87915984 (T.T.A.B. Sep. 30, 2020)

Duke Ihenacho

Trademark Trial and Appeal BoardSep 30, 2020

87915984 (T.T.A.B. Sep. 30, 2020)

Mailed: September 30, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ——— In re Duke Ihenacho ——— Serial No. 87915984 ——— Manoj N. Shah, Esq., THE FASHION LAW GROUP, PC, for Duke Ihenacho. Cheryl Kluwe, Trademark Examining Attorney, Law Office 126, Andrew Lawrence, Managing Attorney. ——— Before Mermelstein, Kuczma, and Larkin, Administrative Trademark Judges. Opinion by Mermelstein, Administrative Trademark Judge: Applicant seeks to register the following mark1 on the Principal Register: for use on or in connection with Beanies; Belts; Bottoms as clothing; Coats; Footwear; Hats; Jackets; Pants; Shirts; Shoes; Shorts; Socks; Sports jack- ets; Sweaters; Sweatpants; Sweatshirts; T-shirts; Tops as clothing; Under garments; Underwear; Collared shirts; 1 Application Serial No. 88204175 was filed on May 10, 2018, under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce. The appli- cation includes the following description of the mark: The mark consists of four vertical doric style columns in succes- sion, connected to each other. This Opinion is not a Precedent of the TTAB Serial No. 87915984 - 2 - Graphic T-shirts; Hooded sweatshirts; Long-sleeved shirts; Men’s underwear; Women’s underwear in International Class 25. The Examining Attorney finally refused registration under Trademark Act Sec- tion 2(d), 15 U.S.C. § 1052(d), on the ground that Applicant’s mark is likely to cause confusion or mistake or to deceive in view of the standard-character mark IIII CLOTHING2 (CLOTHING disclaimed) for use on or in connection with Bathing suits; Beanies; Crew necks; Dresses; Hats; Hood- ies; Shirts; Skorts; Sweaters; Sweatpants; Underwear. We affirm the refusal to register. I. Likelihood of Confusion Our determination under Trademark Act § 2(d) is based on an analysis of the pro- bative facts in evidence that are relevant to the factors bearing on the issue of likeli- hood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In considering the evidence, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). We must consider each du Pont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2 Reg. No. 5451615 issued April 24, 2018. The drawing in the registration depicts the mark in lower-case letters: iiii clothing. Because the mark is registered in standard characters, we follow our convention of depicting it in upper-case letters. See In re Calphalon Corp., 122 USPQ2d 1153, 1153 n.1 (TTAB 2017). Serial No. 87915984 - 3 - 2019). In this case, Applicant addresses three factors: the similarity or dissimilarity of the marks; the similarity or dissimilarity of the goods; and the similarity or dis- similarity of the trade channels. App. Br. 5 TTABVUE 3. A. The similarity or dissimilarity and nature of the goods In comparing the goods, “[t]he issue to be determined . . . is not whether the goods . . . are likely to be confused but rather whether there is a likelihood that purchasers will be misled into the belief that they emanate from a common source.” Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989). It is not neces- sary that the parties’ goods be similar or even competitive to support a finding of likelihood of confusion. It is sufficient if the goods are related in some manner or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, in light of the similarity of the marks, give rise to the mistaken belief that they come from or are associated with the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). We base our determination on the goods as identified in the application and cited registration. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). As Applicant concedes, “the goods of the parties are very closely related and iden- tical, in part.” App. Br. 5 TTABVUE 9. A comparison of the goods makes this obvious: Applicant’s goods Registrant’s goods Beanies; Belts; Bottoms as clothing; Coats; Footwear; Hats; Jackets; Pants; Shirts; Shoes; Shorts; Socks; Sports jackets; Sweaters; Sweatpants; Sweat- shirts; T-shirts; Tops as clothing; Under garments; Underwear; Collared shirts; Graphic T-shirts; Hooded sweatshirts; Bathing suits; Beanies; Crew necks; Dresses; Hats; Hoodies; Shirts; Skorts; Sweaters; Sweatpants; Underwear. Serial No. 87915984 - 4 - Applicant’s goods Registrant’s goods Long-sleeved shirts; Men’s underwear; Women’s underwear. As can be readily seen, Applicant’s goods and those of the cited registrant both include beanies, shirts, sweaters and sweatpants, and Applicant’s underwear (and men’s and women’s underwear) are identical to the underwear set out in in the reg- istration. Moreover, Applicant’s “hooded sweatshirts” appear to be identical to the registrant’s “hoodies.” The rest of the goods are related. For instance, Applicant’s sweaters and sweatshirts are related to the registrant’s “crew necks.” We needn’t be- labor the point; “it is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particu- lar class in the application.” In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing Tuxedo Monopoly, 209 USPQ at 988). See also In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Based on the evidence of record, we find that Applicant’s Class 25 goods are iden- tical in part and otherwise closely related to the Class 25 goods in the cited registra- tion. This du Pont factor supports a finding of likely confusion. B. Channels of trade; conditions under which and buyers to whom sales are made While conceding the relationship of the goods, “Applicant strongly disagrees with the Examiner’s findings that, . . . [‘]when marketed under substantially similar marks, consumers are likely to believe that the goods of the parties emanate from a common source.[’]” App. Br. 5 TTABVUE 9. Applicant explains that its clothing is marketed as a contemporary high-end luxury Serial No. 87915984 - 5 - brand directed to customers with “Urban Sophistication”. Upon viewing of the Applicant Mark’s website, it is clear that the Applicant’s Mark is marketed in a refined, distin- guished and classic fashion. Accordingly, the Applicant Mark’s diverse clothing line is a combination of minimalist designs with high-fashion apparel. Whereas, the Regis- tered Mark is marketed specifically as an anime or manga graphics brand directed at Japanese cartoon enthusiasts. Upon viewing of the Registered Mark’s website and social media handles, it is clear that the Registered Mark is mar- keted as a brand primarily for the “anime and hentai” com- munity. As well, the Registered Mark’s clothing line is com- prised of only t-shirts, sweatshirts and accessories bearing Japanese cartoons and lettering. Id. at 9–10. We cannot credit Applicant’s argument. It is a fundamental principle of registra- tion practice that goods identified in an application or registration must be construed to include all goods of the type identified, and we must presume them to be sold to all usual customers for goods of the type identified, and in all usual channels of trade for them. Octocom Sys. Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958)). Here, the registrant’s unrestricted goods cannot be limited by extrinsic evidence to those sold to Japanese cartoon enthusiasts. To the contrary, the registrant’s goods must also be construed to include high-end minimalist fashion sold to customers with “urban sophistication.” And absent specific limitations in its application, Applicant’s clothing must be deemed to include all clothing of the type identified, sold in all usual channels of trade, and to all usual customers for such goods. It logically follows that if the goods are identical, their customers and channels of trade must also be consid- ered identical. “Because the goods are legally identical, they must be presumed to Serial No. 87915984 - 6 - travel in the same channels of trade, and be sold to the same class of purchasers.” In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994); see In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evi- dence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). We conclude that to the extent Applicant’s goods are identical to the registrant’s, they are sold in the same channels of trade to the same potential purchasers. This factor favors a finding of likely confusion. C. Similarity or dissimilarity of the marks In a likelihood of confusion analysis, we compare the marks in their entireties for similarities and dissimilarities in 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, 1692 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. App’x 516 (Fed. Cir. 2019) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). “The proper test is not a side-by-side 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, 1377, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation and internal quotation marks omitted). Applicant’s mark is Serial No. 87915984 - 7 - which Applicant describes as “four vertical doric style columns in succession, con- nected to each other.” The mark in the cited registration is IIII CLOTHING. While we consider both marks in their entireties, we note that IIII is clearly the dominant element of the cited mark. It appears first in the registered mark, while the disclaimed term CLOTHING is merely a generic name for the registrant’s goods. See Palm Bay Imps., 73 USPQ2d at 1692 (“The presence of this strong distinctive term as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of ROYALE.”); Presto Prods., Inc. v. Nice-Pak Prods. 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”). While descriptive, generic, or otherwise unprotectable disclaimed matter is not removed from the mark, and we must consider the marks in their entireties, the “descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.” Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)). See also In re N.A.D. Inc., 57 USPQ2d 1872, 1873‒74 (TTAB 2000) (“[t]hese descriptive, if not generic, words have little or no source-indicating significance”). Simply put, we find opposer’s four-column mark to be similar to the registered mark because the four “I”s in the registrant’s mark resemble the four columns in Serial No. 87915984 - 8 - Applicant’s mark, and vice versa. It is true that Applicant’s doric columns are de- picted with their capitals and bases touching, while the registered mark is depicted with small spaces between the letter “I”s. But the test is not whether the marks can be distinguished in a side-by-side comparison, but whether consumers, having seen one mark, would find it to resemble the second mark when later encountering the second used to identify the same or similar goods. As Applicant correctly notes, “[t]he focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks.” App. Br. 5 TTABVUE 3 (citing Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975)); see also Fischer GmbH v. Molnar & Co., 203 USPQ 861, 870 (TTAB 1979) (“The average person retains only a general or hazy recollection of a symbol mark. . . .”). While it is true that differences between the marks may be found when they are closely compared, those differences are not likely to be apparent to the average consumer under typical market conditions, where close comparison is not possible. Puma-Sportschuhfabriken Rudolf Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). Applicant disagrees with the Examining Attorney “that the dominant portion of applicant’s [sic: registrant’s] mark, iiii,[3] may be displayed in commerce in capital letters, IIII.” App. Br. 5 TTABVUE 4. Nonetheless, the mark in the cited registration is registered in standard-character form. As such, it may be depicted in any type style, size, or color, including in all capital letters. See Trademark Rule 2.52(a); 37 CFR 3 Recall that the cited standard-character mark is shown in the drawing of the mark in lower- case letters. See supra note 2. Serial No. 87915984 - 9 - § 2.52(a); see Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). Applicant argues that the dominant portion of the registered mark would be per- ceived as a number, not as four letters “I.” It is possible that consumers would per- ceive the IIII in registrant’s mark as a number, but it makes little difference. Because of the resemblance of IIII to Applicant’s design, consumers might as easily consider Applicant’s design to be a number. Although Applicant apparently intends its design to be that of four columns, Applicant cannot control consumers’ interpretation of the mark. “[A]n applicant or registrant’s intended interpretation of the mark is not nec- essarily the same as the consumer’s perception of it.” In re Yale Sportswear Corp., 88 USPQ2d 1121, 1125 (TTAB 2008) (citing Interpayment Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1465 (TTAB 2003) (“[I]t does not matter what applicant’s intentions were in creating its mark or what its characterization of its mark is. The fact remains that the two symbols end up being substantially identical. . . .”)). At bot- tom, the marks at issue appear similar whether the perception is that both look like four columns, that both look like a Roman numeral, or that both look like four capital letters. Finally, Applicant cryptically asserts that the Applicant Mark’s four columns are interpreted concep- tually to represent the brand, “Law17”. App. Br. 5 TTABVUE 9. There is no evidence or argument supporting this assertion, Serial No. 87915984 - 10 - so we give it no weight.4 We conclude that Applicant’s mark is substantially similar in appearance to the mark in the cited registration. This du Pont factor supports a finding of a likelihood of confusion. II. Conclusion We find Applicant’s goods to be identical in part and otherwise related to the goods in the cited registration. And because the goods are identical in part, we find them to travel in the same channels of trade to the same consumers. Finally, we find Appli- cant’s mark similar in appearance and connotation to the mark IIII CLOTHING in the cited registration. We are cognizant that Applicant’s mark is registered as a design mark (which Applicant describes as four connected doric columns), and that the cited mark is registered as four alphabetic characters plus the word “CLOTHING.” The marks, however, look substantially similar, whether customers assume that Applicant’s mark comprises alphabetic or numeric characters or whether they assume that the registrant’s mark comprises a four-column design. Although the marks are not iden- tical, “where . . . the goods at issue are identical, the degree of similarity necessary to support a conclusion of likely confusion declines.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 1550 4 As can be seen, Applicant’s statement appears to refer to a footnote 17. There is no footnote 17 — indeed no footnotes at all — in Applicant’s brief. Serial No. 87915984 - 11 - (2019) (quoting In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Upon balancing the factors, we find that confusion is likely. Decision: The refusal to register under Trademark Act § 2(d) is affirmed.