86716997 (T.T.A.B. Feb. 14, 2020)

Inception Fertility Ventures, LLC

Trademark Trial and Appeal BoardFeb 14, 2020

86716997 (T.T.A.B. Feb. 14, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: February 14, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Inception Fertility Ventures, LLC _____ Serial No. 86716997 _____ Mark H. Miller of Jackson Walker LLP, for Inception Fertility Ventures, LLC. Tina L. Snapp, Trademark Examining Attorney, Law Office 116, Christine Cooper, Managing Attorney. _____ Before Mermelstein, Wolfson, and Dunn, Administrative Trademark Judges. Opinion by Dunn, Administrative Trademark Judge: Inception Fertility Ventures, LLC (“Applicant”) seeks registration on the Principal Register of the mark INSIGHT PHARMACY (in standard characters, PHARMACY disclaimed) for Retail pharmacy services, in International Class 35.1 1 Application Serial No. 86716997 filed on August 6, 2015, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. Serial No. 86716997 - 2 - The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied to the services identified in the application, so resembles the mark INSIGHT in stylized form (as shown below) registered for the listed services (emphasis added)2 on the Principal Register as to be likely to cause confusion, to cause mistake, or to deceive. Business consultancy, advertising services, advertising services on the Internet, advertising and publicity services provided via television, radio or mail, all related to hair care and hair care products and services; presentation of goods and services of others on the Internet of hair preparations, hair care preparations, oil baths for hair care, hair conditioners, hair wax, hair dyes, cosmetics for hair, hair creams, bleaches for use on the hair, bleaching preparations for the hair, hair emollients, gels for use on the hair, hair moisturisers, hair lacquer, hair permanent wave kit, hair lotions, hair glosses, hair mascara, oils and hair pomades, hair treatment preparations, preparations for styling, colouring and waving the hair, preparations for care and styling of the hair, hair conditioners, hair care cosmetics, hair neutralisers, preparations for colouring the hair, preparations for decolouring and removing dye from the hair, hair cleaning preparations, hair glossers, relaxers and lightening preparations for the hair, hair mousses, shampoos for the hair, hair thickeners, sprays for the hair, hair styling spray, colour for the hair, cosmetic dyes, shampoos, hair-dyeing preparations, hair tonic, hair conditioning treatments, wax treatments for the hair, disciplining treatments for the hair, medicated hair care preparations, medicated lotions hair preparations, pharmaceutical hair care preparations, sanitary preparations for medical purposes, hair growth stimulants for medical purposes, medicinal hair growth preparations, lice treatment preparations and medical tints for the hair; business management related to hair care and hair care products and services; marketing services related to hair care and hair care products and services; wholesale distributorship services and retail store services and online retail store services featuring hair preparations, hair care preparations, oil 2 Registration No. 5258090, issued August 8, 2017 pursuant to Trademark Act Sec. 66(a), 15 U.S.C. § 1141f (a). Serial No. 86716997 - 3 - baths for hair care, hair conditioner, hair wax, hair dyes, cosmetics for hair, hair creams, bleaches for use on the hair, bleaching preparations for the hair, hair emollients, gels for use on the hair, hair moisturisers, hair lacquer, hair permanent wave kit, hair lotions, hair glosses, hair mascara, oils and hair pomades, hair treatment preparations, preparations for styling, colouring and waving the hair, preparations for care and styling of the hair, hair conditioners, hair care cosmetics, hair neutralisers, preparations for colouring the hair, preparations for decolouring and removing dye from the hair, hair cleaning preparations, hair glossers, relaxers and lightening preparations for the hair, hair mousses, shampoos for the hair, hair thickeners, sprays for the hair, hair styling spray, colour for the hair, cosmetic dyes, shampoos, hair-dyeing preparations, hair tonic, hair conditioning treatments, wax treatments for the hair, disciplining treatments for the hair, medicated hair care preparations, medicated lotions hair preparations, pharmaceutical hair care preparations, sanitary preparations for medical purposes, hair growth stimulants for medical purposes, medicinal hair growth preparations, lice treatment preparations and medical tints for the hair; Internet marketing services related to hair care and hair care products and services; auctioneering provided on the Internet related to hair care and hair care products and services; business administration services related to hair care and hair care products and services; business advice relating to franchising related to hair care and hair care products and services; commercial management assistance in relation to franchises related to hair care and hair care products and services; business advice relating to merchandising related to hair care and hair care products and services; providing office functions related to hair care and hair care products and services, providing office functions for others related to hair care and hair care products and services. International Class 35. The description of the mark in the registration states that the mark “consists of the word ‘INSIGHT’ in fanciful capital letters, of which the prefix ‘IN’ is highlighted in bold characters.” When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. Serial No. 86716997 - 4 - I. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on likelihood of confusion. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors, and the other relevant DuPont factors now before us, are discussed below. We must consider each relevant DuPont factor for which there is evidence or argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). A. Similarity or Dissimilarity of the Services and Channels of Trade We turn first to the DuPontfactors regarding the similarity or dissimilarity of the respective services and channels of trade, including prospective purchasers. In determining whether the services are related, it is not necessary that we find a likelihood of confusion between all of the registered services and all the services listed in the application. When we consider the similarity of the parties’ goods and services, it is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods or services in a particular class in the application. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Serial No. 86716997 - 5 - 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015). The description of services in the application and cited registration are “important evidence” relevant to the relatedness of the services. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002). Applicant’s services are “retail pharmacy services” and Registrant’s services include “retail store services and online retail store services featuring … medicated hair care preparations, medicated lotions hair preparations, pharmaceutical hair care preparations, … hair growth stimulants for medical purposes, medicinal hair growth preparations, lice treatment preparations and medical tints for the hair.” In the final office action, the Examining Attorney highlighted these services in the cited registration, stating “[t]he parties’ services are related in that they both feature medicated and pharmaceutical preparations.” (September 24, 2018 Office Action). Applicant vigorously disputes this characterization of the relationship between the parties’ services, contending that its services are “specific to prescription drugs” and “do not feature medicated hair care preparations, medication hair lotions, pharmaceutical hair care preparations, medical sanitary preparations, medical hair growth stimulants, medicinal hair growth preparations, lice treatment preparations, and medical hair tints. Just because the description says ‘medical’ does not make [the goods] pharmaceutical in nature. Every one of these goods could be sold at a gas Serial No. 86716997 - 6 - station.” Brief, 14 TTABVUE 10-11.3 The problem with this assertion is its complete lack of evidentiary support. The Examining Attorney submitted the online Merriam-Webster definition for “pharmacy:”4 1: the art, practice, or profession of preparing, preserving, compounding, and dispensing medical drugs 2 a: a place where medicines are compounded or dispensed b: drugstore 3: pharmacopoeia Applicant does not dispute the accuracy of the definition, and cites it in its brief (14 TTABVUE 10). We take judicial notice of the definitions of the terms used in the pharmacy definition and the pertinent terms used in the cited registration:5 drugs noun 1a: a substance used as a medication or in the preparation of medication b: according to the Food, Drug, and Cosmetic Act (1): a substance recognized in an official pharmacopoeia or formulary (see FORMULARY sense 3) (2): a substance intended for use in the diagnosis, cure, mitigation, treatment, or prevention of disease (3): a substance other than food intended to affect the structure or function of the body (4): a substance intended for use as a component of a medicine but not a device or a component, part, or accessory of a device drugstore noun : a retail store where medicines and miscellaneous articles are sold: PHARMACY 3 The TTABVUE citation refers to the Board’s electronic docket located on the USPTO website. 4 September 24, 2018 Office Action, TDSR 9. Citations to TSDR (the Trademark Status and Document Retrieval database) refer to the location where the appeal record for the involved application can be found. TSDR cites are to the downloadable .pdf version of the documents. 5 All definitions from Merriam-Webster, https://www.merriam-webster.com/ (2/14/20). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016). Serial No. 86716997 - 7 - medicinal adjective 1: tending or used to cure disease or relieve pain medicate verb 1: to treat (someone or something) with or as if with medicine 2: to impregnate with a medicinal substance pharmaceutical adjective 1 or a?: of, relating to, or engaged in pharmacy or the manufacture and sale of pharmaceuticals pharmaceutical noun 1?:a medicinal drug The overlap between the goods featured in the parties’ respective retail services is clear. According to the definition of “pharmacy” used by both Applicant and the Examining Attorney, pharmacy services involve the sale of drugs and medicines, which are defined as substances used to treat disease and promote wellness. By definition, Registrant’s medicinal, medicated, and pharmaceutical products also treat disease and promote wellness, albeit disease and wellness related to hair. That is, while Registrant’s retail services are limited to drugs and medicines for hair applications, Applicant’s retail pharmacy services are not limited, and so include drugs and medicines for hair applications, whether or not Applicant currently offers those products. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (“Parties that choose to recite services in their trademark application that exceed their actual services will be held to the broader scope of the application.”). In other words, there is no restriction on Applicant’s retail pharmacy services which would preclude Applicant from offering, Serial No. 86716997 - 8 - for example, the same “pharmaceutical hair care preparations’ or “hair growth stimulants for medical purposes” offered by Registrant. To the extent that Applicant contends that it offers only drugs and medicines available by prescription, the limitation is not set forth in its description of services, and so can form no part of our analysis. In re Detroit Athletic Co., 903 F3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (“The third DuPont factor—like the second factor—must be evaluated with an eye toward the channels specified in the application and registration, not those as they exist in the real world.”). The description of Applicant’s services must be construed most favorably to the prior user. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 209 USPQ at 988. In addition, Registrant’s medicated and pharmaceutical products are unrestricted as to trade channels, and thus are assumed to be available both over the counter and by prescription. See Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013) (“If the cited registration describes goods or services broadly, and there is no limitation as to their nature, type, channels of trade, or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all normal channels of trade, and that they are available to all classes of purchasers.”). In sum, we find Applicant’s retail pharmacy services, which may include medicine and drugs to treat diseases affecting hair and to promote hair wellness, and Registrant’s retail store services featuring medicine and drugs to treat diseases affecting hair and to promote hair wellness, to be at least in part identical, and so, Serial No. 86716997 - 9 - with respect to the identical services, to travel in the same channels of trade to the same prospective purchasers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (absent restrictions in the application and registration, identical goods are presumed to travel in the same channels of trade to the same class of purchasers; the Board was entitled to rely on this legal presumption in determining likelihood of confusion). In addition to the retail store services featuring medicine and drugs to treat diseases affecting hair and to promote hair wellness which are identical to Applicant’s retail pharmacy services, the cited registration includes services which are closely related to Applicant’s retail pharmacy services. More specifically, the registration includes retail store services featuring hair care products, namely: hair preparations, hair care preparations, oil baths for hair care, hair conditioner, hair wax, hair dyes, cosmetics for hair, hair creams, bleaches for use on the hair, bleaching preparations for the hair, hair emollients, gels for use on the hair, hair moisturisers, hair lacquer, hair permanent wave kit, hair lotions, hair glosses, hair mascara, oils and hair pomades, hair treatment preparations, preparations for styling, colouring and waving the hair, preparations for care and styling of the hair, hair conditioners, hair care cosmetics, hair neutralisers, preparations for colouring the hair, preparations for decolouring and removing dye from the hair, hair cleaning preparations, hair glossers, relaxers and lightening preparations for the hair, hair mousses, shampoos for the hair, hair thickeners, sprays for the hair, hair styling spray, colour for the hair, cosmetic dyes, shampoos, hair-dyeing preparations, hair tonic, hair conditioning treatments, wax treatments for the hair, disciplining treatments for the hair. In support of the argument that these hair care retail services are related to retail pharmacy services, the Examining Attorney submitted evidence of third-party use of marks used to identify both pharmacy services and retail sale of hair products. The record includes Internet evidence comprising webpages for eight different retailers Serial No. 86716997 - 10 - (CVS, Walgreens, Rite Aid, Bartell Drugs, Rexall, New Canaan Pharmacy, Fairway Drugs, and The Remedy Pharm) which advertise both pharmacy services and retail services featuring hair care products.6 Evidence that consumers encounter one mark designating a single source for the services of both parties supports a finding that the services are related. Hewlett-Packard Co. v. Packard Press, Inc., 62 USPQ2d at 1005; In re I-Coat Co., 126 USPQ2d 1730, 1738 (TTAB 2018). Third-party advertisements suggest that the public is accustomed to seeing pharmacies offer retail services featuring hair care products, and thus perceives them as related services. In re Detroit Athletic Co., 128 USPQ2d at 1051 (“This evidence suggests that consumers are accustomed to seeing a single mark associated with a source that sells both its own branded clothing (as does the Detroit Athletic Club) as well as sports-teams-branded clothing (as does DACo).”). The Examining Attorney also submitted four third party use-based registrations which show the same mark registered for retail pharmacy services such as those offered by Applicant and retail store services similar to those offered by Registrant, featuring hair products specifically, or the more general retail categories of personal care products, general consumer goods, and variety or convenience store services.7 As a general proposition, third-party registrations that cover services from both the cited registration and the subject application are relevant to show that the services are of a type that may emanate from a single source under one mark. In re Country Oven, 6 September 25, 2018 Office Action, TSDR 15, 30-37, 42-47, 48-50, and 52-56; March 23, 2019 Office Action, TSDR 5, 21, 26, 30, 44-45, 47-48, 51, 60-63. 7 September 25, 2018 Office Action, TSDR 57, 65, 71, 76. Serial No. 86716997 - 11 - Inc., 2019 USPQ2d 443903, * 8-9 (TTAB 2019) (citing Detroit Athletic, 128 USPQ2d at 1051). Applicant’s reply brief merely reiterates its position that a pharmacy offering only prescription drugs does not overlap with Registrant’s retail sale of hair care products, including medicated and pharmaceutical hair care products, and the services do not travel in the same channels of trade. As discussed, there is no record evidence that Applicant’s identified services are restricted to prescription drugs, or that Registrant’s identified retail services featuring medicated and pharmaceutical hair care products are restricted to products available without a prescription. In contrast, the overlapping definitions of terms used to describe the parties’ respective services in the application and cited registration, and the evidence of third-party use and registration of the same mark to advertise both retail pharmacy services and retail services including hair care products demonstrate that the services are in-part identical and in-part closely related. We find that the second and third DuPont factors weigh heavily in favor of finding a likelihood of confusion. B. Similarity or Dissimilarity of the Marks We consider the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 136, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under the first DuPont factor, is whether the marks are sufficiently similar in terms of their overall commercial impression that confusion Serial No. 86716997 - 12 - as to the source of the services offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph Learning, 101 USPQ2d at 1721 (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). The proper focus is on the recollection of the average purchaser, who retains a general impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)). When the goods or services are identical or virtually identical, the degree of similarity between the marks necessary to support a determination that confusion is likely declines. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). The literal term INSIGHT in the cited mark does not describe retail store services or hair care products, whether pharmaceutical or not, and the mark is presumed to be inherently distinctive because it is registered on the Principal Register. In re Fiesta Palms LLC, 85 USPQ2d 1360, 1363 (TTAB 2007), cited in In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517 (TTAB 2016). The capital letters with the prefix ‘IN’ highlighted in bold characters in the registered mark do not create a strong impression on their own or alter the impression created by the literal term INSIGHT. We find that the differing fonts used in the mark do not create separate commercial impressions apart from the mark as a whole, and thus, consumers will perceive the mark to be the literal term INSIGHT. Serial No. 86716997 - 13 - Applicant seeks to register the mark INSIGHT PHARMACY in standard characters. The only term in the registered mark, INSIGHT, is the first term in Applicant’s mark, increasing the similarity of the marks. See Palm Bay Imps. 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark). The term PHARMACY is disclaimed. Merely descriptive matter that is disclaimed has been accorded subordinate status relative to the more distinctive portions of a mark. In re Nat'l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“That a particular feature is descriptive ... with respect to the relevant goods or services is one commonly accepted rationale for giving less weight to a portion of the mark.”). Accordingly, we find INSIGHT to be the dominant part of Applicant’s mark INSIGHT PHARMACY. When comparing the marks in their entireties, we find them to be similar in sight, sound, and meaning due to this shared term, “INSIGHT.” Notwithstanding the addition of the descriptive term PHARMACY in Applicant’s mark, the marks create highly similar commercial impressions. Because Applicant seeks to register its mark in standard characters, Applicant would be free to adopt the same capitalization and bolded letters that appear in the registered mark, further heightening the similarities between the marks. See In re Viterra Inc., 101 USPQ2d at 1909; In re Davia, 110 USPQ2d 1810, 1814 (TTAB 2014); Trademark Rule 2.52(a). There is nothing improper in our finding that the identical term INSIGHT is dominant in Applicant’s mark and the focus of Registrant’s mark, because our ultimate conclusion rests upon a comparison of the marks in their entireties. In re Serial No. 86716997 - 14 - Nat’l Data Corp., 224 USPQ at 751 (Fed. Cir. 1985). In sum, we find that the overall commercial impression created by the distinctive term INSIGHT is not diminished by either the addition of the term PHARMACY in Applicant’s mark, or the stylization of the registered mark, particularly when applied to in-part identical services. We find that this DuPont factor also weighs heavily in favor of finding likelihood of confusion. We have considered all of the arguments and evidence of record, and all relevant DuPont factors. When we balance the DuPont factors, we conclude that confusion is likely to occur between Applicant’s mark INSIGHT PHARMACY and Registrant’s mark for their respective services. II. Decision The refusal to register Applicant’s mark INSIGHT PHARMACY is affirmed.