87801131 (T.T.A.B. Sep. 17, 2020)

Rodeowave Entertainment, LLC

Trademark Trial and Appeal BoardSep 17, 2020

87801131 (T.T.A.B. Sep. 17, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: September 17, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Rodeowave Entertainment, LLC _____ Serial No. 87801131 _____ Amy J. Everhart of Everhart Law Firm, PLC, for Rodeowave Entertainment, LLC. Leslee A. Friedman, Trademark Examining Attorney, Law Office 120, David Miller, Managing Attorney. _____ Before Thurmon, Deputy Chief Administrative Trademark Judge, Lykos and English, Administrative Trademark Judges. Opinion by English, Administrative Trademark Judge: Rodeowave Entertainment, LLC (“Applicant”) seeks registration on the Principal Register of the standard character mark JUST ANOTHER DAY IN PARADISE for “shirts” in International Class 25.1 1 Application Serial No. 87801131; filed February 16, 2018 based on a claim of use under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). After the Office refused registration on the ground that Applicant’s mark was merely an ornamental feature of Applicant’s clothing under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051-1052, 1127, Applicant amended its filing basis to claim a bona fide intent to use the mark under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). June 1, 2018 Office Action at TSDR 4; December 3, 2018 Office Action Response at TSDR 4 and 7. The amendment to the filing basis obviated the Serial No. 87801131 - 2 - The Trademark 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 standard character mark JUST ANOTHER DAY on the Principal Register for “caps; hats; jerseys; shirts; shorts; socks; sweat pants; sweatshirts; t-shirts; tank tops; hooded sweatshirts.”2 The Examining Attorney also refused registration under Sections 1, 2, and 45 of the Trademark Act U.S.C. §§ 1051-52 and 1127, on the ground that the applied-for-mark fails to function as a trademark because it is a widely used commonplace message or expression. When the refusals were made final, Applicant appealed and requested reconsideration. The Examining Attorney denied Applicant’s request for reconsideration, and the appeal was resumed. We affirm the refusal to register under Section 2(d). We do not reach the failure to function refusal under Sections 1, 2, and 45 of the Trademark Act. See, e.g., In re Brack, 114 USPQ2d 1338, 1343 (TTAB 2015). I. Likelihood of Confusion Our determination under Section 2(d) is based on 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) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We consider each DuPont factor for which there is evidence or argument. See, ornamental refusal so that issue is not before us. December 31, 2018 Final Office Action at TSDR 2. 2 Registration No. 5157732; issued March 7, 2017. “T-shirts” is listed twice in the identification of goods. Serial No. 87801131 - 3 - e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); 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.”). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. 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)). We discuss the relevant DuPont factors below. A. Similarity or Dissimilarity of the Goods, Trade Channels, and Classes of Consumers Applicant does not dispute that both the application and cited registration cover “shirts.” Because the goods in Applicant’s application and the cited registration are identical in part and because there are no restrictions or limitations in the respective identifications, we must presume that those particular goods travel through the same Serial No. 87801131 - 4 - channels of trade to the same classes of purchasers. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); In re Viterra Inc., 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); 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). Accordingly, the second and third DuPont factors weigh heavily in favor of finding a likelihood of confusion. B. Strength of the Cited Mark Applicant argues that “the registered mark JUST ANOTHER DAY is commonly used by third-parties in connection with clothing and shirts … suggest[ing] the registered mark is relatively weak” and entitled to a narrow scope of protection.3 To support its assertion, Applicant submitted purported evidence of third-party trademark use of the phrase JUST ANOTHER DAY, and iterations thereof, in connection with shirts. Examples include:4 3 Applicant’s Brief, 8 TTABVUE 9-10. During prosecution, the Examining Attorney refused to consider this argument on the ground that it was a collateral attack against the validity of the cited registration. July 19, 2019 Denial of Request for Reconsideration at TSDR2. This argument, however, concerns the strength of the cited mark, which is a factor to consider in a likelihood of confusion analysis. 4 December 3, 2018 Office Action Response at 95-98; Request for Reconsideration at TSDR 17-24. Some of the noted examples are from the Examining Attorney’s evidence. June 1, 2018 Office Action at TSDR 10; July 19, 2019 Request for Reconsideration Denial at TSDR 13-18. Serial No. 87801131 - 5 - Serial No. 87801131 - 6 - (Redbubble) (Zazzle.com) (Zazzel.com) (I Love Apparel) (Paradise Shirts) (Cafe Press) (Chummy Tees) (TeePublic) Serial No. 87801131 - 7 - (Redbubble) (Angry Stick Figure (Spreadshirt.com) Computer Tees) (Zazzle.com) (Zazzle.com) (Zazzel.com) (Cafe Press) (Chummy Tees) (Nickelodeon) Serial No. 87801131 - 8 - Under the sixth DuPont factor, evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection. Most of the third-party examples of record show the phrase JUST ANOTHER DAY and variations thereof, as ornamental use rather than use in a manner that would be perceived as indicating source because the wording is emblazoned on the front of a shirt. The number of ornamental uses of the cited mark, and variations thereof, on the same goods as those covered by the cited registration suggests that consumers may be less likely to perceive JUST ANOTHER DAY as a mark therefore diluting the source identifying significance of the cited mark.5 See, e.g., D.C. One Wholesaler, Inc. v. Chien, 120 USQ2d 1710, 1716 (TTAB 2016) (“The widespread ornamental use of the phrase by third parties ‘is part of the environment in which the [mark] is perceived by the public and ... may influence how the [mark] is perceived.”’) (quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013) and In re Tilcon Warren Inc., 221 USPQ 86, 88 (TTAB 1984)). Given the number of third- party uses, including the ornamental uses, consumers also may be conditioned to look for minor differences in marks consisting of or incorporating JUST ANOTHER DAY for shirts. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1406 (TTAB 2018) (including consideration of third-party ornamental use in assessing the strength of the cited mark I LUV U for jewelry and finding that “consumers are 5 We are not making any determination as to the validity of the cited mark. The cited mark is registered on the Principal Register without a claim of acquired distinctiveness and is entitled to a presumption of validity that cannot be challenged through this ex parte proceeding. 15 U.S.C. § 1057(b). But the third-party ornamental use is relevant to how the cited mark is likely to be perceived, and therefore, this evidence is relevant to the likelihood of confusion analysis. Serial No. 87801131 - 9 - conditioned to look for differences among trademarks consisting of or including I LOVE YOU for jewelry”) (citing Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015)). For these reasons, we find that the cited mark is commercially weak. This weighs against a likelihood of confusion. C. Similarity or Dissimilarity of the Marks We next consider the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); 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) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). The issue is not whether the marks can be distinguished when subjected to a side- by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression 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). The focus is on the recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks. 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); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, Serial No. 87801131 - 10 - 108 (TTAB 1975). We do not predicate our analysis on a dissection of the involved marks; we consider the marks in their entireties. Stone Lion, 110 USPQ2d at 1160; 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.”). There is, however, “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 Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); See also, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). The marks here are both phrases that are overall more similar than dissimilar, particularly with respect to meaning and commercial impression. The cited mark JUST ANOTHER DAY connotes another ordinary day in a series of similar days. Applicant’s mark, by adding the wording “IN PARADISE,” plays off this concept connoting another day in a series of blissful days.6 Applicant has acknowledged that the marks have reciprocal meanings, asserting that “[a]dding the phrase IN PARADISE renders the entire phrase ironic, matching an ordinary day with a blissful one in a play on words.”7 Accordingly, the marks share a similar overall commercial impression connoting the sameness or uniformity of days, whether the days are good, 6 The record includes evidence that Applicant’s mark also may be perceived sarcastically to refer to another day in a series of miserable days. July 19, 2019 Denial of Request for Reconsideration at TSDR 4-7 and 9-10; see also December 31, 2018 Final Office Action at TSDR 5, 8 and 18-20. 7 Applicant’s Brief, 8 TTABVUE 6. Serial No. 87801131 - 11 - bad or ordinary. It is this general concept that is likely to make an impression on and be remembered by the average consumer of “shirts.” See, e.g., Downtowner Corp. v. Uptowner Inns, Inc., 178 USPQ 105, 109 (TTAB 1973) (considering the “associative nature of the terms ‘downtown’ and ‘uptown’ and holding UPTOWNER for motor inn and restaurant services likely to be confused with DOWNTOWNER for the same services); Procter & Gamble Co. v. Conway, 419 F.2d 1332, 164 USPQ 301, 304 (CCPA 1970) (MISTER STAIN for a stain removing compound and MISTER CLEAN for cleaners, cleansers and detergents conveyed the same idea and stimulated the same mental reaction). Indeed, consumers may perceive Applicant’s mark as a variant of the cited mark. See, e.g., Schieffelin & Co. v. Molson Cos., Ltd., 9 USPQ2d 2069, 2073 (TTAB 1989) (“Those consumers who do recognize the differences in the marks may believe that applicant’s mark is a variation of opposer’s mark that opposer has adopted for use on a different product.”); cf. In re Toshiba Med. Sys. Corp., 91 USPQ2d at 1271 (VANTAGE TITAN “more likely to be considered another product from the previously anonymous source of TITAN medical diagnostic apparatus, namely, medical ultrasound devices”). In an attempt to distinguish the marks, Applicant asserts that it “holds brands of renowned country artist Phil Vassar” and that its applied-for-mark is the title of a number-one song by Phil Vassar that “has risen to the level o f an anthem for Mr. Vassar’s fans” and has “come to symbolize to country music fans the joy in the ‘little things’ that comprise our every day.”8 Applicant, however, has not demonstrated that 8 Applicant’s Brief, 8 TTABVUE 2 and 6-7. Serial No. 87801131 - 12 - it has any relationship with Vassar.9 In re OEP Enters., 2019 USPQ2d 309323, *14 (TTAB 2019) (Applicant “made no showing” to support certain arguments); see also Cai v. Diamond Hong, 127 USPQ2d at 1799 (counsel’s arguments are no substitute for evidence). Moreover, the goods in the involved application are not limited to shirts for fans of country music or Vassar. Accordingly, there is no basis for finding that the mark conveys the meaning of Vassar’s song. Applicant also argues that “the likelihood of confusion is negated because the phrase is used in association with Phil Vassar and his well-known anthem [‘Just Another Day in Paradise’]” and “proof of use may show the mark in close proximity to the mark PHIL VASSAR.”10 The evidence does not support Applicant’s position. The record includes some articles describing Vassar as a singer/songwriter of a hit song titled “Just Another Day in Paradise.”11 But the only evidence of Applicant’s use of the proposed mark for “shirts” are the specimens Applicant submitted with its application. The specimens are website printouts showing auction packages consisting of a t-shirt displaying the applied-for-mark signed by Vassar, a signed photo of Vassar, and a signed Vassar CD.12 These few examples simply are not a 9 The record includes two declarations from counsel, but counsel attests only that the exhibits attached to the Office action responses are “true and correct” copies of Internet printouts. December 3, 2018 Office Action Response at TSDR 13; July 1, 2019 Request for Reconsideration at TSDR 12. 10 Applicant’s Brief, 8 TTABVUE 8. 11 December 3, 2018 Office Action Response at TSDR 18-36, 69-72, 77-78, 83-84, 86-89, and 91-92. 12 February 16, 2018 specimen. Serial No. 87801131 - 13 - sufficient basis for finding that consumers would associate shirts bearing JUST ANOTHER DAY IN PARADISE with Vassar or his song. To the extent Applicant is arguing that confusion will be avoided because the applied-for-mark will be displayed in connection with the mark PHIL VASSAR, such argument is unavailing. The applied-for-mark does not include the name PHIL VASSAR, and so if registered, Applicant would be free to use the applied-for-mark on its own without the name PHIL VASSAR. See In re i.am.symbolic, 123 USPQ2d at 1749 (“To the extent that Symbolic is advocating that we consider another mark, will.i.am, that is not part of the applied-for mark in analyzing the similarity of the marks, we decline to do so. The correct inquiry requires comparison of the applied-for mark, which only includes the words ‘I AM,’ to the registrants’ marks.”); SCM Corp. v. Royal McBee Corp., 395 F.2d 1018, 158 USPQ 36, 37 n.4 (CCPA 1968) (“Certain exhibits reflect the parties’ current practice of associating their house marks ‘SCM’ and ‘Royal’ with ‘ELECTRA’ and ‘ELECTRESS’, respectively. However, our concern here, of course, is whether ‘ELECTRA’, the mark actually registered, and ‘ELECTRESS’, the mark for which registration is sought, are confusingly similar when applied to the instant goods.”); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (“We must compare the marks as they appear in the drawings, and not on any [actual use] that may have additional wording or information.”). Finally, the cases Applicant cites to support that the marks have different commercial impressions are inapposite because in those cases the differences in the Serial No. 87801131 - 14 - goods and services resulted in the marks’ different commercial impressions.13 See, e.g. Coach Servs., Inc, 101 USPQ2d at 1721-22 (finding the mark COACH for educational materials had a different connotation from COACH for fashion accessories); Blue Man Prods. Inc. v. Tarmann, 75 USPQ2d 1811, 1820-21 (TTAB 2005) (BLUE MAN GROUP for entertainment services and musical sound recordings had the connotation of the appearance of the opposer’s blue-headed performers whereas applicant’s BLUEMAN mark for cigarettes and tobacco had “no such connotation”); Here, the goods are the same. For all of the foregoing reasons, we find that the marks overall are similar in appearance, sound, meaning and commercial impression. When we take into account that the degree of similarity necessary to support a likelihood of confusion lessens when goods are identical in part, as is the case here, we find that the first DuPont factor tips in favor of finding a likelihood of confusion. See Coach Servs., Inc., 101 USPQ2d at 1722; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). D. Conclusion Registrant’s and Applicant’s goods are identical and the trade channels and classes of consumers overlap. The marks also are overall similar in appearance, sound, meaning, and commercial impression. Accordingly, even though the evidence supports that the cited mark is rather weak, we find that Applicant’s mark is likely to be confused with the cited mark. 13 Applicant’s Brief, 8 TTABVUE 5-6 and 8. Serial No. 87801131 - 15 - Decision: The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act is affirmed.