Stop! Children’s Cancer, Inc.Download PDFTrademark Trial and Appeal BoardJun 20, 2017No. 86854717 (T.T.A.B. Jun. 20, 2017) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: June 20, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ________ In re Stop! Children’s Cancer, Inc. ________ Serial No. 86854717 _______ Sven W. Hanson, Esq. for Stop! Children’s Cancer, Inc. Megan Hartnett, Trademark Examining Attorney, Law Office 123, Susan Hayash, Managing Attorney. _______ Before Quinn, Ritchie and Shaw, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Stop! Children’s Cancer, Inc. (“Applicant”) filed an application to register on the Principal Register the mark shown below Application Serial No. 86854717 2 (CHILDREN’S CANCER disclaimed) for “charitable fundraising” in International Class 36.1 The application includes the following description: “The mark consists of four ‘tear drop’ shapes in the form of the arms and legs of a human shape with a[n] oval head, all to the left of the words STOP CHILDREN’S CANCER. Color is not claimed as a feature of the mark.” The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used in connection with Applicant’s services, so resembles two marks previously registered on the Principal Register, owned by the same entity, as to be likely to cause confusion. The cited marks are the following: STOP CANCER (in typed form) (CANCER disclaimed)2 and the mark shown below3 (CANCER disclaimed), both for “charitable fund raising for cancer research and cancer centers” in International Class 36. The second registration includes the 1 Application Serial No. 86854717, filed December 19, 2015 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging first use and first use in commerce on November 30, 2015. 2 Registration No. 2337610, issued April 4, 2000; renewed. Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. TMEP § 807.03(g) (Apr. 2017). A typed mark is the legal equivalent of a standard character mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly were known as ‘typed’ marks.”). 3 Registration No. 4130546, issued April 24, 2012. Application Serial No. 86854717 3 following description: “The mark consists of the words ‘STOP CANCER’ in white stylized font with ‘STOP’ above ‘CANCER’ set within an octagonal polygon which fades from darker red at the left to lighter red in the upper right. A darker red banner extends diagonally behind the upper left portion of the octagon to the lower right portion of the octagon. The mark in its entirety appears on a transparent background. The color(s) red and white is/are claimed as a feature of the mark.” When the refusal to register was made final, Applicant appealed. Applicant and the Examining Attorney filed briefs. Applicant contends that its mark is different from each of the cited marks, with Applicant’s mark being dominated by the graphic design. No argument is presented regarding the similarity of the services. Applicant submitted third-party registrations to show that the wording in the cited marks is weak. The Examining Attorney maintains that the marks, sharing similar wording, create similar commercial impressions. Further, Applicant’s services encompass the services listed in the cited registration and, thus, overlap. We focus our likelihood of confusion analysis between Applicant’s mark and the typed (standard character) mark shown in Registration No. 2337610. We do this because out of the two cited registrations, this one is most likely to support a finding of likelihood of confusion. That is, if confusion is likely between those marks, there is no need for us to consider the likelihood of confusion with the cited mark with design elements, while if there is no likelihood of confusion between Applicant's mark and the cited mark in typed (standard character) form, then there would be no likelihood Application Serial No. 86854717 4 of confusion with the mark with design elements. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). With respect to the second du Pont factor regarding the similarity of the services, we must look to the services as identified in the application and the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Applicant’s recitation of services reads “charitable fundraising,” while Registrant’s services are identified as “charitable fund raising for cancer research and cancer centers.” If the application describes services broadly, and there is no limitation as to their nature, type, channels of trade, or class of purchasers, it is presumed that the application encompasses all services of the type described, that they move in all normal channels of trade, and that they are available to all classes of purchasers. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013). Applicant’s broadly worded Application Serial No. 86854717 5 recitation encompasses the services more narrowly identified in the cited registration. See, e.g., In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (holding CLUB PALMS MVP for casino services, and MVP for casino services offered to preferred customers identified by special identification cards, likely to cause confusion); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986) (holding RESPONSE for banking services, and RESPONSE CARD for banking services rendered through 24-hour teller machines, likely to cause confusion). As worded in the respective recitations, the services are legally identical for purposes of determining whether there is a likelihood of confusion between the marks. Given the legal identity of the services, we presume that these services travel through the same channels of trade (e.g., charitable organizations) to the same classes of customers (e.g., charitable donors), including all usual channels of trade and all normal potential purchasers for such services. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). See also In re Viterra Inc., 101 USPQ2d at 1908 (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). Application Serial No. 86854717 6 The identity between Applicant’s and Registrant’s services, the presumed identical trade channels, and the presumed overlap in purchasers are du Pont factors that weigh heavily in favor of a finding of likelihood of confusion. With respect to the du Pont factor dealing with the similarity of the marks, we must compare the marks in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting In re E. I. du Pont de Nemours & Co., 177 USPQ at 567). “The proper test is not a side- by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014). “[S]imilarity is not a binary factor but is a matter of degree.” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003)). In comparing the marks, we are mindful that where, as here, the services are identical, the degree of similarity between the marks necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 Application Serial No. 86854717 7 USPQ2d 1698, 1700 (Fed. Cir. 1992); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014). Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, our 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. v. 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, although marks must be considered in their entireties, it is settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the mark’s commercial impression. In re National Data Corp., 224 USPQ at 751 (“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 consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”). In general, when wording and a design comprise the mark, as in the case of Applicant’s mark, then the wording is normally accorded greater weight because the wording is likely to make an impression upon purchasers, would be remembered by them, and would be used by them to request the goods. In re Viterra, 101 USPQ2d at 1911 (quoting CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. Application Serial No. 86854717 8 1983) (“in a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed”)); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430-31 (TTAB 2013); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). See also Giant Food, Inc. v. Nation’s Food Serv., Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Applicant argues that the design feature, for a variety of reasons (e.g., “unusual and creative”; larger in size; being to the left, thus the “first” element of the mark), dominates its mark. 4 TTABVUE 3-4. Contrary to this argument, we find that the literal portion STOP CHILDREN’S CANCER dominates over the design portion, with this literal portion being quite similar to the entirety of Registrant’s mark STOP CANCER. Nevertheless, the marks must be considered in their entireties, including the design feature of Applicant’s mark, in determining the likelihood of confusion. Although we have pointed to the dominant portion of Applicant’s mark, we again acknowledge the fundamental rule in this situation that the marks must be considered in their entireties. See 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). Thus, we have considered the presence of the additional word CHILDREN’S and the design feature in Applicant’s mark. Even when we factor in these additional elements of Applicant’s mark, however, we find that the marks STOP CANCER and STOP CHILDREN’S CANCER and design are similar in sound and appearance, with both literal portions beginning with STOP and ending with CANCER. Further, the meanings of the marks are very similar, given their similar Application Serial No. 86854717 9 formulations: one being that donations will be used to stop cancer and the other that donations will be used to stop children’s cancer. Given the similarities in sound, appearance and meaning, the marks engender overall commercial impressions that are similar. The similarities of the marks is a du Pont factor that weighs in favor of a finding of likelihood of confusion. In an attempt to diminish the distinctiveness of the registered mark, Applicant submitted three third-party registrations, relying on the sixth du Pont factor, namely “the number and nature of similar marks in use on similar goods [or services].” Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). Thus, we turn to consider the cited mark’s conceptual strength.4 Indeed, “[t]he weaker an opposer’s mark [or Registrant’s cited mark], the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Juice Generation, Inc. v. GS Enterprises, LLC, 794 F.2d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). In this connection, Applicant submitted three third-party registrations of marks that include both of the terms STOP and CANCER. (May 23, 2016 Response to Office Action).5 The registrations are as follows: Reg. No. 3992156 (SISTERS 4 Inasmuch as no third-party uses were introduced, there is no way to gauge the commercial strength of the cited mark. 5 Applicant also filed one third-party application. There is no evidence that this application ever registered and, in any event, a pending application is evidence only that the application was filed on a certain date; it is not evidence of use of the mark. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). Application Serial No. 86854717 10 NETWORK INC. STOP THE SILENCE BREAST CANCER WALK and design for “charitable services, namely, organizing fundraising services and events to raise funds in the field of cancer research and local community breast health awareness programs”); Reg. No. 4309235 (STOP CANCER BEFORE IT STARTS! for “promoting the public awareness of prevention and early detection of cancer”); and Reg. No. 4829721 (ONE GOAL. STOP CANCER. and design for “charitable fund raising services”). Third-party registrations are relevant evidence of the inherent or conceptual strength of a mark or term because they are probative of how terms are used in connection with the goods or services identified in the registrations. “Third party registrations show the sense in which the word is used in ordinary parlance and may show that a particular term has descriptive significance as applied to certain goods or services.” See, e.g., Institut National Des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992). See also Juice Generation, Inc. 115 USPQ2d at 1674-75; Jack Wolfskin, 116 USPQ2d at 1136; In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006). Third-party registrations used in this manner are not evidence that customers are accustomed to seeing the use of other, similar, marks in the marketplace, but rather evidence that a term is suggestive or descriptive of the relevant goods or services, just as in the case of a dictionary definition. Such terms may be conceptually weak because the more suggestive or descriptive a term is, the less likely prospective purchasers are to attach source-identifying significance to it. In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1744-46 (TTAB 2016). Application Serial No. 86854717 11 In the present case, the evidence (including the disclaimer of CANCER) shows that the cited registration is conceptually weak, thereby entitling it to a lesser scope of protection. We do not find, however, that the three third-party registrations are so extensive as to constitute “powerful” evidence of weakness; further, the record is devoid of any third-party uses of similar marks for similar services. Juice Generation, 115 USPQ2d at 1674; Jack Wolfskin, 116 USPQ2d at 1136. In any event, although we recognize that the registered mark may be highly suggestive, even weak marks are protected against similar marks for identical services. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (likelihood of confusion is to be avoided as much between weak marks as between strong marks); Top Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d 1163, 1173 (TTAB 2011). We find that the sixth du Pont factor is, at best, slightly in favor of Applicant’s contention that confusion is unlikely.6 In sum, the similarities of the marks, and the identity of the services, trade channels and consumers are factors that cumulatively outweigh any weakness of the cited mark. We conclude that purchasers familiar with Registrant’s “charitable fund raising for cancer research and cancer centers” rendered under the mark STOP CANCER would be likely to believe, upon encountering Applicant’s “charitable 6 Of course, since Applicant believed likelihood of confusion with Registrant’s mark was unlikely it could have sought a consent agreement from Registrant. See, e.g., In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993). Application Serial No. 86854717 12 fundraising” offered under the mark that the services originate from or are somehow associated with or sponsored by the same entity. Decision: The refusal to register is affirmed. 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