ER Marks, Inc.

Trademark Trial and Appeal Board

Aug 9, 2004

No. 76289638 (T.T.A.B. Aug. 9, 2004)

Hearing: Mailed: August 9, 2004
August 12, 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re ER Marks, Inc.
________
Serial No. 76289638
_______
Manny D. Pokotilow of Caesar, Rivise, Bernstein, Cohen &
Pokotilow, Ltd. for ER Marks, Inc.
Alex S. Keam, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______
Before Seeherman, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On July 24, 2001, ER Marks, Inc. (a Delaware
corporation) filed an application to register on the
Principal Register the mark shown below
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76289638
2
for “credit card services.” Applicant disclaimed the word
“card.” The application is based on applicant’s claimed
date of first use and first use in commerce of June 27,
1994.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used in connection with its
identified services, so resembles the registered mark shown
below
for “credit card services,”1 as to be likely to cause
confusion, mistake or deception.
When the refusal was made final, applicant appealed,
and briefs have been filed. An oral hearing was held on
August 12, 2003.2
1 Registration No. 2071555 issued June 17, 1997 on the Principal
Register to Quarles Petroleum, Inc.; Section 8 affidavit
accepted, Section 15 affidavit acknowledged. The word “card” is
disclaimed. The claimed date of first use and first use in
commerce is December 31, 1981.
2 Action on this application was suspended immediately after the
oral hearing in order to determine whether or not the cited
registration would be cancelled under Section 8(a) of the
Trademark Act, 15 U.S.C. §1058(a). The cited registration was
not cancelled, and the Board therefore resumed proceedings
herein.
Ser. No. 76289638
3
Applicant contends that the design and style elements
of applicant’s applied-for mark and the cited registrant’s
mark are “of important significance, create different
overall impressions and obviate any likelihood of
confusion” (brief, pp. 7-8); and that the marks, “in their
entireties, are sufficiently different to negate a
likelihood of confusion” (request for reconsideration, p.
2).
The Examining Attorney argues that applicant’s
applied-for mark and the cited registrant’s mark are highly
similar; that the stylized letter “Q” is the dominant
feature of each mark especially as the term “card” is
disclaimed by both applicant and the cited registrant; that
the marks are highly similar in sound and connotation, and
are similar in overall commercial impression, particularly
noting the recollection of the average purchaser; and that
consumers are likely to be confused in this case where the
marks are used in connection with identical services.
The question before the Board is whether applicant’s
mark is so similar to the cited registered mark that when
used in connection with the same services it will be likely
to cause confusion as to the source or origin of the
services under Section 2(d) of the Trademark Act.
Ser. No. 76289638
4
Our determination of likelihood of confusion is based
on an analysis of all of the facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Applicant’s services are legally identical (credit
card services) to the services in the cited registration.
Applicant did not argue to the contrary. Likewise
applicant did not argue, and we do not find, any
differences in the channels of trade or purchasers. We
must presume, given the identifications (neither of which
is limited), that the services are offered through the same
channels of trade to the same classes of purchasers. See
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Ser. No. 76289638
5
“When marks would appear on virtually identical goods
or services, the degree of similarity necessary to support
a conclusion of likely confusion declines.” Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Turning then to a
consideration of the involved marks, it is well settled
that marks must be considered in their entireties.
However, our primary reviewing Court has held that in
articulating reasons for reaching a conclusion on the
question of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature or
portion of a mark. That is, one feature of a mark may have
more significance than another. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845 (Fed. Cir.
2000); Sweats Fashions Inc. v. Pannill Knitting Co., 833
F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); and In re
National Data Corporation, 753 F.2d 1056, 224 USPQ 749, 752
(Fed. Cir. 1985).
Further, it is well settled that marks must be
considered in their entireties because the commercial
impression of a mark on an ordinary consumer is created by
the mark as a whole, not by its component parts. This
principle is based on the common sense observation that the
Ser. No. 76289638
6
overall impression is created by the purchaser’s cursory
reaction to a mark in the marketplace, not from a
meticulous comparison of it to others to assess possible
legal differences or similarities. See 3 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§23:41 (4th ed. 2001). See also, Puma-Sportschuhfabriken
Rudolf Dassler KG v. Roller Derby Skate Corporation, 206
USPQ 255 (TTAB 1980). That is, the proper test in
determining likelihood of confusion does not involve a
side-by-side comparison of the marks, but rather must be
based on the similarity of the general overall commercial
impressions engendered by the involved marks. Stated
another way, the test involves the recollection of the
average purchaser, who normally retains a general rather
than specific impression of the many trademarks
encountered; that is, a purchaser’s fallibility of memory
over a period of time must also be kept in mind. See
Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573 (CCPA 1973); and Spoons Restaurants
Inc. v. Morrison, Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d
unpub’d (Fed. Cir. June 5, 1992).
In this case, both applicant’s mark and registrant’s
mark include a stylized letter “Q,” followed by the
identical word “CARD.” Obviously, there are differences in
Ser. No. 76289638
7
the stylization of the letter “Q” in the two marks, and
applicant’s mark includes a rectangular outline with a line
bisecting the rectangle. However, these design elements do
not serve to distinguish the marks. The outside rectangle
in applicant’s mark has little, if any, trademark
significance. Generally, backgrounds consisting of common
geometric shapes such as a rectangle are not accorded
trademark significance because they are viewed as mere
“carriers” of the mark. See Seabrook Foods, Inc. v. Bar-
Well Foods Ltd., 568 F.2d 1342, 196 USPQ 289 (CCPA 1977);
and Guess? Inc. v. Nationwide Time Inc., 16 USPQ2d 1804
(TTAB 1990). To the extent that consumers would view the
rectangle and horizontal line in applicant’s mark as
indicating a credit card, they would regard the design as
descriptive of applicant’s credit card services.
As for the different depictions of the letter “Q” in
both marks, in the marketplace consumers are not going to
undertake an extensive analysis as to whether the two
versions of the letter “Q” in the two Q CARD marks indicate
different sources. Rather, anyone who is familiar with the
registrant’s Q CARD mark for credit card services is likely
to assume, upon seeing applicant’s mark used in connection
with the same services, that the latter mark is another
Ser. No. 76289638
8
version or variation of the former, with both identifying
services emanating from a single source.
When spoken the marks are identical. It has been held
that similarity in sound alone may be sufficient to support
a finding of likelihood of confusion. See Giant Food, Inc.
v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
395 (Fed. Cir. 1983); and Krim-Ko Corp. v. Coca-Cola Co.,
390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968).
Both marks are also identical as to connotation. They
both consist of the term “Q CARD.” The design element in
applicant’s mark does not change the connotation of the
mark; to the extent it is noted at all, it reinforces that
the services are credit card services.
We find that applicant’s mark and the cited
registrant’s mark are identical in sound and connotation,
and similar in appearance. We further find that they
create a highly similar commercial impression. See In re
Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994); and Ametek, Inc.
v. Acorn Structures, Inc., 167 USPQ 185, 191 (TTAB 1970).3
3 Applicant argues that the marks are “sufficiently different” to
negate a likelihood of confusion, relying on the case of In re
Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992).
However, in that case the word marks -- VARGA GIRL and VARGAS --
were different; here, the verbalized portions of the marks are
identical.
Ser. No. 76289638
9
Having reached these findings on the various du Pont
factors, we would normally conclude that confusion is
likely. However, this case presents another matter we must
address –- the effect, if any, of applicant’s ownership of
a prior registration. Applicant makes a number of
arguments in support of its position in this regard. In
particular, applicant argues that “there would be no
likelihood of confusion between the Applicant’s mark and
the registered mark because the similarity between the
marks is the word portion QCARD in which Applicant owns an
incontestable registration” (request for reconsideration,
p. 2);4 that applicant’s “previously-registered QCARD mark
and [its Q CARD and design] mark are legal equivalents –
the same mark for the same services” (brief, p. 6); that
the cited registrant’s mark covers only the mark as it
appears in special form; that applicant’s addition of a
design “to Applicant’s previously registered mark QCARD,
for the same services, will not create a likelihood of
confusion, where none previously existed” especially
because “the use by Applicant of Q CARD and design is the
4 Registration No. 1995906 issued August 20, 1996 to QVC, Inc.
(subsequently assigned to applicant, ER Marks, Inc.) on the
Principal Register for the mark QCARD for “credit card services”;
Section 8 affidavit accepted, Section 15 affidavit acknowledged.
The claimed date of first use and first use in commerce is June
27, 1994.
Ser. No. 76289638
10
legal equivalent of the use by Applicant of the mark QCARD,
for the same services” (request for reconsideration, p. 4);
that applicant’s ownership of an incontestable registration
for the typed mark QCARD “constitutes conclusive evidence
of Applicant’s exclusive right to use QCARD in commerce in
connection with credit card services, which, in turn, means
the right to exclude others from using QCARD or any other
mark whose use, on [credit card] services, would be likely
to cause confusion, mistake, or deception” (brief, p. 5);
and that because Applicant’s QCARD mark is incontestable
and is unrestricted as to stylization, “its exclusive right
to use the QCARD mark in connection with the credit card
services listed [in its registration] extends to the …
style and design set forth in [applicant’s current
application]” (brief, p. 6).
Finally, in its reply brief, applicant argues that it
is “highly prejudicial to the Applicant” (p. 1) to cite any
mark under Section 2(d) against applicant in view of its
ownership of an incontestable registration for the mark
QCARD; and that any suggestion of a “likelihood of
confusion as to the words QCARD for credit card services is
effectively a collateral attack on an incontestable
registration” (p. 2).
Ser. No. 76289638
11
The Examining Attorney points out that as to
applicant’s ownership of a prior registration, the cited
Registration No. 2071555 is entitled to the presumptions of
Section 7(b) of the Trademark Act; and that whether that
mark was properly registered over applicant’s prior
registration (No. 1995906) is not relevant as that question
is not before the Board.
We consider first applicant’s argument that because it
owns a registration for the mark QCARD in typed form it has
the right to exclusive use (and registration) of the mark
in the design form presented herein, essentially premised
on the theory that applicant’s typed mark and the new
composite mark are legal equivalents. First, we do not
agree with applicant that its registered mark QCARD and the
mark it now seeks to register as shown below
are legal equivalents. Although applicant’s current mark
includes the elements “Q” and “CARD,” the overall
presentation of the mark, with its design element and
separate appearance and stylization of the letter “Q,” is
Ser. No. 76289638
12
sufficiently different from “QCARD” (in typed format) that
they are not legal equivalents.
Applicant’s reliance on the majority opinion in the
inter partes case of American Security Bank v. American
Security and Trust Co., 571 F.2d 564, 197 USPQ 65 (CCPA
1978) is not persuasive of a different result herein. In
that case, the applicant used the mark AMERICAN SECURITY
for banking services beginning in 1900, and used the mark
AMERICAN SECURITY BANK as of 1973, while the opposer used
the mark AMERICAN SECURITY BANK as of 1935. In dismissing
the opposition, the Board found that applicant’s marks were
legal equivalents, giving applicant the right to tack on
its first use in 1900. The majority opinion of the Court,
in affirming the Board, found the marks to be legal
equivalents, and the Court explained that their decision
rested “on the ground that, weighing all the circumstances,
[applicant’s] rights are superior to those of [opposer].”
197 USPQ at 67.
In contrast thereto, in the ex parte case now before
us, applicant seeks to add not a generic word but a design,
and priority of use is not an issue in an ex parte case.
See In re Wilson, 57 USPQ2d 1863, footnote 9 (TTAB 2001).
That is, here the issue is not priority, rather it is the
statutory bar under Section 2(d) to registration of
Ser. No. 76289638
13
applicant’s mark. See American Paging Inc. v. American
Mobilphone Inc., 13 USPQ2d 2036 (TTAB 1989)(AMERICAN
MOBILPHONE PAGING and design and AMERICAN MOBILPHONE and
design held not legal equivalents); aff’d by majority
opinion, unpub’d but appearing at 923 F.2d 869, 17 USPQ2d
1726 (Fed. Cir. 1990).
Second, the fact that applicant has registered the
mark QCARD in typed form simply means that applicant is not
claiming rights in any particular style of lettering for
that mark. That is, the protection accorded to the
registration is not limited to a particular type of script.
See Trademark Rule 2.52(a). Applicant asserts that its
typed form registration of QCARD gives it the right to use
the mark in a variety of styles and, in essence, that it
has the right to register the mark in all such styles as
well. We do not agree with applicant’s position. Under
this logic, applicant, because of its ownership of a typed
form mark, would be entitled to register the mark in any
special form, even one which is likely to cause confusion
with another’s registered mark. Although applicant’s
registration of QCARD in typed form does not limit
applicant’s protection to a specific style of lettering, it
does not follow that applicant may register unlimited forms
of the mark QCARD (or Q CARD) regardless of the
Ser. No. 76289638
14
registrability questions that may be raised thereby. See
Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d 1376,
170 USPQ 35 (CCPA 1971).
We turn then to applicant’s point that its prior
registration is incontestable, and this incontestability
constitutes conclusive evidence of applicant’s right to use
QCARD in commerce with credit card services.5 The mere fact
that a registration owned by the applicant is incontestable
pursuant to Section 15 of the Trademark Act, 15 U.S.C.
§1065, has no effect on the question of registrability (as
distinguished from use) of a mark. See In re Save Venice
New York Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1782 (Fed.
Cir. 2001); and In re Best Software Inc., 63 USPQ2d 1109,
1112 (TTAB 2002).
Finally, we consider applicant’s argument that the
Examining Attorney’s refusal to register applicant’s mark
based on Section 2(d) of the Trademark Act constitutes a
collateral attack on applicant’s prior registration. In
support of this argument applicant cites In re American
Sail Training Association, 230 USPQ 879 (TTAB 1986). In
the cited case, the applicant owned a registration on the
Principal Register for the mark TALL SHIPS for “organizing,
5 We note that the cited registration is also incontestable.
Ser. No. 76289638
15
arranging and sponsoring sailing races,” and it then
applied to register the mark RETURN OF THE TALL SHIPS for
identical services. The Examining Attorney required a
disclaimer of the words “TALL SHIPS” on the basis that
those words were merely descriptive of applicant’s
services. The Board held that because the prior
registration for the mark TALL SHIPS could not be
challenged on the ground that it is merely descriptive, the
Examining Attorney could not require a disclaimer of “TALL
SHIPS” on the same basis.
We view the circumstances of the case cited by
applicant, In re American Sail, supra, as unique and
limited. In other cases, the Board has affirmed refusals
to register based on mere descriptiveness (or other
refusals under Section 2(e) of the Trademark Act) despite
applicant’s ownership of a prior registration. See In re
Best Software Inc., 63 USPQ2d 1109 (TTAB 2002); In re Best
Software Inc., 58 USPQ2d 1314 (TTAB 2001); In re
BankAmerica Corporation, 231 USPQ 873 (TTAB 1986); and In
re Merrill Lynch, 230 USPQ 128 (TTAB 1986), reversed and
remanded on other grounds, 828 F.2d 1567, 4 USPQ2d 1141
(Fed. Cir. 1987).
In the Merrill Lynch case, 4 USPQ2d at 1142, the Court
of Appeals for the Federal Circuit stated the following:
Ser. No. 76289638
16
Appellant’s argument that refusal of a
broader registration is comparable to
an attack on an existing registration
is unsupported by law or precedent.
The Board correctly held that
appellant’s incontestable registration
for specific services involving credit
cards does not automatically entitle
appellant to a registration for broader
financial services.
In the case now before us, although the services in
applicant’s prior registration are identical to those in
applicant’s present application, the mark in the prior
registration and the composite mark which applicant now
seeks to register are not identical and are not legal
equivalents.
We do not regard the refusal to register the
application now before us as an attack on applicant’s prior
Registration No. 1995906. The Examining Attorney has
refused registration under Section 2(d) of the Trademark
Act. He has not taken the position that applicant’s
applied-for mark, in whole or in part, is merely
descriptive or misdescriptive, nor has he suggested in any
way that applicant’s prior registration issued improperly.6
It is the Examining Attorney’s duty to examine each
pending application before him or her and to determine
6 Regardless of the outcome of this appeal, applicant’s prior
registration will remain on the register.
Ser. No. 76289638
17
whether the applied-for mark is registrable under the
Trademark Act. See In re Dixie Restaurants, 41 USPQ2d at
1535. Here, the Examining Attorney, in reviewing existing
registrations, refused registration to applicant pursuant
to Section 2(d) of the Trademark Act based on the cited
registration.
To the extent applicant is arguing that the USPTO
should not have allowed the registration for the cited Q
CARD and design mark to issue in view of the existence of
applicant’s registration for QCARD in typed form, we can
make no comment on the Office’s actions in that matter,
because the registrability of the cited registration is not
before us. We must therefore accord the presumptions of
Section 7(b) to the cited registration.7
7 Informationally, it is interesting to note that during the ex
parte prosecution of the subject application, applicant
petitioned to cancel the cited registration (Cancellation No.
92040925), but applicant (as petitioner) withdrew the petition to
cancel prior to answer being filed by respondent therein.
Applicant may have taken this action because it recognized that
the ground of priority and likelihood of confusion -- upon which
the petition was based -- was not available, as the cited
registration was more than five years old. See Section 14(1) of
the Trademark Act, 15 U.S.C. §1064(1). Or applicant may have
noted that the claimed date of first use in the cited
registration (December 31, 1981) was prior to the claimed date of
first use in applicant’s registration (June 27, 1994). While
dates of first use require proof, applicant may have concluded
that it could not have established priority. Thus, the fact that
the cited registration has earlier claimed dates of first use can
lead to speculation as to what might have happened if the Office
had cited applicant’s registration against the registrant’s
application during the examination stage for the latter. For
example, the registrant might have brought a cancellation action
Ser. No. 76289638
18
In any event, the question of likelihood of confusion
of the marks shown in applicant’s registration vis-a-vis
the cited registrant’s registration is a different issue
from the likelihood of confusion of the marks presented in
applicant’s application vis-a-vis the cited registrant’s
registration. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564 (Fed. Cir. 2001).
In balancing all probative facts in evidence under the
guidance of the du Pont case, we find that there is a
likelihood of confusion between applicant’s applied-for
mark and the cited registered mark, both used on identical
services.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.
at that point against applicant’s registration, asserting
registrant’s priority over applicant.