88730813 (T.T.A.B. May. 14, 2021)

Gustav Gerlach

Trademark Trial and Appeal BoardMay 14, 2021

88730813 (T.T.A.B. May. 14, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: May 14, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Gustav Gerlach _____ Serial No. 88730813 _____ Francis J. Ciaramella of Francis John Ciaramella, PLLC for Gustav Gerlach Carol A. Spils, Trademark Examining Attorney, Law Office 104, Zachary Cromer, Managing Attorney. _____ Before Shaw, Lynch, and Lebow, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background Gustav Gerlach (“Applicant”) seeks registration on the Principal Register of the mark RARR! GOODS in standard characters, with a disclaimer of GOODS, for “lunch Serial No. 88730813 - 2 - bags not of paper” in International Class 21.1 The Examining Attorney has refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with the previously registered mark on the Principal Register, RARR in standard characters, for: Bags and holdalls for sports clothing; All purpose sport bags; All-purpose carrying bags; Athletic bags; Backpacks, book bags, sports bags, bum bags, wallets and handbags; Drawstring bags; Duffle bags; Gym bags; Sack packs, namely, drawstring bags used as backpacks; Sports bags in International Class 18; and Athletic tops and bottoms for men, women and children; Tops; Bottoms; Hoodies; Jackets; Jerseys; Loungewear; Shoes for men, women and children; Tops; Wearable garments and clothing, namely, shirts; Windbreakers in International Class 25.2 After the Examining Attorney made the refusal final, Applicant twice requested reconsideration and appealed. The Examining Attorney denied both requests for reconsideration, and the appeal proceeded, with Applicant and the Examining Attorney submitting briefs. For the reasons set forth below, we affirm the refusal to register. II. Likelihood of Confusion Our determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be 1 Application Serial No. 88730813 was filed December 17, 2019, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on alleged use of the mark in commerce. 2 Registration No. 5276353 issued on August 29, 2017. Serial No. 88730813 - 3 - considered, referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). The Board considers only those DuPont factors for which there is evidence and argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); see also Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 2020 USPQ2d 10341, *3 (Fed. Cir. 2020) (“Not all DuPont factors are relevant in each case . . . .”). Two key considerations are the similarities between the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (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.”). A. Similarity of the Marks We compare the marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. 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, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). We assess not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the goods offered under the respective marks is likely to result. Serial No. 88730813 - 4 - Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). We compare Applicant’s mark RARR! GOODS to the cited mark RARR, and find the marks very similar. They share the same first word, RARR, a coined term, and its placement at the beginning of Applicant’s mark makes it prominent. In re Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “[t]he identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (first part of a mark “is most likely to be impressed upon the mind of a purchaser and remembered.”). This dominant element of Applicant’s mark looks and sounds identical to the cited mark. As urged by Applicant, we compare the marks in their entireties. However, for rational reasons, we may give more or less weight to a particular feature of a mark, such as a common dominant element, provided the ultimate conclusion rests on a consideration of the marks in their entireties. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). While the exclamation point and additional word in Applicant’s mark create some difference from the cited mark in appearance and sound, we find the marks overall more similar than dissimilar, particularly because we must consider the marks “‘in light of the fallibility of memory.’” See In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). While Applicant’s Serial No. 88730813 - 5 - mark includes an exclamation point at the end of this word, we do not consider this punctuation a significant distinguishing feature, as the visual impact is minimal, and RARR! and RARR still sound identical. See St. Helena Hosp., 113 USPQ2d at 1085 (TAKETEN and TAKE 10! engender similar commercial impressions despite addition of exclamation point); In re Burlington Ind., Inc., 196 USPQ 718, 719 (TTAB 1979) (“[A]n exclamation point does not serve to identify the source of the goods”). Also, the other word in Applicant’s mark, GOODS, is descriptive or generic, and has been disclaimed.3 This reduces its significance in the likelihood of confusion analysis because consumers would view it merely as referring to the goods or products, and would not rely on the wording to indicate source. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). As to the marks’ connotations and commercial impressions, we find them to be highly similar. Consumers would derive the same impression from the shared word RARR in Applicant’s mark as they would in the cited mark, and the generic or descriptive word GOODS in Applicant’s mark adds little in terms of meaning and impression. We reject Applicant’s arguments that the marks differ based on “using distinct logos or fonts”4 because both Applicant’s mark and the cited mark are in standard characters. See Viterra, 101 USPQ2d at 1909 (holding that the specific font style of a mark cannot serve as the basis to distinguish it from a mark in standard character 3 The Examining Attorney included a definition of “goods” in the record. TSDR March 26, 2020 Office Action at 101-19 (merriam-webster.com). 4 11 TTABVUE 5 (Applicant’s Brief). Serial No. 88730813 - 6 - form); Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (registrant “entitled to depictions of the standard character mark regardless of font style, size, or color”). While we have considered the likelihoood of confusion cases cited by Applicant as allegedly analogous, we do not find the nature of their comparison of the marks applicable here. We do not agree that the other cases offer helpful guidance in our analysis “because the critical facts of different cases almost always differ substantially,” as they do here. In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1027 (TTAB 2017). Given the resemblance in sound, appearance, connotation and commercial impression when the marks are considered in their entireties, the marks are highly similar, and the first DuPont factor weighs strongly in favor of likely confusion. B. The Relatedness of the Goods In analyzing the second DuPont factor, we look to the identifications in the application and cited registration. See Detroit Ath. Co., 128 USPQ2d at 1051; Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “[L]ikelihood of confusion can be found ‘if the respective goods are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs., 101 USPQ2d at 1722 (internal citations omitted). Serial No. 88730813 - 7 - To show the relatedness of goods such as Applicant’s non-paper lunch bags to the bags in the cited registration, the Examining Attorney introduced numerous examples of third parties that offer both types of goods under the same mark, including:  The Herschel website offers duffle bags, athletic and sports bags, gym bags, drawstring bags, wallets and backpacks, as well as non-paper lunch bags, all bearing the same HERSCHEL SUPPLY COMPANY mark.5  The Jansport website features backpacks and non-paper lunch bags, all under the JANSPORT mark.6  The L.L. Bean website offers backpacks, drawstring bags, sports bags, book bags, duffle bags, wallets and non-paper lunch bags, all under the L.L. BEAN mark.7  Under the YETI mark, the YETI website features backpacks, gym bags, duffle bags, and lunch bags.8  The Adidas website features carryall bags, backpacks, drawstring bags, duffel bags, gym bags, and non-paper lunch bags, all bearing the ADIDAS-and-design mark.9 5 TSDR March 26, 2020 Office Action at 5-39 (herschel.com). 6 Id. at 45-60 (jansport.com). 7 Id. at 62-87 (llbean.com). 8 Id. at 90-100 (yeti.com). 9 6 TTABVUE 10-32 (December 17, 2020 Denial of Reconsideration) (adidas.com). Serial No. 88730813 - 8 -  The Burton website offers backpacks, book bags, drawstring bags, duffel bags, and non-paper lunch bags that all bear the BURTON mark.10  The Carhartt website features duffel bags, backpacks, wallets and non-paper lunch bags, all bearing the same CARHARTT-and-design mark.11  The Dakine website shows duffle bags, gym bags, wallets, and non-paper lunch bags bearing the DAKINE mark.12  The Vans website features backpacks, tote bags, and non-paper lunch bags, all bearing the VANS mark.13 This evidence supports the relatedness of the goods in the application and cited registration by showing that consumers are accustomed to encountering such goods offered under the same mark. See Detroit Ath. Co., 128 USPQ2d at 1050 (crediting relatedness evidence that third parties use the same mark for the goods and services at issue because “[t]his evidence suggests that consumers are accustomed to seeing a single mark associated with a source that sells both”); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (stating that evidence that “a single company sells the goods and services of both parties, if presented, is relevant to a relatedness analysis”). The Examining Attorney also 10 Id. at 35-49 (burton.com). 11 5 TTABVUE 1-44 (carhartt.com). 12 4 TTABVUE 1-22 (dakine.com). 13 Id. at 45-46; 9 TTABVUE 1-6 (vans.com). Serial No. 88730813 - 9 - submitted evidence that non-paper lunch bags, as identified by Applicant, can come in the form of backpacks, as identified in the cited registration.14 The Examining Attorney further supported the relatedness of the goods by introducing use-based, third-party registrations showing that the same entity has registered a single mark identifying both lunch bags, and at least one of the types of bags in the cited registration. Such registrations are relevant to show that the respective goods are of a type that may emanate from a single source under one mark. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1140 (TTAB 2012); 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 (unpublished) No. 88-1444, 864 F.2d 149 (Fed. Cir. Nov. 14, 1988). We find the extensive evidence of third-party use and registration of the same marks for goods such as Applicant’s and goods such as Registrant’s quite persuasive to establish their relatedness. While Applicant introduced marketplace pictures of its lunch bags and one of Registrant’s bags, and seeks to distinguish the goods based on the alleged actual realities of the marketplace, “[t]he authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the 14 TSDR September 9, 2020 Denial of Reconsideration at 2-54 (amazon.com, target.com & sears.com). Serial No. 88730813 - 10 - class of purchasers to which sales of the goods are directed.” Octocom Sys., 16 USPQ2d at 1787. We cannot consider Applicant’s narrower characterizations of its own goods as “colorful lunch boxes bearing a giraffe or t-rex design,”15 as we instead must rely on Applicant’s broader identified goods – all types of non-paper lunch bags. See S.W. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (where the goods in an application or registration are broadly described, they are deemed to encompass all the goods of the nature and type described therein); In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). Applicant also argues that, “in the past the Board has held Class 025 goods as being dissimilar to Class 018 goods (both of which are offered by the Prior Owner) [citations omitted]. If the two classes of goods offered by the Prior Owner are dissimilar to one another, then surely the same goods as compared to the Application’s goods are dissimilar as well.”16 However, as discussed above, Applicant’s Class 18 bags are found related to the Class 18 bags in the cited registration. The Examining Attorney did not, and need not, rely on an argument that the Class 25 clothing in the cited registration is related to Applicant’s Class 18 bags. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any good encompassed by the identification in a particular class in the 15 11 TTABVUE 9 (Applicant’s Brief). 16 Id. at 7 (citations omitted). Serial No. 88730813 - 11 - application. Tuxedo Monopoly, Inc. v. General Mills Fun Grp, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 866 F.3d 1315, 116 USPQ2d 1406, 1409 (TTAB 2015). Moreover, determinations made in prior decisions based on different evidentiary records regarding the relatedness of goods do not carry as much weight as the evidentiary record in this case. Here, as detailed above, the record contains strong evidence of the relatedness of non-paper lunch bags to the types of bags identified in the cited registration. The second DuPont factor weighs in favor of likely confusion. C. The Trade Channels and Classes of Consumers Turning to the trade channels and classes of consumers, because the identifications in the application and cited registration have no restrictions on channels of trade, we must presume that Applicant’s non-paper lunch bags travel in all channels of trade appropriate for such goods, and the cited registration’s various types of bags and wallets travel in all channels of trade appropriate for such goods. See Hewlett-Packard, 62 USPQ2d at 1005. The third-party retail website evidence discussed above establishes that goods such as Applicant’s and Registrant’s travel in some of the same channels of trade to the same classes of consumers, who include members of the general public. Thus, the third DuPont factor weighs in favor of likely confusion. D. Actual Confusion Under the seventh and eighth factors, we have no evidence regarding lack of actual confusion, and no contextual evidence “such that we could make a finding as Serial No. 88730813 - 12 - to the ‘length of time during and conditions under which there has been concurrent use without evidence of actual confusion.’” In re Guild Mortg. Co., 2020 USPQ2d 10279 *25 (TTAB 2020). Although Applicant makes assertions in its Brief that no actual confusion has occurred, “[a]ttorney argument is no substitute for evidence.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)). We also note that “in this ex parte context, there has been no opportunity to hear from Registrant about whether it is aware of any reported instances of confusion.” Guild Mortg., 2020 USPQ2d 10279 at *23. We find these factors neutral. E. Conditions Under Which and Buyers to Whom Sales Are Made The fourth DuPont factor involves “[t]he conditions under which and buyers to whom sales are made, i.e., impulse vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at 567. Applicant contends, without pointing to any evidence, that the goods are expensive, and would be subject to a higher degree of care in purchasing. However, Applicant’s identified lunch bags and the cited registration’s wallets and bags are unrestricted in terms of price point, and as noted earlier, therefore encompass all types of lunch bags, and all types of the other identified wallets and bags. See S.W. Mgmt., 115 USPQ2d at 1025. The retail evidence in the record reflects that these types of goods are offered at modest price points. We have no basis to find that ordinary consumers purchasing non-paper lunch bags and other types of bags such as backpacks, drawstring bags, and duffel bags, or wallets, would exercise more than an ordinary degree of care. This factor is neutral. Serial No. 88730813 - 13 - F. Other DuPont Factors Applicant makes brief arguments under other DuPont factors – the “Fame of the Prior Mark” under the fifth factor,17 and “Any Possible Confusion Would be De Minimis” under the twelfth factor.18 Again, Applicant points to no evidence in support of these arguments. Regarding the fame of the cited mark, Applicant contends that “there is no evidence that the cited Prior Mark is famous or has acquired secondary meaning within the marketplace or that consumers associate the term RARR with the Prior Owner.”19 First, we note that the cited registration is entitled to the presumptions under Trademark Act Section 7(b), including, given that the registration includes no Section 2(f) claim, that it is inherently distinctive for the goods. Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1889 (TTAB 2006) (“A mark that is registered on the Principal Register is entitled to all Section 7(b) presumptions including the presumption that the mark is distinctive and moreover, in the absence of a Section 2(f) claim in the registration, that the mark is inherently distinctive for the goods.”). Second, as to fame, “[b]ecause of the nature of the evidence required to establish the fame of a registered mark, the Board does not expect Trademark Examining Attorneys to submit evidence as to the fame of the cited mark in an ex parte proceeding, and they do not usually do so.” In re Mr. Recipe, LLC, 118 USPQ2d 1084, 17 11 TTABVUE 11 (Applicant’s Brief). 18 Id. at 12. 19 Id. at 11. Serial No. 88730813 - 14 - 1086 (TTAB 2016) (citing In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006)). “Rather, in an ex parte appeal the ‘fame of the mark’ factor is normally treated as neutral because the record generally includes no evidence as to fame.” Id. (citing Thomas, 79 USPQ2d at 1027 n.11; and In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009)). We do so here, and find this factor neutral. Turning next to Applicant’s contention under the twelfth DuPont factor, the extent of potential confusion is assessed according to the identifications of goods in the application and cited registration, not from the standpoint of the actual uses of the involved marks. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). As explained above, the goods are related and travel in the same channels of trade to the same classes of customers, such that potential confusion is likely, not de minimis. We consider this factor neutral in our analysis of the likelihood of confusion. III. Conclusion The overall similarity of the marks for related goods that move in some of the same channels of trade to the same classes of customers renders confusion likely. Decision: The refusal to register Applicant’s mark is affirmed.