Timothy R. Delaney

Trademark Trial and Appeal Board

Jun 29, 2017

No. 87154425 (T.T.A.B. Jun. 29, 2017)

+THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: June 29, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Timothy R. Delaney
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Serial No. 87154425
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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.
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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
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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.
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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.
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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
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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
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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.
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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.
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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
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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.