TTABlog Test: Is M8KIT Confusable with M8 for Clothing?

The USPTO refused to register the mark M8KIT for "athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms" in view of the registered mark M8 for various items of clothing, including shirts, pants, jackets and caps. Applicant Thornton, appearing pro se, argued that his mark will be perceived as the term "MAKE IT," and thus is distinguishable from the registered mark. How do you think this came out? In re Evan James Thornton, Serial No. 98221072 (September 19, 2025) [not precedential] (Opinion by Judge Jessica B. Bradley).

The goods are legally identical in part, and those identical good presumably travel in the same trade channels to the same classes of consumers. Applicant Thornton's assertion that his goods are sold at youth athletic programs, sports tournaments, and on its website was irrelevant, since there are no such limitations in its application. The Board found that the second and third DuPont factors "weigh heavily" against Thornton.

Thornton argued that consumers of his goods are "discerning purchasers," specifically, "coaches, parents, and team officials [who] purchase custom athletic apparel with intention and care—not on impulse." The Board was unimpressed.

Applicant’s identification of goods does not cover “custom athletic apparel,” or contain any limitation to particular purchasers. Moreover, Applicant provides no evidence in support of his assertions that the purchasers are discerning or do not otherwise purchase the low-cost goods -- including shirts, hats and caps -- on impulse, and “[a]ttorney argument is no substitute for evidence.”

Thornton claimed that there was widespread use of "M8" by third parties, but he failed to provide any evidence in support. He did submit two third-party registrations, potentially relevant to the conceptual strength of the cited mark, but not commercial strength. However, one registrations issued under Section 66(a) without proof of use, and the other was for automobiles and parts, not clothing. Therefore, the sixth DuPont factor was deemed neutral.

Turning to the marks, the Board noted that "[t]he fact that the first part of Applicant’s mark is the entire cited mark M8 increases the similarity between the two marks." Moreover, "M8" is arbitrary when applied to apparel, while "kit" is descriptive with respect to "athletic uniforms," and "athletic apparel, namely, shirts." Examining Attorney Jacob Magit submitted ample evidence that the term "kit" refers to a soccer jersey, uniform, and/or the overall attire and equipment worn by a soccer player.

Thornton contended that the refusal "relies primarily on usage drawn from international soccer contexts." and that such foreign usage does not establish descriptiveness among U.S. consumers, but the Board pointed out that the evidence was in English, included kits of soccer teams based in the United States, and also included recognizable retail stores such as adidas and Dick's Sporting Goods.

Accordingly, the Board found Thornton's addition of the descriptive term “kit” to the arbitrary mark M8 "do[es] little to alleviate confusion."

Thornton argued that his mark MKIT "forms a unified, phonetically suggestive phrase—'MAKE IT'—that is aurally and conceptually distinct from the cited mark M8, typically read as 'mate' or 'em-eight.'" The Board pointed out once again, however, that "there is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner."

Additionally, Applicant’s argument confirms the similarity in sound -- if M8 is “typically read as ‘em-eight’” in the cited mark then the same would hold true for M8 in Applicant’s mark M8KIT. Further, we agree with the Examining Attorney that Applicant has not provided any “evidence that consumers would view ‘M8KIT’ as being pronounced ‘MAKE IT.'"

The Board concluded that the first DuPont factor supported the likelihood of confusion refusal.

Finally, the Board brushed aside Thornton's claim that there had been no actual confusion, since the registrant had no opportunity to provide relevant evidence in this ex parte context. And Thornton's claim that the cited mark was not in use was an improper attack on the cited registration.

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

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TTABlogger comment: I think this mark should have been published for opposition. I don't think the marks are confusingly similar.

Text Copyright John L. Welch 2025.