Midwest Cheer Elite, Inc.Download PDFTrademark Trial and Appeal BoardApr 5, 2016No. 86560741 (T.T.A.B. Apr. 5, 2016) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: April 5, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Midwest Cheer Elite, Inc. _____ Serial No. 86560741 _____ Matthew H. Swyers of The Trademark Company, For Midwest Cheer Elite, Inc. David Yontef, Trademark Examining Attorney, Law Office 108, Thomas G. Howell, Managing Attorney. _____ Before Mermelstein, Gorowitz, and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background Midwest Cheer Elite, Inc. (“Applicant”) seeks registration on the Principal Register of the mark with the term CHEER disclaimed, and a claim of acquired distinctiveness in part as to MIDWEST for “Athletic uniforms; Hats; Serial No. 86560741 - 2 - Jackets; Shirts; Shoes; Shorts; Skirts; Sweaters; Sweatshirts; Underwear” in International Class 25 and “Education services, namely, providing instruction in the fields of cheerleading” in International Class 41.1 The Examining Attorney refused registration of Applicant’s services in International Class 41 under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) based on a likelihood of confusion with the registered mark AMARILLO CHEER ELITE in standard characters for “Instruction with respect to cheerleading, tumbling, gymnastics, and cheerleading all-star squads” in International Class 41.2 The registration includes a disclaimer of AMARILLO CHEER. After the Examining Attorney made the refusal final, Applicant appealed. We affirm the refusal to register the mark for the services in International Class 41. II. Likelihood of Confusion 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); 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 the marks and the relatedness of the services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper 1 Application Serial Number 86560741 was filed March 11, 2015 based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as January 31, 2003. 2 Registration Number 4682143, issued February 3, 2015, with a claim of first use anywhere and use in commerce since at least as early as March 1, 2003. Serial No. 86560741 - 3 - 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 services] and differences in the marks.”). A. Similarity of the Marks and Strength of the Cited Mark With respect 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 Services 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 , and the mark in the cited registration is AMARILLO CHEER ELITE. Both marks consist of geographic terms3 3 The record includes no evidence regarding the significance of MIDWEST or AMARILLO, and we sustain the Examining Attorney’s objection to Applicant’s reliance in its brief on Wikipedia entries on this point that are not in the record. See In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB 1028) (Board will consider evidence taken from Wikipedia, which has “inherent problems regarding [] reliability,” if the non-offering party has an opportunity to rebut that evidence). However, we take judicial notice of definitions from Merriam-Webster.com of “Amarillo” as “city NW Texas pop. 190,695” and of “Midwest” as “region N cen. United States including area around Great Lakes & in upper Mississippi River valley from Ohio — sometimes considered to include Kentucky on the E. to North Dakota, South Dakota, Nebraska, & Kansas on the W.” See Univ. of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); see also In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 86560741 - 4 - followed by the identical wording CHEER ELITE. Although Applicant’s mark contains some minimal stylization and color, the standard character mark in the cited registration could be presented in any font style or size, including in the same lettering and colors used in Applicant’s mark. See In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); see also 37 C.F.R. § 2.52(a). Thus, the marks share a very significant visual and phonetic similarity because of the common wording CHEER ELITE. See Nat’l Data Corp., 224 USPQ at 751 (While marks must be compared in their entireties, “there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of the mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties”). In addition, the only words that differ between the two marks, AMARILLO and MIDWEST, share the similarity of being geographic designations, and therefore contribute to an overall similarity of the marks in terms of connotation and commercial impression. While Applicant argues that the references in the marks to different geographic places result in distinct connotations,4 we agree with the Examining Attorney that consumers likely would view the variation in geographic terms between the otherwise identical marks as signifying territorial affiliates of the same CHEER ELITE source.5 AMARILLO has been disclaimed as geographically descriptive, and Applicant claimed acquired distinctiveness in part as to MIDWEST. 4 4 TTABVUE at 12. 5 6 TTABVUE at 10. Serial No. 86560741 - 5 - Consumers would be less inclined to rely on these geographically descriptive words to distinguish source. See In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985) (“the public can be said to rely more on the non-descriptive portion of each mark”). Applicant also argues that the overlapping term CHEER ELITE is descriptive and therefore weak.6 Both the subject application and the cited registration contain disclaimers of CHEER, but not ELITE. The Examining Attorney points out in response to Applicant’s argument that no third-party marks containing the term CHEER ELITE have registered for cheerleading instruction services, reflecting no weakness on the Register.7 Coupled with Applicant’s assertion that AMARILLO is geographically descriptive,8 Applicant’s descriptiveness argument as to the entire remainder of the cited mark constitutes an improper collateral attack on the cited registration. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992) (“Applicant’s suggestion that registrant’s mark is descriptive may not be considered inasmuch as that allegation comprises an attack on the validity of registrant’s registration which is not permitted in an ex parte appeal proceeding”); see also Nat’l Data Corp., 224 USPQ at 751-52 (Noting that no argument was made that the entire mark was generic, which would have been impermissible, and therefore stating that “a showing 6 4 TTABVUE at 14. 7 6 TTABVUE at 11-12; August 1, 2015 Office Action at pp. 2-22. 8 4 TTABVUE at 12. Serial No. 86560741 - 6 - of descriptiveness or genericness of part of a mark does not constitute an attack on the registration”). The cited registration contains no disclaimer or claim of acquired distinctiveness as to ELITE, and we therefore decline to treat it as weak in the comparison of the marks. Given the similarity in sight, sound, and commercial impression of the marks in their entireties, the first du Pont factor weighs in favor of likely confusion. B. Relatedness of the Services and Trade Channels Turning next to the services, we must determine whether their degree of relatedness rises to such a level that consumers would mistakenly believe Applicant’s and Registrant’s services emanate from the same source. We must focus on the services as identified in the application and cited registration, not on 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); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). We find that this du Pont factor weighs heavily in favor of likely confusion because the services are identical in part. Both the subject application and the cited registration identify cheerleading instruction services. Applicant concedes the overlap in the services.9 We also presume, as we must, that Applicant’s and Registrant’s identical services, for which both recitations are unrestricted, travel through the same channels of trade 9 4 TTABVUE at 14. Serial No. 86560741 - 7 - to the same class of purchasers. See Viterra, 101 USPQ2d at 1908; see also 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”). Thus, these du Pont factors weigh in favor of likely confusion. C. Actual Confusion Finally, Applicant argues that the record lacks evidence of actual confusion in the marketplace despite, according to the use dates alleged in the file records, more than ten years of co-existence. However, the lack of evidence of actual confusion carries little weight, especially in an ex parte context, where the Registrant had no opportunity to offer evidence. In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“uncorroborated statements of no known instances of actual confusion are of little evidentiary value”). This du Pont factor is neutral. III. Conclusion Based on the similarity of the marks, the identical cheerleading instruction services at issue, and the identical trade channels, we find that Applicant’s mark is likely to cause confusion with the mark in cited Registration No. 4682143. The absence of actual confusion evidence in this ex parte record lacks probative value to overcome the likelihood of confusion. Serial No. 86560741 - 8 - Decision: The refusal to register Applicant’s mark in International Class 41 is affirmed. The mark in this application shall proceed to publication in due course in International Class 25, which was not the subject of a refusal to register. Copy with citationCopy as parenthetical citation