Christopher Sy and Dustin Tombo

Trademark Trial and Appeal Board

Jul 13, 2016

No. 85965433 (T.T.A.B. Jul. 13, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 13, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Christopher Sy and Dustin Tombo
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Serial No. 85965433
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Matthew H. Swyers of The Trademark Company, PLLC for Christopher Sy and
Dustin Tombo.

Kim Saito, Trademark Examining Attorney, Law Office 102 (Mitchell Front,
Managing Attorney).
_____

Before Kuczma, Greenbaum, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Christopher Sy and Dustin Tombo (“Applicants”), as joint applicants, have filed an
application to register on the Principal Register the mark set forth below for
“Electric cigarettes; Electronic cigarettes,” in International Class 34:1

1 Application Serial No. 85965433, filed June 20, 2013 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), on the basis of Applicants’ stated bona fide intention to use the
mark in commerce.
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The application describes the design element of the mark as “the stylized design of
the combined letters ‘E’ & ‘V.’” Applicant has disclaimed the exclusive right to use
VAPE apart from the mark as shown.
The Trademark Examining Attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicants’ mark, as used
in connection with Applicants’ goods, so resembles the registered mark ELEMENTS
in standard characters as to be likely to cause confusion, or to cause mistake, or to
deceive. The cited mark is the subject of three registrations owned by the same
Registrant for the following goods, all in International Class 34:
Reg. No. 4668271 Electronic cigarette lighters; Electronic cigarettes;
Electronic cigarettes for use as an alternative to
traditional cigarettes; Electronic cigars; Smokeless cigar
vaporizer pipes; Smokeless cigarette vaporizer pipe.2

Reg. No. 3471137 Cigarette ash receptacles; Cigarette lighters not of
precious metal; Cigarette papers; Cigarette rolling
machines; Cigarette rolling papers; Cigarette-rolling
machines; Filter tips for cigarettes; Lighters for smokers;
Machines allowing smokers to make cigarettes by
themselves; Pocket apparatus for rolling cigarettes;
Pocket apparatus for self-rolling cigarettes; Pocket
appliances for rolling one's own cigarettes; Pocket devices
for self-rolling of cigarettes; Pocket machines for rolling
cigarettes; Pocket-size cigarette rolling machines;
Matches.3

Reg. No. 4229954 Cigarette rolling machines; Cigarette rolling papers;
Filter tips.4

2 Issued January 6, 2015.
3 Issued July 22, 2008; Section 8 affidavit accepted; Section 15 affidavit acknowledged.
4 Issued October 23, 2012.
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When the refusal was made final, Applicants appealed. Applicants and the
Examining Attorney have filed briefs.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods at issue. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
For the sake of economy, we will confine our analysis to the issue of likelihood of
confusion between Applicants’ mark and the mark and goods in Reg. No. 4668271.
Of all the cited marks, this one is registered for goods that are in part the same as
Applicants’ goods. If the refusal cannot be affirmed on the basis of this registered
mark, it could not be affirmed on the basis of the other cited marks. See In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
1. The goods; trade channels; customers.
We will first consider the similarity or dissimilarity of the goods as identified in
the application and the cited registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014);
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). The goods are identical in part, because both the application
and the cited registration cover “electronic cigarettes.” Accordingly, the du Pont
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factor regarding the similarity or dissimilarity of the goods favors a finding of
likelihood of confusion.
As Applicant’s goods are legally identical in part to those of Registrant, we must
presume that they move in the same channels of trade and are offered to the same
classes of consumers. 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); American Lebanese Syrian Associated
Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB
2011); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). The
statement of Applicants’ affiant to the effect that Applicants’ goods “are available
exclusively online via our website …”5 and therefore move in different trade
channels is unavailing, because the application does not set forth any limits on the
trade channels through which the goods may be offered. Therefore, we presume that
Applicants’ goods move in all channels of trade normal for those goods. Octocom, 16
USPQ2d at 1787. Accordingly, the du Pont factors relating to the similarity or
dissimilarity of trade channels and classes of customers favor a finding of likelihood
of confusion.
2. The marks.
Before turning to an analysis of the marks, we will address the proffered evidence
relating to meanings of the constituent terms of the marks. Applicants request that

5 Affidavit of Christopher Sy, ¶ 7, Applicant’s response of September 4, 2014 at 25.
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we take judicial notice of certain dictionary definitions found at ,6
but they have not provided us copies of those definitions. “The Board will not utilize
a link or reference to a website’s internet address to consider content that may
appear there.” TBMP § 1207.04, citing In re Future Ads LLC, 103 USPQ2d 1571,
1572 n.3 (TTAB 2012). Accordingly, we will not consider the definitions to which
Applicants refer. However, because the meaning of each mark is important, we will
take judicial notice of dictionary definitions that we consider reliable.7
The Examining Attorney has made of record a Wikipedia entry for “Electronic
cigarette,”8 which shows that the term VAPE has significance in the context of the
goods of Applicant and Registrant. The entry contains the following remarks:
The use of e-cigs is commonly called vaping. … The
majority of young people who vape also smoke. … Some
users vape for relaxation. Many users vape because they
believe it is healthier than smoking … Consumers of e-
cigarettes, sometimes called “vapers”, have shown
passionate support for the device … Large gatherings of
vapers, called vape meets, take place around the US.
…These products are mostly available online or in
dedicated “vape” storefronts … Some vape shops have a
vape bar where patrons can test out different e-liquids
and socialize.9
These uses show that VAPE has come to be understood and used as a verb and an
adjective in a manner analogous to the use of “smoke” in connection with

6 Applicants’ brief at 10, 4 TTABVUE 11.
7 The Board may take judicial notice of dictionary definitions. Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
8 Office Action of July 14, 2015 at 6-19.
9 Id. at 6, 7, 8, 12, 13.
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conventional cigarettes. We note that Applicants have disclaimed the exclusive
right to use the term VAPE, essentially acknowledging that the term, as used on
their goods, is not inherently distinctive.
We now turn to a consideration of the similarity or dissimilarity of the marks at
issue in their entireties as to appearance, sound, connotation and commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). While we consider each
mark in its entirety, 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 that
our ultimate conclusion rests upon a comparison of the marks in their entireties. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicants contend that the design element of their mark should be considered
the dominant portion of the mark because of its size relative to the wording; and
because of its placement to the left of the wording, considering viewers’ inclination
to read from left to right.10 Applicants’ affiant states that the design represents “the
letters ‘EV’ … highly stylized in the shape of what could be seen as a diamond.”11
Applicants’ brief refers to the design as a “stylized ‘E’,” making no mention of the
letter V.12 We are not persuaded that customers would perceive the design element
as the primary source indicator of the mark. Customers are more likely to use the
wording of the mark, ELEMENT VAPE, in describing and requesting the goods.

10 Applicant’s brief at 9, 4 TTABVUE 10.
11 Affidavit of Christopher Sy, ¶ 4, Applicant’s response of September 4, 2014 at 25
(emphasis added).
12 See Applicants’ brief at 9, 4 TTABVUE 10.
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Viterra, 101 USPQ2d at 1908 (“In the case of a composite mark containing both
words and a design, the verbal portion of the mark is the one most likely to indicate
the origin of the goods to which it is affixed” (internal quotation marks omitted)); In
re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999) (“In the case of
marks which consist of words and a design, the words are normally accorded greater
weight because they would be used by purchasers to request the goods”). Applicants
themselves, on their website, use the words ELEMENT VAPE (without design) to
identify their business in text.13 There is no evidence that Applicants or their
customers use EV or E as a shorthand reference to the brand. Accordingly, we agree
with the Examining Attorney that the wording ELEMENT VAPE is the dominant
element of the mark.
The marks at issue are similar in appearance and sound to the extent that the
registered mark includes the term ELEMENTS and Applicants’ mark includes the
term ELEMENT. They differ in appearance by virtue of the design element in
Applicants’ mark and they differ in sound and appearance by virtue of the word
VAPE in Applicants’ mark, both of which are absent from Registrant’s mark.
Regarding the respective meanings of the marks, Applicants contend that
ELEMENT means a “substance that cannot be separated into simpler
substances”;14 that their mark ELEMENT VAPE therefore suggests, incongruously,
the idea of “vaporizing something that cannot be separated into simpler substances

13 Affidavit of Christopher Sy, ¶ 1 and Exhibit A, Applicant’s response of September 4, 2014
at 24, 29.
14 Applicants’ brief at 10, 4 TTABVUE 11.
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…”; and that Registrant’s mark carries no such incongruity. With this argument,
Applicants are apparently referring to the definition of “element[s]” as “any of more
than 100 fundamental metallic and nonmetallic substances that consist of atoms of
only one kind …”.15 As for the cited registered mark, Applicants contend that the S
at the end of Registrant’s mark ELEMENTS causes it to refer to “atmospheric
agencies or forces, weather.” Applicant concludes, “whereas the singular version of
ELEMENT combined with VAPE creates a commercial impression of vaporizing
something that cannot be vaporized, the plural ELEMENTS creates a commercial
impression of weather.”16
The word ELEMENT, whether in its singular or plural form, is a familiar word
whose varied meanings are known to most consumers. The definition of ELEMENT
in WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY takes up most of one column
of a page. In nearly all of the word’s various meanings, it may be used in either
singular or plural form.17 In light of this fact, customers would likely interpret the
terms ELEMENT and ELEMENTS, as they appear in the marks, as having similar
meanings. No evidence of record suggests that they would interpret these words
differently simply because one is singular and the other plural. Applicants also
provide no support for their questionable contention that elements cannot be
vaporized; and even if this contention were true, we would require evidence to

15 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993) at 734.
16 Applicants’ brief at 10, 4 TTABVUE 11.
17 There are three definitions for ELEMENTS in specifically plural form, one being the
“weather conditions viewed as activities of the elements,” but another being the equally
commonly understood sense of the “rudiments” of an art or science. WEBSTER’S at 734.
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persuade us that relevant customers would understand this purported physical or
chemical property of “elements.” Thus, we do not agree that Applicants’ mark
creates an incongruous commercial impression that is absent from Registrant’s
mark.
Comparing Applicants’ mark ELEMENT VAPE (and design) in its entirety with
Registrant’s mark ELEMENTS in the context of the goods, we see little difference
in meaning, because the record shows that VAPE is a descriptive term that applies
with equal appropriateness to Registrant’s goods and Applicants’ goods. We do not
find that the stylized EV design meaningfully alters the meaning of Applicants’
mark, because it would likely be interpreted merely as a reference to the initial
letters of the words ELEMENT VAPE. Overall, we find that the marks’ similarities
outweigh their differences, such that they create similar commercial impressions.
We are mindful that “[w]hen marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind,
85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v.
Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). Accordingly, we find that the
du Pont factor of the similarity or dissimilarity of the marks weighs in favor of a
finding of likelihood of confusion.

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3. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. In view of the
similarities between the marks, the identity of the goods, and the presumption that
the goods will travel through the same trade channels to the same classes of
customers, we find that Applicants’ mark so resembles the cited registered mark as
to be likely to cause confusion, mistake or deception as to the source of Applicant’s
goods.
Decision: The refusal to register is affirmed.