Sandpiper Books Limited trading as PostScript Books

Trademark Trial and Appeal Board

Jun 10, 2021

79237908 (T.T.A.B. Jun. 10, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: June 10, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Postscript Books Limited
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Serial No. 79237908
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Alexander Lazouski of Lazouski IP LLC,
for Postscript Books Limited.
Jennifer O’Brien, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
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Before Lykos, Adlin and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Postscript Books Limited (“Applicant”) seeks registration on the Principal
Register of the mark POSTSCRIPT (in standard characters) for goods ultimately
identified as
Printed matter, namely, paper signs, books, manuals,
curricula, informational cards, booklets, magazines,
printed periodicals, pamphlets, handbooks and brochures
in the field of history, biography, visual and performing
arts, travel, transport, children’s, literature, lifestyle,
fiction, military history, entertainment, mind body spirit,
politics, philosophy, economics, science technology and
medicine, natural history, social sciences, sport, puzzles
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and games, science fiction, audiobooks, CDs and DVDs;
song books; photographs; graphic prints; lithographs;
oleographs; bookends; bookmarks; book covers; postcards;
chromolithographs; page holders; all of the above exclude
the field of real estate and computers and is not directed to
apartment dwellers or distributed within apartment
complexes or apartment associations in International
Class 16.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with Registration No. 3416096 for the identical mark
POSTSCRIPT (in standard characters) for “Writing instruments; ball point pens.”
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed.
Applicant then sought, concurrently with its appeal brief, a remand to amend the
identification of goods to limit the identification to specific fields and to exclude the
fields of “real estate and computers.” 7 TTABVUE. The Examining Attorney found
the amendment to the identification of goods acceptable and withdrew the Section
2(d) refusal based on Registration No. 1463458. See July 27, 2020 Office Action at
TSDR 1. Applicant then sought a second remand to the Examining Attorney to amend

1 Application Serial No. 79237908 was filed on May 17, 2018, under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f(a), requesting an extension of protection based on
Applicant’s International Registration No. 1415972 registered on May 17, 2018.

Page references to the application record refer to the online database pages of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs on appeal
refer to the Board’s TTABVUE docket system. Applicant’s brief is at 6 TTABVUE. The
Examining Attorney’s brief is at 17 TTABVUE.

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the identification of goods to indicate that the goods were “not directed to apartment
dwellers or distributed within apartment complexes or apartment associations.” 13
TTABVUE. The Examining Attorney accepted Applicant’s amendment and withdrew
the Section 2(d) refusal that cited the mark in Registration No. 1638369. See
February 8, 2021 Office Action at TSDR 1. The Examining Attorney maintained and
continued the refusal as to Registration No. 3416096 stating that the amendment to
the identification of goods does not obviate the likelihood of confusion between the
marks because “the identification of goods has been narrowed by subject matter,
which does not change the writing instruments in U.S. Reg. No. 3416096 being
related to Applicant’s stationery goods.” Id.
We affirm the refusal to register.
I. Evidentiary Objection
Before proceeding to the merits of the refusal, we address an evidentiary matter.
Applicant attached “additional evidence” to its brief in support of its argument that
large companies offer a wide range of products. 6 TTABVUE 10-37. The Examining
Attorney objects to consideration of this evidence. To the extent the evidence was not
previously made of record, the objection is sustained. See Trademark Rule 2.142(d)
(“The record in the application should be complete prior to the filing of an appeal.”).
However, some of the evidence Applicant attached to its brief is duplicative of
exhibits previously submitted with Applicant’s Request for Reconsideration. In re
Thor Tech Inc., 85 USPQ2d 1474, 1475 n.3 (TTAB 2007) (attaching evidence from
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record to briefs is duplicative and is unnecessary). With regard to that evidence, the
objection is overruled.
II. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for which
there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
In every Section 2(d) case, two key factors are the similarity or dissimilarity of the
marks and the goods or services. Federated Foods, Inc. v. Fort Howard Paper 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 differences in the marks.”).
A. Similarity or Dissimilarity of the Marks
We turn to the first DuPont factor, which requires us to determine the similarity
or dissimilarity of the marks when viewed in their entireties in terms of appearance,
sound, connotation and overall commercial impression. Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
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(Fed. Cir. 2005). The test under the first DuPont factor is not whether the marks can
be distinguished when subjected to a side-by-side comparison, but whether the marks
are sufficiently similar in terms of their overall commercial impression that confusion
as to the source of the goods or services offered under the respective marks is likely
to result. Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801
(Fed. Cir. 2018).
Applicant’s mark is POSTSCRIPT (standard characters) and the cited mark is
POSTSCRIPT (standard characters). To state the obvious, the marks are identical in
sound, appearance, connotation and commercial impression.
This DuPont factor weighs heavily in favor of a finding of likelihood of confusion.
B. Similarity or Dissimilarity of the Goods
We next consider the second DuPont factor, “[t]he similarity or dissimilarity and
nature of the goods or services as described in an application or registration.” In re
Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting
DuPont, 177 USPQ at 567). See also Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014). The goods need not
be identical or even competitive to find a likelihood of confusion. On-line Careline Inc. v.
Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). They need only be
“related in some manner and/or if the circumstances surrounding their marketing are
such that they could give rise to the mistaken belief that the goods emanate from the
same source.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
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1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007)). It is sufficient for a finding of likelihood of confusion as to a particular
class if relatedness is established for any item of identified goods or services within that
class in the application or cited registration. Tuxedo Monopoly, Inc. v. Gen. Mills Fun
Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Evidence of relatedness may include news articles and/or evidence from computer
databases showing that the relevant goods are used together or used by the same
purchasers; advertisements showing that the relevant goods are advertised together
or sold by the same manufacturer or dealer; and/or copies of prior use-based
registrations of the same mark for both an applicant’s goods and the goods listed in
the cited registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014)
(finding pepper sauce and agave related where evidence showed both were used for
the same purpose in the same recipes and thus consumers were likely to purchase
the products at the same time and in the same stores). See also In re Davey Prods.
Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009) (third-party website evidence
supported a finding of relatedness).
Applicant’s goods are “Printed matter, namely, paper signs, books, manuals,
curricula, informational cards, booklets, magazines, printed periodicals, pamphlets,
handbooks and brochures in the field of history, biography, visual and performing
arts, travel, transport, children’s, literature, lifestyle, fiction, military history,
entertainment, mind body spirit, politics, philosophy, economics, science technology
and medicine, natural history, social sciences, sport, puzzles and games, science
fiction, audiobooks, CDs and DVDs; song books; photographs; graphic prints;
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lithographs; oleographs; bookends; bookmarks; book covers; postcards;
chromolithographs; page holders; all of the above exclude the field of real estate and
computers and is not directed to apartment dwellers or distributed within apartment
complexes or apartment associations.” The goods in Registration No. 3416096 are
“Writing instruments; ball point pens.”
Restrictions to an applicant’s identification may not avoid confusion where the
cited registration contains no express limitations and the respective goods or services
otherwise are identical or highly similar. See, e.g., In re i.am.symbolic, llc, 866 F.3d
1315, 123 USPQ2d 1744, 1750 (Fed. Cir. 2017) (affirming Board finding that an
identification restricting the goods to those “associated with William Adams,
professionally known as ‘will.i.am,”’ imposed no meaningful limitation on the nature
of the goods, trade channels, or classes of purchasers).
Applicant’s identification of goods lists specific subject matter and includes a
restriction “all of the above exclude the field of real estate and computers and not
directed to apartment dwellers or distributed within apartment complexes or
apartment associations.” This restriction does not change the nature of the goods, nor
limit any other types of purchasers (e.g., non-apartment dwellers), nor limit
distribution channels outside of apartment complexes or apartment associations (e.g.,
retail stores or online stores). Therefore, the restriction is not a meaningful limitation
that would distinguish the goods in any way. See Bd. of Regents, Univ. of Tex. Sys. v.
S. Ill. Miners, LLC, 110 USPQ2d 1182, 1190-93 (TTAB 2014) (finding that although
opposer’s clothing items were limited by the wording “college imprinted” and the
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applicant’s identical or highly similar items were limited by the wording “professional
baseball imprinted,” these restrictions did not distinguish the goods, their trade
channels, or their relevant consumers in any meaningful way).
The Examining Attorney argues that Applicant’s goods are related to Registrant’s
goods because graphic prints, bookends, bookmarks, postcards, pens and writing
instruments are commonly produced by the same entity and printed matter and
writing instruments are commonly provided together in bookstores and stationery
stores. 17 TTABVUE 7. The Examining Attorney also asserts that third-parties often
offer reading-related items and writing instruments together. Id. at 8. As evidence of
relatedness, the Examining Attorney submitted printouts from 20 third-party
websites.
The third-party website evidence includes direct-to-consumer websites showing
the same types of goods as Applicant’s and Registrant’s identified goods offered under
the same mark. In particular, Idlewild Co. offers postcards, writing instruments and
pens; Hay offers prints and posters and writing instruments; Wrendale Designs offers
bookmarks and pens; Galison offers bookmarks, postcards, writing instruments and
pens; and Angelstar offers bookmarks and pens. April 17, 2019 Office Action at TSDR
2-11 (Hay); at TSDR 89-94 (Wrendale Designs); at TSDR 112-114 (Angelstar); at
TSDR 122-131 (Galison); September 17, 2018 Office Action at TSDR 22-29 (Idlewild
Co.).
The third-party website evidence includes specialty websites that focus on paper,
stationery, and writing goods. For example, on different webpages, Stationery Pal
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offers bookmarks along with pens, and JetPens offers postcards, bookmarks, writing
instruments and pens. These websites offer goods from a variety of sources.
September 17, 2018 Office Action at TSDR 5-21 (JetPens); April 17, 2019 Office
Action at TSDR 155-158 (Stationery Pal).
The third-party website evidence includes retailers that offer, among other things,
writing instruments and “stationery,” (under menu categories e.g., stationery,
stationery-tech-travel, desk-stationery). For example, Fred offers bookmarks and
pens; the Literary Gift Company offers bookmarks, writing instruments and pens,
and graphic prints; and Tom Dixon offers writing instruments, bookmarks, and
bookends. April 17, 2019 Office Action at TSDR 115-121 (Tom Dixon); at TSDR 142-
155 (Literary Gift Company); at TSDR 159-166 (Fred).
The Examining Attorney submitted evidence showing that some bookstores have
a separate category on their home webpages for “office and stationery” or “stationery
and writing” and offer bookmarks and writing instruments under this category, with
some bookstores offering these goods on different web pages. For example, The Strand
Bookstore offers books, bookmarks, writing instruments and posters, and RI Julia
offers books, pens and bookmarks. April 17, 2019 Office Action at TSDR 66-88 (RI
Julia); and at 95-111 (The Strand). These goods appear to be offered under different
marks.
The third-party website evidence shows that bookmarks, postcards and pens are
categorized as stationery on the various websites, accessible through drop down
menus, and that some of the third-party web pages show pens and pencils displayed
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with postcards. For example, webpages from The Metropolitan Museum of Art
display pens and pencils on the same page as postcards, and RI Julia bookseller
displays bookmarks and pens on the same page under the category of stationery.
April 17, 2019 Final Office Action, at TSDR 12-17 (The Metropolitan Museum of Art);
at TSDR 69-80 (RI Julia). Therefore, consumers will likely encounter pens when
purchasing postcards, or bookmarks.
Applicant argues that the Examining Attorney’s evidence “consists of excerpts
from websites of large companies offering both pens and books for sale” and contends
that this evidence is insufficient to support relatedness because these large
companies offer an extensive range of products. 6 TTABVUE 5-6. Applicant has
supported this argument with evidence from the webpages of two museum store
websites and webpages from retailer Staples. January 13, 2020 Request for
Reconsideration at TSDR 7-21.
However, as indicated above, the Examining Attorney’s website evidence consists
of a variety of retailers, not all of which are large companies or those that offer an
extensive variety of goods. In fact, the record reveals that a meaningful number of
retailers offer goods such as Applicant’s and goods such as Registrant’s.
Applicant also argues that “Books are not used for writing and have nothing in
common with writing instruments such as pens sold by Staples. Therefore, the field
of interest on [sic] the cited marks and in the Applicant’s mark are entirely different,
do not overlap, and [are] not complimentary [sic] or interchangeable.” 6 TTABVUE 6.
Applicant asserts that “the groups of uses of both parties’ products are entirely
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different” as writing instruments are for writing, while books are for reading and that
these differences alone are sufficient to avoid confusion. 6 TTABVUE 5-6.
“We recognize that consumers are able to distinguish Applicant’s goods from the
goods in the cited registration; however, that is not the standard” as likelihood of
confusion is found not as to the products but as to their source. In re I-Coat Company,
LLC, 126 USPQ2d 1730, 1738-39 (TTAB 2018) (citations omitted). Goods that are
neither used together nor related to one another in kind may still “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.” Shen Mfg. Co. v.
Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004) (quoting Recot,
54 USPQ2d at 1898 (comparing FRITO-LAY for snack foods to FIDO LAY for dog
treats)).
Additionally, Applicant’s arguments fail to address the Examining Attorney’s
evidence showing that postcards, bookmarks, writing instruments and pens are
stationery goods offered together, nor does Applicant address the fact that postcards
and writing instruments and pens could be used together. Indeed, postcards and
writing instruments and pens are complementary goods. Moreover, some authors still
create the identified “paper signs” and write the identified “books” in longhand, using
writing instruments.
We find the third-party Internet website evidence is more than sufficient to
establish that at least bookmarks, postcards and writing instruments and pens are
commercially related and that postcards and writing instruments and pens are
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complementary goods. See In re Sela Prods., LLC, 107 USPQ2d 1580, 1587 (TTAB
2013) (purchasers are likely to encounter both surge protectors, and wall mounts and
brackets, during the course of purchasing a television, audio or home theater system);
Polo Fashions, Inc., et.al. v. La Loren, Inc., 224 USPQ 509, 511 (TTAB 1984) (“[A]
person purchasing products for use in the bath could very well look for [applicant’s]
bath sponges, as well as [opposer’s] bath oil, soaps and the like”; these products “go
hand in hand” and would be sold to the same customers in the same marketing
channels). See also In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984 )] (cheese and baked goods found related because
they are often offered together and purchasers will see, buy, and consume them
together); Am. Drill Bushing Co. v. Rockwell Mfg. Co., 342 F.2d 1019, 145 USPQ 144,
146 (CCPA 1965) (drill bits and drill bushings, although in entirely different
categories, may be used together).
The second DuPont factor also favors a finding of likelihood of confusion.
C. Similarity or Dissimilarity of the Trade Channels, Classes of Consumers
We now turn to the third DuPont factor. This factor considers “the similarity or
dissimilarity of established, likely-to-continue trade channels.” DuPont, 177 USPQ at
567. Our analysis under this factor is based on the identifications of goods in the
application and the identification of goods in the cited registration. See Stone Lion
Capital Partners, 110 USPQ2d at 1161-63 citing Octocom Sys., Inc. v. Houston Comp.
Servs. Inc., 918 F.2d 937, 942 (Fed.Cir.1990).
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Applicant’s “paper signs, books, manuals, curricula, informational cards, booklets,
magazines, printed periodicals, pamphlets, handbooks and brochures, audio CDs and
DVDs” are limited by field/subject matter, and all of the identified goods are restricted
“to exclude the field of real estate and computers.” In addition, the goods are “not
directed to apartment dwellers or distributed within apartment complexes or
apartment associations.” Although there are some restrictions as to field (specific
fields of books and printed material listed, and excluding the field of real estate and
computers), class of consumers (not directed to apartment dwellers) and distribution
channels (no distribution to apartment complexes or apartment associations),
nothing otherwise limits Applicant’s distribution channels for the goods. Therefore,
Applicant’s goods may be otherwise offered in all the other normal trade channels for
such goods including online stores and brick and mortar retail stores that sell writing
instruments and stationery such as those discussed above. In such trade channels,
Applicant’s goods would be purchased by all the usual purchasers for such goods,
which would include ordinary consumers, which are not excluded by the limitation
“not directed to apartment dwellers.”
Registrant’s writing instruments and ball point pens are unrestricted as to trade
channels and classes of consumers, and we must presume that Registrant’s goods
move in all channels of trade usual for these goods, such as online stores and brick
and mortar retail stores, and that they are purchased by the usual classes of
purchasers, which also would include ordinary consumers. See, Kangol Ltd. v.
KangaROOS U.S.A., 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed Cir. 1992).
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Applicant argues that the channels of trade do not overlap because Applicant’s
goods “would be sold in a traditional book store or directly through the owner’s
website” while Registrant’s goods “would be sold at their stores or through authorized
distributers” and that consumers would not encounter Applicant’s and Registrant’s
goods online or in the same retail stores. 6 TTABVUE 6-7. However, as indicated,
there are no such limitations in the registration as to distribution channels, and while
the application excludes apartment complexes or apartment associations as a
distribution channel, it does not restrict the sale of Applicant’s goods to Applicant’s
own store or other bookstores, either brick and mortar, or online.
Therefore, we are bound to consider all other appropriate channels of trade for
such goods, and we cannot take into account the additional asserted limitations in
Applicant’s actual trade channels. In re La Peregrina Ltd., 86 USPQ2d 1645, 1647
(TTAB 2008) (“An applicant may not restrict the scope of the goods covered in the
cited registration by argument or extrinsic evidence.”); In re Bercut-Vandervoort &
Co., 229 USPQ 763, 764 (TTAB 1986) (extrinsic evidence and argument suggesting
trade-channel restrictions not specified in application rejected).
The evidence also supports a finding that a consumer would be likely to encounter
one type of product while purchasing the other. As indicated, the Internet website
evidence from twenty third-party websites submitted by the Examining Attorney
show different types of retailers (bookstores e.g., The Strand Bookstore, Vromans
Bookstore), home furnishing and home décor stores (e.g.,Tom Dixon, Hay), specialty
retailers (e.g., Anthropologie, Literary Book Company) and paper goods stores (e.g.,
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Stationery Pal, Wrendale Designs) sell goods such as Applicant’s and Registrant’s. In
particular, these retailers offer stationery items, or stationery and home décor items,
or printed matter and stationery items, allowing a consumer to purchase bookmarks
and pens, or postcards and pens, or posters and pens, or bookends and pens, or print
books and pens. On these websites, bookmarks, pens, and postcards are usually found
under stationery on different webpages, while posters and books and bookends are
found in different departments of books, or home décor or wall décor, on different
pages, and are accessed via different drop-down menu options.
Applicant also argues that the consumers of the products and customer groups are
“vastly different” because Applicant’s customers are looking for reading material
while Registrant’s customers are “looking for something to write with.” 6 TTABVUE
6. However, the third-party website evidence shows that goods such as Applicant’s
and Registrant’s are sold in the same online stores and may well be encountered and
purchased by the same consumers on the same websites.
The third DuPont factor favors a finding of likelihood of confusion.
III. Conclusion
We have considered all of the arguments and evidence of record and all relevant
DuPont factors. We find the cited mark is identical to Applicant’s mark, the goods are
related, move in the same channels of trade, and are offered to the same class of
consumers. As a result we find confusion likely.
Decision: The refusal to register Applicant’s mark POSTSCRIPT is affirmed.