No. 85952248 (T.T.A.B. Jun. 12, 2015)

Luxebaby

Trademark Trial and Appeal BoardJun 12, 2015

No. 85952248 (T.T.A.B. Jun. 12, 2015)

This Opinion is not a Precedent of the TTAB Mailed: June 12, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Luxebaby ________ Serial No. 85952248 _______ E. Lynn Perry of Perry IP Group for Luxebaby. Kelly L. Wells, Trademark Examining Attorney, Law Office 118 (Thomas G. Howell, Managing Attorney). _______ Before Cataldo, Wellington and Hightower, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Luxebaby (“Applicant”) seeks registration on the Principal Register of the mark displayed below for “disposable baby diapers” in International Class 5.1 1 Application Serial No. 85952248 was filed on June 6, 2013, based upon Applicant’s allegation of first use of the mark anywhere and in commerce on July 8, 2009, under Section 1(a) of the Trademark Act. Serial No. 85952248 - 2 - “Color is not claimed as a feature of the mark.” “The mark consists of the stylized text ‘luxebabyLLC’ above the stylized text ‘LIVELUXELIVEGREEN’”. The Trademark Examining Attorney has refused registration of Applicant’s mark on the ground of a likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in view of the mark BABY LUXE, registered on the Principal Register with a disclaimer of “BABY” apart from the mark as shown for wash cloths; sheets, flannel sheets and mattress pads for cribs, bassinets, and portable cribs; cloth bed sheet protectors for toilet training; lap pads made of cloth for use in covering an infant’s lap in International Class 24.2 Applicant appealed the final refusal. The refusal has been fully briefed by Applicant and the Examining Attorney. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are 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 marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). 2 Registration No. 2970061 issued on July 19, 2005. Section 8 affidavit accepted; Section 15 affidavit acknowledged. Serial No. 85952248 - 3 - Scope of Protection Accorded the Cited Mark With regard to the conceptual strength of the mark in the cited registration, Applicant argues The instant case is one where any similarities in the marks and goods are significantly discounted by the meaning of the components “baby” and “luxe.” The term “baby” in the cited mark is descriptive of the category of end-users of the products. “Baby” therefore has no source- indicating significance in this case. The word “luxe” is derived from the French “de luxe.” “Lux,” “luxe” and “de luxe” are laudatory adjectives similar in meaning to terms such as “premium” or “ultra.” The shortened version “luxe”, also used as “lux”, is used to convey to the customer that the item offered for sale is of a high, or luxurious, quality. “Luxe” is laudatory and therefore descriptive. Thus, “the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted.” TMEP 1207.01(b)(iii). This renders the cited mark so weak that its scope does not preclude registration of Applicant’s mark.3 While Applicant does not provide any evidence in support of its assertions regarding the meaning of “luxe,” common sense indicates that the mark BABY LUXE connotes “baby luxury” or “luxury for baby.” As applied to Registrant’s identified goods, including products for babies and infants, we find the mark suggests a desirable characteristic thereof and, as a result, conceptually is somewhat weak. In addition, Applicant has submitted evidence obtained from the USPTO’s Trademark Search and Data Retrieval (TSDR) database, consisting of use-based, 3 4 TTABVUE 12. Record citations are to TTABVUE, the Trademark Trial and Appeal Board’s publically available docket history system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Citations to the prosecution history are displayed by date and page number. Serial No. 85952248 - 4 - third-party registrations for marks and goods similar to those in the cited registration.4 The following examples are most probative:5 Registration No. 4066986 for the mark LUXE BASICS for “bumper guards for cribs; fitted fabric slipcovers for furniture,” and “baby bedding, namely bundle bags, swaddling blankets, crib bumpers, fitted crib sheets, crib skirts, crib blankets and diaper changing pads not of paper”; Registration No. 4362194 for the mark LUXE TOWELS (TOWELS disclaimed) for “textiles and fabrics, namely, bath linens, towels, wash cloths and shower curtains”; and Registration No. 3723891 for the mark BABY LUX (BABY disclaimed) for “one of a kind, handmade girl’s dresses, pants, shirts”. We note, however, that these third-party registrations either recite goods (handmade dresses) that are dissimilar to the goods at issue herein or protect marks (e.g., LUXE BASICS and LUXE TOWELS) that are not as similar to the marks at issue as those marks are to each other. We further note that such registrations are not evidence of use of the marks shown therein and, therefore, are not proof that consumers are familiar with said marks so as to be accustomed to the existence of similar marks in the marketplace. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). As a result, we find Applicant’s evidence insufficient to support a finding that the mark BABY LUXE in the cited 4 Applicant also submitted copies of third-party applications which have no probative value. Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463 (TTAB 2003) (applications show only that they have been filed). 5 We note that Applicant submitted numerous other third-party registrations for “LUX-” or “LUXE-” formative marks for a variety of goods, including clothing and bedding. However, the three registrations noted above identify the closest goods and most similar marks to those at issue herein. Serial No. 85952248 - 5 - registration is commercially weak. Even if we find that Registrant’s mark is conceptually somewhat weak, it is settled that a weak mark is entitled to protection against the registration of a similar mark for closely related goods or services. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (CCPA 1974). As a result, we must determine herein whether the Applicant’s involved mark and the mark in the cited registration are similar and identify goods that are closely related. The Goods We turn now to the du Pont factor involving the relatedness of Applicant’s goods and Registrant’s goods. It is settled that in making our determination, we must look to the goods as identified in the application vis-à-vis those recited in the cited registration. See Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Also, it is not necessary that the respective goods be competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective goods are related in some manner, or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could give rise to the mistaken belief that they originated from the same producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). In this case, Applicant’s goods are “disposable baby diapers” and Registrant’s goods are “wash cloths; sheets, flannel sheets and mattress pads for cribs, bassinets, Serial No. 85952248 - 6 - and portable cribs; cloth bed sheet protectors for toilet training; lap pads made of cloth for use in covering an infant’s lap.” As identified, the goods appear to be related inasmuch as Applicant’s disposable diapers are intended for babies, and Registrant’s sheets, mattress pads, bed sheet protectors and lap pads are all intended for use by infants or babies, and its wash cloths may be used by anyone, including babies and their parents. Furthermore, in support of her position the Examining Attorney made of record with her April 30, 2014 final Office Action copies of pages from commercial Internet websites showing that third parties provide both Applicant’s goods and Registrant’s goods under the same mark.6 These include: Babiesrus.com provides disposable diapers, wash cloths, crib, cradle and bassinet bedding; Buybuybaby.com provides disposable diapers, wash cloths, baby bedding, mattress pads and sheets, and sheet savers; Diapers.com provides crib sheets, crib mattress pads and disposable diapers; and Parents.com provides disposable diapers, and crib sheets. The foregoing evidence suggests that Registrant’s goods may emanate from the same sources as those of Applicant, and may be provided under the same marks. In addition, the Examining Attorney has made of record with her April 30, 2014 final Office Action7 and September 21, 2013 first Office Action8 copies of use-based 6 April 30, 2014 Office Action at 8-33. 7 Id. at 34-61. 8 September 21, 2013 Office Action at 10-43. Serial No. 85952248 - 7 - third-party registrations, of which seven show that various entities have adopted a single mark for goods identified in the involved application and cited registration. See, for example: Registration No. 3951951 for, inter alia, disposable diapers, cloth baby wipes, namely, wash cloths; Registration No. 3899171 for, inter alia, disposable diapers, crib bed sheets, mattress pads, wash cloths; and Registration No. 2984266 for, inter alia, disposable diapers, wash cloths for infants and children, bedding for infants and children, namely, blankets, comforters, bed sheets mattress pads and crib bumpers. Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Association of the United States Army, 85 USPQ2d 1264, 1270 (TTAB 2007); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The evidence of record establishes that Applicant’s goods are related to the goods identified in the cited registration, and further may be identified under the same mark. As such, this du Pont factor favors a finding of likelihood of confusion. Channels of Trade In making our determination regarding the relatedness of the channels of trade, we look as we must to the goods as identified in the involved application and cited registration. See Octocom Systems, Inc., 16 USPQ2d at 1787. See also Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Serial No. 85952248 - 8 - It is presumed that the disposable diapers, baby bedding and wash cloths at issue move in all channels of trade normal for such goods, and that they are purchased by all of the usual consumers for such goods. 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). In addition, neither identification of goods recites any limitations to their channels of trade or classes of consumers. Applicant argues that While a giant department store like Target might carry disposable diapers and bedding for infants, they would likely be in different sections of the store, not sold side by side with diapers. Disposable diapers are items more likely to be found in grocery and drug stores – not in stores which carry bedding.9 However, Applicant provides no evidence in support of this allegation and, to the contrary, the Examining Attorney’s evidence suggests that both Applicant’s goods and Registrant’s goods are available, at least, on the Internet under the same marks. As such, this du Pont factor also favors a finding of likelihood of confusion. The Marks Next we consider the similarity or dissimilarity of the marks at issue in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imports, Inc., 73 USPQ2d at 1691. While we consider each mark in its entirety, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided that our ultimate conclusion rests upon a comparison of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Nonetheless, the 9 4 TTABVUE 17. Serial No. 85952248 - 9 - similarity or dissimilarity of the marks is determined based on the marks in their entireties, and the analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re National Data Corp., 224 USPQ at 751; see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). Thus, we look to the entirety of Registrant’s BABY LUXE mark and Applicant’s mark to determine their similarity and dissimilarity, noting that consumers may not encounter the marks in close proximity as they are displayed here. The two marks at issue are obviously similar to the extent that Applicant’s mark incorporates the words comprising Registrant’s mark – “BABY” and “LUXE” – albeit in different order. The wording “luxebaby” further is in much larger script than the rest of the wording in Applicant’s mark. As a result, we find that “luxebaby” is the dominant portion of Applicant’s mark. BABY LUXE and “luxebaby,” while transposed, both connote luxury for babies and also are similar in appearance and sound. The designation “LLC” in Applicant’s mark merely denotes Serial No. 85952248 - 10 - Applicant’s business entity and serves little, if any, source-identifying function. The additional wording “live luxe live green” in Applicant’s mark further reinforces “luxebaby” inasmuch as it suggests a slogan promoting a life that is both luxurious and environmentally friendly. We recognize the differences between Applicant’s mark and the mark in the cited registration created by the additional wording in Applicant’s mark. Nonetheless, as discussed above, we find that when viewed as a whole the marks are more similar than dissimilar in appearance, sound and particularly connotation and that they convey similar commercial impressions. Accordingly, we find that the du Pont factor of the similarity or dissimilarity of the marks also weighs in favor of a finding of likelihood of confusion. Conclusion We have considered all of the arguments and evidence of record, including those not specifically discussed herein, and all relevant du Pont factors. In view of the similarity of the marks, similarity of the goods and their channels of trade, we find that Applicant’s mark is likely to cause confusion, mistake or deception as to the source of Applicant’s goods. Decision: The refusal to register is affirmed.