Scandinavian Frames ABDownload PDFTrademark Trial and Appeal BoardApr 9, 2019EX (T.T.A.B. Apr. 9, 2019) Copy Citation Mailed: April 9, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— In re Scandinavian Frames AB ———— Serial No. 87926087 ———— John Alumit of Alumit IP, for Scandinavian Frames AB. Sahar Nasserghodsi, Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney. ———— Before Taylor, Ritchie, and Pologeorgis, Administrative Trademark Judges. Opinion by Pologeorgis, Administrative Trademark Judge: Scandinavian Frames AB (“Applicant”) seeks registration on the Principal Register of the mark SCANDINAVIAN FRAMES and design (SCANDINAVIAN FRAMES disclaimed), as displayed below, for “Eyeglasses; Eyewear; Goggles for sports; Sports glasses; Sunglasses; Eye glass cases; Eyeglass frames; Eyewear THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 87926087 2 accessories, namely, straps, neck cords and head straps which restrain eyewear from movement on a wearer; Optical frames; Spectacle frames” in International Class 9.1 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the mark SCANDINAVIAN EYEWEAR (in standard characters; EYEWEAR disclaimed) registered on the Principal Register under Section 2(f) of the Trademark, 15 U.S.C. § 1052(f), for “Spectacle frames, spectacles, sunglasses and fitted cases for spectacles” in International Class 9.2 When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal resumed. We affirm the refusal to register.3 1 Application Serial No. 87926087, filed on May 17, 2018, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a) (based on first use dates of 1999) and under Section 44(d) of the Trademark Act, 15 U.S.C. § 1126(d) (based on a Swedish application filed on May 8, 2018). The description of the mark reads as follows: “The mark consists of two circles, and below, the wording SCANDINAVIAN FRAMES.” Color is not claimed as a feature of the mark. 2 Registration No. 4111591; issued on March 13, 2012; Section 8 Affidavit accepted. 3 The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations refer to the docket and electronic file database for the involved application. All citations to the TSDR database are to the downloadable .PDF version of the documents. Serial No. 87926087 3 I. Likelihood of Confusion 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 or services. 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.”). A. Similarity of the Goods We initially turn to the comparison of the goods under the second du Pont factor. In making our determination regarding the relatedness of the goods, we must look to the goods as identified in Applicant’s application and the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.”)); see also In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Serial No. 87926087 4 Applicant’s identified goods are “Eyeglasses; Eyewear; Goggles for sports; Sports glasses; Sunglasses; Eye glass cases; Eyeglass frames; Eyewear accessories, namely, straps, neck cords and head straps which restrain eyewear from movement on a wearer; Optical frames; Spectacle frames.” The goods identified in the cited registration are “Spectacle frames, spectacles, sunglasses and fitted cases for spectacles.” Applicant’s identified goods and those set forth in the cited registration are identical in-part inasmuch as they both include “sunglasses and spectacle frames.” Furthermore, Applicant’s “eyeglasses” and Registrant’s “spectacles” are effectively the identical goods since these terms are synonyms for the same product.4 Accordingly, these particular goods are also identical in-part. A likelihood of confusion may be found with respect to a particular class in an application based on any product within the identification of goods for that class. See In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)). Additionally, the Examining Attorney submitted Internet evidence consisting of screenshots of third-party websites showing that a single entity offers both Applicant’s eyewear accessories, namely, straps, neck cords and head straps which restrain eyewear from movement on a wearer and Registrant’s spectacles and sunglasses under the same mark.5 As example: 4 We take judicial notice of the dictionary definition of the term “spectacles” which is defined as “eyeglasses, especially with pieces passing over or around the ears for holding them in place.” See www.dictionary.com based on the Random House Unabridged Dictionary (2019). 5 September 10, 2018 Office Action, TSDR pp. 13-22. Serial No. 87926087 5 • “Corinne McCormack” offers eyeglasses as well as eye wear accessories, such as eyeglass straps for retaining eyeglasses from movement on a wearer, under the same mark; • “REI” shows that sunglasses and eyewear straps for retaining eyewear from movement on a wearer; and • “Kate Spade” offers sunglasses as well as sunglass straps for retaining sunglasses from movement. This Internet evidence demonstrates that third-parties manufacture and sell both eyewear accessories, namely, straps, neck cords and head straps which restrain eyewear from movement on a wearer and sunglasses and spectacles under the same mark. Because (1) both Applicant’s and Registrant’s identifications include the identical goods, namely, “sunglasses and spectacle frames,” (2) Applicant’s “eyeglasses” are effectively identical to Registrant’s “spectacles” and therefore these particular goods are legally identical in-part, and (3) the Internet evidence of record demonstrates that Applicant’s eyewear accessories are related to Registrant’s sunglasses and spectacles because these goods are commonly offered under the same mark, we find that the second du Pont factor regarding the similarity of the respective goods strongly favors a finding of likelihood of confusion.6 B. Similarity of Trade Channels and Classes of Purchasers Next we consider established, likely-to-continue channels of trade, the third du Pont factor. Because the identifications of the goods are legally identical in-part and 6 Applicant does not contest the Examining Attorney’s determination that its goods and Registrant’s goods are identical in-part or related for purposes of likelihood of confusion. Serial No. 87926087 6 are unrestricted as to channels of trade or classes of customers, it is presumed that their trade channels and classes of purchasers are the same for the legally identical in-part goods. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels of trade to same class of purchasers); 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); In re Am. Cruise Lines, Inc., 128 USPQ2d 1157, 1158 (TTAB 2018). Accordingly, the classes of purchasers and channels of trade, at a minimum, overlap. Thus, the third du Pont factor also weighs in favor of finding a likelihood of confusion. C. Similarity of the Marks We consider next the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “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.” In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal quotation marks omitted). Serial No. 87926087 7 Applicant’s mark is . The cited mark is SCANDINAVIAN EYEWEAR in standard characters. The marks are similar to the extent that they both include the word SCANDINAVIAN as the first literal element or first element. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps. Inc., 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); see also Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word); 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”). Moreover, although Applicant’s mark includes the word FRAMES as compared to the inclusion of the visually and aurally different term EYEWEAR in Registrant’s mark, we find these terms nonetheless are similar in commercial impression. The evidence of record includes the dictionary definition of each term as follows: “frames” is defined as “framework for a pair of eyeglasses” and “eyewear” is defined as “glasses and contact lenses.”7 Thus, the term “EYEWEAR” describes eyeglasses, and the term “FRAMES” describes a component of eyeglasses. As such, the marks convey similar 7 September 10, 2018 Office Action; TSDR pp. 9 and 12. Serial No. 87926087 8 overall commercial impressions, and consumers are likely to perceive Applicant’s mark as an extension of Registrant’s brand identifying an expanded product line. Notwithstanding the foregoing, consumer confusion has been held likely for marks that do not necessarily sound or look alike but convey the same idea, stimulate the same mental reaction, or may have the same overall meaning, as is the case here. See, e.g., Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 1336, 164 USPQ 301, 304 (C.C.P.A. 1970) (holding MISTER STAIN likely to be confused with MR. CLEAN on competing cleaning products); In re M. Serman & Co., 223 USPQ 52, 53 (TTAB 1984) (holding CITY WOMAN for ladies’ blouses likely to be confused with CITY GIRL for a variety of female clothing); H. Sichel Sohne, GmbH v. John Gross & Co., 204 USPQ 257, 260-61 (TTAB 1979) (holding BLUE NUN for wines likely to be confused with BLUE CHAPEL for the same goods); Ralston Purina Co. v. Old Ranchers Canning Co., 199 USPQ 125, 128 (TTAB 1978) (holding TUNA O’ THE FARM for canned chicken likely to be confused with CHICKEN OF THE SEA for canned tuna); Downtowner Corp. v. Uptowner Inns, Inc., 178 USPQ 105, 109 (TTAB 1973) (holding UPTOWNER for motor inn and restaurant services likely to be confused with DOWNTOWNER for the same services); TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) §1207.01(b) (Oct. 2018). Additionally, the terms FRAMES and EYEWEAR are the generic designations of Applicant’s and Registrant’s respective goods, which we have found to be identical- in-part and otherwise closely related, and both terms have been appropriately disclaimed. As such, the terms FRAMES and EYEWEAR are less likely to make an Serial No. 87926087 9 impact in the minds of consumers. See In re Dixie Rests., Inc., 41 USPQ2d at 1533-34 (disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks); see also In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 753 (Fed. Cir. 1985). Moreover, although Applicant’s mark includes a design element, “the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co., KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 21 USPQ 198, 200 (Fed. Cir. 1983)). Greater weight is often given to the wording because it is the wording that purchasers would use to refer to or request the goods or services. See, e.g., In re Viterra, Inc., 101 USPQ2d at 1911. In any event, the two circles appearing above and to the left of the wording SCANDINAVIAN FRAMES in Applicant’s mark is likely to be viewed by consumers as a fanciful pictorial representation of the term FRAMES, regardless of Applicant’s reference to the design element as “two circles” in the description of the mark set forth in its involved application. Therefore, the design element merely reinforces the non-source indicating nature of the term FRAMES. Finally, while the literal portion of Applicant’s mark, i.e., SCANDINAVIAN FRAMES, appears in a particular stylization, this is also insufficient to distinguish the marks. The cited mark is a standard character mark, and marks appearing in standard character form may be displayed in any stylization, font, color and size, including the identical stylization of Applicant’s mark, because the rights reside in Serial No. 87926087 10 the wording and not in any particular display or rendition. See Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (“‘Standard character’ or ‘typed’ registrations are federal mark registrations that make no claim to any particular font style, color, or size of display and, thus, are not limited to any particular presentation.”); see also Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“[T]he argument concerning a difference in type style is not viable where one party asserts rights in no particular display. By presenting its mark merely in a typed drawing, a difference cannot legally be asserted by that party.”). Thus, because the font style of the cited mark may be displayed in the identical manner as the literal portion of Applicant’s mark, the stylization of the literal portion of Applicant’s mark is insufficient to distinguish the respective marks. Applicant argues that the term SCANDINAVIAN is geographically descriptive and is entitled to a narrow scope of protection such that the additional wording FRAMES versus EYEWEAR, combined with Applicant's design feature, is sufficient to avoid confusion.”8 While we recognize that the cited mark is registered under the provisions of Section 2(f) of the Trademark Act, marks that are deemed “weak” or merely descriptive, however, are still entitled to protection under Section 2(d) of the Trademark Act against the registration by a subsequent user of a similar mark for goods that are legally identical in-part, as is the case here. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010). 8 Applicant’s Appeal Brief, p. 2; 4 TTABVUE 3. Serial No. 87926087 11 In its Request for Reconsideration, Applicant submitted copies of third-party registrations arguing that marks with geographically descriptive wording, such as “AMERICAN” and “NY” or “NEW YORK”, combined with highly descriptive or generic wording are coexisting on the register. Although the geographic terms “AMERICAN” and “NY” or “NEW YORK” may appear to be diluted on the register, this evidence does not support that the geographic term “SCANDINAVIAN” is also diluted in connection with either Applicant’s or Registrant’s identified goods. Nevertheless, prior decisions and actions of other trademark examining attorneys in registering other marks, however, have little evidentiary value and are not binding upon the USPTO or the Board. TMEP §1207.01(d)(vi); see also In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)). We recognize that in comparing the marks, we must consider Applicant’s and Registrant’s marks in their entirety. Thus, while we have taken into account the differences between them, we nonetheless find that despite the differences, given the similarities between the marks due to the shared term SCANDINAVIAN and the similar commercial impressions conveyed by the terms FRAMES and EYEWEAR, the marks, as a whole, are similar in appearance, pronunciation, and connotation and engender very similar overall commercial impressions. This especially holds true when the goods are legally identical in-part, as is the case here. See Coach Servs. Inc., Serial No. 87926087 12 101 USPQ2d at 1722 (“When trademarks would appear on substantially identical goods, ‘the degree of similarity necessary to support a conclusion of likely confusion declines.’”) (internal citations omitted). Accordingly, the first du Pont factor also favors a finding of likelihood of confusion. II. Conclusion We have considered all of the arguments and evidence of record, including those not specifically discussed herein, and all relevant du Pont factors. We have found that (1) the marks at issue are similar in appearance, sound, connotation and commercial impression; (2) Applicant’s and Registrant’s goods are identical in-part inasmuch as the parties’ respective identifications both include “sunglasses and spectacle frames,” as well as the effectively identical goods “eyeglasses” and “spectacles;” (3) Applicant’s “eyewear accessories, namely, straps, neck cords and head straps which restrain eyewear from movement on a wearer” are related to Registrant’s “sunglasses and spectacles;” and (4) the legally identical in-part goods are presumed to move in identical or overlapping trade channels and that they would be offered to the same or overlapping classes of purchasers. We conclude, therefore, that Applicant’s mark, as used in connection with the goods identified in its involved application, so resembles the cited mark SCANDINAVIAN EYEWEAR used in association with the goods identified in the cited registration as to be likely to cause confusion or mistake, or to deceive under Section 2(d) of the Trademark Act. Decision: The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act is affirmed. Copy with citationCopy as parenthetical citation