A recent trademark opposition is a lesson in how to properly establish a likelihood of confusion for apparel goods.

In Roots Corporation v. Colorful Roots LLC, the Opposer, Roots Corporation, relied on several of its trademark registrations of ROOTS and its derivatives.  The “Roots” Marks, for various apparel items and related accessories in Class 25, included ROOTS, BABY ROOTS, ROOTS KIDS, and ROOTS ATHLETICS.   The Opposer also claimed common law rights in ROOTS and other ROOTS-formative marks. The Applicant, Colorful Roots LLC, applied for the mark COLORFUL ROOTS for “clothing, namely, shirts and hats” in International Class 25.

Opposer made of record its four ROOTS trademark registrations as well as the testimony declaration of its Chief eCommerce Officer.   Applicant introduced the testimony declaration of its owner.

In ruling for the Opposer, the Board made the following observations and findings:

  1.  Entitlement to statutory cause of action.   In every opposition, the Opposer must first demonstrate its entitlement to a statutory cause of action.   This is done by showing a real interest in the proceeding and a reasonable belief of damage. An opposer need not prove actual damage.   By introducing status copies of its pleaded trademark registrations, Roots Corporation sufficiently met the criteria.
  2.  Priority.   This is shown by having an earlier effective rights date, either by common law use or as here, registrations that were made of record that pre-dated Applicant’s claimed date of first use of its mark in commerceBecause Opposer’s registrations were in the record, and Applicant did not counterclaim to cancel any of them, priority was not an issue.
  3.  Likelihood of confusion.   An analysis of likelihood of confusion is based on the all the probative facts in evidence.  In doing so, the Board relies of the factors set forth in E.I. du Pont de Nemours & Co. (CCPA 1973) (the “du Pont Factors”).  In any likelihood of confusion analysis, two key considerations are the similarities between the goods and services and the similarities between the marks.   The Board proceeded to analyze the similarity between Roots Corporation’s ROOTS trademark (Reg. No. 1815620) because this mark and the associated goods are most similar to Applicant’s mark and goods.
  • (a) similarity of the marks.  In comparing marks, the Board considers their appearance, sound, connotation, and commercial impression.  In comparing the similarity between marks, the ultimate conclusion rests on an analysis of the marks in their entireties.  That being said, it is proper to give more weight to a particular feature of a mark.  In addition, where the goods of both parties are identical in part, this reduces the degree of similarity that it necessary as to the marks.   Here, the Board concluded that  the marks are similar since Applicant’s COLORFUL ROOTS Mark encompasses the entirety of Opposer’s ROOTS Mark,  and given that “Roots” is arbitrary when used in connection with clothing.
  • (b)  Relatedness of the goods.   In assessing this factor, the Board looks to the goods as identified in Applicant’s application and the Opposer’s registration.  Here, since the goods are in-part legally identical and without restriction as to channels of trade, there is a presumption that the the parties’ trade channels and classes of purchasers are the same.
  • (c)  Actual confusion.    The issue of actual confusion goes towards the seventh DuPont factor (the “nature and extent of any actual confusion”) and the eighth DuPont factor, the “length of time during and conditions under which there has been concurrent use without evidence of actual confusion.”   The Applicant testified that there have been no instances of actual confusion since it first started selling its COLORFUL ROOTS goods in 2015.  It also had approximately 1,300 visitors to its website in 2020 and grossed approximately $83,000 in sales.  The Board ruled that absence of any reported confusion is not meaningful here, as such facts are only probative if the record indicates appreciable and continuous use by Applicant of its mark for a significant period in the same markets served by Opposer.  Based on Applicant’s relatively small sales and website visitors, there was no meaningful opportunity for confusion to occur.

Holding:  Based on all the applicable factors, the Board held a likelihood of confusion to exist such that judgment entered in Opposer’s favor and the Applicant’s COLORFUL ROOTS application was refused registration.

Editor’s Note:   The Board does not always find a likelihood of confusion for apparel trademarks, especially when the marks are dissimilar in appearance.  See discussion here.