Atico Int’l. USA Inc.

Trademark Trial and Appeal Board

Mar 12, 2003

No. 76323759 (T.T.A.B. Mar. 12, 2003)

Mailed: 12 MAR 2003
Paper No. 9
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Atico International USA Inc.
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Serial No. 76/323,759
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Peter T. Cobrin of Gibbons, Del Deo, Dolan, Griffinger &
Vecchione for Atico International USA Inc.
Steven W. Jackson, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______
Before Hohein, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On October 10, 2001, Atico International USA Inc.
(applicant) filed an application to register the mark BRAIN
STORMS (in typed form) on the Principal Register for goods
identified as an “electric novelty lamp” in International
Class 11.1
1 Serial No. 76/323,759. The application is based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76/323,759
2
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of prior registrations for
the mark BRAINSTORMS, one in typed form,2 and the other with
the design shown below.3
Both registrations are for the virtually identical
services of “retail stores and mail order catalog services
featuring novelty items4 and toys” in International Class
35.
When the refusal was made final, applicant filed this
appeal.
The examining attorney argues that “[w]ith regard to
the cited typed mark, the only difference is the space
between the first word and the second.” Brief at 4. In
the registration that also contained a design, the
examining attorney determined that the design did “not
2 Registration No. 2,344,269, issued April 25, 2000.
3 Registration No. 2,344,268, issued April 25, 2000.
4 Registration No. 2,344,269 omits the word “items” in the
identification of services. This is apparently a typographical
error.
Ser No. 76/323,759
3
obviate the similarity between the marks.” Id. The
examining attorney found that the “marks share the same
basic meaning and project an identical commercial
impression.” Id. Regarding the services and goods, the
examining attorney found that the “goods of the applicant’s
type would likely be marketed through retail and mail order
services.” Brief at 6. The examining attorney also
included copies of registrations to show that various
services sell lamps, toys, and/or novelty items. The
examining attorney concluded that “there is a likelihood of
confusion with Registration Numbers 2,344,268 and
2,344,269.” Brief at 7.
In response, applicant argues that the examining
attorney’s evidence is “worthless” and “there is no
evidence that registrant sells goods through its
BRAINSTORMS retail stores or catalogs under the brand name
BRAINSTORMS. That a BRAINSTORMS store may sell novelty
lamps does not establish that it sells that lamp under a
BRAINSTORMS brand.” Brief at 4. In addition, applicant
maintains that the “Examining Attorney proffered no
marketplace analysis of the competing marks.” Brief at 9.
Finally, applicant accuses the examining attorney of
applying an incorrect likelihood of confusion standard. As
Ser No. 76/323,759
4
a result, applicant seeks reversal of the refusal to
register.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he fundamental inquiry mandated by § 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We first look at the similarities and dissimilarities
of the marks in the application and registrations. The
word marks are virtually identical, BRAIN STORMS and
BRAINSTORMS. Obviously, the marks would be pronounced
identically and they would have the same meaning and
commercial impression. The absence of the space does not
significantly change the appearance of the marks.
Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52,
54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed.
Ser No. 76/323,759
5
Cir. 1984) (“There is no question that the marks of the
parties [STOCKPOT and STOCK POT] are confusingly similar.
The word marks are phonetically identical and visually
almost identical”); In re Best Western Family Steak House,
Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little
doubt that the marks [BEEFMASTER and BEEF MASTER] are
practically identical”). Even the registrant’s addition of
a light bulb design in one registration does not
significantly change the mark because the term
“Brainstorms” is still prominently featured and it would be
the term customers would use to identify the services. See
In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997) (Federal Circuit held that, despite
the addition of the words “The” and “Cafe” and a diamond-
shaped design to registrant’s DELTA mark, there still was a
likelihood of confusion). See also In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir.
1988) (BIGG’S (stylized) for grocery and general
merchandise store services found likely to be confused with
BIGGS and design for furniture); Wella Corp. v. California
Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT and surfer design likely to be confused
with CONCEPT for hair care products). Here, the virtually
identical nature of the word portion of the marks is a
Ser No. 76/323,759
6
significant factor in our likelihood of confusion analysis.
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688
(Fed. Cir. 1993) (“Without a doubt the word portion of the
two marks are identical, have the same connotation, and
give the same commercial impression. The identity of the
words, connotation, and commercial impression weighs
heavily against the applicant”).
Regarding the goods and services, applicant argues
that “[t]here is no sufficient relationship between Atico’s
goods and registrant’s services.” We note that applicant
proposes to use its mark for goods identified as an
“electric novelty lamp” and registrant’s services include
retail store and mail order services featuring novelty
items. The question is whether prospective purchasers
would be confused when virtually identical marks are used
on these goods and services. It is sufficient that the
goods and services are related in some manner, or that the
circumstances of marketing are such that the branded goods
or services are likely to be encountered by persons who
would assume some relation or that they emanate from the
same source. See, e.g., In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In
Ser No. 76/323,759
7
re International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978).
The question then is whether consumers would believe
that there is some relationship between the source of the
novelty item and the source of the retail store and catalog
services featuring novelty items. The Federal Circuit
faced a similar question in a case involving the mark
“bigg’s” (stylized) for “retail grocery and general
merchandise store services” and BIGGS and design for
furniture.
The only aspect of this case which is unusual is that
the marks sought to be registered are for services
while the prior registration on which their
registration is refused is for wares. Considering the
facts (a) that trademarks for goods find their
principal use in connection with selling the goods and
(b) that the applicant's services are general
merchandising -- that is to say selling -- services,
we find this aspect of the case to be of little or no
legal significance.
Hyper Shoppes, 6 USPQ2d at 1026.
In this case, the connection between the services of
registrant and the goods of applicant is even more direct
because registrant’s services involve the retail sale of
the same type of goods as applicant, as opposed to the
stores in the Hyper Shoppes case, that sold a wide variety
of merchandise. We agree with the examining attorney’s
determination that “applicant’s goods and registrant’s
Ser No. 76/323,759
8
services are closely related because the goods of the
applicant’s type would often be sold in connection with
services of the registrant’s type. Specifically, retail
stores featuring novelty items commonly sell novelty lamps.
In fact, ‘novelty lamps’ are within the scope of the plain
meaning of ‘novelty’ items.” Brief at 4. Consumers would
assume that there is some association or relationship
between these goods and services. In addition, the
potential customers of applicant and registrant would
overlap to the extent that purchasers of novelty lamps at
retail would use retail store services or its mail order
equivalent. Schieffelin & Co. v. Molson Companies Ltd., 9
USPQ2d 2069, 2073 (TTAB 1989) (“[M]oreover, since there are
no restrictions with respect to channels of trade in either
applicant's application or opposer's registrations, we must
assume that the respective products travel in all normal
channels of trade for those alcoholic beverages”).
In response to the points raised by applicant, we note
that the fact that the examining attorney has “specifically
proffered no evidence of any company including the name
BRAINSTORMS selling any product under an identical or
highly similar brand name” (Brief at 7) is simply not
necessary to support a finding that the goods and services
are related. There is no requirement that the examining
Ser No. 76/323,759
9
attorney show that registrant is also using the cited mark
on goods that are similar to applicant’s. It is
sufficient, as discussed above, to show that potential
customer would likely believe that there is some
association or relationship between the goods and services.
Applicant also maintains that the examining attorney’s
evidence is “worthless.” Brief at 4. Again, the
identifications of the goods and services themselves, on
which we must rely in determining whether there is a
likelihood of confusion, demonstrate the relationship
between a novelty item and retail services selling novelty
items. Nothing in the record contradicts this
relationship. To the extent that the examining attorney
has submitted additional evidence, it does show not only
that businesses sell novelty items in general but also
specifically lamps. See www.zowies.com and webwatchdog.
Although as indicated above, the best indication of the
relationship between applicant’s goods and registrant’s
services is the fact that both the goods and services
involve novelty items. The fact that one involves goods
and the other services was held by the Federal Circuit “to
be of little or no legal significance.” Hyper Shoppes, 6
USPQ2d at 1026.
Ser No. 76/323,759
10
Applicant has referred to other registrations not of
record in its reply brief. We do not consider new evidence
submitted with appeal briefs. 37 CFR 2.142(d).
Furthermore, references to registrations without submitting
actual copies of the registrations are not proper evidence.
In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB
1983)(“[W]e do not consider a copy of a search report to be
credible evidence of the existence of the registrations and
the uses listed therein”). In addition, even if these
registrations were properly of record, “the third party
registrations relied upon by applicant cannot justify the
registration of another confusingly similar mark." In re
J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987),
quoting Plus Products v. Star-Kist Foods, Inc., 220 USPQ
541, 544 (TTAB 1983).
Lastly, we address applicant’s argument that the
examining attorney applied the wrong standard in this case.
Applicant accuses the examining attorney of applying a
“could be confused” standard, which it submits “is
tantamount to the repeatedly rejected ‘possibility of
confusion’ standard.” Brief at 8. However, applicant
itself states that the examining attorney in the first
Office action “refused registration under 15 U.S.C.
§ 1052(d) on the basis that the proposed mark BRAIN STORMS,
Ser No. 76/323,759
11
when used in connection with the intended goods, ‘so
resembles the mark shown in U.S. Registration Nos. 2234268
and 2344269 as to be likely … to cause confusion, or to
cause mistake, or to deceive.’” Applicant’s Brief at 1-2.
Applicant also stated that the examining attorney
maintained this refusal to register. Brief at 3. In his
appeal brief, the examining attorney maintained that “it is
therefore reasonable to believe that the general public
would likely assume that the origin of the novelty items
and the services are the same. Thus considering the record
as a whole, the likelihood of confusion in this case should
be deemed substantial. The refusal to register should be
affirmed.” Brief at 7.
It is clear that the application in this case was
refused registration on the ground that there is a
likelihood of confusion and not a possibility of confusion.
To the extent that there is any confusion about this issue,
we emphasize that applicant’s mark is refused registration
on the ground that if applicant used the mark on its goods,
there would be a likelihood of confusion with registrant’s
marks for the identified services.5
5 The language that applicant refers to as indicating a
possibility of confusion may have resulted from the examining
attorney addressing the likelihood of confusion issue with a mark
that had not been used in commerce.
Ser No. 76/323,759
12
Decision: The Examining Attorney’s refusal to
register applicant’s mark for an “electric novelty lamp” on
the ground that it is likely to cause confusion with the
cited registered marks used in connection with the
identified services under Section 2(d) of the Trademark Act
is affirmed.