91218230 (T.T.A.B. Apr. 16, 2020)

NJOY, LLCv.Wang XI Zhi

Trademark Trial and Appeal BoardApr 16, 2020

91218230 (T.T.A.B. Apr. 16, 2020)

Mailed: April 16, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ NJOY, LLC (substituted for NJOY, Inc.) v. Wang Xi Zhi _____ Opposition No. 91218230 _____ David M. Kelly, Jason M. Joyal, and Kelu Sullivan of Kelly IP, LLP for NJOY, LLC. P. Jay Hines of Muncy, Geisler, Olds & Lowe P.C. for Wang Xi Zhi. _____ Before Bergsman, Goodman and Larkin, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Wang Xi Zhi (Applicant) seeks registration on the Principal Register for the mark IJOY (stylized), reproduced below, for “Cigarette cases; Cigarette filters; Cigarettes; Cigarettes containing tobacco substitutes not for medical purposes; Electronic cigarettes; Filter tips; Lighters for smokers; Tobacco; Tobacco pipes,” in International Class 34.1 1 Serial No. 86150445 filed December 22, 2013, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming August 10, 2010 as the date of first use of the mark anywhere and March 25, 2013 as the date of first use of the mark in commerce. This Opinion Is Not a Precedent of the TTAB Opposition No. 91218230 - 2 - NJOY, LLC, through its predecessor-in-interest NJOY, Inc. (Opposer), filed a Notice of Opposition against the registration of 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 Opposer’s previously registered NJOY marks for related goods as to be likely to cause confusion. Opposer pleaded ownership of five registrations including two registrations for the mark NJOY in standard characters listed below: •Registration No. 3427769 for “smoking simulators, namely, electronic cigarettes,” in International Class 9;2 and •Registration No. 4091150 for “electric cigarettes; electronic cigarettes; electronic cigarettes for use as an alternative to traditional cigarettes,” in International Class 9.3 Applicant, in his Answer, denied the salient allegations in the Notice of Opposition. I. The Record The record includes the pleadings, and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the subject application. The parties filed the testimony and evidence listed below: 2 Registered May 13, 2008; renewed. 3 Registered January 24, 2012; Sections 8 and 15 declarations accepted and acknowledged. Opposition No. 91218230 - 3 - A. Opposer’s testimony and evidence. 1. Notice of reliance on copies of Opposer’s pleaded registrations printed from the USPTO Trademark Status and Document Retrieval system (TSDR) showing the current status of and title to the registrations:4 2. Notice of reliance on printed publications purportedly showing media attention and public exposure of Opposer’s marks;5 3. Testimony declaration of Jeffrey Weiss, Opposer’s General Counsel and Executive Vice President of Government Affairs;6 4. Rebuttal notice of reliance on Applicant’s response to Opposer’s request for admission No. 2;7 and 5. Rebuttal testimony declaration of Jeffrey Weiss.8 B. Applicant’s testimony and evidence. 1. Notice of reliance on third-party registrations for marks purportedly consisting of the term “Joy” for e-cigarettes or related products;9 2. Notice of reliance on Internet screenshots purportedly showing use of some of the marks in the above-noted third-party registrations;10 3. Notice of reliance on the specimens of use from some of the above-noted third-party registrations;11 4. Testimony declaration of Applicant.12 4 49 TTABVUE. 5 50 TTABVUE. 6 51 TTABVUE. 7 59 TTABVUE. 8 60 TTABVUE. 9 58 TTABVUE 10-27. 10 58 TTABVUE 29-58. 11 58 TTABVUE 60-69. 12 58 TTABVUE 70-145. Opposition No. 91218230 - 4 - II. Standing Standing is a threshold issue which plaintiffs must prove in every inter partes case. To establish standing in an opposition or cancellation proceeding, a plaintiff must show “both a ‘real interest’ in the proceedings as well as a ‘reasonable basis’ for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports, Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). The Court of Appeals for the Federal Circuit has enunciated a liberal threshold for determining standing in Board proceedings. Ritchie, 50 USPQ2d at 1030. Opposer has established its standing by properly introducing into evidence its pleaded registrations showing the current status of the registrations and their title in Opposer. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (plaintiff’s two prior registrations suffice to establish plaintiff’s direct commercial interest and its standing); N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501 (TTAB 2015). Applicant, in his brief, did not challenge Opposer’s standing. III. Priority Because Opposer’s pleaded registrations are of record, and Applicant has not counterclaimed to cancel any of them, priority is not at issue with respect to the marks and goods identified in the registrations. Mini Melts, Inc. v. Reckitt Benckiser Opposition No. 91218230 - 5 - LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)). IV. Likelihood of Confusion We base our determination under Section 2(d) 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). “In discharging this duty, the thirteen DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) (quoting DuPont, 177 USPQ at 567)). “Not all of the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). See also M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); 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.”). “Each 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). Opposition No. 91218230 - 6 - 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)). A. The similarity or dissimilarity and nature of the goods. As noted above, Applicant is seeking to register IJOY (stylized) for “Cigarette cases; Cigarette filters; Cigarettes; Cigarettes containing tobacco substitutes not for medical purposes; Electronic cigarettes; Filter tips; Lighters for smokers; Tobacco; Tobacco pipes.” The descriptions of goods in Opposer’s Registration No. 3427769 and Registration No. 4091150, both for the mark NJOY, in standard character form, include “electronic cigarettes.” Thus, the goods are in part identical. Under this DuPont factor, Opposer need not prove, and we need not find, similarity as to each product listed in the description of goods. It is sufficient to find there is a likelihood of confusion where any item encompassed by the identification of goods in a particular class in the application and registration are related. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA Opposition No. 91218230 - 7 - 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 his brief, does not contend that the goods are not in part identical and, therefore, related. The second DuPont factor supports a finding of a likelihood of confusion. B. Established, likely-to-continue channels of trade and classes of consumers. Because the goods described in the application and Opposer’s registrations 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) (identical goods are presumed to travel in same channels of trade to same class of purchasers) (cited in Cai, 127 USPQ2d at 1801 (“With respect to similarity of the established trade channels through which the goods reach customers, the TTAB properly followed our case law and ‘presume[d] that the identical goods move in the same channels of trade and are available to the same classes of customers for such goods….’”)); 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); 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). Opposition No. 91218230 - 8 - Applicant, in his brief, does not dispute that the parties offer their goods in the same channels of trade to the same classes of consumers. The third DuPont factor supports a finding of a likelihood of confusion. C. The lack of any reported instances of actual confusion.13 Applicant testified that even though he has used the mark IJOY (stylized) for the products described in the description of goods since August 1, 2010, he is unaware of any reported instances of actual confusion.14 Presumably, Opposer is also unaware of any reported instances of actual confusion because if it were, it would have introduced testimony or evidence relating to actual confusion. Nevertheless, the absence of any reported instances of confusion is meaningful only if the record indicates appreciable and continuous use by Applicant of its mark for a significant period in the same markets as those served by Opposer under its marks. Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words, for the absence of actual confusion to be probative, there must have been a significant opportunity for confusion to occur. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the absence of actual confusion depends upon there being a significant opportunity for actual confusion to have occurred); Red Carpet Corp. v. Johnstown Am. Enter. Inc., 13 Our analysis of the lack of any reported instances of confusion includes DuPont factor 7 (the nature and extent of any confusion) and DuPont factor 8 (the length of time during and conditions under which there has been concurrent use without evidence of actual confusion). 14 Applicant’s Decl. ¶¶1-3 (58 TTABVUE 73-74). Opposition No. 91218230 - 9 - 7 USPQ2d 1404, 1406-1407 (TTAB 1988); Cent. Soya Co., Inc. v. N. Am. Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“[T]he absence of actual confusion over a reasonable period of time might well suggest that the likelihood of confusion is only a remote possibility with little probability of occurring.”). Applicant’s testimony and evidence regarding the extent of his sales, advertising and marketing is not sufficiently complete to allow us to determine whether there has been a reasonable opportunity for confusion to occur. For example, Applicant’s Testimony Declaration Exhibit 1 is “[a] representative sampling of invoices for [his] early and more recent sales to the United States.”15 However, it is not clear whether the invoices show the use of IJOY branded products. With the exception of an invoice dated July 7, 2019 to a company in Billings, Montana, that specifically identified an “IJOY RDTA 5S Tank” under “Product Name,”16 none of the other invoices identified an IJOY product under “Product Name.” In addition, one invoice is dated September 12, 201817 and the other ten invoices have order dates in July 2019. If Exhibit 1 is a “representative sampling of invoices,” Applicant’s sales have largely been limited to a small time frame. Finally, assuming arguendo that the invoices can reasonably be interpreted to identify sales of IJOY branded products, the sales identified in the invoices individually and in the aggregate are de minimis and fail to show significant enough use of the mark to make the absence of actual confusion probative. 15 Applicant’s Decl. ¶4 (58 TTABVUE 74 and 78-94). 16 58 TTABVUE 86. 17 58 TTABVUE 78. Opposition No. 91218230 - 10 - Applicant’s Testimony Declaration Exhibit 2 is a “representative sampling of recent US uses of [Applicant’s] mark.”18 However, Applicant did not testify as to where these “recent US uses” were published or posted, for how long they were published or posted, or how many consumers may have seen the uses. Likewise, with respect to Applicant’s Testimony Declaration Exhibit 3, Applicant’s website, Applicant did not testify how long it has been posted or how many potential consumers have visited the website.19 Applicant’s Testimony Declaration Exhibit 5 is a “[r]epresentative display of advertising and photos of a 2014 US trade show booth.”20 Applicant did not testify as to the name of the trade show, the location of the trade show, whether the trade show was open to the public or limited to people in the trade, the number of attendees, or how many people visited Applicant’s trade show booth. Finally, Applicant’s Testimony Declaration Exhibit 6 consists of screenshots of interactive websites offering Applicant’s products for sale.21 However, Applicant did not testify as to how long the websites have been advertising Applicant’s products for sale, how many people viewed the websites advertising the sale of Applicant’s products, or how many of Applicant’s products the third parties have sold. In addition, three of the websites appear to be foreign-based websites because they are in Chinese. 18 Applicant’s Decl. ¶5 (58 TTABVUE 74 and 96-99). 19 Applicant’s Decl. ¶6 (58 TTABVUE 74 and 101-106). 20 Applicant’s Decl. ¶9 (58 TTABVUE 74 and 112-117). 21 Applicant’s Decl. ¶10 (58 TTABVUE 74 and 119-145). Opposition No. 91218230 - 11 - Based on the record before us, we are unable to make a finding of fact as to whether there has been a reasonable opportunity for confusion to occur. This DuPont factor is neutral. D. The strength of Opposer’s marks. In determining the strength of a mark, we consider both its inherent strength, based on the nature of the mark itself, and its commercial strength, based on marketplace recognition of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”); Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by assessing its inherent strength and its commercial strength); Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:80 (5th ed. 2020) (“The first enquiry focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another’s use.”). Market strength is the extent to which the relevant public recognizes a mark as denoting a single source. Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d at 1899. Opposition No. 91218230 - 12 - First, we analyze the inherent or conceptual strength of Opposer’s marks on the spectrum of distinctiveness. Judge Friendly in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 764 (2d Cir. 1976), formulated four categories of trademarks that lie along a spectrum. When arranged “in an ascending order which roughly reflects their eligibility for trademark status and the degree of protection accorded,” these four categories are generic, merely descriptive, suggestive, and arbitrary or fanciful marks. Id. See also In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing Abercrombie for the four categories of marks); Chippendales, 96 USPQ2d at 1684 (same). Opposer’s mark is NJOY, the phonetic equivalent of “Enjoy,” and calls to mind the word “Enjoy.” The RANDOM HOUSE UNABRIDGED DICTIONARY (2020) defines the word “Enjoy” as a verb with the following meanings: 1. to experience with joy; take pleasure in: He enjoys Chinese food. 2. to have and use with satisfaction; have the benefit of: He enjoys an excellent income from his trust funds. 3. to find or experience pleasure for (oneself): She seems to enjoy herself at everything she does.22 22 Dictionary.com accessed April 10, 2020. 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). THE RANDOM HOUSE UNABRIDGED DICTIONARY defines “joy,” inter alia, as “the emotion of great delight or happiness cause by something exceptionally goods or satisfying; keen pleasure; elation.” Opposition No. 91218230 - 13 - To show that the word “Joy” is a conceptually weak term when used as a part of a mark and entitled to only a narrow scope of protection when used in connection with electronic cigarettes, Applicant introduced ten third-party registrations incorporating the word “Joy” or variations thereof. Third-party registrations are probative to show the sense in which a mark is used in ordinary parlance, similar to a dictionary. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (citing Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976) (even if “there is no evidence of actual use"” of “third-party registrations,” such registrations “may be given some weight to show the meaning of a mark in the same way that dictionaries are used”). Applicant introduced the third-party registrations listed below: •Registration No. 5244529 for the mark JOYEVITA, in standard character form, for, inter alia, electronic cigarettes;23 •Registration No. 5134164 for the mark JOYLUCK, in standard character form, for electronic cigarettes and smokeless cigarette vaporizer pipes;24 •Registration No. 4961324 for the mark ENJOY THE CURRENT, in standard character form, for, inter alia, electronic cigarettes;25 23 58 TTABVUE 10. Since this registration is based on a European Union Registration under Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e), there is no evidence that the mark has been used in commerce. 24 58 TTABVUE 15. 25 58 TTABVUE 18. Opposition No. 91218230 - 14 - •Registration No. 4941227 for the mark JOYWORLD, in standard character form, for, inter alia, electronic cigarettes;26 •Registration No. 4786438 for the mark J JOY FLAVOR and design, reproduced below for, inter alia, electronic cigarettes;27 •Registration No. 4662616 for the mark ENJOYLIFE (stylized) for, inter alia, electric cigarettes;28 •Registration No. 4624440 for the mark SMOKJOY and design for, inter alia, electric cigarettes;29 •Registration No. 3984534 for the mark VINTAGE JOYE, in standard character form, for, inter alia, electronic cigarettes;30 •Registration No. 4286641 for the mark JOYETECH, in standard character form, for, inter alia, electronic cigarettes;31 and 26 58 TTABVUE 20. 27 58 TTABVUE 22. 28 58 TTABVUE 27. 29 58 TTABVUE 38. 30 58 TTABVUE 40. 31 58 TTABVUE 43. Opposition No. 91218230 - 15 - •Registration No. 4409854 for the mark LITEJOY, in standard character form, for, inter alia, electronic cigarettes.32 Applicant also introduced evidence showing the use of many of the marks in those registrations. However, there was no testimony or evidence as to the sales, advertising, or consumer recognition of those marks. The dictionary definitions, third-party registrations, and third-party use show that the mark NJOY is suggestive of a quality, characteristic or function of Opposer’s products because it conveys the purpose or feeling a consumer receives by using Opposer’s products – enjoyment. We now turn to the commercial strength of Opposer’s NJOY marks. In its Notice of Opposition, Opposer alleges that the brand recognition of the NJOY mark is “very strong” and that it “has acquired extensive recognition.”33 In its brief, Opposer argues that NJOY is a famous mark. Here, based on more than a decade’s worth of extensive use, substantial commercial success, and widespread exposure, the NJOY Mark as applied to electronic cigarettes, vaping, and related accessories, is a strong mark and famous within the electronic-cigarette field.34 Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio 32 58 TTABVUE 47. Since this registration is based on a European Union Registration under Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e), there is no evidence that the mark has been used in commerce. 33 Notice of Opposition ¶6 (1 TTABVUE 6-7). 34 Opposer’s Brief, pp. 10-11 (61 TTABVUE 18-19). Opposition No. 91218230 - 16 - Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). We may measure fame indirectly by the volume of sales of and advertising expenditures for the goods and services identified by the marks at issue, “the length of time those indicia of commercial awareness have been evident,” widespread critical assessments and through notice by independent sources of the products identified by the marks, as well as the general reputation of the products and services. Bose Corp. v. QSC Audio Prods. Inc., 63 USPQ2d at 1305-06 and 1309. Because of the extreme deference that we accord a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, Opposer has the duty to prove the fame of its mark clearly. Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)). Finally, in the likelihood of confusion analysis, “fame ‘varies along a spectrum from very strong to very weak.’” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)). Opposer introduced the testimony and evidence discussed below to prove that its NJOY mark is famous: Opposition No. 91218230 - 17 - •Opposer, through its predecessor-in-interest, “is a pioneer in electronic vaping devices” and “was one of the first companies to sell e-cigarettes.”35 •Since 2007, Opposer has continuously used the NJOY mark in commerce as a trademark for electronic cigarettes, electronic vaporizers, e-liquids, compatible pods, and charging accessories.36 •Opposer is one of the largest independent vaping companies in the U.S. and “is currently ranked third among all e-cigarette brands.”37 •Opposer “was valued at $1.2 billion in 2016 landing it as number 109 out of 147 on Fortune’s Unicorn List in 2016, which includes private companies valued at $1 billion or more.”38 •“Since 2007, [Opposer] has sold hundreds of millions of dollars worth of products in the U.S. under the NJOY Mark, with significant sales each year from 2007 to the present.”39 35 Weiss Testimony Decl. ¶5 (51 TTABVUE 3). 36 Id. at ¶12 (51 TTABVUE 7). 37 Id. at ¶¶6 and 7 (51 TTABVUE 5-6). Opposer cites Exhibit 2 to support the claim that NJOY is the third ranked e-cigarette brand. (51 TTABVUE 35-51). Exhibit 2 is a Wells Fargo Securities Equity Research Report. This report ranks Opposer sixth behind JUUL, VUSE, MARKTEN, BLU and LOGIC. (51 TTABVUE 44). Although the report notes that the Nielsen data on which the report relies excluded multiple NJOY products, id., the basis for Opposer’s claim that it is third among e-cigarette brands is not clear. In addition, Opposer did not define “independent vaping company.” However, a November 18, 2013 article in MMR reported that Opposer is “completely independent from the tobacco industry.” (50 TTABVUE 226). Accordingly, we construe Opposer as being an entity separate and apart from a tobacco company. 38 Id. at ¶9 (51 TTABVUE 6). See also “NJOY Makes Fortune’s ‘Unicorn List’ Of Tech Startups,” (January 29, 2016), Convenience Store News website (csnews.com) (50 TTABVUE 56). 39 Id. at ¶17 (51 TTABVUE 15). Opposition No. 91218230 - 18 - •Opposer “has invested a substantial amount of time, effort, and money in advertising, marketing, and promoting its products under the NJOY Mark since 2007, particularly at the point of sale at which NJOY Products have been sold. Previously, [Opposer] spent tens of millions of dollars on advertising, promoting, and marketing products under the NJOY Mark in the U.S., with significant expenditures each year from 2007 to 2017.”40 •Opposer has advertised its NJOY products on television, including two commercials that aired during the 2013 and 2014 Super Bowls in the Miami, Denver, San Antonio and Nashville markets.41 •Since 2012, Opposer has advertised its NJOY products in magazines such as Rolling Stone, Progressive Grocer, and NACS.42 •Opposer has received the Tobacco Trailblazer Award from the Grocery Headquarter Magazine (2015),43 the Bestmodo from Gizmodo (2012), and Breakthrough Brand by Electronic Cigarettes Review (2009).44 40 Id. at ¶18 (51 TTABVUE 15). 41 Id. at ¶19 (51 TTABVUE 15). See also “The Super Bowl Ad You Won’t See This Year,” (January 23, 2014), Time Magazine (business.time.com) (50 TTABVUE 207), using the NJOY Super Bowl advertisement to illustrate how it is illegal to advertise cigarettes on television but that there is no prohibition on advertising electronic cigarettes. 42 Id. at ¶20 (51 TTABVUE 17). 43 See “Smokin’ Hot,” (August 1, 2015), Winsight Grocery Business website (winsightgrocerybusiness.com) announcing the Grocery Headquarter’s Trailblazer Awards honoring innovative companies in the tobacco category including Opposer, blu eCigs, Cheyenne International, and others. (50 TTABVUE 74-77). Since Opposer is one of multiple electronic cigarette companies that Winsight Grocery Business honored, the award does not appear to distinguish Opposer from competitors. 44 Id. at ¶11 (51 TTABVUE 6). Opposition No. 91218230 - 19 - •Opposer sells its NJOY products in brick-and-mortar stores in all 50 states, including leading retail chains such as Walgreens and Wawa, since at least as early as 2009.45 •Opposer and its NJOY products have been “featured” and identified in numerous print and online newspapers and magazines, including Forbes, New York Times, Huffington Post, Time, Fortune, and Tech Crunch.46 However, the news articles provided by Opposer are not particularly probative. The articles do not feature Opposer or its NJOY branded products, but refer to Opposer or its products in passing. For example, • The New York Times (April 25, 2014) “For E-Cigarettes, the Regulatory Battle Now Begins” WASHINGTON – At last, Washington is moving to police the multibillion-dollar business of electronic cigarettes. … 47 * * * Craig Weiss, the chief executive of NJOY, a large e- cigarette company, said that his company was considering whether to apply for approval to make such a claim [e- cigarettes are less dangerous than ordinary cigarettes], but that there was confusion about what it might entail.”48 •Convenience Store News (April 2014) “Powering Up” 45 Id. at ¶15 (51 TTABVUE 13). 46 Id. at ¶24 (51 TTABVUE 24). 47 50 TTABVUE 136. 48 50 TTABVUE 137. Opposition No. 91218230 - 20 - County Fair adds more brands as its e-cigarette business grows. * * * The company [County Fair] dipped its toe into the category in early 2012, adding the NJOY brand as a test in seven stores. That November, County Fair added e-cigarettes in all of its stores and has never looked back.49 •TheStreet.com (February 20, 2014) “E-Cigarettes Are Smoking the Competition: Part 2” Yesterday, I wrote about electronic cigarettes, commonly called e-cigarettes, which have grown in sales from virtually zero five years ago [to] $1.5 billion in 2013. This growth will likely continue, overtaking traditional cigarettes sales within the next decade. Today, let’s consider how investors can profit from this new market sector. * * * Limited shelf space at retailers creates another important market inefficiency, as the FDA may ban online sales of e- cigarettes. The access to retail outlets will be one of the key determinants of survival. The large tobacco companies will gain access, given their relationships via traditional tobacco. But for smaller companies, this will be important to monitor. Currently, Lorillard’s Blu has the largest retail presence in over 136,000 retail outlets. NJOY is in over 80,000 retail outlets. Vapor’s (VPCO:OTC) products are available in over 60,000 retail outlets; Mistic e-cigarettes are sold in over 40,000 stores. The recent merger between Victory Electronic Cigarettes (ECIG:OTC) and Fin increased their 49 50 TTABVUE 169. Opposition No. 91218230 - 21 - combined retail presence to over 50,000 stores. Logic is in 10,000 retail outlets.50 In addition, many of the articles are from wire services and Opposer did not testify or introduce other evidence regarding publications or websites that have published or posted the articles to demonstrate the extent of public exposure. Based on the foregoing, we find that Opposer’s NJOY marks are commercially strong, and fall on the stronger side of the spectrum from very strong to very weak. See Joseph Phelps Vineyards, 122 USPQ2d at 1734. Considering the record as a whole (i.e., the NJOY marks are suggestive but are commercially strong), Opposer’s marks are entitled to a broader scope of protection than is normally accorded to an inherently distinctive suggestive mark because of their commercial strength. See Cadence Indus. Corp. v. Kerr, 225 USPQ 331, 334 (TTAB 1985) (with sufficient sales, advertising and promotion thereof, a suggestive mark may well be categorized, despite its suggestive nature, as a strong mark). E. 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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 50 50 TTABVUE 190-191. Opposition No. 91218230 - 22 - 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 goods are in part legally are 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 goods. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721; 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, 127 USPQ2d at 1801 (quoting Coach Servs., 101 USPQ2d at 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); San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). 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., Opposition No. 91218230 - 23 - Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because the goods at issue are electronic cigarettes, the average customer is an ordinary consumer who uses electronic or electric cigarettes. Applicant is seeking to register the mark and Opposer’s marks are NJOY, in standard character form. Marks presented in standard characters are not limited to any particular depiction. The rights associated with a mark in standard characters reside in the wording, and not in any particular display. Thus, Opposer is entitled to depict its marks in any manner, regardless of the font, style, size, or color, and Opposer may display its marks in a manner similar to Applicant’s mark. See Viterra, 101 USPQ2d at 1909-11; Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (rejecting argument that for purposes of determining whether two marks are similar, a mark in a typed drawing (equivalent to modern standard character format) is distinct from such mark in a logo format; “[b]y presenting its mark in a typed drawing, a difference cannot legally be asserted by that party.” (emphasis in original)). Thus, Opposer could display its NJOY marks as shown below: NJOY Opposition No. 91218230 - 24 - Applicant’s mark and Opposer’s NJOY marks are similar because they are four letters long and both contain the word “Joy.” Thus, the only difference between the marks is that Applicant substituted the letter “I” for the letter “N.” In this regard, Applicant’s IJOY (stylized) mark is closer to Opposer’s NJOY marks than the marks in the third-party registrations and uses discussed above because the marks of the parties consist of the word “Joy” preceded by either the letter “I” or the letter “N.” See In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018) (none of the third-party marks are as similar to the mark in the cited registration as Applicant’s mark) (citing Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 223 USPQ 1281, 1284-85 (Fed. Cir. 1984) (“Applicant introduced evidence of eight third- party registrations for tea which contain the word ‘SPICE’, five of which are shown to be in use. None of these marks has a ‘SPICE (place)’ format or conveys a commercial impression similar to that projected by the SPICE ISLANDS mark, and these third-party registrations are of significantly greater difference from SPICE VALLEY and SPICE ISLANDS than either of these two marks from each other.”)). Accordingly, we find that the marks are similar in appearance and sound. Applicant intends for its mark to engender the commercial impression of “Joy” inasmuch as Applicant testified “[t]he meaning of Applicant’s mark to most US customers will be perceived as ‘personal joy.’”51 Thus, IJOY and NJOY have similar 51 Applicant’s Testimony Decl. ¶11 (58 TTABVUE 75). Opposition No. 91218230 - 25 - meanings and engender similar commercial impressions (i.e., personal joy vs. enjoy).52 As noted above, where the goods are in part identical, a lesser degree of similarity between the marks is required for confusion to be likely, and the difference in the first letter of a mark may not be sufficient to distinguish the marks. See, e.g., Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1741 (TTAB 2014) (AKEA is similar to IKEA); Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393, 1396 (TTAB 2007) (finding VTUNES.NET and ITUNES similar despite the difference in the first letter of the parties’ mark—“v” and “i”); Interlego AG v. Abrams/Gentile Entm’t Inc., 63 USPQ2d 1862, 1863 (TTAB 2002) (“Obviously, the marks LEGO and MEGO are extremely similar in that they differ simply by one letter.”); U.S. Mineral Prods. Co. v. GAF Corp., 197 USPQ 301, 306 (TTAB 1977) (“‘AFCO’ and ‘CAFCO,’ which differ only as to the letter ‘C’ in USM’s mark, are substantially similar in appearance and sound.”). Cf. Weiss Associates, Inc. v. HRL Associates, 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990) (“It is especially hard to distinguish between TMS and TMM when the marks only differ by the last letter.”). We find that this principle applies here. We find that the marks are similar in their entireties in terms of appearance, sound, connotation and commercial impression. 52 Applicant contends that enjoyment and personal joy are two different commercial impressions. Applicant’s Brief, p. 6 (63 TTABVUE 7). Nevertheless, they are similar. Opposition No. 91218230 - 26 - F. Conclusion Because the marks are similar, Opposer’s mark is commercially strong and is on the strong side of the spectrum of strength and is thus entitled to a broader scope of protection than a mark with average strength, the goods are in part identical and there is a presumption that the parties offer their goods in the same channels of trade to the same classes of consumers, we find that Applicant’s mark IJOY (stylized) for, inter alia, electronic cigarettes is likely to cause confusion with Opposer’s registered NJOY marks for, inter alia, electronic cigarettes. Decision: The opposition is sustained.

NJOY, LLC v. Wang XI Zhi