Staton Holdings, Inc.

Trademark Trial and Appeal Board

Sep 6, 2016

No. 86186201 (T.T.A.B. Sep. 6, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 6, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Staton Holdings, Inc.
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Serial No. 86186201
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Christopher M. McCaffrey of Law Offices of Christopher M. McCaffrey,
for Staton Holdings, Inc.
Cheryl Clayton, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Taylor, Greenbaum, and Masiello,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Staton Holdings, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark for
Marketing consulting, namely, production of original
promotional video content featuring marketing resources
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for the promotional products industry in International
Class 35.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the ground that Applicant’s
mark, when used in connection with Applicant’s services, is likely to cause confusion
with the mark THREAD (in standard characters) for “Advertising, marketing and
promotion services; Public relations” in International Class 35.2
When the refusal was made final, Applicant appealed. We affirm the refusal to
register.
I. Likelihood of Confusion - Applicable Law
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 Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the services. See Federated Foods, Inc. v. Fort

1 Application Serial No. 86186201 was filed on February 6, 2014, based upon Applicant’s claim
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act. The application includes the following description of the mark: “The mark consists of the
words ‘The Thread By Staton’ which incorporates a black design of a needle and thread
incorporated into the ‘T’ in ‘THE’ and a stitch between the letters ‘S’ and ‘T’ in ‘STATON.’
The stylized words ‘THE’ and ‘BY STATON’ and the letters ‘H’ and ‘E’ are in black. The letters
‘T’ and ‘A’ are orange. The letters ‘R’ and ‘D’ are blue. The design is on a white background.”
The colors black, orange, blue, and white are claimed as a feature of the mark.
2 Registration No. 3760840 issued on March 16, 2016. Section 8 Affidavit accepted. Section
15 Affidavit acknowledged.
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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 services] and differences in the marks.”).
A. Comparison of the Marks
We first consider the du Pont factor of the similarities and dissimilarities between
Applicant’s mark and the cited mark THREAD. We
analyze “the marks in their entireties as to appearance, sound, connotation and
commercial impression.” Viterra, 101 USPQ2d at 1908 (quoting du Pont, 177 USPQ
at 567). See also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “The proper test is
not a side-by-side comparison of the marks, but instead ‘whether the marks are
sufficiently similar in terms of their commercial impression’ such that persons who
encounter the marks would be likely to assume a connection between the parties.”
Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82
USPQ2d 1901, 1905 (TTAB 2007)). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. In re Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).
In comparing the two marks, we note that Applicant’s mark incorporates the
entirety of Registrant’s mark. Thus, although the marks are not identical in sound
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and appearance, they are similar in sound and appearance in that they both contain
the wording THREAD. Likelihood of confusion often has been found where the
entirety of one mark is incorporated within another. See Coca-Cola Bottling Co. of
Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188
USPQ 105 (CCPA 1975) (applicant’s mark BENGAL LANCER for club soda, quinine
water and ginger ale is likely to cause confusion with BENGAL for gin); Johnson
Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (applicant’s mark
EBONY DRUM for hairdressing and conditioner is likely to cause confusion with
EBONY for cosmetics); In re Cosvetic Labs., Inc., 202 USPQ 842 (TTAB 1979)
(applicant’s mark HEAD START COSVETIC for vitamins for hair conditioners and
shampoo is likely to cause confusion with HEAD START for men’s hair lotion and
after-shaving lotion).
In this case, we find that the shared wording THREAD is the central and most
memorable feature of Applicant’s mark. Due to its large size, tri-color letters, and
placement in the middle of Applicant’s mark, THREAD is the most visually
prominent portion of Applicant’s mark. However, contrary to Applicant’s argument,
this depiction of the word THREAD does not distinguish Applicant’s mark from the
cited mark; because the cited mark is registered in standard form, it is not limited to
any particular font, and therefore can be depicted in a style similar to that of
Applicant’s mark. See Viterra, 101 USPQ2d at 1909; Citigroup Inc. v. Capital City
Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); Squirtco v.
Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (rejecting argument
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that a typed (now called standard character) mark is distinct from a mark in a logo
format; “[b]y presenting its mark in a typed drawing, a difference cannot legally be
asserted by that party.”).
Applicant’s mark also contains the phrase BY STATON in very small lettering
below the large word THREAD, and the definite article THE in smaller and lighter
font than that of the word THREAD, and these terms incorporate design elements
claimed by Applicant. Applicant argues that the inclusion of these additional words
and their designs avoids confusion. We disagree.
THREAD has the strongest source-indicating significance in Applicant’s mark
because of the way in which THREAD is depicted, i.e., size, location, and tri-color
letters, as noted above. To the extent a consumer would recognize that the initial
letter “t” in the word “THE” constitutes a needle and thread, or that the word
“STATON” includes a stitch, both claimed designs reinforce the commercial
impression of the term THREAD in Applicant’s mark. Further, with respect to the
needle and thread design, under the doctrine of legal equivalents, a pictorial
representation and its literal equivalent are likely to impress the same mental image
on purchasers, thereby increasing the similarity between Applicant’s mark and
Registrant’s mark. See, e.g., Izod, Ltd. v. Zip Hosiery Co., 405 F.2d 575, 160 USPQ
202 (CCPA 1969); Squirrel Brand Co. v. Green Gables Inv. Co., 223 USPQ 154, 155
(TTAB 1984); Clover Farm Stores Corp. v. James G. Gill Co., 142 USPQ 233, 234
(TTAB 1964) (“Words being the literal equivalent of pictures, symbols, devices and
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the like, it seems more than likely that the contemporaneous use of ‘RED BAG’ for
coffee and a red bag for coffee is likely to cause mistake or even confusion.”).
THREAD appears to be an arbitrary term in connection with the identified
services.3 Therefore, Applicant’s inclusion of its trade name or house mark “BY
STATON” does not differentiate the marks. In general, the addition of a house mark
to inherently distinctive matter does not obviate likely confusion, and in some
instances, may increase likely confusion. See In re West Point-Pepperell, Inc., 468 F.2d
200, 175 USPQ 558, 559 (CCPA 1972) (stating that addition of a trade name will
make consumers think that products have a common origin or that the companies
merged); Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1201-02 (TTAB 2007)
(applying principle that “the addition of a trade name or house mark or other such
matter to one of two otherwise similar marks will not serve to avoid a likelihood of
confusion.”). This case does not present an exception where the marks in their
entireties convey significantly different commercial impressions, or the common
matter is merely descriptive or diluted. Cf. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d
1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (THE RITZ KIDS and RITZ create different
commercial impressions); Citigroup, 98 USPQ2d at 1261 (CAPITAL CITY BANK and
CITIBANK not likely to be confused due in part to frequent use of “City Bank” in the
banking industry).

3 In its reply brief, Applicant raises the claim that “there are approximately 392 registered
marks that contain the word ‘thread’ and thus encompass the entire registered mark at
issue.” 7 TTABVUE 5. However, none of these registrations is of record, and “[t]he Board does
not take judicial notice of registrations that reside in the Patent and Trademark Office.” UMG
Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1046 (TTAB 2009) (citing Corporate Fitness
Programs Inc. v. Weider Health and Fitness Inc., 2 USPQ2d 1682, 1683-84, n.3 (TTAB 1987).
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Finally, in this case, the word “the” is a definite article that has no source
identifying significance. See In re Thor Tech, 90 USPQ2d 1634, 1635 (2009) (“The
addition of the word ‘The’ at the beginning of the registered mark does not have any
trademark significance. ‘The’ is a definite article. When used before a noun, it denotes
a particular person or thing.”).
For these reasons, although we recognize that Applicant’s mark includes
additional terms, they do not distinguish the marks in our analysis. We find that
consumers are unlikely to view the term THE as a source-distinguishing element.
Similarly, given the “house mark” significance of the term BY STATON, reverse
confusion may result and adversely affect Registrant’s rights in the cited mark. We
therefore treat THREAD as the dominant element in Applicant’s mark. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014) (while marks must be compared in their entireties, “there is nothing
improper in stating that … more or less weight has been given to a particular feature
of the mark, provided the ultimate conclusion rests on a consideration of the marks
in their entireties.”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985)).
We do not find persuasive Applicant’s unsupported assertion that its mark “calls
to mind the actual threads of fabric in the garment industry and in the products that
applicant distributes,”4 while Registrant’s mark “is imaginative – the ‘thread’
represents the creative and metaphorical concept of ‘weaving’ several forms of

4 4 TTABVUE 14.
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marketing strategies that are inter-related to serve one purpose, and describes their
services.”5 Other than the minor design elements in Applicant’s mark, which are not
readily apparent, nothing in either mark favors one posited connotation over the
other, and we see no reason why each connotation could not apply equally to each
mark.
While differences exist between the respective marks when they are viewed and
compared side-by-side, we find that in their entireties, the marks are substantially
similar in appearance, sound, and connotation due to the shared term THREAD, and
they convey similar commercial impressions. The factor of the similarity of the marks
thus favors a finding of likelihood of confusion.
B. Relatedness of the Services, Channels of Trade, and Conditions of
Purchase
With regard to the services, channels of trade, and conditions of purchase, we must
make our determinations under these factors based on the services as they are
identified in the application and registration. See In re Dixie Rests., 105 F.3d 1405,
41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v.
Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming public may
perceive [the respective goods and services of the parties] as related enough to cause

5 4 TTABVUE 14.
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confusion about the source or origin of the goods and services.’” In re St. Helena Hosp.,
774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard, 62
USPQ2d at 1004).
When analyzing the similarity of the services, “it is not necessary that the
products of the parties be similar or even competitive to support a finding of likelihood
of confusion.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler,
83 USPQ2d 1715, 1724 (TTAB 2007)). See also On-line Careline Inc. v. Am. Online
Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000) (The products need not
be identical or even competitive to find a likelihood of confusion). Rather, “likelihood
of confusion can be found ‘if the respective products are related in some manner
and/or if the circumstances surrounding their marketing are such that they could
give rise to the mistaken belief that they emanate from the same source.’” Coach
Servs., 101 USPQ2d at 1722 (quoting 7-Eleven, 83 USPQ2d at 1724). The issue is
whether there is a likelihood of confusion as to the source of the services, not whether
purchasers would confuse the services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434,
1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
As noted above, the services identified in the registration are “advertising,
marketing and promotion services; public relations,” and the services identified in the
application are “marketing consulting, namely, production of original promotional
video content featuring marketing resources for the promotional products industry.”
The RANDOM HOUSE DICTIONARY defines “advertising” as “the act or practice of calling
public attention to one’s product, service, need, etc., especially by paid
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announcements in newspapers and magazines, over radio or television, on billboards,
etc.,” “marketing” as “the total of activities involved in the transfer of goods from the
producer or seller to the consumer or buyer, including advertising, shipping, storing,
and selling,” and “promotion” as “something devised to publicize or advertise a
product, cause, institution, etc., as a brochure, free sample, poster, television or radio
commercial, or personal appearance.”6
With these definitions in mind, we find that the parties’ identified services are
complementary in that the service of “advertising” on television would involve the
production of a video. For example, a customer that wants to use television as a way
to advertise its goods or services could hire Applicant for its video production services
and Registrant for the service of arranging to have the resulting video played on
television. To that extent, the identified services offered by Applicant and Registrant
can be used together to advertise a company’s goods via television.
Applicant argues that Applicant and Registrant actually provide different services
in that Applicant sells T-shirts and other sportswear, and Registrant designs
Internet-based advertising. This argument is not persuasive because, as we state
above, we are bound by the identifications of services in the application and
registration. See Dixie Rests., 41 USPQ2d at 1534. Applicant has identified its service
as production of video content, not T-shirts or sportswear. Moreover, the registration

6 Dictionary.com Unabridged, based on the RANDOM HOUSE DICTIONARY (2016). The
Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular
fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). We take judicial
notice of the above definitions.
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identifies advertising, without limitation. A trademark registration on the Principal
Register is prima facie evidence of the validity of the registration and the registrant's
exclusive right to use the mark in commerce in connection with the specified services.
15 U.S.C. § 1057(b). Consequently, Applicant’s argument that Registrant offers only
Internet-based advertising services constitutes an impermissible collateral attack on
the cited registration, and may not be considered in an ex parte proceeding. See Dixie
Rests., 41 USPQ2d at 1534-35; In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB
1992).
As to the channels of trade and classes of purchasers, Applicant argues it “sells
only to companies and individuals who are in the promotional products industry”7
and does not sell to the general public. Further, Applicant’s mark “is to be used in
connection with a series of video presentations produced in-house by [Applicant] and
shown on their website directed to companies that purchase from them.”8 On the
other hand, Registrant “is an agency that helps companies develop and implement
marketing strategies through internet web pages and social media. … Unlike
[Applicant], they don’t sell any tangible goods, but instead provide creative services
to companies that are seeking help in marketing.”9 However, as with Applicant’s
attempt to distinguish the services, Applicant’s attempt to distinguish the channels
of trade and classes of purchasers impermissibly reads a limitation into the

7 4 TTABVUE 13.
8 4 TTABVUE 15.
9 4 TTABVUE 14.
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registration. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986)
(registrant's goods may not be limited by extrinsic evidence or argument). The
identification of services in the registration does not limit the channels of trade in
any way, nor does it exclude “companies and individuals who are in the promotional
products industry” from the broadly identified “advertising, marketing and
promotion” services.
Moreover, Applicant argues, without evidentiary support, that purchasers of the
services identified in the registration and “Applicant’s goods”10 are sophisticated. At
minimum these services would not be considered impulse purchases, but there is
nothing in the record to understand the level of care such purchases would entail.
In view of the foregoing, we find that the relatedness of the services favors a
finding of likelihood of confusion, and we deem neutral the du Pont factors of channels
of trade and purchasing conditions.
II. Conclusion
We have carefully considered all evidence of record and Applicant’s arguments,
even if not specifically discussed herein, as they pertain to the relevant du Pont
factors. We treat as neutral any du Pont factors for which there is no evidence.
Because the marks are substantially similar when viewed in their entireties, and the

10 4 TTABVUE 15.
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identified services are related, we find that confusion is likely between Applicant’s
mark and Registrant’s mark THREAD.
Decision: The refusal to register Applicant’s mark is
affirmed.