Whole Soul by DAZ, LLC

Trademark Trial and Appeal Board

Feb 22, 2012

No. 77724746 (T.T.A.B. Feb. 22, 2012)

Mailed: 2/22/12

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Whole Soul by DAZ, LLC
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Serial No. 77724746
_______

Mark D. Passler and Rachel B. Rudensky of Akerman
Senterfitt for Whole Soul by DAZ, LLC.

Gina Hayes, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Quinn, Bucher and Shaw,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Whole Soul by DAZ, LLC filed, on April 29, 2009, an
intent-to-use application to register the mark WHOLE SOUL
(in standard character form) for the goods, as set forth in
an amended identification, “hats, caps, headwear, jackets,
sweat shirts, t-shirts, pants and shorts, sold on-premises
at applicant’s seminars and events and through applicant’s
web site” (in International Class 25).
The examining attorney refused registration under
Section 2(d), 15 U.S.C. §1052(d), on the ground that
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser No. 77724746
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applicant’s mark, when applied to applicant’s goods, so
resembles the previously registered mark shown below

for “wearable full body towels and all purpose towels” (in
International Class 24), and “apparel, namely, robes” (in
International Class 25),1 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.2
Applicant’s principal argument is that the channels of
trade, as reflected in its identification of goods, are
distinctly different: “By definition, applicant’s goods
will not be available in department stores or stores of any
kind, and will not be sold in the same stores to the same
class of purchasers. It should be obvious that
registrant’s towels and robes will not be sold on–premises
at applicant’s seminars and events and through applicant’s

1 Registration No. 3443385, issued June 10, 2008.
2 Applicant, in its brief (p. 5, n.3), hints that the registered
mark is abandoned, while at the same time acknowledging that
“ex parte proceedings are not the proper arena for collateral
attacks on a valid registration.” Indeed, any “real-world market
facts” regarding the lack of use of registrant’s mark are
irrelevant to our likelihood of confusion analysis. See In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed.
Cir. 1997). See also TMEP §1207.01(d)(iv) (8th ed. 2011).
Ser No. 77724746
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web site.” (Brief, p. 6).3 Applicant also contends that
the goods are specifically different, that is, applicant’s
goods comprise casual sportswear and outerwear, compared
with registrant’s garment worn around the pool or in the
bathroom.4
The examining attorney maintains that the marks are
identical and that the goods are related. More
specifically, although recognizing that applicant’s
identification of goods includes trade channel
restrictions, the examining attorney points out that
registrant’s identification does not include any
restriction. Thus, the examining attorney contends,
registrant’s goods may be sold not only in department
stores, but through online websites or at seminars as well.

3 Applicant, in its brief, states that it is dedicated, under the
direction of psychologist Angela Glazer, to nurturing spiritual
growth, advancement of personal relationships and spiritual
inspiration, and that its core service is education in these
areas. In this connection, applicant hosts seminars and
workshops, writes a blog and hosts a Facebook® social networking
page. According to applicant, its customers are individuals who
attend the workshops, who read applicant’s books and blog, who
sign up to be “fans” of applicant’s Facebook® page, or who are
subscribers to applicant’s Twitter® feed. None of these facts is
established by any evidence of record; more importantly, the
trade channel restriction in the identification of goods, namely,
“applicant’s web site,” is not further limited to any specific
type of web site (as, for example, one featuring topics on
personal relationships and spiritual inspiration and growth).
4 Applicant claims ownership of two registrations of the mark
WHOLE SOUL, namely, Reg. No. 3857740 for goods in Class 16; and
Reg. No. 3874281 for goods in Class 9 “in the field of
inspiration.”
Ser No. 77724746
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In denying applicant’s request for reconsideration after
amendment of the identification of goods, the examining
attorney also relied upon a theory of post-sale confusion:
“it is plausible that knowledgeable consumers of the
registrant’s WHOLE SOUL robes upon encountering the
applicant’s WHOLE SOUL clothing items worn by individuals
on the street are likely to be confused as to the source of
the goods.” (Office action, 3/17/2011, unnumbered p. 2).
In support of the refusal, the examining attorney
introduced third-party registrations showing that the same
entity has registered a single mark for both types of goods
that are involved herein; and excerpts of third-party
websites of retailers showing that both types of goods may
emanate from a single online source.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Ft. Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
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In comparing the marks, we must consider the marks in
their entireties as to appearance, sound, connotation and
commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). Applicant’s brief
is silent on the similarity between the marks factor, and
indeed the marks are identical. The marks are identical in
sound and appearance, and there is no indication that
applicant’s proposed use would result in its mark having a
different connotation or commercial impression than the
registered mark. Further, the record is devoid of any
third-party uses and/or registrations of the same or
similar mark in the clothing field. The mark WHOLE SOUL
would appear to be arbitrary as used in connection with
goods of the type involved in this appeal.
The identity between the marks is a factor that weighs
heavily in favor of a finding of a likelihood of confusion.
The crux of this appeal centers on a comparison of the
goods, and most especially, on the impact of the trade
channel restrictions set forth in applicant’s
identification of goods. In comparing the goods, we
initially note that where identical marks are involved, as
is the case here, the degree of similarity between the
Ser No. 77724746
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involved goods that is required to support a finding of
likelihood of confusion declines. In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed. Cir. 1993); In
re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001); and In re
Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992). It is only
necessary that there be a viable relationship between the
two to support a finding of likelihood of confusion. In re
Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983). The issue here, of course, is not whether
purchasers would confuse the respective goods, but rather
whether there is a likelihood of confusion as to the source
of these goods. In re Rexel Inc., 223 USPQ 830 (TTAB
1984). In this connection, it should also be noted that
there is no per se rule governing likelihood of confusion
cases involving all types of wearing apparel. See In re
British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984).
The examining attorney submitted, in her attempt to
show that the goods are related, several use-based third-
party registrations showing that the same entity has
registered the same mark for the types of goods involved in
this appeal. “Third-party registrations which cover a
number of differing goods and/or services, and which are
based on use in commerce, although not evidence that the
marks shown therein are in use on a commercial scale or
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that the public is familiar with them, may nevertheless
have some probative value to the extent that they may serve
to suggest that such goods or services are of a type which
may emanate from a single source.” In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d,
864 F.2d 149 (Fed. Cir. 1988). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
The third-party registrations show, not surprisingly,
that clothing items such as hats, jackets, t-shirts, pants,
and robes may emanate from a single source under a single
mark.
Likewise, it is not surprising that these same
clothing items are sold by the same online retailers. This
is especially true in the examples relied upon by the
examining attorney, showing that entities such as Ralph
Lauren, Jockey, Calvin Klein, Macy’s and JC Penney offer a
wide range of clothing items, including the very types
involved herein.
Although these kinds of third-party registrations and
websites are often probative in analyzing the similarity
between the goods in likelihood of confusion cases, we find
the evidence to be less helpful in the present case where
applicant’s identification of goods includes the
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restriction “sold on-premises at applicant’s seminars and
through applicant’s web site.”
We make our comparison of the goods, including between
the respective channels of trade and classes of purchasers,
based on the goods as they are identified in the
application and the cited registration. In re Giovanni
Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
If the cited registration describes the goods broadly,
and there is no limitation as to their nature, type,
channels of trade, or class of purchasers, it is presumed
that the registration encompasses all goods of the type
described, that they move in all normal channels of trade,
and that they are available to all classes of purchasers.
See, e.g., In re Thor Tech, Inc., 90 USPQ2d 1634, 1638
(TTAB 1990) (“We have no authority to read any restrictions
or limitations into the registrant’s description of
goods.”). Accordingly, if the cited registration has a
broad identification of goods, an applicant does not
necessarily avoid a likelihood of confusion merely by more
narrowly identifying its related goods. See, e.g., In re
Diet Center, Inc., 4 USPQ2d 1975 (TTAB 1987) (noting that,
although applicant had limited its identification to
indicate that its goods were sold only through franchised
outlets offering weight-reduction services, the cited
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registration’s identification contained no limitations as
to trade channels or classes of customers and thus it must
be presumed that registrant’s goods travel through all the
ordinary channels of trade).
In the present case, registrant’s “robes” and
“wearable full body towels” are not restricted to any
specific trade channel or class of purchaser. Accordingly,
the goods are expected to move through all normal trade
channels; these trade channels would include an online
retail website. Further, we must presume that the goods
are available to all classes of purchasers; these
purchasers would include those who are familiar with
applicant, through applicant’s seminars and events, and
through applicant’s website.
Applicant’s “hats, caps, headwear, jackets, sweat
shirts, t-shirts, pants and shorts” are restricted to trade
channels set forth in the identification as “sold on-
premises at applicant’s seminars and events and through
applicant’s web site.” As explained by applicant:
Many programs in the field of
spirituality and personal development
sell related merchandise....Applicant
intends to sell promotional clothing
such as t-shirts, swear shirts and hats
at its seminars and workshops, and
through its web page. Clothing such as
applicant’s is designed to, and
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functions as, a form of promotion of
applicant’s WHOLE SOUL program.

The normal channels of trade for
merchandise such as applicant’s are on-
site at seminars and through Internet
sales. Applicant conducts seminars and
workshops, and sets up tables nearby
where participants can buy applicant’s
books, CDs, cards, and of course, the
goods identified in the instant
application, namely “hats, caps,
headwear, jackets, sweat shirts, t-
shirts, pants, shorts, sold on-premises
at applicant’s seminars and events and
through applicant’s website.” As
indicated in the amended identification
of goods, those of applicant’s fans who
are not able to attend the seminars can
purchase applicant’s merchandise
through applicant’s web page.
(emphasis in original).

(Brief, p. 4). Although applicant readily acknowledges
that the cited registration contains no limitations on
trade channels, it argues “the obvious market reality is
that applicant will not be selling the cited registrant’s
towels and robes at applicant’s seminars or through
applicant’s website.” (Brief, p. 8). Applicant asserts
that “[t]here is no evidence that registrant’s consumers
will attend applicant’s seminars and experience source
confusion [between the goods]” and “[t]here is no evidence
that registrant’s consumers will encounter applicant’s
spiritual and inspirational website and mistakenly believe
that it is related to registrant and its robes.” Id.
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Applicant is setting the bar too high; in ex parte
appeals, there is seldom the type of direct evidence
regarding consumers that applicant identifies as missing in
the present case. Rather, based on the identifications of
goods in the involved application and the cited
registration, certain presumptions may be made. In the
case of the cited registration, there are no restrictions
on trade channels and purchasers. Thus, as indicated
above, we must presume that the goods travel through all
normal trade channels, and these would include online
websites. Both applicant’s and registrant’s goods would be
sold on the Internet, albeit on different web sites.
Nevertheless, the websites may be visited by the same
classes of purchasers, namely those familiar with
applicant’s activities, (i.e., applicant’s “fans”).
Given that the identical, arbitrary mark is applied to
both applicant’s clothing items and registrant’s robes, and
that the goods are related, and the fact that both types of
goods are available through online web sites, the relevant
consumers are likely to mistakenly believe that the goods
originated from or are associated with or sponsored by the
same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
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doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.