No. 91232124 (T.T.A.B. Apr. 30, 2018)

PicMonkey, LLCv.Leung

Trademark Trial and Appeal BoardApr 30, 2018

No. 91232124 (T.T.A.B. Apr. 30, 2018)

This Opinion is not a Precedent of the TTAB Mailed: April 30, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ PicMonkey, LLC v. Leung _____ Opposition No. 91232124 _____ Matthew E. Moersfelder and Alexander M. Montgomery of Davis Wright Tremaine LLP, for PicMonkey, LLC. David Lee Leung, pro se. _____ Before Kuhlke, Ritchie, and Masiello, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: On June 13, 2015, David Lee Leung (“Applicant”) applied to register FRIEND MONKEY, and design, as shown below, for “Computer software development in the field of desktop and mobile applications; Computer programming and maintenance of computer software for enhancement of desktop and mobile applications,” in Opposition No. 91232124 - 2 - International Class 42:1 PicMonkey, LLC (“Opposer”) filed an opposition to the registration of Applicant’s mark on the ground that Applicant’s mark is likely to cause confusion with Opposer’s previously registered marks under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), as follows:2 1. PICMONKEY, in standard character form, for “Image processing software design; Providing a website featuring on-line non-downloadable software tools for image editing,” in International Class 42; 3 2. PICMONKEY, in standard character form, for “Computer software, namely, downloadable software tools for digital image editing; downloadable software for viewing digital images; computer software for use in printing digital images,” in International Class 9; 4 1 Application Serial No. 86661706 was filed on June 13, 2015 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming dates of first use and first use in commerce on June 7, 2015. 2 In its brief, Opposer raised for the first time in a footnote that “Opposer often uses its registered PICMONKEY and monkey design mark together as in connection with Opposer’s image processing software and services.” 13 TTABVUE 3, n.1. Applicant did not address this argument. We do not deem it to be tried by consent, and we give the argument no consideration. 3 Registration No. 4347794 was registered on June 4, 2013. 4 Registration No. 4977253 was registered on June 14, 2013. Opposition No. 91232124 - 3 - 3. for “Image processing software design; Providing a website featuring on-line non-downloadable software tools for image editing,” in International Class 42; 5 4. PICMONKEY ROYALE, in standard character form, for “Image processing software design; Providing a website featuring on-line non-downloadable software tools for image editing,” in International Class 42; 6 5. for “Image processing software design; Providing a website featuring on-line non-downloadable software tools for image editing,” in International Class 42; 7 6. for “Computer software, namely, downloadable software tools for digital image editing; downloadable software for viewing digital images; computer software for use in printing digital images; mobile application software for uploading and transferring files; mobile application computer software for editing, uploading, downloading, accessing, manipulating, editing, indexing, cataloguing, enhancing, posting, displaying, 5 Registration No. 4347801 was registered on June 4, 2013. 6 Registration No. 4347795 was registered on June 4, 2013. 7 Registration No. 4347799 was registered on June 4, 2013. Opposition No. 91232124 - 4 - tagging, blogging, streaming, linking, storing, sharing, or printing photos and digital images,” in International Class 9; 8 7. for “Image processing software design; Providing a website featuring on-line non-downloadable software tools for image editing,” in International Class 42; 9 The Notice of Opposition alleges a likelihood of confusion with Opposer’s marks “due to the shared textual and/or design elements when used in association with Applicant’s Services.”10 Applicant denied the salient allegations of the notice of opposition, except to admit that Opposer’s pleaded registrations are “valid and subsisting.”11 Both parties filed briefs, and Opposer filed a reply brief. I. The Record and ACR Stipulation On November 9, 2017, the Board issued an order memorializing a teleconference of November 1, 2017, in which the parties agreed to proceed via Accelerated Case Resolution (“ACR”), and approving the terms thereof. In accordance with the November 9 order, the parties agreed to “ACR briefing in a modified summary judgment format,” and “that the Board may resolve genuine disputes of material fact and issue a final ruling based on the parties’ ACR submissions.”12 The parties further 8 Registration No. 5251926 was registered on July 25, 2017. 9 Registration No. 4347800 was registered on June 4, 2013. 10 1 TTABVUE 9, paragraph 12. 11 4 TTABVUE 2, paragraphs 4, 5, 6, 7, 8, 10. 12 8 TTABVUE 2, para. 6 and 10. Opposition No. 91232124 - 5 - agreed that “[t]he burden of proof which requires a showing by a preponderance of the evidence by the party occupying the position of plaintiff remains.”13 The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the subject application. Additionally, with its brief, Opposer submitted the declaration of Matthew E. Moersfelder, opposer’s counsel of record, and the declaration of Celeste Sipherd, Opposer’s Vice-President of Finance, both dated January 22, 2018, and with exhibits attached thereto. Applicant did not submit any declarations, but included with his brief a screenshot from a search of the Trademark Electronic Search System (“TESS”) database, listing search results for “monkey.”14 In its reply brief, Opposer argues that this is “not admissible pursuant to Board rules. TBMP § 704.03(b)(1)(B).”15 The cited section of the Trademark Trial and Appeal Board Manual of Procedure notes that “a party may not make a third- party registration of record simply by introducing a list of third-party registrations that includes it.” Nevertheless, while noting that Applicant has not submitted nor made of record individual third-party registrations, we need not exclude the list itself, but rather give it the probative weight to which it is entitled, as further discussed herein. II. Standing To have standing, a plaintiff must have a real interest, i.e., a personal stake in the outcome of the proceeding and a reasonable basis for its belief that it will be damaged. 13 8 TTABVUE 2, para. 11. 14 14 TTABVUE 6-7. 15 15 TTABVUE 2. Opposition No. 91232124 - 6 - See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-28 (Fed. Cir. 1999). As a result of Opposer’s submission of status and title copies of its registrations, Opposer has established its standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Likewise, because Applicant has not counterclaimed to cancel these registrations, priority is not at issue with respect to the marks and the goods and services set out in the registrations. King Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Accordingly, we find that Opposer has established its standing in this proceeding. III. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the relevant, probative evidence in the record related to a likelihood of confusion. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and Opposition No. 91232124 - 7 - differences in the marks.”). We discuss the du Pont factors for which there is relevant argument and evidence. For purposes of our likelihood of confusion analysis, we focus on the most relevant pleaded registration, Registration No. 4347794 (PICMONKEY). That is, if we find a likelihood of confusion as to this pleaded registration, we need not find it as to the others. On the other hand, if we do not find likelihood of confusion with the mark in this registration, we would not find it as to the other pleaded registrations. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). A. Fame We turn first to the factor of fame because where it exists it plays a dominant role. Kenner Parker Toys Inc. v. Rose Arts Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). Famous marks are accorded more protection precisely because they are more likely to be remembered and associated in the public mind than a weaker mark. Id. A famous mark is one “with extensive public recognition and renown.” Id. See also Palm Bay Imports, 73 USPQ2d at 1694; Bose Corp. v QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). When analyzing likelihood of confusion, the fame of the challenger’s mark is a factor that will fall somewhere “along a spectrum of very strong to very weak” and must be considered from the viewpoint of the relevant consumers. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003). Because we accord a famous mark a broad scope of legal protection and because fame plays a dominant role in the likelihood of confusion analysis, the party Opposition No. 91232124 - 8 - asserting that its mark is famous must clearly prove that fact. Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007). Fame may be measured indirectly by, among other things, the volume of sales of the goods traveling under the mark, advertising expenditures related to the mark and the goods, and the length of time those indicia of commercial awareness have been evident. The Sipherd declaration notes that Opposer was founded in 2012 and that Opposer’s PICMONKEY software is “now one the most [sic] popular and positively reviewed photo editing software products available.”16 Ms. Sipherd testified that although Opposer’s software is offered for free, Opposer has “hundreds of thousands of paying users who subscribe to access premium features of PicMonkey’s software and related services.”17 Additionally, Ms. Sipherd testified that Opposer has “millions of followers on social media” including 2.4 million Facebook followers, and 19.4 thousand followers on Instagram.18 Ms. Sipherd further refers to “extensive media coverage” of Opposer’s products and services.19 Examples are attached as Exhibit A to her declaration. These include the following:20 1. Fortune: This Photo Editing Startup is Profitable and Making Millions in Revenue: Jonathan Sposato, the CEO of fast growing mobile and web 16 13 TTABVUE 51, paragraph 7. 17 13 TTABVUE 51, paragraph 7. 18 13 TTABVUE 51, paragraph 8. 19 13 TTABVUE 52, paragraph 9. 20 13 TTABVUE 56-94. Opposition No. 91232124 - 9 - photo editing tool PicMonkey, still believes we are in the early days in the world of digital photography. 2. Crowd: PicMonkey Reviews: [Updated On December 21, 2017] What do you like best?: Picmonkey makes it easy to create fun social media and marketing images without breaking the bank! 3. TC: PicMonkey Grabs $41 Million Investment; July 30, 2015: PicMonkey, a Seattle-based photo editing web app just secured a $41 million growth equity investment from Spectrum Equity. 4. Mogul’s Top 100 Companies for Millennial Women in 2017: No. 17 PicMonkey: What they Do; PicMonkey helps everyday creatives design compelling images that make a point, express a view, and leave an impression. 5. eSchool News: App of the Week: Photo editing for social stardom!; August 28th, 2017: PicMonkey is an engaging photo editing and graphic design tool for customizing pictures and creations. 6. Small Business Trends: Is PicMonkey A Good Alternative to Canva, Yes or No?; July 12, 2017: There are tons of photo editing software out there including professional options such as Adobe Photoshop and Adobe InDesign. 7. GeekWire: From Picnik to PicMonkey: How these entrepreneurs rebuilt one of Seattle’s hottest startups; February 20, 2014: When Google shut down the photo-editing site Picnik in early 2012, millions of users were left frustrated and angry. Some of Picnic’s original employee’s shared a Opposition No. 91232124 - 10 - similar sentiment. So, they packed up, bid adieu to the corporate world and quickly got to work recreating what was lost with a new service called PicMonkey. We find that while Opposer has shown some market success, it has not provided sufficient industry context to establish a higher degree of fame. Cf. Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 899 F.2d 1070, 12 USPQ2d 1901, 1902 (Fed. Cir. 1989) (NINA RICCI found to be a famous mark for perfume, clothing and accessories: $200 million in sales, over $37 million in advertising over 27 years); Kimberly-Clark Corp. v. H. Douglas Enters., Ltd., 774 F.2d 1144, 227 USPQ 541, 542 (Fed. Cir. 1985) (HUGGIES found to be a famous mark for diapers: over $300 million in sales over 9 years, $15 million in advertising in one year). We find, rather, that Opposer has established some degree of renown, and the fifth du Pont factor weighs slightly in favor of a likelihood of confusion. B. The Services, Trade Channels and Purchasers We consider next the similarities or dissimilarities between the respective services as identified in the application and pleaded Registration No. 4347794. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (goods as identified in involved application and cited registration compared); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Under this second du Pont factor, Opposer need not prove, and we need not find, similarity as to each and every one of the services listed. It is sufficient for a finding of likelihood of confusion that relatedness is established for any one of the services identified in the application and Opposition No. 91232124 - 11 - the pleaded registration, respectively. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007). The application identifies “Computer software development in the field of desktop and mobile applications.” In other words, the services include development of any kind of software that can be used on a desktop computer or a mobile device. This is an extremely broad range of software. Registration No. 4347794 identifies, more specifically, “Image processing software design,” which is encompassed within the scope of Applicant’s broadly identified “software development.” Applicant admits that the identifications may overlap. Specifically, Opposer’s Interrogatory No. 11, asked Applicant to “State whether the FRIEND MONKEY Mark is being used, or will be used, on or in connection with software or software design services related to image processing or editing.”21 Applicant responded, in relevant part:22 The ‘friend monkey’ mark currently maybe used for software design services related to image processing or editing presented to client in digital format. Mark will likely have ‘designed by’ friend monkey used with current Mark to avoid any likely hood of confusion. [sic] We find, thus, that the services overlap and are legally identical-in-part. When the respective identifications of services are legally identical-in-part and without restrictions as to channels of trade or classes of purchasers, as is the case here, the identified services are presumed to travel in the same channels of trade to the same class of purchasers. In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 21 13 TTABVUE 38. 22 13 TTABVUE 38-39. Opposition No. 91232124 - 12 - 1908 (Fed. Cir. 2012); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983) (“[A]bsent restrictions in the application and registration, goods and services are presumed to travel in the same channels of trade to the same class of purchasers.”)). Thus, we presume the trade channels and classes of purchasers are the same for both Opposer’s and Applicant’s software design and development services. The second and third du Pont factors heavily favor finding a likelihood of confusion. C. The Marks We compare the marks for similarities and dissimilarities in appearance, sound, connotation and commercial impression. Palm Bay Imports., 73 USPQ2d at 1692. The test 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 goods offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) Under actual marketing conditions, consumers do not necessarily have the luxury of making side- by-side comparisons between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re Assoc. of the United Opposition No. 91232124 - 13 - States Army, 85 USPQ2d 1264 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, the analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. Vv. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). On the other hand, different features may be analyzed to determine whether the marks are similar. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013) (citing Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955)). In fact, 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 a consideration of the marks in their entireties. In re Nat’l Data Corp., 224 USPQ at 751. Moreover, where, as in the present case, the marks would appear on legally identical services, the degree of similarity between the marks that is necessary to support a finding of likely confusion declines. Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). Opposition No. 91232124 - 14 - Applicant’s mark is , which contains the literal element “Friend Monkey,” with a design of a monkey’s head. The mark in Registration No. 4357794 is PICMONKEY, in standard character form. A mark registered in standard character form is not limited to any particular font size, style, or color. See In re Viterra Inc. 101 USPQ2d at 1910, citing Citigroup v. Capital City Bank Group, 637 F.3d 1344, 98 USPQ2d 1253 (Fed Cir. 2011) (analyzing on a case by case basis “does not require us to alter the basic analysis when a standard character mark is compared with a stylized or design mark.”). While the marks have obvious differences in sight and sound, they are similar in giving the commercial impression of a friendly online monkey. Opposer’s counsel provided the following testimony regarding the strength of the PICMONKEY mark: On January 16, 2018, attorneys for Opposer conducted a search of active federal marks on the USPTO database for the wording “PICMONKEY” across all classes of goods and services. The search returned four registrations – three for the mark PICMONKEY and one for the mark PICMONKEY ROYALE – all of which are owned by Opposer. A copy of the TESS search results are attached as Exhibit C.23 The search does not provide us with much information. Since Opposer only searched for the exact term “PICMONKEY,” there is no information about terms that may be registered for similar marks, or even for the separate terms “PIC” and “MONKEY.” Furthermore, the search tells us nothing about third-party use of either “PICMONKEY” or any similar terms. Nevertheless, Applicant has not provided any 23 13 TTABVUE 15. Opposition No. 91232124 - 15 - information regarding the weakness of the term. As noted above, Applicant submitted with his brief a TESS screenshot of a search for “MONKEY” for all goods and services in all classes, including live and dead registrations and applications.24 The screenshot in the brief lists five live registrations. However, without any information about the goods or services, there is no meaningful context, and we have no basis to find the term weak with regard to Opposer’s identified services. Overall, we find in analyzing the marks as a whole that differences in sight and sound are overcome by similarities in commercial impression and connotation brought about by the identical word MONKEY, particularly when applied to services that overlap and are legally identical-in-part, and this du Pont factor also favors finding a likelihood of confusion. D. Conclusion After considering all of the arguments and evidence of record as they pertain to the relevant du Pont factors, we find that Opposer has established some degree of renown for its mark, which, considered as a whole, is similar to Applicant’s mark, particularly in commercial impression and connotation, as applied to services that overlap and are legally identical-in-part, and which we presume would travel through the same channels of trade to some of the same general consumers. Accordingly, we find a likelihood of confusion between Applicant’s mark for the identified services and Opposer’s mark PICMONKEY in Registration No. 4347794. 24 14 TTABVUE 6. Opposition No. 91232124 - 16 - Decision: The opposition is sustained on the ground of likelihood of confusion with Opposer’s mark PICMONKEY in Registration No. 4347794.