Aramark Uniform & Career Apparel Group, Inc.Download PDFTrademark Trial and Appeal BoardFeb 26, 2019No. 87583832 (T.T.A.B. Feb. 26, 2019) Copy Citation Mailed: February 26, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— In re Aramark Uniform & Career Apparel Group, Inc. _____ Serial No. 87583832 _____ Camille M. Miller and J. Trevor Cloak of Cozen O’Connor for Aramark Uniform & Career Apparel Group, Inc. Collier L. Johnson II, Trademark Examining Attorney, Law Office 123, Susan Hayash, Managing Attorney. _____ Before Kuczma, Greenbaum and Adlin, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Applicant Aramark Uniform & Career Apparel Group, Inc. seeks registration of ARAMARK FLEXFIT, in standard characters, for Uniforms; wearing apparel, namely, shirts, pants, shorts, jackets, coats, caps being headwear, hats, socks, panty hose, coveralls, overalls, rainwear, underwear, gloves, sweaters, laboratory coats, smocks, belts, suspenders, aprons, vests, sweatshirts, visors being headwear, t-shirts, face-warming masks, scarves, skirts, dresses, sports coats, ties, all used as uniforms; performance apparel, namely, shirts, pants, shorts, jackets, coats, caps being headwear, hats, socks, panty hose, coveralls, overalls, rainwear, underwear, gloves, sweaters, laboratory coats, smocks, belts, suspenders, aprons, vests, sweatshirts, visors being This Opinion is Not a Precedent of the TTAB Serial No. 87583832 2 headwear, t-shirts, face-warming masks, scarves, skirts, dresses, sports coats, ties, all used as uniforms.1 The 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 so resembles the following commonly-owned registered marks as to be likely to cause confusion: (ORIGINAL disclaimed) 2, (TECH disclaimed),3 (PREMIUM FITTED CAP, FITTED AND TECH disclaimed)4 and FLEXFIT DELTA (standard characters),5 all for “headwear, namely, hats, caps, cap peaks, visors, beanies, berets, knitted caps and top hats; clothing and clothing accessories, namely, headbands, sweatbands” in International Class 25; FLEXFIT UNIQUE TECHNOLOGY AND SUPERIOR COMFORT (standard characters, UNIQUE TECHNOLOGY AND SUPERIOR COMFORT disclaimed)6 and FLEXFIT THE ONE AND ONLY ORIGINAL (standard characters)7, both for “headwear, namely, hats, caps, visors, beanies, berets, knitted caps and sweatbands as part of headwear; clothing and clothing 1 Application Serial No. 87583832, filed August 25, 2017 under Section 1(b) of the Trademark Act, based on an alleged intent to use the mark in commerce. 2 Registration No. 5204051, issued May 16, 2017. 3 Registration No. 5203964, issued May 16, 2017. 4 Registration No. 5332973, issued November 14, 2017. 5 Registration No. 4721214, issued April 14, 2015. 6 Registration No. 3735745, issued January 12, 2010; Section 8 Affidavit accepted, Section 15 affidavit acknowledged. 7 Registration No. 3605359, issued April 14, 2009; Section 8 Affidavit accepted, Section 15 affidavit acknowledged. Serial No. 87583832 3 accessories, namely, standalone sweatbands” in International Class 25; FLEXFIT (standard characters) for “athletic footwear, namely, running shoes, sneakers” in International Class 25;8 FLEXFIT (standard characters) for “traveling bags, duffle bags” in International Class 18;9 for “golf gloves” in International Class 28;10 and FLEXFIT (typed form) for “hats and caps” in International Class 25.11 After the refusal became final, Applicant appealed and filed a request for reconsideration which was denied. Applicant and the Examining Attorney filed briefs. I. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between 8 Registration No. 3275840, issued August 7, 2007; renewed. 9 Registration No. 3259030, issued July 3, 2007; renewed. 10 Registration No. 2904572, issued November 23, 2004; renewed. 11 Registration No. 2379790, issued August 22, 2000; renewed Serial No. 87583832 4 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.”). We focus our analysis on the cited registration of FLEXFIT in typed form for hats and caps (Registration No. 2379790), because if we find confusion likely between that cited mark and Applicant’s mark, we need not consider the likelihood of confusion between Applicant’s mark and the other cited marks, while if we find no likelihood of confusion between Applicant’s mark and FLEXFIT for hats and caps, we would not find confusion between Applicant’s mark and the other cited marks. In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). A. Goods, Channels of Trade and Classes of Consumers Turning first to the goods, they are legally identical in part, because Registrant’s “hats and caps” encompasses Applicant’s “caps being headwear, hats … all used as uniforms” and “performance apparel, namely … caps being headwear, hats … all used as uniforms.” In other words, Registrant identifies “hats and caps” broadly and without limitation, meaning that its identification encompasses hats and caps used for “uniforms.” See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). We need not go beyond our finding that Applicant’s and Registrant’s goods are legally identical in part. It is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed by the identification Serial No. 87583832 5 of goods in a particular class. Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986 (CCPA 1981). This factor weighs heavily in favor of finding a likelihood of confusion. Furthermore, where, as here, Applicant’s and Registrant’s goods are legally identical in part, we must presume that the channels of trade and classes of purchasers for those goods are also the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (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); 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). These factors also weigh heavily in favor of finding a likelihood of confusion. The legal identity (in part) of Applicant’s and Registrant’s goods and their overlapping channels of trade and classes of consumers not only weigh heavily in favor of a finding of likelihood of confusion, but also reduce the degree of similarity between the marks necessary to find a likelihood of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group, 93 USPQ2d at 1248. B. The Marks We consider the marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Serial No. 87583832 6 Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). Here, Applicant’s mark ARAMARK FLEXFIT includes Registrant’s mark FLEXFIT in its entirety, and therefore the marks are partially identical in appearance and sound. They also convey similar meanings, because ARAMARK merely modifies FLEXFIT. However, the marks look and sound different because ARAMARK is absent from Registrant’s mark, which consists solely of FLEXFIT. This situation is not uncommon, and we have addressed it repeatedly in a variety of contexts. Typically, the addition of a house mark or a trade name to a registered mark is found insufficient to avoid confusion, and is sometimes even found to be an “aggravation, and not a justification….” Menendez v. Holt, 128 U.S. 514, 521 (1888). See also In re Fiesta Palms LLC, 85 USPQ2d 1360, 1367 (TTAB 2007) (affirming refusal to register CLUB PALMS MVP based on prior registration of MVP, finding consumers “likely to believe that the CLUB PALMS MVP casino services is simply the now identified source of the previously anonymous MVP casino services”); In re Pierce Foods Corp., 230 USPQ 307, 309 (TTAB 1986) (in dicta, stating that even if Applicant’s proposed amendment to its drawing was accepted, “[a]pplicant’s institutional purchasers, aware of registrant’s CHICKEN BAKE coating mix, may well believe that applicant’s PIERCE CHIK’N BAKE pre-seasoned chicken is a product produced under license from registrant or otherwise sponsored or produced by registrant.”); In re Riddle, 225 USPQ 630 (TTAB 1985) (affirming refusal to register RICHARD PETTY’S ACCU TUNE & Design based on registration for ACCU- Serial No. 87583832 7 TUNE); In re Christian Dior, S.A., 225 USPQ 533 (TTAB 1985) (LE CACHET DE DIOR for men’s dress shirts likely to be confused with CACHET for toilet soap, dresses and cologne); Key West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982) (finding likelihood of confusion between SKIN SAVERS for face and throat lotion and MENNEN SKIN SAVER for cosmetic and toilet preparations, namely, hand and body lotion); In re Champion Int’l Corp., 196 USPQ 48 (TTAB 1977) (affirming refusal to register CHECK MATE based on registration of HAMMERMILL MICR CHECK-MATE); In re C.F. Hathaway Co., 190 USPQ 343 (TTAB 1976) (affirming refusal to register HATHAWAY GOLF CLASSIC based on registration of GOLF CLASSIC).12 There are other times, however, where adding a house mark to a registered mark is sufficient to avoid confusion. These cases tend to involve registrations for shared terms which have been shown to be “highly suggestive.” For example, in Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005), we found no likelihood of confusion between NORTON MCNAUGHTON ESSENTIALS and ESSENTIALS, both for women’s clothing, because evidence established that the shared, registered term ESSENTIALS is “highly suggestive.” See also TMEP 12 In analogous circumstances, we affirmed a refusal to register VANTAGE TITAN based on a registration for TITAN, stating: “Applicant has taken registrant’s mark and added its ‘product mark’ to it. It is not clear why the addition of the word VANTAGE would avoid confusion. It is more likely to be considered another product from the previously anonymous source of TITAN medical diagnostic apparatus, namely, medical ultrasound devices.” In re Toshiba Medical Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009). See also, Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (finding STONE LION CAPITAL confusingly similar to LION and LION CAPITAL). Serial No. 87583832 8 §1207.01(b)(iii) (2018) (“Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if … the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted.”). In Knight Textile, we found ESSENTIALS be “highly suggestive” of women’s clothing based in part on a dictionary definition, pointing out that the term “connotes that the clothing items sold under the marks are basic and indispensable components of, or ‘essentials’ of, one’s wardrobe.” Id. at 1316. This finding was supported by 23 third-party registrations (registered to 21 different owners) for marks which include ESSENTIALS for clothing, “at least two” of which “are comprised of the word ESSENTIALS coupled with apparent house marks.” Id. at 1316-17 & n.7. Here, Applicant argues that the shared term FLEXFIT is “inherently weak and diluted,” to the point that the addition of ARAMARK is sufficient to avoid confusion. 7 TTABVUE 8-12 (Applicant’s Appeal Brief at 4-8). It relies on evidence that third parties use and own registrations for marks containing FLEXFIT or variations thereof for clothing. Specifically, it relies on the following third party uses of FLEXFIT: Serial No. 87583832 9 Serial No. 87583832 10 Request for Reconsideration of April 30, 2018 (printouts from “steinmart.com” (“Flexfit V-Neck Tee”), “flexfitactivewear.com” (“FLEXFITACTIVEWEAR”), “justgym.net” (“Flex Fit T-Shirt”), “walmart.com” (“Climatesmart Men’s FlexFit Long Sleeve Crew Shirt Undershirt”), “theperfectpants.com” (“FLEXFIT STRECHABLE WAIST”), “maximumathletic.com” (“FLEXFIT VAPOR CAPRI PANTS”), “secondlife.com” (“Safari’s ‘FlexFit’ – Men’s Cargo Pants”), “dickssportinggoods.com” (“Harbinger FlexFit Women’s Glove”), “jammin.com” (“FlexFit Jackets”), “amazon.com” (“Harmony Gear Flex Fit Two Tone-US/UL Type III Jacket”), “alibaba.com” (“Top Flexfit Floral Off the Shoulder Women T shirt Loose Blouse”)); Serial No. 87583832 11 Office Action response of January 18, 2018 Ex. B (printouts from “foxracing.com” (“FORTY FIVER FLEXFIT HAT”) and “wearyourroots.com” (“Roots FlexFit Snapback”)). In addition, Applicant relies on third party use of: COMFORTFLEX FIT for bras; FLEX FITWEAR for shirts; and FIT-FLEX for underwear Id. (printouts from “haines.com,” “flexfit-ent.com,” “facebook.com” and “depend.com”).13 Applicant also relies on third-party registrations of: COMFORT FLEX FIT (Registration No. 5046044, FIT disclaimed) for “bras; undergarments, excluding headwear, footwear, sportswear, outerwear and sweatbands;” CUSTOMFLEX FIT (Registration Nos. 4203456 and 3865546, FIT disclaimed) for “panties; shapewear, namely, briefs, thigh shapers, waist shapers, camisoles, slips, body suits, torso shapers, tank tops and leggings” and “bras,” respectively; COMFORTFLEX FIT (Registration No. 3894750, FIT disclaimed) for “bras; panties, shapewear, namely, briefs, thigh slimmers, tank tops, camisoles, t-shirts, body suits and body briefers;” and FLEXFIT (Registration No. 3484429) for “disposable garments, namely, patient drapes made of non-woven material.”14 Office Action response of January 18, 2018 Ex. A. 13 Applicant also submitted what appears to be evidence of foreign use, which we have not considered. Specifically, Applicant relies on use of the trade name “Flexfit Enterprises” by a Pakistani sportswear accessories company; use of “Flexfit shorts” for athletic shorts by a company using a “.co” domain name which fulfilled an order by a foreign customer; and use of “Ben Hogan 3 Pack Mens Flexfit Low Cut Performance” socks on a website with a “.sg” domain name. Request for Reconsideration of April 30, 2018 (printouts from “flexfit-ent.com,” “apexfitness.co” and “qoo10.sg”). 14 We have only considered third-party registrations which include the term FLEX followed immediately by FIT. Serial No. 87583832 12 This evidence makes clear that FLEXFIT is suggestive of how apparel or accessories fit, specifically that the fit is “flexible.” Indeed, the evidence from “jammin.com” references “stretch fabrics” which allow “freedom of movement;” the evidence from “theperfectpants.com” refers to “FLEXFIT stretchable waist;” and “wearyourroots.com” indicates that its “Roots FlexFit Snapback” hat has a “snapback closure” which “fits most.” According to the Examining Attorney, FLEXFIT “is suggestive in relation to the clothing items offered, suggesting that the goods will have a flexible fit.” 10 TTABVUE 7 (Examining Attorney’s Appeal Brief at 6). Nevertheless, this case is distinguishable from Knight Textile, in which the evidence was stronger. In Knight Textile, our finding that ESSENTIALS is “highly” suggestive was based in part on the term’s dictionary definition. Here, by contrast, there are no dictionary definitions of FLEXFIT of record, and there is no evidence that FLEXFIT is an actual word.15 Furthermore, the third party use and registration evidence does not support a finding that FLEXFIT is “highly suggestive” for hats or caps, or any type of apparel. The printout from “flexfitactivewear.com” features a photograph of a bodybuilder, suggesting that this use of “flex” may refer to “flexing” muscles, rather than a “flexible” fit. The printout from “secondlife.com” appears to not identify actual pants available for sale to apparel consumers, but to pants which can be acquired for use by video game characters. More than half of the third party uses (by Just Gym 15 We infer from Applicant’s request in its Reply Brief that we take judicial notice of a dictionary definition of “fit,” 11 TTABVUE 7 n.3, that if “flexfit” also had a dictionary definition, Applicant likely would have provided it. Serial No. 87583832 13 Apparel, Dick’s Sporting Goods, Jammin, Walmart, Amazon, Fox Racing and Wear Your Roots) display the term as “FlexFit,” capitalizing both “f”s, which is a common way to display trademarks consisting of multiple component terms. This at least raises the question whether these third parties might have licensed the term, perhaps from Registrant; at the very least, it is not clear that these are descriptive or suggestive, rather than trademark, uses of the term, or, if they are trademark uses, who owns the trademark. Of the third party registrations upon which Applicant relies, only one, Registration No. 3484429, is for the term in question, which sharply distinguishes this case from Knight Textile. For all of these reasons, while it is a fairly close question, we find that although FLEXFIT is suggestive of how hats or apparel fit, it is not “highly suggestive,” or sufficiently “diluted,” that Applicant’s mere addition of the term ARAMARK is suffi- cient to avoid confusion when the marks are used for legally identical goods. To the contrary, consumers familiar with Registrant’s numerous FLEXFIT marks who en- counter Applicant’s ARAMARK FLEXFIT mark for uniform hats could very well as- sume that there is some connection or affiliation between Applicant and Registrant, or that ARAMARK is the previously anonymous source of Registrant’s FLEXFIT hats. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (finding sufficient similarity when “persons who encoun- ter the marks would be likely to assume a connection between the parties”). Serial No. 87583832 14 II. Conclusion The goods are in part identical and we therefore must presume that the chan- nels of trade overlap and the classes of purchasers are the same. In addition, the marks are more similar than dissimilar, as they share the term FLEXFIT. While we acknowledge that the term FLEXFIT is suggestive, and that this case therefore pre- sents a close question, it is not so highly suggestive or diluted as to prevent confu- sion when consumers encounter Applicant’s mark ARAMARK FLEXFIT on goods identical to those for which Registrant uses FLEXFIT. To the extent we have doubt about how suggestive FLEXFIT is for hats, or the likelihood of confusion between Applicant’s and Registrant’s marks, we resolve that doubt in favor of Registrant. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002) (“This court resolves doubts about the likelihood of confusion against the newcomer because the newcomer has the opportunity and obligation to avoid confusion with existing marks.”); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993). Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed. Copy with citationCopy as parenthetical citation