James Stevens Production Pty Limited v. Roseonly Co., Ltd.Itel Corp. v. Ainslie, 8 USPQ2d 1168, 1169...

This Opinion is Not a Precedent of the TTAB

Mailed: April 24, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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James Stevens Production Pty Limited v.

Roseonly Co., Ltd. _____

Opposition No. 91241887 (Parent Case)

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James Stevens Production Pty Limited v.

Roseonly Beijing Commercial Co., Ltd. _____

Opposition No. 91243194

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Helen Hill Minsker and Jon O. Nelson of Banner & Witcoff, Ltd. for James Stevens Production Pty Limited Yue Xu of Apex Attorneys at Law, LLP, for Roseonly Co., Ltd. and Roseonly Beijing Commercial Co., Ltd.

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Before Mermelstein, Lynch, and English, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge:

Opposition Nos. 91241887 and 91243194

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I. Background

In three applications, related companies Roseonly Co., Ltd. and Roseonly Beijing

Commercial Co., Ltd. (“Applicants”)1 seek registration on the Principal Register of

the following:

for Cleansing milk for toilet purposes; Cleaning preparations; Polishing preparations; Skin abrasive preparations; Essential oils; Rose oil for cosmetic purposes; Perfumery; Cosmetics; Perfumes; Breath freshening sprays; Potpourri; Incense; Cosmetics for animals; Air fragrancing preparations in International Class 3.2

ROSEONLY. in standard characters for Lubricating oil; Fuel; Firelighters in the nature of kindling woods; Waxes, being raw material; Wax emulsions and wax powders for industrial applications; Perfumed candles; Dust-binding compositions; Dust absorbing compositions; Electrical energy; Oils for the preservation of leather; Lanolin for use in the manufacture of cosmetics; Industrial grease in International Class 4.3

ROSEONLY. in standard characters for Jewellery; diamonds; gold thread jewelry in International Class 14.4

1 16 TTABVUE 135-36 (admissions). 2 Application Serial No. 87603844 was filed by Roseonly Co., Ltd. on September 11, 2017, based on an alleged intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). The mark is described as “consist[ing] of the word ‘ROSEONLY.’ in standard lettering above two Chinese characters in horizontal arrangement.” Color is not claimed as a feature of the mark. The application also includes the statement that “The non-Latin characters in the mark transliterate to ‘NUO’ and ‘SHI’ and this means ‘faith’ and ‘vow’ in English.” 3 Application Serial No. 87605007 was filed by Roseonly Co., Ltd. on September 12, 2017, based on an alleged intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). 4 Application Serial No. 79227328 is a request for extension of protection of International Registration No. 1390171 filed by Roseonly Beijing Commercial Co., Ltd. under the Madrid


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By its Notices of Opposition, James Stevens Production Pty Limited (“Opposer”)

opposes registration of the marks based on alleged likelihood of confusion under

Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with Opposer’s mark

, which is the subject of the following two registrations,

status and title copies of which were attached for the record, and the following

pending application, a copy of which also was submitted for the record:5

Registration/Application Number Goods/Services

Reg. No. 53896296 Live flower arrangements; flowers, namely fresh flowers and cut flowers in International Class 31

Reg. No. 31041807 on-line retail store services featuring flowers, namely, roses, and business intermediary services in the field of selling flowers, namely, roses in International Class 35

Application Serial No. 873010858 Retail store and wholesale store services featuring flowers, roses, plants, floral

Protocol, pursuant to Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a). It has a filing date of November 22, 2017. Applicants have admitted that the international registration on which the request is based includes “flowers, natural; rose bushes; … plants.” 16 TTABVUE 133-34. 5 1 TTABVUE. Except where otherwise indicated, citations refer to TTABVUE, the Board’s online docketing system, in the parent case, Opposition No. 91241887. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). 6 The registration, issued January 30, 2018, contains a disclaimer of ROSES and the following description: “The mark consists of the words ‘roses only’ in a stylized font with the word ‘roses’ above the word ‘only’. Between the words ‘roses’ and ‘only’, a stylized depiction of a thorn branch is featured on the left and right sides.” Color is not claimed as a feature of the mark. 7 The registration, issued June 13, 2006, contains a disclaimer of ROSES ONLY. Color is not claimed as a feature of the mark. 8 The application contains a disclaimer of ROSES and the following description: “The mark consists of the words ‘roses only’ in a stylized font with the word ‘roses’ above the word ‘only’. Between the words ‘roses’ and ‘only’, a stylized depiction of a thorn branch is featured on the left and right sides.” Color is not claimed as a feature of the mark. The application was filed


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Registration/Application Number Goods/Services

arrangements, gifts and balloons; Advertising services for others in the field of flowers, roses, plants, floral arrangements, gifts, and balloons; Business advice and consultancy services relating to the foregoing in International Class 35

In their Answers, Applicants deny the salient allegations in the Notices of

Opposition.9 Also, Applicants asserted, but did not pursue, a number of “affirmative

defenses.”10 Accordingly, we deem them all waived. See Harry Winston, Inc. v. Bruce

Winston Gem Corp., 111 USPQ2d 1419, 1422-23 n.7 (TTAB 2014); Alcatraz Media v.

Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem.,

565 F. App’x 900 (Fed. Cir. 2014).

The record includes the pleadings and pursuant to Trademark Rule 2.122(b),

37 C.F.R. § 2.122(b), the files of the opposed applications. Opposer also submitted

testimony from James Stevens11 and four notices of reliance.12 Applicants did not

submit any evidence. Opposer filed a Brief. Applicants did not, but briefing is optional

for the party in the position of defendant. See 37 C.F.R. § 2.128(a)(1).

on January 13, 2017, based on an alleged intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). 9 4 TTABVUE; Opposition No. 91243194, 4 TTABVUE. 10 Many of these were not true affirmative defenses, but regardless, Applicants did not pursue any of them. 11 13 & 20 TTABVUE. 12 15-19 TTABVUE.


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II. Standing

Opposer must prove standing by showing a real interest in the outcome of the

proceeding and a reasonable basis for believing that it would suffer damage if the

mark is registered. See 15 U.S.C. § 1063; Empresa Cubana Del Tabaco v. Gen. Cigar

Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). Opposer’s pleaded

registrations, for which it has proven status and title, establish its standing to bring

a Section 2(d) claim that is not wholly without merit. See Lipton Indus. Inc. v. Ralston

Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); see also Coach Servs. v.

Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012);

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.

2000).

III. Priority

Because Opposer has made its registrations of record, which Applicants have not

counterclaimed to cancel, priority is not an issue as to the marks and goods and

services covered by the registrations. See Top Tobacco LP v. N. Atl. Op. Co., 101

USPQ2d 1163, 1169 (TTAB 2011) (citing King Candy Co. v. Eunice King’s Kitchen,

Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974)). See also Massey Junior Coll., Inc.

v. Fashion Inst. of Tech., 492 F.2d 1399, 181 USPQ 272, 275 n.6 (CCPA 1974) (“prior

use need not be shown by a plaintiff relying on a registered mark unless the defendant

counterclaims for cancellation.”); Itel Corp. v. Ainslie, 8 USPQ2d 1168, 1169 (TTAB

1988) (“because of the existence of opposer’s valid and subsisting registration, it need

not prove prior use as to the services recited therein”).


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IV. Likelihood of Confusion

The determination under Section 2(d) involves an analysis of all of the probative

evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours

& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be

considered, hereinafter referred to as “DuPont factors”); see also In re Majestic

Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). A likelihood of

confusion analysis often focuses on the similarities between the marks and the

similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co.,

544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated

by § 2(d) goes to the cumulative effect of differences in the essential characteristics of

the goods and differences in the marks.”). Opposer bears the burden of proving its

claim of likelihood of confusion by a preponderance of the evidence. Cunningham, 55

USPQ2d at 1848.

A. The Strength of Opposer’s Mark

Before we turn to the similarity of the marks, we consider Opposer’s argument on

the strength of its mark under the fifth DuPont factor, as that will affect the scope of

protection to which the mark is entitled. The fame of a mark when considered in the

context of likelihood of confusion is not “an all-or-nothing measure,” but more of a

spectrum. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323,

122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (Fed. Cir. 2017). “In determining strength

of a mark, we consider both its conceptual strength, based on the nature of the mark

itself and its commercial strength, based on the marketplace recognition value of the


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mark.” Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458,

1476 (TTAB 2014).

We note as to conceptual strength of the mark, Opposer’s registered mark is

presumed to be valid and at most suggestive, Trademark Act Section 7(b), 15 U.S.C.

§ 1057(b), although the focus of Opposer’s goods and services on roses and the

disclaimers of ROSES and ROSES ONLY in Opposer’s registrations as generic or

descriptive point to some degree of descriptiveness of the wording.

As to commercial strength, Opposer concedes that its mark “may not yet qualify

as a ‘famous’ mark,” but argues that “it already has had widespread exposure in the

United States.”13 Opposer submitted confidential income statements and marketing

transactions from September 2016 through January 2019, as well as confidential

sales invoices – a couple of invoices per year – from 2002 to 2011 showing sales for

the U.S.14 Opposer also introduced examples of U.S. promotional activity, including

Mr. Stevens’ TV appearance on a local news program in Atlanta, and promotions or

promotional giveaways on radio stations and on the “Ellen” TV show, but the degree

of consumer exposure to these activities in the examples is not self-evident, and

Opposer did not supply it – i.e. the viewer numbers for “Ellen” and the Atlanta TV

news show or the listener numbers for the radio stations.15 We decline Opposer’s

13 23 TTABVUE 45. 14 14 TTABVUE 6-26 (confidential). 15 13 TTABVUE 18-19; 20 TTABVUE.


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invitation to rely on its foreign registrations and use in other countries under this

factor.16

Opposer’s commercial strength evidence is limited, and its probative value is

lessened because we lack some context in which to place the data, such as market

share or sales or advertising figures for comparable types of goods and services. See

Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed.

Cir. 2002). Based on the record, we accord Opposer’s mark the ordinary scope of

protection.

B. Similarity of the Marks

With respect to the marks, we must compare them “in their entireties as to

appearance, sound, connotation and commercial impression.” Palm Bay Imps., Inc. v.

Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,

1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). Similarity in any one of

the elements of sound, appearance, meaning, or commercial impression suffices to

support a determination of likelihood of confusion. See In re Davia, 110 USPQ2d 1810,

1812 (TTAB 2014) (“Similarity in any one of these elements may be sufficient to find

the marks confusingly similar.”).

We assess not whether the marks can be distinguished in a side-by-side

comparison, but rather whether their overall commercial impressions are so similar

that confusion as to the source of the goods offered under the respective marks is

likely to result. Coach Servs., 101 USPQ2d at 1721; see also Edom Labs. Inc. v.

16 See 23 TTABVUE 45.


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Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). The focus is on the recollection of the

average purchaser, who normally retains a general rather than a specific impression

of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB

2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).

1. Applicant’s ROSEONLY. Mark

We first compare Opposer’s mark to Applicants’ standard-

character ROSEONLY. mark. The wording in Opposer’s mark is nearly identical to

Applicants’ mark, differing only minimally by the plural form of ROSES in Opposer’s

mark appearing in the singular form of ROSE in Applicants’ mark, the absence of a

space in Applicants’ mark, and the period included at the end of Applicants’ mark.

We find that the plural versus singular form of ROSE makes little difference in the

comparison. See Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957)

(“there is no material difference, in a trademark sense, between the singular and

plural forms of the word ‘Zombie’ and they will therefore be regarded here as the same

mark”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355

(TTAB 2014) (SHAPE and SHAPES deemed essentially the same mark). Along the

same lines, the absence of a space between the words in Applicants’ mark makes little

difference. See Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984)

(SEAGUARD and SEA GUARD “are, in contemplation of law, identical”); Stock Pot,

Inc. v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222

USPQ 665 (Fed. Cir. 1984) (STOCKPOT and STOCK POT “phonetically identical and


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visually almost identical”). The period in Applicants’ mark has little visual impact,

no phonetic impact, nor does it change the meaning or commercial impression. Cf.,

e.g., In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014)

(“[t]his case is,... like ‘most cases[,] where the addition of an exclamation point does

not affect the commercial impression of a mark.’”) (citation omitted); In re White Swan

Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (finding SHAKE SCATTER & GROW

confusingly similar to SHAKE-NGROW); In re Vanilla Gorilla L.P., 80 USPQ2d 1637,

1639 (TTAB 2006) (noting that “the addition of punctuation marks to a descriptive

term would not ordinarily change the term into a non-descriptive one”). The similarity

between Opposer’s and Applicants’ marks increases given that ROSEONLY. is in

standard characters and therefore could appear in the identical font used in Opposer’s

mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012)

(holding that the specific font style of a mark cannot serve as the basis to distinguish

it from a mark in standard-character form).

When a mark such as Opposer’s comprises both wording and a design, greater

weight typically is given to the wording, which consumers will use to call for the

goods. See, e.g., Viterra Inc., 101 USPQ2d at 1911; see also In re Max Capital Grp.

Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) (holding that the addition of a design

element to a word that is identical to another mark does not avoid likely confusion).

Here, the small design element of thorns, which can be found on rose stems, merely

reinforce the word “roses,” and so do not stand out to differentiate the marks. In re

Wine Society of Am., 12 USPQ2d 1139, 1142 (TTAB 1989).


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The marks overall look similar and sound nearly identical.

The connotations and commercial impressions of the marks are essentially the

same because, as discussed above, the wording is nearly identical and the minimal

design element in Opposer’s mark complements and reinforces the wording, doing

nothing to change or add to the meaning of the words.

We find the marks quite similar in terms of appearance, sound, connotation and

commercial impression, such that this DuPont factor weighs heavily in favor of a

likelihood of confusion.

2. Applicant’s Mark

We next compare Applicant Roseonly Co., Ltd.’s word-and-design mark shown

above to Opposer’s mark. For the same reasons set forth above, we

find the English language wording in both marks nearly identical, and that the design

element in Opposer’s mark does not distinguish them. Here, though, because

Applicant’s mark is not in standard characters, we consider the different fonts used

for the wording. However, Applicant’s font is an unremarkable lower-case type, and

Opposer’s is a somewhat more stylized lower-case lettering. Neither is so conspicuous

as to be significant to consumers. In this mark, Applicant also includes Chinese

characters, adding a visual element that differs from Opposer’s mark. However, the

ROSEONLY. wording is larger and more prominent. Also, because it appears first it

“is most likely to be impressed upon the mind of a purchaser and remembered.” Presto


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Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988); Palm Bay

Imps., 73 USPQ2d at 1692.

As discussed above in connection with Applicant’s standard-character mark, the

English language wording in both marks sounds nearly identical. As to the Chinese

characters in Applicant’s mark, we have no evidence in the record whether these

would be recognized and pronounced by the ordinary American consumer. See Palm

Bay Imps, 73 USPQ2d at 1696. The application includes a transliteration statement

as well as a translation of the characters as “faith” and “vow” in English. Regardless

of whether consumers would view the characters merely as design elements, or would

articulate them in Chinese or in English, because of the more prominent and

dominant common wording ROSES ONLY/ROSEONLY, the marks overall still sound

more similar than different.

Turning to connotation and commercial impression, we find the meaning and

impression of the marks is similar because of their common wording. The connotation

and commercial impression of Applicant’s mark as a whole is driven primarily by the

dominant ROSEONLY. portion of the mark, with the Chinese characters playing a

lesser role. . For the relatively small segment of the U.S. population familiar with

Chinese, the applications indicate that the translations are ‘faith’ and ‘vow’ in

English. These terms would contribute a sense of devotion to the meaning and

commercial impression of Applicant’s mark. The segment of the population

unfamiliar with Chinese generally would recognize the characters as Asian

characters, but view them more like a design element. And as discussed above,


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because of the size and nature of the design element in Opposer’s mark, it does not

stand out, and the connotation and commercial impression of Opposer’s mark as a

whole also is driven primarily by the dominant ROSES ONLY portion. Given this,

while there is some difference between the marks, overall their meanings and

commercial impressions remain similar.

We find the marks similar in terms of appearance, sound, connotation and

commercial impression, such that this DuPont factor weighs heavily in favor of a

likelihood of confusion.

C. The Goods and Services, Trade Channels and Classes of Consumers

Our comparison of the goods and services must be based on the identifications in

the applications and Opposer’s registrations. See Stone Lion Capital Partners, LP v.

Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom

Sys., Inc. v. Houston Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.

Cir. 1990). A finding of likely confusion must be made with respect to at least one

item in each application to establish likely confusion as to that single-class

application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ

986, 988 (CCPA 1981).

To show that the same sources offer both Applicants’ and Opposer’s goods and

services, Opposer introduced evidence of numerous retail floral websites that, in

addition to flowers, also offer jewelry, perfume, and/or scented candles. Mr. Stevens

testified that “based on my familiarity with the floral business, I believe that they


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[the websites] reflect typical product pairings available for consumers of flowers in

the United States.”17 Examples of the website evidence are below:

The FTD website promotes flowers as well as jewelry.18

The 1-800flowers.com retail website offers flowers,19 jewelry,20 and “Luxury Spa

Baskets & Gifts” that include perfumes, perfumed candles.21 Under the “More Ways

to Shop” heading, the website promotes combination “Flowers & Gifts” for birthdays

and expressions of sympathy.22 On the site’s webpages devoted to “Love & Romantic

Flowers and Gifts,” there is an offer for “Multi-Day Gifting” to “Ship Up to 4 Gifts for

the Price of 1,” showing Day 1 as a bouquet of roses, and Day 4 as a necklace (first

excerpt below).23 Another page features a bouquet of flowers next to a bath and

fragrance set that includes a scented candle and perfume (second excerpt below).24

17 13 TTABVUE 21. 18 15 TTABVUE 141. 19 15 TTABVUE 6-22. 20 15 TTABVUE 24-34. 21 15 TTABVUE 8-10. 22 15 TTABVUE 13. 23 15 TTABVUE 40. 24 15 TTABVUE 54.


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The FloraQueen website promotes “Jewelry with Flowers” showing options such

as: the “Floral Delicacy” with a bouquet of flowers along with a necklace, bracelet and

earrings; the “Precious Surprise” or “Unbreakable Bond,” both with a bouquet of

flowers and a bracelet; and the “Charming Attention: roses” with a bouquet of red


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roses and a necklace.25 The site states, “We’ve paired together flowers and jewelry

into chic combinations that a lucky loved one will adore.”26

The Company Flowers website describes its walk-in retail area as featuring “at

least eight Thymes fragrances, colorful arrays of Root and Colonial Candles,” along

with flowers and blooming plants.27

The Eastern Floral website advertises that it “has more than just fresh flowers

and plants, we also have a selection of gift ware and jewelry for everyone on your list.

Want to add a piece a [sic] jewelry to a floral arrangement always adds that special

surprise they may not have expected.” The “Giftware & Jewelry” webpage features

numerous scented candles.28

The FromYouFlowers.com website features flowers, jewelry and spa gift baskets

that include, inter alia, scented candles and perfume.29 Excerpt from the site30 appear

below:

25 15 TTABVUE 73-77. 26 15 TTABVUE 82. 27 15 TTABVUE 146-47. 28 15 TTABVUE 144. 29 15 TTABVUE 104-11. 30 15 TTABVUE 104, 106.


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The Prairie Flowers and Gifts website (excerpt below)31 features the following

Tour of Shop that shows flowers, jewelry and scented candles:

31 15 TTABVUE 114-15.


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The following excerpt from the Sam’s Club website shows that “Jewelry, Flowers

& Gifts” are grouped on the same page, and that “Fragrance” is one of the featured

types of gifts:32

32 15 TTABVUE 130.


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Mr. Stevens also testified that “[i]n the United States and elsewhere, it is common

for entities that sell flowers to sell other goods in conjunction with, or as add-ons to

the flowers, including champagne, chocolates, candles, pot pourri, perfume, jewelry,

rose oil, essential oils, and other gift items.”33

This evidence establishes a relationship between retail store services featuring

flowers, floral arrangements, perfume, scented candles, and jewelry. See In re Detroit

Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (crediting

relatedness evidence that third parties use the same mark for the goods and services

at issue because “[t]his evidence suggests that consumers are accustomed to seeing a

single mark associated with a source that sells both”). Even where it is unclear

whether the same mark used for retail services also appears on the goods, or where

the goods bear a different mark, the evidence nonetheless shows that consumers are

accustomed to encountering floral-focused retail websites that also feature gift items

such as perfume, scented candles, and jewelry, often as a proposed accompaniment

to a gift of fresh flowers. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d

1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (stating that evidence that “a single

company sells the goods and services of both parties, if presented, is relevant to a

relatedness analysis”). The record therefore shows the relatedness of Opposer’s goods

and services to, at least, the “perfumery” in Application Serial No. 87603844, the

“perfumed candles” in Application Serial No. 87605007, and the “jewellry” in

33 13 TTABVUE 20-21.


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Application Serial No. 79227328, therefore establishing relatedness as to at least one

good per class. Tuxedo Monopoly, 209 USPQ at 988.

Additionally, the record reflects the complementary nature of retail florists,

flowers, perfume, scented candles and jewelry, in that consumers often purchase and

receive such goods together from a retail florist. See In re Martin’s Famous Pastry

Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (finding bread

and cheese to be related because they are often used in combination, and stating:

“Such complementary use has long been recognized as a relevant consideration in

determining a likelihood of confusion.”); In re Melville Corp., 18 USPQ2d 1386, 1388

(TTAB 1991) (women’s shoes are complementary to women’s clothing because they

may be part of a coordinated outfit). Opposer also points to screenshots showing that

Applicant Roseonly Co., Ltd. sells roses as well as jewelry, perfume, and other gift

items on its website.34 The complementary nature of these goods and services

corroborates their relatedness.

The third-party retailer evidence discussed above further demonstrates that goods

and services such as Applicants’ and Opposer’s are featured together on the same

floral and gift websites, and would be encountered by the same consumers.

These factors weigh in favor of likely confusion.

34 16 TTABVUE 44-82.


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D. Degree of Care in Purchasing

Opposer argues that the relevant goods and services, as identified, can be

inexpensive and subject to impulse purchasing, so that the degree of care in

purchasing is lessened. See Stone Lion, 110 USPQ2d at 1163-64 (recognizing Board

precedent requiring consideration of the “least sophisticated consumer in the class”).

“When products are relatively low-priced and subject to impulse buying, the risk of

likelihood of confusion is increased because purchasers of such products are held to a

lesser standard of purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54

USPQ2d 1894, 1899 (Fed. Cir. 2000) (citations omitted). We agree that the relevant

goods and services are directed to ordinary consumers, and include relatively

inexpensive purchases that may be made on impulse. The conditions of sale and

nature of the prospective consumers therefore weigh in favor of a likelihood of

confusion.

E. Twelfth and Thirteenth DuPont Factors

Under the thirteenth “catchall” DuPont factor, Opposer argues that the history of

disputes among the parties and Roseonly Co., Ltd.’s alleged adoption in China of a

mark “that is virtually identical to [Opposer’s] for goods (roses) closely related to the

goods at issue in the opposed applications strongly suggest bad faith.”35 The only

evidence supporting the latter allegation is a statement in Mr. Stevens’ declaration

that does not even implicate either Applicant directly, but instead refers to “an entity

35 23 TTABVUE 35.


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believed to be related to Mr. Pu and his Roseonly business.”36 “[A]n inference of ‘bad

faith’ requires something more than mere knowledge of a prior similar mark.” Sweats

Fashions, Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed.

Cir. 1987). A finding of bad faith must be supported by evidence of an intent to

confuse, rather than mere knowledge of another’s mark or even an intent to copy. See,

e.g., Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 92 USPQ2d 1769,

1782 (2d Cir. 2009) (“[T]he ‘only relevant intent is intent to confuse. There is a

considerable difference between an intent to copy and an intent to deceive.’” (quoting

4 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION

§ 23:113)). Opposer’s allegations against Applicants lack sufficient evidentiary

support. This record does not rise to the level necessary to show bad faith. We find

this factor neutral.

While Opposer makes a conclusory statement that under the twelfth factor the

risk of confusion is substantial, no additional explanation is provided, and no

evidence is cited, so we make no finding under this factor.

V. Conclusion

Opposer’s and Applicants’ marks are similar, and the subject applications include

at least one good per class that is related to the goods and services in Opposer’s

pleaded registrations, and that travels in the same channels of trade to the same

consumers, who may purchase on impulse. Given this, a likelihood of confusion exists.

36 13 TTABVUE 19.


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Decision: The oppositions are sustained based on the likelihood of confusion as

to each of the opposed applications.

James Stevens Production Pty Limited v. Roseonly Co., Ltd.Itel Corp. v. Ainslie, 8 USPQ2d 1168, 1169...

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Transcript of James Stevens Production Pty Limited v. Roseonly Co., Ltd.Itel Corp. v. Ainslie, 8 USPQ2d 1168, 1169...