Tarek Kudsi Alattarv.Charles E. Runels, Jr.Download PDFTrademark Trial and Appeal BoardApr 8, 202191242819 (T.T.A.B. Apr. 8, 2021) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: April 8, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Tarek Kudsi Alattar v. Charles E. Runels, Jr. _____ Opposition No. 91242819 _____ Heena N. Kampani of Law Office of Heena N. Kampani for Tarek Kudsi Alattar. Patrick J. Arnold Jr. and Carey J. Prill of McAndrews, Held & Malloy, Ltd. for Charles E. Runels, Jr. _____ Before Kuhlke, Adlin and Pologeorgis, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Applicant, Charles E. Runels Jr., seeks registration of the standard character mark ALTAR for: Cosmetic skin cream products for anti-aging purposes, namely, facial cream, body lotion, hand cream, cuticle cream, lip balm, and after-sun products; Anti-aging body care products for cosmetic purposes, namely, facial cream, body lotion, hand cream, cuticle cream, lip balm, and after- sun products; Aromatic body care products, namely, body lotion, shower gel, shampoo, hair conditioner, lip balm, and foot cream; Body and beauty care cosmetics; Body cream soap; Cleansing creams; Cleansing milk; Cosmetic bath Opposition No. 91242819 2 salts; Cosmetic body scrubs; Cosmetic creams for skin care; Cosmetic hand creams; Cosmetic masks; Cosmetic massage creams; Cosmetic milks; Cosmetic nourishing creams; Cosmetic oils; Cosmetic oils for the face and body; Cosmetic preparations for body and skin care; Cosmetic preparations for skin renewal; Cosmetic preparations for slimming purposes; Cosmetic preparations for the hair and scalp; Cosmetic preparations, namely, facial creams, facial cleansers, facial emulsions, facial lotions, facial toners, firming creams; firming lotions; skin balsams; Cosmetic products in the form of aerosols for skin care; Cosmetic products in the form of aerosols for skincare; Cosmetic rouges; Cosmetic skin fresheners; Cosmetic soaps; Cosmetic sun milk lotions; Cosmetic sun oils; Cosmetic sun-protecting preparations; Cosmetic sun-tanning preparations; Cosmetic sunscreen preparations; Cosmetic suntan lotions; Cosmetic suntan preparations; Cosmetic tanning preparations; Cosmetic white face powder; Cosmetics; Cosmetics and cosmetic preparations; Cosmetics and make-up; Cosmetics in general, including perfumes; Cosmetics in the form of milks, lotions and emulsions; Cosmetics, namely, compacts; Cosmetics, namely, lip primer; Cosmetics, namely, lip repairers; Cream soaps; Decorative transfers and skin jewels for cosmetic purposes; Deodorant soap; Disinfecting perfumed soaps; Eau de perfume; Eye compresses for cosmetic purposes; Eye make-up; Eye make-up remover; Eyebrow cosmetics; Eyes make-up; Face creams and cleansers containing benzoyl peroxide for cosmetic purposes; Face creams for cosmetic use; Facial beauty masks; Facial cleaning preparation, namely, salicylic acne cleanser not for medical purposes; Facial cleansers; Facial cleansing grains; Facial cleansing milk; Facial concealer; Facial cream; Facial creams; Facial emulsions; Facial lotion; Facial make-up; Facial make-up, namely, powders; Facial masks; Facial moisturizer with SPF; Facial moisturizers; Facial oils; Facial scrubs; Facial washes; Flower essences for cosmetic purposes; Foam cleansers for personal use; Foams containing cosmetics and sunscreens; Foundation make-up; Fragranced face care preparations, namely, facial oils; Fragranced facial moisturizer; Fragranced skin care preparations, namely, body oils; Gels for cosmetic purposes; Gift baskets containing non-medicated bath preparations and cosmetic preparations; Glitter for Opposition No. 91242819 3 cosmetic purposes; Granulated soaps; Greases for cosmetic purposes; Hand soaps; Handmade soap bars; Lip stains; Liquid bath soaps; Liquid perfumes; Liquid soap; Liquid soap used in foot bath; Liquid soaps; Liquid soaps for hands and face; Liquid soaps for hands, face and body; Loofah soaps; Lotions for cosmetic purposes; Makeup for the face and body; Make-up foundations; Make-up kits comprised of foundation, lip stick, eye shadow; Make-up pencils; Make- up powder; Make-up preparations; Make-up preparations for the face and body; Make-up primer; Make-up remover; Make-up removing lotions; Make-up removing milk, gel, lotions and creams; Make-up removing milks; Make-up removing preparations,” in International Class 3.1 Opposer, Tarek Kudsi Alattar, has opposed registration of Applicant’s mark on the ground that, as used in connection with Applicant’s goods, the mark so resembles Opposer’s previously used and registered mark , for a variety of goods and services including cosmetics, hair lotions, and soaps in International Class 3, as to be likely to cause confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Not. of Opp., 1 TTABVUE. By his answer, Applicant admits, inter alia, that USPTO records reflect that Opposer is the record owner of the registration for cosmetics, hair lotions and soaps and that a Section 8 and 15 affidavit was filed. Ans. ¶¶ 4, 40, 4 TTABVUE 2, 6). Applicant denies the remaining salient allegations.2 1 Serial No. 87802753, filed February 19, 2018, based on an allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). 2 Applicant’s remaining “affirmative defense” is simply an amplification of his denials. Opposition No. 91242819 4 I. RECORD The record includes the pleadings and, by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of the application subject to the notice of opposition. In addition the record includes: Opposer’s Notice of Reliance Exhs. 1-4 consisting of: 1) copies of Opposer’s pleaded Registration Nos. 3862764 and 5410459; and 2) Applicant’s Responses to Opposer’s Interrogatories and Requests for Production of Documents;3 and Applicant’s Notice of Reliance Exh. 1 consisting of a copy of Opposer’s pleaded Registration No. 3862764 and the Trademark Status & Document Retrieval (TSDR) printout showing the current status and title of the registration.4 II. SECTION 2(d) CLAIM Section 2(d) of the Trademark Act prohibits the registration of a mark that “[c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with 3 14 TTABVUE 27-72. The trial brief attached to the notice of reliance and Exhs. 5-8 were stricken by Board order on April 2, 2020. 19 TTABVUE. Exh. 4 comprises Applicant’s Responses to Opposer’s First Request for Production of Documents. The responses do not include produced documents, merely the response to the request setting out objections and/or indicating whether or not documents exist or will be produced and, as such, may be introduced under notice of reliance. Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1217 n.8 (TTAB 2011). 4 20 TTABVUE. Pleaded registrations may be made of record by submitting “a current copy of information from the electronic database records of the Office showing the current status and title of the registration.” Trademark Rule 2.122(d), 37 C.F.R. § 2.122(d). “When evidence has been made of record by one party in accordance with these rules, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence.” Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a). Opposition No. 91242819 5 the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). To prevail on his Section 2(d) claim, Opposer must prove, by a preponderance of the evidence, that it is entitled to a statutory cause of action, has priority with respect to his registered mark vis-à-vis Applicant’s mark ALTAR, and that Applicant’s use of his mark in connection with the goods identified in his application is likely to cause confusion, mistake, or deception as to the source or sponsorship of those goods. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000). Opposer’s Registrations are summarized below. Registration No. 3862764 for the mark for the following goods: Bleaching preparations for household use; Cleaning preparations; Cosmetics; Dentifrices; Essential oils; Hair lotions; Perfumery; Polishing, scouring and abrasive preparations; Soaps, in International Class 3; Dental wax; Dietetic foods adapted for medical use; Disinfectants for medical instruments; Disinfectants for sanitary purposes; Food for babies; Fungicides and herbicides; Material for stopping teeth; Medical and surgical dressings; Medical and surgical plasters; Pharmaceutical preparations for the treatment of infectious diseases; Preparations for destroying vermin; Sanitary preparations for medical use; Veterinary preparations for treatment of intestinal bacteria, in International Class 5; Compotes; Dried fruit and vegetables; Edible oils and fats; Eggs; Jellies and jams; Meat extracts; Meat, fish, poultry and game; Milk; Milk products excluding ice cream, ice milk and frozen yogurt; Opposition No. 91242819 6 Preserved, dried and cooked fruit and vegetables, in International Class 29; Artificial coffee; Baking powder; Bread; Cocoa; Coffee; Confectionery, namely, pastilles; Flour; Honey; Ice; Mustard; Pastry; Processed cereals; Rice; Sago; Salt; Sauces; Spices; Sugar; Tapioca; Tea; Treacle; Vinegar; Yeast, in International Class 30; Agricultural grains for planting; Foodstuffs for animals containing botanical extracts; Fresh fruit and vegetables; Live animals; Malt for brewing and distilling; Natural plants and flowers; Seeds and bulbs, in International Class 31; and Beer; Fruit drinks and fruit juices; Mineral and aerated waters; Non-carbonated, non-alcoholic frozen flavored beverages; Syrups for beverages, in International Class 32. The registration contains a disclaimer for the word ALATTAR and the non-Latin characters that transliterate to ALATTAR for the goods in Class 3, a translation of ALATTAR as PERFUMER and the non-Latin characters transliterate to ALATTAR which means PERFUMER. The mark is described as consisting of “a stylized Arabic word, the word ‘ALATTAR’ in stylized lettering, and a circle with a border within which appears a silhouette of a man with his arm held up, all upon a rectangle.” Registration No. 5410459 for the mark for the following services: Business management, business administration services, Providing office functions, in International Class 35; Providing of food and drink, Providing temporary accommodation, in International Class 43; and Medical services, veterinary services, Hygienic and beauty care, Agriculture and horticulture services, namely, plant selection and propagation of plants, Opposition No. 91242819 7 plant material, and produce in connection with commercial rooftop soil farms, in International Class 44. The registration contains a disclaimer for the word ALATTAR and the non-Latin characters that transliterate to ALATTAR a translation of ALATTAR as PERFUMER and the non-Latin characters transliterate to ALATTAAR which means PERFUMER. The mark is described as “a rectangle containing design of a shaded circle featuring a circular outline along its border. Within the circle is an illustration of a silhouette of a man with a raised arm. To the right of the circle but still within the rectangle is stylized Arabic lettering, below which is the wording ‘ALATTAR’ written in stylized text.” In making our determination, we have not considered Opposer’s arguments based on and references to evidence that was stricken by prior Board order.5 A. Entitlement to a Statutory Cause of Action and Priority6 Opposer’s entitlement to a statutory cause of action is a requirement that must be proven by the plaintiff in every inter partes case. See Australian Therapeutic Supplies 5 We have not considered the material attached to the brief. Hole In 1 Drinks, Inc. v. Michael Lajtay, 2020 USPQ2d 10020, at *2 (TTAB 2020) (exhibits attached to brief not considered); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1955 (TTAB 2008) (“while exhibits to briefs are not explicitly prohibited by the Trademark Rules, the Board will usually ignore them, because they comprise either untimely evidence or unnecessary copies of timely evidence”); ITC Entertainment Group Ltd. v. Nintendo of America Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998) (filing duplicative submissions is a waste of time and resources, and is a burden on the Board). 6 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain applicable as the tests “share a similar purpose and application.” Corcamore LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *7 (Fed. Cir. 2020), see also Spanishtown Enters., Inc. v. Transcend Resources, Inc., 2020 USPQ2d 11388, at *2 (TTAB 2020). Opposition No. 91242819 8 Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)). A party in the position of plaintiff may oppose registration of a mark where such opposition is within the zone of interests protected by the statute, 15 U.S.C. § 1063, and the party has a reasonable belief in damage that is proximately caused by registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, *6-7 (Fed. Cir. 2020). As listed above, the record includes copies of Opposer’s pleaded registrations, a status and title copy of Registration No. 3862764, and Applicant’s admissions that the USPTO database shows Opposer is the record owner of the pleaded registrations. In view thereof, Opposer’s entitlement to a statutory cause of action to oppose registration of Applicant’s mark is established. In addition, because the pleaded registrations are not the subject of a counterclaim, priority is not in issue with respect to the marks and goods and services in the registrations.7 See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); and King Candy Co., Inc. v. Eunice King’s Kitchen, 7 There is no question as to the proof of Opposer’s pleaded Registration No. 3862764 in view of the electronic status and title copy submitted by Applicant. To the extent Opposer’s copy of Registration No. 5410459 and Applicant’s admissions as to that registration are not sufficient to make it of record, that does not impact the ultimate determination inasmuch as the analysis focuses on the closer registration for which the record includes a status and title copy. Opposition No. 91242819 9 Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Applicant does not dispute Opposer’s entitlement or priority. B. Likelihood of Confusion Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (DuPont). See also In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019) (Board considers each DuPont relevant factor for which there is evidence and argument). Two key considerations are the similarities between the marks and the similarities between the goods and services. In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1340, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). We focus our analysis on Opposer’s mark and goods in International Class 3 in Registration No. 3862764 because the identified goods are, in part, identical, legally identical and otherwise closely related. If we do not find a likelihood of confusion with respect to this registered mark and its goods, then there would be no likelihood of confusion with the mark and services in Opposition No. 91242819 10 Opposer’s other registration.8 See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). 1. Relatedness of the Goods, Channels of Trade, Classes of Purchasers, and Conditions of Sale We turn first to a consideration of the goods, channels of trade, classes of purchasers and conditions of sale. We must make our determinations under these factors based on the goods as they are recited in the registration and application. See Octocom Sys. Inc. v. Houston Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed.”); In re Elbaum, 211 USPQ 639 (TTAB 1981). The subject application and Opposer’s registration contain identical goods (Opposer’s “cosmetics” and Applicant’s “cosmetics” and “cosmetics and cosmetic preparations”) and legally identical goods (Applicant’s “cosmetic preparations for the hair and scalp” encompasses Opposer’s “hair lotion”) (Opposer’s “soap” encompasses 8 Although the word ALATTAR is disclaimed only for the goods in Class 3 and not for the goods in the other classes in Registration 3862764, there is no evidence upon which to make a finding as to the relatedness of the goods in other classes (e.g., dental wax, disinfectants for medical instruments, compotes, dried fruit and vegetables, artificial coffee, bread, agricultural grains for planting, foodstuffs for animals containing botanical extracts) to the goods listed in the subject application. Thus, even though in theory the word ALATTAR may possess significance sufficiently separate from the other wording and design to alter the analysis of the marks as to Opposer’s other registered goods, in view of the lack of evidence as to the relationship for these goods or the commercial strength of the mark, we would not be able to find likelihood of confusion. As for Opposer’s Registration No. 5410459, the word ALATTAR is disclaimed for all of the services in each class. Opposition No. 91242819 11 Applicant’s “cosmetic soaps” “Body cream soap” “Deodorant soap” “Granulated soaps” and “Hand soaps”). We also find Applicant’s various skin care goods in the form of lotions and creams are closely related to Opposer’s various cosmetic goods and hair lotions. It is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed by the identification of goods or services within a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014). Because the goods are identical and legally identical and there are no limitations as to channels of trade or classes of purchasers in either the application or Opposer’s registration, we must presume that Applicant’s and Opposer’s goods will be sold in the same channels of trade and will be bought by the same classes of purchasers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (TTAB 2012); Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Although there is some information in the record for Applicant’s actual channels of trade (Applicant’s website, a booth at the American Academy of Anti-Aging Medicine) and classes of consumers (adults interested in anti-aging techniques),9 we may not limit the trade channels by this extrinsic evidence. In re Elbaum, 211 USPQ 9 Opp. Notice of Reliance Exh. 3 Response to Interrogatory Nos. 11, 13-16, 24 TTABVUE 42- 43. Opposition No. 91242819 12 at 640. Opposer’s and Applicant’s arguments pertaining to trade channels based on extrinsic evidence or unsupported argument are immaterial. The same is true as to the conditions of sale and whether the goods are subject to more careful purchasing decisions. As explained above, the nature and scope of a party’s goods must be determined on the basis of the goods or services recited in the application or registration. See, e.g., Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (Board must “give full sweep” to an identification of goods regardless of registrant’s actual business). We must consider various cosmetics, lotions and soaps from all price points, and base our determination on the least sophisticated consumer of the identified goods. Stone Lion, 110 USPQ2d at 1163 (cited in In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (“Board precedent requires our decision to be based on the least sophisticated potential purchasers.”)). Thus, although there is information in the record that Applicant’s cosmetic creams cost $147 per container,10 that is only one of the goods for which Applicant seeks registration and because the parties’ respective identifications of goods are unrestricted, we must assume that these goods are sold to ordinary purchasers who exercise no more than ordinary care in their purchasing decisions. See In re Fabfitfun, Inc., 127 USPQ2d 1670, 1673 (TTAB 2018) (no restriction on price in identifications required Board to consider degree of care exercised by purchasers of low-cost cosmetics). 10 Opp. Notice of Reliance Exh. 3 Response to Interrogatory No. 8, 24 TTABVUE 41. Opposition No. 91242819 13 In view of the above, the similarity of the goods, the channels of trade, classes of purchasers and conditions of sale favor a finding of likelihood of confusion. 2. Similarity of the Marks We now consider the similarity or dissimilarity of the parties’ marks and compare them in their entireties in terms of appearance, sound, connotation and commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir. 2018); see also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)). “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) (quotation omitted). The marks must be considered in their entireties, but “‘in articulating reasons for reaching a conclusion on the issue of confusion, 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.”’ Detroit Athletic, 128 USPQ2d at 1051 (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)). Finally, when, as here, the goods are identical or legally identical in part, the degree of similarity between the marks necessary to support a determination that confusion is likely declines. See Opposition No. 91242819 14 Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010). Much of Opposer’s argument appears to assert a different mark, the word ALATTAR by itself. Opposer has not established proprietary common law rights in ALATTAR as a mark by itself and we only address the mark in the pleaded and proven Registration No. 3862764. Thus, we consider whether the mark ALTAR is confusingly similar to the mark . Citing In re Johnson Products Co., Inc., 220 USPQ 539, 540 (TTAB 1983), Opposer argues that where the marks are used in connection with identical goods the most important factor is the overall commercial impression of the marks. In that case, the Board stated more broadly that in comparing marks generally the “most important of these is the idea that the overall commercial impressions created by the marks are of primary significance.” Id. While this is a separate factor, over the years, the element of “overall commercial impression” has also been “used as a proxy for the ultimate conclusion of similarity or dissimilarity of marks resulting from a comparison of their appearance, sound, and meaning.” Palm Bay v. Veuve Clicquot, 73 USPQ2d at 1692. The point being that similarity in any one element may lead to confusing similarity. Opposer argues: [T]he overall commercial impression is created by the common features of the letters shared by ALATTAR and ALTAR, and the same or very similar pronunciation. As generally known to the Arabic community, the pronunciation of both the ALATTAR and ALTAR Opposition No. 91242819 15 trademarks is the same in Arabic, which is and means spice dealer. All of the letters of ALTAR are part and parcel of ALATTAR. The addition of an extra A and T does not necessary impact or change the pronunciation of the marks, nor the appearance of the marks. Thus, the Applicant’s ALTAR is plainly similar in appearance, sound, connotation, and overall commercial impression to Opposer’s mark ALATTAR. 24 TTABVUE 22.11 Further, Opposer argues that his “ALATTAR Registrations on the Principal Register create a presumption that the ALATTAR mark is valid and distinctive.” 24 TTABVUE 23. While Opposer is correct that the composite mark is presumed valid, that is not the case for the word ALATTAR by itself, especially where in the case of the Class 3 goods it is disclaimed. Opposer’s further statements regarding the meaning of ALATTAR, its use and possible acquisition of secondary meaning are not supported by evidence and Opposer cannot rely on the incontestability of the Registration as that registration is for the composite mark rather than ALATTAR alone. In comparing the marks, Opposer is correct that because the rights associated with a standard character mark reside in its wording, and not in any particular display, we must consider Applicant’s mark “regardless of font style, size, or color,” including iterations that present Applicant’s mark in a similar stylized form. Citigroup Inc. v. Cap. City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011); In re RSI Sys., LLC, 88 USPQ2d 1445 (TTAB 2008); In re Pollio 11 This contradicts the translation statement in the Registration that ALATTAR means Perfumer not Spice Dealer. Opposition No. 91242819 16 Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Trademark Manual of Examining Procedure (TMEP) § 1207.01(c)(iii) (Oct. 2018). Opposer presents one such iteration in his reply brief shown below:12 This depiction certainly emphasizes the possible similarity engendered by the shared letters in one of Opposer’s literal elements in his mark when depicted in an identical stylization. However, Applicant’s mark is a well-recognized word ALTAR defined as “a usually raised structure or place on which sacrifices are offered or incense is burned in worship – often used figuratively to describe a thing given great or undue precedence or value especially at the cost of something else.”13 By comparison, Opposer’s ALATTAR would have no meaning to all but Arabic speakers and for those who speak Arabic it would mean “perfumer” based on the translation statement in Opposer’s registration, or “spice dealer,” as Opposer now argues, either way a vastly different connotation. Focusing on a subset of consumers, Opposer strains the doctrine of foreign equivalents, asserting first, without support, that ALTAR and ALLATAR are pronounced the same by Arabic speakers and because they sound the same to this subset of consumers they would also share the same 12 26 TTABVUE 6. 13 Merriam-Webster Dictionary (merriam-webster.com retrieved April 7, 2021). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or regular fixed editions. In re Cordua Rest. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Opposition No. 91242819 17 connotation. However, faced with a common well-recognized English word it is unlikely that Arabic speakers would stop and translate it into Arabic because its pronunciation, in theory, is the same as ALATTAR. Opposer requests “that the board take judicial notice that Alattar and Altar have the same pronunciation of in [sic] Arabic (e.g., ).” 24 TTABVUE 10. Applicant responds to this request by asserting it “is improper, because any request regarding judicial notice had to be made during Opposer’s testimony period by Notice of Reliance accompanied by the necessary information, and it was not.” 25 TTABVUE 12. Opposer responds that Applicant only objects that the request was procedurally improper, but does not dispute the identical pronunciation and given Applicant’s concession and that it is procedurally improper “it is appropriate to factually conclude that ALATTAR and ALTAR have the same pronunciation and/or meaning in Arabic.” 26 TTABVUE 9. Opposer is asking the Board to take Opposer’s word at face value that these words are pronounced the same in Arabic. Opposer has also argued that the respective words have the same meaning “spice dealer,” despite the glaring contradiction of that in the record, i.e., the translation statement in Opposer’s registration that ALATTAR means “Perfumer” in Arabic. We deny Opposer’s request that the Board take judicial notice that Alattar and Altar have the same pronunciation and/or mean the same thing. This is not the type of generally known fact for which we may take judicial notice, in particular without being accompanied by any information. Trademark Trial and Appeal Board (TBMP) § 704.12(a) (2020) and cases cited therein. At minimum, Opposition No. 91242819 18 we would need some type of reference work that specifically stated ALTAR and ALLATAR have a similar pronunciation in Arabic. Moreover, Opposer is incorrect in stating that Applicant has conceded and failed to dispute the fact. Applicant clearly did not concede this fact, Applicant believed correctly this is not appropriate for judicial notice. Based on this record although there may be a slight similarity in pronunciation, for purposes of the §2(d) analysis, there is no “correct” pronunciation of a mark because it is difficult to predict how the public will pronounce a particular mark. See, e.g., In re Viterra Inc., 101 USPQ2d at 1912; StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1651 (Fed. Cir. 2014) (“There is no correct pronunciation of a trademark that is not a recognized word.”) (citing In re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227 (CCPA 1969)). This is perhaps especially true when words are in different languages. We observe in any event that the additional syllables in Opposer’s mark serve to differentiate it from Applicant’s mark. On reply, Opposer argues that “Applicant mistakenly believes that a disclaimer to a portion of the registered mark equates to no protection for the registered mark in the related class.” 26 TTABVUE 7. Presumably, Applicant was addressing Opposer’s arguments that appear to assert a word mark ALATTAR by itself. However, in the context of Opposer’s registered composite mark, the disclaimer of the word in Opposer’s mark which is the only common element between Opposer’s and Applicant’s marks does have relevance. Disclaimers do not remove the disclaimed matter from the mark and the mark must still be regarded as a whole, including the Opposition No. 91242819 19 disclaimed matter, in evaluating similarity of the marks. However, typically, disclaimed matter will not be regarded as the dominant feature of a mark. TMEP § 1213.20. Where the matter common to the marks is merely descriptive or diluted there is a declining possibility of likely confusion Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1044-45 (TTAB 2010) (holding DEER-B-GON for animal repellant used to repel deer, other ruminant animals, and rabbits, and DEER AWAY and DEER AWAY PROFESSIONAL for repellant for repelling deer, other big game, and rabbits, not likely to cause confusion, noting that “DEER” is descriptive as applied to the relevant goods and thus has no source-indicating significance). Although there is no mechanical test to select a “dominant” element of a mark, consumers would be more likely to perceive a fanciful or arbitrary term, rather than a descriptive or generic term, as the source-indicating feature of the mark. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (affirming TTAB’s finding that “DELTA,” not the disclaimed generic term “CAFE,” is the dominant portion of the mark THE DELTA CAFE). If the common element of two marks is “weak” in that it is generic, descriptive, or highly suggestive of the named goods or services, it is unlikely that consumers will be confused unless the overall combinations have other commonality. See, e.g., Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015) (remanded for consideration of whether and to what degree the phrase PEACE & LOVE was suggestive or descriptive in the food-service industry); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986) (reversing TTAB’s holding that Opposition No. 91242819 20 contemporaneous use of BED & BREAKFAST REGISTRY for making lodging reservations for others in private homes, and BED & BREAKFAST INTERNATIONAL for room booking agency services, is likely to cause confusion, because, inter alia, the descriptive nature of the shared wording weighed against a finding that the marks are confusingly similar). While both marks include a word that contains the letters A L T R, begin with AL have a T in the middle and end with R, the similarity ends there. Applicant’s mark is the well-recognized word ALTAR and the word ALATTAR in Opposer’s composite mark would be perceived by non-Arabic speakers as fanciful with no specific meaning. Although not diminished in conceptual strength in this context, it is starkly different in connotation. Arabic speaking consumers may understand it to mean “Perfumer,” a word vastly different in meaning from Altar, and, in this context it would be conceptually weak as suggestive of the goods.14 In addition, Opposer’s mark includes script in another language and a design element of a person. The script is above the word ALATTAR in slightly larger font and for Arabic speakers the design of the person would underscore the meaning “Perfumer.” These prominent additional elements serve to present a very different overall commercial impression from Applicant’s single word mark ALTAR. We recognize that “when marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion 14 We acknowledge Opposer’s surname is ALATTAR, however, the parties did not address this issue, and we do not reach it as it is not relevant when there is no evidence that consumers are aware of the surname or its connection to Opposer. Opposition No. 91242819 21 declines,” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992); but given the dissimilarities in appearance, sound, connotation and commercial impression, even ignoring the somewhat conceptually weak nature of the word ALATTAR for Arabic speakers in connection with the various Class 3 goods, we find the marks are not confusingly similar when used on the identical cosmetics, lotions and soaps. This factor weighs against finding likely confusion. Finally, in his reply brief, Opposer asserts that “Opposer’s registration and the disclaimer discussed in Applicant’s Main Brief reveal that Applicant similarly cannot seek registration for ALTAR on Class 3 goods because Applicant’s applied for ALTAR mark is also descriptive of the goods in Class 3” and posits that under the doctrine of foreign equivalents: An American purchaser who is knowledgeable in Arabic would equate ALTAR and ALATTAR to identical pronunciations and therefore identical translated meaning – PERFUMER or The Perfumer. … Thus, an American purchaser who is knowledgeable in Arabic would find both ALTAR and ALATTAR to be descriptive of the Applied-for Class 3 goods. … [and] neither can claim the exclusive right to use PERFUMER or its foreign equivalent for Class 3 goods including cosmetic and soap products. In summary, Applicant’s Main Brief shows that Applicant seeks to do that which Opposer could not, by merely removing the first 2 letters from the mark. Such a minor modification does not change the pronunciation and the translated meaning. For at least this reason, the Board should grant Opposer’s opposition and refuse to register Applicant’s [mark]. 26 TTABVUE 11. Opposer’s offhand reference at the end of his reply brief that alternatively Applicant’s applied for ALTAR mark is descriptive of the Class 3 goods is an Opposition No. 91242819 22 unpleaded claim and has not been tried by implied consent. We, therefore, give it no consideration. We further observe it appears to key off the strained application of the doctrine of foreign equivalents discussed in the context of the Section 2(d) claim. 3. Balancing of the Factors We have considered all of the evidence pertaining to the relevant DuPont factors, as well as the parties’ arguments with respect thereto. In balancing the relevant factors, we find the differences between the marks sufficient to avoid likely confusion despite the identical goods and trade channels, in particular given the differences in connotation and overall commercial impression. “No mechanical rule determines likelihood of confusion, and each case requires weighing of the facts and circumstances of the particular mark.” In re Mighty Leaf Tea, 94 USPQ2d at 1259 (citing Century 21 v. Century Life, 23 USPQ2d at 1698)); see also Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1290 (Fed. Cir. 2016) (MAYA not confusingly similar to MAYARI) (quoting Kellogg Co. v. Pack’em Enters., 951 F.2d 330, 21 USPQ2d 1142, 1144-45 (Fed. Cir. 1991) (“We know of no reason why, in a particular case, a single duPont factor may not be dispositive”)). III. Conclusion Because Opposer has not shown, by a preponderance of the evidence, the existence of a likelihood of confusion, Opposer has not established his claim under Section 2(d). Decision: The opposition is dismissed. Copy with citationCopy as parenthetical citation