TTAB Upholds 2(d) and 2(e)(4) Bifusal of WYSE LONDON for Clothing

The Board affirmed this bifusal of the proposed mark WYSE LONDON for various clothing items, including "hats," and for retail store services [LONDON disclaimed], finding confusion likely with the registered mark WYSE (in slightly stylized form) (Supplemental Register] for clothing-related goods, including zippers, buckles, and "hat ornaments for hats," and further deeming the mark to be primarily merely a surname under Section 2(e)(4). As to the former refusal, applicant argued that the cited mark is used only with sales to "commercial purchasers who then incorporate the Class 26 goods into final products offered to consumers." The Board was unimpressed. In re Wyse London Limited, Serial No. 90742109 (March 13, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

Likelihood of Confusion: The Board found the marks to be "highly similar," and therefore the first DuPont factor weighed "heavily" in favor of affirmance. As to the goods, the applicant's hats and the registrant's ornaments for hats were found to be "closely related." Moreover, other goods identified in the Registration "are also intended for use with clothing, including zippers and buttons, which are items commonly found as part of clothing. This complementary nature of these goods is sufficient to show that at least some of the identified goods are closely related." Third-party registration evidence confirmed this close relationship.

These goods, despite being in different classes, are sold under a single brand, a practice that will leave relevant consumers accustomed to seeing the goods identified in the Application and the goods identified in the cited Registration sold under a single mark.

As to applicant's retail store services, the Examining Attorney submitted evidence of ten uses of a store brand that is also used on goods sold in the store, including GUCCI, RALPH LAUREN, VERSACE, ANN KLEIN, and ANTHROPOLOGIE. The Board concluded that the applicant's retail services are closely related to the goods identified in the cited Registration.

Of course, applicant was off target with its argument that the registrant uses its mark only with sales to "commercial purchasers who then incorporate the Class 26 goods into final products offered to consumers," since there are no such limitations in the cited registration.

Finally, because the cited mark is registered on the Supplemental Register, "the surname aspect of the cited mark reduces the mark’s conceptual strength." The Board concluded that the cited WYSE mark is "somewhat weak conceptually. This fact slightly reduces the likelihood of confusion."

The mark has been registered for fifteen years and given that passage of time, the surname aspect of the cited mark is probably less significant than when the mark was first registered. The evidence supports only a small shift in the balance due to the conceptual weakness of the cited WYSE mark. This factor weighs against a likelihood of confusion finding, but it is far too limited in its impact to overcome the first, second and third DuPont factors, which weigh in favor of a likelihood of confusion finding.

Balancing the relevant DuPont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.

Surname refusal: The fact that applicant’s founder is Marielle Wyse, a fact that Applicant promotes on its website, was "particularly important . . . because it shows that the applied-for mark is the surname of Applicant’s founder and that Applicant communicates that fact to actual and prospective customers as part of its origin story." The addition of the word LONDON "would lead consumers to believe Applicant’s business is operated by or connected with someone with the Wyse surname, and is located in London."

And so, the Board affirmed the Section 2(e)(4) refusal.

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TTABlogger comment: WYHA? The surname refusal was insurmountable.

Text Copyright John L. Welch 2025.