TTABlog Test: Are Jewelry and Underwear Related Under Section 2(d)?

The USPTO refused to register the mark BRIGHT STAR for jewelry, finding confusion likely with the identical mark registered for "Athletic footwear; Caps; Men’s dress socks; Socks; T-shirts; Thermal socks; Underwear." The first DuPont factor weighed "heavily" in favor of affirmance, but what about the goods? How do you think this came out? [Don't be cynical and say that clothing is related to everything.] In re H.K. Designs Inc., Serial No. 90283406 (June 16, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Applicant asked the Board to take judicial notice that “registered marks that commence with BRIGHT are extremely common, numbering in the hundreds, and there are a few in Class 14 as well.” The Board, however, does not take judicial notice of third-party registrations.

Applicant argued that its goods and Registrant’s goods are non-competitive, do not overlap, and are unrelated. The Board observed that goods need not be identical or even competitive in order to find a likelihood of confusion. They 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.” Moreover, the Board noted, when the marks are identical, a lesser degree of relatedness is necessary to support a finding of likelihood of confusion.

Examining Attorney Christopher McMillan submitted internet website excerpts showing that some retailers who offer socks, underwear, t-shirts and hats also offer jewelry: for example, Forever 21, Banana Republic, Brooks Brothers, Ralph Lauren, Old Navy, Asos, Guess, and Calvin Klein offer jewelry, socks, underwear, hats and t-shirts.

Applicant criticized the Examining Attorney’s internet evidence, arguing that large online retailers sell “literally EVERYTHING,” leading to “the erroneous conclusion in the modern marketing place that almost all goods are ‘related’ to each other.” "[C]lothing and jewelry are sold in large department stores alongside, or in proximity to each other. HOWEVER, so are jewelry and perfumes, skincare products, kitchen utensils, and many food items, being sold alongside each other.”

The Board was unmoved. The website evidence submitted by the Examining Attorney "appears to be limited to retailers selling clothing and fashion items including accessories (such as hats and belts and jewelry), as opposed to a broad range of goods." Therefore, it found the website evidence to be probative of relatedness.

The Board found the relevant class of consumers for the involved goods to be the same––members of the general public. As to trade channels, the internet website evidence showing the offering of the various clothing and accessories by the same retailers demonstrates that the identified goods in the application and cited registration travel in the same trade channels.

And so, the second and third DuPont factors weigh in favor of likelihood of confusion.

Applicant submitted two third-party registrations for marks that connote either BRIGHT STAR, or contain the term BRIGHT, falling far short of the amount of evidence needed to show conceptual weakness of BRIGHT STAR or the component BRIGHT in connection with the identified goods.

The cited mark is registered on the Principal Register without a claim of acquired distinctiveness and is treated as inherently distinctive. The marks are identical, the goods are related, and the trade channels overlap. Applicant has not shown conceptual weakness of the cited mark, and the sixth DuPont factor is neutral. The first, second, and third factors weigh in favor of likelihood of confusion. We find confusion likely.

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TTABlogger comment:  The Section 2(d) deck is stacked against the applicant. Clothing is related to everything.

Text Copyright John L. Welch 2025.