91285989•Simplicity Holistic Health, LLC v. Bianca Kiovanni
Gesamter Gesetzestext
This Opinion is Not a Precedent of the TTAB Mailed: January 27, 2026 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Simplicity Holistic Health, LLC v. Bianca Kiovanni _____ Opposition No. 91285989 William A. McKenna of Woodard, Emhardt, Henry Reeves & Wagner, LLP, for Simplicity Holistic Health, LLC. Bianca Kiovanni, pro se. _____ Before Thurmon, Allard and Brock, Administrative Trademark Judges. Opinion by Thurmon, Administrative Trademark Judge: Bianca Kiovanni (“Applicant”) seeks registration on the Principal Register of the mark shown below for “Tea; Tea-based beverages; Beverages made of tea; Iced tea,” in International Class 30, and “Lemonade,” in International Class 32:
Opposition No. 91285989 - 2 - .1 Simplicity Holistic Health, LLC (“Opposer”) opposes registration under Section 2(d) of the Act, alleging priority and a likelihood of confusion with three registered marks owned by Opposer, namely: • SIMPLICITY, in standard characters for “Cold pressed drinks made from fruits and vegetables for cleansing,” in International Class 32;2 1 Application Serial No. 97469999, was filed on June 22, 2022 under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), and alleging November 2, 2017 and May 7, 2019, as the date of first use and first use in commerce, respectively, for each class. The mark is described as follows: The mark consists of a yellow circle with the stylized & capitalized wording “Simplicity” in yellow at the top [sic] the circle with the stylized and capitalized wording “Beverage Company” in yellow at the bottom of the circle. The second “i” in SIMPLICITY contains a green leaf above it. Between the wording “SIMPLICITY” and “BEVERAGE COMPANY” appears a yellow circle surrounding another yellow circle that contains eight (8) yellow petals all of which are connected in the center and which resemble a slice of lemon. Within the first circle and appearing between the terms “SIMPLICITY” and “BEVERAGE COMPANY” and on opposite sides are two curved yellow lines. All white areas are clear and/or transparent areas, and not part of the mark. The colors yellow and green are claimed as a feature of the mark. The words “ BEVERAGE COMPANY” are disclaimed. 2 Registration No. 5035149, issued on September 6, 2016, from an underlying application filed on December 8, 2015. A partial Section 8 and 15 combined declaration has been accepted and acknowledged.
Opposition No. 91285989 - 3 - • SIMPLICITY FAT BURNER, in standard characters for “Vegetable-fruit juices,” in International Class 32;3 and • SIMPLICITY FRESH AIR, in standard characters for “Vegetable-fruit juices,” in International Class 32.4 The parties submitted an Accelerated Case Resolution (“ACR”) stipulation, which was clarified through a conference with an Interlocutory Attorney.5 The ACR stipulation, as clarified, included a stipulation to facts supporting Opposer’s statutory entitlement to bring this action, that priority is not in dispute, and set other limits on the trial process. Opposer submitted evidence and briefs. Applicant filed a brief, with some attached evidence, challenging Opposer’s evidence and arguments. The case is now ready for final decision. We find Opposer has proven a likelihood of confusion, the sole remaining issue before us, and for that reason, we sustain the opposition. The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the opposed Application. In addition, Opposer submitted title and status records for the three registrations it relies upon, a declaration by its owner, and a dictionary definition of the word “simplicity.”6 3 Registration No. 5673885, issued on February 12, 2019, from an underlying application filed on May 30, 2018. The words “FAT BURNER” have been disclaimed. A combined Sections 8 and 15 declaration has been accepted and acknowledged. 4 Registration No. 5648836, issued on January 8, 2019, from an underlying application filed on May 30, 2018. A combined Sections 8 and 15 declaration has been accepted and acknowledged. 5 35 TTABVUE (ACR stipulation), 37 TTABVUE (Board Order clarifying and accepting the ACR stipulation). 6 38 TTABVUE. The ACR stipulation provided dates for the parties’ briefs, but did not identify new trial periods for the parties. The stipulation provided no period for submission of evidence. Opposer submitted its evidence on the same day it filed its brief, though no
Opposition No. 91285989 - 4 - Applicant submitted, with its brief, screenshots and images showing the parties’ goods, excerpts from Applicant’s social media and some correspondence.7 In addition, the ACR stipulation includes the following stipulated facts that are relevant to our likelihood of confusion analysis: • Opposer is the owner of the three registrations identified above;8 • The parties’ goods, as identified in the opposed Application and the three Registrations, “are identical and move in the same trade channels ….”9; and • “The word ‘simplicity’ has no special meaning in the juice or beverage products fields.”10 I. Entitlement to a Statutory Cause of Action Entitlement to a statutory cause of action must be established in every inter partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 1373 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-26 n.4 (2014)). A party in the position of plaintiff may oppose an application where such opposition is within the zone of interests protected by the statute, 15 U.S.C. § 1063, and the opposer must have a reasonable belief in damage that is proximately caused by registration of the mark. See Peterson v. Awshucks SC, Order from this Board allowed for such a submission. Applicant did not object, and for that reason, we will consider the evidence submitted by Opposer. 7 40 TTABVUE 24-40. In a non-ACR proceeding, it would be improper for Applicant to submit evidence with a trial brief, but Opposer submitted its evidence on the same day as its trial brief was filed, which has the effect as attaching evidence to a brief. Neither party objected, so we allow the evidence into the record, though neither party complied with our normal rules for submission of evidence. Applicant also submitted a copy of the ACR stipulation. 8 35 TTABVUE 3-4. 9 Id. at 4. 10 Id. at 5.
Opposition No. 91285989 - 5 - LLC, No. 92066957, 2020 TTAB LEXIS 520, at *17 (citing Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303-04 (Fed. Cir. 2020)). Opposer has made of record its three pleaded registrations, which the parties stipulated are active and owned by Opposer.11 This establishes Opposer’s entitlement to bring its Section 2(d) claim against Applicant. Cunningham v. Laser Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000) (pleaded registrations “suffice to establish … direct commercial interest”); Barbara’s Bakery, Inc. v. Landesman, No. 91157982, 2007 TTAB LEXIS 9, at *5-6 (opposer’s entitlement to opposition established by pleaded registration and non-frivolous likelihood of confusion claim). II. Law and Analysis – Section 2(d) Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), prohibits registration of a mark that “[c]onsists of or comprises a mark which so resembles a mark registered in the Patent or 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.” To prevail on its Section 2(d) claim, Opposer must show by a preponderance of the evidence that it has either a registration of or priority in its SIMPLICITY marks, and that Applicant’s use of her mark is likely to cause confusion, mistake, or deception regarding the source of the goods identified in her Application. New Era Cap Co. v. Pro Era, LLC, No. 91216455, 2020 TTAB LEXIS 199, at *2-3. 11 38 TTABVUE 6-26 (evidence); 35 TTABVUE 3-4 (stipulation).
Opposition No. 91285989 - 6 - A. Priority Because Opposer’s pleaded registrations are properly of record and because Applicant did not counterclaim to cancel any of them, priority is not at issue with respect to the registered marks and the goods and services identified in the registrations. Nkanginieme v. Appleton, No. 91256464, 2023 TTAB LEXIS 64, at *40. In addition, the parties stipulated, “Priority of use is not at issue in this opposition.”12 B. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311, 1314 (Fed. Cir. 2003). We must consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 1378-79 (Fed. Cir. 2019). “Whether a likelihood of confusion exists between an applicant’s mark and a previously registered mark is determined on a case-by-case basis, aided by application of the thirteen DuPont factors.” Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1318 (Fed. Cir. 2018). When analyzing these factors, the overriding concerns are not only to prevent buyer confusion as to the source of the goods or services, but also to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208 (Fed. Cir. 1993). 12 35 TTABVUE 4.
Opposition No. 91285989 - 7 - “Each case must be decided on its own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 1199 (CCPA 1973). Varying weights may be assigned to each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Cap. City Bank Grp. Inc., 637 F.3d 1344, 1356 (Fed. Cir. 2011); Shell Oil, 992 F.2d at 1206 (“the various evidentiary factors may play more or less weighty roles in any particular determination”). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See In re i.am.symbolic, LLC, 866 F.3d 1315, 1322 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65 (Fed. Cir. 2002)); In re Chatam Int’l Inc., 380 F.3d 1340, 1342 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). We address the DuPont factors raised by the parties in turn below. We focus our analysis on Opposer’s SIMPLICITY mark, as it is more similar to the applied-for mark than the other two marks relied upon by Opposer. In re Max Cap. Grp. Ltd., No. 77186166, 2010 TTAB LEXIS 1, at *5. 1. Similarity of the Marks To evaluate the similarity of the marks under the first DuPont factor, we consider the marks in their entireties as to appearance, sound, connotation and commercial impression. See, e.g., Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371 (citing DuPont, 476 F.2d at 1361). “Similarity
Opposition No. 91285989 - 8 - in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s LLC, No. 87075988, 2018 TTAB LEXIS 170, at *13 (quoting In re Davia, No. 85497617, 2014 TTAB LEXIS 214, at *4, aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted). “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning, LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012). The focus is on the recollection of the average purchaser, who normally “retains a general rather than a specific impression of marks.” In re i.am.symbolic, llc, No. 85916778, 2018 TTAB LEXIS 281, at *11. The marks are similar in appearance, sound, meaning and commercial impression. Though Applicant’s mark features a significant design element, the only literal term not disclaimed in the mark is “Simplicity,” which is positioned by itself at the top of the mark and is in a larger font than “Beverage Company.” The design elements of Applicant’s mark create a visual difference, but consumers will notice that the primary word in Applicant’s mark is identical to the entire SIMPLICITY mark relied upon by Opposer. “Likelihood of confusion often has been found where the entirety of one mark is incorporated within another.” Hunter Indus., Inc. v. Toro Co., No. 91203612, 2014 TTAB LEXIS 105, at *33.
Opposition No. 91285989 - 9 - The marks are very similar in sound, as consumers are unlikely to attempt to “pronounce” or describe the design features of Applicant’s mark when asking for Applicant’s goods. Indeed, given the descriptive nature of the “Beverage Company” part of the applied-for mark, consumers are likely to shorten this mark to “Simplicity,” particularly when asking for the goods or when telling others about the goods. In re Bay State Brewing Co., No. 85826258, 2016 TTAB LEXIS 46, *9 (“[W]e also keep in mind the penchant of consumers to shorten marks.”). The high degree of similarity in sound increases the likelihood of confusion. The parties stipulated that the word “simplicity” has no special meaning for the parties’ goods. Given this stipulation, we find the marks have the same meaning; generally, whatever the word “simplicity” means to each consumer will apply to either party’s mark. In re Embiid, 2021 TTAB LEXIS 168, at *20-21 (finding no reason to believe the same term means something different in the parties’ marks). The marks are used with beverages—tea and fruit drinks—so the term “simplicity” evokes drinks made from basic ingredients without much additional processing. We find the commercial impressions created by the marks are similar. In summary, we find the marks are similar in appearance, sound, meaning and commercial impression. This finding strongly supports Opposer’s Section 2(d) claim. 2. Similarity of the Goods, Trade Channels and Classes of Customers The second, third and fourth DuPont factors consider the similarity of the goods, the trade channels and the classes of consumers who buy and use the goods. The parties stipulated that their goods are identical and flow through the same trade
Opposition No. 91285989 - 10 - channels.13 This stipulation, therefore, resolves our inquiry under the second and third DuPont factors.14 These factors support Opposer’s claim. The fourth DuPont factor considers the classes of consumers who buy and use the goods. Because the goods are identical and neither the Application nor the relied upon Registration contain any limitations, it follows that these goods are consumed by the same class of consumers.15 Opposer makes exactly that argument, and Applicant does not contest this issue.16 The fourth DuPont factor also supports Opposer’s claim. 3. Strength of Opposer’s SIMPLICITY Mark We consider the strength of Opposer’s mark under the fifth and sixth DuPont factors. While Opposer argues that its SIMPLICITY marks are commercially strong, it provided no evidence to support that argument. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1370 (Fed. Cir. 2018) (attorney argument is not evidence). The parties stipulated that the word “simplicity” has no special meaning for the goods. In addition, Opposer’s SIMPLICITY mark was registered on the Principal Register without evidence of acquired distinctiveness, so we must presume this mark is inherently distinctive. We find Opposer’s SIMPLICITY mark is suggestive of simple beverages without many ingredients or processing. The mark has moderate conceptual strength. 13 35 TTABVUE 4. 14 Applicant argues in her trial brief that the parties’ goods are different. 40 TTABVUE 8-9. These arguments are contradicted by the ACR stipulation, which is binding. The arguments are also unsupported by the identification of goods in the Application and Opposer’s Registration. 15 35 TTABVUE 4-5 (stipulation regarding Opposer’s Registrations). 16 39 TTABVUE 21-22.
Opposition No. 91285989 - 11 - We find the conceptual strength of Opposer’s SIMPLICITY mark weighs slightly in Opposer’s favor, but that Opposer has failed to prove that its mark is commercially strong, so commercial strength is neutral in our likelihood of confusion analysis. 4. Actual Confusion or the Lack Thereof Opposer referred to two incidents of alleged actual confusion in a declaration by its owner.17 The two incidents both arose from the Atlanta area, where Opposer’s owner testified it has no distribution. Applicant’s business is located in Atlanta, and this evidence appears to show two instances of actual confusion. We have no contextual evidence to confirm what happened, but Opposer’s evidence appears to show that at least two consumers in the Atlanta area believed Applicant’s goods were those of Opposer. This evidence is thin, and as we noted, lacks context, but we find it provides some additional support for Opposer’s likelihood of confusion claim. Applicant, on the other hand, argues that there has been no actual confusion over a period of time, suggesting that confusion is not likely.18 There is no evidence establishing that the circumstances under which actual confusion is likely to occur— that is, overlapping distribution of the same goods in the same region for a substantial period of time. Indeed, in disputing Opposer’s actual confusion evidence, Applicant asserts that her goods were launched exclusively online on November 1, 2021 and that she had no wholesale/retail customers until July 11, 2022.19 17 38 TTABVUE 29-30. 18 40 TTABVUE 12. 19 Id. at 10-11. We note that Applicant claimed May 7, 2019 as her date of first use in commerce for both classes of goods of her mark in her Application, a date that appears to have been over two years prior to her exclusive online product launch. In addition, while
Opposition No. 91285989 - 12 - We have no evidence in the record establishing the scope of either party’s distribution of its goods. We have no evidence of how long each party has operated in particular markets. In short, we lack the sort of evidence needed to determine whether there has been peaceful coexistence of these marks and whether that coexistence is probative on the likelihood of confusion question. CDOC, Inc. v. Liberty Bankers Life Ins. Co., 844 F. App’x 357, 363 (Fed. Cir. 2021) (when we “determine if the absence of actual confusion is indicative of the likelihood of confusion, the fact finder looks to real market conditions to evaluate consumer exposure to the marks at issue, assessing the length of time of any concurrent use; the similarity of the services, customers, and trade channels.”). We find seventh DuPont factor (actual confusion evidence) weighs slightly in Opposer’s favor, while the eighth DuPont factor (lack of actual confusion over time) is neutral. 5. Conclusion – Weighing the Factors We find the marks are similar and the parties stipulated that the goods20 and trade channels are identical. The first three DuPont factors, therefore, weigh heavily in favor of Opposer’s Section 2(d) claim. The fourth DuPont factor (classes of consumers), the sixth factor (conceptual strength), and the seventh factor (actual Applicant makes these statements in her brief, there is no evidence establishing any of these facts. As we noted above concerning Opposer’s argument that its mark has commercial strength, the arguments of a party or its counsel, without supporting evidence, are of little value to the Board. 20 The parties expressly stipulated that both classes of goods identified in the Application are identical to the goods identified in Opposer’s Registrations. 35 TTABVUE 4.
Opposition No. 91285989 - 13 - confusion) weigh slightly in favor of Opposer’s claim. The remaining factors we considered are neutral. No DuPont factors support Applicant’s position. Opposer has proven a likelihood of confusion as to both classes of goods in the Application, and because priority is not in issue, both elements of Opposer’s Section 2(d) claim have been established. Decision: The opposition is sustained.
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