88352444 (T.T.A.B. Mar. 19, 2021)

Bestop PRP, LLC

Trademark Trial and Appeal BoardMar 19, 2021

88352444 (T.T.A.B. Mar. 19, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: March 19, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Bestop PRP, LLC _____ Serial No. 88352444 _____ Philip R. Warn of Warn Partners, P.C., for Bestop PRP, LLC. Melanie Singer, Trademark Examining Attorney, Law Office 112, Renee Servance, Managing Attorney. _____ Before Kuhlke, Kuczma and Pologeorgis, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Bestop PRP, LLC (“Applicant”) seeks registration on the Principal Register for the mark STATUS: in standard characters for “Automotive vehicle components, namely, vehicle seats, vehicle seat shells, vehicle seat frames, vehicle seat hardware, fitted seat covers for vehicles, vehicle seat upholstery, vehicle seat cushions, vehicle seat head restraints, vehicle seat headrests, vehicle seat mountings, and vehicle seat accessories, namely, fitted fabric covers for vehicle seat belts, safety belts for vehicle Serial No. 88352444 - 2 - seats and seat safety harnesses for vehicles; all of the above excluding vehicle wheels and vehicle tires,” in International Class 12.1 The Trademark Examining Attorney has refused registration of Applicant’s mark 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 the identified goods, so resembles the registered mark STATUS for “automobile vehicle wheels,” in International Class 122 as to be likely to cause confusion. When the Section 2(d) refusal was made final, Applicant appealed and requested reconsideration. On August 11, 2020, the Examining Attorney denied the request, the appeal resumed and briefs have been filed. We affirm the refusal.3 I. Likelihood of Confusion When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 1 Application Serial No. 88352444 filed on March 22, 2019 based on allegations of first use and first use in commerce on December 2017 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). 2 Registration No. 5513324, issued on July 10, 2018. 3 Citations to TTABVUE throughout the decision are to the Board’s public online database that contains the appeal file, available on the USPTO website, www.USPTO.gov. The first number represents the docket number in the TTABVUE electronic case file and the second represents the page number(s). Citations to the examination record refer to the USPTO’s online Trademark Status and Document Retrieval system (TSDR). Serial No. 88352444 - 3 - USPQ2d 1160, 1162-63 (Fed. Cir. 2019); see also M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within the DuPont list of factors, only factors that are “relevant and of record” need be considered). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services. See 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, 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.”); 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 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). A. Similarity/Dissimilarity of the Marks We compare 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 DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d, 777 Fed. Appx. 516 (Fed. Cir. 2019) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). “The proper test is not a side-by-side Serial No. 88352444 - 4 - 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). In evaluating the similarities between marks, the emphasis must be on the recollection of the average purchaser, who normally retains a general, rather than specific, impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)). Our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on a comparison of 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.”). However, “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.” In re Nat’l Data, 224 USPQ at 751. Registrant’s mark STATUS is wholly incorporated in Applicant’s mark STATUS:. The marks differ only by the addition of the colon to Applicant’s mark. The similarity Serial No. 88352444 - 5 - in sound, however, is identical. Moreover, in general, punctuation is not sufficient to alter the connotation and overall commercial impression of marks and, as such, is not sufficient to distinguish marks. See In re St. Helena Hospital, 774 F.3d 747, 113 SUPQ2d 1082, 1085 (Fed. Cir. 2014) (TAKETEN and TAKE 10! engender similar commercial impressions despite addition of exclamation point); Bond v. Taylor, 119 USPQ2d 1049 (TTAB 2016) (BLACK MEN ROCK confusingly similar to BLACK GIRLS ROCK!); Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1712 (TTAB 2010) (hyphen does not distinguish MAG-NUM from MAGNUM), aff’d mem., ___ Fed. App’x ___, 2011 WL 5400095 (Fed. Cir. 2011). Cf. In re Promo Ink, 78 USPQ2d 1301, 1305 (TTAB 2006) (finding proposed mark merely descriptive Board stated punctuation mark in PARTY AT A DISCOUNT! does not significantly change the commercial impression of the mark); In re Burlington Indus., Inc., 196 USPQ 718, 719 (TTAB 1979) (“[A]n exclamation point does not serve to identify the source of the goods.”). Moreover, the word STATUS predominates over the colon as it precedes the colon and is a pronounced word. Palm Bay v. Veuve Clicquot, 73 USPQ2d 1689, 1692. Applicant references the dictionary definitions of the word STATUS submitted by the Examining Attorney, arguing that they “do not support a conclusion that the term is descriptive of or related to Applicant’s goods.” 7 TTABVUE 13. Applicant further asserts that the word STATUS “has many different meanings as a noun” and therefore “is at most only suggestive of Applicant’s goods.” Id. at 14. While this may be true, the question of the possible descriptiveness or suggestiveness of STATUS is not at issue. Applicant’s argument does not address the confusing similarity of the Serial No. 88352444 - 6 - identical word, and the meanings and commercial impression of this word would be the same for Applicant’s and Registrant’s marks used in connection with automotive parts and accessories. Applicant also asserts that “colons in grammar can be introducing an element or number of elements to follow that illustrate information or amplifies the information preceding the colon” and its mark “has a different connotation and overall commercial impression when the mark STATUS: is viewed as a whole.” Id. at 14. To the extent consumers would be aware of the colon and remember seeing STATUS without a colon, consumers would likely perceive it as a variation of Registrant’s mark STATUS and, as in the connotative manner Applicant posits, introducing more automotive accessories. As explained above, we bear in mind that the “marks ‘must be considered . . . in light of the fallibility of memory.”’ In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014). While a side- by-side comparison of the marks reveals the single difference between them, such a comparison is not the proper way of determining likelihood of confusion since that is not the way customers will view the marks in the marketplace. Rather, it is the general overall commercial impression created in the mind of the consumer whose memory of a trademark is imperfect. “That is to say, the emphasis is on the recollection of the average purchaser who normally retains a general rather than a specific impression of trademarks.” See In re Solar Energy Corp., 217 USPQ 743,745 (TTAB 1983) and cases cited therein; see also Mini Melts, Inc. v. Reckitt Benckiser Serial No. 88352444 - 7 - LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). In terms of appearance, sound, connotation, and commercial impression, we find the marks — considered in their entireties — are virtually identical. In view thereof, the similarity of these marks weighs strongly in favor of a likelihood of confusion. B. Relatedness of the Goods, Trade Channels and Classes of Consumers When considering the goods and trade channels we must make our determinations based on the goods as they are identified in the application and cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Computer Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The issue is not whether the goods will be confused with each other, but rather whether the public will be confused as to their source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”). It is sufficient that the goods of the applicant and the registrant are related in some manner or that the conditions surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that, because of the marks used in connection therewith, would lead to the mistaken belief that they originate Serial No. 88352444 - 8 - from the same source. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 14711, 1476 (Fed. Cir. 2000). The application and registrations themselves may provide evidence of the relationship between the goods. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002). To reiterate, Applicant seeks registration for “Automotive vehicle components, namely, vehicle seats, vehicle seat shells, vehicle seat frames, vehicle seat hardware, fitted seat covers for vehicles, vehicle seat upholstery, vehicle seat cushions, vehicle seat head restraints, vehicle seat headrests, vehicle seat mountings, and vehicle seat accessories, namely, fitted fabric covers for vehicle seat belts, safety belts for vehicle seats and seat safety harnesses for vehicles; all of the above excluding vehicle wheels and vehicle tires” and Registrant’s goods are identified as “automobile vehicle wheels.” The Examining Attorney submitted excerpts from third-party websites showing Applicant’s and Registrant’s goods produced and offered under the same mark. A few examples are set forth below: Ford website showing vehicle wheels and vehicle seat covers for sale under Ford Parts trademark;4 Harley-Davidson website showing vehicle seat components and seat accessories and vehicle wheels under the Harley Davidson trademark;5 Jegs website showing vehicle seats and parts, and vehicle wheels under the JEGS trademark;6 4 August 11, 2020 Office Action at 7-12 (www.parts.ford.com). 5 Id. at 13-20 (www.harley-davidson.com). 6 Id. at 20-30 (www.jegs.com). Serial No. 88352444 - 9 - JR Race Car website showing vehicle seat parts and wheels under the JR trademark;7 and Rugged Ridge website showing vehicle seats and wheels under the Rugged Ridge trademark.8 She also submitted a few examples of use-based third-party registrations for Applicant’s and Registrant’s goods under one mark:9 Registration No. 5735124 for the mark TRUST MADE for, inter alia, fitted seat covers for vehicles, vehicle seat cushions and vehicle wheels; Registration No. 5622716 for the mark VOFONO for, inter alia, automobile seat cushions, safety belts for vehicle seats, upholstery for vehicles, vehicle seats, and vehicle wheels; Registration No. 5731679 for the mark EHIGHTOP for, inter alia, fitted car seat covers, safety belts for vehicle seats, upholstery for vehicles, and vehicle wheels; and Registration No. 5732908 for the mark JOYGOWE for, inter alia, fitted seat covers for vehicles, head-rests for vehicle seats, upholstery for vehicles, and vehicle wheels. We begin by finding an inherent relationship between Applicant’s goods “Automotive vehicle components, namely, vehicle seats, vehicle seat shells, vehicle seat frames, vehicle seat hardware, fitted seat covers for vehicles, vehicle seat upholstery, vehicle seat cushions, vehicle seat head restraints, vehicle seat headrests, vehicle seat mountings, and vehicle seat accessories, namely, fitted fabric covers for vehicle seat belts, safety belts for vehicle seats and seat safety harnesses for vehicles; 7 Id. at 31-36 (www.jrracecar.com). 8 Id. at 37-44 (https://ruggedridge.com). 9 June 4, 2019 Office Action at 11-22. Serial No. 88352444 - 10 - all of the above excluding vehicle wheels and vehicle tires” and the registered goods “automobile vehicle wheels.” Both Applicant’s and the Registrant’s goods are automotive vehicle components. See Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1310 (Fed. Cir. 2002) (“On the face of the registrations themselves, QSC’s [amplifiers and power amplifiers] and the ACOUSTIC WAVE [loudspeaker systems and music systems consisting of a loudspeaker system and amplifier and at least one of a radio tuner, compact disc player and audio tape cassette player and loudspeaker systems] are related.”); In re Anderson, 101 USPQ2d 1912, 1920 (TTAB 2012) (“we find an inherent relationship between the ‘tires’ and the ‘vehicle wheel cap and hub caps’ in the cited registrations on the one hand and the ‘custom manufacture of automobile services’ in the application on the other hand, since tires and either hub caps or wheel caps may be an essential element in the manufacture of many automobiles”). This inherent relationship is illustrated by the examples of third-party registrations which are probative to the extent that they serve to suggest that the listed goods are of a type that may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988). The examples of third-party use show the market context in which consumers are exposed to the same mark being used for the relevant goods, indicating single source. Serial No. 88352444 - 11 - Further, because there are no limitations as to channels of trade or classes of purchasers, we presume that Applicant’s and Registrant’s goods are offered in the ordinary channels of trade and offered to all the usual classes of purchasers for these goods. Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions or limitations into the registrant’s description of goods.”). In addition to the third-party websites listed above, the record also includes excerpts from the websites of third-party retailers showing vehicle seat covers and wheels provided by the same retailer.10 Applicant challenges the evidence arguing that many of the examples (e.g., Ford, Harley-Davidson) are OEM’s with famous marks in contrast to Registrant’s mark and, as such, it “cannot be expected to cast a long shadow past its narrow ‘Automotive vehicle wheels’ in the mind of consumers in connection with numerous collateral goods.” 10 TTABVUE 6. This argument essentially stands for the proposition that what goes on in the OEM market is not relevant to show consumer perception in the aftermarket. However, all of these goods, even from OEM’s, are sold after a consumer has purchased the vehicle. Moreover, because examining attorneys are not expected to submit evidence regarding the fame of the cited mark, this factor is generally treated as neutral in ex parte proceedings. See TRADEMARK MANUAL OF EXAMINING 10 December 31 2019 Office Action at 5, 8-17 (www.pepboys.com, www.4wheelparts.com). Serial No. 88352444 - 12 - PROCEDURE (TMEP) § 1207.01(d)(ix) (October 2018) and cases cited therein. We find these excerpts to be probative. In addition, Applicant takes issue with the excerpts from the 4wheelparts and Pep Boys websites because they direct consumers to third-party marketers or dealers of “hundreds of brands across multiple industries” or to “parts dealer[s] and on-site mechanic services.” 7 TTABVUE 9-10. However, these excerpts are used to show that various vehicle parts are offered in the same channel of trade, not that they, necessarily, are offered under the same mark. Applicant also criticizes third-party Registration No. 5735124 as including “a laundry list[] of dozens of products that may be found in the same large online store.” 7 TTABVUE 9. While third-party registrations with a diversity of goods may be diminished in probative value, here, they are all automotive parts and accessories. See In re Princeton Tectonics, Inc., 95 USPQ2d 1509, 1511 (TTAB 2010); In re Davey Products Pty Ltd., 92 UPSQ2d 1198, 1203 (TTAB 2009). Applicant’s reliance on its specific exclusion of “vehicle wheels” from its identification of goods does not obviate the finding of relatedness. That Applicant may not offer wheels under its mark is not the point. The question is whether consumers are accustomed to seeing Applicant’s types of goods and Registrant’s types of goods coming from a single source. As the Examining Attorney explains: [E]xclusionary language does not preclude a likelihood of confusion since, as shown by the above referenced evidence of relatedness, the goods are still related. Customers are not aware of the exclusion and given the marketing conditions for these goods and the highly similar marks, Serial No. 88352444 - 13 - the exclusionary language in the identification of the goods has no effect on the likelihood of confusion.11 Finally, because the marks are nearly identical, the differences in the nature of the goods does not negate the finding that registration of both STATUS marks would create a likelihood of confusion. Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines. See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“even when the goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source”). It is only necessary that there be a “viable relationship between the goods” to support a finding of likelihood of confusion. In re Thor Tech Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); In re Wilson, 57 USPQ2d 1863, 1867 (TTAB 2001). The evidence of record demonstrates that Applicant’s various automotive vehicle parts and the registered automotive vehicle wheels are inherently related, and may be sold by the same entity, and in some of the same channels of trade. For these reasons, we find the relationship between the goods and their channels of trade also favor a finding of likelihood of confusion. 11 9 TTABVUE 13. Serial No. 88352444 - 14 - C. Actual Confusion Applicant argues without support that “there is no evidence of actual confusion between the marks ‘STATUS:’ and ‘STATUS’.” 7 TTABVUE 15. The question of actual confusion is addressed in the factors looking at the “nature and extent of any actual confusion” and the “length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” DuPont, 177 USPQ at 567. As to the factor looking at the nature and extent of any actual confusion, uncorroborated statements of no known instances of actual confusion are of little evidentiary value. In re Majestic Distilling, 65 USPQ2d at 1205. See also In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of appellant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion). Moreover, in the context of an ex parte appeal, there is no opportunity to hear from the registrants about whether they are aware of any reported instances of confusion. In re Opus One, Inc., 60 USPQ2d 1812, 1817 (TTAB 2001) (“The fact that an applicant in an ex parte case is unaware of any instances of actual confusion is generally entitled to little probative weight in the likelihood of confusion analysis, inasmuch as the Board in such cases generally has no way to know whether the registrant likewise is unaware of any instances of actual confusion, nor is it usually possible to determine that there has been any significant opportunity for actual confusion to have occurred.”) (citations omitted). Serial No. 88352444 - 15 - As distinct from our analysis as to the similarity or dissimilarity of the services, channels of trade, and relevant consumers, based on the identifications as set forth in the application and the cited registration, the factor considering actual confusion, by contrast – “[t]he length of time during and conditions under which there has been concurrent use without evidence of actual confusion,” see DuPont, 177 USPQ at 567 – requires us to look at actual market conditions, to the extent there is evidence of such conditions of record. In re Guild Mortg. Co., 2020 USPQ2d 10279, *6 (TTAB 2020). Here, there is no evidence that in the actual marketplace, the same consumers have been exposed to both marks for the respective goods, such that we could make a finding as to the “length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” DuPont, 177 USPQ at 567. In any event, the test is likelihood of confusion, not actual confusion, and, as often stated, it is unnecessary to show actual confusion in establishing likelihood of confusion.” In re Big Pig Inc., 81 USPQ2d 1436, 1439-40 (TTAB 2006); see also In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (“[T]he relevant test is likelihood of confusion, not actual confusion.”) (emphasis in original); In re i.am.symbolic, llc, 123 USPQ2d at 1747 (“‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). We find these factors to be neutral. Serial No. 88352444 - 16 - II. Conclusion In balancing the factors, we hold that in view of the virtually identical marks, related goods, and overlap in trade channels and classes of consumers, confusion is likely between Applicant’s mark STATUS: and Registrants’ mark STATUS. Decision: The refusal to register Applicant’s mark is affirmed.