Ripalip, L.L.C.Download PDFTrademark Trial and Appeal BoardAug 8, 2016No. 86259431 (T.T.A.B. Aug. 8, 2016) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: August 8, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Ripalip, L.L.C. _____ Serial Nos. 86259338 and 86259431 _____ William E. Anderson of Christensen Fonder PA, for Ripalip, L.L.C. Miroslav Novakovic, Trademark Examining Attorney, Law Office 108, Andrew Lawrence, Managing Attorney. _____ Before Taylor, Mermelstein and Kuczma, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: Ripalip, L.L.C. (“Applicant”) appeals from the final refusals to register on the Principal Register the marks RIPALIP1 (in standard characters) and 2 (RIPALIP and Design) for (as amended): 1 Application Serial No. 86259338 was filed on April 22, 2014, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. 2 Application Serial No. 86259431 was filed on April 22, 2014, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Serial Nos. 86259338 and 86259431 - 2 - Bags specially adapted for covering, carrying or storing marine electronics, namely, GPS device, chartplotter device, sonar device, and radar device, wherein the bags have inner dimensions that are sized and shaped to largely conform to the outer dimensions of the marine electronics and an opening sized to receive the outer dimensions of the marine electrons [sic] such that the bags can cover the marine electronic when mounted on a boat in International Class 9. The Trademark Examining Attorney refused registration of Applicant’s marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in view of Registration No. 39887713 owned by Contemporary Classic Outdoors LLC for the mark RIP SOME LIPS for fishing lure containers, fishing tackle containers, fishing rod cases and fishing tackle bags in International Class 28. When the refusals were made final, Applicant appealed and requested reconsideration of the refusal of Serial No. 86259431. After the Trademark Examining Attorney denied the request for reconsideration, Applicant filed its opening appeal briefs. Subsequent to the filing of Applicant’s opening briefs, the Board consolidated the appeals for application Serial Nos. 86259338 and 86259431 in an order dated March 15, 2016,4 and the Trademark Examining Attorney submitted a consolidated brief. For the reasons set forth below, we affirm the refusals to register. Trademark Act. The mark consists of the front view of a fish having a swollen and bandaged bottom lip and the word RIPALIP under the fish. 3 Registration No. 3988771 issued July 5, 2011. 4 See 9 TTABVUE in Ex parte Appeal for 86259338; and 12 TTABVUE in Ex parte Appeal for 86259431. Serial Nos. 86259338 and 86259431 - 3 - I. Likelihood of Confusion Our determination under § 2(d) of the Trademark Act is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., Inc., 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 at issue. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant and the Trademark Examining Attorney have also submitted evidence and arguments regarding the similarity of the trade channels of the goods and the number and nature of similar marks in use on similar goods. We carefully considered all of the evidence of record and arguments as they pertain to the relevant du Pont factors (including any evidence and arguments not specifically discussed in this opinion). To the extent that any other du Pont factors for which no evidence or argument were presented may nonetheless be applicable, we treat them as neutral. A. Similarity of the Marks It is well settled that marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)). Serial Nos. 86259338 and 86259431 - 4 - Applicant’s marks RIPALIP and , and Registrant’s mark RIP SOME LIPS, are similar in overall appearance because the marks begin with the word “RIP,” and end with the word “LIP”/“LIPS.” Because Applicant’s marks RIPALIP and RIPALIP and Design substitute the letter “A” for the word “SOME” in the registered mark RIP SOME LIPS, there are some differences in the sound and in the appearance of the marks. However, the “A” and “SOME” portions of the marks convey the same impression with “SOME” functioning as the plural of “A.” Moreover, the differences are slight given that the “A” and “SOME” portions of the marks merely serve to connect the more distinctive shared terms “RIP’ and “LIP(S).” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015) (the Board may state that, for rational reasons, more or less weight has been given to a particular feature of the mark). Thus, as a whole, the marks are similar in appearance and sound. While the last portion of Applicant’s marks do not include an “S” which appears at the end of the registered mark, it is well established that trademarks and/or service marks consisting of the singular and plural forms of the same term are essentially the same mark. See Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) citing Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark); Chicago Bears Football Club v. 12th Man/Tennessee LLC, 83 USPQ2d 1073, 1077 (TTAB 2007) (“we cannot attribute much trademark significance to the difference in the plural and Serial Nos. 86259338 and 86259431 - 5 - singular form of the word ‘Bear’ in the marks”); In re Pix of Am., Inc., 225 USPQ 691, 692 (TTAB 1985) (noting that the pluralization of NEWPORT is “almost totally insignificant” in terms of likelihood of confusion among purchasers); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962) (finding no material difference between the singular and plural forms of RED DEVIL). Therefore, the pluralization of the word “LIP” in Registrant’s mark does not affect or otherwise diminish the overall similarity between the marks. Similarly, the absence of spaces in Applicant’s marks RIPALIP and RIPALIP and Design, and the presence of spaces in Registrant’s mark RIP SOME LIP, is of little significance in our comparison of the marks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016) (“the absence of a space in Applicant’s mark MINIMELTS does not meaningfully distinguish it from Opposer’s [MINI MELTS] mark”); Mag Instrument Inc. v. Brinkman Corp., 96 UPSQ2d 1701, 1714 (TTAB 2010) (“presence or absence of a space before STAR does very little, if anything, to distinguish the two marks [MAXSTAR versus MAG STAR]”); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1025 (TTAB 2009) (“the spaces that respondent places between the words [DESIGNED TO SELL] do not create a distinct commercial impression from petitioner’s presentation of his mark [DESIGNED2SELL] as one word”); Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical.” (internal citation omitted)). The spaces are an Serial Nos. 86259338 and 86259431 - 6 - insignificant difference that is not likely to be noticed or remembered by purchasers when encountering these marks at separate times. Turning to the commercial impression of the marks, as Applicant admits, the use of terms containing “RIP” and “LIPS” are used to describe the activity of fishing.5 “Ripping lips” is a term “used by fisherman to describe the action of setting the hook too hard, resulting in literally ripping the lips off a fish.”6 The design portion of Applicant’s mark featuring a fish with a bandaged lip rather than distinguishing the marks, actually emphasizes their similarity by reinforcing the concept of fishing and the euphemism “ripping lips.” See Herbko Int’l Inc. v. Kappa Books Inc., 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (“[T]he puzzle design does not convey any distinct or separate impression apart from the word portion of the mark. Rather, it serves only to strengthen the impact of the word portion in creating an association with crossword puzzles.”); In re Swatch Grp. Mgmt. Servs. AG, 110 USPQ2d 1751, 1762 (TTAB 2014) (“the combination of the design with the word TOURBILLON reinforces the singular impression conveyed by the mark as a whole, which is nothing more than the significance of ‘tourbillon’”). Therefore, the inclusion of the design portion of Applicant’s word and design mark does not overcome its similarity to Registrant’s word mark. 5 Applicant’s Ex Parte Appeal Brief p.11 (6 TTABVUE 12). 6 4/15/2015 Final Office Actions p. 9. from http://www.urbandictionary.com/define.php? term=ripping+lips 04/14/2015. Serial Nos. 86259338 and 86259431 - 7 - While the marks at issue are not identical, when comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods offered under Applicant’s and Registrant’s marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089-90 (TTAB 2016); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). While Applicant’s marks contain the letter “A” in place of the word “SOME” in the registered mark, the marks create the same commercial impression by using RIP and LIP(S) in the same order, juxtaposed by “A” or “SOME.” Based on the overall similarity of the marks RIPALIP, and RIP SOME LIPS in appearance, sound, meaning and commercial impression, it is likely that the average purchaser would retain the same recollection for each mark. B. Number and Nature of Similar Marks in Use on Similar Goods Applicant maintains that its marks RIPALIP and RIPALIP and Design are not likely to cause confusion with the registered mark RIP SOME LIPS, in spite of their common elements “RIP” and “LIP,” because that wording is commercially weak and Serial Nos. 86259338 and 86259431 - 8 - diluted, descriptive as related to the goods, and the marks create entirely different commercial impressions.7 In support, Applicant points to the results of its internet search for “rip some lips” shown in Exhibit 3,8 which it contends “clearly refers to the activity of fishing.” A closer look at Applicant’s Exhibit 3 shows it lists a portion of the internet search results summary for an internet search on the phrase “rip some lips.” Although the entries in the search results summary only provide limited information, six of the nine entries identify the same online fishing video/show called “Rip Some Lips” by hosts identified as Hunter and Grant; the three other entries, generally related to fishing, do not give sufficient information to ascertain the derivation of their reference to “rip some lips.” Search engine results – which provide little context to discern how a term is actually used on the webpage that can be accessed through the search result link – may be insufficient to determine the nature of the use of a term or the relevance of the search results to registration considerations. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re King Koil Licensing Co., 79 USPQ2d 1048 (TTAB 2006) (list of internet search results is “not given much weight” because “[t]hese web page excerpts do little to show the context within which a term is used on the web page that could be accessed by the link”). The search result 7 Applicant’s Ex Parte Appeal Briefs p. 11 (6 TTABVUE 12) for Serial No. 86259338 and (9 TTABVUE 12) for Serial No. 86259431. 8 2/23/2015 Responses to Office Action, Exhibit 3, pp. 22-23, from https://www.google.com/ search?q= “rip+some+lips”&ie=utf-8&oe=utf-8.... Serial Nos. 86259338 and 86259431 - 9 - summary identified as Exhibit 3 by Applicant does not provide sufficient information of the meaning of “rip some lips” or of its commercial weakness. Applicant also maintains that RIP and LIP are highly diluted as applied to the relevant goods citing seven third-party registrations for goods in Classes 25 or 28, arguing that in view of those registrations Registrant’s mark is subject to a narrow scope of protection.9 Although Applicant failed to submit copies of the registrations or their electronic equivalent (i.e., complete printouts taken from any of the USPTO’s automated systems) in order to make the registrations of record, because the Trademark Examining Attorney failed to object to the chart submitted as Exhibit 5 to Applicant’s 2/23/2015 Responses to the Office Actions, or to advise Applicant of the insufficiency of this evidence, we deem any objection to be waived, and consider the evidence set forth in the charts attached as Exhibit 5 to Applicant’s Responses. See In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Melville Corp., 18 USPQ2d 1386, 1389 n.2 (TTAB 1991); Trademark Board Manual of Procedure § 1208.02 (June 2016). While “… extensive evidence of third-party use and registrations [can be] ‘powerful on its face,’” and is relevant to show that a segment common to both parties’ marks may have “a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak,” 9 See 2/23/2015 Responses to Office Action pp. 25-26, Exhibit 5, Table of “RIP” and “LIP” Marks. One of the “registrations” mentioned by Applicant was Application Serial No. 86340961 for the mark RIPPIN LIPS which was abandoned on March 14, 2016, after Applicant filed its brief. Registration No. 3774460 for the mark RIP FLIPS, also listed on the Table of “RIP” and “LIP” Marks, is disregarded because it does not contain a form of the word “LIP.” Serial Nos. 86259338 and 86259431 - 10 - such evidence has not been submitted. See Jack Wolfskin, 116 USPQ2d at 1135-36; Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015). By contrast, Applicant submitted only seven registered marks10 owned by five different owners11 which include the terms “RIP” and “LIP,” and a copy of one webpage mentioning two of those registered marks in connection with apparel.12 While a considerable or extensive number of third-party registrations may well have, in the aggregate, evidentiary value, such evidence is lacking in this case. The registrations identified by Applicant give little or no indication of the impact of the mark’s use on consumers of the products involved. See Jack Wolfskin, 116 USPQ2d at 1135-36; Juice Generation, 115 USPQ2d at 1674; In re Mr. Recipe, LLC, 118 USPQ2d at 1089 n. 9 (TTAB 2016). Four of the seven marks are registered only for apparel, which goods are unrelated to Applicant’s and Registrant’s non-apparel goods. The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods. See In re 10 Registration Nos. 3774460 (RIP FLIPS), 3988771 (RIP SOME LIPS), 4126452 (RIPNLIP OUTFITTERS (Stylized), 4176223 (RIP N LIP OUTFITTERS), 4348820 (RIP A LIP), 4607312 (LIP RIPPER FISHING GEAR), 4623127 (RIPPN-LIPS), 4648250 (HOOKED ON A CURE RIPALIP). Applicant also submitted Registration No. 3774460 for the mark RIP FLIPS, See Exhibit 5, p. 25-26 of 2/23/2015 Responses to Office Action. 11 Registration Nos. 4348820 (RIP A LIP) and 4648250 (HOOKED ON A CURE RIPALIP) for T-shirts are owned by Rip-A-Lip, LLC and Rip A Lip Inc., located at 647 Pass Road, Gulfport, Mississippi. Registration Nos. 4126452 (RIPNLIP OUTFITTERS (Stylized)) for decals and bumper stickers and 4176223 (RIP N LIP OUTFITTERS) for clothing are owned by William C. Pigott, III of Fort Meyers, Florida. 12 See 2/23/2015 Responses to Office Action, Exhibit 4, p. 24, Rip A Lip Fish Wear webpage from http://www.ripalipfishwear.com/our-story.html. Serial Nos. 86259338 and 86259431 - 11 - E. I. du Pont de Nemours & Co., 177 USPQ at 567; In re Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006); In re Melville Corp., 18 USPQ2d at 1389. Of the three remaining registered marks, one is for decals and bumper stickers which is not related to either Applicant’s or Registrant’s goods and therefore is not relevant. The last two registrations are for Registrant’s mark and for the registered mark RIPPN-LIPS which is different from Applicant’s and Registrant’s marks. Additionally, Applicant argues the fact that the marks in the two registrations initially cited against Applicant’s applications13 (i.e., Registrant’s mark and Registration No. 4348820 for RIP A LIP for “ T-shirts”) are “peacefully coexisting without confusion on the [trademark] register” means there is room for Applicant’s marks, which are for differing goods and have a different appearance and sound.14 As noted above, Registration No. 4348820 is for unrelated apparel items and therefore is not relevant. Not only are the registrations identified by Applicant (with the exception of Registrant’s registration) for very different goods, the Board is not bound by the prior decisions of examining attorneys in allowing marks for registration. It has been noted many times that each case must be decided on its own facts. “Even if all of the third- party registrations should have been refused registration...such errors do not bind the USPTO to improperly register Applicant’s marks.” In re Shinnecock Smoke Shop, 13 Registration Nos. 3988771 (RIP SOME LIPS) and 4348820 (RIP A LIP) were initially cited against Applicant’s applications. However, the refusal to register based on Registration No. 4348820 was subsequently withdrawn. See 4/15/2015 Final Office Actions p. 3. 14 Applicant’s Ex Parte Appeal Briefs p. 13 (6 TTABVUE 14) for Serial No. 86259338 and (9 TTABVUE 14) for Serial No. 86259431. Serial Nos. 86259338 and 86259431 - 12 - 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009), citing In re Boulevard Entertainment, Inc., 334 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003). See also In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”). Thus, the limited third-party registrations submitted by Applicant do not compel a different result. While Registrant’s mark is suggestive of the fishing-related goods identified in its registration, even if marks containing the terms “RIP” and “LIP” are deemed to be weak, marks deemed “weak” are still entitled to protection against the registration by a subsequent user of a similar mark for closely related and complementary goods. In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010); In re Chica Inc., 84 USPQ2d 1845, 1850 (TTAB 2007); In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982). Accordingly, the evidence is insufficient for us to find that customers are so used to seeing marks containing the terms “RIP” and “LIP” for the types of products identified in the cited registration and subject applications such that the cited mark is so weak or otherwise entitled to such a narrow scope of protection that customers would be careful in distinguishing Registrant’s mark from Applicant’s marks. C. Similarity of the Goods, Channels of Trade and Purchasers We turn now to the du Pont factor involving the relatedness of the parties’ goods and keep in mind that it is not necessary that the respective goods be similar or Serial Nos. 86259338 and 86259431 - 13 - competitive to support a holding of likelihood of confusion. It is sufficient that the respective goods are related in some manner, or that the circumstances surrounding their marketing of the goods are such that they would be likely to be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originated from the same producer. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d at 1388; In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). Even if the goods in question are different from, and thus not related to one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods. It is this sense of relatedness that matters in the likelihood of confusion analysis. Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Contrary to Applicant’s argument15, the fact that Applicant’s goods, i.e., bags specially adapted for covering, carrying or storing marine electronics, namely, GPS 15 Applicant’s Ex Parte Appeal Briefs p. 14 (6 TTABVUE 15) and pp. 14-15 (9 TTABVUE 15- 16). Serial Nos. 86259338 and 86259431 - 14 - device, chartplotter device, sonar device, and radar device, … wherein the bags have inner dimensions such that the bags can cover the marine electronic when mounted on a boat, and Registrant’s goods, i.e., fishing lure containers, fishing tackle containers, fishing rod cases and fishing tackle bags, “are categorized in different classes” by the USPTO (Class 9 for Applicant’s goods and Class 28 for Registrant’s goods) does not establish that the goods are unrelated. The determination of the classification of goods is a purely administrative determination unrelated to the determination of likelihood of confusion. Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993); Graco Inc. v. The Warner-Graham Company, 164 USPQ 400, 402 (TTAB 1969), citing In re Knapp-Monarch Company, 296 F.2d 230, 132 USPQ 6, 7 (CCPA 1961). Here, Applicant’s bags for covering, carrying or storing marine electronics including GPS devices that the bags can cover when mounted on a boat, and Registrant’s fishing tackle bags, are related. Not only are these goods for use on a boat16, they are offered for sale on the same websites, many of which are specifically targeted to fishing gear.17 16 Registrant’s fishing tackle bags can be used on a boat. See for example, the listings for: AFTCO Angler’s Bag AB2001ROY which states: “The AFTCO Angler’s Bag is designed to carry all of the tackle, clothing and accessories needed for multi-day trips aboard private yachts or party boats….” http://www.tackledirect.com/aftco-anglers-bag.html p. 31; Simms Headwaters Tackle Bag which states “…Simms’ Headwaters™ Tackle Bag offers garage-like gear capacity from truck tailgate to boat deck and beyond….” http://www.reds flyfishing.com/Simms-Headwaters-Tackle-Bag-p/simms-headwaters-takcle-bag.htm p. 84, 4/15/2015 Final Office Actions. 17 See for example: http://www.alltackle.com; http://www.tackledirect.com; http://kayak fishinggear.com; http://www.reelflyrod.com; http://www.redsflyfishing.com; http://www. anglerschoicetackle.com cited in 4/15/2015 Final Office Actions. Serial Nos. 86259338 and 86259431 - 15 - The evidence shows that fishing tackle bags and bags for protecting, storing and carrying marine electronics such as GPS devices are offered for sale at the same on- line stores to the same classes of consumers, i.e., those who wish to use fishing gear and GPS devices on a boat. Indeed, the internet evidence from third-party retailers and producers of fishing and outdoor products show that fishing tackle bags feature pockets that are specially adapted for carrying and storing electronics, including GPS devices. For example: • Newegg advertisement for the Ready To Fish Sided Tackle Bag, which “is loaded with features to keep your fishing tackle” including “adjustable compartments” and “pockets for electronics” from http://www.newegg.com/Product/Product.aspx?item=9SIA1N60K60775 [See pp. 23-24 of the August 22, 2014 Office Actions]. • Sea Isle Tackle advertises the OHO Captain’s Bag, wherein “the interior of the bag is lined with many pockets” such as “waterproof interior pocket for electronics” http://www.seaisletackle.com/browse.cfm/4,4631.html [See pp. 26-27 of August 22, 2014 Office Actions]. • Fishing Tackle Unlimited advertises the PFG Captain’s Bag, being “built for the ultimate boat captain,” which is outfitted with “transparent electronics pocket,” “fishing lure zipper pull,” and “padded laptop sleeve” http://www.fishingtackleunlimited.com/p/fishing/c-/COLUM-UU9421- 491.html [See pp. 28-29 of the August 22, 2014 Office Actions]. • Calcutta advertises and lists for sale its Calcutta CTB10-360-4 Tackle Bag featuring “4 utility boxes” and “Cell phone/GPS holder” from http://www. calcuttafishingstore.com/products/bags-and-backpacks/backpacks/tackle -bag-with-4-utility-boxes-black-and-yellow-CTB10-360-4.htm [See pp. 24- 25 of the April 15, 2015 Final Office Actions]. • Alltackle.com advertises the Albackore Fishing Tackle Backpack, wherein “the top section can be used to hold power bait, binoculars, valuable electronics” http://www.alltackle.com/albacore tackle bag.htm [See pp. 13- 19 of the April 15, 2015 Final Office Actions]. • Amazon.com advertises the Calcutta Gray Tackle Bag with 4 360 Trays, which “offers tons of storage” and “Cell phone/GPS holder” Serial Nos. 86259338 and 86259431 - 16 - http://www.amazon.com/Calcutta-Gray-Tackle-Bag-Trays/dp/B0040 DR5BU [See pp. 20-21 of the April 15, 2015 Final Office Actions]. • Sports Authority advertises the FieldTeq Soft Sided Tackle Bag with “eight external accessory pockets, dedicated electronics and map pockets”, where “you can keep your lures, hooks and other fishing supplies separate and organized” http://www.sportsauthority.com/FieldTeq-Soft-Sided-Tackle- Bag/product.jsp?productId=43863136 [See pp. 26-27 of the April 15, 2015 Final Office Actions]. • Cabela’s advertises the Cabela’s Pro Guide® Tackle Bag, which “allows for maximum storage potential and versatility” due to its “innovative utility box configuration” and “feltlined cellphone/GPS pocket” http://www.cabelas.com/ensemble/25-Off-Tackle-Storage%7C/pc/ 106974180/Cabelas-Pro-Guide174-Tackle-Bags/6755.uts?destination= /catalog/product... [See p. 29 of the April 15, 2015 Final Office Actions]. • TackleDirect advertises the AFTCO Angler’s Bag AB2001ROY, which “is 100% padded on all sides with sewn-in closed-cell foam to protect valuable accessories” such as “cameras, binoculars, hand-held GPS, PDA’s, tackle, etc.” http://www.tackledirect.com/aftco-anglers-bag.html [See pp. 31-32 of the April 15, 2015 Final Office Actions]. • Angler’s Choice advertises the Calcutta CBB-MED Medium Boat Bag featuring “a waterproof pouch,” which “is the perfect protection for cell phones, wallets and other valuables from the elements, etc.,” and the Calcutta CT1010WC Tackle Bag http://www.anglerschoicetackle.com/ calcutta/calcutta-cbblg-yellow-boat-bag-25830 [See pp. 89-92 of the April 15, 2015 Final Office Actions]. Applicant’s goods are used for carrying and storing marine electronics, including GPS devices. The foregoing evidence establishes that fishing tackle bags are designed to carry fishing tackle as well as other related items including, GPS devices. Thus, Applicant’s goods are related and complementary to Registrant’s goods inasmuch as Registrant’s fishing tackle bags can be used for carrying items such as GPS devices. Serial Nos. 86259338 and 86259431 - 17 - The evidence also shows that fishing tackle bags and bags for marine electronics, including GPS devices, are commonly sold in the same on-line stores to the same classes of customers, sometimes under the same trademark, such as Bass Pro: • Bass Pro Shop lists the Bass Pro Shops Electronics Case, which is to protect and store “GPS unit, fishfinder, and other expensive electronics,” along with the Bass Pro Shops StalkerXPS Top Loader Tackle Bag www.basspro.com/Bass-Pro-Shops-ElectronicsCase/product/10208991/ ?cmCat=CROSSSELL_PRODUCT; www.basspro.com/Bass-Pro-Shops- StalkerXPS-Top-Loader-Tackle-Bag-or-System/product/1304050934/ [See pp. 38-39 of the August 22, 2014 Office Action]. • Fishing Tackle Unlimited offers the Plano Softsider Tackle Bag with three utility boxes, and the E-Merse Submersible Electronic Case for protecting “cellphones, iPods, digital cameras, or other electronics” http://www.fishingtackleunlimited.com/p/fishing/c-/PL-4464-00.html [See pp. 30-31 of the August 22, 2014 Office Action]. • HOOK 1 Kayak Fishing Gear lists a number of tackle bags and boxes, such as the Berkley Tackle Bag and various bags, cases and boxes for storing and carrying electronics including the Attwood Dry Storage Box http://www.kayakfishinggear.com/search?q=tackle&type=product [See pp. 35-39 of the April 15, 2015 Final Office Action]. • ReelFlyRod.com offers various fishing and boat bags such as the Simms Headwaters Tackle Bag, being advertised as “the end all tackle bag for absolutely all your fly gear,” and the Patagonia Stormfront Roll Top Boat Bag, which is “ideal for dry storage and transporting extra gear/electronics to and from the water” http://www.reelflyrod.com/BAGS-LUGGAGE c282.htm [See pp. 43-46 of the April 15, 2015 Final Office Action]. • Academy Sports+Outdoors offers various tackle and waterproof bags, including the No Limits E-reader/Tablet Waterproof Pouch, as well as containers for protecting and storing fishing gear and electronics, such as sonar accessories and fishfinders http://www.academy .com/ shop /Cata- logSearch?catalogId=10051&rel=nofollow&langId=-1&storId=10151&N= [See pp. 56-59, 60, 61-62 of the April 15, 2015 Final Office Action]. • Overton’s lists for sale different marine electronics devices, such as GPS navigation devices and the Lowrance Elite-3x DSI fishfinder, and a “wide selection of tackle boxes, tackle trays, and sportsman’s bags in a variety of sizes and shapes,” including the Overton’s Large Boat Bag and the Gander Serial Nos. 86259338 and 86259431 - 18 - Mountain Soft Tackle Bag http://www.overtons.com/marine-electronics/ ; http://www.overtons.com/modperl/product/details.cgi?pdesc=Overtons- Large-Boat-Bag&i=96874;http://www.overtons.com/search/tackle%20 bag [See pp. 69, 76-77, 80 of the April 15, 2015 Final Office Action]. In view of the foregoing, Registrant’s fishing tackle bags and Applicant’s bags for carrying marine electronics such as GPS devices, are related goods sold in the same on-line fishing (i.e., tackle, fishing, fly fishing, fishing gear stores) and sporting goods specialty stores to the same class of consumers, i.e., people who want to fish while they are on a boat. Thus, Applicant’s and Registrant’s goods are related. Applicant argues that its goods are limited to bags that include inner dimensions sized and shaped to largely conform to the outer dimensions of the marine electronics, while Registrant’s fishing tackle bags would never be used for such purposes or in such a manner because they would not be sized to conform to specific marine electronic devices.18 Applicant’s RIPALIP bags displayed on its website are shown in two sizes: 13.5” W x 10” H x 4.5” D (designed to hold screen sizes of 8-12 inches) and 9.5” W x 8” H x 3.5” D (designed to fit[s] screen sizes 7 inches or less).19 The evidence submitted by the Trademark Examining Attorney shows for example, the FieldTeq Soft Sided Tackle Bag having “Eight external accessory pockets” by Sports Authority is 18” W x 10” H x 14” D; Cabela’s Pro Guide® Tackle Bags having a cell phone/GPS pocket, measure 14 ½” W x 10” H x 12” D and 18 ½” W x 12” H x 14” D; Tackle Direct lists the AFTCO Angler’s Bag AB2001ROY with “sewn-in closed-cell foam to protect 18 Applicant’s Ex Parte Briefs p. 14 (6 TTABVUE 15) (9 TTABVUE 15). 19 See 4/15/2015 Final Office Actions pp. 10-12 showing pages from Applicant’s website http: //www.ripalip.com/meps cover.php. Serial Nos. 86259338 and 86259431 - 19 - valuable accessories such as cameras, binoculars, hand-held GPS…” measuring 23” W x 14” H x 12” D; and Red’s Fly Shop offers the Simms Headwaters Tackle Bag with “garage-like gear capacity from trunk tailgate to boatdeck and beyond” is 18” W x 11” H x 11” D.20 Thus, the fishing tackle bags come in sizes that could receive GPS products of the size that Applicant’s products are designed to receive. Even if fishing men and women carry GPS products in a separate bag from the bag that contains their fishing lures, the evidence shows that retailers specializing in fishing related products offer bags of both types. The issue is not whether consumers would confuse the goods themselves, but rather whether they would be confused as to the source of the goods. In re Davia, 110 USPQ2d at 1818; In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1271-72 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel of the same patients to treat the same disease); In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984) (due to the similarity of the marks and related nature of goods, purchasers of LITTLE GOLIATH stapler kits and GOLIATH large diameter woodcased pencils are likely to believe that both products emanate from or are in some way associated with same 20 For example, see 4/15/2015 Final Office Actions, Sports Authority http://www.sports authority.com/FiledTeq-Soft-Sided-Tackle-Bag/product.jsp?productId=43863136 pp. 26-27; Cabela’s Pro Guide® Tackle Bag http://www.cabelas.com/ensemble/25-Off-Tackle-Storage %7C/pc/106974180/Cabelas-Pro-Guide174-Tackle-Bags... pp. 29; Tackle Direct AFTCO Angles’s Bag AB2001ROY http://www.tackledirect.com/aftco-anglers-bag.html pp. 31-32; Red’s Fly Fishing offers Simms Headwaters Tackle Bag http://www.redflyfishing.com /Simms-Headwaters-Tackle-Bag-p/simms-headwaters-tackle-bag.htm, pp. 83-84. Serial Nos. 86259338 and 86259431 - 20 - source). Applicant’s goods are bags for marine electronics, including GPS and other systems, used on boats. As shown by the evidence submitted, bags that can be used to hold GPS devices are sold on the same fishing-related websites that sell fishing tackle bags. Therefore, the purchasers for such goods would include boaters who use their boats for fishing. The overlap in trade channels and purchasers are also factors that weigh in favor of finding a likelihood of confusion. Applicant’s goods and Registrant’s goods are items which are likely to be sold through the same retail outlets to the same classes of purchasers. Therefore, marketing of these goods under similar marks would be likely to cause confusion as to source. In view of the foregoing, the goods are complementary and closely related, travel in the same channels of trade, and are sold to the same classes of purchasers, supporting a likelihood of confusion under the second and third du Pont factors. D. Conclusion While Applicant’s marks RIPALIP and , and Registrant’s mark RIP SOME LIPS, are not identical, there is a strong similarity in sound, sight, meaning and commercial impression. Additionally, the goods for which Applicant seeks to register its marks are related to the goods recited in the cited registration, and the channels of trade and classes of purchasers are overlapping. Therefore, we find a likelihood of confusion between Applicant’s marks and the cited mark for the identified goods. Decision: The refusals to register the marks in application Serial Nos. 86259338 and 86259431 under Section 2(d) of the Trademark Act are affirmed. Copy with citationCopy as parenthetical citation