T & C Imports

Trademark Trial and Appeal Board

Jul 25, 2013

No. 85570200 (T.T.A.B. Jul. 25, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 25, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re T& C Imports
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Serial No. 85570200
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Matthew H. Swyers of The Swyers Law Firm PLLC for T & C Imports.

Robert J. Struck, Trademark Examining Attorney, Law Office 109 (Dan Vavonese,
Managing Attorney).
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Before Grendel, Kuhlke and Adlin, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, T & C Imports, filed an application to register on the Principal
Register the mark EWETOPIA in standard characters for goods identified as
“knitting yarn,” in International Class 23.1
Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used with its identified

1 Application Serial No. 85570200, filed on March 15, 2012, based on allegations of first use
and first use in commerce on November 17, 2011, under Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a).
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goods, so resembles the registered mark UTOPIA in typed form2 for “handknitting
yarn,” in International Class 233 as to be likely to cause confusion, mistake or
deception.
When the refusal was made final, applicant appealed and briefs have been
filed.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in 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.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, 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 (CCPA 1976).
We turn first to a consideration of the goods, channels of trade and class of
purchasers. We must make our determinations under these factors based on the
goods as they are recited in the registrations and application. See In re Elbaum,
211 USPQ 639 (TTAB 1981). Thus, we turn to consider the du Pont factors of the
relatedness of the goods and channels of trade. We base our evaluation on the
goods as they are identified in the registration and application. In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.

2 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings.

3 Registration No. 1925521, issued on October 10, 1995, combined Section 8 and 15
declaration accepted and acknowledged, renewed.
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Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Applicant’s “knitting yarns” encompass registrant’s “handknitting yarns”
and, as such, are legally identical thereto. Considering the channels of trade and
classes of purchasers, because the goods are identical and there are no limitations
as to channels of trade or classes of purchasers in either the application or cited
registration, we must presume that applicant’s and registrant’s goods will be sold in
the same channels of trade and will be bought by the same classes of purchasers.
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). See also
Hewlett-Packard Co. v. Packard Press Inc., 62 USPQ2d 1001; Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Genesco
Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) and In re Smith and Mehaffey,
31 USPQ2d 1531 (TTAB 1994).
Applicant’s arguments regarding the differences in the actual goods and
channels of trade are not persuasive inasmuch as we must make our determination
based on the goods as identified, and here, the identifications of goods in the
registration and application are not limited to any particular type of yarn, e.g.,
merino or acrylic. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
1986).
In view of the above, the du Pont factors of the similarity of the goods, the
channels of trade and classes of purchasers favor a finding of likelihood of confusion.
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With regard to the conditions of sale, again, because we are bound by the
description of goods in the application and registration and because the descriptions
of goods are not restricted as to price or channel of trade, the goods at issue must
include inexpensive as well as more expensive yarns and all channels of trade and
classes of consumers, including professionals and the general public. The standard
of care for our analysis is that of the least sophisticated purchaser. Alfacell Corp. v.
Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004).
As a general proposition, inexpensive goods may be purchased with less care,
which increases the likelihood of confusion. Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) (“When products are relatively low-
priced and subject to impulse buying, the risk of likelihood of confusion is increased
because purchasers of such products are held to a lesser standard of purchasing
care”) (citations omitted). Moreover, even if purchasers are sophisticated or
knowledgeable in a particular field that does not necessarily mean that they are
sophisticated or knowledgeable in the field of trademarks or immune from source
confusion. Imagineering Inc. v. Van Klassens Inc., 53 F.3d 1260, 1265, 34 USPQ2d
1526, 1530 (Fed. Cir. 1995). Thus, despite the possibility that the purchasers of
yarn may exercise a certain amount of care to ensure they are purchasing what they
require, we find this factor also favors likely confusion.
We next consider the marks EWETOPIA and UTOPIA and compare them “in
their entireties as to appearance, sound, connotation and commercial impression.”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
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F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177 USPQ at
567. We must also keep in mind that “when marks would appear on virtually
identical goods or services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
Applicant’s mark EWETOPIA is phonetically equivalent to registrant’s mark
UTOPIA, and in certain circumstances similarity in sound alone may be sufficient
to find marks confusingly similar. In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d
1581, 1586 (TTAB 2007); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB
1988). In this case, it is the replacement of the letter U with the name of a female
sheep, EWE,4 that creates the differences in appearance, connotation and
commercial impression. However, despite the double entendre in applicant’s mark,
one of the perceived meanings, utopia, remains identical to registrant’s mark.
When we consider the marks, we do so based on the average purchaser retaining a
general rather than specific impression of a mark. L’Oreal S.A. v. Marcon, 102
USPQ2d 1434, 1438 (TTAB 2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). Here, because the goods are identical, the marks are
phonetically identical and share the meaning “utopia” we find on balance that the
similarities in the marks outweigh their differences. Viterra Inc., 101 USPQ2d
1905.

4 EWE is defined as “a female sheep, especially when fully mature.” App. Response (July
27, 2012) Exh. 4 www.dictionary.com.
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Applicant argues that there are several “topia” marks in this general field
having the effect of narrowing the scope of protection for registrant’s UTOPIA
mark. Applicant has only submitted six third-party registrations which have little
weight in determining the strength of a mark because they do not establish that the
registered marks identified therein are in actual use in the marketplace or that
consumers are accustomed to seeing them. See AMF Inc. v. Am. Leisure Prods.,
Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (CCPA 1973); In re Davey Prods. Pty
Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009). Moreover, only one of the third-party
registrations is for goods similar to applicant’s and registrant’s yarns (Reg. No.
3351477 for the mark YARNTOPIA for yarns). This evidence is not sufficient to
establish that the mark in the cited registration is weak. However, even if we were
to consider registrant’s mark weak, even weak marks receive protection against
likely confusion where the goods are identical and the marks are similar. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA
1974).
Applicant’s argument that there have been no known instances of actual
confusion is not persuasive. The contemporaneous use of applicant’s and
registrant’s marks for a period of over two years without actual confusion is entitled
to little weight. See Majestic Distilling Co., Inc., 65 USPQ2d at 1205
(“uncorroborated statements of no known instances of actual confusion are of little
evidentiary value”). See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ
528, 529 (CCPA 1973) (stating that self-serving testimony of applicant’s corporate
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president’s unawareness of instances of actual confusion was not conclusive that
actual confusion did not exist or that there was no likelihood of confusion). The lack
of evidence of actual confusion carries little weight, J.C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965), especially in an ex
parte context. In any event, the record is devoid of probative evidence relating to
the extent of use of registrant’s marks and, thus, whether there have been
meaningful opportunities for instances of actual confusion to have occurred in the
marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1847 (Fed. Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992). Accordingly, the du Pont factor of the length of time during and
conditions under which there has been contemporaneous use without evidence of
actual confusion is considered neutral.
Finally, applicant’s argument that the owner of the cited registration has
abandoned its trademark due to nonuse constitutes an impermissible collateral
attack on the cited registration and such evidence and argument are not relevant in
the context of an ex parte appeal. Dixie Rests., 41 USPQ2d at 1534-35.
In conclusion, because the marks are similar, the goods are legally identical,
and the channels of trade and consumers are the same or overlapping, confusion is
likely between applicant’s mark EWETOPIA and the mark UTOPIA in the cited
registration. Finally, to the extent that any of the points argued by applicant cast
doubt on our ultimate conclusion on the issue of likelihood of confusion, we resolve
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that doubt, as we must, in favor of the prior registrant. In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.