Mountain Ocean, Ltd.v.Ocean 2 Mountain Outdoor Products, Inc.

Trademark Trial and Appeal Board

Apr 28, 2004

No. 91151374 (T.T.A.B. Apr. 28, 2004)

Mailed:
28 April 2004
Paper No. 15
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Mountain Ocean, Ltd.
v.
Ocean 2 Mountain Outdoor Products, Inc.
_____
Opposition No. 91151374
to application Serial No. 76076074
_____
Katina C. Banks of Dorsey & Whitney, LLP for Mountain Ocean,
Ltd.
Theodore C. Max of Mintz, Levin, Cohn, Ferris, P.C. for
Ocean 2 Mountain Outdoor Products, Inc.
______
Before Quinn, Holtzman, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On June 23, 2000, Ocean 2 Mountain Outdoor Products,
Inc. (applicant) applied to register the mark shown below
for goods ultimately identified as:
Personal care preparations, namely, sun block, sun
screen, skin emollients, after-sun lotion, skin lotion,
skin moisturizer, skin conditioner, body cream and hand
cream in International Class 3 and
Apparel, namely, beachwear, bottoms, golf shirts, polo
shirts, sport shirts, shorts, T-shirts and tank tops in
International Class 25.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91151374
2
The application (76076074) alleges a date of first use
anywhere of 1994 and a date of first use in commerce of
October 14, 1999. The application also contains a
disclaimer of the words “outdoor products.”
Mountain Ocean, Ltd. (opposer) has opposed registration
on the ground that applicant’s mark for the goods in
International Class 3 “is very similar in appearance, sound,
and in connotation” to opposer’s mark MOUNTAIN OCEAN as to
be likely to confuse an ordinary person.” Notice of
Opposition at 3. Opposer relies on its ownership of
Registration No. 1,295,423 for the mark MOUNTAIN OCEAN in
typed form for “skin lotion” in International Class 3.1
Applicant has denied the salient allegations of the
notice of opposition.
The Record
The record consists of the file of the involved
application; opposer’s notice of reliance on status and
title copies of its registration; and applicant’s notice of
reliance on third-party applications and registrations.
1 The registration issued September 18, 1984, Section 8 and 15
affidavits have been accepted and acknowledged.
Opposition No. 91151374
3
Discussion
Opposer, as plaintiff in the opposition proceeding,
bears the burden of proving, by a preponderance of the
evidence, priority and likelihood of confusion. See
Cerveceria Centroamericana, S.A. v. Cerveceria India Inc.,
892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989);
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1848 (Fed. Cir. 2000).
Priority is not an issue here inasmuch as opposer
relies on its ownership of a valid registration for MOUNTAIN
OCEAN. See King Candy Co. v. Eunice King’s Kitchen, 496
F.2d 1400, 182 USPQ 108 (CCPA 1974).
The only question in this case is whether applicant’s
and opposer's marks are confusingly similar when used with
the goods identified in the application and registration.2
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).
2 Opposer only opposes the registration of applicant’s mark for
the goods in International Class 3.
Opposition No. 91151374
4
We start by comparing the goods of opposer and
applicant. Applicant’s goods in International Class 3 are
identified as “personal care preparations, namely, sun
block, sun screen, skin emollients, after-sun lotion, skin
lotion, skin moisturizer, skin conditioner, body cream and
hand cream.” Opposer’s registration is for a single product
“skin lotion.” Applicant’s and opposer’s goods are
identical to the extent that both are for “skin lotion.”
The Federal Circuit has held that 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, 1701
(Fed. Cir. 1992). Applicant’s remaining goods, sun block,
sun screen, skin emollients, skin moisturizer, after-sun
lotion, skin conditioner, body cream and hand cream, are
skin care preparations and many, if not all, of these
preparations would also be related to opposer’s skin lotion.
We must consider the goods as they are identified in
the identification of goods in the application and
registration. Paula Payne Products v. Johnson Publishing
Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark
cases involving the issue of likelihood of confusion must be
decided on the basis of the respective descriptions of
goods”).
Opposition No. 91151374
5
Applicant argues that opposer has not established that
the goods travel in the same channels of trade. However,
absent restrictions in the identification, we must assume
that the goods travel in “the normal and usual channels of
trade and methods of distribution.” CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983). See also
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1005 (Fed. Cir. 2002); Kangol Ltd. v.
KangaRoos U.S.A. 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed.
Cir. 1992). There is no basis to conclude that applicant’s
and opposer’s skin lotion do not travel through the
identical channels of trade or that many, if not all, of
applicant’s other skin care products would not move in
similar channels of trade to similar customers.
While applicant attempts to differentiate the products
based on applicant's selling its products only through
mail orders while opposer's sales of its goods are
through ordinary retail channels of distribution, in
the absence of a restriction in applicant's
identification of goods and in the identification of
goods in opposer's registrations, the respective goods
must be presumed to travel in all channels of trade
suitable for goods of that type.
Chesebrough-Pond's Inc. v. Soulful Days, Inc., 228 USPQ 954,
956 (TTAB 1985). See also 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
Opposition No. 91151374
6
offered and sold to the same classes of purchasers through
the same channels of trade”).
Another key issue in likelihood of confusion cases is
the similarity or dissimilarity of the marks. When we
compare the marks, we must compare them in their entireties,
and not simply consider the individual features of the
marks. In re Shell Oil, 992 F.2d 1204, 26 USPQ2d 1687, 1688
(Fed. Cir. 1993). Here, opposer’s mark is for the words
MOUNTAIN OCEAN in typed form. Applicant’s mark is for the
mark OCEAN 2 MOUNTAIN OUTDOOR PRODUCTS (stylized). Inasmuch
as opposer’s mark is presented in typed form, there is no
viable difference in the marks based on the stylization of
the mark. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 939 (Fed. Cir. 1983).
We also consider the disclaimed terminology in
applicant’s mark “Outdoor Products,” but it would not
significantly differentiate the marks. Disclaimed matter is
often “less significant in creating the mark’s commercial
impression.” In re Code Consultants Inc., 60 USPQ2d 1699,
1702 (TTAB 2001). “Regarding descriptive terms, this court
has noted that the ‘descriptive component of a mark may be
given little weight in reaching a conclusion on the
likelihood of confusion.’” Cunningham v. Laser Golf Corp.,
55 USPQ2d at 1846, quoting, In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985). In this
Opposition No. 91151374
7
case, the words “Outdoor Products” are clearly displayed in
much smaller type and used in a subordinate manner to the
other words in applicant’s mark.
Next, we look at the words OCEAN 2 MOUNTAIN and
MOUNTAIN OCEAN in opposer’s and applicant’s mark. There are
only two differences between these words: the addition of
the number “2” by applicant and the fact that the parties
reversed the order of the words. The marks look and sound
similar to the extent that the identical words are used in
both marks. However, merely because marks contain very
similar words, if they are used in a different order, the
meaning of the marks may be significantly different.3 While
we take judicial notice of the definitions that applicant
has made of record, we cannot agree with its conclusion that
the “marks create substantially different commercial
impressions.” Applicant’s Brief at 8.
In this case, we find that there is not enough
difference in meaning to distinguish the marks. First, the
terms “mountain ocean” or “ocean mountain,” for most people,
would not be significantly different.4 They could appear to
be an arbitrary arrangement of words with no particular
3 See, e.g., In re Akzona Inc., 219 USPQ2d 94 (TTAB 1983) (SILKY
TOUCH and TOUCH O’ SILK not confusingly similar).
4 Applicant “does not dispute the fact that consumers may
transpose elements of trademarks in their minds and, as a result,
become confused as to the source of the goods or services offered
under certain circumstances.” Applicant’s Brief at 6.
Opposition No. 91151374
8
meaning. Applicant’s addition of the number “2” may be
interpreted as the phonetic equivalent of the word “to” so
that its mark would be interpreted as “ocean to mountain.”
Even if applicant’s mark is understood in this manner, it is
not significantly different from opposer’s MOUNTAIN OCEAN
mark especially since in this interpretation the order of
the words “mountain to ocean” or “ocean to mountain” does
not effect the meaning of the phrase. Therefore, both
applicant’s and opposer’s marks would have the same
connotation, i.e., that the product is intended for use in
association with a variety of outdoor activities.5
When we consider the marks MOUNTAIN OCEAN and OCEAN 2
MOUNTAIN OUTDOOR PRODUCTS (stylized), we conclude that they
are similar in appearance, sound, and meaning, and that
their commercial impressions would likewise be similar. We
keep in mind that a “[s]ide by side comparison is not the
test,” Grandpa Pigeon’s of Missouri, Inc. Borgsmiller, 477
F.2d 586, 177 USPQ 573, 574 (CCPA 1973), and that human
memories are not infallible, In re Research and Trading
Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986).
Here, it is likely that prospective customers who are
familiar with opposer’s MOUNTAIN OCEAN mark would likely
5 Another possible significance of the number “2” would be to
indicate “the second” of something. This meaning would likely
increase the likelihood of confusion because prospective
purchasers may simply view applicant’s products as being a new
line of products from opposer.
Opposition No. 91151374
9
believe that there is at least some association with the
source of applicant’s mark OCEAN 2 MOUNTAIN OUTDOOR PRODUCTS
when the marks are used on identical and closely related
products. Prospective purchasers are likely to remember the
similarity between the words, “mountain” and “ocean” and the
differences would not be sufficient to lead to the
conclusion that the goods sold under these marks are not
associated with the same source.
Applicant also submitted evidence of third-party
registrations and applications for the terms “mountain,”
“ocean,” and “sea.” Opposer’s objects to these
registrations on the grounds of hearsay and relevance.
Applicant argues that it “does not offer the registrations
and applications as evidence of use in the marketplace or
for the truth of allegations of use found in the filings but
instead as evidence of the descriptive or suggestive nature
of the terms.” Applicant’s Brief at 4. Opposer’s
objections are overruled. Third-party registrations may be
used to demonstrate that a portion of a mark is suggestive
or descriptive. In re J.M. Originals Inc., 6 USPQ2d 1393,
1394 (TTAB 1987). However, these registrations and
applications do not support a conclusion that the elements
of opposer’s mark are descriptive or so highly suggestive
and that applicant’s mark would not be likely to cause
confusion.
Opposition No. 91151374
10
Applicant’s final argument is that the marks have co-
existed since 1994 without any actual confusion.6 The
absence of actual confusion does not mean there is no
likelihood of confusion. Giant Food, Inc. v. Nation's
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed.
Cir. 1983); J & J Snack Foods Corp. v. McDonald’s Corp., 932
F.2d 1460, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991). See also
Majestic Distilling, 65 USPQ2d at 1205 (“The lack of
evidence of actual confusion carries little weight”). In
this case, there is no evidence of the extent of sales and
advertising or market penetration. Without evidence that
any actual customers could have encountered both marks,
allegations of a lack of actual confusion are not
significant.
Therefore, when we consider the marks and the goods of
opposer and applicant and the other relevant factors, we
conclude that there is a likelihood of confusion.
Decision: The opposition to the registration of the
goods in International Class 3 of application No. 76076074
is sustained.
6 Applicant apparently is relying on its allegation in its
application’s date of first use anywhere for this date. Even if
this date was supported by evidence, we note that the application
alleges a date of first use in commerce almost five years later
(October 14, 1999).