TTABlog Test: Is Costume Jewelry Related to Clothing Under Section 2(d)?

The USPTO refused to register the mark WORLD SPORTS (in standard characters) for "costume jewelry, namely, metal charms for necklaces and bracelets" [SPORTS disclaimed], concluding that confusion is likely with the identical mark registered for "shirts; sweatshirts; headwear, namely, hats, caps, and beanies." The first DuPont factor weighed "heavily" in favor of affirmance of the refusal, but what about the goods? How do you think this came out? In re Twinchew LLC, Serial No. 98289940 (April 8, 2026) [not precedential] (Opinion by Judge David K. Heasley).

The Marks: Applicant Twinchew feebly argued that that its mark, WORLD SPORTS, as used on its metal charms for necklaces and bracelets, "will only be attached with the company name, TWINCHEW LLC,” and will only be displayed in a heart shape. So what?, said the Board. “In determining the applicant’s right to registration, only the mark as set forth in the application may be considered; whether or not the mark is used with an associated house mark is not controlling.”

Twinchew asserted that the cited mark is highly descriptive of registrant's goods, namely, sports-related clothing intended for a global market, and is therefore weak, pointing to three registrations and a pending application for marks containing the term WORLD SPORTS, and four websites offering sportswear under names that include that term.

The Board observed that the cited mark issued under Section 2(f), an admission that the mark was not inherently distinctive. However, from the point of its registration, the cited mark "is entitled to the presumption that it has acquired distinctiveness" and the registration is presumed to be valid. "Applicant’s argument that Registrant’s mark is 'highly descriptive' is tantamount to an impermissible collateral attack on the cited registered mark, which cannot be countenanced absent a petition for cancellation."

The Board concluded that Twinchew's third-party evidence failed to weaken the cited mark, either conceptually or commercially. Of the three third-party registrations and one application it presented, only one was for sportswear. Moreover, all were based on Sections 44(e) or 66(a) of the Act and not on used in commerce. "They thus carry even less probative value." Twinchew's four third-party website examples showed variant uses of “World” and “Sports,” but fell far short of the “ubiquitous” or “considerable” use that the Federal Circuit found to demonstrate weakness in Jack Wolfskin and Juice Generation.

All in all, no commercial weakness has been shown under the sixth DuPont factor. Registrant’s WORLD SPORTS mark has some inherent conceptual weakness, but has been accepted for registration based on acquired distinctiveness. “[E]ven if [Registrant’s] marks are inherently weak, that is not fatal to a finding of likelihood of confusion because even weak marks are entitled to protection against confusion."

The Goods: The Board once again noted that "[w]here, as here, the respective marks are identical, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines." To show the relatedness of the goods, Examining Attorney Diane Collopy relied on six websites [Ralph Lauren, Banana Republic, Tommy Hilfiger, Gucci, Ann Taylor, and Tory Burch] that offer both jewelry and clothing. The Board was impressed.

In this case, the respective goods--shirts, sweatshirts and headwear on the one hand and metal charms for necklaces and bracelets on the other--can be purchased on the same shopping trip, can be worn on the upper body, and can complement each other when worn together.

Twinchew argued that this third-party evidence was not probative, since registrant is not a fashion designer but rather a sports agency and thus the involved goods travel through different trade channels to different types of purchasers. The Board was unmoved. "'[A]pplicant’s reliance on registrant’s website in an attempt to restrict the scope of registrant’s goods is to no avail. An applicant may not restrict the scope of the goods covered in the cited registration by argument or extrinsic evidence.'" [Emphasis by the Board].

What’s more, even if we were to credit Applicant’s argument, and to find that Registrant’s identified clothing items were promotional items, collateral to its sports agency business, that would not render the respective goods unrelated. Sports-related apparel, such as a cap or a sweatshirt, may be worn as part of a casual ensemble that includes sports-related metal charms for necklaces and bracelets.

Conclusion: Although the cited mark has some conceptual weakness (but no commercial weakness) even weak marks are entitled to protection against likely confusion. And so, the Board affirmed the refusal.

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TTABlogger comment: Do you think the registrant, in the real world, would care if someone sold charms under the WORLD SPORTS mark? BTW: another makeweight argument regarding complementary use.

Text Copyright John L. Welch 2026.