DPE Label Holding Corp.

Trademark Trial and Appeal Board

Sep 30, 2009

No. 77377256 (T.T.A.B. Sep. 30, 2009)

Mailed: September 30, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re DPE Label Holding Corp.
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Serial No. 77377256
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Edward N. Gewirtz of Bronstein, Gewirtz & Grossman, LLC for DPE
Label Holding Corp.

Alice Benmaman, Trademark Examining Attorney, Law Office 116
(Robert Lorenzo, Managing Attorney).
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Before Walters, Holtzman and Drost, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by DPE Label Holding Corp.
(applicant) to register the mark DMV GOLD in standard character
form for services identified as "pre-paid telephone calling
cards, not magnetically encoded" in Class 16.1 Applicant
submitted a voluntary disclaimer of DMV.

1 Serial No. 77377256, filed January 22, 2008, based on an allegation
of a bona fide intention to use the mark in commerce.

THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 77377256
2
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
the standard character mark D.M.V. which is registered for goods
identified as "pre-paid telephone calling cards, not magnetically
encoded" in Class 16 as to be likely to cause confusion.2
When the refusal was made final, applicant appealed. Briefs
have been filed.
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 likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Applicant's goods and the goods in the cited registration
are identical. They are both identified as "pre-paid telephone
calling cards, not magnetically encoded." Because the goods are
identical, and there are no limitations either in the application
or the cited registration, we must assume that the channels of

2 Issued February 22, 2005. The registration also includes services in
Class 38.
Serial No. 77377256
3
trade and classes of purchasers for the goods are identical. See
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002) (“[A]bsent restrictions in the
application and registration, goods and services are presumed to
travel in the same channels of trade to the same class of
purchasers.”); Interstate Brands Corp. v. McKee Foods Corp., 53
USPQ2d 1910 (TTAB 2000); and In re Smith & Mehaffey, 31 USPQ2d
1531 (TTAB 1994).
We turn next to a comparison of applicant's mark DMV GOLD
with registrant's mark D.M.V., keeping in mind that when the
marks would appear on identical goods, the degree of similarity
between the marks necessary to support a finding of likelihood of
confusion declines. Century 21 Real Estate v. Century Life, 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
In determining the similarity or dissimilarity of marks, we
must consider the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See du Pont,
supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
Although the marks must be considered in their entireties, it is
well settled that one feature of a mark may be more significant
than another, and it is not improper to give more weight to this
dominant feature in determining the commercial impression created
Serial No. 77377256
4
by the mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985).
The term D.M.V. is registrant's entire mark, and the
essentially identical term D.M.V. is the dominant part of
applicant's mark DMV GOLD. DMV is the first word purchasers will
see or hear when encountering applicant's mark and it is
therefore more likely to have a greater impact on purchasers and
be remembered by them when they encounter these marks at separate
times. See Palm Bay, 73 USPQ2d at 1692-93 (The term VEUVE in the
mark VEUVE CLICQUOT is a "'prominent feature' as the first word
in the mark"); and Presto Products Inc. v. Nice-Pak Products
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) ("it is often the first
part of a mark which is most likely to be impressed upon the mind
of a purchaser and remembered"). The presence of dots or periods
in registrant's D.M.V. mark is an inconsequential difference that
even if noticed or remembered by consumers would not serve to
distinguish these marks.
Contrary to applicant's contention, on this record, DMV is
an arbitrary arrangement of letters having no significance in
relation to the goods. The word GOLD in applicant's mark, on the
other hand, is a laudatory term, suggesting a level of merit or
quality of the goods. See, e.g., In re Chatam International
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (the
word GOLD in mark JOSE GASPAR'S GOLD for tequila “describes...a
Serial No. 77377256
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quality of the good commensurate with great value or merit”); and
In re South Park Cigar Inc., 82 USPQ2d 1507, 1513 (TTAB 2007)
(GOLD is highly suggestive and laudatory, simply connoting the
high quality of the goods). Thus, the term GOLD has less source-
indicating significance than DMV. As applied to identical goods,
these marks may simply be perceived as different versions of the
same mark or as identifying different versions of the same phone
card, the GOLD version perhaps providing greater benefits.
While admitting that D.M.V. (with periods) has no
significance in relation to the goods, at the same time applicant
claims that DMV without periods in its mark is a descriptive
abbreviation for the geographic area comprising the District,
Maryland and Virginia where applicant plans to sell its phone
cards. As support for this contention, applicant states that
"counsel has seen [common usage] of the abbreviation
...DMV...without periods." In view of this asserted
descriptiveness of DMV, applicant voluntarily disclaimed the
term, and thus contends that it is the term GOLD in its mark,
rather than DMV, that is the dominant part of the mark.
Applicant's argument that D.M.V. and DMV have different
meanings as applied to identical goods strains credulity.
Moreover, there is nothing of any substance in the record to
indicate that DMV would be recognized or perceived by consumers
as an abbreviation standing for other words. Even if there were
Serial No. 77377256
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evidence on this point, that same meaning could be ascribed to
registrant's mark, and the use of periods would do nothing to
alter the meaning. On this record, the term DMV, with or without
periods, is simply the same arbitrary combination of letters.
Furthermore, it is well settled that the disclaimer itself
"has no legal effect on the issue of likelihood of confusion."3
National Data, supra at 751. Applicant is entitled to
voluntarily disclaim a registrable component of its mark.
However, the only effect of the disclaimer "is to disavow any
exclusive right to the use of a specified word phrase, or design
outside of its use within a composite mark." In re Franklin
Press, Inc., 597 F.2d 270, 201 USPQ 662, 665 (CCPA 1979). Thus,
while applicant may limit its own rights in the mark by
disclaiming them, applicant may not by such disclaimer limit the
rights in the mark to which registrant is entitled. See National
Data, supra.
Because the term D.M.V., which is registrant's entire
arbitrary mark, and DMV, the dominant portion of applicant's
mark, are virtually identical, the marks as a whole are
substantially similar in sound, appearance, connotation and
commercial impression. See, e.g., Giant Food, Inc. v. Nation's

3 To the extent that applicant is arguing otherwise, applicant is
mistaken, and applicant’s reliance on the Fourth Circuit case, Pizzeria
Uno Corp. v. Temple, 747 F.2d 1522, 224 USPQ 185, 189 (4th Cir. 1984)
which states that "the word not disclaimed is generally regarded as the
dominant...term," is misplaced.
Serial No. 77377256
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Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir.
1983) (GIANT confusingly similar to GIANT HAMBURGERS for related
food products and services; "Another factor weighing heavily in
our decision is that the dominant portion of both parties' marks
sounds the same when spoken.").
Finally, applicant's contention that there has been no
actual confusion is entitled to little weight. The application
was filed based on an intention to use the mark in commerce with
no indication that use has actually commenced. Nor is there
evidence of any use of the registered mark for pre-paid calling
cards. Without evidence that there has been any opportunity for
confusion to arise, the lack of actual confusion is not
meaningful. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
1768 (TTAB 1992). We add that even if there were evidence of
use, the lack of actual confusion is normally not significant in
ex parte cases. See In re Majestic Distilling Co., Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). Accordingly,
we consider this du Pont factor to be neutral.
In view of the foregoing, and because similar marks are used
in connection with identical goods, we find that confusion is
likely.
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.