, we consider Opposer’s and Applicant’s trade channels and classes of purchasers to be the same. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (“With respect to similarity of the established trade channels through which the goods reach customers, the TTAB properly followed our case law and ‘presume[d] that the identical goods move in the same channels of trade and are available to the same classes of customers for such goods. . . .’”) (citing Viterra, 101 USPQ2d at 1908). We find the DuPont factors relating to the similarity of the goods, trade channels, and purchasers favor a finding of likelihood of confusion. Opposition No. 91253202 9 2. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression Next, we consider the DuPont factor relating to the similarity of the marks. In comparing the marks we must consider their appearance, sound, connotation and commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Similarity as to any one of these factors may be sufficient to support a finding that the marks are confusingly similar. See Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (“Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). Although marks must be considered in their entireties, it is settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the similarity of the marks. Viterra, 101 USPQ2d at 1908; In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”). Moreover, the in-part identity of the parties’ goods reduces the degree of similarity that is necessary as to those marks for confusion to be likely. See, e.g., Viterra, 101 Opposition No. 91253202 10 USPQ2d at 1912; In re Mighty Tea Leaf, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010). As noted above, Applicant’s mark is COLORFUL ROOTS, in standard characters. Opposer’s mark is simply ROOTS, in typed form. Opposer argues that “[t]he COLORFUL ROOTS Mark contains Opposer’s mark ROOTS® in its entirety. ‘ROOTS’ is undoubtedly the dominant portion of the COLORFUL ROOTS Mark, given that it is an arbitrary mark when used for clothing.”14 We find that Applicant’s mark encompasses the entirety of Opposer’s mark, adding only the term COLORFUL before ROOTS. While there is no rule that confusion is automatically likely where one mark encompasses another, in this case, as in many others, the fact that Opposer’s entire mark is incorporated within Applicant’s mark increases the similarity between the two. See, e.g., Stone Lion, 110 USPQ2d at 1161 (affirming Board’s finding that applicant’s mark STONE LION CAPITAL incorporated the entirety of the registered marks LION CAPITAL and LION, and that the noun LION was the dominant part of both parties’ marks); Coca- Cola Bottling Co. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL is similar to BENGAL LANCER); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (finding applicant’s mark VANTAGE TITAN confusingly similar to registered mark TITAN); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (finding applicant’s CAREER IMAGE marks similar to registered mark CREST CAREER IMAGES). 14 Opposer’s Br., p. 10, 20 TTABVUE 15. Opposition No. 91253202 11 Although the adjective COLORFUL is the leading term in Applicant’s mark, we find it is not the dominant term in Applicant’s mark because COLORFUL modifies ROOTS-suggesting that they are imbued with color. Thus, we find that ROOTS is the dominant portion of Applicant’s mark. ROOTS is the dominant portion of Opposer’s mark inasmuch as it forms the entirety of the mark. When we consider the marks in their entirety, we find that both Applicant’s COLORFUL ROOTS mark and Opposer’s ROOTS mark have a similar connotation and commercial impression: a connection to a plant’s or person’s roots-albeit with Applicant’s mark having a more specific “colorful” connotation. We acknowledge that the presence of the term COLORFUL as the leading term in Applicant’s mark differentiates it visually and aurally from the registered mark. This point of distinction, however, does not significantly diminish the strong similarities in connotation and overall commercial impression engendered by these two marks. We find that COLORFUL ROOTS is more similar to the mark ROOTS than dissimilar in terms of appearance, sound, connotation, and commercial impression. As a result, consumers encountering COLORFUL ROOTS and ROOTS could mistakenly believe the former is a variation on the registered mark, used to identify a line of more colorful articles of clothing. See Double Coin Holdings Ltd. v. Tru Development, 2019 USPQ2d 377409, * 7 (TTAB 2019) (“Here, ROAD WARRIOR looks, sounds, and conveys the impression of being a line extension of WARRIOR.”); In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) (“Even those purchasers who are fully aware of the specific differences between the marks may Opposition No. 91253202 12 well believe, because of the similarities between them, that the two marks are simply variants of one another, used by a single producer to identify and distinguish companion lines of products.”). Applicant’s remaining arguments regarding a putative family of marks and a Japanese Patent Office proceeding are unpersuasive. As noted above, we focus on only one of Opposer’s marks, and the Board is not bound by foreign proceedings in unrelated cases. See Roger & Gallet v. Janmarie, Inc., 245 F.2d 505, 114 USPQ 238 (CCPA 1957) (trademark rights are territorial). See also, In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (“[E]ach application must be considered on its own merits”). For the foregoing reasons, we find that the marks are more similar than dissimilar. The first DuPont factor weighs in favor of finding a likelihood of confusion. 3. Actual confusion Applicant argues that there has been no actual confusion of the marks by consumers: “[t]aking into consideration Opposer’s own argument that its mark has been used prominently, were there to be confusion, instances of such would have arisen in the several years that the Colorful Roots mark has been in use. Nevertheless, such instance of confusion has not occurred.”15 This argument calls upon us to evaluate the seventh DuPont factor, the “nature and extent of any actual confusion,” and the eighth DuPont factor, the “length of time 15 Applicant’s Br., p. 8 21 TTABVUE 9. Opposition No. 91253202 13 during and conditions under which there has been concurrent use without evidence of actual confusion.” DuPont, 177 USPQ at 567. Brandy Peterson, Applicant’s “Owner and Operator,” provided testimony about Applicant’s use of its COLORFUL ROOTS mark in connection with clothing:16 Colorful Roots LLC began with specializing in African sourced natural beauty products such as African butters, oils, soaps and African clothing. Being that I am also a practicing optician, I noticed a lack of eyewear which offered colors and prints that complimented African complexions. So eventually, I expanded Colorful Roots to eyewear that would compliment my client base. I was also inspired to create my Afro Optician Visionary shirt to represent me in abstract as a African American optician and businesswoman. My consumers loved it and I began creating more shirts from there. * * * The first fashion apparel sale for Colorful Roots occurred in September of 2015. * * * In 2019, Colorful Roots had approximately 1000 visitors to its official website. In 2020, Colorful Roots’ official website had approximately 1,300 visitors. Colorful Roots also has a retail location at 9 North Main St, in Three Rivers, Michigan. * * * Colorful Roots has continued to invest in its marketing and increased its marketing efforts to incorporate social media as promotion. * * * Colorful Roots has a very targeted consumer base. 16 Testimony declaration of Brandy Peterson, 19 TTABVUE 2-5. Opposition No. 91253202 14 * * * Throughout our years of operation as Colorful Roots, I was never aware of Roots Corporation. I did not receive communication, from consumers or any other party, in which Colorful Roots was mistaken for Roots Corporation. * * * We have grossed approximately $83,000 in sales and completed approximately 2,115 transactions. In response, Opposer admits that it “has not offered any evidence of actual consumer confusion in this proceeding.”17 However, quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002), Opposer argues that “a showing of actual confusion is not necessary to establish a likelihood of confusion.” Id. The absence of any reported instances of confusion is meaningful only if the record indicates appreciable and continuous use by Applicant of its mark for a significant period in the same markets as those served by Opposer under its mark. Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); see also Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (probative value of the absence of actual confusion depends on there being a significant opportunity for actual confusion to occur). Applicant has sold clothing since 2015, but its sales are modest, totaling $83,000 for all of its goods, including eyeglasses and beauty products. Traffic to Applicant’s 17 Applicant’s Reply Br., p. 10, 22 TTABVUE 15. Opposition No. 91253202 15 website has been similarly modest, totaling approximately 2300 visitors over a two- year period. Applicant and Opposer each have a retail store in Michigan,18 but we do not know whether these stores are close to each other or how long they have been open. We find Applicant’s modest sales and limited market impact suggest there has been little opportunity for actual confusion to have occurred. See Barbara’s Bakery, 82 USPQ2d at 1287 (absence of actual confusion was nonetheless “of little probative value” given “the minimal scope of applicant’s actual use of her mark in the marketplace”). Accordingly, the record does not establish that there has been a reasonable opportunity for confusion to have occurred. The seventh and eighth DuPont factors are neutral. 4. Conclusion After considering all of the applicable DuPont factors, we find that Applicant’s mark, COLORFUL ROOTS for “Clothing, namely, shirts and hats” is likely to cause confusion with Opposer’s marks, ROOTS, for a variety of clothing articles, including shirts, because the marks are similar, and the goods, channels of trade, and consumers are in-part legally identical. Decision: The opposition is sustained under Trademark Act Section 2(d) and registration to Applicant is refused. 18 Declaration testimony of James Connell, “Roots currently operates retail stores in Birmingham, Michigan and Park City, Utah[.]” 17 TTABVUE 3.