OurPet’s CompanyDownload PDFTrademark Trial and Appeal BoardApr 28, 2016No. 86273102 (T.T.A.B. Apr. 28, 2016) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: April 28, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re OurPet’s Company _____ Serial No. 86273102 _____ John D. Gugliotta of Law Offices of John D. Gugliotta, P.E., for OurPet’s Company. Jason F. Turner, Trademark Examining Attorney, Law Office 108, Andrew Lawrence, Managing Attorney. _____ Before Taylor, Hightower, and Pologeorgis, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: OurPet’s Company (“Applicant”) seeks registration on the Principal Register of the mark REALBIRDS (in standard characters) for “Cat toys” in International Class 28.1 The Trademark Examining Attorney has refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as 1 Application Serial No. 86273102 was filed on May 6, 2014 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention to use the mark in commerce. Serial No. 86273102 - 2 - applied to the goods identified in the application, so resembles the mark REAL BIRD BUMPER (in standard characters), previously registered on the Principal Register for “Dog toys” in International Class 28,2 as to be likely to cause confusion, to cause mistake, or to deceive.3 After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of 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, however, two key considerations are the similarities between the marks and the similarities between the goods. See 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.”). We first address the du Pont likelihood of confusion factor focusing on “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot 2 Registration No. 3943641, issued April 12, 2011. 3 Registration also was refused pursuant to Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), on the ground that Applicant’s mark is merely descriptive of the identified goods, but the Examining Attorney withdrew that refusal in his brief. 6 TTABVUE 3. Serial No. 86273102 - 3 - Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “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.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted). Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, our 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 Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); 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.”). On the other hand, 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 the ultimate conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data, 224 USPQ at 751. Applicant’s mark is REALBIRDS, and the cited mark is REAL BIRD BUMPER. Applicant’s mark is easily recognized as a concatenation of the words REAL and BIRDS. Thus, Applicant’s mark in its entirety is the plural form of the first two words in the cited mark, REAL BIRD. See, e.g., Coca-Cola Bottling Co. of Memphis, Tenn., Serial No. 86273102 - 4 - Inc. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL LANCER for club soda, quinine water and ginger ale likely to cause confusion with BENGAL for gin); In re El Torito Rests. Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (MACHO COMBOS, with “combos” disclaimed, likely to cause confusion with MACHO for restaurant entrees); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY DRUM for hairdressing products likely to cause confusion with EBONY for cosmetics). The fact that REAL BIRD is the first phrase in the cited mark further enhances the similarity between the marks. See, e.g., Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (stating that consumers will first notice the identical lead word on encountering the marks); Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (stating that “it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). Compared in their entireties, the marks are visually and aurally similar due to the inclusion of REAL BIRD in both. The connotation and commercial impression of the two marks also are highly similar. We find that consumers are likely to view REALBIRDS as a variation of the cited mark REAL BIRD BUMPER. Therefore, we find Applicant’s mark, considered in its entirety, to be highly similar to the cited mark. The first du Pont factor thus supports a finding that confusion is likely. Serial No. 86273102 - 5 - We next consider the second du Pont factor, the similarity of the goods. Applicant’s goods are cat toys. Registrant’s goods are dog toys. We are mindful that the test is not whether consumers would be likely to confuse these goods, but rather whether they would be likely to be confused as to their source. In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012). Therefore, to support a finding of likelihood of confusion, it is not necessary that the goods be identical or even competitive. It is sufficient that the goods are related in some manner, or that the circumstances surrounding their marketing are such that they would be encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief that they originate from the same source or that there is an association or connection between the sources of the goods. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). We must look to the goods as identified in the involved application and cited registration, not to 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). Because there are no limitations as to channels of trade or classes of purchasers in the description of goods in either the cited registration or the application, moreover, we must presume that the identified goods move in all channels of trade normal for such goods and are available to all potential classes of ordinary consumers. See Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Serial No. 86273102 - 6 - The Examining Attorney made of record printouts of pages from Applicant’s website indicating that Applicant itself offers both cat toys and dog toys.4 In addition, the Examining Attorney introduced printouts from two third-party websites offering toys for both cats and dogs under the same mark.5 This evidence demonstrates that cat toys and dog toys may emanate from the same sources under the same marks. The Examining Attorney also made of record 22 existing third-party, use-based trademark registrations with identifications encompassing both cat toys and dog toys.6 These registrations have probative value to the extent they serve to suggest that the identified goods are of a kind which are produced or marketed by a single source under a single mark. See In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). These registrations support the conclusion that the goods are related. See In re C. H. Hanson Co., 116 USPQ2d 1351, 1356 (TTAB 2015). In our likelihood of confusion analysis, these findings under the second du Pont factor strongly support a finding that confusion is likely. In its appeal brief, Applicant asserts arguments under each of the 13 du Pont factors. We have considered all of these arguments, including those not specifically addressed herein, but find them unpersuasive, particularly because many rely on 4 August 26, 2014 Office Action at 62. 5 September 8, 2015 Final Office Action at 53-56 (dog and cat toys offered under the marks KONG, Petstages, Petlinks, and Leaps & Bounds on petco.com website), 57-58 (dog and cat toys offered under the Toys “R” Us mark on petsmart.com website). 6 August 26, 2014 Office Action at 4-9, 12-52, 56-61; January 22, 2015 Office Action at 19-21, 46-51; September 8, 2015 Final Office Action at 2-3, 8-10, 13-15, 50-52. Most of these registrations were unnecessarily submitted multiple times. Serial No. 86273102 - 7 - evidence that is not of record.7 We observe only that Applicant’s assertion of the absence of actual confusion carries little weight, especially in an ex parte proceeding. See, e.g., In re Majestic Distilling, 65 USPQ2d at 1205; In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001). In sum, we have found that the marks in their entireties are highly similar and that the goods are related. We find that Applicant’s mark is likely to cause confusion with the mark in cited Registration No. 3943641 when used in association with the identified goods. Decision: The refusal to register Applicant’s mark REALBIRDS on the basis of Registration No. 3943641 is affirmed. 7 For example, Applicant relies in its brief on portions of the file history of the cited registration, but did not submit the cited evidence. 4 TTABVUE 3, 9. The file of a cited registration is not automatically of record, and it is well-established that the Board does not take judicial notice of records residing in the Patent and Trademark Office (PTO). See, e.g., In re Sela Prods., LLC, 107 USPQ2d 1580, 1583 (TTAB 2013); In re Jonathan Drew Inc., 97 USPQ2d 1640, 1644 n.11 (TTAB 2011); Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 1208.02 (2015). Applicant also included links to Internet evidence. 4 TTABVUE 5, 10-11 (Exhibits A-B). This was insufficient to make the referenced web pages of record. See, e.g., In re HSB Solomon Assocs. LLC, 102 USPQ2d 1269, 1274 (TTAB 2012); In re Planalytics Inc., 70 USPQ2d 1453, 1457 (TTAB 2004) (“A mere reference to a website does not make the information of record. In order to review the facts in this case, there should be evidence in the record.”). Finally, Applicant referenced results of searches of PTO databases, but did not submit any of the registrations identified in those searches. 4 TTABVUE 7, 9, 12 (Exhibit C). As the Examining Attorney noted in his brief, see 6 TTABVUE 10, such search results are not probative. In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002). In any event, evidence submitted for the first time with an appeal brief is untimely. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“The record in the application should be complete prior to the filing of an appeal. The Trademark Trial and Appeal Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed.”). Copy with citationCopy as parenthetical citation