TTABlog Test: Is "S!MPLY" for EVA FOOTWEAR Confusable With "SIMPLY" for Dresses, Jumpsuits, and Rompers?

The USPTO refused to register the proposed mark S!MPLY for "Footwear, primarily made of ethylene-vinyl acetate; Slip-on shoes, primarily made of ethylene-vinyl acetate," finding confusion likely with the registered mark SIMPLY for "Dresses; Jumpsuits; Rompers." Applicant Simply Southern argued that its mark, when said aloud,"is literally: ‘s, exclamation point, m, ply (or p-l-y)." As to the goods, it asserted that there was no evidence that dresses, jumpsuits, or rompers are made with ethylene-vinyl acetate. How do you think this appeal came out? In re Simply Southern Holdings, LLC, Serial No. 90728560 (August 3, 2023) [not precedential] [not precedential] (Opinion by Judge Thomas Shaw).

The Board was not impressed with Simply Southern's pronuciation argument. "Rather, we find it likely that consumers would pronounce Applicant’s mark as 'simply,' the same as Registrant’s mark." Simply Southern’s own specimen includes the S!MPLY mark with tag line stating: "be you and live simply." Moreover, the Board noted, "an exclamation point is similar to an inverted lowercase letter 'i.'"

The Board also found that substitution of an exclamation point for the letter “I” "does little to change the commercial impression of Applicant’s mark so as to distinguish it from the registered mark."

As to the goods, Examining Attorney April Roach submitted webpage excerpts showing that footwear and dresses, jumpsuits, and rompers are commonly made and sold under a single mark: for example, Kate Spade, Boden, Roxy, Olukai, Ugg, Fila, Hoka, Merrell, and Puma. "Notably, the footwear on these websites are made from a variety of materials, including, leather, fabric, rubber, and EVA foam." And so, the Board found the involved goods to be related.

Simply Southern's argument that the registration does not cover EVA goods was simply off the mark. "It is not necessary that Applicant’s goods be encompassed by Registrant’s goods or made from the same material. The goods need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [they] emanate from the same source."

The Office's website evidence demonstrated that the goods are sold through the same types of online retail stores to some of the same consumers.

And so, the Board found confusion likely and it affirmed the refusal.

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Text Copyright John L. Welch 2023.