Wilson Carter

This Opinion Is Not a
Precedent of the TTAB
Mailed: April 1, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Wilson Carter
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Serial No. 98290246
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Francis John Ciaramella, of Francis John Ciaramella PLLC, for Wilson Carter.
Brian Callaghan, Trademark Examining Attorney, Law Office 108,
Kathryn E. Coward, Managing Attorney.
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Before Goodman, Thurmon and Stanley, Administrative Trademark Judges.
Opinion by Thurmon, Administrative Trademark Judge:
Wilson Carter (“Applicant”) seeks registration on the Principal Register of the
mark CLUTCH, in standard characters, for “Batteries; Battery chargers for mobile
phones; Battery chargers for use with electronics; Mobile telephone batteries,” in
International Class 9.1
1 Application Serial No. 98290246 was filed on November 29, 2023, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging a first use of the mark in commerce on May 15,
2019.
Citations to the prosecution file are to entries in the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system in .pdf format. Citations to the appeal record are to TTABVUE,
the Board’s online docketing system.

Serial No. 98290246
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The Trademark Examining Attorney issued a final refusal of registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), finding a likelihood of
confusion, based on three registered marks owned by two entities. One cited
Registration is for the mark CHARGEPLAY CLUTCH, in standard characters, for
“Controller chargers and stands, namely, battery chargers with stands and battery
chargers in hand-held casings for video game controllers and mobile video game
controllers; battery packs for charging portable devices,” in International Class 9.2
The other two cited Registrations are owned by a single entity and are variations of
the same mark shown below in standard character form and with a design:
CLUTCH OUTDOORS3 .4
The appeal is briefed and ready for final decision. We affirm the refusal to register.
2 Registration No. 6206286, issued November 24, 2020. The current owner of this
Registration, according to USPTO records, is Hewlett-Packard Development Company, L.P.
3 Registration No. 7355929, issued April 9, 2024. The word “OUTDOORS” is disclaimed. The
current owner of this Registration, according to USPTO records, is Tog-IP LLC.
4 Registration No. 7355930, issued April 9, 2024. The word “OUTDOORS” is disclaimed. The
mark is described as follows: “The mark consists of a design and words. The design depicts
two mountain peaks with the larger one on the left and the smaller one on the right, which
are joined at their bases in the form a three-pointed shape. A separate line is drawn at the
base of the mountains resembling the three-pointed base is surrounds. The words ‘CLUTCH
OUTDOORS’ appear to the right of the design with the word ‘CLUTCH’ being in larger-sized
lettering and positioned atop the word ‘OUTDOORS’ in smaller-sized lettering.” The current
owner of this Registration, according to USPTO records, is Tog-IP LLC.

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Section 2(d) – Applicable Law
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).
“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

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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.”).
Likelihood of Confusion – Analysis
Either the Applicant, the Trademark Examining Attorney or both presented
arguments under DuPont factors one, two, four, five, eight and thirteen, because
Applicant’s arguments address issues under each of these factors. We address these
factors in turn below.
We limit our analysis to the cited word mark CLUTCH OUTDOORS, because it is
more similar to the applied-for mark than the other cited marks. All three cited
Registrations identify goods that overlap with those identified in the Application. We
hereafter refer to the cited word mark CLUTCH OUTDOORS as the “Cited Mark,”
the Registration of the Cited Mark as the “Cited Registration,” and Tog-IP LLC as
the “Registrant.”
A. 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

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Fondee En 1772, 396 F.3d 1369, 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, *13 (quoting In re
Davia, No. 85497617, 2014 TTAB LEXIS 214, *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, *11.
The applied-for mark CLUTCH and the Cited Mark CLUTCH OUTDOORS are
similar in appearance. The first term in the Cited Mark is dominant, partly because
it is the first term in the mark, and also because the word “outdoors” is descriptive or
generic as to some of the goods identified in the Cited Registration and has been
disclaimed. Consumers, therefore, are not likely to rely on the term “outdoors” to
distinguish Registrant’s outdoor goods from those of others. The word CLUTCH is
the dominant and sole distinctive element of the Cited Mark. See In re Detroit Athletic
Co., 903 F.3d 1296, 1303 (Fed. Cir. 2018) (finding “the identity of the marks’ two

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initial words is particularly significant because consumers typically notice those
words first”); Palm Bay Imps., 396 F.3d at 1372-73; Presto Prods., Inc. v. Nice-Pak
Prods. Inc., No. 94-2562, 1988 TTAB LEXIS 60, at *8 (“it is often the first part of a
mark which is most likely to be impressed upon the mind of a purchaser and
remembered”).
The applied-for mark CLUTCH is identical to the dominant element of the Cited
Mark. This creates a similar appearance that is likely to lead consumers to mistake
one mark for the other. The added word OUTDOORS in the Cited Mark creates a
visual distinction, but not one that consumers are likely to place much weight on
given that the word “outdoors” is descriptive or generic for the goods. The visual
similarity of the marks increases the likelihood of confusion.
The marks also sound similar. The applied-for mark sounds identical to the
dominant CLUTCH element of the Cited Mark. “[W]e also keep in mind the penchant
of consumers to shorten marks.” In re Bay State Brewing Co., No. 85826258, 2016
TTAB LEXIS 46, at *9. It is likely that many consumers familiar with the Cited Mark
may refer to the mark as simply CLUTCH when asking for the goods. We find the
marks are highly similar in sound.
Applicant argues that the marks are used in the market in different fonts, and
thus create a different commercial impression. 6 TTABVUE 7. This argument is
misplaced because both the Cited Registration and the Application present the marks
in standard characters, which means both cover all fonts and other similar variations
of the marks. There is no evidence that the word “clutch” has a different meaning or

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that it creates a different commercial impression in these two marks. In re Embiid,
No. 88202890, 2021 TTAB LEXIS 168, at *20-21 (finding no evidence to support a
different meaning of the applied-for mark with different goods).
We find the marks similar in sight, sound, meaning and commercial impression.
The first DuPont factor supports the Section 2(d) refusal.
B. Similarity or Relatedness of the Goods
We evaluate the second DuPont factor based on the goods identified in the
Application and the Cited Registration. See Stone Lion Cap. Partners, LP v. Lion Cap.
LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014); 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 class of goods in the Application if relatedness is established between
any of the goods identified in that class and the Cited Registration. Tuxedo Monopoly,
Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 1336 (CCPA 1981); see also Double Coin
Holdings Ltd. v. Tru Dev., No. 92063808, 2019 TTAB LEXIS 347, *18; In re Aquamar,
Inc., No. 85861533, 2015 TTAB LEXIS 178, *9 n.5. In addition, the goods need only
be sufficiently related that a relevant consumer would be likely to assume, upon
encountering goods marketed under the marks at issue, that the goods originate from,
are sponsored or authorized by, or are otherwise connected to the same source. See
Black & Decker Corp. v. Emerson Elec. Co., Nos. 91158891 and 91158941, 2007 TTAB
LEXIS 50, *25-26.
The Cited Registration identifies, among other things, “solar-powered battery
chargers for charging mobile and handheld electronic devices,” which is a subset of
the broader “battery chargers for use with electronics” identified in the Application.

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The goods, therefore, are identical in part and the second DuPont factor supports the
Section 2(d) refusal.
Applicant did not specifically address the second factor in its Appeal Brief and
effectively conceded that the goods are at least closely related. But, while arguing
that a prior registration owned by Applicant should moot the current refusal, he
acknowledged that battery chargers and batteries “are certainly legally identical
goods.” 6 TTABVUE 5.5
C. Customer Care – The Fourth DuPont Factor
The fourth DuPont factor considers the likely care exercised by relevant
consumers. DuPont, 476 F.2d at 1361 (considering “[t]he conditions under which …
sales are made, i.e. “impulse” vs. careful, sophisticated purchasing”). Applicant
argues that the relevant consumers “will be sophisticated.” 6 TTABVUE 10. There is
no evidence in the record to support this argument, and we see no reason to believe
that consumers of the battery chargers identified in the Application and Cited
Registration will be particularly sophisticated. The Application and the Cited
Registration identify goods that are not restricted by target market, price, or
consumer sophistication. Electronics, particularly cell phones, are very widely used,
and the need to charge such devices is equally common. Absent evidence showing that
consumers of the identified goods consistently exercise special care in making
5 Applicant first made this argument in a Response to Office Action dated November 4, 2024,
where Applicant also submitted third-party registrations that identify both batteries and
battery chargers. Response to Office Action dated November 4, 2024, at 10 (argument), 19-
66 (third-party registrations). The argument is also presented in Applicant’s Appeal Brief,
which makes the same arguments presented in the Response to Office Action.

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purchases, we are compelled to find that the relevant consumers exercise ordinary
care. Applicant’s arguments to the contrary lack evidentiary support and are not
persuasive. Martahus v. Video Duplication Servs. Inc., 3 F.3d 417, 420 (Fed. Cir.
1993) (“[M]ere attorney arguments unsubstantiated by record evidence are suspect
at best.”).
We further note that when dealing with goods likely purchased by a wide range of
consumers, we must base our decision “on the least sophisticated potential
purchasers.” Stone Lion Capital Partners, 746 F.3d at 1325. We find that the “least
sophisticated potential purchasers” of battery chargers for electronics are likely to
exercise ordinary care in making purchasing decisions, which does not materially
alter the likelihood of confusion analysis. The fourth DuPont factor is neutral.
D. Factor Five – Fame of the Cited Mark
Applicant argues “there is no evidence that the cited Prior Marks are famous or
have acquired secondary meaning within the marketplace or that consumers
associate the term CLUTCH with the Prior Owners.” 6 TTABVUE 11. While this
statement is accurate, it is also irrelevant. It is rare to have evidence of the fame of a
cited mark in an ex parte appeal, given that the party likely to have such evidence
(i.e., the owner of the cited registration) is not part of the appeal. The fifth DuPont
factor is neutral.
We also note that the Cited Mark CLUTCH OUTDOORS was registered on the
Principal Register without a claim of acquired distinctiveness under Section 2(f) of
the Trademark Act. The Cited Registration is “prima facie evidence of the validity of

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the registered mark,’’ and we must assume the mark, as a whole, is inherently
distinctive. Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b); see also Tea Bd.
of India v. Republic of Tea, Inc., No. 91118587, 2006 TTAB LEXIS 330, at *62; New
Era Cap Co. v. Pro Era, LLC, No. 91216455, 2020 TTAB LEXIS 199, at *29-30. We,
therefore, give the Cited Mark “the normal scope of protection to which inherently
distinctive marks are entitled.” Bell’s Brewery, Inc. v. Innovation Brewing, No.
91215896, 2017 TTAB LEXIS 452, at *20. There was no need for evidence that the
Cited Mark has acquired secondary meaning (i.e., acquired distinctiveness), as
Applicant mistakenly argues. 6 TTABVUE 11.
E. Factor Eight – The Lack of Actual Confusion
Applicant argues there is no evidence of “demonstrated events of confusion by
consumers between the respective marks.” 6 TTABVUE 11. This argument is
misplaced, because an appeal of a refusal to register a mark is an ex parte proceeding.
That means the owner of the Cited Registration is not a party and we simply cannot
know whether the Registrant has evidence of actual confusion. In re Majestic
Distilling Co., 315 F.3d at 1317 (“uncorroborated statements of no known instances
of actual confusion are of little evidentiary value” in an ex parte appeal). In addition,
we have insufficient evidence of the kind of marketplace circumstances that can lead
to actual confusion. In re Guild Mortg.¸ 912 F.3d at 1380-81 (suggesting that
“ evidence of concurrent use of the two marks for a particularly long period of time—
over 40 years—in which the two businesses operated in the same geographic
market—southern California—without any evidence of actual confusion” may be

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probative under the eighth DuPont factor, even in an ex parte appeal). For these
reasons, we place no weight on the eighth DuPont factor, which considers the
probative value of evidence of a lack of actual confusion.
F. The Thirteenth Factor – Other Considerations
Applicant owns a prior registration for a stylized version of its mark, and argues
that because the prior registered mark is more similar to the applied-for mark than
the cited marks are, the Section 2(d) refusal must be withdrawn. This argument does
not fall under any other DuPont factor, so we address it under the thirteenth factor.
We appreciate that Applicant might find it somewhat unfair that its current
Application is being refused registration based on three Registrations that all issued
after Applicant’s prior registration. But each application must be evaluated on its
own merits, In re Cordua Rests., Inc., 823 F.3d 594, 600 (Fed. Cir. 2016), and there is
no legal reason to ignore the three Registrations cited and relied upon by the
Trademark Examining Attorney here. As our analysis of the preceding DuPont
factors shows, every probative factor supports the refusal. That is enough. The refusal
must be affirmed.
Applicant cannot rely upon the Morehouse defense, as that defense is recognized
only in inter partes proceedings, not in ex parte appeals. In re Strategic Partners, Inc.,
No. 77903451, 2012 TTAB LEXIS 80, at *9. The Board has recognized a limited
exception where the applied-for mark and the previously-registered mark are
effectively identical, the goods overlap and the prior registrations have coexisted for
at least five years, which means likelihood of confusion is no longer a possible basis

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to seek cancellation. Id. These conditions are not met in this appeal. The Cited
Registration issued in 2024. Applicant could have opposed registration of that mark
and could petition to cancel the registration if it feels it has priority and that
confusion is likely. The thirteenth DuPont factor is neutral.
G. Conclusion: Weighing the Factors
The marks are similar and the goods are identical in part. The first two DuPont
factors are dispositive in this appeal, as both factors point toward a likelihood of
confusion. We considered Applicant’s arguments under other DuPont factors, but we
find each of those factors is neutral. The record supports the refusal. Confusion is
likely.
Decision: The Section 2(d) refusal is affirmed.