87236020 (T.T.A.B. Nov. 13, 2019)

Icon LM, LLC

Trademark Trial and Appeal BoardNov 13, 2019

87236020 (T.T.A.B. Nov. 13, 2019)

Mailed: November 13, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Icon LM, LLC _____ Application No. 87236020 _____ Theodore R. Remaklus of Wood Herron & Evans LLP for Icon LM, LLC. Sarah E. Kunkleman, Trademark Examining Attorney, Law Office 105, Jennifer Williston, Managing Attorney. _____ Before Cataldo, Bergsman and Heasley, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Icon LM, LLC (Applicant) seeks registration on the Principal Register of the mark LM LUXE MARKET WORLD’S BEST BRANDS and design, reproduced below, for Online retail store services featuring general luxury consumer goods; online trading services, namely, operating online marketplaces for sellers and buyers of luxury goods and services; online trading services in which sellers post This Opinion Is Not a Precedent of the TTAB Serial No. 87236020 - 2 - luxury products or services to be offered for sale, and purchasing is done via the Internet in order to facilitate the sale of goods and services by others via a computer network; online retail consignment stores featuring general luxury consumer goods; online exchange services, namely, bartering general luxury consumer goods of others; providing a searchable on-line advertising guide featuring the luxury goods and services of other on-line vendors,” in Class 35.1 The description of the mark reads as follows: The mark consists of the stylized letters “LM” above the words “LUXURY MARKET” all above the words “WORLD'S BEST BRANDS”, with a horizontal line on either side of this last phrase. The rectangle on which all of the wording and the horizontal lines appear is merely for shading and is not part of the mark. Color is not claimed as a feature of the mark. Applicant disclaims the exclusive right to use “Luxury Market” and “World’s Best Brands.” The Examining Attorney refused to register Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the registered mark LM LUX MARKET AUTHENTIC LUXURY GOODS and design, reproduced below, 1 Application Serial No. 87236020 filed November 14, 2016, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in commerce. Serial No. 87236020 - 3 - for the services set forth below as to be likely to cause confusion:2 Computerized online marketplace services featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; operating on-line marketplaces featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; on- line consignment services whereby goods are received on consignment in on-line retail stores featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; providing a website for connecting sellers with buyers, in Class 35, The description of the mark reads as follows: Color is not claimed as a feature of the mark. The mark consists of the letter “L” appearing within the center dip of the stylized letter “M”, altogether over a small horizontal line. Below the line is the stylized wording “LUXMARKET” centered over the wording “AUTHENTIC LUXURY GOODS”. Registrant disclaims the exclusive right to use “AUTHENTIC LUXURY GOODS.” 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. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor that is relevant or for which there is evidence of record. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); 2 Registration No. 5243793, registered July 18, 2017. Serial No. 87236020 - 4 - ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). “[E]ach case must be decided on its own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (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.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). I. The similarity or dissimilarity and nature of the services. The services are in part identical. For example, • Registrant’s “computerized online marketplace services featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia” encompasses Applicant’s “online retail store services featuring luxury consumer goods.” “Online marketplace of services” include “online retail store services”; Serial No. 87236020 - 5 - •Registrant’s “operating online marketplaces featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia” encompasses Applicant’s “operating online marketplaces for sellers and buyers of luxury goods”; •Applicant’s “online retail consignment stores featuring luxury consumer goods” encompasses “on-line consignment services whereby goods are received on consignment in on-line retail store services featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia”; and •Registrant’s “providing a website for connecting sellers with buyers” is equivalent to Applicant’s “online trading services in which sellers post luxury products or services to be offered for sale, and purchasing is done via the Internet in order to facilitate the sale of goods and services by others via a computer network.” Where services are broadly identified in an application or registration, “we must presume that the services encompass all services of the type identified.” Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); 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.’”). Under this DuPont factor, the Examining Attorney need not prove, and we need not find, similarity as to each activity listed in the description of services. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any activity encompassed by the identification of services in a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 Serial No. 87236020 - 6 - USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“it is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application.”). Applicant, in its brief, did not contest that the services at issue are related.3 II. Established, likely-to-continue channels of trade and classes of consumers. Because the services described in the application and the cited registration are in part identical, we presume that the channels of trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018), aff’d mem. (No. 18-2236) (Fed. Cir. September 13, 2019) (“Because the services described in the application and the cited registration are identical, we presume that the channels of trade and classes of purchasers are the same.”); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). 3 Applicant’s Reply Brief, p. 1 (17 TTABVUE 2) (“Applicant has not argued that the services or channels of trade differ to any significant extent.”). Serial No. 87236020 - 7 - As noted above, Applicant does not contend that the channels of trade have any significant differences. III. The similarity or dissimilarity of the marks. We now turn to the DuPont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling 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.”) (citation omitted). In comparing the marks, we are mindful that where, as here, the services are in part identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the services. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). “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.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs. v. Triumph Learning, 101 USPQ2d at Serial No. 87236020 - 8 - 1721); see also Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In this appeal, the average customer is a consumer who buys or sells products online. As noted above, Applicant seeks to register the mark: The mark in the cited registration is: The marks are similar because they share the letters LM, the terms “Luxury Market” or “LuxMarket,” and a similar advertising tagline (i.e., “World’s Best Brands” or “Authentic Luxury Goods”). In Applicant’s mark, the letters LM mean “Luxury Market.” In the Registrant’s mark, the letters LM mean “Lux Market.” The Serial No. 87236020 - 9 - term “Lux Market” market means “Luxury Market,” as indicated by the advertising tagline “Authentic Luxury Goods.” Further, the term “Lux” is a shortened form of the word “Luxe” which is defined as “luxury; elegances; sumptuousness.”4 The marks have the same structure: the letters LM over the term “Luxury Market” or “Lux Market” over the advertising tagline “World’s Best Brands” or “Authentic Luxury Goods.” Accordingly, the marks look the same, sound the same, and have the same meaning and engender the same commercial impressions. Applicant argues that: When considered in their entireties, in view of the weakness of the term/phrase “LUXURY MARKET” or “LUXMARKET”, the marks are readily distinct in overall appearance and commercial impression so that there is no likelihood of confusion.5 While Applicant argues that “[t]he suggestive phrase ‘LM LUXMARKET’ in [the cited registration] [is] weak when used in connection with a website that is for the sale of luxury goods,” there is no evidence in the record of that the letters LM have been used or registered for the sale of luxury products other than by Registrant.6 The only third-party marks of record incorporating the letters LM are two registrations that Applicant submitted for jewelry: 4 Dictionary.com based on THE RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed November 6, 2019. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). 5 Applicant’s Brief, p. 5 (4 TTABVUE 9). 6 Applicant’s Brief, p. 7 (4 TTABVUE 11). Serial No. 87236020 - 10 - 1. Registration No. 3966102, reproduced below, for “retail store services and on- line retail store services featuring jewelry, watches, glass ware and gifts”; and 2. Registration No. 2527482, reproduced below, for “jewelry.” First, neither of these marks is as close to Applicant’s mark or Registrant’s mark as Applicant’s mark and Registrant’s marks are to each other. Second, unlike cases in which extensive evidence of third-party use and registration in the record was found to be “powerful on its face” inasmuch as “a considerable number of third parties use [of] similar marks was shown,” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015), Applicant has presented only two such registrations, well short of the volume of evidence found convincing in Juice Generation and Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). Serial No. 87236020 - 11 - The crux of Applicant’s argument, however, is that the marks are so highly stylized that they are not similar.7 Applicant argues that the marks at issue are analogous to the marks in In re Electrolyte Labs., Inc., 929 F.2d 645, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) reproduced below: The Court held that “[t]he nature of stylized letter marks is that they partake of both visual and oral indicia, and both must be weighed in the context in which they occur.” The Court reversed the Board, finding that the Board erred by focusing on the K+ in both marks to the exclusion of the other elements of both marks. Id. Applicant also cited In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003) to support its contention that a stylized display can differentiate marks. Although we uphold the Board’s finding that the two marks are generally similar, principally because they both use the term “Blue Moon,” we note that similarity is not a binary factor but is a matter of degree. Because there are significant differences in the design of the two marks, the finding of similarity is a less important factor in establishing a likelihood of confusion than it would be if the two marks had been identical in design or nearly indistinguishable to a casual observer. Id. at 68 USPQ2d at 1062. 7 Applicant’s Brief, pp. 8-12 (4 TTABVUE 12-16). Serial No. 87236020 - 12 - In this appeal, though, we are not focusing our finding solely on the similarity of the marks’ wording. To the contrary, as noted above, it is the structure of the marks in their entireties comprising the dominant stylized letters LM above the terms “Luxury Market” or “Lux Market” above the advertising taglines “World’s Best Brands” or “Authentic Luxury Goods” that renders the marks more similar than dissimilar. It is undeniable that marks have different stylizations. However, “[e]xact identity is not necessary to generate confusion as to source of similarly-marked [services].” Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012). The public does not scrutinize marks. See B.V.D. Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (“The purchasing public, we believe, does not indulge in such recognitional contortions but sees things as they are.”); In re Johnson Prods. Co., Inc., 220 USPQ 539, 540 (TTAB 1983) (“It is undeniable that if the mark is carefully examined, the two overlapping ‘S’’s can be discerned. What is more significant, however, is that this sort of studied analysis of the mark is unlikely to occur in the marketplace where these products are sold.”). Because the test is not a side-by-side comparison of the marks, but the similarity or dissimilarity of the commercial impressions engendered by the marks, the marks are sufficiently similar that the average customer, who retains a general recollection rather than a specific impression of the marks, will believe that the services emanate from the same source. Serial No. 87236020 - 13 - The similarities of the marks outweigh the dissimilarities. Therefore, we find that the marks are similar in their entireties in terms of appearance, sound, connotation and commercial impression. IV. Conclusion Because the marks are similar, the services are in part identical and are presumed to be offered in the same channels of trade to the same classes of consumers, we find that Applicant’s mark for “computerized online marketplace services featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; operating on-line marketplaces featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; on-line consignment services whereby goods are received on consignment in on-line retail stores featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; providing a website for connecting sellers with buyers” is likely to cause confusion with the registered mark for “computerized online marketplace services featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; operating on-line marketplaces featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; on-line consignment services whereby goods are received on consignment in on-line retail stores featuring luxury goods, namely, Serial No. 87236020 - 14 - jewelry, watches, artwork, bags, collectibles, and memorabilia; providing a website for connecting sellers with buyers.” Decision: The refusal to register Applicant’s proposed mark LM LUXURY MARKET WORLD’S BEST BRANDS and design is affirmed.