Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1070770
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`Filing date:
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`07/27/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`Applicant
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`88290320
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`M & M Footwear Inc.
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`Applied for Mark
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`NAVATEX
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`Correspondence
`Address
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`MARK C COMTOIS
`DUANE MORRIS LLP
`505 9TH STREET NW SUITE 1000
`WASHINGTON, DC 20004-2166
`UNITED STATES
`Primary Email: mccomtois@duanemorris.com
`Secondary Email(s): mckillian@duanemorris.com, ipdocket-
`ing@duanemorris.com, jmlyle@duanemorris.com, JMLyle@duanemorris.com
`202-776-5240
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`Submission
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`Attachments
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Reply Brief
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`Applicants Reply Brief--Serial No
`88290320--NAVATEX--T0983-00012.pdf(272219 bytes )
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`Meghan C. Killian
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`mckillian@duanemorris.com
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`/Meghan C. Killian/
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`07/27/2020
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`

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`Attorney Docket No. T0983-00012
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
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`TRADEMARK TRIAL AND APPEAL BOARD
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`Examining Attorney: Harini Ganesh
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`Law Office 122
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`In re Application of
`M & M FOOTWEAR INC
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`Mark: NAVATEX
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`Serial No.: 88/290,320
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`Filed: February 5, 2019
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`REPLY IN SUPPORT OF APPEAL BRIEF FOR
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`APPLICANT M&M FOOTWEAR INC.
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`I.
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`INTRODUCTION
`There is no likelihood of confusion between Applicant’s NAVATEX Mark and the Cited
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`NAVTECH Mark.1 The Examining Attorney continues to support the refusal to register
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`Applicant’s Mark under Section 2(d) of the trademark Action of 1946, 15 U.S.C. § 1052(d) by
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`improperly dissecting the respective marks in order to manufacture an apparent similarity where
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`there is none. When comparing the marks in their entirety, the marks do not look alike, sound
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`alike, or have the same meanings, and the limited portion that the marks have in common – “NAV”
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`- is weak and in widespread use in connection with goods in Class 25. These differences alone are
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`sufficient to show that confusion is not likely. Furthermore, and contrary to the Examining
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`Attorney’s assertion, the provided evidence does not establish that consumers are accustomed to
`seeing Applicant and Registrant’s goods offered together. The difference in the provided goods
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`1 All definitions set forth-in Applicant’s Appeal Brief are incorporated by reference herein.
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`combined with the differences in the marks and the weakness of the “NAV-“ formative, result in
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`two distinct marks that are not likely to be confused.
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`Applicant hereby replies to the Examining Attorney’s Appeal Brief filed on July 6, 2020.
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`Applicant respectfully requests that the Board reverse the Examining Attorney's decision and pass
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`Application Serial No. 88/290,320 to publication on the Principal Register.
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`II.
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`THE REFUSAL TO REGISTER SHOULD BE REVERSED BECAUSE THERE IS
`NO LIKELIHOOD OF CONFUSION WHEN THE MARKS ARE COMPARED IN
`THEIR ENTIRETY
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`The Examining Attorney continues improperly to dissect and compare “overlapping”
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`portions of each mark, while simultaneously disregarding the other distinct portions, until a false
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`similarity can be drawn. It is well settled that marks must be viewed in their entireties and not
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`dissected when considering whether there is a likelihood of confusion. See, e.g., Opryland USA,
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`Inc. v. Great Am. Music Show, 970 F.2d 847, 851, 23 USPQ2d 1471, 1473 (Fed. Cir. 1992);
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`Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 1007, 212 USPQ 233, 234 (C.C.P.A.
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`1981). In determining whether there is a likelihood of confusion, two marks must be considered
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`as the public views them: in their entireties. See In re Nat'l Data Corp., 753 F.2d 1056, 1058, 224
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`USPQ 749, 751 (Fed. Cir. 1985). Here, the Examining Attorney argues the marks “are highly
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`similar in appearance, sound and commercial impression because they are comprised of nearly
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`identical combinations of the terms ‘NAV-‘ - and ‘-TEX’ or ‘-TECH.”’ This statement is
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`misleading. The Examining Attorney’s argument equates the suffixes “-tech” and “-tex” as though
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`it is a foregone conclusion that these suffixes are one in the same. Yet, due to the differences in
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`spelling and pronunciation, it is self-evident that these suffixes look and sound different.2 The
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`2 Notably, a review of the Principal Register shows an abundance of coexisting registered
`trademarks, that include a “-tex” or “-tech” suffix, for goods in class 25. For example, United
`States Trademark Registration Nos. 5,985,079 for COOLTECH; 5,251,412 for COOLTEX;
`2,995,985 for NATURETECH; 5,598,237 for NATURE TEXX; 4,565,316 for LASTECH;
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`Examining Attorney provides no evidence that these suffixes are commonly interchangeably used.
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`Therefore, the only actual overlapping elements between the Cited Mark and Applicant’s Mark is
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`the “nav-” formative and the letters “te,” as shown below in bold. Yet, these marks contain equal
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`dissimilarities, as shown in bold.
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`Cited Mark
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`NAVTECH
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`Applicant’s Mark
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`NAVATEX
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`Applicant's Mark and the Cited Mark each includes the formative "Nav-". While the
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`Examining Attorney concedes that “Applicant submitted numerous third-party registrations in
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`International Class 25 that contain the “NAV”- prefix,” the Examining Attorney disregards that
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`these registrations demonstrate the commercial weakness in the “Nav-” formative. See 9
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`TTABVUE 4; 4 TTABVUE Ex. A. Despite the Examining Attorney asserting otherwise, active
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`third-party registrations, are relevant to show that a mark or a portion of a mark is so commonly
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`used in a particular industry that the public will look to other elements to distinguish the source of
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`the goods and services. Juice Generation, Inc. v. GS Enters. LLC, 115 USPQ2d 1671, 1675 (Fed.
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`Cir. 2015). As the Federal Circuit has explained, “extensive evidence of third-party registration
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`and use is ‘powerful on its face,’ even where the specific extent and impact of the usage has not
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`been established.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
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`5,288,364 for LYTECH; 5,626,702 for LINGTEX; 5,945,302 for SUBLITECH; 6,088,103 for
`SHEERTEX; 5,293,565 for WINDTEX; 4,621,120 for WELLTEX; 4,552,686 for PROLOTEX;
`6,086,872 for PULSETECH; 5,790,365 for PINTECH; 5,840,827 for HALITECH; 5,526,968 for
`HOUNDTEX; 4,672,286 for HYDROTEX; 4,379,785 for HEATTECH; 5,796,866 for
`BIOTECH; 5,907,910 for MAXTECH; 5,858,003 for ELITECH; 4,726,779 for AMBIOTEX;
`4,128,191 for NEO-TECH.
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`Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015)
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`(citing Juice Generation, Inc., 115 USPQ2d at 1674 (Fed. Cir. 2015)).
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`Consequently, the Examining Attorney’s proclamation that the numerous third-party
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`registrations provided by Applicant “do not diminish the likelihood of confusion between
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`Applicant’s mark and the cited registration” lacks support. See 9 TTABVUE 4. A review of the
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`provided registrations shows that even the difference of a single letter is sufficient to distinguish
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`“Nav-” formative marks (e.g., Registration Nos. 5,542,126 for NAV; 5,009,017 for NAVSS;
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`4,576,018 for NAVS all used in connection with shirts.) Furthermore, contrary to the Examining
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`Attorney’s implicit assertions, the combination of “Nav-“ and “te” is not unique to the Cited Mark
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`and Applicant’s Mark but also is reflected within the third-party registrations (e.g., Registration
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`Nos. 5,364,308 for NAVATE; 5,833,661 for NAVONTIE.) See 9 TTABVUE 4-5.
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`Moreover, as shown in the above comparison chart, Applicant’s Mark differs from the
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`Cited Mark in appearance and sound, when viewed in their entireties, by virtue of the latter parts
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`of the marks (i.e. “atex” and “tech”). The Examining Attorney acknowledges “Applicant’s mark
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`ends with a “ks” sound and Registrant’s mark ends with a hard “k” sound.” Yet, the Examining
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`Attorney fails even to address the other differences in the syllabic construction of the respective
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`marks--Cited NAVTECH Mark is comprised of two syllables (“nav-tech”) and Applicant’s
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`NAVATEX Mark comprises three syllables (nav-a-tex). As such, the Examining Attorney has
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`disregarded the further dissimilarity resulting from the addition of the middle syllable (-a-) of
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`Applicant’s Mark.
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`The Examining Attorney concludes “the marks impart the same or highly similar
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`connotation” without addressing the provided dictionary definition evidencing that “tech” is a
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`common abbreviation for “technology.” See 4 TTABVUE Ex. B. The meaning or connotation of
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`a mark must be determined in relation to the named goods. TMEP § 1207.01(b)(v). Therefore, the
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`dictionary evidence in conjunction with Registrant’s provided goods demonstrates that the Cited
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`Mark implies that Registrant’s clothing items have a technical benefit or are comprised of
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`technologically advanced materials. In comparison, as noted by the Examining Attorney,
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`Applicant’s Mark, with its fanciful spelling, carries no such significance in relation to Applicant’s
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`footwear. See In re Finetex Int'l (USA), Inc., 1997 TTAB LEXIS 431, *3 (TTAB 1997)(“the
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`connotation of its mark FINETEX would be clothing of high quality, whereas the registered mark
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`FINTEX would not have that connotation […] While it is true that there is only one letter
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`difference in the respective marks, this difference is likely to lead to different pronunciations and
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`different connotations of the respective marks.”) Thus, the marks project separate meanings and
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`distinct commercial impressions. As a result, when confronted with both marks, prospective
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`consumers are unlikely to assume that Applicant’s and Registrant’s goods emanate from the same
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`source.
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`III.
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`THE EVIDENCE PROVIDED BY THE EXAMINING ATTORNEY FAILS TO
`ESTABLISH THAT CONSUMERS ARE ACCUSTOMED TO SEEING
`APPLICANT’S GOODS AND REGISTRANT’S GOODS SOLD TOGETHER
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`The dissimilarities in sight, sound, and meaning between Applicant's Mark and the Cited
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`Mark is sufficient in and of itself to establish that there is no likelihood of confusion. See Oakville
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`Hills Cellar, Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1290 (Fed. Cir.
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`2016) (“a single du Pont factor may be dispositive in a likelihood of confusion analysis, especially
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`when that single factor is the dissimilarity of the marks”); Odom's Tenn. Pride Sausage, Inc. v. FF
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`Acquisition, LLC, 600 F.3d 1343, 93 USPQ2d 2030, 2032 (Fed. Cir. 2010) (“[E]ven if all other
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`relevant DuPont factors were considered in [opposer's] favor, as the board stated, the dissimilarity
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`of the marks was a sufficient basis to conclude that no confusion was likely.”); Champagne Louis
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`Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460-61 (Fed. Cir.
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`1998) (Federal Circuit affirmed finding of no likelihood of confusion between mark CRYSTAL
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`CREEK for wine and marks CRISTAL for wine and CRISTAL CHAMPAGNE for champagne,
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`where Board relied solely on dissimilarity of marks); Kellogg Co. v. Pack'em Enters. Inc., 951
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`F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular
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`case, a single du Pont factor may not be dispositive”). Nevertheless, the Examining Attorney’s
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`website evidence fails to establish the assertion that “the average consumer is accustomed to seeing
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`boots, waterproof boots and footwear alongside blazers, jackets, pants, shorts, sweaters, swim
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`trunks, and vests.” See 9 TTABVUE 7.
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`As set forth in In Re Primeway Int'l LLC, No. 87059786, 2019 WL 646088, at *1 (Jan. 9,
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`2019), this type of evidence is weak because the websites show that the identified clothing and
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`footwear are offered on different webpages- as opposed to side by side on the same webpage. A
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`consumer searching on these websites, such as the Tommy Hilfiger and DKNY websites, could be
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`searching for boots or footwear and not even be aware that swim trunks, pants or shirts are also
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`offered. See April 17, 2019 Office Action, TSDR at 26-49 (Tommy Hilfiger webpages for shoes
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`has no indication that clothing is also sold); see also Id. at 53-71 (Tommy Hilfiger webpages for
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`sweater has no indication that boots or footwear is also sold); See July 18, 2019 Office Action,
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`TSDR at 62-77 (DKNY webpages for shoes has no indication that clothing is also sold).
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`As previously explained in Applicant’s Appeal Brief, Applicant and Registrant’s goods are
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`not substitutes or replacements for one another, and they are used by consumers with very different
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`needs - boots, such as outdoor waterproof boots are not a replacement for blazers and vests, and
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`vice versa. Due to these distinctions, confusion is not likely.
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`IV.
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`CONCLUSION
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`By reason of the arguments contained herein and those incorporated in Applicant’s Appeal
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`Brief, there is no likelihood of confusion between Applicant’s Mark and the Cited Mark.
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`Applicant’s Mark is different from the Cited Mark in appearance, meaning, number of syllables,
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`pronunciation, and overall commercial impression. “No mechanical rule determines likelihood of
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`confusion, and each case requires weighing of the facts and circumstances of the particular mark.”
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`In re Mighty Leaf, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). Given the extensive evidence of third-
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`party use of marks containing “Nav-,” consumers will rely on the other elements of the marks and
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`their commercial impressions as a whole to distinguish the marks. See Sure-Fit Products Co. v.
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`Saltzon Drapery Co., 117 USPQ 295, 297 (CCPA 1958); Puma-Sportschuhfabriken Rudolf
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`Dassler KG v. Superga Spa, 210 USPQ 316, 317 (TTAB 1980) (where plaintiff adopts a
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`commonly used mark, “his competitors may come closer to his mark without violating his rights
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`than would be the case with a strong mark”). Applicant respectfully requests that the Board reverse
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`the refusal pursuant to Trademark Act §2(d) and allow the Application to proceed to publication.
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`DATE: July 27, 2020
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` Respectfully Submitted,
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`/Mark C. Comtois/
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`Mark C. Comtois
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`DUANE MORRIS LLP
`505 9th Street, N.W., Suite 1000
`Washington, DC 20004-2166
`mccomtois@duanemorris.com
`P: 202.776.5240
`F: 202.428.0452
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`Attorneys for Applicant
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`DM2\12874261.1
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