Dylan Harrison

Trademark Trial and Appeal Board

Aug 12, 2016

No. 86134276 (T.T.A.B. Aug. 12, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: August 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Harrison
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Serial No. 86134276
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Clay McGurk, of The Law Office of Clay McGurk, for Dylan Harrison.

David Collier, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
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Before Kuhlke, Cataldo and Shaw,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Dylan Harrison (“Applicant”) seeks registration on the Principal Register of the
mark NICE, in standard characters, for:
Electronic cigarette batteries, in International Class 9;
Cartridges sold filled with chemical flavorings in liquid
form for electronic cigarettes; chemical flavorings in liquid
form used to refill electronic cigarette cartridges, in
International Class 30; and
Cartomizers, namely, combination electronic cigarette
refill cartridges sold empty and atomizers, sold as a
component of electronic cigarettes; electronic cigarettes;
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electronic cigarettes for use as an alternative to traditional
cigarettes, in International Class 34.1
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, as used in connection
with Applicant’s goods, so resembles the mark:2

for “electronic cigarettes” and “electronic hookahs” in International Class 34, as to
be likely to cause confusion. When the refusals were made final, Applicant appealed
and requested reconsideration. The Examining Attorney denied the request for
reconsideration, and the appeal was resumed. The case is fully briefed. We affirm the
refusal to register.
Preliminary Matters
Before proceeding to the merits of the refusal, we address an evidentiary matter.
In an attempt to demonstrate that the marks in the application and the cited
registration are different, Applicant, in its November 23, 2015 Response, included a
table of eight published trademark cases. The table included the involved marks,

1 Application Serial No. 86134276, filed on December 3, 2013, based on Applicant’s allegation
of an intent to use the proposed mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
2 Registration No. 4540603, issued May 27, 2014. The description of the mark reads: “The
mark consists of image of a hookah in red and grey above a purple swirl; NYCE at the top in
black letters with a red Y, HOOKAH at the bottom in black.” The term HOOKAH has been
disclaimed and the colors purple, red, grey and black are claimed as a feature of the mark.
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some of the goods or services, and the outcome of the case.3 The Examining Attorney
objects to any discussion of the marks listed in the table on the ground that “the
applicant failed to provide copies of these registrations, or the complete electronic
equivalent from the USPTO’s automated system.”4 The Examining Attorney is
correct that the mere submission of a list of marks does not make them part of the
record and that the record in any application should be complete prior to appeal.
However, all of the marks identified in Applicant’s table were discussed in published
trademark cases and need not be separately entered into the record to be considered.
Accordingly, the objection is overruled and we have considered the listed marks
within the context of the published cases for whatever probative value they may have.
Analysis
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the goods and the similarities between the marks. 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.”).

3 Applicant’s Response of November 23, 2015, Appendix A, pp. 8-9.
4 Examining Attorney’s Br. p. 4.
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A. The similarity or dissimilarity of the goods, trade channels, and classes of
consumers.
We begin our analysis with the second and third du Pont factors and look at the
relationship between the goods at issue, the channels of trade in which they travel,
and the classes of consumers. We base our evaluation on the goods as they are
identified in the application and registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys.,
Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990).
With regard to the goods in International Class 34, the goods of Applicant and
Registrant are in-part identical inasmuch as both the application and registration
identify “electronic cigarettes.”5 Further, because these goods are in-part identical,
they must be presumed to travel in the same channels of trade to the same class of
purchasers. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (Absent restrictions in an application and/or registration, identical goods
are “presumed to travel in the same channels of trade to the same class of
purchasers.”); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1005 (Fed. Cir. 2002).
With regard to Applicant’s goods in International Classes 9 and 30, the Examining
Attorney has made of record a number of excerpts from the Internet web sites of

5 We need not discuss the relatedness of the remaining goods in International Class 34, since
if there is a likelihood of confusion with any of the goods in the class, likelihood of confusion
must be found as to the entire class. See Bond v. Taylor, 119 USPQ2d 1049, 1052-53 (TTAB
2016); Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981).
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electronic cigarette manufacturers, as well as more than twenty third-party
trademark registrations establishing that the “same entity manufactures and
provides e-cigarettes, electronic cigarette batteries, cartridges and chemical
flavorings in liquid form under the same mark and that these goods are all provided
through the same channels of trade.”6 For example, the web sites of
southbeachsmoke.com, internationalvaporgroup.com, provape.com, ovaleusa.com,
volcanoecigs.com, nyjoy.com, v2profit.com, and migvapor.com establish that
electronic cigarette batteries and electronic cigarette liquid flavorings are sold
alongside and under the same brand as electronic cigarettes, both online as well as
in affiliated retail stores.7 Similarly, Registration Nos. 4827600, 4543595, 4837569,
4796277, and 4737825, among others, establish that the same companies offer
electronic cigarette batteries and electronic cigarette liquid flavorings under the same
mark as electronic cigarettes.8 Applicant does not dispute that the goods are in-part
identical and otherwise related, or that they travel in the same channels of trade and
are offered to the same classes of consumers.
Accordingly, we find the Examining Attorney’s evidence establishes that
Applicant’s goods in classes 9 and 30 are related to Registrant’s goods, and that they
are likely to be purchased by the same consumers and travel in the same trade
channels. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert

6 Examining Attorney’s Br., p. 13.
7 Examining Attorney’s Office Actions of December, 3, 2014, June 24, 2015, and January 7,
2016.
8 Examining Attorney’s Office Action of January 7, 2016.
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Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
The du Pont factors relating to similarity of the goods, similarity of established,
likely to continue channels of trade, and classes of consumers favor a finding of
likelihood of confusion as to all three classes of goods.
B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
Next, we consider the similarity of the marks. In comparing the marks we must
consider their 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). The emphasis of our analysis must be on the
recollection of the average purchaser who normally retains a general, rather than
specific, impression of trademarks. Although we consider the mark as a whole, “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. . . .” In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). Moreover, similarity in sound alone may be
sufficient to support a finding that the marks are confusingly similar. See Krim-Ko
Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is
sufficient if the similarity in either form, spelling or sound alone is likely to cause
confusion.”); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st
USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007).
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Again, Applicant’s mark is NICE, in standard characters, and Registrant’s mark
is shown below:

Regarding Registrant’s mark, we find the term NYCE to be the dominant portion
of the mark given that it appears at the top of the mark and is more likely to be used
by prospective consumers to call for the goods. In re 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.”’) quoting CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
1983); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999) (“[W]ords
are normally accorded greater weight because they would be used by purchasers to
request the goods.”). Applicant’s mark consists solely of the word NICE in standard
characters without any stylization, other words, or design.
With respect to pronunciation, the word NYCE in Registrant’s mark is likely to be
pronounced the same as the word NICE in Applicant’s mark. Applicant argues
without evidentiary support that Registrant’s mark would be pronounced “N-Y-C-e”
rather than “nice,” whereas its mark is pronounced “nik-e.”9 But this argument is
unpersuasive. “[T]here is no correct pronunciation of a trademark, and consumers

9 Applicant’s Br., p. 14.
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may pronounce a mark differently than intended by the brand owner.” Viterra, 101
USPQ2d at 1912. Since the letters “y” and “i” are often pronounced the same, we find
it more likely that consumers would pronounce both NYCE and NICE in the same
way.
Applicant also argues that the larger relative size of the “purple swirl” and the
hookah design in Registrant’s mark make them the dominant features.10 We disagree.
The “purple swirl,” although large, is unlikely to be articulated and is more likely to
be viewed as a background or carrier for the words and the hookah design. Although
we consider each mark on a case-by-case basis, the wording in composite word and
design marks normally is accorded greater weight in the likelihood of confusion
analysis because the verbal portion is most likely to indicate the origin of the goods,
In re Viterra, 101 USPQ2d at 1908, and also to be used by purchasers to request the
goods, Skincode AG v. Skin Concept AG, 109 USPQ2d 1325, 1329 (TTAB 2013); M.C.I.
Foods Inc. v. Bunte, 96 USPQ2d 1544, 1551 (TTAB 2010). In addition, the hookah
design is suggestive of the Registrant’s goods and merely reinforces the impression
created by the descriptive word “hookah” which has been disclaimed as descriptive of
Registrant’s goods. In sum, we recognize that Registrant’s mark has design features,
however, these design elements are not sufficient to distinguish the marks. The
similar likely pronunciation of NYCE and NICE makes a much greater impact.
Applicant has cited numerous cases in support of its argument that the marks are
not confusingly similar. After careful consideration of these cases, we do not find them

10 Id. at 11.
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analogous. The consideration of visual and phonetic similarities and differences
between marks is a highly fact-specific inquiry. In the cases cited by Applicant, the
nature of the specific similarities and differences between the marks, the strength of
the respective marks, and the goods and services involved do not closely parallel those
at issue in this case. For example, the prominent design element with two R’s, race
flag designs, and hearts in In re Covalinski, 113 USPQ2d 1166 (TTAB 2014), the
weakness of the shared term FERRO in Ferro Corp. v. Ronco Labs., Inc., 356 F.2d
122, 148 USPQ 497, 499 (CCPA 1966), and the unrelated services in Steve’s Ice Cream
v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477, 1478-79 (TTAB 1987) were all relevant
factors in these cases. None of these factors are present in this case. Covalinski, in
particular, is inapposite because in that case the size and placement of the design
elements in the Applicant’s mark diminished the readability of the common term,
“racegirl.” Here, in contrast, the term NYCE is a clear and prominent element of
Registrant’s mark.
For the foregoing reasons, the du Pont factor of similarity of the marks favors a
finding of likelihood of confusion.
C. The conditions under which and buyers to whom sales are made, i.e. “impulse”
vs. careful, sophisticated purchasing.
We next consider to the fourth du Pont factor, the conditions under which and
buyers to whom sales are made, i.e., “impulse” versus careful, sophisticated
purchasing. Du Pont, 177 USPQ at 567.
Applicant argues that “purchasers of electronic cigarettes are more sophisticated
and conscientious about the brand and type of electronic cigarettes they are
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purchasing due to the initial cost of buying an e-cigarette.”11 According to one article
submitted by Applicant, the cost of an e-cigarette starter kit, including an e-cigarette,
batteries, and electronic cigarette liquid flavorings, is between $50 and $100, with
additional liquids costing about $13 per bottle.12 On the other hand, the Examining
Attorney’s Internet evidence establishes that some e-cigarettes sell for as little as
$5.99 each (5 for $29.95)13 and $9.99 each.14 Such low prices do not indicate that the
goods would be purchased with a great deal of care or would require purchaser
sophistication. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899
(Fed. Cir. 2000) (“When products are relatively low-priced and subject to impulse
buying, the risk of likelihood of confusion is increased because purchasers of such
products are held to a lesser standard of purchasing care.”).
Even assuming, arguendo, that Applicant’s consumers exercise care in purchasing
the goods, in this case, the in-part identity of the goods and the similarity of the marks
outweigh any sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL
Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods
and marks outweigh sophisticated purchasers, careful purchasing decision, and
expensive goods.). See also In re Research Trading Corp., 793 F.2d 1276, 230 USPQ
49, 50 (Fed. Cir. 1986), citing Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd.,

11 Applicant’s Br., p. 15.
12 Applicant’s Response of June 3, 2015, pp. 3-5.
13 Examining Attorney’s Office Action of June 24, 2015, p. 57.
14 Examining Attorney’s Office Action of January 7, 2016, p. 100.
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434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of
discriminating purchasers . . . are not infallible.”).
D. Conclusion.
We have considered all of the arguments and evidence of record, including any not
specifically discussed herein, and all relevant du Pont factors. We find that
Applicant’s 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 Applicant’s mark is AFFIRMED on the ground
of likelihood of confusion with the mark in Registration No. 4540603, under
Trademark Act Section 2(d).