ESTTA Tracking number:
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`ESTTA1315140
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`Filing date:
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`10/10/2023
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91281566
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`Party
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`Correspondence
`address
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`Submission
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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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`Attachments
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`Plaintiff
`The Boeing Company
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`JAMES L. VANA
`PERKINS COIE LLP
`P.O. BOX 2608
`SEATTLE, WA 98111
`UNITED STATES
`Primary email: pctrademarks@perkinscoie.com
`Secondary email(s): boeingip@perkinscoie.com, TBrandon@perkinscoie.com
`206-359-8000
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`Plaintiff's Notice of Reliance
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`Emilie Kurth
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`pctrademarks@perkinscoie.com
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`/Emilie Kurth/
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`10/10/2023
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`2023-10-10 Boeing_s Notice of Reliance_6.pdf(112591 bytes )
`NOR 6 - Exhibits.pdf(3125871 bytes )
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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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`Opposer,
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`THE BOEING COMPANY,
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`v.
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`RICARDO L. ORTIZ SANTOS
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`Opposition No.
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`91281566
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`Serial No.:
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`90/433,588
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`Applicant.
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`Mark:
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`OPPOSER’S SIXTH NOTICE OF RELIANCE:
`PRINTED MATERIALS
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`Opposer, The Boeing Company (“Boeing”), pursuant to 37 C.F.R. §§ 2.122(e), submits
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`into the record of this opposition proceeding copies of printouts of cases and other documents
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`that were publicly available on the Internet on the date and at the source from which they were
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`accessed and printed, as set forth below:
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`Exhibit
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`Case Citation
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`No.
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`Levi Strauss & Co., No. 91249773, 2022 WL 2384011, at *11–12 (June 29,
`2022)
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`In re John Lankshear, Serial No. 85239139 (June 6, 2013)
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`In re: Detroit Athletic Co., 903 F.3D 1297, 1303 (Fed. Cir. 2018)
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`Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Management, Inc. 618
`F.3D 1025 (9th Cir. 2010)
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`In re Telecom (CHINA) Ltd., Serial No. 87440925 (Nov. 6, 2019)
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`This evidence is relevant to demonstrate, among other things, past TTAB and court
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`holdings demonstrating how the Board has treated area codes contained in marks, and also
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`demonstrating that both courts and the Board have held that retail services selling clothing and
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`apparel, on one hand, and clothing and apparel goods, on the other, are related.
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`DATED October 10, 2023
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`PERKINS COIE LLP
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`By: /James L. Vana/
`James L. Vana
`Emilie Kurth
`P.O. Box 2608
`Seattle, WA 98111
`Telephone No: (206)359-3036
`JVana@perkinscoie.com
`EKurth@perkinscoie.com
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`Attorneys for Opposer
`The Boeing Company
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`92569918.1
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of OPPOSER’S SIXTH NOTICE OF
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`RELIANCE: PRINTED MATERIALS has been served on October 10, 2023, to attorney for
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`Applicant by electronic mail to:
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`MARIA I. SANTOS
`P.O. Box 2732
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`Guaynabo, Puerto Rico 00970
`fernando@mercadofuertes.com
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`ortizcolonricardo@gmail.com
`misantoslaw@gmail.com
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`/Tracy Brandon/
` Tracy Brandon
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`92569918.1
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`The Boeing Company
`v.
`Ricardo L. Ortiz Santos
`Opposition No. 91281566
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`Opposer's Sixth Notice of Reliance
`Exhibits 1-5
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`Exhibit 1
`Exhibit 1
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`LEVI STRAUSS & CO. v. KEVIN HENRY ARMANT, 2022 WL 2384011 (2022)
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`2022 WL 2384011 (Trademark Tr. & App. Bd.)
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`THIS OPINION IS NOT A PRECEDENT OF THE TTAB
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`Trademark Trial and Appeal Board
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`Patent and Trademark Office (P.T.O.)
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`LEVI STRAUSS & CO.
`v.
`KEVIN HENRY ARMANT
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`Opposition No. 91249773
`June 29, 2022
`*1 Gregory S. Gilchrist of Verso Law Group, LLC for Levi Strauss & Co.
`Kevin Henry Armant, pro se
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`Before Zervas, Wolfson, and Larkin
`Administrative Trademark Judges
`Opinion by Larkin
`Administrative Trademark Judge:
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`Kevin Henry Armant (“Applicant”), appearing pro se, seeks registration on the Principal Register of the following marks, all
`for “T-shirts” in International Class 25:
`(1) 504EVER in standard characters; 1
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`(2) the composite word-and-design mark shown below
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` © 2023 Thomson Reuters. No claim to original U.S. Government Works.
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`LEVI STRAUSS & CO. v. KEVIN HENRY ARMANT, 2022 WL 2384011 (2022)
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`; 2 and
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`(3) the composite word-and-design mark shown below
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` © 2023 Thomson Reuters. No claim to original U.S. Government Works.
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`LEVI STRAUSS & CO. v. KEVIN HENRY ARMANT, 2022 WL 2384011 (2022)
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`3 L
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`evi Strauss & Co. (“Opposer”) opposes registration of each of Applicant's three marks on two grounds: (1) Likelihood of
`confusion with Opposer's alleged registered and common-law “500 Series” trademarks, under Section 2(d) of the Trademark
`Act, 15 U.S.C. § 1052(d), and (2) Likelihood of dilution of those marks by blurring, under Section 43(c) of the Trademark
`Act, 15 U.S.C. § 1125(c). 4
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`The case is fully briefed. 5 We sustain the opposition to each mark on the basis of Opposer's Section 2(d) claim.
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`I. Record and Preliminary Matters
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`The record consists of the pleadings, 6 the file histories of Applicant's three applications, by operation of Trademark Rule
`2.122(b)(1), 37 C.F.R § 2.122(b)(1), and the materials submitted by the parties and discussed below.
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`Opposer:
`• The Testimony Declaration of Jennifer Sey, Opposer's Executive Vice President & President, Levi's Brand, and Exhibits A-
`Q thereto, 25 TTABVUE 2-1048; 7
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`• The Testimony Declaration of Thomas M. Onda, Opposer's Chief Counsel, Global Intellectual Property, Brands and Marketing,
`and Exhibits A-B thereto, 26 TTABVUE 2-34, submitted during Opposer's trial period, and the Second Testimony Declaration
`of Mr. Onda and Exhibit C thereto, submitted during Opposer's rebuttal period, 35 TTABVUE 2-6; 8
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`• Opposer's Notice of Reliance No. 1 covering Exhibits 1-1-1-58, 29 TTABVUE 2-408;
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`LEVI STRAUSS & CO. v. KEVIN HENRY ARMANT, 2022 WL 2384011 (2022)
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`• Opposer's Notice of Reliance No. 2 covering Exhibits 2-1-2-7, 24 TTABVUE 2-160;
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`*2 • Opposer's Notice of Reliance No. 3 covering Exhibits 3-1-3-53, 30 TTABVUE 2-380; and
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`• Opposer's Rebuttal Notice of Reliance No. 4 covering Exhibits 4-1-4-2.34 TTABVUE 2-25.
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`Applicant:
`• Applicant's First Notice of Reliance covering Exhibits 1-1-1-5, 31 TTABVUE 2-79; and
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`• Applicant's Second Notice of Reliance covering Exhibits 3-1-3-2. 32 TTABVUE 2-14.
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`Opposer's Rebuttal Notice of Reliance No. 4 contains objections to Applicant's two Notices of Reliance. 34 TTABVUE 2-3.
`Opposer argues that “Applicant violated the Board's rules, including TBMP § 704.02, by failing to adequately specify the reason
`for submitting, or the relevance of, Applicant's requests for admission or [Opposer's] response to those requests” and “submitted
`them as a group, without any detail explaining his reasoning.” Id. at 2. According to Opposer, “Applicant's submission is too
`general to permit a full rebuttal.” Id. at 3. Opposer also objects to Applicant's submission of USPTO records under both Notices
`of Reliance because Applicant “fail[ed] to adequately specify the reason for submitting, or the relevance of” those documents. Id.
`
`“‘Aa a general rule, [procedural] objections that are curable must be seasonably raised, or they will be deemed waived.”’ Moke
`Am. LLC v. Moke USA, LLC, 2020 USPQ2d 10400, at *4 (TTAB 2020) (quoting Nahshin v. Prod. Source Int'l, LLC, 107 USPQ2d
`1257, 1259 (TTAB 2013)). A procedural objection to a notice of reliance, such as Opposer's claim that Applicant did not
`adequately specify the relevance of the materials submitted under his Notices of Reliance, should be raised promptly, preferably
`by a motion to strike the notice of reliance if the defect is one that can be cured. See generally TRADEMARK TRIAL AND
`APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) Section 707.02(b) (June 2021) and cases cited therein. Objections
`to “a notice of reliance grounded in asserted procedural defects are waived unless raised promptly, when there is an opportunity
`to cure.” Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1163 (TTAB 2017) (citing Corporacion Habanos
`SA v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1093 (TTAB 2012); Beech Aircraft Corp. v. Lightning Aircraft Co., 1
`USPQ2d 1290, 1291 (TTAB 1986)). Opposer waited until its rebuttal period to object to Applicant's Notices of Reliance on
`the ground that they did not specify the relevance of the referenced materials, and Opposer's objections are thus untimely and
`we deem them waived.
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`*3 Applicant's brief discusses various issues under the section heading “Summary of the Evidence.” 39 TTABVUE 8. The first
`is captioned “Jurisdiction” and begins with the statement that “[u]nder TBMP Rule [sic] 102.01 [t]he Board is not authorized to
`determine the right to use, nor may it decide broader questions of infringement or unfair competition.” Id. Applicant proceeds to
`cite numerous cases supporting this correct, but inapplicable, proposition. Id. at 8-9. Applicant then claims that Opposer “alleges
`trademark infringement,” arguing that “any alleged infringement issues raised by [Opposer] is [sic] outside the jurisdictional
`scope and authorized adjudication of the Board in this matter and those allegations should be disregarded by the Board as non-
`jurisdictional.” Id. at 9.
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`We agree with Applicant that the Board has no authority to decide infringement issues, 9 but Opposer's prayer for relief in its
`Second Amended Notice of Opposition is only “that this Opposition be sustained, and that registration to Mr. Kevin Armant
`for the marks covered by Application Serial Nos. 88/191,652, 88/172,756, and 88/186,257 be denied.” 22 TTABVUE 7. Such
`relief may properly be granted by the Board under its statutory jurisdiction to “determine and decide the respective rights of
`registration.” 15 U.S.C. § 1067(a).
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`LEVI STRAUSS & CO. v. KEVIN HENRY ARMANT, 2022 WL 2384011 (2022)
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`Applicant's next argument heading reads “[Opposer's] alleged use of a fleur di [sic] lis is not a pleaded issue, therefor is
`not reviewable by the Board in this matter.” 39 TTABVUE 10. Applicant recounts Opposer's claims in its original Notice of
`Opposition, First Amended Notice of Opposition, and Second Amended Notice of Opposition, and argues that “Applicant never
`stated or implied to using the New Orleans Saints registered trademark in his applied-for marks; therefore object [sic] to any
`accusation made by [Opposer] in its brief . . . as being false statements and [Opposer] should be sanctioned by the Board.”
`Id. Applicant argues that the “clear evidence (proving this as a false accusation presented to the Board) is [Opposer's] failure
`to cite any part of the record supporting its false accusations.” Id. According to Applicant, any “alleged use of a fleur di [sic]
`lis in commerce, was never pleaded in this case by Opposer under Trademark Act 2 or Trademark Act 43, so that unpleaded
`allegation is not, by law, under review in this proceeding before the Board.” Id.
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`Opposer responds that Applicant “appears to misunderstand the nature of pleading requirements and [Opposer's] arguments
`regarding the import of the fleur di [sic] lis element;” that Opposer's “pleadings are more than adequate to notify [Applicant]
`that his inclusion of ‘504’ in each of the three proposed registrations is likely to cause confusion and dilution;” that Opposer's
`“discussion in its trial brief anticipated that [Applicant] might contend that the fleur di [sic] lis in his design might differentiate
`or obviate this otherwise inevitable likelihood of confusion or dilution;” and that Opposer's use of the fleur de lis design
`under license from the New Orleans Saints National Football League team “serves to increase the likelihood of confusion.” 41
`TTABVUE 7 (emphasis supplied by Opposer).
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`*4 We agree with Applicant that Opposer did not plead any rights in, or use of, a fleur de lis design in connection with any of
`its alleged 500 Series marks, and we will not consider Opposer's evidence regarding such use as support for its argument that
`such use “serves to increase the likelihood of confusion.” Id. At the same time, Opposer made of record Applicant's summary
`judgment motion, 24 TTABVUE 71-80, in which Applicant admitted that “a Fleur De Lis [is] being used as the Emblem
`representing the New Orleans Saints National Football [sic] Team . . . .” Id. at 77. We will consider Applicant's admission
`regarding the Saints' mark for whatever probative value it may have.
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`II. Opposer's Entitlement to a Statutory Cause of Action 10
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`“A plaintiff's entitlement to invoke a statutory cause of action for opposition or cancellation is a necessary element in every
`inter partes case even if, as here, the defendant does not contest the plaintiff's entitlement.” Sabhnani, 2021 USPQ2d 1241, at
`*14-15 (citing Chutter, 2021 USPQ2d 1001, at *10 (citing Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277,
`at *6-7 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC,
`965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020), cert. denied, 142 S. Ct. 82 (2021)). As the party in the position
`of plaintiff, Opposer may oppose Applicant's registration of his three marks if Opposer's claim is within the zone of interests
`protected by the statute, 15 U.S.C. § 1063, and Opposer has a reasonable belief in damage that is proximately caused by the
`registration of Applicant's marks. Sabhnani, 2021 USPQ2d 1241, at *14.
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`Opposer argues that it “has standing because it holds a genuine real interest in preventing, and belief it will be damaged by,
`registration of the applied-for marks.” 38 TTABVUE 13 (citations omitted). Applicant does not address whether Opposer is
`entitled to invoke a statutory cause of action against Applicant's applications.
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`As discussed below, Opposer properly made of record its subsisting registrations of the marks 501, 505, 517, 550, and 569 for
`jeans and/or pants, and also established its use at common law of multiple three-digit marks beginning with “5” for jeans and
`pants, including 504. These registrations and common-law uses establish “Opposer's direct commercial interest and reasonable
`belief in damage proximately caused by the registration of the marks in Applicant's pending applications,” and “Opposer has
`proven its statutory entitlement to oppose, which extends to [both] of its grounds for opposition.” Mars Generation, Inc. v.
`Carson, 2021 USPQ2d 1057, at *7 (TTAB 2021).
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`III. Analysis of Opposer's Section 2(d) Claim
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`LEVI STRAUSS & CO. v. KEVIN HENRY ARMANT, 2022 WL 2384011 (2022)
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`*5 Section 2(d) of the Trademark Act prohibits the registration of a mark that “[c]onsists of or comprises a mark which so
`resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by
`another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion,
`or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). Opposer must prove both priority and likelihood of confusion by
`a preponderance of the evidence. See, e.g., WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d
`1034, 1040 (TTAB 2018).
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`A. Priority
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`Opposer properly made of record its valid and subsisting registrations of the marks 501, 505, 517, 550, and 569 for jeans and/or
`pants, 29 TTABVUE 12-38, and “because Applicant did not counterclaim to cancel them, priority is not at issue for the marks
`and goods . . . identified in each individual registration.” New Era, 2020 USPQ 10596, at *9.
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`Section 2(d) of the Trademark Act also “permits an opposer to file an opposition on the basis of ownership of ‘a mark or trade
`name previously used in the United States ... and not abandoned.”’ DeVivo v. Ortiz, 2020 USPQ2d 10153, at *3 (TTAB 2020).
`“To establish priority, the mark must be distinctive, inherently or otherwise, and Opposer must show proprietary rights in a mark
`as to which Applicant's mark gives rise to a likelihood of confusion.” Id. (citing Otto Roth & Co. v. Universal Foods Corp.,
`640 F.2d 1317, 209 USPQ 40, 43-45 (CCPA 1981)).
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`Opposer argues that Applicant's marks “all share [Opposer's] 504™ trademark, one of many that make up its family of 500
`series trademarks,” and Opposer claims that Applicant's marks “would be likely to cause confusion and dilute [Opposer's] 501®,
`504™, and 500 Series trademarks.” 38 TTABVUE 11. We will focus on Opposer's claimed common-law 504 mark because
`it is the most similar of Opposer's numerous pleaded registered and common-law marks to the three marks in the opposed
`applications. 11
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`“Opposer's acquisition of common law rights to [504] must precede Applicant's actual or constructive use of [his] mark.” DeVivo,
`2020 USPQ2d 10153, at *3. Applicant's applications were filed in October and November 2018, and there is no evidence of
`any earlier use of the marks, so Opposer must prove the existence of proprietary rights in its common-law 504 mark prior to
`October 29, 2018, the earliest of Applicant's constructive use filing dates.
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`Mr. Onda testified, based on Opposer's business records and the archives of Opposer's Legal Department, that the 504 mark was
`first used in 1905. Onda Decl. ¶ 4: Ex. 1 (26 TTABVUE 4, 11). Ms. Sey testified that Opposer “has used 504™ as a trademark
`designating various styles of boys' and men's jeans,” and that “[w]hile we have not used this mark within the 500 series during
`each and every season, we have used the 504™ trademark on jeans on a number of different occasions over the years, including
`recently.” Sey Decl. ¶ 13; Ex. L (25 TTABVUE 12-13, 955-86). She further testified that “[o]ur use of the 504™ trademark
`in this manner is a function of our practice to cycle prior styles through our assortment as products change and trends vary.”
`Sey Decl. ¶ 13; Ex. L (25 TTABVUE 12). Ms. Sey's uncontradicted testimony, and exhibits that she authenticated, establish
`use of the 504 mark for jeans in at least 1998, 2005-2007, 2009-2010, 2015, and 2020-2021. Sey Decl. ¶¶ 12-13; Exs. I, J, L
`(25 TTABVUE 702, 713-18, 720-22, 776, 957, 959-60, 964-66, 968-72, 974-75, 977-86).
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`*6 Opposer acknowledges that its use of the 504 mark has not been continuous, but “continuous use is not required to establish
`[Opposer's] priority” because “Section 2(d) ‘does not speak of ‘continuous use,’ but rather of whether the mark or trade name has
`been previously used in the United States and not abandoned.”' Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1607 (TTAB
`2018) (quoting W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1665 (Fed. Cir. 1994)). Opposer “is only
`required to show ‘proprietary rights in its pleaded common-law mark that precede [Applicant's] actual or constructive use of its
`involved mark[s].”’ Id. (quoting Exec. Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1180 (TTAB 2017)). Opposer
`showed that its 504 mark was “previously used in the United States” for purposes of its Section 2(d) claim, and Applicant
`“‘bears at a minimum a burden of coming forth with some evidence of abandonment”’ of the mark. Id. at 1605 (quoting W. Fla.
`Seafood, 31 USPQ2d at 1666). Applicant offers no evidence or argument that the 504 mark has been abandoned. 12
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`LEVI STRAUSS & CO. v. KEVIN HENRY ARMANT, 2022 WL 2384011 (2022)
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`As noted above, Opposer must also show that its common-law 504 mark is “distinctive, inherently or otherwise,” DeVivo, 2020
`USPQ2d 10153, at *3, to establish priority. The Board has held that “it is possible for a numerical designation, which functions
`only in part to designate a model or grade, to be inherently distinctive and registrable without a showing of secondary meaning,”
`Eastman Kodak Co. v. Bell & Howell Document Mgmt. Prods. Co., 23 USPQ2d 1878, 1880 (TTAB 1992), and each of Opposer's
`registrations for the number marks 501, 505, 517, 550, and 569 for jeans and/or pants issued without a showing of acquired
`distinctiveness, 29 TTABVUE 12-38, indicating that the United States Patent and Trademark Office (“USPTO”) considered
`those particular three-digit number marks to be inherently distinctive for the goods. New Era, 2020 USPQ2d 10596, at *10
`(citing Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) (“A mark that is registered on the Principal
`Register is entitled to all Section 7(b) presumptions including the presumption that the mark is distinctive and moreover, in
`the absence of a Section 2(f) claim in the registration, that the mark is inherently distinctive for the goods.”). Applicant has
`not challenged the distinctiveness of Opposer's common-law 504 mark, and there is nothing in the record suggesting that it is
`different in nature from Opposer's registered three-digit number marks. We find that Opposer's common-law 504 mark is also
`inherently distinctive for jeans.
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`*7 We find that Opposer proved, by a preponderance of the evidence, its priority of use of its common-law 504 mark for jeans,
`and we turn now to the issue of likelihood of confusion.
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`B. Likelihood of Confusion
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`As discussed above, Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), prohibits the registration of a mark that “[c]onsists
`of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name
`previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the
`goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” Our determination of the likelihood of confusion
`under Section 2(d) is based on an analysis of all probative facts in the record that are relevant to the likelihood of confusion
`factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). We
`consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129
`USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
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`“In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities
`between the goods or services.” Chutter, 2021 USPQ2d 1001, at *29 (citing In re Chatam Int'l Inc., 380 F.3d 1340, 71 USPQ2d
`1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
`1976)). Opposer discusses both of these key factors from the standpoint of its common-law 504 mark as well as its registered
`501 mark and its alleged 500 Series family of marks. 38 TTABVUE 34-40. Opposer also discusses the fame of its registered
`501 mark and its alleged 500 Series of marks, Applicant's evidence of third-party marks, trade channels, conditions of purchase,
`the absence of evidence of actual confusion, the potential for confusion, the market interface between Opposer and Applicant,
`and Opposer's licensing of the right to use certain marks of the New Orleans Saints NFL team. Id. at 40-48. 13 “Not all DuPont
`factors are relevant in each case, and the weight afforded to each factor depends on the circumstances.” Stratus Networks,
`Inc. v. UBTA-UBET Commc'ns Inc., 955 F.3d 994, 2020 USPQ2d 10341, at *3 (Fed. Cir. 2020). As noted above, Opposer's
`arguments on fame are not directed to its common-law 504 mark, 38 TTABVUE 40-44, while Opposer's arguments on the
`absence of evidence of actual confusion, the potential for confusion, and the market interface between the parties, id. at 46-48,
`miss the mark because the record shows that there has been no use of Applicant's marks, and thus no opportunity for actual
`confusion to have occurred or to measure the potential for confusion, and Opposer admits that there has been no marketplace
`interface between the parties. Id. at 47. We will not address these DuPont factors under the circumstances. Stratus Networks,
`2020 USPQ2d 10341, at *3.
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`*8 Applicant focuses on the first two DuPont factors. 39 TTABVUE 12-15. Applicant also discusses a single third-party
`registration of the mark 503 (stylized), in part with respect to Opposer's dilution by blurring claim, id. at 15-17, and discounts
`Opposer's evidence of its enforcement efforts in Board proceedings as irrelevant. Id. at 17.
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`LEVI STRAUSS & CO. v. KEVIN HENRY ARMANT, 2022 WL 2384011 (2022)
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`1. Similarity or Dissimilarity of the Marks
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`“Under the first DuPont factor, we consider ‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound,
`connotation and commercial impression.”’ In re Embiid, 2021 USPQ2d 577, at *11 (TTAB 2021) (quoting Palm Bay Imps. v.
`Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)). “‘Similarity in
`any one of these elements may be sufficient to find the marks confusingly similar.”’ Id. (quoting In re Inn at St. John's, LLC,
`126 USPQ2d 1742, 1746 (TTAB 2018), aff'd, 777 F. App'x 516 (Fed. Cir. 2019) (quoting In re Davia, 110 USPQ2d 1801,
`1812 (TTAB 2014)).
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`“The proper test regarding similarity ‘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.”’ Id. (quoting Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801
`(Fed. Cir. 2018) (internal quotation omitted)). “‘The proper perspective on which the analysis must focus is on the recollection
`of the average customer, who retains a general rather than a specific impression of marks.”’ Id. (quoting In re i.am.symbolic,
`llc, 127 USPQ2d 1627, 1630 (TTAB 2018)). Because the involved goods are jeans and T-shirts, “all without any restrictions or
`limitations as to their nature, price, or other features, the average customer here is an ordinary consumer.” Id.
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`As shown below, Opposer's common-law 504 mark has appeared in block numbers:
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`Sey Decl. ¶ 12; Ex. I-1 (25 TTABVUE 702).
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`LEVI STRAUSS & CO. v. KEVIN HENRY ARMANT, 2022 WL 2384011 (2022)
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`Sey Decl. ¶ 12; Ex. I-3 (25 TTABVUE 720).
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`Sey Decl. ¶ 12; Ex. J-5 (25 TTABVUE 776).
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`Applicant's 504EVER mark is similarly a standard-character mark. Applicant's two other marks are the composite marks shown
`again below:
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` © 2023 Thomson Reuters. No claim to original U.S. Government Works.
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`LEVI STRAUSS & CO. v. KEVIN HENRY ARMANT, 2022 WL 2384011 (2022)
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` © 2023 Thomson Reuters. No claim to original U.S. Government Works.
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`LEVI STRAUSS & CO. v. KEVIN HENRY ARMANT, 2022 WL 2384011 (2022)
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`*9 With respect to Applicant's standard-character mark, Opposer argues that “[t]he 504 element is unquestionably the dominant
`element in the proposed ‘504ever’ trademark, and will be the principal feature when the mark is seen or spoken by consumers.”
`38 TTABVUE 35. 14 Opposer further argues that the “‘ever’ element in the context of the unstylized ‘504ever’ mark conveys
`that the brand should be worn or supported ‘forever,’ and does not add any distinctive element to [Opposer's] 504™ mark,” id.,
`and that “‘504’ is the only arbitrary term in the proposed mark -- again reinforcing the likelihood of confusion.” Id. at 35-36.
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`According to Opposer, “[t]his conclusion applies to [Applicant's] proposed design marks, as ‘504’ appears in all of the marks,”
`and the “‘forever’ and ‘girl’ elements in the proposed stylized marks -- like ‘ever’ in the word mark -- are used for, and convey,
`their generic meanings.” Id. at 36. Opposer further argues that the “fleur de lis, which in Class 25 belongs to the New Orleans
`Saints, can only be seen, not spoken, and either conveys the Saints or does not convey any meaning in the context of the proposed
`mark,” 15 such that “[t]hese design elements . . . are not the dominant features for purposes of differentiating the marks.” Id.
`Opposer concludes that the “proposed marks thus are essentially identical to [Opposer's] 504™ mark and highly similar to the
`501® mark, and other 500 Series marks, in their sound and sight dimensions.” Id. at 37.
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`As to meaning, Opposer argues that Applicant “claims that there is ‘meaning’ to the proposed marks, but then offers that they
`signify a descriptive term -- the New Orleans area code -- that could not be exclusively owned if that is all the term means for T-
`shirts or casual apparel.” Id. at 37-38. Opposer further argues that Applicant's “proposed mark cannot be defended on grounds
`that it is generic (or belongs to others) in its only consequential dimension. In fact, the term 504, when used as an apparel brand,
`is a coined term that only has arbitrary meaning” and “[s]imilarity in such arbitrary terms is a significant indicator of likely
`confusion that, as noted above, is not diminished by additional descriptive terms.” Id. at 38.
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`Applicant responds that Opposer admitted in its responses to Applicant's Requests for Admissions “to obvious differences
`between its registered marks and the Applicant's applied-for composite marks,” 39 TTABVUE 14 (citing 31 TTABVUE 13-19),
`but Applicant does not specify the admissions to which it refers. In reviewing Opposer's admissions, we find that Opposer
`admitted that “Applicant's applied-for marks contain letters,” 31 TTABVUE 16 (Resp. to Req. for Adm. No. 5); that none of
`Opposer's marks contains letters, id. (Resp. to Req. for Adm. No. 6); that “Applicant's applied-for marks contain a specific 504
`numerical element,” id. (Resp. to Req. for Adm. No. 7); and that “two of Applicant's applied-for marks incorporate a Fleur de
`Lis design element.” Id. at 17 (Resp. to Req. for Adm. No. 9). The Board recently noted that such “admissions of the obvious
`do not establish the dissimilarity of the marks in their entireties.” Sabhnani, 2021 USPQ2d 1241, at *34 n.25.
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`*10 “While the marks must be considered in their entireties, ‘in articulating reasons for reaching a conclusion on the issue of
`confusion, 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.”’ Id., at *30-31 (quoting In
`re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (internal quotation omitted)).
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`In Applicant's standard-character 504EVER mark, the number 504 is the “first term in the mark,” In re Aquitaine Wine USA,
`LLC, 126 USPQ2d 1181, 1185 (TTAB 2018), and “‘[i]t is often the first part of a mark which is most likely to be impressed
`upon the mind of a purchaser and remembered.”’ Id. (quoting Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
`(TTAB 1988)). 16 We find that the number 504 is the dominant portion of Applicant's standard-character mark 504EVER. 17
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`With respect to Applicant's two other marks, “[i]n marks ‘consisting of words and a design, the words are normally accorded
`greater weight because they are likely to make a greater impression upon purchasers, to be remembered by them, and to be
`used by them to request the goods.”’ Sabhnani, 2021 USPQ2d 1241, at *31 (quoting Aquitaine Wine USA, 126 USPQ2d at
`1184 (internal citations omitted)). The number 504, which is superimposed on the top of the fleur de lis design in each mark,
`is the first portion of each mark when it is viewed and read from top to bottom. In Applicant's first composite mark, the word
`GIRL has been disclaimed and is thus “entitled to less weight in the likelihood of confusion analysis.” Aquitaine Wine USA,
`126 USPQ2d at 1185. In Applicant's second composite mark, the word FOREVER reinforces the number 504 by urging that
`the number should be recalled forever. We find that the number 504 is the dominant portion of both of Applicant's composite
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` © 2023 Thomson Reuters. No claim to original U.S. Government Works.
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`LEVI STRAUSS & CO. v. KEVIN HENRY ARMANT, 2022 WL 2384011 (2022)
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`marks. We turn now to the required comparison of the marks in their entireties, giving greater weight in that comparison to the
`number 504 in Applicant's marks than to the other design and literal elements of the marks.
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`Applicant's standard-character mark 504EVER incorporates the entirety of Opposer's common-law 504 mark, and “‘likelihood
`of confusion often has been found where the entirety of one mark is incorporated within another.”’ Double Coin Holdings
`Ltd. v. Tru Dev., 2019 USPQ2d 377409, at *6-7 (TTAB 2019) (quoting Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651,
`1660 (TTAB 2014)). Opposer's 504 mark