98476728•Luxury Brands International LLC
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This Opinion is Not a Precedent of the TTAB Mailed: January 26, 2026 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Luxury Brands International LLC _____ Serial No. 98476728 _____ Sumedh Rishi of Markavocom, for Luxury Brands International LLC. Shahrzad Poormosleh, Trademark Examining Attorney, Law Office 110, Loksye Lee Riso, Managing Attorney. _____ Before Lykos, Larkin, and Casagrande, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: Luxury Brands International LLC (“Applicant”) seeks to register on the Principal Register the stylized mark displayed below, with LUXURY BRANDS INTERNATIONAL disclaimed, for goods identified as
Serial No. 98476728 - 2 - Bed sheet sets; Bed sheets; Bed sheets for children; Blanket throws; Pillow cases; Bed sheets, fitted bed sheet covers, bed flat sheets, and pillow cases used in the bedding, health care, home-health care and nursing home industries made of biodegradable film created from renewable bio-polymer resources; Children’s bed sheets; Children’s pillow cases; Children’s bed sheets, pillow cases, and blankets; Fitted bed sheets; Flat bed sheets; Silk blankets; Silk bed blankets; Valanced bed sheets” in International Class 24.1 Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the registered standard character mark LUXBRAND on the Principal Register for various goods in International Class 24, including “bed blankets” and “bed sheets,” that it is likely to cause confusion or mistake or to deceive.2 When the refusal was made final, Applicant appealed and requested reconsideration. The Board suspended the appeal and remanded the application to the Trademark Examining Attorney. After the Trademark Examining Attorney denied the request for reconsideration, the appeal resumed. Applicant and the 1 Application Serial No. 98476728, filed March 31, 2024 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce. The description of the mark is as follows: “The mark consists of the stylized wording ‘LBI LUXURY BRANDS INTERNATIONAL.’” Color is not claimed as a feature of the mark. Citations to the prosecution file refer to the USPTO’s Trademark Status & Document Retrieval (“TSDR”) system in Portable Document Format (“PDF”). Citations to the record also include references to TTABVUE, the Board’s online docketing system. 2 Registration No. 7169093, registered September 19, 2023 on the Principal Register. The full identification reads as follows: “Comforters; Coverlets; Bath towels; Bed blankets; Bed sheets; Bed skirts; Blankets for outdoor use; Canvas for tapestry or embroidery; Curtains and towels; Fabric bed valances; Fabrics with patterns, designs, inspirational words printed thereon; Flags of textile or plastic; Furnishing and upholstery fabrics; Gift wrap of textile; Kitchen towels; Picnic blankets; Pillow covers; Shower curtains; Table pads; Table runners of plastic; Table runners of textile; Textile wall hangings; Wall hangings of textile featuring mural art.”
Serial No. 98476728 - 3 - Trademark Examining Attorney have filed briefs.3 For the reasons explained below, we reverse the refusal to register. I. Likelihood of Confusion Section 2(d) of the Trademark Act prohibits the registration of a mark that: [c]onsists 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. 15 U.S.C. § 1052(d). Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the 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, 144 (2015); see, e.g., In re Charger Ventures LLC, 64 F.4th 1375, 1379 (Fed. Cir. 2023); In re Majestic Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003). In making our determination, we have considered each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019). 3 Both Applicant and the Examining Attorney submitted materials with their briefs. Any materials not properly of record are untimely and have been given no consideration. See Trademark Rules 2.142(d) and (d)(1), 37 C.F.R. §§ 2.142(d) and (d)(1). To the extent any of the submissions duplicate evidence from the record, they are superfluous. The Board strongly disapproves of this practice because it requires additional time to compare the materials against the record to determine admissibility. See In re Info. Builders Inc., No. 87753964, 2020 TTAB LEXIS 20, at n.4 (attaching previously submitted evidence to an appeal brief is unnecessary and impedes efficient disposition of the appeal by the Board), appeal voluntarily dismissed, No. 20-1979 (Fed. Cir. Oct. 20, 2020); accord In re Jimenez, No. 97551823, 2025 TTAB LEXIS 441, at *14.
Serial No. 98476728 - 4 - 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, 353 (Fed. Cir. 2011). “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). In any likelihood of confusion analysis, two key considerations are the similarity or dissimilarity of the marks and the goods. See In re i.am.symbolic, LLC, 866 F.3d 1315, 1322 (Fed. Cir. 2017); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65 (Fed. Cir. 2002); see also In re Embiid, No. 88202890, 2021 TTAB LEXIS 168, at *10 (“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.”) (quoting Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (CCPA 1976)). These factors, as well as others raised by the Examining Attorney and Applicant, are discussed below. In our final balancing analysis, we will accord a specific weight to each factor to determine if confusion is likely. See, e.g., Charger Ventures, 64 F.4th at 1381; In re Majestic Distilling Co., 315 F.3d 1311, 1319 (Fed. Cir. 2003). A. Strength or Weakness of the Cited Mark First we address the “number and nature of similar marks in use on similar goods.” See DuPont, 476 F.2d at 1361. This DuPont factor “is a measure of the extent to which other marks weaken the assessed mark.” See Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 1362 (Fed. Cir. 2023) (inter partes context). “The weaker [the cited] mark, the closer an applicant’s mark can come without causing a likelihood of confusion and
Serial No. 98476728 - 5 - thereby invading what amounts to its comparatively narrower range of protection.” Id. at 1338 (internal citations omitted). In determining the strength or weakness of the cited mark, we consider both its inherent strength, based on the nature of the mark itself, and, if there is evidence in the record of marketplace recognition of the mark, its commercial or marketplace strength. Spireon, 71 F.4th at 1362; see also In re Chippendales USA, Inc., 622 F.3d 1346, 1353-54 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength … and its marketplace strength ….”); see also Tea Bd. of India v. Republic of Tea Inc., No. 91118587, 2006 TTAB LEXIS 330, at *62. Conceptual or inherent strength is a measure of a mark’s distinctiveness. Chippendales, 622 F.3d at 1353-54. Distinctiveness is “often classified in categories of generally increasing distinctiveness[:] ... (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). “Commercial strength, on the other hand, is the marketplace recognition value of the mark.” Spireon, 71 F.4th at 1362 (internal citation and quotation marks omitted). “Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371 (Fed. Cir. 2005); see also Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1373- 74 (Fed. Cir. 2015). The cited mark LUXBRAND is registered on the Principal Register without a claim of acquired distinctiveness, and thus carries a presumption under Trademark
Serial No. 98476728 - 6 - Act Section 7(b), 15 U.S.C. § 1057(b), that it is inherently distinctive. See, e.g., New Era Cap Co. v. Pro Era, LLC, No. 91216455, 2020 TTAB LEXIS 199, at *29. That said, we observe that LUXBRAND is a portmanteau of two merely descriptive words, “luxury” and “brand.” The record shows that “lux” is a recognized abbreviation for “luxury,”4 which may be defined as “something that is not essential but provides pleasure and comfort,” and “brand” may denote “a product or service so identified.”5 Just as each individual word is conceptually weak, so is their fusion because, in the absence of any evidence to the contrary, the combination strongly suggests to consumers that the identified goods are part of a luxury brand line. “Marks that are … highly suggestive are entitled to a narrower scope of protection, i.e., are less likely to generate confusion over source identification, than their more fanciful counterparts.” Spireon, 71 F.4th at 1362 (quoting Juice Generation, 794 F.3d at 1339). Next we address the third-party registration evidence Applicant made of record. Applicant contends that such evidence demonstrates both commercial and conceptual weakness. Applicant is mistaken to the extent that such evidence is indicative of commercial weakness. Third-party marketplace uses, not registrations, may show commercial weakness. However, Applicant is correct that third-party registered marks may “prove that some segment of the [marks] has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that 4 Entry for “lux” from Acronym Finder searchable database (www.acronymfinder.com) submitted with November 25, 2024 Office Action at TSDR 8-12. 5 Entries for “luxury” and “brand” from THE AMERICAN HERITAGE DICTIONARY (www.ahddictionary.com) submitted with October 11, 2024 Office Action at TSDR 5 and 7.
Serial No. 98476728 - 7 - segment is relatively weak” in connection with the goods.” Juice Generation, 794 F.3d at 1339. Even if “there is no evidence of actual use” of third-party registrations, such registrations “may be given some weight to show the meaning of a mark in the same way that dictionaries are used.” Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917 (CCPA 1976). “The controlling inquiry is the extent of third-party marks … on ‘similar’ goods or services.” Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., Inc., 908 F.3d 1315, 1324 (Fed. Cir. 2018) (citing Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992)). We deem most relevant the following eight (8) third-party registrations for marks, each registered in standard characters on the Principal Register, comprised of “LUX” or its phonetic equivalent “LUXE,” for the same or “similar” goods, see DuPont, 476 F.2d at 1361 and Omaha Steaks, 908 F.3d at 1324, as Registrant’s “bed blankets” and “bed sheets:”6 Registration No. 6872595 for the mark LUX SNUGGLE for “… Bed throws; Children’s blankets; …”; Registration No. 5826687 for the mark LUXCLUB for “Sheet sets; Children’s bed sheets, pillow cases, and blankets; Contour sheets; Fitted bed sheets; Flat bed sheets”; Registration No. 5455306 for the mark ELUXURY for “Sheet sets; mattress pads; comforters …; Registration No. 7041655 for the mark LUXBAY for “Bed sheets; … Pillow cases …”; 6 December 11, 2024 Response to Office Action at TSDR 21-37. We have not considered cancelled registrations. See In re Hartz Hotel Servs., No. 76692673, 2012 TTAB LEXIS 75, at *6 n.5 (Board did not consider four cancelled third-party registrations submitted by applicant).
Serial No. 98476728 - 8 - Registration No. 6627932 for the mark LAIRLUX for “…Duvets; … Bed linen; Bed skirts; Blanket throws; … Woollen blankets”; Registration No. 6989846 for the mark LUXE EXTREME (with a disclaimer of LUXE) for “… Bed blankets”; Registration No. 5768606 for the mark LUXOME for “Bed spreads; Bed throws; … Bed blankets …”; Registration No. 5451872 for PUR LUX for “Flat bed sheets; Pillow covers; Bed blankets; Bed sheets; Comforters; Pillow cases; Sheet sets; Mattress pads”; and Registration No. 7145429 for the mark CHILL LUXE for “Flat bed sheets; Pillow covers; Bed blankets; Bed sheets; Comforters; Pillow cases; Sheet sets; Mattress pads.” This evidence suggests that the shared segment “LUX” (or the slight variant “LUXE”) has been adopted by other entities because it has a commonly understood meaning in connection with bedding. Consumers will perceive the abbreviation “lux,” the recognized shortened form of the word “luxury,” as describing lavish bedding sheets, bedding blankets and other similar products. See In re Sien Equip. Co., 1975 TTAB LEXIS 218, at *7 (the suggestive meaning of the word “Brute” in the context of the goods at issue explains the numerous third-party registrations incorporating that word). Based on this evidence, we find that the cited mark LUXBRAND is highly suggestive and falls on the lower end of the conceptual strength spectrum, making its scope of protection relatively limited. Hartz Hotel Servs., 2012 TTAB LEXIS 75, at *13 (“the mark GRAND HOTEL is highly suggestive, and therefore the scope of protection to which the cited registration is entitled is quite limited.”). The sixth
Serial No. 98476728 - 9 - DuPont factor therefore weighs against a likelihood of confusion. B. The Marks Having gauged the conceptual weakness of the cited mark, we turn now to the first DuPont factor, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imps., 396 F.3d at 1371 (citing DuPont, 476 F.2d at 1361). “Similarity 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 *21-24), 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). “[S]imilarity is not a binary factor but is a matter of degree.” In re St. Helena Hosp., 774 F.3d 747, 751 (Fed. Cir. 2014) (quoting In re Coors Brewing Co., 343 F.3d 1340 1344 (Fed. Cir. 2003)). The proper test regarding similarity “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 [Registrant and Applicant].” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373 (Fed. Cir. 2018) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012)) (internal quotation marks and citation omitted).
Serial No. 98476728 - 10 - Our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 1007 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). “No element of a mark is ignored simply because it is less dominant, or would not have trademark significance if used alone.” In re Electrolyte Labs. Inc., 929 F.2d 645, 647 (Fed. Cir. 1990) (citing Spice Islands, Inc. v. Frank Tea & Spice Co., 505 F.2d 1293 (CCPA 1974)). We now compare Applicant’s mark reprinted below with the cited mark LUXBRAND in standard characters. The Examining Attorney argues that the marks are similar in connotation and commercial impression because LUXBRAND is a truncated form of “Luxury Brands.” This argument hinges on the Examining Attorney’s assertion that LUXURY BRANDS, rather than LBI, is “the most prominent feature of the applicant’s mark.”7 7 8 TTABVUE 6; see also id. at 4.
Serial No. 98476728 - 11 - We disagree with the Examining Attorney that the disclaimed and merely descriptive wording “Luxury Brands” is the dominant element of Applicant’s mark. More or less weight may be given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. Nat’l Data Corp., 753 F.2d at 1058; see also Sabhnani v. Mirage Brands, LLC, No. 92068086, 2021 TTAB LEXIS 464, at *31. When we compare the marks as a whole, overall we find them to be dissimilar in sound, appearance, connotation, and commercial impression. The Examining Attorney failed to give proper consideration to the stylized initialism LBI appearing in prominent serif styled lettering above the merely descriptive wording “Luxury Brands” which is part of the corporate designation “Luxury Brands International.” See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405 (Fed. Cir. 1997) (disclaimed and generic word less dominant). The relatively large size and staggered presentation of the three letters is eye-catching. By contrast, “Luxury Brands” appears underneath in a much smaller sized and lighter shade font, making it less perceptible. We focus on the “general recollection” of consumers. See Gegenuber Dem Julichs-Platz v. Chesebrough-Pond, Inc., 470 F.2d 1385, 1386 (CCPA 1972) (“The focus must be on the ‘general recollection’ reasonably produced by appellant’s mark and a comparison of appellee’s mark therewith.”) (citation omitted). Marks must also “be considered . . . in light of the fallibility of memory” of consumers. St. Helena Hosp., 774 F.3d at 751 (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 685 (CCPA 1977)). In light of the visual presentation of Applicant’s mark and the meaning of the disclaimed words, we find
Serial No. 98476728 - 12 - that consumers are likely to overlook “Luxury Brands” as well as the entirety of that entity designation and instead focus on LBI. The marks also sound different. Consumers have a penchant to shorten marks. See, e.g., Bay State Brewing, 2016 TTAB LEXIS 46, at *9. The cited mark is likely to be shortened to LBI when spoken by consumers, which sounds nothing like LUXBRAND. And even if this were not the case, “LBI Luxury Brands International” sounds significantly different than LUXBRAND. Finally, as to connotation and commercial impression, as noted above, LUXBRAND is a portmanteau of the two words “luxury” and “brand.” LBI has no recognized meaning in relation to the identified goods. However, when considered within the context of the mark as a whole, it appears to be an initialism of Applicant’s company name Luxury Brands International, LLC. Under either scenario, the marks engender different connotations and commercial impressions, with the cited mark evoking a concept and Applicant’s mark evoking a specific supplier. We find critical the obvious distinctions between the marks in appearance, sound, connotation and commercial impression. This DuPont factor weighs against finding a likelihood of confusion. C. The Goods and the Established, Likely-to-Continue Channels of Trade Next we compare the goods as identified in the application and cited registration, the second DuPont factor. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1307 (Fed. Cir. 2018). “‘[T]he question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application …
Serial No. 98476728 - 13 - regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed.’” Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 942 (Fed. Cir. 1990)). It is sufficient for a finding of likelihood of confusion as to a particular class if relatedness is established for any item of identified goods within that class. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 1336 (CCPA 1981). Applicant’s and Registrant’s goods are identical in part. Both the application and cited registration identify “bed sheets” without any limitations, meaning that these goods are literally identical. The cited registration also includes several specific types of bed sheets: “Bed sheets for children” and “Children’s bed sheets;” “Bed sheets, … [and] bed flat sheets used in the bedding, health care, home-health care and nursing home industries made of biodegradable film created from renewable bio-polymer resources;” and “Fitted bed sheets.” Each of these items is encompassed by Applicant’s broad identification of “bed sheets,” making them legally identical. See In re Hughes Furniture Indus., Inc., No. 85627379, 2015 TTAB LEXIS 65, at *10 (applicant’s broadly worded identification of “furniture” necessarily encompasses Registrant’s narrowly identified “residential and commercial furniture.”); Sw. Mgmt., Inc. v. Ocinomled, Ltd., No. 92080469, 2015 TTAB LEXIS 176, at *60-61 (given broad identification of services, “we must presume that the services encompass all services of the type identified”), aff’d mem., 652 F. App’x 971 (Fed. Cir. 2016). Likewise,
Serial No. 98476728 - 14 - Registrant’s goods broadly identified as “bed blankets” encompass Applicant’s more narrowly tailored “Children’s bed …blankets;” and “Silk bed blankets.” This DuPont factor therefore weighs in favor of finding a likelihood of confusion. This brings us to the “established, likely-to-continue channels of trade.” DuPont, 476 F.2d at 1361. We must presume that the Applicant’s and Registrant literally identical and legally identical goods travel in the same ordinary trade and distribution channels and will be marketed to the same potential consumers. See In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion where the goods at issue were identical and unrestricted); In re Yawata Iron & Steel Co., 403 F.2d 752, 771 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); see also In re Fat Boys Water Sports LLC, No. 86490930, 2016 TTAB LEXIS 150, at *26 (applying presumption set forth in Viterra regarding trade channels and classes of consumers); Sock It to Me, Inc. v. Fan, 2020 TTAB LEXIS 201, at *22 (same). The trade channels and classes of customers weigh in favor of finding a likelihood of confusion. D. Purchasing Conditions Lastly, we evaluate “[t]he conditions under which … sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 476 F.2d at 1361. A heightened degree of care when making a purchasing decision may tend to minimize likelihood of confusion. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000 (Fed. Cir. 1985)
Serial No. 98476728 - 15 - (because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED). Conversely, impulse purchases of inexpensive goods may tend to have the opposite effect. Palm Bay Imps., 396 F.3d at 1376. Under this factor, we focus our analysis on the goods that we found literally identical or legally identical and how such goods are delineated in the application and registration. The relevant items in the application and cited registration consisting of “bed sheets,” “Bed sheets for children,” “Children’s bed sheets;” “Fitted bed sheets,” “Bed blankets,” “Children’s bed …blankets,” and “Silk bed blankets” are not limited to any particular type or consumer, meaning that they encompass both the general public as well as commercial purchasers (e.g., hotels, health care providers, long term care facilities). We must base our analysis “on the least sophisticated potential purchasers.” Stone Lion, 746 F.3d at 1365 (internal citations omitted). This DuPont factor is neutral against a likelihood of confusion. E. Weighing the DuPont Factors The final step in analyzing likelihood of confusion is to weigh the DuPont factors for which there has been evidence and argument. Where not all of the relevant factors point in the same direction, we must explain “the weight [we] assigned to the relevant factors” as well as “the results of that weighing.” Charger Ventures LLC, 65 F.4th at 1379 (citation omitted). “No mechanical rule determines likelihood of confusion, and each case requires weighing of the facts and circumstances of the particular mark.”
Serial No. 98476728 - 16 - In re Mighty Leaf Tea, 601 F.3d 1342, 1346 (Fed. Cir. 2010) (citation omitted). “[T]he weight afforded to each factor depends on the circumstances” and “[a]ny single factor may control a particular case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 998 (Fed. Cir. 2020) (citation omitted). We have carefully considered all of the evidence made of record, as well as all of the arguments related thereto. The goods are partially identical, which weighs heavily in favor of concluding that confusion is likely. See, e.g., In re La Peregrina Ltd., No. 78676199, 2008 TTAB LEXIS 38, at *8. We can rely on the presumption that such goods travel in the same ordinary trade and distribution channels and will be marketed to the same potential consumers, which also favors a likelihood of confusion. On the other hand, the marks are different in their entireties, tipping this key DuPont factor heavily against finding a likelihood of confusion. The cited mark LUXBRAND is highly suggestive, meaning that it has some degree of conceptual weakness. LUX has also been used as a segment of registered marks for the same or similar products further weakening the cited mark. With a relatively limited scope of protection, this DuPont factor weighs moderately against a likelihood of confusion. Purchaser care is neutral. We find that the dissimilarity of the marks in sound, appearance, meaning and commercial impression is sufficiently great such that, coupled with the conceptual weakness of the cited mark outweigh the identical nature of some of the goods and their respective trade channels. See, e.g., Citigroup Inc. v. Cap. City Bank Grp., Inc.,
Serial No. 98476728 - 17 - 637 F.3d 1344 (Fed. Cir. 2011) (affirming Board’s holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, would not likely cause confusion, based, in part, on findings that the phrase “City Bank” was frequently used in the banking industry and that “CAPITAL” was the dominant element of applicant’s marks, which gave the marks a geographic connotation as well as a look and sound distinct from opposer’s marks). We reach this conclusion fully cognizant of the principle that where the goods are partially identical, the degree of similarity between the marks necessary to support a determination that confusion is likely declines. See Bridgestone Ams. Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337 (Fed. Cir. 2012). Still, we think the differences between the marks, viewed in their entireties, are substantial enough to make confusion unlikely even where the marks are used with identical goods. Accordingly, we conclude that confusion is unlikely. Decision: The Section 2(d) refusal is reversed.
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