One common response to a likelihood of confusion refusal under Section 2(d), i.e., 15 U.S.C. § 1052(d), is to argue there is no likelihood of confusion because the marks are conceptually weak based on third-party registrations and other third-party use in the marketplace. The sixth DuPont factor considers “the number and nature of similar marks in use on similar goods.” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517-18 (TTAB 2016) (considering whether a mark is “weak as a source indicator” in the course of a DuPont analysis).

While the specimen evidence from the third-party registrations is not evidence that the marks are in use today, or that the marks have ever been used to the extent that they have made an impression on the public, they can support finding that a term (and its phonetic equivalent) is commercially weak. See Syndicat des Proprietaires Viticulteurs de Chateauneuf-Du-Pape v. Pasquier Desvignes, 107 USPQ2d 1930, 1942 (TTAB 2013) (in connection with the sixth DuPont factor, the Board found specimens of use submitted with evidence of two use-based third-party registrations were relevant when considered with other uses in the record) (citing Olde Tyme Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“evidence of third-party registrations coupled with evidence of prior use ‘could reasonably support an inference that [the applicant's] mark is weak'”); Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 397 n.11 (TTAB 1979) (specimen evidence from the previously cited registrations are not evidence that the marks are in use today or that such specimens have ever been used to the extent that they have made an impression on the public).

If sufficient evidence of third-party use is provided, it can “show that customers … ‘have been educated to distinguish between different … marks on the basis of minute distinctions.'” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (citations omitted).

MOXIE for Clothing

The stylized MOXIE SCRUBS mark for “Footwear; Headwear; Pants; Shirts; Shorts; Socks; Uniforms; Jackets; Scrub tops and pants not for surgical purposes” (with “scrubs” disclaimed), was refused under Section 2(d) in view of several registered MOXIE marks for clothing including T-shirts. In re Moxie Inc., Ser. No. 90100833 (TTAB Sept. 28, 2022).

Eight Other MOXIE-formative Registrations

The applicant submitted eight MOXIE-formative (or phonetic equivalent) third-party registered marks that cover clothing, related goods such as footwear, or retail store services featuring apparel.

The TTAB found these third-party registrations probative to show that marks containing the term MOXIE in connection with clothing and related footwear can be distinguished by additional matter. See In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012) (seven registrations incorporating Grand Hotel show that the USPTO views the marks “as being sufficiently different from the cited registrant's mark, and from each other, such as not to cause confusion” and “we presume that the owner of the cited registration did not have a problem with the registration of these third-party marks, as they all issued after the registration of the cited registrant's registration without challenge by the registrant”); Plus Prods. v. Nat. Organics, Inc., 204 USPQ 773, 779 (TTAB 1979) (numerous PLUS marks on the trademark register for vitamins reflect the Office's belief, trademark owners' belief, and plaintiff's belief that PLUS marks can be registered side by side for vitamins without confusion provided there are minimal differences between the marks); Jerrold Elecs. Corp. v. Magnavox Co., 199 USPQ 751, 758 (TTAB 1978) (third-party registrations “reflect a belief, at least by the registrants, who would be most concerned about avoiding confusion and mistake, that various ‘STAR' marks can coexist provided that there is a difference.”).

Fourteen MOXIE-formative Uses in the Marketplace

In addition, the applicant submitted fourteen examples of third-party use of MOXIE and MOXIE formative marks for clothing and footwear. The TTAB also found this third-party use evidence highly probative to demonstrate commercial weakness of the cited marks in the clothing and footwear industry. Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, at *17 (TTAB 2020) (where plaintiff's and defendant's goods are beer, six local Brooklyn-formative named establishments' use of the term ‘Brooklyn' in connection with beer sales have significant probative value as to commercial weakness), aff'd in relevant part, vacated in part, and remanded, 17 F.4th 129, 2021 USPQ2d 1069 (Fed. Cir. 2021).

This third-party use evidence shows MOXIE or its phonetic equivalent, alone or combined with other wording, is commonly used in the clothing marketplace, and because of its common use, it is commercially weak.

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          In sum, the term MOXIE is conceptually and commercially weak in connection with clothing, resulting in consumers being educated to look for minute distinctions in MOXIE (or phonetic equivalent) marks in the marketplace.

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          Notwithstanding that Applicant's and Registrant's goods are identical in part and otherwise closely related, and that the trade channels overlap, we find the shared term MOXIE is conceptually and commercially weak in the clothing industry such that the additions of the descriptive term SCRUBS and the design element in Applicant's mark are sufficient to distinguish the marks.

The TTAB reversed the refusal to register the stylized MOXIE SCRUBS mark.

Sometimes a Single DuPont Factor is Enough

“[A] single DuPont factor may be dispositive in a likelihood of confusion analysis, especially when that single factor is the dissimilarity of the marks.” Odom's Tenn. Pride Sausage, Inc. v. FF Acquisition, LLC, 600 F.3d 1343, 93 USPQ2d 2030, 2032 (Fed. Cir. 2010); Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1461 (Fed. Cir. 1998) (“we have previously upheld Board determinations that one DuPont factor may be dispositive in a likelihood of confusion analysis, especially when that single factor is the dissimilarity of the marks”); In Re Hartz Hotel Svcs., 102 USPQ2d at 1155 (finding the sixth DuPont factor dispositive) citing Kellogg Co. v. Pack-Em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular case, a single du Pont factor may not be dispostive”)).

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