Janversal LLC

Trademark Trial and Appeal Board

Sep 22, 2016

No. 86205375 (T.T.A.B. Sep. 22, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 22, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Janversal LLC
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Serial No. 86205375
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Janversal LLC, appearing pro se.

Stefan M. Oehrlein, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
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Before Bergsman, Wolfson, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Janversal LLC (“Applicant”) seeks registration on the Principal Register of the
mark shown below for “fish sauce” in International Class 30.1 Applicant has
disclaimed LINGAYEN and DAGUPAN’S BEST.

1 Application Serial No. 86205375 was filed February 26, 2014 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
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The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark
LINGAYEN in standard characters for “fish sauces” in International Class 30 and
“preserved fish and crustaceans” in International Class 29.2 The cited registration
includes a claim of acquired distinctiveness under Section 2(f) of the Trademark Act,
15 U.S.C. § 1052(f).
After the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration. When the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
The 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
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between

2 Registration No. 2408232 issued November 28, 2000; Section 15 affidavit acknowledged;
renewed.
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the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.2d
1340, 71 USPQ2d 1944 (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.”). In this case, Applicant
states in its Appeal Brief that the relevant du Pont factors are the similarity of the
marks and similarity of the goods and their trade channels.3 However, Applicant also
includes an argument under the thirteenth du Pont factor that the registration to
unrelated third-party owners of two marks that both include the term PANGASINAN
for fish sauce supports finding no likely confusion between Applicant’s mark and the
mark in the cited registration.4
A. The Goods, Trade Channels and Classes of Consumers
We first address the second and third du Pont factors, the similarity or
dissimilarity of the goods and channels of trade. Both the subject application and the
cited registration identify fish sauce. Thus, the goods are identical in part. Applicant
contends that in reality, “the actual producers and sources are different from one
another in terms of quality, volume of production and distribution and exportation.”5
However, “[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

3 6 TTABVUE 3 (Applicant’s Brief).
4 6 TTABVUE 4-5 (Applicant’s Brief).
5 6 TTABVUE 7 (Applicant’s Brief).
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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 class of purchasers to which
sales of the goods are directed.” Octocom Systems, Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). We must focus on the
goods as identified in the application and cited registration, not on any extrinsic
evidence of actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). Thus, we consider the identified goods
identical in part.
Turning to the trade channels, we presume, as we must, that Applicant’s goods
and the relevant goods in the cited registration, for which both identifications are
unrestricted, are available to all potential classes of ordinary consumers and move in
all channels of trade normal for fish sauce. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where
the identification is unrestricted, “we must deem the goods to travel in all appropriate
trade channels to all potential purchasers of such goods”); In re Elbaum, 211 USPQ
639, 640 (TTAB 1981). Moreover, because of the identical nature of the goods, we
must presume that both Applicant’s and Registrant’s fish sauces travel through the
same channels of trade to the same class of purchasers, considerations under the
third du Pont factor. See In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (finding Board entitled to rely on this legal presumption in determining
likelihood of confusion); American Lebanese Syrian Assoc. Charities Inc. v. Child
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Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).. Thus, the second and
third du Pont factors strongly weigh in favor of likely confusion.
B. Similarity of the Marks
Turning next to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). The test assesses
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. Coach Servs.
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012); see also Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB
2012).
Applicant’s proposed mark is
. The mark in the cited registration is LINGAYEN in standard
characters. Applicant’s mark includes and prominently displays Registrant’s entire
mark, LINGAYEN. The print size of LINGAYEN is larger than that of DAGUPAN’S
BEST, and LINGAYEN appears in all capital letters, while DAGUPAN’S BEST does
not. As the first part of Applicant’s mark, appearing at the top, LINGAYEN is a
prominent element of the mark as a whole, and “most likely to be impressed upon the
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mind of a purchaser and remembered.” Presto Products Inc. v. Nice-Pak Products,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).
The record shows that Lingayen is the capital city of the Philippine province of
Pangasinan.6 Yet, having obtained the cited registration pursuant to Trademark Act
Section 2(f), Registrant is entitled to the presumption of validity of the registration,
including that the mark has acquired distinctiveness. See Cold War Museum, Inc. v.
Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009).
Thus, in the context of Registrant’s use on fish sauce, we presume that consumers
view LINGAYEN primarily as a source-indicator, rather than a geographic place
name. Given this consideration, Applicant’s disclaimer of LINGAYEN as
geographically descriptive does not diminish likely confusion with the cited
registration. See Cancer Care, Inc. v. American Family Life Assurance Co., 211 USPQ
1005, 1014 (TTAB 1981). (“Nonetheless, it is settled that a party cannot adopt as a
part of a composite mark a term or a mark of a prior user or registrant and then seek
to disclaim this feature as a part of the mark as a whole in an effort to avoid a
likelihood of confusion”).
Considering Applicant’s mark in its entirety, the disclaimed wording
DAGUPAN’S BEST seems less likely to be viewed as source-indicating, as the phrase
conveys to consumers that the goods are of the highest quality from the city of

6 June 11, 2014 Office Action at 7 (Wikipedia entry for “Lingayen”). See In re IP Carrier
Consulting Group, 84 USPQ2d at 1032. Here, we have considered the Wikipedia evidence
because it was submitted with the Examining Attorney's June 11, 2014 Office Action, and
Applicant had an opportunity to rebut it.
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Dagupan, also located in the Philippines.7 While the mark contains a significant
design of a man, the design reinforces the wording in the mark because the man is
gesturing toward it.8 The other design elements, the oval carrier and the pot design
appear as relatively insignificant backgrounds for the wording, and the star design
in front of the man also appears unremarkable, such that none of these elements are
likely to be relied upon as source-indicating. In the case of marks consisting of words
and a design, the words are normally given greater weight because they would be
used by consumers to request the products. See Viterra, 101 USPQ2d at 1911 (“the
literal component of brand names likely will appear alone when used in text and will
be spoken when requested by consumers”). Applicant’s mark also contains the letters
“JB” in large white font, prominently appearing in the center of the mark. Applicant
urges us to focus on the “JB” component of the mark to distinguish it. However,
considering the marks in their entireties, we find that consumers familiar with
Registrant’s LINGAYEN mark who encounter Applicant’s mark on fish sauce likely
would view it as a particular variety of Registrant’s LINGAYEN fish sauce.
Because Applicant’s mark prominently incorporates Registrant’s entire mark, and
because the additional wording and designs do not sufficiently distinguish the marks,

7 June 11, 2014 Office Action at 8 (Wikipedia entry for “Dagupan”); June 29, 2015 Office
Action at 4 (definition of “best”). The Board considers evidence taken from Wikipedia so long
as the non-offering party has an opportunity to rebut the evidence by submitting other
evidence that may call its accuracy into question. See In re IP Carrier Consulting Group, 84
USPQ2d 1028, 1032 (TTAB 2007). Here, we have considered the Wikipedia evidence because
Applicant had an opportunity to rebut it.
8 Although the description of the mark refers to the male figure as “pointing to the letters
‘JB’ in white inside a red clay pot,” we instead find that he appears to be gesturing toward
the oval containing the large wording LINGAYEN.
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we find the marks similar in appearance, pronunciation, connotation and overall
commercial impressions, particularly in the context of the identical goods at issue.
See Century 21 Real Estate v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed. Cir.1992) (“When marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a conclusion of likely confusion
declines.”).
C. Thirteenth du Pont Factor
Under the thirteenth du Pont factor, which considers “[a]ny other established fact
probative of the effect of use,” du Pont, 177 USPQ at 567, Applicant asserts that
because two marks containing the term “Pangasinan” allegedly coexist on the
Register, its mark can coexist with the mark in the cited registration. However,
Applicant merely referred to registration numbers and failed to introduce copies of
these registrations into the record. “To make a third-party registration of record, a
copy of the registration, either a copy of the paper Office record, or a copy taken from
the electronic records of the Office, should be submitted during
prosecution/examination of the application. . . . Mere listings of registrations are not
sufficient to make the registrations of record.” In re Star Belly Stitcher, Inc., 107
USPQ2d 2059, 2064 (TTAB 2013) (citations omitted). Regardless, even if we
considered the registrations, the coexistence of marks containing a shared term that
is not at issue in this case would have no bearing on our likelihood of confusion
determination. Each application must be considered on its own record to determine
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eligibility to register. In re Cordua Rests., Inc., 823 F.3d 954, 118 USPQ2d 1632, 1635
(Fed. Cir. 2016).
Conclusion
Based on the similarity of the marks and the identical goods at issue, moving in
the same channels of trade, we find that Applicant’s mark is likely to cause confusion
with the mark in the cited registration.
Decision: The refusal to register Applicant’s mark is affirmed.