Timothy R. DelaneyDownload PDFTrademark Trial and Appeal BoardJun 29, 2017No. 87154425 (T.T.A.B. Jun. 29, 2017) Copy Citation +THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: June 29, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Timothy R. Delaney _____ Serial No. 87154425 _____ Gene Bolmarcich of the Law Offices of Gene Bolmarcich, for Timothy R. Delaney. Laura Golden, Trademark Examining Attorney, Law Office 103, Michael Hamilton, Managing Attorney. _____ Before Wellington, Gorowitz and Pologeorgis, Administrative Trademark Judges. Opinion by Pologeorgis, Administrative Trademark Judge: Timothy R. Delaney (“Applicant”) seeks registration on the Principal Register of the mark C&Bscene, in standard characters, for “sunglasses and spectacles” in International Class 9.1 1 Application Serial No. 87154425, filed on August 29, 2016, based on an allegation of use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming July 2, 2016 as both the date of first use and the date of first use in commerce. Serial No. 87154425 - 2 - The Trademark Examining Attorney 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 the registered mark See N Be Seen, in standard characters, for “Eyeglass cases; Eyeglass chains and cords; Eyeglass frames; Eyeglasses; Frames for spectacles and sunglasses; Reading eyeglasses; Reading glasses; Spectacles; Sports training eyeglasses; Sunglasses; Sunglasses and spectacles” in International Class 9.2 When the refusal was made final, Applicant appealed. We affirm the refusal to register. Likelihood of Confusion Our determination under Section 2(d) 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., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each du Pont factor that is relevant and for which there is evidence of record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between 2 Registration No. 4488539, registered on February 25, 2014. Serial No. 87154425 - 3 - the goods. See 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. Comparison of the Goods, Trade Channels and Classes of Purchasers We first compare Applicant’s and Registrant’s goods. In making our determination under this du Pont factor, we look to the goods as identified in the involved application and cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services 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 the sales of goods are directed.”). In this case, Applicant’s “sunglasses and spectacles” are identical to the “sunglasses and spectacles” which are included in the identification of goods in the cited registration. Because the goods described in the application are identical to some of the goods listed in the cited registration and there are no restrictions in either Applicant’s or Registrant’s identifications as to trade channels or purchasers, we must presume that the channels of trade and classes of purchasers are the same for these identical goods. Serial No. 87154425 - 4 - See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels of trade to same class of purchasers); 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); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). Moreover, the remaining goods identified in the cited registration are either encompassed by Applicant’s more broadly defined “spectacles” or are closely related eyewear accessories, i.e., eyeglass cases; eyeglass chains and cords; eyeglass frames and frames for spectacles and sunglasses. Given that the involved goods are identical or closely related and, at least where identical, they are presumed to move in the same trade channels and are available to all classes of purchasers normal for these types of identical goods, these factors weigh in favor of a finding of likelihood of confusion. B. Similarity of the Marks We next address the du Pont likelihood of confusion factor focusing on “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 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 Serial No. 87154425 - 5 - 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). 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, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data, 224 USPQ at 751. Moreover, when marks would appear on goods that are identical or identical in part, as is the case here, the degree of similarity necessary to support a conclusion of likely confusion declines. Century 21 Real Estate v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Applicant’s mark is C&Bscene in standard characters. The cited mark is See N Be Seen, also in standard characters. When viewed in the context of the goods at issue, each of the marks appears to be a fanciful misspelling of the phrase SEE AND Serial No. 87154425 - 6 - BE SEEN and thus connotes the same play on words related in the field of eyewear, namely, the eyewear is offering consumers the ability to see, and eyewear in which consumers want to be seen. More significantly, we find that Applicant’s mark and the cited mark, although visually different, are nonetheless virtually phonetically identical. “Similarity in either form, spelling or sound alone may be sufficient to support a finding of likelihood of confusion.” Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000); Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“Despite specific differences in spelling … the dominant factor for consideration is the likelihood of confusion arising from the similarity in sound of the two words when spoken.”); see also In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007) (similarity in sound alone may be sufficient for a finding of likelihood of confusion). Because Registrant’s mark is virtually phonetically equivalent to Applicant’s mark, as spoken, the marks at issue convey the same commercial impression. Applicant argues that marks are visually different and convey distinct and differing commercial impressions.3 Specifically, Applicant contends that his mark would be immediately perceived by consumers as the initials “C&B” followed by the word “scene.”4 While we agree with Applicant that it is possible consumers may understand his mark in this manner, we must also bear in mind that the “see and be 3 Applicant’s Appeal Brief, p. 2, 4 TTABVUE 3. 4 Id. Serial No. 87154425 - 7 - seen” connotation is still present and is the most likely, if not only, connotation created by each mark when they are being referenced verbally. Applicant further maintains that two letter initial marks are extremely common for eyewear, and in the fashion industry generally. In support of his argument, Applicant references an exhibit to his February 13, 2017, Response to Office Action consisting of a list of third-party registrations.5 These third-party registrations, however, were not properly made of record since Applicant merely submitted a list of registrations without any additional information regarding the use of the marks. See In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006) (“if applicants … would like to rely on third-party registrations for support of their position, they must submit a copy of those registrations. Simply providing a list of registrations is not sufficient); TBMP § 1208.02 (June 2017). The Examining Attorney notified Applicant of this deficiency in the subsequent Office Action6 and, rightfully, objected to this evidence on such grounds in her brief.7 The Examining Attorney’s objection is sustained and this evidence has therefore not been given any consideration in our determination herein. Applicant also maintains that, although the marks at issue are phonetically similar to the phrase “see and be seen,” this similarity is insignificant where, as here, the goods are not a type where sound plays an important role because sunglasses are expensive fashion items that consumers would purchase carefully and not by asking 5 See Exhibit A to Applicant’s February 13, 2017, Response to Office Action. 6 Office Action issued on February 14, 2017. 7 Examining Attorney’s Appeal Brief, 6 TTABVUE 5-6. Serial No. 87154425 - 8 - for them by name.8 Applicant’s argument is unpersuasive. First, Applicant has not submitted any evidence to support such an argument. Second, calling or referring to goods by their branded name, and thus distinguishing sources, is the primary purpose of a trademark. As the Board has previously noted, “[i]mplicit in [the definition of a trademark] is a requirement that there be a direct association between the mark sought to be registered and the goods specified in the application, that is, that the mark is used in such a manner that it would be readily perceived as identifying the specified goods and as distinguishing a single source or origin for the goods.” In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992) (emphasis added). Here, the relevant goods in this case have been branded exactly so that they may be requested by virtually phonetically identical names. Finally, Applicant also argues that its involved C&Bscene mark is not an intentional misspelling of the phrase SEE AND BE SEEN. Whether this is the intended meaning or not, it is a clearly possible interpretation of the wording, and particularly from an audio perspective, the most likely understanding of the wording. Because the Applicant’s mark and the cited mark are virtually identical in sound and, in the context of the goods at issue, convey the same overall commercial impression and connotation when spoken aloud, we find that, when the marks are considered in their entireties, they are highly similar. Thus, this du Pont factor favors a finding of likelihood of confusion. 8 Id., 4 TTABVUE 4. Serial No. 87154425 - 9 - C. Balancing the Factors We have considered all of the arguments and evidence of record, including those not specifically discussed herein, and all relevant du Pont factors. Because we have found that: (1) the marks are virtually identical in sound and share an identical connotation and commercial impression; and (2) Applicant’s goods are identical or closely related to Registrant’s goods and, at least where identical, they are presumed to move in the same channels of trade and are available to all classes of purchasers normal for these types of identical goods, we conclude that Applicant’s mark, as used in connection with the goods identified in the application, so resembles the cited mark for the identified goods as to be likely to cause confusion or mistake, or to deceive under Section 2(d) of the Trademark Act. Decision: The refusal to register Applicant’s C&Bscene mark under Section 2(d) of the Trademark Act is affirmed. Copy with citationCopy as parenthetical citation