Pure & Simple Concepts, Inc. v. I H W Management Limited ( 2021 )

Case: 20-1211 Document: 56 Page: 1 Filed: 05/24/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PURE & SIMPLE CONCEPTS, INC.,
Appellant
v.
I H W MANAGEMENT LIMITED, DBA FINCHLEY
GROUP,
Appellee
______________________
2020-1211
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
91234659.
______________________
Decided: May 24, 2021
______________________
THOMAS D. ROSENWEIN, Rosenwein Law Group, Chi-
cago, IL, for appellant.
ERIK JAMES DYKEMA, Joshpe Mooney Paltzik LLP, New
York, NY, for appellee. Also represented by EDWARD A.
PALTZIK.
______________________
Case: 20-1211 Document: 56 Page: 2 Filed: 05/24/2021
2 PURE & SIMPLE CONCEPTS, INC. v.
I H W MANAGEMENT LIMITED
Before MOORE, Chief Judge*, REYNA and CHEN, Circuit
Judges.
REYNA, Circuit Judge.
Pure & Simple Concepts, Inc. appeals the decision of
the Trademark Trial and Appeal Board to dismiss its oppo-
sition proceeding against I H W Management Limited,
d/b/a The Finchley Group. The Board found that there was
no likelihood of confusion between Pure & Simple’s various
INDUSTRY marks and Finchley’s BLUE INDUSTRY
mark and that there was no dilution of Pure & Simple’s
mark. Accordingly, the Board dismissed both claims. For
the reasons stated below, we affirm.
BACKGROUND
Pure & Simple Concepts, Inc. (“P&S”) owns various
registered trademarks, eight of which are relevant for pur-
poses of this appeal. P&S licenses the eight trademarks to
the Manhattan Group. The Manhattan Group designs,
manufactures, and distributes apparel in North America,
such as shirts, pants, swimsuits, outerwear and accessories
for many age groups. All eight of P&S’s trademarks use
the word “INDUSTRY.” 1 P&S’s products have been offered
* Chief Judge Kimberly A. Moore assumed the posi-
tion of Chief Judge on May 22, 2021.
1 INDUSTRY BY WORK WEAR, Registration No.
2118102 (granted Dec. 2, 1997 with a first use date of Oc-
tober 1996); INDUSTRY UNION MADE PRODUCT and
Design, Registration No. 2326074 (granted Mar. 7, 2000
with a first use date of October 1998); INDUSTRY GIRL,
Registration No. 2403592 (granted Nov. 14, 2000 for with
a first use date of January 1999); INDUSTRY SUPPLY CO.
and Design, Registration No. 2446522 (granted Apr. 24,
2001with a first use date of March 1996); INDUSTRY and
Design, Registration No. 2723120 (granted Jun. 10, 2003
with a first use date of March 1996); INDUSTRY and
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PURE & SIMPLE CONCEPTS, INC. v. 3
I H W MANAGEMENT LIMITED
through various channels of trade, including independent
sales representatives, online offerings and websites, social
media, and a number of other publications in the United
States.
On April 30, 2015, I H W Management Limited, d/b/a
The Finchley Group (“Finchley”) filed an application to reg-
ister the standard character mark BLUE INDUSTRY for a
variety of clothing. On May 18, 2017, P&S opposed the reg-
istration of Finchley’s mark before the Trademark Trial
and Appeal Board (“Board”) under Subsection 2(d) of the
Lanham Act, codified in relevant part at 15 U.S.C.
§ 1052(d), and Subsection 43(c) of the Lanham Act, codified
in relevant part at 15 U.S.C. § 1125(c), on the grounds of
likelihood of confusion and likelihood of dilution by blur-
ring based on its previously used and registered collection
of INDUSTRY marks.
On November 26, 2019, the Board dismissed P&S’s op-
position, finding that P&S failed to prove likelihood of con-
fusion by a preponderance of the evidence under
Subsection 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). 2
J.A. 22. In addition, the Board found that P&S failed to
Design, Registation No. 2859863 (granted Jun. 10, 2003
with a first use date of January 2003); INDUSTRY and De-
sign, Registration No. 3407934 (granted Apr. 8, 2008 with
a first use date of December 19, 2006); and INDUSTRY and
Design, Registration No. 5052618 (granted October 4, 2016
with a first use date of February 27, 2015). J.A. 2–6.
2 Subsection 2(d) of the Trademark Act prohibits reg-
istration of a mark that “[c]onsists of or comprises a mark
which so resembles a mark in the Patent and Trademark
Office, or a mark or trade name previously used in the
United States by another and not abandoned, as to be
likely, when used on or in connection with the goods of the
applicant, to cause confusion, or to cause mistake, or to de-
ceive.” See also 15 U.S.C. § 1052(d).
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4 PURE & SIMPLE CONCEPTS, INC. v.
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establish the critical element of fame for dilution purposes
because there was no evidence that any of P&S’s marks
rose to the level of consumer recognition as a household
name. The Board decided it did not need to consider the
other factors. J.A. 26. Thus, the Board dismissed P&S’s
dilution claim under Sections 13 and 43(c) of the Trade-
mark Act. See 15 U.S.C. §§ 1063 and 1125(c).
P&S now appeals the Board’s decision. We have juris-
diction under 28 U.S.C. § 1295(a)(4)(B).
STANDARD OF REVIEW
This court reviews legal conclusions of the Board de
novo and factual findings for substantial evidence. In re
Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003). Likeli-
hood of confusion constitutes a legal determination based
on underlying findings of fact. Id.; StonCor Grp., Inc. v.
Specialty Coatings, Inc., 759 F.3d 1327, 1331 (Fed. Cir.
2014). “When a party opposes registration because it be-
lieves the mark proposed to be registered is too similar to
its own, the Board evaluates likelihood of confusion by ap-
plying some or all of the 13 factors set out in [DuPont].”
B&B Hardware, Inc. v. Hargis Indus., 575 U.S. 138, 144
(2015) (citing In re E. I. Dupont de Nemours & Co., 476 F.2d
1357 (C.C.P.A. 1973). Each of the DuPont factors presents
a question of fact, which we test for substantial evidence
when called into question on appeal. Omaha Steaks Int’l v.
Greater Omaha Packing Co., 908 F.3d 1315, 1319 (Fed. Cir.
2018). Varying weight may be assigned to each DuPont
factor depending on the evidence presented. See Citigroup
Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344 (Fed. Cir.
2011); In re Shell Oil Co., 992 F. 2d 1204, 1206 (Fed. Cir.
1993) (“[T]he various evidentiary factors may play more or
less weighty roles in any particular determination.”).
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DISCUSSION
I
P&S contends that the Board erred in dismissing its
opposition for the following reasons: (1) it did not consider
all relevant DuPont factors pertaining to a likelihood of
confusion analysis; (2) it incorrectly determined the first
word of Finchley’s mark, “BLUE,” to be the dominant term;
(3) it relied on third-party registrations that were either
not shown to be in use or were inapposite; and (4) it failed
to credit the renown of P&S’s family of marks. Appellant’s
Br. 2–3.
A
With respect to P&S’s first argument that the Board
did not consider all factors pertaining to a likelihood of con-
fusion analysis, P&S specifically alleges the Board failed to
consider the marketplace impression of the marks at issue
upon likely consumers of both P&S’s and Finchley’s nearly
identical clothing goods. Appellant’s Br. 17. P&S argues
that because the clothes at issue are inexpensive and the
consumers are purchasing clothing for everyday wear, they
are more inclined toward “impulse” buying, and, thus, are
more likely to be confused between P&S’s and Finchley’s
marks. Finchley contends this goes to the Dupont factor 4,
having to do with the “conditions under which and buyer to
whom sales are made,” DuPont, 476 F.2d at 1361, and that
P&S presented no evidence on this factor.
The Board must consider each relevant DuPont factor
for which there is evidence and argument. In re Guild
Mortg. Co., 912 F.3d 1376, 1380 (Fed. Cir. 2019). On the
other hand, “federal appellate courts do not consider issues
‘not passed upon below’ or entertain arguments not pre-
sented to the lower tribunal.” Hylete LLC. v. Hybrid Ath-
letics, LLC, 931 F.3d 1170, 1174 (Fed. Cir. 2019) (citing
Golden Bridge Tech., Inc. v. Nokia, Inc., 527 F.3d 1318,
1322 (Fed. Cir. 2008)). “Absent exceptional circumstances,
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6 PURE & SIMPLE CONCEPTS, INC. v.
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a party cannot raise on appeal legal issues not raised and
considered in the trial forum.” Id. (citing Finch v. Hughes
Aircraft Co., 926 F.2d 1574, 1576 (Fed. Cir. 1991)).
Indeed, the record before us shows that P&S only pre-
sented arguments and evidence based on DuPont factors 1
(similarity or dissimilarity of the marks), 2 (similarity of
the goods and services), and 3 (similarity of established,
likely-to-continue trade channels). J.A. 223–27. Finchley
presented counterarguments as to factors 1, 2, and 3, and
additionally presented arguments and evidence as to factor
6 (number and nature of similar marks in use on similar
goods). J.A. 251–53, 262. Neither party briefed the other
factors, and P&S does not show otherwise. The Board
found that factors 1 and 6 weighed against a finding of like-
lihood of confusion, J.A. 16–17, 19–20, and that factors 2
and 3 weighed in favor of finding of likelihood of confusion,
J.A. 20–21. The Board then weighed the factors and found
no likelihood of confusion. J.A. 21–22.
P&S failed to present evidence or argument regarding
marketplace impression on the likely consumer or the con-
ditions under which sales are made and the buyer to whom
sales are made. Indeed, apart from argument by counsel,
P&S does not cite to any evidence or support in its brief
indicating the degree of care that a consumer of the parties’
goods would exercise. Appellant’s Br. 13–17. Even in its
reply, which P&S cites in its brief before the Board, P&S
does not identify any evidence presented to the Board with
respect to the conditions under which sales are made and
the buyer to whom sales are made. Appellant’s Reply Br.
2. Instead, P&S relies on statements made by Finchley
about its products being “geared toward higher end male
fashion” and appealing to “fashion conscious affluent males
between ages 20-45.” Id. at 2–3. Contrary to P&S’s con-
tentions, this does not imply that P&S presented any evi-
dence regarding the conditions under which sales are made
to customers. P&S’s other arguments as to the similarity
of the marks at issue; the nature of the goods; and the trade
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PURE & SIMPLE CONCEPTS, INC. v. 7
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channels clearly pertain to Dupont factors 1, 2 and 3, not
factor 4. Accordingly, we determine that P&S forfeited ar-
gument as to this factor because it was not made before the
Board. J.A. 223–27. For these reasons, we cannot say that
the Board erred by not considering the same. In re Guild,
912 F.3d at 1380.
B
The Board analyzed the similarity and dissimilarity of
the marks pursuant to DuPont factor 1 and found that this
factor weighed against finding a likelihood of confusion.
J.A. 17–20. P&S contends that the Board erred in conclud-
ing that “BLUE” is the dominant term in Finchley’s mark
for purposes of creating the mark’s commercial impression.
According to P&S, BLUE could only be associated with con-
sumers’ color preferences rather than a particular brand.
Appellant’s Br. 14. P&S argues that “INDUSTRY” should
thus be considered the dominant term in Finchley’s mark
because of its placement as the second word in the mark.
Id.
The Board found that the addition of the word BLUE
in Finchley’s mark meant that the mark “as a whole did
not bear ‘striking’ resemblance in appearance, sound,
meaning or commercial impression to any of [P&S’s]
pleaded registered marks.” J.A. 18. The Board found that
BLUE is the lead term in FINCHLEY’s mark, and it “is
most likely to be impressed upon the mind of the purchaser
and remembered.” J.A. 19. Moreover, the Board found
that a consumer would likely attribute “source identifying
features” to the initial word BLUE in BLUE INDUSTRY.
Id. We agree.
This court has held that while it is not proper to dissect
a mark, “one feature of a mark may be more significant
than other features, and [thus] it is proper to give greater
force and effect to that dominant feature.” Giant Food, Inc.
v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570 (Fed. Cir.
1983). With respect to the placement of words in a mark,
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8 PURE & SIMPLE CONCEPTS, INC. v.
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in Palm Bay Imps., Inc. v. Veuve Cliquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 1370 (Fed. Cir. 2005), this
court determined that the Board was correct to refuse reg-
istration of the mark, VEUVE ROYALE, for alcoholic bev-
erages on the basis of likelihood of confusion between the
marks at issue for alcoholic beverages. This court specifi-
cally found that “VEUVE,” as the first word in the mark
was the “dominant feature in the commercial impression”
created by the mark. Id. at 1372.
Here, the Board found that BLUE is the first word in
Finchley’s BLUE INDUSTRY mark, that color is not a
claimed feature of the mark, and that not all of Finchley’s
products are colored blue. See J.A. 19. In addition, the
Board noted that BLUE INDUSTRY lacked a striking re-
semblance to any of P&S’s marks because of Finchley’s use
of BLUE. J.A. 18.
P&S’s arguments to the contrary are unpersuasive.
For example, P&S points most prominently to a district
court decision in which the second word, “Palace,” was
found to be dominant in TRUMP PALACE and CAESER’S
PALACE. See Trump v. Caesars World, Inc., 645 F. Supp.
1015, 1019 (D.N.J. 1986). However, the cases to which
P&S cites do not address that the Board found that in this
instance, the first term BLUE in Finchley’s mark was
“most likely to be remembered” and a “source identifying
feature[].” J.A. 19. We are not convinced by P&S’s argu-
ment that BLUE could only be associated with consumers’
color preferences rather than a particular brand.
We conclude that the Board’s finding that BLUE was
the lead term in Finchley’s mark and its finding that BLUE
“is most likely to be impressed upon the mind of the pur-
chaser and remembered,” is supported by substantial evi-
dence and is not otherwise contrary to law. J.A. 19. We
therefore affirm the Board’s finding as to this issue.
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C
The Board found that the sixth DuPont factor weighed
against finding a likelihood of confusion. J.A. 17. P&S ar-
gues that the Board erred by relying too heavily on third-
party registrations without considering, under Dupont fac-
tor 6, their actual use, continuing validity, or commercial
impression. Appellant’s Br. 9–10; see also In re E.I.
DuPont, 476 F.2d at 1361 (“The number and nature of sim-
ilar marks in use on similar goods”). P&S specifically con-
tends that some third-party registrations were listed twice,
some have been canceled, some have no evidence of use,
and some are for specialized clothing not likely to be con-
fused with P&S’s more general line of clothing. Appellants’
Br. 18–19.
“[E]vidence of third-party use bears on the strength or
weakness of an opposer’s mark.” Juice Generation, Inc. v.
GS Enters. LLC, 794 F.3d 1334, 1338 (Fed. Cir. 2015). This
court has held that, “The purpose of a defendant introduc-
ing third-party uses is to show that customers have become
so conditioned by a plethora of such similar marks that cus-
tomers have been educated to distinguish between differ-
ent such marks on the bases of minute distinctions.”
Omaha Steaks Int’l, 908 F.3d at 1324 (quoting Palm Bay
Imps., 396 F.3d at 1374) (internal quotation marks omit-
ted). “Third[-]party registrations are relevant to prove that
some segment of the composite marks which both contest-
ing parties use has a normally understood and well-recog-
nized descriptive or suggestive meaning, leading to the
conclusion that that segment is relatively weak.” Juice
Generation, 794 F.3d at 1339. “The weaker an opposer’s
mark, the closer an applicant’s mark can come without
causing likelihood of confusion and thereby invading what
amounts to its comparatively narrower range of protec-
tion.” Id. at 1338 (quoting Palm Bay Imps., 396 F.3d 1373).
“[E]xtensive evidence of third-party use and registrations
is ‘powerful on its face,’ even where the specific extent and
impact of the usage has not been established.” Jack
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10 PURE & SIMPLE CONCEPTS, INC. v.
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Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA v.
New Millenium Sports, S.L.U., 797 F.3d 1363, 1374 (Fed.
Cir. 2015) (quoting Juice Generation, 794 F.3d at 1339).
As the Board noted, at least 12 of the 74 certificates of
registration or third-party marks presented by Finchley in-
cluded examples of advertised use, and 5 of those uses were
in connection with clothing. J.A. 14. The Board stated that
“numerous third parties have registered or used
INDUSTRY formative marks in connection with clothing
items.” J.A. 15. The Board concluded that the term
“INDUSTRY,” or the plural thereof, has been “ubiquitously
registered and used to identify clothing and apparel, mak-
ing it both conceptually and commercially weak” and that
the scope of the marks’ protection is limited. J.A. 14–15.
Further, the Board found that given the “sheer volume of
third-party registrations and examples of third-party use,
consumers are conditioned to look for differences between
INDUSTRY formative marks to determine the source of a
given product and are therefore less likely to be confused.”
J.A. 16.
We conclude that the number of registered “industry”
marks, combined with the specific examples of advertised
use that were considered by the Board, are substantial ev-
idence indicating that the sixth DuPont factor weighs in
favor of Finchley. We therefore affirm the Board’s findings
as to this issue.
II
We turn next to P&S’s dilution claim. The Board found
that P&S did not own a famous family of marks. P&S ar-
gues that the Board erred in finding that its marks are not
famous. Appellant’s Br. 23–25. Specifically, P&S contends
that the Board failed to credit the renown of P&S’s family
of marks because the Board incorrectly established that its
findings as to third-party registrations precludes a finding
that P&S owns a family of marks for the shared
INDUSTRY element.
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The seminal case defining a family of marks is J&J
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460(Fed. Cir. 1991):
A family of marks is a group of marks having a rec-
ognizable common characteristic, wherein the
marks are composed and used in such a way that
the public associates not only the individual marks,
but the common characteristic of the family, with
the trademark owner. Simply using a series of sim-
ilar marks does not of itself establish the existence
of a family. There must be a recognition among the
purchasing public that the common characteristic
is indicative of a common origin of the goods . . . .
Recognition of the family is achieved when the pat-
tern of usage of the common element is sufficient to
be indicative of the origin of the family. It is thus
necessary to consider the use, advertisement, and
distinctiveness of the marks, including assessment
of the contribution of the common feature to the
recognition of the marks as of common origin.
J&J Snack Foods, 932 F.2d at 1463–64. Under the Lan-
ham Act § 43(c), 15 U.S.C. § 1125(c), a mark is famous if it
is widely recognized by the general consuming public of the
United States as a designation of source of the goods or ser-
vices of the mark’s owner. “Whether a mark is famous un-
der the [Trademark Dilution Revision Act] TDRA is a
factual question reviewed for substantial evidence.” Coach
Servs. v. Triumph Learning LLC, 668 F.3d 1356, 1373 (Fed.
Cir. 2012).
The Board found that P&S did not own a family of
marks. The Board determined that the overall number of
registered marks with INDUSTRY that are being used to
identify clothing precluded a finding that P&S owns a fam-
ily of marks for the shared INDUSTRY element. J.A. 14–
15. Second, with respect to P&S’s dilution claim, the Board
found that the evidence presented by P&S did not prove
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12 PURE & SIMPLE CONCEPTS, INC. v.
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that its marks were famous, a critical element of a dilution
claim, and therefore did not prove dilution. J.A. 25. The
Board relied upon the affidavit of P&S’s President, Ted Ro-
zenwald, which included information regarding magazine
advertisements and information concerning the sales of
products associated with one or more of P&S’s marks. J.A.
24–25. The Board also considered the trade channels and
the length of time P&S’s marks containing “INDUSTRY”
had been in use. The Board found that the evidence fell
“far short of proving that P&S’s marks are famous” espe-
cially because “there is no evidence that any of P&S’s
marks have risen to the level of consumer recognition as a
household name.” J.A. 25 (comparing two cases before the
Board finding that BLACKBERRY was a famous mark and
JUST DO IT was a famous slogan). We agree.
Because P&S does not point to any evidence it pre-
sented but that was not adequately considered by the
Board, we conclude that the Board’s decision with respect
to P&S’s dilution claim is supported by substantial evi-
dence.
CONCLUSION
We find that the Board’s factual findings are supported
by substantial evidence, and that the Board correctly de-
termined there was no likelihood of confusion or dilution.
Accordingly, we affirm the Board’s dismissal.
AFFIRMED