Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.

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ESTTA Tracking number: ESTTA1015170
Filing date: 11/12/2019

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 87884420
Applicant Ric Flair, LLC
Applied for Mark NATURE BOY
Correspondence ALAN S. CLARKE
Address TAYLOR ENGLISH DUMA LLP
1600 PARKWOOD CIRCLE, SUITE 200
ATLANTA, GA 30339
UNITED STATES
aclarke@taylorenglish.com, rbowie@taylorenglish.com, trademarkdocket-
ing@taylorenglish.com
770-434-6868

Submission Appeal Brief

Attachments Nature Boy Appeal Brief.pdf(253131 bytes )
Filer's Name Alan S. Clarke
Filer's email aclarke@taylorenglish.com, dweigel@taylorenglish.com,
rbowie@taylorenglish.com, trademarkdocketing@taylorenglish.com
Signature /Alan S. Clarke/
Date 11/12/2019
November 12, 2019
Applicant’s Main Brief
IN RE: Ric Flair, L.L.C.
Trademark Application Serial No. 87/884420
Mark: Nature Boy
Applicant: Ric Flair, L.L.C.
Appeal Received: 09/13/2019

Pursuant to the Exparte Appeal Instituted by the Trademark Trial and Appeal Board

(“TTAB” or the “Board”) on September 13, 2019, and the provisions in TBMP §§ 1203.02(a),

1203.01, Applicant submits the following Brief appealing the March 13, 2019 Office Action by

the Examining Attorney:

BRIEF ON APPEAL

I. INTRODUCTION

The Examiner refused registration in Class 25 of Applicant’s Mark NATURE BOY, used

to describe “T-shirts, tank-tops, sweatshirts” (“Applicant’s Mark”), under Section 2(d) on the basis

that it is likely to cause confusion with Registration No. 4960478 for NATURE BOYS in Class 25

(the “Cited Mark”), used to describe, in relevant part,

CLOTHING FOR FISHING, NAMELY, FISHING VESTS, FISHING WADERS,

FISHING CAPS, FISHING HATS, FISHING JACKETS, FISHING SHIRTS,
FISHING SUITS, FISHING SWEATERS AND THERMAL UNDERWEAR FOR
FISHING; COATS; SWEATERS; SHIRTS; GLOVES AND MITTENS;
NECKTIES; BANDANAS; WARMTH-KEEPING SUPPORTERS IN THE
NATURE OF ARM WARMERS, HAND WARMERS, KNEE WARMERS, LEG
WARMERS AND BODY WARMERS, NAMELY, INSULATED VESTS;
MUFFLERS; EAR MUFFS; CAPS AND HATS; BELTS FOR CLOTHING;
ATHLETIC SHOES; SHOES FOR FISHING; ANORAKS,”
August 11, 2018 Office Action, TSDR p. 5; see also generally id. at 4-5; September 13, 2019

Office Action, TSDR pp. 4-7. 1 Collectively herein, Applicant’s Mark and the Cited Mark are

referred to as the “Marks.”

On Appeal, Applicant asserts that this refusal was legally and procedurally erroneous, and

the Board should determine that there is no likelihood of confusion between the Marks as follows.

The Examining Attorney did not properly consider the evidence of record, and reached her

conclusion on likelihood of confusion factors without consideration of the factual record.

Specifically, the Examining Attorney addressed the evidence of Applicant’s fame for the wrong

factor for which it was submitted, du Pont factor 5, and never addressed the distinctive commercial

impression it creates under du Pont factor 1, inherent from the Examining Attorney’s own

evidence. Instead, regarding the similarity of the marks, the Examining Attorney cited no evidence

when discussing the commercial meaning and connotation of the Marks, relying solely on the fact

that Applicant’s Mark is the plural form of the Cited Mark. Without any discussion of the

commercial impressions of the marks, the Examining Attorney essentially instituted a per se rule

that the plural form of a mark automatically engenders a confusingly similar mark. The Board and

its reviewing authorities have long rejected such an approach.

Applicant requests that the Board give proper weight to the Examining Attorney’s own

prior evidence and conclusions in this proceeding, namely, that “[t]he name “NATURE BOY”

in the applied-for mark clearly references Richard Fliehr (aka Ric Flair) and would be

1
Throughout this Brief, Applicant cites to the TSDR record in .pdf format, pursuant to
TBMP § 1203.01. See TBMP § 1203.01 (“The Examining Attorney and applicant may cite to the
TSDR record in .pdf format, but must indicate that they are doing so in their brief.”), citing In re
United Trademark Holdings, Inc., 122 USPQ2d 1796, 1797 n.5 (TTAB 2017) (noting the “Board
in [this] opinion cited to the TSDR record in .pdf format”).
2
construed by the public as a reference to Mr. Fliehr.” 2 August 11, 2018 Office Action, TSDR p.

5 (emphasis added). That the Examining Attorney did not address this as a commercial impression

of Applicant’s Mark, nor address any of the differing commercial impressions between the marks,

NATURE BOY and NATURE BOYS, all while making no factual findings regarding the

commercial impressions of the Marks, makes clear that the Applicant’s appeal should be granted. 3

II. USE OF THE APPLICANT'S MARK ON THE IDENTIFIED GOODS IS NOT

LIKELY TO CAUSE CONFUSION, OR TO CAUSE MISTAKE, OR TO
DECEIVE WITHIN THE MEANING OF 15 U.S.C. § 1052(d).

Applicant disagrees that its mark is confusingly similar to “NATURE BOYS” and

respectfully seeks reversal of the Examining Attorney’s refusal to register the mark in class 25.

The legal standard for evaluating likelihood of confusion in the Federal Circuit is set out in Section

2 of the Lanham Act, 15 U.S.C. § 1052, which provides as follows:

No trademark by which the goods of the Applicant may be distinguished

from the goods of others shall be refused registration on the principal
register on account of its nature unless it:
...

2
In its August 11, 2018 Office Action, the Examining Attorney provided significant
evidence, and supporting conclusions regarding Mr. Flieh’s connection to NATURE BOY, and
the public’s corresponding association with the same. See generally Exhibits attached by
Examining Attorney to August 11, 2018 Office Action, TSDR pp. 10-67.
3
Ultimately, the Examining Attorney rests her likelihood of confusion conclusion on the
assertion that “marks that create a virtually identical commercial impression on legally identical
and substantially related goods, purchasers would mistakenly believe the goods emanate from a
common source,” later concluding “the overriding concern is not only to prevent buyer confusion
as to the source of the goods and/or services, but to protect the registrant from adverse commercial
impact due to use of a similar mark by a newcomer.” September 13, 2019 Office Action, TSDR
pp. 6-7. After previously concluding Applicant’s Mark is connected with Applicant himself, see
August 11, 2018 Office Action, TSDR p. 5, this new conclusion would require the Cited Mark
contains the same commercial impression, namely, also referring to Applicant himself. This is
absurd.

3
 (d) consists of or comprises a mark which so resembles a mark
registered 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 deceive. . . .

Thus, the Lanham Act provides a positive grant of the right to register a trademark unless it is

confusingly similar to a registered mark. The burden is therefore on the Patent and Trademark

Office to show a likelihood of confusion.

Under the Trademark Act, a refusal to register grounded in likelihood of confusion requires

that such confusion as to the source of the goods not merely be possible, but likely. The Trademark

Trial and Appeal Board has clearly indicated that a mere possibility of confusion is an insufficient

basis for rejection under Section 2(d).

We are not concerned with mere theoretical possibilities of

confusion, deception or mistake or with de minimis situations but
with the practicalities of the commercial world, with which
trademark laws deal.

In re Massey-Ferguson Inc., 222 U.S.P.Q. 367, 368 (T.T.A.B. 1983) (quoting Witco Chemical Co.

v. Whitfield Chemical Co., Inc., 164 U.S.P.Q. 43, 44 (C.C.P.A. 1969)). See also Merritt Foods Co.

v. Americana Submarine, 209 U.S.P.Q. 591, 599 (T.T.A.B. 1980) and In re P. Ferrero & C.S.p.A.,

178 U.S.P.Q. 167, 168 (C.C.P.A. 1973) (that the goods “might both emanate from a single source

[is not sufficient to establish that the marks are] likely to cause confusion as to the source, or to

cause mistake, or to deceive.”)

In the Federal Circuit, the issue of likelihood of confusion is one of law. Sweat Fashions

Inc. v. Panhill Knitting Co. Inc., 4 USPQ2d 1793, 1797 (Fed. Cir. 1987). Likelihood of confusion

is to be tested under the factors set forth in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357

(C.C.P.A. 1973). Elements that distinguish marks in both appearance and sound must be

considered in the likelihood of confusion analysis. There is no authority to support an exception

4
to the rule that one must view the marks in their entire commercial context and consider “any

commercial impressions or connotations created by the marks….” Embarcadero Technologies Inc.

v. RStudio Inc.,105 U.S.P.Q.2D (BNA) 1825, 1834 (T.T.A.B. 2013); accord In re Oppedahl &

Larson Llp, 373 F.3d 1171, 71 USPQ2d 1370, 1373 (Fed. Cir. 2004) (“The Board must, of course,

determine the commercial impression of a mark in the proper context of the goods or services

associated with that mark.”).

a. The Examining Attorney cites no evidence to support her conclusion the

Marks “have the potential to be used…in exactly the same manner.”

While there are certainly similarities in the Marks, this does not foreclose the inquiry. As

a leading treatise has noted, where “[a] junior user's mark which consists of a senior user's mark

changed from singular to plural version, or vice-versa, does result in some difference in the

appearance (and perhaps meaning) of the marks.” Singular and plural versions of words, 4

McCarthy on Trademarks and Unfair Competition § 23:46.25 (5th ed.).

Thus, this similarity in appearance and/or sound between the Marks is not dispositive, and

certainly does not the foreclose the Examining Attorney’s requirement to make factual findings, 4

as the Board has long recognized the “analysis concerning the similarity of the marks…does not

end with their appearance and sound.” Embarcadero Technologies Inc. v. RStudio Inc.,105

U.S.P.Q.2D (BNA) 1825, 1834 (T.T.A.B. 2013). See also Rocket Trademarks Pty Ltd. v. Phard

S.P.A., 98 USPQ2d 1066, 1075-1077 (TTAB 2011) (noting extrinsic of evidence of use established

that the term ELEMENT “evok[ed] one or more of the above-defined meanings in relation to

4
The Examining Attorney concluded the “Marks are essentially identical in Appearance,
Sound, Meaning and Commercial Impression” (September 13, 2019 Office Action, TSDR pp. 4-
5), but cited no evidence to support this conclusion: there were no dictionary definitions, or
references to use of the Marks on similar goods.

5
clothing”); Ross Bicycles, Inc. v. Cycles USA, Inc., 765 F.2d 1502, 1507, 226 U.S.P.Q. 879 (11th

Cir. 1985) (determining, despite similarity between the marks BOSS and ROSS, the difference

between their meanings (one as a noun with a definite meaning, the other as a common name)

makes them “dissimilar in commercial impression”). 5

In this context, the Examining Attorney’s citation to In re. i.am.symbolic,llc to support her

contention that the Marks “have the potential be used in exactly the same manner,” is without

merit. See September 13, 2019 Office Action, TSDR p. 5. That case dealt with use of identical

marks “I Am,” and the Examining Attorney relied upon the following passage:

Regardless of how Applicant or Registrant currently intends to promote its mark, it

is indisputable that the two marks at issue are literally identical, carry the same
meaning, and have the potential to be used (at least in terms of their grammatical
meaning) in exactly the same manner.

In re i.am.symbolic, LLC, 116 U.S.P.Q.2D (BNA) 1406, 1411 (T.T.A.B. 2015) (emphasis added),

aff’d 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).

If Applicant were seeking to register “Nature Boys,” or the Cited Mark was “Nature Boy,”

then the Examining Attorney could perhaps assume the Marks “have the potential be used in

exactly the same manner.” See id. However, the Marks at issue here do not have the same meaning

and are not used in the same manner: Applicant’s Mark refers solely to Applicant himself, a

singular “Nature Boy” who has used his Mark to refer specifically to himself as a celebrity for

decades, while Registrant uses the cited Mark to describe its customers, males who enjoy specific

5
Indeed, even where the marks are identical in sight and sound, and the goods and/or
services are available in similar channels, the Board has found dispositive distinct commercial
impressions from the goods identified in the registrations. See In re Thor Tech, Inc., 113 USPQ2d
at 1547 (TERRAIN created different commercial impressions for “recreational vehicles” and
“motor land vehicles”); In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1313-1314 (TTAB 1987)
(CROSSOVER for brassieres creates a different commercial impression from CROSSOVER for
ladies’ sportswear); In re British Bulldog, Ltd., 224 USPQ 854, 856 (TTAB 1984) (PLAYERS for
shoes engendered a different commercial impression from PLAYERS for underwear).
6
activities in the outdoors (fishing) and seek specific gear to wear in these activities. See Exhibits

attached by Examining Attorney to August 11, 2018 Office Action, TSDR pp. 10-67, 70-72.

Applicant is not seeking to register an identical mark, the Examining Attorney points to no

evidence – nor appears to make the argument – that the Marks “are literally identical,” or “have

the potential to be used (at least in terms of their grammatical meaning) in exactly the same

manner.” In re i.am.symbolic, LLC, 116 U.S.P.Q.2D (BNA) at 1411.

Similarly, the Examining Attorney’s attempt to create a per se rule regarding the “plural”

use of a mark has no merit without evidentiary support, see September 13, 2019 Office Action,

TSDR p. 5, and the Examining Attorney’s cited authorities similarly do not establish a per se rule,

having virtually no application under these facts, as none of the cited authorities addressed

instances where an applicant presented evidence and argument that the singular and plural forms

of the marks created distinct commercial connotations and meanings. See, e.g., Swiss Grill Ltd. v.

Wolf Steel Ltd. , 115 U.S.P.Q.2D (BNA) 2001, 2011 (T.T.A.B. 2015) (SWISS GRILL and SWISS

GRILLS for barbecue grills); Weider Publ'ns, LLC v. D & D Beauty Care Co., LLC , 109

U.S.P.Q.2D (BNA) 1347, 1355 (T.T.A.B. 2014) (SHAPE and SHAPES for cosmetic products)

(“Applicant in its brief does not address this first du Pont factor; nor did applicant present any

evidence at trial regarding this factor.”); Wilson v. Delaunay, 44 C.C.P.A. 1019, 1020, 245 F.2d

877, 878 (C.C.P.A. 1957) (ZOMBIE and ZOMBIES for ice cream products) (both parties were

using both marks, so there was no evidence or argument about distinct commercial

impression/connotation by applicant).

b. Evidence submitted by the Examining Attorney establishes that the public

would perceive distinct commercial impressions and connotations between
the Marks.

7
 Another key consideration in this case is the established fame of the Applicant’s Mark.

When present, the fifth DuPont factor, “fame of the prior mark, plays a dominant role,” as the

Federal Circuit has recognized “[f]amous or strong marks enjoy a wide latitude of legal

protection.” Kenner Parker Toys, Inc. v. Rose Art Indus., 963 F.2d 350, 352 (Fed. Cir. 1992).

“Famous marks thus enjoy a wide latitude of legal protection.” Packard Press, Inc. v. Hewlett-

Packard Co., 227 F.3d 1352, 1359 (Fed. Cir. 2000). Although “fame” normally attaches to

registered marks, it is relevant here because “[a] party acquires a protectible interest in a name (or

its equivalent)…where the name claimed to be appropriated points uniquely and unmistakably to

that party's personality or ‘persona…’” Buffett v. Chi - Chi's, Inc., 226 U.S.P.Q. (BNA) 428, 429

(T.T.A.B. 1985), citing Univ. of Notre Dame Du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d

1372, 1374 (Fed. Cir. 1983).

Moreover, the Federal Circuit has recently established that the correct legal standard

regarding this factor is not an “all-or-nothing” inquiry; evidence of record relating to fame must

be considered in the likelihood of confusion analysis, as it always “warrant[s] reasonable weight,

among the totality of the circumstances”; and directing the Board that analysis of “likelihood of

confusion fame 'varies along a spectrum from very strong to very weak.’” Joseph Phelps

Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 1324-26 (Fed. Cir. 2017) (quoting

Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369,

1374-75 (Fed. Cir. 2005) (in turn, quoting In re Coors Brewing Co., 343 F.3d 1340, 1344 (Fed.

Cir. 2003)).

Applicant’s Mark clearly attaches to Applicant in such a way. Although fame usually

requires a fact-intensive inquiry, see Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352,

1360 (Fed. Cir. 2000), it is unnecessary here because the Examining Attorney inserted extensive

8
evidence into the factual record regarding the fame of Applicant’s Mark. See In re Mr. Recipe,

LLC, 118 U.S.P.Q.2D (BNA) 1084, 1086 (T.T.A.B. 2016). As the Examining Attorney

recognized,

Widely regarded as the greatest professional wrestler of all time and the best
American performer of the 1980’s, Mr. Fliehr had a career that spanned 40
years…he is frequently the subject of frequent media attention and his name is often
in the public view….

The name “NATURE BOY” in the applied-for-mark clearly references Richard

Fliehr (aka Ric Flair) and would be construed by the public as a reference to Mr.
Fliehr.

August 11, 2018 Office Action, TSDR p. 5. Therefore, “the record establishes that [Applicant] is

widely known by his nickname, and that when his nickname is used…an association between [Mr.

Flier] and the goods or with applicant's business would be assumed by purchasers of such

products.” In re Sauer, 27 U.S.P.Q.2D (BNA) 1073, 1074-1075 (T.T.A.B. 1993).

More importantly, Applicant argued this evidence of his fame for purposes of establishing

a different commercial connotation than the Cited Mark, see February 11, 2019 Response to Office

Action, TSDR pp. 10-12, not to either usurp or over-run the market for the Cited Mark, and

certainly did not offer this evidence in the context of suggesting the Cited Mark carried less

protection than Applicant’s Mark. Thus, the Examining Attorney’s discussion of these factors,

and the authority relied upon, see September 13, 2019 Office Action, TSDR p. 5, does not rebut

Applicant’s evidence or argument that the Marks create different commercial impressions.

In In re i.am.symbolic, LLC, cited by the Examining Attorney, the applicant provided no

evidence of fame regarding the applied-for mark, and the marks, as noted above, were identical.

See In re i.am.symbolic, LLC, 116 U.S.P.Q.2D (BNA) at 1413. More importantly, in that case, the

cited language occurred in the context of stating that consumers would be more likely to associate

the goods based on the marks, see id., while, here, the evidence of Applicant’s fame assures that

9
consumers would be less likely to associate NATURE BOYS with Applicant’s Mark, NATURE

BOY, based on their distinct commercial impressions. See February 11, 2019 Response to Office

Action, TSDR pp 10-12.

In In re Davey Prods. Pty Ltd, the other case cited by the Examining Attorney when

addressing Applicant’s fame, see September 13, 2019 Office Action, TSDR p. 5, the applicant in

that case stated that the cited mark was not famous. In re Davey Prods. Pty, 92 U.S.P.Q.2D (BNA)

1198, 1204 (T.T.A.B. 2009). Again, this argument is simply irrelevant. Indeed, in Davey, the

applicant’s argument was entirely the opposite as that in the present case: the Davey applicant

asserted that the cited mark, in relation to the goods, was less likely to be confused by consumers

as to the source of applicant’s Mark on the cited goods; Applicant’s argument had nothing to do

with the weakness of the Cited Mark. See generally February 11, 2019 Response to Office Action,

TSDR pp 10-12.

III. CONCLUSION

The Examining Attorney did not make her “determination of the issue of likelihood of

confusion...based on analysis of all of the probative facts in evidence that are relevant to the factors

set forth in In re E. I. du Pont de Nemours & Co. [citations omitted],” as is required. In re White

Rock Distilleries, Inc., 92 U.S.P.Q.2D (BNA) 1282, 1283 (T.T.A.B. 2009). “In every case turning

on likelihood of confusion, it is the duty of the examiner, the board and this court to find, upon

consideration of all the evidence, whether or not confusion appears likely." Elec. Design & Sales,

Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 718 (Fed. Cir. 1992), quoting In re E.I. DuPont

DeNemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 568 (CCPA 1973); accord In re Thor

Tech, Inc., 90 U.S.P.Q.2D (BNA) 1634, 1634 (T.T.A.B. 2009). As the burden was on the

Examining Attorney to prove likelihood of confusion, the Examining Attorney’s refusal is subject

10
to reversal on the grounds that she made no explicit factual findings regarding multiple du Pont

factors, and proper consideration of the evidence of record by the Board will show confusion

between the Marks is not likely. See id. (even where the Board made factual findings for five of

the du Pont factors, reversing the Board where it did properly weigh those factors); accord In re

White Rock Distilleries, Inc., 92 U.S.P.Q.2D (BNA) at 1285 (reversing the Examining Attorney’s

refusal after “find[ing] that the examining attorney has failed to establish on this record that

applicant's goods and registrant's goods are related”).

11