1. IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Applicant: Marilyn Moda Inc. Docket No.: 99492
Mark: SHE'S SO RISQUE Examining Attorney: Catherine L. Tarcu
Serial No.: 86263684 Law Office: 105
Filed: April 26, 2014
Response to Primary Basis for Refusal of Registration
Under Trademark Act Section 2(d), 15 U.S.C. §1052(d)
On August 12, 2014, Applicant received an Office Action stating that the examining attorney refused
registration due to Trademark Act Section 2(d), on the ground that applicant’s mark, when used on or in
connection with the identified goods, so resembles the mark in U.S. Registration Number 3675764 as to be
likely to cause confusion, to cause mistake, or to deceive. Applicant respectfully disagrees with this conclusion
and hereby submits this Response and requests that the examining attorney reconsider their refusal of the
original application (“Application”).
A. The Nature of the Mark the Examining Attorney Concluded Could Lead to Confusion,
Mistake or Deception under 15 U.S.C. 1052(d).
U.S. Registration No. 3675764
The mark covered by the above registration is a logo that consists of the words "SHE'S SO" in stylized form
as seen below, with SHE'S appearing in block and spaced lettering at the top of the mark with SO appearing
underneath SHE'S in stylized form in large lettering:
The registration falls into International Class 25 for “Items of apparel, namely, trousers, shorts, skirts,
dresses, pullovers, blouses, shirts, t-shirts, jerseys, sweaters, cardigans, vests, waistcoats, shawls, stoles,
shoulder wraps, neckerchieves, scarves, gloves, gaiters; headgear, namely, hats and caps; belts for clothing;
outerwear, namely, coats, jackets, capes and cloaks”
Applicant’s Serial No. 86263684

2. The mark covered by the above serial number is a standard character that consists of the words
“SHE’S SO RISQUE”
The Application falls into international class 25 for “Footwear”
B. Explanation of the DuPont Multi-Factor Test for the Purpose of Determining Whether
Confusion, Mistake, or Deception is Likely
A determination of likelihood of confusion between marks is determined on a
case-specific basis. In re Dixie Restaurants Inc., 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). The test for likelihood
of confusion is whether a ‘reasonably prudent consumer’ in the marketplace is likely to be confused as to the
origin of the good or service bearing one of the marks. In re E.I. DuPont de Nemours and Co., 177 U.S.P.Q. 563
(C.C.P.A 1973). The examining attorney is to apply each of the applicable factors set out in In re DuPont,
otherwise known as the DuPont factors, which are, as relevant to the present case:
(1) The similarity or dissimilarity as to appearance, sound, connotation, and commercial impression;
(2) The similarity or dissimilarity and the nature of the goods or services as described in the
application or registration in connection with which a prior mark is in use;
(3) The degree of care/sophistication likely to be exercised by consumers and the conditions in
which sales are made; and
See id.
C. Application of the DuPont Factors to the Pending Application
Applying the relevant DuPont factors to the instant case, Applicant hereby submits the following arguments in
response to Examiner’s refusal to register Serial No. 86263684.
1. Similarity or Dissimilarity as to Appearance, Connotation, and Commercial Impression
It is well established that when comparing two trademarks for confusing similarity, the Examining
Attorney must compare the marks for resemblances in appearance and meaning or connotation. In re E.I.
DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). Similarity of the marks in one
respect – sight, sound, or meaning—will not automatically result in a finding of likelihood of confusion, even
if the services are identical or closely related. TMEP §1207.01(b)(i). It is also accepted that the use of identical,
even dominant, words in common does not necessarily mean that two marks are similar. See General Mills, Inc.
v. Kellogg Co., 824 F.2d 622, 687 (8th Cir. 1987) (holding defendant’s OATMEAL RAISIN CRISP did not
infringe plaintiff’s APPLE RAISIN CRISP trademark). This is because marks must be considered in their
entireties. See, e.g., TMEP §1207.01.
The examining attorney is required to look to the overall impression created by the marks, rather
than merely comparing individual features. In this respect, the examining attorney must determine whether
the total effect conveyed by the two marks is confusingly similar, not simply whether the marks sound alike
or look alike First Savings Bank F.S.B. v. First Bank System Inc., 101 F.3d at 645, 653, 40 USPQ2d 1865, 1870
(10th Cir. 1996) (recognizing that while the dominant portion of a mark is given greater weight, each mark
still must be considered as a whole) (citing Universal Money Centers, Inc. v. American Tel. & Tel. Co., 22 F.3d
1527, 1531, 30 USPQ2d 1930 (10th Cir. 1994)). Even the use of identical dominant words or terms does not
automatically mean that two marks are similar. Also, in First Savings Bank F.S.B. v. First Bank System Inc., 101

3. F.3d at 645, 653, 40 USPQ2d 1865, 1874 (10th Cit. 1996), marks for "FirstBank" and for "First Bank Kansas"
were found not to be confusingly similar. Furthermore, in Luigino's Inc. v. Stouffer Corp., 50 USPQ2d 1047, the
mark "Lean Cuisine" was found not be confusingly similar to "Michelina's Lean 'N Tasty" even though both
marks use the word "Lean" and are in the same class of goods, namely, low-fat frozen food.
i. APPEARANCE
The nature and scope of a party’s goods or services must be determined on the basis of the goods or
services recited in the application or registration. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed Cir. 2002); In re Shell Oil Co.992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1991);
Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937. 16 USPQ2d 1783 (Fed. Cir. 1990); Canadian
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula
Payne Products co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973). See generally TMEP §
1207.01(a)(iii).
In Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, the Supreme Court laid down the
Anti-Dissection Rule and held that composite conflicting marks are to be compared by looking at them as a
whole rather than breaking the marks up into their component parts for comparison. The rationale of this
rule is that the commercial impression of a composite trademark on an ordinary prospective customer is
created by the mark as a whole, not by its component parts.
Applicant respectfully submits that, when applicant’s mark is viewed as a whole, there is no
likelihood of confusion with the cited registration. As a general rule, "the basic principal in determining
confusion between marks is that the marks must be compared in their entireties... [and a] likelihood of
confusion cannot be predicated on dissection of a mark." In re National Data Corporation, 753 F.2d 1056 (Fed.
Cir. 1985).
Applying current promulgated law, a visual examination of the literal elements displays clear
differentiations between the marks. Applicant’s mark, “SHE’S SO RISQUE” is a phrase consisting of four
syllables. In contrast, Registrant’s mark consists of the words “SHE’S SO” which is a two syllable phrase.
Consumers are likely to notice such a difference between the marks just based on a brief glance.
More importantly, the resulting visual impression when compared side by side will result in a
consumer seeing a distinct word in Applicant’s mark, “RISQUE”, that is missing from Registrant’s mark.
Therefore, the visual impact of the marks when compared to each other is sizably different when considered
in their entireties. Consequently, when viewed in its entirety, Applicant’s mark is not confusingly similar to
the prior pending mark.
Additionally, Applicant’s mark appears to be longer than the registrant’s mark which, considering the
distinct word “RISQUE” that the registrant’s mark lacks, convey a completely different appearance to the
prudent consumer. The word “Risque” in the Applicant’s mark is the dominant part of the Applicant’s
trademark. The mark would not give the same impression had the word “Risque” not existed in Applicant’s
trademark given the Applicant’s channels of trade. The applicant’s target market is only exotic dancers and
risqué fashion show performers. This shows that the client is purposefully using the word “Risque” as the
dominant part of the trademark.

4. In the case of design marks, the question of likelihood of confusion must be decided on the basis of
the visual similarity of the marks. Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No.
91122964, (TTAB 2007). Also see in re ATV Network Limited, 552 F.2d 925, 193 USPQ 331 (CCPA 1977).
Applicant respectfully submits that the registrant’s mark is a design that consists of the words
“SHE’S SO” in a stylized form wherein the word SHE'S appears in block and spaced lettering at the top of
the mark with SO appearing underneath SHE'S in stylized form in large lettering. This is a very distinct
format that the applicant claims with a high degree of emphasis based on the respective sizing of the words
on SO, which is clearly the most dominant and noticeable part of the registered mark. The dominant and
standing part of Registrant’s mark is the wording “SO” which appears very large with a specific style.
Applicant's mark is a complete phrase and should be looked at such, without emphasis as in the cited
mark on a particular word (which is composed of half the wording), and will be read and construed as a
complete phrase. Considering the mark as a whole and this reasoning, Applicant’s mark does not appear in
the style or design that the registrant has claimed, and thus, consumers, too, should easily be able to tell the
difference between the two marks at the point of sale in addition to the difference in emphasis based on the
nature of Applicant's mark as a phrase versus the dominant visual representation of SO in the cited mark.
The Applicant submits that, based on the above reasons, no likelihood of confusion is found between the
marks.
ii. SOUND
It has been held that even where two marks are phonetically similar, no likelihood of confusion exists
if other differentiating factors can be established. See National Distillers & Chemical Corporation v. William Grant
and Sons, Inc., 505 F.2d 719 (finding that DUVET and DUET did not raise likelihood of confusion where
other differentiating factors existed; including fact that while DUET was a familiar word, DUVET was not).
Ultimately, as outlined in DuPont and other jurisprudence above, an ultimate determination on likelihood of
confusion must be made taking into account all the various factors. (See also In re National Data Corp., 753
F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985) (“The basic principle in determining confusion
between marks is that marks must be compared in their entireties and must be considered in connection with
the particular goods or services for which they are used (citations omitted).”)).
As aforementioned, the phonetic differences between the marks in this case are evident since
Applicant’s mark requires the pronunciation of the word “RISQUE”. The phonetic differences make the two
marks so different that a consumer should instantly be able to tell the difference and not get confused.
Applicant’s mark is a four syllable phrase whereas Registrant’s mark is a two syllable phrase. In the ears of a
consumer, Applicant’s trademark sounds twice as long as Registrant’s mark. Additionally, pronunciation of
the word “RISQUE” does not follow the tone of the word “SO” which comes before the word “RISQUE”.
This clearly shows how different pronunciation of the two marks will be when pronounced as a whole.
Moreover, Registrant’s mark does not contain the word “RISQUE” to make the two marks phonetically
close, and that, per se, differentiates the two marks reasonably to refute any claim of confusion.
iii. Connotation/Commercial Impression
An additional factor used to determine whether likelihood of confusion exists requires an
examination into the meaning or connotation of the marks at issue. It has been held that even where marks
share similar appearances and sound, the connotation and/or commercial impression derived from the marks
may be sufficiently different enough where the likelihood of confusion is not established. See, e.g., In re Sears,
Roebuck and Co., 2 U.S.P.Q.2d 1312 (TTAB 1987) (finding that CROSS-OVER when applied to bras carried
different connotation and/or commercial impression from CROSSOVER as applied to women’s sportswear);

5. In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (TTAB 1984) (finding that PLAYERS for men's underwear carried
different connotation and/or commercial impression from PLAYERS for shoes); In re Sydel Lingerie Co., Inc.,
197 U.S.P.Q 629 (TTAB 1977) (finding that BOTTOMS UP for ladies' and children's underwear held a
different connotation and/or commercial impression from BOTTOMS UP for men's clothing). Furthermore,
such connotation and/or significance can be determined based upon a mark holder’s current use in
commerce.
In this case, the context of the marks differs greatly. Applicant’s mark “She’s So Risqué” is suggestive
of Applicant’s goods, namely, sexy and provocative footwear. Risqué is defined as “being sexually suggestive”
(Please See Exhibit 1). Moreover, Applicant’s clients are usually different types of exotic dancers and fashion
show performers. This makes it very clear that Applicant’s trademark delivers a very specific connotation and
commercial impression, which is sexually attractive footwear used by exotic dancers and fashion show
performers. Applicant's mark is saying that the wearer of the shoes is RISQUE - the subject of the
mark, the purchaser, the wearer, etc. The Registrant's mark is completely devoid of this impression
which completely changes the way consumers will view the marks. This also shows how personalized
Applicant’s goods are to a distinct category of users, and hence, not used by everybody. On the other hand,
Registrant’s products are designed to convey a specific impression related to Italian culture. Registrant’s
goods are very specific type of handmade knitwear, not footwear, that is designed and finished in Italy. They
are designed for Italian women or women who like Italian dresses (Please See Exhibit 2).
Accordingly, the applicant respectfully submits that the examiner withdraws the likelihood of
confusion issue and allows the trademark to proceed to publication on the official gazette.
2. Similarity as to The Nature of Goods and Services/Trade Channels
As Examiner notes, the goods and/or services of the parties need not be identical or directly
competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086,
56 USPQ2d 1471, 1475 (Fed. Cir. 2000); TMEP §1207.01(a)(i). Examiner also highlights that the respective
services need only be related in some manner or the conditions surrounding their marketing be such that they
will be encountered by the same consumers under circumstances that would lead to the mistaken belief that
the services originate from the same source. Gen. Mills Inc. v. Fage Dairy Processing Indus., 100 USPQ2d 1584,
1597 (TTAB 2012); TMEP §1207.01(a)(i). However, if the goods [or services] in question are not related or
marketed in such a way that they would be encountered by the same persons in situations that would create
the incorrect assumption that they originate from the same source, then even if the marks are similar,
confusion is not likely. See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed.
Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16
USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener not held confusingly similar to
LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of
advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d
1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g. lamps,
tubes) related to the photocopying field). See generally TMEP § 1207.01(a)(i).
Even where marks are placed within the same class, it is possible to avoid a likelihood of confusion
where the goods and/or services vary. See, e.g., Taj Mahal Enterprises, Ltd. v. Trump, 16 U.S.P.Q. 2d 1577
(D.N.J. 1990). In Taj Mahal, the marks under scrutiny were TAJ MAHAL for an Indian restaurant and TAJ
MAHAL for a casino-hotel resort. The court held that the mark TAJ MAHAL for restaurants is suggestive of
Indian food, while TAJ MAHAL for casino-hotel evokes images of grandeur, opulence and extravagance.
Therefore, despite both falling under the same class of services for the purposes of registration, the Taj Mahal
court found that there was no likelihood of confusion.

6. The examiner states that “neither the application nor the registration(s) contains any limitations
regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are
sold everywhere that is normal for such items, i.e., clothing and department stores. Thus, it can also be
assumed that the same classes of purchasers shop for these items and that consumers are accustomed to
seeing them sold under the same or similar marks”. However, considering the above mentioned rules, and
although channels of trade are open to both Applicant and Registrant, the applicant asserts that their
products suggest a special kind of footwear that ordinary buyers will easily identify. Because of the special
design, look, and the higher than average price of the applicant’s footwear, it is very likely for a consumer to
distinguish between a normal day to day clothing and the applicant’s products.(Please see exhibit 8 for similar
footwear as Applicant’s footwear). Meanwhile, there is no indication that Registrant sells apparel or footwear
for ecdysiasts. Conversely, although no limitation on trade channels, Registrant only sells apparel, and not
footwear, that is Italy-specific knitwear.
Additionally, the examiner attached documents showing that apparel and footwear could be sold
under the same roof, however, Applicant respectfully submits that in fact, there are numerous online
footwear stores that don’t sell any other kind of apparel, but footwear. (Please see exhibits 7 & 8 for similar
footwear). Instead, Registrant provides a specific type of apparel that conveys purely Italian connotation,
namely, hand-made apparel designed in Italy for Italian women (Please see exhibits 9 & 10). Even if sold
under the same roof, Applicant and Registrant’s products are very different in their design, connotation and
demeanor.
Based on the differences in the goods of the applicant and the registrant, the applicant submits that
the goods, although in the same class—Int Class 25--, are very different in their type and are not likely to be
encountered by the same consumers, and thus, no confusion is likely to happen.
3. The Degree of Care/Sophistication Likely to be Exercised by Consumers & The Conditions Under Which Sales
Are Made
As analyzed in Dupont, supra: to the extent that a customer is likely to exercise a high degree of care
and/or sophistication when selecting goods or services, the less chance that confusion, mistake, or deception
will occur between two or more competing marks. See also TCPIP Holding Co., Inc. v. Haar Communications, Inc.,
244 F.3d 88, 102 (2d Cir.2001) ("The more sophisticated the consumers, the less likely they are to be misled
by similarity in marks."); Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 480 (2d Cir.1996) ("The
sophistication factor recognizes that the likelihood of confusion between the products at issue depends in
part on the sophistication of the relevant purchasers."). Furthermore, the degree of care factor plays a
significant role in minimizing potential confusion where the subject goods fail to constitute “impulse” goods.
See, e.g., Astra Pharm. Prods. Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206 (1st Cir. 1983) (finding that
blood analyzers that cost between $35,000 to $60,000 require careful consideration likely to result in added
consumer scrutiny and examination).
i. Degree of Care/Consumer Sophistication
Here, Applicant’s clients will undoubtedly exercise a high degree of care and sophistication because
of the peculiar design that the applicant’s goods are made with. The high heel footwear with sexually
attractive colors and design that is supposed to be sold to exotic dancers, ecdysiasts, and fashion show
performers is not likely to be sold to laypeople. Likewise, a layperson walking in the shopping malls to buy
footwear is not likely to buy the applicant’s goods for normal day to day wear. It needs a high degree of

7. sophistication for the customers to understand the type of footwear that the applicant provides, not to
mention, the occasions in which such footwear is wearable. Applicant’s clients are primarily those who use
such footwear in special occasions such as exotic dancing, and not for every day wear and tear. This means
that the applicant’s footwear are considerably more expensive than the usual footwear. The expensive nature
of the applicant’s footwear requires a great deal of sophistication in the prospective customers to decide and
be able to buy such goods.
The importance of a dancer’s sexually provocative appearance is as important nowadays as the
movements themselves. “Adult entertainment and strip clubs is a growing industry expanding to a 3-billion-
ayear industry” ( please see exhibit 11). “As of February 1997, Americans spent more money at strip clubs
than at Broadway and Off-Broadway theatres, regional and nonprofit theatres, opera, ballet, and jazz and
classical music performance combined.” (Please see exhibit 12). The above mentioned studies indicate how
expensive maintenance of an exotic dancer or performer could be. Naturally, spending such amounts of
money on entertainment, specifically exotic dancing and performing, requires a high degree of sophistication
to find and choose the right type of provocative shoes and apparel. Although the applicant does not sell such
apparel, there is no indication that the registrant’s goods require sophistication of this magnitude.
Conversely, Registrant’s apparel will be sought by people who love Italian handmade dresses, and not
footwear. There is no doubt that the registrant’s goods, as well, require a high degree of sophistication to buy.
That is the reason that the two target markets are not likely to meet each other in a confusing way. For
example, a person who is looking for Italian specific handmade apparel will be extremely unlikely to seek high
heel sexually provocative dance shoos with shiny colors.
Based on the above reasoning, the client respectfully maintains that there is no likelihood of
confusion between the applicant and the registrant’s trademarks, and so, respectfully requests withdrawal of
the likelihood of confusion issue cited in the office action.
D. Conclusion
Based on the DuPont factors shown above, the client respectfully claims that:
1. The trademarks cited in the office action as confusingly similar are not similar based on their
appearance, and length.
2. The two trademarks sound utterly different from each other. Specially considering pronunciation
of the dominant part of the applicant’s trademark, the word “Risque”.
3. The two trademarks are different because the registrant’s name is a design protected only in a
specific style whereas the applicant’s trademark does not appear even close to the design that the registrant is
protected for.
4. The word “Risque” is the dominant part of the applicant’s trademark without which the specific
connotation that the applicant is seeking for its trademark will diminish.
5. The two trademarks have extremely different conotations. Specifically, the applicant’s trademark
has a sexually provocative connotation and is dedicated for exotic dancers, ecdysiasts, and fashion show
performers whereas, Registrant’s trademark is referring to a very folk Italian handmade dresses.
6. Products of the two trademarks are different. Specifically, the applicant is providing a specific type
of footwear, and nothing else, whereas the applicant is providing a specific type of apparel, and not footwear.

8. Based on the above conclusion, the applicant earnestly solicits a Notice of Publication in the Official
Gazette.