TTABlog Test: Are Clothing and Sunglasses Related Under Section 2(d)?

The USPTO refused to register the mark OGGO for: “Clothing, namely, tops, bottoms, sweaters, shirts, sweatshirts, pants, shorts, jackets, coats, vests, hats, scarves, gloves, belts, ties, underwear, socks, shoes, sneakers, boots, sleepwear, robes, suits," on the ground of likely confusion with the registered mark OGO for "sunglasses." The Board deemed the marks "highly similar," but what about the goods? [I expect everyone to get this right.] In re VIP Fashion, Inc., Serial No. 98276220 (August 22, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Examining Attorney Christine Nishigaya submitted evidence of four companies selling clothing and sunglasses under the same mark (GAP, MADEWELL, OAKLEY, and PRADA). She also submitted "plentiful evidence" of third-party registrations covering both clothing and sunglasses under a single mark.

Applicant VIP Fashion lamely argued that the goods are not related becuase they are not identical, but the Board brushed that argument aside. "Where the evidence shows, as it does in this case, that others offer both types of goods under a single mark, that in turn shows that consumers will view those non-identical goods as related for trademark purposes, because they see them as types of goods that emanate from the same source."

VIP attempted to minimize the Office's evidence by asserting that the third parties who sell both kinds of goods are "large retailers." The Board acknowledged that "when the third-party relatedness evidence comes from 'big box retail stores or online retailers selling a wide variety of goods,' as opposed to smaller or 'specialty retailers,' the evidence can have somewhat less probative value." However, VIP povided no evidence to show that such discounting should apply to here.

Next, VIP claimed that Class 9 goods are unrelated to Class 25 goods. Again, the Board was unmoved. "[W]hich international class goods fall within is irrelevant. Those classes are there solely for administrative purposes related to international treaties and are 'wholly irrelevant' to the likelihood-of-confusion analysis."

With respect to channels of trade and classes of consumers, the third-party evidence showed that they overlap for the involved goods, "to some extent." VIP offered no contrary evidence, but it insisted (without supporting evidence) that it "does not sell its goods to the general public;" instead it sells "wholesale" only to retailers who "register with Applicant." The Board found at least two problems with this argument. First, there was no such limitations in VIP's application, and second, there were no restrictions on channels of trade or classes of consumers in the cited registration.

Finally, VIP argued that the cited OGO mark is conceptually weak, pointing to three third-party registrations (two for OGO and one for OGOGO). The Board, however, was unimpressed: "The existence of three registrations falls well short of making a dent as to this factor." Moreover, VIP failed to make these three registrations of record.

Finding that none of the DuPont factors favored VIP, the Board affirmed the refusal.

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Text Copyright John L. Welch 2025.