Gothic Dog, Inc.Download PDFTrademark Trial and Appeal BoardJun 21, 2010No. 77195065 (T.T.A.B. Jun. 21, 2010) Copy Citation Mailed: June 21, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Gothic Dog, Inc. ________ Serial No. 77195065 _______ Daniel C. DeCarlo and Josephine Brosas of Lewis Brisbois Bisgaard & Smith LLP for Gothic Dog, Inc. Marc J. Leipzig, Trademark Examining Attorney, Law Office 115 (Tomas V. Vlcek, Managing Attorney). _______ Before Quinn, Grendel and Zervas, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Gothic Dog, Inc. has filed an application to register GOTHIC DOG (in standard character form) on the Principal Register for goods now identified as “pet jewelry” in International Class 14.1 Applicant filed its application under the intent to use provisions of the Trademark Act, 1 Application Serial No. 77195065, filed June 1, 2007. Lest there be any doubt, we construe “pet jewelry” to mean jewelry to be worn by pets and not jewelry for humans with designs in the form of pets, such as dogs and cats. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Ser No. 77195065 2 see 15 U.S.C. § 1051(b), and later filed an amendment to allege use. The examining attorney initially did not accept the amendment to allege use in view of the submitted specimen of use; in his final Office action, however, the examining attorney withdrew his requirement for a substitute specimen. The Office’s electronic record for the present application does not reflect that the examining attorney accepted the amendment to allege use. The examining attorney finally refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that applicant's designation, as applied to applicant's goods, is merely descriptive of such goods. Additionally, the examining attorney finally refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant's designation so resembles two previously registered marks that, as used on applicant’s identified goods, applicant's mark is likely to cause confusion or mistake or to deceive. The first registered mark is (Registration No. 0355644, fourth renewal on February 25, 2008) for “finger rings”; and the second mark is GOTHIC in Ser No. 77195065 3 standard character form (Registration No. 2207852, first renewal on October 18, 2002) for “jewelry.” While the latter registration was registered pursuant to Section 2(f) of the Trademark Act, the former registration was not. One entity is the owner of record of both registrations. Applicant has appealed the final refusal of its application. In the paragraphs that follow, we first consider the Section 2(e)(1) refusal and then consider the Section 2(d) refusal. Both refusals to register are affirmed. Section 2(e)(1) – Mere Descriptiveness “A mark is merely descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or characteristics of’ the goods or services related to the mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538 (1920). See also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir. 2003). The test for determining whether a mark is merely descriptive is whether it immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Engineering Systems Corp., 2 USPQ2d 1075 Ser No. 77195065 4 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single, significant quality, feature, etc. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). Further, it is well- established that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used, and the impact that it is likely to make on the average purchaser of such goods or services. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). The examining attorney relies on the following to support his contention that “gothic” is descriptive of a type or style of jewelry, and that GOTHIC DOG merely describes a feature of applicant’s goods, namely, that “applicant provides gothic-styled jewelry for pets, including dogs”: 1. definitions from The American Heritage Dictionary of the English Language, 4th ed. (2000), for dog and “Gothic” (“often gothic[;] Of or relating to a style of Ser No. 77195065 5 fiction that emphasizes the grotesque, mysterious, and desolate”); 2. applicant’s statement in its response to the first Office action that “The Applicant provides a variety of jewelry designed for pets and not necessarily ‘gothic’ jewelry, although some of the designs could be considered as ‘gothic’ in style”; and 3. webpages submitted with the first and final Office actions, including: • Eyescream Gothic Jewelry is the home to Original designs … such as … Gothic Vampire Jewelry, Bat Headchains, … as well as our signature wired & encrusted Gothic Bat designs. Eyescream.com • Welcome to Ladyhawk’s Treasures! Your number one international New Age shop offering Wicca supplies, occult and witchcraft supplies, pagan jewelry, Wiccan jewelry … gothic jewelry, and Celtic jewelry. Ladyhawkstreasures.com • From here you can peruse our entire collection of gothic jewelry, including necklaces, pendants, bracelets and rings. We have all manner of gothic-themed jewelry, such as crosses, skulls, coffins, demons and bats.2 Dragonweave.com • GothicAsylum is a big collection of goth clothes, gothic jewelry, … makeup, boots …. Gothicasylum.com, accessed • Hollywood Gothique Store 2 This website also has links to “Gothic Pendants and Charms,” “Gothic Bracelets and Slave Bracelets,” “Gothic Rings” and “Gothic Earrings Ser No. 77195065 6 Gothic Jewelry Check out this selection of Halloween-themed jewelry and accessories … or find Gothic jewelry in the subcategories on the right Amazon.com/hollywoodgoth • Professionally Hand Crafted Victorian Gothic Style Jewelry & Costume Accessories artofadornment.ca • GothicPLUS features all things gothic & renaissance inspired including fashions, shoes, & boots, gothic jewelry, home décor and more! Gothicplus.com • Gothic necklaces and pendants designs are no less than 925 sterling silver. (showing “gothic cross” and “Gothic bat cross” and “Flaming skull” necklace.) Giveagemstone.com • What girl wouldn’t love receiving a pair of coffin earrings absolutely to die for available in her birthstone …? Looking for something a little different, our inspiring collection of Gothic jewelry De La Dead is affordably priced and adds a touch of exotic Gothic charms with a twist. Bluelips.com The record also includes the following evidence submitted by applicant: 1. An online article submitted by applicant with its response to the first Office action from “Trendhunter Magazine” (accessed at trendhunter.com) which emphasizes the “gothic” aspect of applicant’s goods: Goth Dog Collar – Give Your Anti-Social Pup Some Status Finally, canine luxury with some bite! Forget the other cutsie collars, this one is made for Ser No. 77195065 7 the goth dog. Rage against the man! It’s embellished with a few diamonds and sapphires with sterling silver or 14 K gold, which makes sure the owners isn’t [sic] deemed a sell out. “Gothic Dog is the new line of luxury diamond jewelry line designed exclusively for your darling four-legged friends. Whatever you can ask for … be it a dog collar or necklaces, they are made to cope up [sic] with your status and style,” Luxury Launches explained. Goth can be beautiful and cutting edge, dude. 2. applicant’s home webpage which depicts a dog and jewelry, and includes the phrase “A Girl’s Best Friend for Man’s Best Friend,” with Man’s Best Friend” being a reference to a dog: 3. one of applicant’s webpages which offers the following goods for sale: Ser No. 77195065 8 We find that the record demonstrates that GOTHIC DOG is merely descriptive of “pet jewelry.” The evidence establishes that, today, there is a style of jewelry identified as “gothic,”3 and it has not escaped our attention that some websites promoting gothic jewelry offer the same skull-and-crossbones and cross designs depicted on applicant's website. See, e.g., webpage from yahoo.com offering “Gothic Style Silver Skull Pendant,” “Lladro Gothic Cross Gold Pendant” and “Gothic Cross Navel Jewelry,” submitted with final Office action. DOG in applicant’s designation identifies, of course, those animals which are to wear applicant’s pet jewelry, and applicant promotes its goods as intended for dogs. GOTHIC 3 We are not troubled by the fact that the dictionary definitions of record do not specifically refer to a “gothic” style of jewelry. The dictionary definition quoted earlier in this opinion broadly defines “gothic” as “of or relating to a style of fiction that emphasizes the grotesque, mysterious, and desolate”,” and the macabre subject matter of applicant’s skull- and-crossbones designs fits within this definition. Ser No. 77195065 9 DOG is simply a combination of two merely descriptive terms, indicating the style of pet jewelry and the animal for which the jewelry is intended, i.e., dogs, which are a subset of “pets.” In concluding that applicant's mark is merely descriptive, we have considered applicant's argument that GOTHIC DOG does not immediately describe – without conjecture or speculation – a significant feature or characteristic of applicant’s goods. Applicant reasons that “Applicant does not provide jewelry in the form or shape of a ‘gothic dog,” and “no ‘gothic dog’ or gothic- styled dog’ is featured on any of Applicant’s jewelry.”4 Additionally, applicant points out that there are several definitions of “gothic,” none of which relates to “pet jewelry”; and that there is nothing in the definition of “dog” which suggests any relationship to “pet jewelry.” Applicant adds that “by invoking ‘gothic-styled jewelry for dogs’ into Applicant's identification of goods, the Examining Attorney has improperly made the argument for descriptiveness more plausible.”5 We disagree that the mark does not identify a significant feature of applicant’s identified goods, or 4 Brief at 4. 5 Id. Ser No. 77195065 10 that conjecture or speculation is needed to arrive at the meaning of the mark advocated by the examining attorney. As evidenced by the webpages of record which prominently identify different styles of jewelry, the style of jewelry is a significant feature of the goods. Additionally, the fact that particular goods of applicant’s are intended for dogs is significant; consumers generally shop for goods specific to the type of pet. A consumer of pet jewelry for, e.g., cats, would not ordinarily consider pet jewelry intended for dogs, and there is nothing in applicant’s webpages of record indicating that applicant’s crosses and skull-and-crossbones designs are intended to be worn by a variety of animals including cats, rabbits, gerbils, fish or other pets. Applicant’s argument premising mere descriptiveness on whether its jewelry takes the form or shape of a “gothic dog” or whether a “‘gothic dog’ or gothic-styled dog’ is featured on any of Applicant’s jewelry,” and complaint that “by invoking ‘gothic-styled jewelry for dogs’ into Applicant's identification of goods, the Examining Attorney has improperly made the argument for descriptiveness more plausible” are not persuasive. Rather than define the term as some sort of dog, consumers would likely consider applicant’s designation as a combination of terms Ser No. 77195065 11 identifying the style of jewelry and the animal for which the jewelry is intended, and applicant’s identified goods encompass gothic-styled jewelry for dogs. Additionally, to the extent that applicant contends that a dictionary definition for “gothic” or “dog” must refer to pet jewelry in order for the designation to be merely descriptive,6 applicant simply is wrong. A dictionary definition need not refer to the goods directly in order for a mark to be merely descriptive or those goods. We also have considered – but are not persuaded by - applicant’s argument that GOTHIC DOG is a combination mark; that the “ultimate issue is the overall commercial impression that the composite mark as a whole creates on the average reasonably prudent buyer”; and that GOTHIC DOG creates a commercial impression separate and apart from its components, namely, it “suggests a ‘gothic’ dog (i.e., describing the dog, and not the jewelry, as being “gothic”), rather than ‘gothic jewelry.’” (emphasis in original.) Brief at 7. It is true that a term which is created by combining two or more unregistrable words may achieve registration 6 See p. 5 of applicant’s brief; “Nothing in this dictionary definition (or even in the definition provided by the Examining Attorney) suggests that it relates to ‘pet jewelry’”; and “nothing in this definition [of dog] suggests any relationship to jewelry.” Ser No. 77195065 12 if, in combination, a new and different commercial impression is achieved and/or the term so created imparts a bizarre or incongruous meaning as used in connection with the goods or services. See In re Oppedahl & Larson LLP, supra; In re National Shooting Sports Foundation, 219 USPQ 1018 (TTAB 1983). However, this is not the case here. No new and different commercial impression is achieved by the combination of GOTHIC and DOG.7 GOTHIC DOG is merely the sum of two merely descriptive components and is equally merely descriptive in connection with applicant's identified goods. The exercise of imagination or thought is not required for prospective consumers of applicant's goods to perceive readily the merely descriptive significance of GOTHIC DOG as it pertains to applicant's goods. The term GOTHIC DOG immediately describes, without conjecture or speculation, a feature or characteristic of applicant's goods, namely, that applicant's goods include jewelry for dogs that are of a gothic design. Finally, applicant states that to the extent that there is any uncertainty or doubt as to whether the mark is merely descriptive or suggestive, it must be resolved in 7 Even if a consumer would consider a “gothic dog” as identifying a dog wearing the gothic skull-and-crossbones jewelry, akin to a teenager wearing all black “goth clothing” (a “goth girl”), GOTHIC DOG would be merely descriptive of a result achieved in wearing applicant’s goods. Ser No. 77195065 13 favor of the applicant. We do not have any doubts regarding our conclusion on the issue of mere descriptiveness. Section 2(d) – likelihood of confusion Our determination of the examining attorney's refusal to register the mark under Section 2(d) of the Trademark Act 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. 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). We first address one preliminary point. Both of the cited registrations are for the mark GOTHIC, with one mark in stylized form. As we stated in our discussion regarding the examining attorney’s Section 2(e)(1) refusal, GOTHIC DOG has a descriptive connotation for pet jewelry. However, because we must accord the cited registration the Ser No. 77195065 14 presumptions of Section 7(b) of the Trademark Act, for purposes of our likelihood of confusion analysis, we consider the cited marks to be a highly suggestive, rather than a merely descriptive term. While the registrations are entitled to a very limited scope of protection due to the highly suggestive nature of the marks, they are still entitled to some protection. Turning now to the du Pont factor regarding the similarities of the marks, we must compare the marks in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under this 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 services 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). Ser No. 77195065 15 Applicant’s mark differs from the cited marks only by the addition of the term DOG.8 Applicant and the examining attorney differ on the weight to be given to this element of applicant’s mark, with applicant advocating that DOG should be accorded more weight than GOTHIC. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) (“… in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”). In our consideration of the mark as a whole, we accord less weight to DOG than to GOTHIC. Applicant’s webpage prominently features an image of a dog; the webpage speaks only of dogs as animals which would wear applicant’s goods; and applicant prominently promotes its goods as “A Girl’s Best Friend for Man’s Best Friend.” (as previously noted, “Man’s best friend” is clearly a reference to a dog.) DOG in applicant’s designation 8 The stylization of registrant's GOTHIC mark is minor, and applicant’s designation is in standard character form, which if registered would give applicant rights to display its mark in all reasonable manners of display, including in the same arrangement of letters and lettering style as set forth in the registered stylized mark. See Proquest Information and Learning Co. v. Island, 83 USPQ2d 1351 (TTAB 2007). Ser No. 77195065 16 functions to identify the animal that is to wear applicant’s pet jewelry and at best is a highly descriptive term. GOTHIC, on the other hand, is the first word in applicant’s designation; the initial term in a mark is more likely to be impressed on purchasers and remembered. Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895 (TTAB 1988). GOTHIC is also the more impressionable term in the designation and more likely to be remembered by purchasers of applicant’s goods. As between GOTHIC and DOG, DOG functions far less as a source indicator than GOTHIC. Thus, GOTHIC is the dominant term in applicant’s designation, and it is identical to the cited registered marks. Because the dominant term in applicant’s designation is identical to the cited registered marks, and because GOTHIC is the first term in applicant’s designation, we find GOTHIC and GOTHIC DOG to be similar in appearance and sound. As for the meaning of the marks, because DOG is at best a highly descriptive term in the context of pet jewelry, the addition of DOG to GOTHIC does not significantly or sufficiently change the meaning of applicant's designation from registrant’s marks. GOTHIC DOG is also similar in commercial impression to GOTHIC in view of the highly descriptive nature of DOG. Thus, we Ser No. 77195065 17 find the marks to be similar and resolve the du Pont factor regarding the marks against applicant. Next, we consider the du Pont factor regarding the similarities of the goods. It is well settled that to support a finding of likelihood of confusion, it is sufficient that the goods be related in some manner or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of the goods or services. See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).9 The cited registration for the standard character mark recites “jewelry,” the cited registration for the stylized mark recites “finger rings,” and applicant’s goods are “pet jewelry.” The examining attorney has submitted webpages which show pet jewelry offered for sale on the same 9 Under this standard, applicant's argument at p. 16 of its brief that “pet jewelry” and “finger rings” are non-competitive is unhelpful to applicant. Neither is applicant’s reliance on In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984). The Board in that case found no likelihood of confusion because of the different connotations of the marks in connection with the different goods. Ser No. 77195065 18 webpages as jewelry, i.e., jewelry for humans. These webpages establish that pet jewelry and jewelry are marketed in such a manner that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same producer or there is an association between the producers of the goods. Additionally, the examining attorney has submitted third- party registrations which list pet jewelry and other kinds of jewelry, including finger rings, under one mark. “Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may nevertheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source.”10 In re Mucky Duck Mustard Co., 6 USPQ2d 10 At p. 17 of its brief, applicant states that “it has been held that ‘in the absence of any evidence showing the extent of use of any of such marks or whether any of them are now in use, they [provide no basis for] saying that the marks so registered have had, or may have, any effect at all on the public mind so as to have a bearing on likelihood of confusion,’” citing Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973). (Emphasis in original.) The registrations are not being submitted by the examining attorney to show whether the marks Ser No. 77195065 19 1467, 1470 n.6 (TTAB 1988), aff'd, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). In view of this evidence, the examining attorney has established that “pet jewelry” on one hand, and “jewelry” and “finger rings” on the other hand, are related. Conditions of Sale Applicant has also made arguments regarding the high pricing of registrant’s and applicant's goods and maintains that purchases of such goods would not be made on impulse but rather on careful consideration. Because there are no restrictions or limitations in the descriptions of goods, we must consider all potential consumers of applicant's and registrant's goods in all potential price ranges. In other words, we must consider the goods to include inexpensive products that may be purchased by nondiscerning customers. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (average ordinary wine consumer must be considered in determining source confusion). And, when products are inexpensive and subject to impulse buying, the risk of consumer confusion increases because purchasers are held to which are the subject of the third-party registrations had any effect on the public mind. Rather, the examining attorney offered the registrations to show that the goods are of a type that may emanate from a single source. Ser No. 77195065 20 a lesser standard of purchasing care. See Recot, Inc. v. M.C. Becton, 214 F.3d 1332, 54 USPQ2d 1894 (Fed. Cir. 2000). Under such circumstances, the addition of the highly descriptive term DOG to GOTHIC certainly does not serve to mitigate any likelihood of confusion. Here, applicant’s designation incorporates the entirety of registrant's marks and is distinguished only by the addition of the highly descriptive word DOG in applicant’s mark. Applicant thus has added a highly descriptive term to the term GOTHIC, and uses the combination on related goods. Even according the cited registrations the limited protection to which they are entitled, such protection still extends to prevent the registration of GOTHIC DOG. Simply put, the additional descriptive term DOG does not suffice to distinguish the marks on these related goods. In view of the foregoing, we conclude that consumers familiar with registrant’s jewelry and finger rings offered under the mark GOTHIC would be likely to believe, upon encountering applicant's designation GOTHIC DOG for “pet jewelry,” and particularly, as applicant’s website promotes, jewelry for dogs, that they originate with the same entity. Ser No. 77195065 21 Decision: The refusal of registration under Section 2(d) of the Act is affirmed. The refusal of registration under Section 2(e)(1) of the Act also is affirmed. Copy with citationCopy as parenthetical citation