Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1031547
`
`Filing date:
`
`01/27/2020
`
`Proceeding
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`91218230
`
`Plaintiff
`NJOY, Inc.
`
`KELU L SULLIVAN
`KELLY IP LLP
`1919 M ST NW STE 610
`WASHINGTON, DC 20036
`UNITED STATES
`kelu.sullivan@kelly-ip.com, lit-docketing@kelly-ip.com
`202-808-3570
`
`Rebuttal Brief
`
`DAVID M. KELLY
`
`david.kelly@kelly-ip.com, kelu.sullivan@kelly-ip.com, jason.joyal@kelly-ip.com,
`lit-docketing@kelly-ip.com
`
`Signature
`
`Date
`
`/David M. Kelly/
`
`01/27/2020
`
`Attachments
`
`FINAL - Reply Trial Brief.pdf(2217027 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`NJOY, LLC (substitution for NJOY, INC.)
`
`
`
`
`Opposer,
`
`v.
`
`WANG XI ZHI,
`
`
`Applicant.
`
`
`
`Opposition No.: 91218230
`
`Serial No.: 86150445
`Mark:
`IJOY
`Filed:
`December 22, 2013
`
`
`
`
`
`
`OPPOSER’S REPLY TRIAL BRIEF
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`David M. Kelly
`Jason M. Joyal
`Kelu Sullivan
`Kelly IP, LLP
`1300 19th Street N.W., Suite 300
`Washington, D.C. 20036
`Telephone: (202) 808-3570
`
`
`Attorneys for Opposer
`
`
`
`
`
`

`

`
`
`I.
`
`INTRODUCTION .............................................................................................................. 1
`
`TABLE OF CONTENTS
`
`II.
`
`OBJECTIONS TO EVIDENCE IN APPLICANT’S BRIEF ............................................. 1
`
`III.
`
`NJOY HAS ESTABLISHED A LIKELIHOOD OF CONFUSION .................................. 2
`
`A. Applicant Does Not Dispute the Fame and Commercial Strength of the NJOY Mark .... 2
`
`B. Applicant’s Similarity-of-the-Marks Analysis Ignores Board Precedent and Contradicts
`Applicant’s Admission that the Marks Share an Identical Connotation ............................. 3
`
`C. Applicant’s “Third-Party Use” Evidence Does Not Diminish the Conceptual or
`Marketplace Strength of the NJOY Mark ........................................................................... 6
`
`D. Applicant Concedes that the Marks Are Used for Identical Goods, Thus Lessening the
`Degree of Mark Similarity Needed for Proving Likelihood of Confusion ....................... 10
`
`E. Any Lack of Actual Confusion Carries No Weight .......................................................... 10
`
`IV.
`
`CONCLUSION ................................................................................................................. 12
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`
`
`
`
`i 
` 
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`

`

`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Allied Mills, Inc. v. Kal Kan Foods, Inc.,
`203 USPQ 390 (TTAB 1979) ....................................................................................................7
`
`Americares Found., Inc. v. AmeriCare MedServices Inc.,
`Opposition No. 91187537, 2012 WL 1424423 (TTAB Apr. 12, 2012)
`(Exh. A)......................................................................................................................................4
`
`Barbara’s Bakery, Inc. v. Landesman,
`82 USPQ2d 1283 (TTAB 2007) ........................................................................................11, 12
`
`Bose Corp. v. QSC Audio Prods., Inc.,
`63 USPQ2d 1303 (Fed. Cir. 2002).............................................................................................3
`
`Boston Red Sox Baseball Club LP v. Sherman,
`88 USPQ2d 1581 (TTAB 2008) ................................................................................................2
`
`Centraz Indus., Inc. v. Spartan Chem. Co.,
`77 USPQ2d 1698 (TTAB 2006) ................................................................................................5
`
`Century 21 Real Estate Corp. v. Century Life of Am.,
`23 USPQ2d 1698 (Fed. Cir. 1992)...........................................................................................10
`
`In re Colonial Stores, Inc.,
`216 USPQ 793 (TTAB 1982) ....................................................................................................9
`
`In re DuPont,
`177 USPQ 563 (CCPA 1973) ....................................................................................................9
`
`In re Edwards,
`Serial No. 86874295, 2017 WL 5197910 (TTAB Oct. 12, 2017) (Exh. B) ..............................2
`
`In re Fort Bend Junior Serv. League,
`Serial No. 86162765, 2016 WL 837727 (TTAB Feb. 8, 2016) (Exh. C) ..................................8
`
`Freedom Fed. Sav. & Loan Ass’n v. Heritage Fed. Sav. & Loan Ass’n,
`210 USPQ 227 (TTAB 1981) ....................................................................................................8
`
`G.H. Tennant Co. v. Wyandotte Chems. Corp.,
`154 USPQ 453 (TTAB 1967) ....................................................................................................3
`
`Gillette Can., Inc. v. Ranir Corp.,
`23 USPQ2d 1768 (TTAB 1992) ..............................................................................................10
`
` 
`
`ii
`
`

`

`In re Gilster-Mary Lee Corp.,
`Serial No. 75423447, 2003 WL 22174257 (TTAB Sept. 16, 2003) (Exh. D) ...........................4
`
`In re GZR Jewelry, Inc.,
`Serial No. 85145004, 2013 WL 2365003 (TTAB Jan. 31, 2013) (Exh. E) ...........................5, 6
`
`In Re iLine, LLC,
`Serial No. 75621298, 2002 WL 1275659 (TTAB June 7, 2002) (Exh. F) ................................5
`
`Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
`Sports, S.L.U.,
`116 USPQ2d 1129 (Fed. Cir. 2015).......................................................................................8, 9
`
`Juice Generation, Inc. v. GS Enters. LLC,
`115 USPQ2d 1671 (Fed. Cir. 2015).......................................................................................8, 9
`
`Kabushiki Kaisha Hattori Tokeiten v. Scuotto,
`228 USPQ 461 (TTAB 1985) ....................................................................................................5
`
`King Candy Co. v. Eunice King’s Kitchen, Inc.,
`182 USPQ 108 (CCPA 1974) ....................................................................................................9
`
`Mars, Inc. v. Dan-Dee Int’l Ltd.,
`Opposition. No. 91121237, 2005 WL 3551105 (TTAB Dec. 16, 2005)
`(Exh. G)....................................................................................................................................12
`
`Meffre v. Maria Y Adelina S.A.,
`Opposition No. 91164878, 2007 WL 1676786 (TTAB June 1, 2007) (Exh. H) .......................6
`
`Money Station, Inc. v. Cash Station, Inc.,
`38 USPQ2d 1150 (Fed. Cir. 1995)...........................................................................................12
`
`In re NY Football Giants, Inc.,
`Serial No. 85599795, 2014 WL 3427342 (TTAB July 3, 2014) (Exh. I) ..................................2
`
`Paul Jaboulet Aine v. S.P. Grossnickle, LLC,
`Opposition No. 91197078, 2012 WL 5493580 (TTAB Oct. 31, 2012) (Exh. J) .....................10
`
`In re Rolled Alloys, Inc.,
`Serial No. 85223044, 2014 WL 2967635 (TTAB June 3, 2014) (Exh. K) ................................7
`
`Serta, Inc. v. S Indus., Inc., et al.,
`Opposition. No. 91112035, 2003 WL 21206245 (TTAB May 15, 2003)
`(Exh. L) ....................................................................................................................................11
`
`Tao Licensing, LLC v. Bender Consulting Ltd.,
`125 USPQ2d 1043 (TTAB 2017) ............................................................................................10
`
` 
`
`iii
`
`

`

`In re Thomas,
`79 USPQ2d 1021 (TTAB 2006) ................................................................................................8
`
`Warner-Lambert Pharm. Co. v. Obermeyer,
`149 USPQ 233 (TTAB 1966) ....................................................................................................3
`
`Other Authorities
`
`TBMP § 704.06(b) ...........................................................................................................................2
`
`TMEP §1207.01(b)(iv) ....................................................................................................................5
`
`
`
`
`
` 
`
`iv
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`

`

`I.
`
`INTRODUCTION
`
`Applicant does not dispute—and does not even address—NJOY’s showing that the
`
`NJOY mark is a commercially strong and famous mark in the field of electronic cigarettes, thus
`
`conceding this material factor in the likelihood-of-confusion analysis. Nor does Applicant
`
`dispute that the parties offer identical goods or that the parties’ goods are presumed to travel in
`
`the same channels of trade to the same class of consumers. And Applicant concedes that the
`
`marks are highly similar in appearance by failing to even argue the point, and Applicant’s
`
`attempt to negate the similarity in meaning of IJOY and NJOY is contrary to his own trial
`
`testimony that the marks share a virtually identical connotation.
`
`Instead, Applicant focuses on alleged differences in pronunciation that, at most, are
`
`minor and which in any event are inconsequential given the strong similarities of the marks in
`
`appearance and meaning. Furthermore, Applicant’s only attack on the strength of the NJOY
`
`Mark rests on alleged third-party marks for which Applicant failed to submit any meaningful
`
`evidence of use of such marks. Finally, Applicant fails to support his “lack of actual confusion”
`
`argument because his own evidence shows only negligible sales over a period of a few days such
`
`that there has been no meaningful opportunity for confusion to occur.
`
`Accordingly, under bedrock principles of trademark law and clear Board precedent,
`
`NJOY has established a likelihood of confusion and its Opposition should be sustained.
`
`II.
`
`OBJECTIONS TO EVIDENCE IN APPLICANT’S BRIEF
`
`NJOY objects to Applicant’s statements in his brief regarding Shenzhen IJOY
`
`Technology Co., Ltd. and IJOY Vape LLC’s alleged interest in and/or connection to the
`
`ownership and use of the IJOY Mark. (63 TTABVUE 11-12.1) There is no evidence of record
`
` 
`1 Citations to evidence will follow the same format as in Opposer’s Main Brief: “[Dkt] TTABVUE [Page
`No. on TTABVUE].”
`
` 
`
`1
`
`

`

`establishing Applicant’s relationship, if any, to either of the entities noted above, or of those
`
`entities’ relationship, if any, to the ownership of the IJOY Mark or opposed application. Nor is
`
`there any evidence in the record of Applicant or Shenzhen IJOY Technology Co., Ltd.’s
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`ownership of any other IJOY-formative mark, as Applicant asserts in his brief. Statements and
`
`attorney argument in Applicant’s trial brief are not evidence. Boston Red Sox Baseball Club LP
`
`v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008) (“We can accord no evidentiary value or
`
`consideration to unsupported factual statements made by a party in its brief.”); TBMP §
`
`704.06(b).
`
`III. NJOY HAS ESTABLISHED A LIKELIHOOD OF CONFUSION
`
`A.
`
`Applicant Does Not Dispute the Fame and Commercial Strength of the
`NJOY Mark
`
`NJOY established that the NJOY Mark is a commercially strong, famous mark for
`
`electronic cigarettes entitled to a broad scope of protection. (61 TTABVUE 17-20 and record
`
`evidence cited therein.) Applicant concedes this point, offering no argument or evidence to the
`
`contrary. Instead, Applicant points only to the alleged strength of Applicant’s IJOY Mark to
`
`argue that Opposer’s NJOY Mark is entitled to a narrow scope of protection. (63 TTABVUE 8-
`
`9.) Applicant’s conclusory assessment of his mark’s alleged strength is irrelevant to this du Pont
`
`factor. In re Edwards, Serial No. 86874295, 2017 WL 5197910, at *4 (TTAB Oct. 12, 2017)
`
`(“Indeed, the fifth du Pont factor assesses ‘the fame of the prior mark,’ meaning here the mark in
`
`the cited registration, not the mark in the application. In any case, the [fame] du Pont factor
`
`refers to ‘the fame of the prior mark,’ not the fame of the mark [or part of the mark] the applicant
`
`seeks to register.”); In re NY Football Giants, Inc., Serial No. 85599795, 2014 WL 3427342, at
`
`*9 n.9 (TTAB July 3, 2014) (“Applicant asserts that an important consideration when comparing
`
` 
`
`2
`
`

`

`the marks is the fame of applicant's mark. . . . However, the relevant factor is the fame of the
`
`mark in the cited registration, not applicant’s mark.”).
`
`Applicant has thus offered no evidence to rebut the fame of the NJOY Mark in the
`
`electronic cigarette field. Because fame can be “outcome-determinative in contests as to the
`
`likelihood of confusion,” Bose Corp. v. QSC Audio Prods., Inc., 63 USPQ2d 1303, 1308 (Fed.
`
`Cir. 2002), the Board may rule in NJOY’s favor based on Applicant’s concession of this du Pont
`
`factor alone.
`
`B.
`
`Applicant’s Similarity-of-the-Marks Analysis Ignores Board Precedent and
`Contradicts Applicant’s Admission that the Marks Share an Identical
`Connotation
`
`Applicant argues that there are such “important differences” in the “sight, sound and
`
`meaning” of the parties’ marks that the Board can decide this case in Applicant’s favor on this
`
`factor alone. (63 TTABVUE 6-8.) Applicant has not shown, however, any such differences in the
`
`parties’ marks, let alone any “important” enough to justify the exceptional circumstances
`
`required for the Board to decide likelihood of confusion on this single factor.
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`Regarding appearance, Applicant acknowledges the abundance of authority finding
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`marks similar where, as here, they differ only by a single letter. Nevertheless, Applicant contends
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`this case is somehow different because none of the marks in “[NJOY’s cited] cases . . . possess a
`
`strong added connotation as does [the NJOY Mark] and to a lesser extent [the IJOY Mark],
`
`although a different connotation.” (63 TTABVUE 7.) Though confusing, Applicant’s argument
`
`appears to be that that the parties’ marks differ in appearance because they allegedly differ in
`
`connotation. A mark’s appearance, however, is not informed by its connotation. See, e.g.,
`
`Warner-Lambert Pharm. Co. v. Obermeyer, 149 USPQ 233, 235 (TTAB 1966) (finding
`
`SPORTAN and SPORTSMAN “substantially similar in appearance” despite having a
`
`“specifically different connotation or meaning”); G.H. Tennant Co. v. Wyandotte Chems. Corp.,
`
` 
`
`3
`
`

`

`154 USPQ 453, 455 (TTAB 1967) (finding TANENT and TENNANT “quite similar in
`
`appearance” despite engendering “different possible connotations”). In any event, as shown in
`
`NJOY’s trial brief and again below, Applicant concedes that the marks share a virtually identical
`
`connotation.
`
`Applicant’s main argument regarding connotation is that IJOY (which Applicant
`
`concedes will mean “personal joy” to most consumers) is not the same as NJOY (which
`
`Applicant acknowledges will mean “enjoy”) because NJOY is a verb and IJOY or “personal joy”
`
`is (according to Applicant) a noun. (63 TTABVUE 7.) Neither of these marks, however, have
`
`any dictionary meanings and, therefore, no accepted grammatical construction. But even if they
`
`did, viewing the marks as either a noun or a verb is not a significant source-indicating difference.
`
`See, e.g., In re Gilster-Mary Lee Corp., Serial No. 75423447, 2003 WL 22174257, at *1 (TTAB
`
`Sept. 16, 2003) (finding the marks FRUITY BLASTS and COCOA BLASTS and COOKIE
`
`BLAST confusingly similar because “whether viewing the terms ‘blast’/‘blasts’ as either a noun
`
`or a verb is not a significant source-indicating difference”); Americares Found., Inc. v.
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`AmeriCare MedServices Inc., Opposition No. 91187537, 2012 WL 1424423, at *9 (TTAB Apr.
`
`12, 2012) (finding the verb/noun point of dissimilarity in the marks AMERICARES and
`
`AMERICARE “too subtle to significantly distinguish the marks in terms of connotation”).
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`Furthermore, Applicant ignores that the connotation of a mark must be considered in the
`
`context of the relevant goods—namely, electronic cigarettes. When viewed in this context, it is
`
`impossible to imagine, as Applicant contends, that “enjoyment” and “personal joy” in the context
`
`of using an electronic cigarette create “two different perceptions and commercial impressions.”
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`To the contrary, as Applicant concedes, both connote the idea of personal satisfaction or
`
`enjoyment to consumers using the party’s respective electronic cigarettes.
`
` 
`
`4
`
`

`

`Applicant’s position regarding the marks’ similarity in sound is also flawed. Applicant
`
`acknowledges the “well-settled notion that there is no correct pronunciation of a trademark.” (63
`
`TTABVUE 7); see Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB
`
`1985); TMEP §1207.01(b)(iv) and cases cited therein. But Applicant nonetheless argues that the
`
`IJOY Mark can be pronounced only one way as “eye-joy.” (63 TTABVUE 8.) Applicant points
`
`to the “common practice of many years of starting marks with the long formative letter “I”
`
`before a common term to denote a relation to the Internet.” (Id.) Applicant, however, has not put
`
`any evidence in the record to establish that the “I” in his IJOY Mark is recognized by any
`
`consumer as a shorthand for the “Internet” like an iPhone or iPAD may be. See In Re iLine, LLC,
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`Serial No. 75621298, 2002 WL 1275659, at *3 (TTAB June 7, 2002) (“Based upon this record,
`
`we find that the Examining Attorney has simply failed to establish that the letter I is substantially
`
`synonymous with the term INTERNET.”). Nor has Applicant shown that the Internet is relevant
`
`to the use or operation of electronic cigarettes. To the contrary, Applicant testified that “[t]he
`
`meaning of Applicant’s mark to most U.S. consumers will be ‘personal joy.” (58 TTABVUE
`
`75.) In that regard, the “I” in Applicant’s Mark could mean “individual”—an “ih” sounding
`
`word—and thus could be pronounced “ih-joy.” Such a pronunciation is all the more plausible
`
`where, as here, the IJOY Mark is not a common word. In re GZR Jewelry, Inc., Serial No.
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`85145004, 2013 WL 2365003, at *3 (TTAB Jan. 31, 2013) (“[I]t is impossible to predict how the
`
`public will pronounce a mark that is not a common word.”) (citing Centraz Indus., Inc. v.
`
`Spartan Chem. Co., 77 USPQ2d 1698, 1701 (TTAB 2006)).
`
`Finally, even if IJOY and NJOY are not identical in sound, they are sufficiently similar
`
`for purposes of this du Pont factor because the marks share the same cadence and the identically
`
`pronounced second syllable “joy.” In re GZR Jewelry, Inc., 2013 WL 2365003, at *3 (finding the
`
` 
`
`5
`
`

`

`marks SIBELLA and SOBELLA (stylized) “very similar in sound” based on shared ending
`
`“BELLA” despite asserted difference in sound of the initial vowels of each mark); Meffre v.
`
`Maria Y Adelina S.A., Opposition No. 91164878, 2007 WL 1676786, at *4 (TTAB June 1, 2007)
`
`(finding “great similarity” in sound between the marks SAURUS and LAURUS due to the
`
`shared “AURUS” ending despite “[t]he fact that the leading letter will inevitably result in a
`
`perceptible aural difference [,which] is simply not enough for us to find that the marks are
`
`sufficiently dissimilar in sound to overcome a likelihood of confusion”). As in GZR Jewelry and
`
`Meffre, there is a likelihood of confusion here due to the shared ending “JOY.” Accordingly, any
`
`dissimilarity in sound between the marks is outweighed by their overall similarity.
`
`NJOY only needs to show similarity in sound, appearance, or meaning. Here, it has
`
`shown all three. Accordingly, this factor weighs strongly in NJOY’s favor.
`
`C.
`
`Applicant’s “Third-Party Use” Evidence Does Not Diminish the Conceptual
`or Marketplace Strength of the NJOY Mark
`
`Despite the admitted fame of the NJOY Mark and obvious confusing similarity between
`
`NJOY and IJOY, Applicant argues that the NJOY Mark has been so weakened by third-party
`
`registrations and use of marks containing the word “JOY” that consumer confusion between
`
`NJOY and IJOY is unlikely. As shown below, however, there is no admissible, relevant evidence
`
`in the record to support this argument.
`
`Applicant’s evidence consists of at most 11 third-party registrations for marks containing
`
`the letters “JOY” in sequence, and for 10 of those registered marks, Applicant submits one
`
`screenshot of their purported use in commerce without any evidence of the length of use or
`
`extent of use. (61 TTABVUE 26-28.) Moreover, as shown in NJOY’s trial brief, Applicant’s
`
`“evidence” is highly misleading and/or irrelevant. Applicant’s trial brief does not change that.
`
`(Id.)
`
` 
`
`6
`
`

`

`Regarding registrations, Applicant does not dispute, and thus concedes, that Registration
`
`Nos. 5244529 and 4409854 for the marks JOYEVITA and LITEJOY, respectively, are irrelevant
`
`to the Board’s analysis because those marks are registered under Section 44 without any claim of
`
`use in commerce in the United States. (61 TTABVUE 26.)
`
`Regarding use, Applicant concedes that the only alleged evidence of use for the marks
`
`JOYLUCK, ENJOY THE CURRENT, and JOYWORLD are the specimens of use submitted to
`
`the PTO during prosecution. (61 TTABVUE 26.) But specimens from third-party registrations
`
`are not evidence that the mark is in use today or at any other time besides the date the specimen
`
`was submitted. See Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 397 n.11 (TTAB
`
`1979).
`
`Furthermore, Applicant’s alleged evidence of use for
`
`,
`
`,
`
`JOYETECH, and LITEJOY is, at best, of extremely limited probative value. Applicant’s
`
`evidence of use for these marks consist of single-page screenshots of foreign-country websites,
`
`with no evidence whether any such websites have impacted the perceptions of consumers in the
`
`United States (e.g., there is no evidence of amount of sales, website views, advertising
`
`expenditures) and, if so, how. (61 TTABVUE 26-27); In re Rolled Alloys, Inc., Serial No.
`
`85223044, 2014 WL 2967635, at *5 (TTAB June 3, 2014) (“As foreign websites, without any
`
`evidence to support an inference that these uses have ‘had any material impact on the perceptions
`
`of the relevant public in this country,’ . . . they have little probative value.”). Applicant’s bald
`
`assertion that “interactive foreign third party websites through which US consumers are able to
`
`order electronic cigarettes affect US commerce and amount to use in commerce as defined in the
`
`Trademark Act,” (63 TTABVUE 11), even if true, is not supported by the record here.
`
` 
`
`7
`
`

`

`Similarly, Applicant’s evidence of use for the remaining three marks
`
`,
`
`VAPEJOY, and VINTAGE JOYE, consist of broken links that are inaccessible (i.e.,
`
`
`
`and VAPEJOY) and/or of a screenshot of a portion of a webpage accessed at a single point in
`
`time (i.e., VINTAGE JOYE). (61 TTABVUE 27-28.) In addition to being limited in number, the
`
`probative value of such evidence is materially limited because the screenshots do not establish
`
`how many relevant customers, if any, may have encountered these alleged third-party uses. In
`
`particular, these screenshots alone do not establish that potential consumers have been so
`
`exposed to the term “JOY” that they have become accustomed to it and look to other elements
`
`for source identification in association with electronic cigarettes. See, e.g., In re Fort Bend
`
`Junior Serv. League, Serial No. 86162765, 2016 WL 837727, at *6 (TTAB Feb. 8, 2016)
`
`(screenshots from ten websites displaying alleged third-party use of SUGAR PLUM is
`
`insufficient to conclude that “SUGAR PLUM” is a diluted and commercially weak term); see
`
`also In re Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006) (stating that “without evidence as to
`
`the extent of third-party use, such as how long the websites have been operational or the extent
`
`of public exposure to the sites, the probative value of this evidence is minimal”); Freedom Fed.
`
`Sav. & Loan Ass’n v. Heritage Fed. Sav. & Loan Ass’n, 210 USPQ 227, 231 (TTAB 1981)
`
`(third-party use of marks without more is not probative of the impact that such marks have on
`
`consumer perceptions).
`
`Viewed appropriately, Applicant’s evidence of 11 total third-party marks (comprised of 9
`
`use-based registrations and corresponding alleged “uses” and one other alleged “use”) is thus
`
`neither “similar” to nor analogous to the evidence submitted in Juice Generation or Jack
`
`Wolfskin. (63 TTABVUE 10.) In those cases, the evidence consisted of a significant number of
`
` 
`
`8
`
`

`

`third-party marks, including extensive evidence of registrations and use in the marketplace. Juice
`
`Generation, Inc. v. GS Enters. LLC, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015) (at least 26
`
`relevant third-party registered and unregistered marks of record, including “extensive” evidence
`
`of third-party use); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
`
`Millennium Sports, S.L.U., 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (“voluminous” and
`
`“extensive” evidence of third-party registration and use). Applicant’s “evidence” here does not
`
`come anywhere near what was deemed to be probative in those cases.
`
`In any event, even if Applicant’s uncorroborated third-party evidence was relevant and
`
`probative, which it is not, Applicant has not introduced a single third-party registration or
`
`supporting use for a mark consisting of “JOY” preceded by a single letter, such as the opposed
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`IJOY Mark. The cited marks either spell “JOY” differently (e.g., VINTAGE JOYE,
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`JOYETECH, ENJOYLIFE), contain additional words before or after the word JOY (LITEJOY,
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`JOYLUCK, JOYWORLD), and/or involve design elements that engender an overall different
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`commercial impression (e.g.,
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`,
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`). In re DuPont, 177 USPQ 563, 567
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`(CCPA 1973) (only “similar marks in use on similar goods” are relevant for this factor of the
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`likelihood-of-confusion analysis) (emphasis added).
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`Finally, even if Applicant’s flimsy third-party “evidence” is probative of the conceptual
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`strength of the NJOY Mark, even “weak” marks are entitled to protection against registration by
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`a subsequent user of a similar mark for identical and closely related goods and/or services. See In
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`re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982); see also King Candy Co. v. Eunice
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`King’s Kitchen, Inc., 182 USPQ 108, 109 (CCPA 1974). Here, where the parties’ marks are
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`highly similar in appearance and meaning and are used on legally identical goods, likelihood of
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`confusion exists regardless of the degree of strength of the NJOY Mark.2
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`D.
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`Applicant Concedes that the Marks Are Used for Identical Goods, Thus
`Lessening the Degree of Mark Similarity Needed for Proving Likelihood of
`Confusion
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`Applicant does not dispute that his registration covers goods that are legally identical to
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`NJOY’s. Applicant thus concedes this important likelihood-of-confusion factor. As a result, the
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`degree of similarity between the parties’ marks necessary to support a conclusion of likelihood of
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`confusion declines. Century 21 Real Estate Corp. v. Century Life of Am., 23 USPQ2d 1698, 1700
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`(Fed. Cir. 1992) (“When marks would appear on virtually identical goods or services, the degree
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`of similarity necessary to support a conclusion of likely confusion declines.”).
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`E.
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`Any Lack of Actual Confusion Carries No Weight
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`Applicant contends that the alleged lack of actual confusion over an alleged period of six
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`years of concurrent use weighs against a finding of likelihood of confusion. (63 TTABVUE 9.)
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`But “as the Board has often stated, the lack of evidence of actual confusion carries little weight
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`in a Board proceeding.” Paul Jaboulet Aine v. S.P. Grossnickle, LLC, Opposition No. 91197078,
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`2012 WL 5493580, at *8 (TTAB Oct. 31, 2012). Evidence of actual confusion, moreover, is
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`“notoriously difficult to come by.” Gillette Can., Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
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`(TTAB 1992).
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`Further, the lack of actual confusion is irrelevant where there has been no meaningful
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`opportunity for confusion to arise. Id. (“[T]he absence of any reported instances of actual
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`2 Furthermore, NJOY’s undisputed commercial strength discussed above and at length in its main trial
`brief is also sufficient to overcome any alleged conceptual weakness. See Tao Licensing, LLC v. Bender
`Consulting Ltd., 125 USPQ2d 1043, 1059 (TTAB 2017) (“Considering the record in its entirety, although
`‘tao’ has a suggestive meaning in the restaurant industry, given the compelling evidence that Petitioner's
`mark for its top-grossing restaurants and nightclubs is famous and widely known by consumers, the
`nature and quantity of third-party use and registration evidence does not convince us that Petitioner’s
`mark is weak or entitled to only a limited scope of protection. The commercial strength of Petitioner's
`TAO mark outweighs any conceptual weakness.”).
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`confusion would be meaningful only if the record indicated appreciable and continuous use by
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`applicant of its mark for a significant period of time in the same markets as those served by
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`opposer under its marks.”); Barbara’s Bakery, Inc. v. Landesman, 82 USPQ2d 1283, 1287
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`(TTAB 2007).
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`Here, however, Applicant has not established any meaningful let alone significant
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`commercial use of the IJOY Mark (
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`) in the U.S. for any significant period of
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`time let alone the alleged six years. Applicant did not present any evidence of his sales,
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`marketing expenditures, or promotional activities and exposure in the U.S. electronic cigarette
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`market under the IJOY Mark (
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`) during the alleged six-year “coexistence
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`period.” Serta, Inc. v. S Indus., Inc., et al., Opposition. No. 91112035, 2003 WL 21206245, at *4
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`(TTAB May 15, 2003) (“Because there is no evidence of sales volume or marketing strategies,
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`we have no basis to find that there were opportunities for actual confusion to occur.”).
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`In fact, the only evidence of sales in this case shows use of a different mark
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` on 11 total sales invoices over the course of only one day in September 2018
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`and five days in July 2019 for total sales of only 179 products and accessories and total invoiced
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`sales of only $3,385.06. (58 TTABVUE78-94.) Thus, Applicant’s own evidence, even if
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`credited, establishes that any contemporaneous use by NJOY and Applicant in the electronic
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`cigarette market is de minimis at best and not sufficient to show that there were any meaningful
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`opportunities for confusion to even occur.
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`Viewed appropriately, NJOY’s and Applicant’s concurrent use in a competitive situation
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`has been neither long nor appreciable. But even if Applicant had actually used his mark since
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` 
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`2013, this likelihood-of-confusion factor would be at most neutral. The Board has routinely
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`found inconsequential even longer periods of coexistence without actual confusion. See, e.g.,
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`Money Station, Inc. v. Cash Station, Inc., 38 USPQ2d 1150, 1153 (Fed. Cir. 1995) (lack of
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`confusion inconsequential despite 8 years of concurrent use); Mars, Inc. v. Dan-Dee Int’l Ltd.,
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`Opposition. No. 91121237, 2005 WL 3551105, at *7 (TTAB Dec. 16, 2005) (14 years);
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`Barbara’s Bakery, Inc., 82 USPQ2d at 1287 (9 years).
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`Accordingly, any absence of confusion is neutral at best.
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`IV. CONCLUSION
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`For the reasons stated above and in NJOY’s trial brief, NJOY respectfully requests that
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`the Board sustain the Notice of Opposition.
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`Date: January 27, 2020
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` 
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`Respectfully Submitted,
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`/David M. Kelly/
`By:
`David M. Kelly
`david.kelly@kelly-ip.com
`Jason M. Joyal
`jason.joyal@kelly-ip.com
`Kelu L. Sullivan
`kelu.sullivan@kelly-ip.com
`Kelly IP, LLP
`1300 19th St., N.W., Suite 300
`Washington, D.C. 20036
`Telephone: (202) 808-3570
`
`Attorneys for Opposer
`NJOY, LLC
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`CERTIFICATE OF SERVICE
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`I certify that a true and accurate copy of the foregoing OPPOSER’S REPLY TRIAL
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`BRIEF was served by email, on this 27th day of January 2020, upon counsel for Applicant at the
`following email addresses: P. Jay Hines (jh@mg-ip.com); mailroom@mg-ip.com
`
`/Larry L. White/
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`Larry L. White
`Litigation Case Manager
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`EXHIBIT A
`EXHIBIT A
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`

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`AMERICARES FOUNDATION, INC. v. AMERICARE..., 2012 WL 1424423...
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`2012 WL 1424423 (Trademark Tr. & App. Bd.)
`
`THIS OPINION IS NOT A PRECEDENT OF THE TTAB
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`Trademark Trial and Appeal Board
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`Patent and Trademark Office (P.T.O.)
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`AMERICARES FOUNDATION, INC.
`v.
`AMERICARE MEDSERVICES INC. DBA AMERICARE AMBULANCE
`
`Opposition No. 91187537 to application Serial No. 78181183
`April 12, 2012
`filed on November 3, 2002
`*1 Nathaniel D. Kramer of Kirschstein, Israel, Schiffmiller & Pieroni, P.C. for AmeriCares Foundation, Inc.
`Elise Tenen-Aoki and Ehab M. Samuel of Greenberg Traurig, LLP for AmeriCare MedServices Inc. dba AmeriCare
`Ambulance
`
`Before Grendel, Kuhlke and Lykos
`Administrative Trademark Judges
`Opinion by Grendel
`Administra