Alex AngelinoDownload PDFTrademark Trial and Appeal BoardDec 1, 2009No. 78770866 (T.T.A.B. Dec. 1, 2009) Copy Citation Mailed: December 1, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Alex Angelino ________ Serial No. 78770866 _______ Douglas E. White of Acronational Law Firm for Alex Angelino. Doritt Carroll, Trademark Examining Attorney, Law Office 116 (Michael Baird, Managing Attorney). _______ Before Cataldo, Taylor and Bergsman, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, Alex Angelino, seeks registration on the Principal Register of the mark depicted below for goods identified in the application as “shirts, pants, shoes” in International Class 25.1 1 Application Serial No. 78770866 was filed on December 11, 2005 based upon applicant’s allegation of July 31, 1999 as a date of first use of the mark in commerce. Color is not claimed as a feature of the mark. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Ser No. 78770866 2 At issue in this appeal is the Trademark Examining Attorney’s final refusal to register applicant’s mark on the ground that, as applied to applicant’s goods, the mark so resembles the mark ANGELINO MY GUARDIAN ANGEL ON THE ROAD OF LIFE, previously registered (in typed or standard characters) for, inter alia, goods identified in the registration as “clothing, namely, dresses, jackets, socks, belts, knit shirts, sport shirts, sweat shirts, t-shirts, pants, sweaters, ties, socks, boxer shorts, underwear, shorts, beach visors, beachwear, swimsuits, hats, caps, beanie caps, jerseys, pajamas, shoes and footwear,”2 as to be likely to cause confusion, to cause mistake, or to deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d). 2 Registration No. 3141079 issued September 12, 2006 reciting, in addition to the above-listed goods, goods in International Classes 16 and 28. Ser No. 78770866 3 Applicant and the Examining Attorney have filed main appeal briefs. Applicant requested, and obtained, an extension of time in which to file a reply brief. However, a reply brief is not of record. We affirm the refusal to register. Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue (the du Pont factors). See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). The Goods We find that certain of the goods identified in applicant’s application, i.e., “pants” and “shoes,” are identical to goods identified in the cited registration. We further find that the remaining goods identified in applicant’s application, i.e., “shirts,” encompass the more narrowly identified “knit shirts,” “sport shirts,” “sweat shirts,” and “t-shirts” identified in the cited Ser No. 78770866 4 registration. We also find that many if not all of the other goods identified in the cited registration are clothing items that are similar and related to the goods identified in the involved application. Thus, we find that the second du Pont factor weighs in favor of a finding of likelihood of confusion. Channels of Trade, Classes of Consumers, and Nature of the Goods When identical goods or services are recited in an application and registration with no limitations as to their channels of trade or classes of consumers, such channels of trade and classes of consumers must be considered to be legally identical. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)(“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade.”); and In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”). Ser No. 78770866 5 We find, therefore, that registrant’s goods and applicant’s identical goods would be marketed in the same trade channels and to the same classes of purchasers, while the related goods will be marketed in some of the same trade channels and to some of the same classes of purchasers. The third du Pont factor accordingly weighs in favor of a finding of likelihood of confusion. Further, it is well settled that purchasers of casual, low cost ordinary consumer items are held to a lesser standard of purchasing care and are more likely to be confused as to the source of the goods. See Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984). We note that neither applicant’s goods nor those of registrant are restricted to expensive, designer, or otherwise “high end” clothing. We must therefore presume that the clothing items involved herein include ordinary, relatively inexpensive consumer items which would be purchased without a great deal of care or sophistication. The fourth du Pont factor accordingly weighs in favor of a finding of likelihood of confusion. The Marks We turn finally to the first du Pont factor, i.e., whether applicant’s mark and the cited registered mark are similar or dissimilar when compared in their entireties in Ser No. 78770866 6 terms of appearance, sound, connotation and commercial impression. See Palm Bay Imports, Inc., supra. We make this determination in accordance with the following principles. The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although the marks at issue must be considered in their entireties, it is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Finally, in cases such as this, where the applicant’s goods are identical (in part) to the goods identified in the cited registration, the degree of similarity between the marks which is required to support a Ser No. 78770866 7 finding of likelihood of confusion is less than it would be if the goods were not identical. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). We find, initially, that the dominant feature in the commercial impression created by applicant’s mark is the word ANGELINO. These letters appear in very large type which is wider than the design element and draws the attention of the viewer. The word ANGELINO also is more dominant than the design element in the mark because it, unlike the design element, is subject to ready pronunciation. Therefore, it is the name ANGELINO that consumers will use when referring to applicant’s mark and goods. For these reasons, we find that it is the word ANGELINO which dominate the commercial impression of applicant’s mark. We do not ignore the other elements of applicant’s mark, but we give more weight to the wording in our comparison of applicant’s mark and the cited registered mark. See In re National Data Corp., supra. In terms of appearance, we find that applicant’s mark is similar to the cited registered mark to the extent that they both include the word ANGELINO, but that the marks are dissimilar to the extent that applicant’s mark, but not the cited registered mark, includes the design element and the Ser No. 78770866 8 cited registered mark contains the wording MY GUARDIAN ANGEL ON THE ROAD OF LIFE. The very minor stylization of the lettering in applicant’s mark is not sufficient to distinguish the marks, given the fact that the cited registered mark is registered in standard character form and thus could be displayed in lettering similar to applicant’s. See, e.g., In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Sunnen Products Co. v. Sunex International Inc., 1 USPQ2d 1744, 1751 (TTAB 1987); and In re Hester Industries, Inc., 231 USPQ 881, 883, n.6 (TTAB 1986). Furthermore, we note that ANGELINO, the word which the marks share in common, and the only word element in applicant’s mark, is also the first word in registrant’s mark. Thus, the name ANGELINO in registrant’s mark carries more weight in creating the commercial impression of the mark. Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(“…[it is] a matter of some importance since it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.”). See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692 (“The presence of this strong distinctive term as the first Ser No. 78770866 9 word in both parties’ marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of ROYALE.”). Further, we observe that consumers are often known to use shortened forms of names, and it is highly likely that registrant and its goods are referred to as “AGNELINO.” Cf. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring: “the users of language have a universal habit of shortening full names – from haste or laziness or just economy of words”). In terms of sound, we find that the marks are identical to the extent that ANGELINO would be pronounced as the first or only element in both. The marks sound dissimilar to the extent that registrant’s mark also includes the words MY GUARDIAN ANGEL ON THE ROAD OF LIFE. In terms of connotation, we find that applicant’s mark connotes the meanings of ANGELINO supplied by applicant, i.e., as a native of Los Angeles, California or as a surname. The word ANGELINO in the cited registered mark would have the same connotation, and the remaining wording in registrant’s mark connotes that an ANGELINO is a guardian angel. We do not find that the design element in applicant’s mark adds anything specific or definite to the Ser No. 78770866 10 connotation of applicant’s mark; however, the female figure displayed therein could be interpreted as an angel. In terms of overall commercial impression, we find that the marks are similar rather than dissimilar because they both prominently include the word ANGELINO. The wording MY GUARDIAN ANGEL ON THE ROAD OF LIFE in registrant’s mark would be viewed as merely explanatory language modifying the term ANGELINO shared by both marks, and it therefore does not serve to distinguish the marks as source identifiers to such an extent that it renders the marks more dissimilar than similar. Purchasers familiar with registrant’s mark, upon encountering identical or similar goods marketed under applicant’s mark which so prominently features the word ANGELINO, are likely to assume that there is a source or other connection between the respective goods. The presence in applicant’s mark of the design element and the additional wording in that of registrant would not relieve them of that misconception. That is, purchasers are more likely to assume, based on the presence in both marks of the designation ANGELINO, that a source connection exists, than they are likely to assume, based on the presence in registrant’s mark of the additional wording and the design element in applicant’s, that no such source connection exists. Ser No. 78770866 11 On balance, and considering the marks in their entireties, we find them to be similar rather than dissimilar, and that the first du Pont factor weighs in favor of a finding of likelihood of confusion. As noted above, where the applicant’s and registrant’s goods are identical, the degree of similarity between the marks which is required to support a finding of likelihood of confusion is decreased. Century 21 Real Estate Corp. v. Century Life of America, supra. We find in this case that applicant’s mark is sufficiently similar to the cited registered mark that confusion is likely to result from use of the marks on identical or highly related goods, which are marketed in identical or overlapping trade channels to identical and overlapping classes of ordinary purchasers. In coming to this determination, we have considered the arguments raised by applicant with regard to the strength of the mark in the cited registration. Applicant asserts, and introduced evidence during prosecution of his application, that ANGELINO is a surname; an alternate spelling of “Angeleno,” which means a native of Los Angeles, California; and also the name of a neighborhood in Ser No. 78770866 12 Los Angeles known as Angelino Heights.3 Applicant argues that, as a result, the term ANGELINO is weak and only entitled to a narrow scope of protection. We note, however, that because applicant’s evidence points to several possible meanings of the word ANGELINO, such evidence does not establish that ANGELINO has any one particular meaning, particularly as applied to the goods at issue herein, namely, clothing.4 As a result, such evidence does not support a finding that ANGELINO is weak as applied to such goods. Moreover, even if we were to find, based on applicant’s evidence, that the word ANGELINO in registrant’s mark is weak and entitled to a narrow scope of protection, the scope is still broad enough to prevent the registration of a highly similar mark for identical or 3 Applicant’s March 12, 2007 response to the examining attorney’s June 16, 2006 Office action; and applicant’s February 14, 2009 request for reconsideration. 4 Although applicant states on page 8 of his brief that he is not attacking the validity of the cited registration, we want to be clear on this point. Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b) provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate. During ex parte prosecution, an applicant will not be heard on matters that constitute a collateral attack on the cited registration. See In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In re Peebles Inc., 23 USPQ2d 1795, 1797 n. 5 (TTAB 1992). Thus, we have given no consideration to applicant’s remarks in this regard. Ser No. 78770866 13 closely related goods. See In re Farah Mfg. Co., Inc., 435 F.2d 594, 168 USPQ 277, 278 (CCPA 1971). Applicant further argues that representations made by the owner of the cited registration in overcoming the examining attorney’s refusal to register the mark in its underlying application based upon a likelihood of confusion with the mark in a prior registration “can be construed as an admission against interest on the part of the cited Registrant – and a voluntary limitation on the scope of the registration, if not virtually an implied consent to the registration of the present mark.”5 First, applicant cites to no authority for its contention that ex parte representations made by the owner of the registration cited herein, and unrelated to applicant or his involved mark, should be viewed as a consent to registration of the mark in the involved application. If applicant wished to obtain the consent of registrant to registration of his mark, it was incumbent upon him to obtain express consent during examination of his application. See TBMP §1207.01(d)(viii). We note that with regard to an inter partes proceeding before the Board, 5 Applicant’s brief, p. 12. Ser No. 78770866 14 the predecessor to our primary reviewing court stated as follows: That a party earlier indicated a contrary opinion respecting the conclusion in a similar proceeding involving similar marks and goods is a fact, and that fact may be received in evidence as merely illuminative of shade and tone in the total picture confronting the decision maker. To that limited extent, a party's earlier contrary opinion may be considered relevant and competent. Under no circumstances, may a party's opinion, earlier or current, relieve the decision maker of the burden of reaching his own ultimate conclusion on the entire record. Interstate Brands Corp. v. Celestial Seasonings Inc., 576 F.2d 926, 198 UPSQ 151, 154 (CCPA 1978). In the present case, registrant is not a party to this ex parte proceeding; nor is the file of the application underlying the cited registration of record herein. Thus, registrant’s asserted statements are not of record. Applicant argues that By making [the cited] registration of record and the sole ground of rejection herein, it is submitted that the entirety of said registration is of record herein, including limitations on its scope made during its prosecution history, which may be accessed through the PTO TDR server. If, however, said evidence is found not to have been made of record by the Examining Attorney, then Applicant requests remand for the submittal of these statements in a Request for Reconsideration.6 6 Applicant’s brief, p. 12-13, fn 2. Ser No. 78770866 15 Again, applicant provides no authority for its contention that by citing Reg. No. 3141079 during prosecution of the present application, the Examining Attorney placed the entire registration and file history into evidence. Applicant could have timely made these materials of record during prosecution of its application with its communications to the Examining Attorney, but failed to do so. See Trademark Rule 2.142(d) (the record in the application should be complete prior to the filing of an appeal). Accordingly, they are not of record. Furthermore, applicant was aware of the application underlying the cited registration as early as the Examining Attorney’s June 16, 2006 Office action, and was afforded ample opportunity to make such application file of record prior to filing its brief. As such, we find that applicant has failed to make the requisite showing of good cause necessary to remand the application for submission of these materials at this time. Finally, applicant argues that “it is important to note that Applicant’s surname is ANGELINO, and that Applicant is among the presumably numerous business users of this surname that enjoy a reasonable expectation that appropriation of ANGELINO will not be extended exclusively Ser No. 78770866 16 to Registrant….”7 However, our primary reviewing court, the Court of Appeals for the Federal Circuit, and its predecessor, the Court of Customs and Patent Appeals, have held that the interest in avoiding confusion is greater than the interest in allowing an individual to use his surname if such use will result in a likelihood of confusion. See Nina Ricci S.A.R.L. V. E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989) (VITTORIO RICCI for handbags, clothing and retail store services in the field of clothing is likely to cause confusion with NINA RICCI for clothing and accessories even though Vittorio Ricci was the name of defendant’s principal); Ford Motor Co. v. Ford, 462 F.2d 1405, 174 USPQ 456, 458 (CCPA 1972) (“the interest in allowing an entrepreneur to use his own surname as a trademark on his goods must give way to the more compelling public and private interests involved in avoiding a likelihood of confusion or mistake as to source where use of the surname leads to such confusion or mistake”). See also Justin Industries, Inc. v. D.B. Rosenblatt, Inc., 213 USPQ 968, 976 (TTAB 1981) (“the right to use one’s name in his business may be circumscribed if it conflicts with a mark previously used by another and is likely to cause confusion 7 Applicant’s brief, p. 6. Ser No. 78770866 17 as to the origin of the business or of the goods sold thereunder”); Jack Winter Inc. v. Lancer of California, Inc., 183 USPQ 445, 446 (TTAB 1974) (DAVID WINTER for clothing is likely to cause confusion with JACK WINTER for clothing); Girard-Perregaux & Cie, S.A. v. Perregaux, 122 USPQ 95, 96 (Comm’r. Pats. 1959) (“Paul Perregaux” is likely to be confused with “Girard Perregaux” and “Perregaux”). Thus, the fact that ANGELINO is applicant’s name does not give him an unfettered right to use that name if it conflicts with a previously registered mark. Summary Weighing all of the evidence of record as it pertains to the relevant du Pont factors, we find that a likelihood of confusion exists. To the extent that any doubts might exist as to the correctness of this conclusion, we resolve such doubts, as we must, against applicant. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation