The Flemings Group LLCDownload PDFTrademark Trial and Appeal BoardMay 1, 2013No. 85368760 (T.T.A.B. May. 1, 2013) Copy Citation Laura A Deirdre Lorenzo Before Z Opinion T applicat forth be UNIT nne Carl o G. Robert , Managin ervas, Sha by Gorow he Flemin ion for the low, P ED STAT Trad In f Laura D son, Trade g Attorney w, and Go itz, Admin gs Group mark BC THIS OPI RECEDEN ES PATEN emark Tr re The Fl Serial ykes Carl, mark Exa ). rowitz, Ad istrative T LLC (app BRANDC NION IS N T OF TH T AND T _____ ial and Ap _____ emings Gr _____ No. 853687 _____ PPC for T mining A _____ ministrati rademark licant) ha AMP UN OT A E TTAB RADEMAR peal Board oup LLC 60 he Flemin ttorney, L ve Tradem Judge: s appealed IVERSITY Mail May K OFFIC gs Group L aw Office ark Judge the final in stylize ed: 1, 2013 E LC. 111 (Rober s. refusal o d form, as t L. f its set Serial No. 85368760 2 for “educational services, namely, organizing conferences, workshops and seminars in the field of personal branding, digital technology, social media, entrepreneurships and startups”1 in Class 41 pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the mark BRAND CAMP (in standard characters) for, inter alia: personal coaching services in the field of brand, marketing and business strategy; arranging and conducting conferences, seminars and exhibitions all in the field of marketing strategy; in Class 41.2 EVIDENTIARY ISSUES The examining attorney objected to all of the evidence on the ground that it was untimely since it was submitted with applicant’s appeal brief. We overrule the objection. On July 30, 2012, applicant filed a request for reconsideration, a notice of appeal and an appeal brief. The request for reconsideration consisted solely of the evidence. As such, the evidence was timely submitted. The examining attorney also objected to result summaries from Internet Search engines that were submitted with the request for reconsideration. The applicant submitted the summaries to collaterally attack the cited registration. An 1 Application Serial No. 85368760, filed July 12, 2011, pursuant to Section 1(a) of the Trademark Act, alleging first use and first use in commerce at least as early as May 24, 2011. The description of the mark states: “the mark consists of a large two-toned yellow and dark yellow lower-case letter ‘b,’ inside a dark gray lower-case letter ‘c,’ outlined in light gray with the lower-case dark gray medium-sized words ‘brand camp’ and the smaller- sized word ‘university’ underneath them, with a white background.” The word “UNIVERSITY” is disclaimed. 2 Reg. No. 3367290 issued on the Supplemental Register on January 8, 2008. The registration also includes services in Class 35 and additional services in Class 41, but the services listed above are those that the examining attorney has treated as relevant to the refusal. Serial No. 85368760 3 ex parte appeal is not the proper forum for such attack, as discussed infra. Accordingly, we sustain the objection. DISCUSSION Turning next to the substantive refusal, our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).3 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 and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We start with an analysis of the similarity or dissimilarity and nature of the services as described in the application and registration. Applicant concedes that “[t]here is some relation[ship] between the services of the parties but the services are not directly competitive.” Appeal Brief p. 5. It is settled that it is not necessary that the respective services be identical or even competitive in order to find that they are related for purposes of a likelihood of confusion analysis. The services 3 The applicant references the eight-factor test set forth in Frisch’s Rest. V. Elby’s Big Boy, 670 F2d 642 (6th. Cir. 1982), which is followed by the Sixth Circuit. We follow the 13 factor test set forth in In re E. I. du Pont de Nemours & Co., supra, which was decided by the Court of Customs & Patent Appeals, the predecessor to our primary reviewing court, the Court of Appeals for the Federal Circuit. As with the Sixth Circuit case, the ultimate question is whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way. Serial No. 85368760 4 need only be sufficiently related so that consumers would be likely to assume, upon encountering the services under similar marks, that the services originate from, are sponsored or authorized by, or are otherwise connected to the same source. See In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). We base our evaluation on the services as they are identified in the registration and application. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). The relevant services in the cited registration are “personal coaching services in the field of brand, marketing and business strategy; arranging and conducting conferences, seminars and exhibitions all in the field of marketing strategy.” Applicant’s services are “educational services, namely, organizing conferences, workshops and seminars in the field of personal branding, digital technology, social media, entrepreneurships and startups.” Both applicant and registrant organize conferences and seminars. Registrant’s conferences and seminars are in the field of marketing strategy. Applicant’s conferences and seminars are in the fields of personal branding, digital technology, social media, entrepreneurships and startups. The record shows that personal branding is a marketing strategy. Personal Branding is the process whereby people and their careers are marked as brands. While previous self- help management techniques were about self- Serial No. 85368760 5 improvement, the personal branding concept suggests instead that success comes from self-packaging. Lair, Daniel J.; Sullivan, Katie; Cheney, George (2005). "Marketization and the Recasting of the Professional Self". Management Communication Quarterly 18 (3): 307–343. doi:10.1177/0893318904270744 from Wikipedia “Personal Branding.” (Office action dated November 2, 2011, p.17.) The process is further defined as: the creation of an asset that pertains to a particular person or individual; this includes but is not limited to the body, clothing, physical appearance and areas of knowledge, leading to a uniquely distinguishable, and ideally memorable, impression. … Personal branding often involves the application of one's name to various products. For example, the celebrity real-estate mogul Donald Trump uses his last name extensively on his buildings and on the products he endorses (e.g. Trump Steaks). Wikipedia definition of personal branding, www.wikipedia.org. (Office action dated November 2, 2011, p.17.) Evidence submitted by the examining attorney further establishes that personal branding is a marketing strategy. For example, an article entitled “Why Personal Brand is Essential to Corporate Marketing Success” from the Awaken Your Superhero website, www.christopherspenn.com, states: “[p]ersonal brand is absolutely essential to future corporate success, at least from a marketing perspective.” The subject matter of applicant’s conferences and seminars on entrepreneurships and startups would also include marketing strategy. Thus, applicant’s “educational services, namely, organizing conferences, and seminars in the field of personal branding, entrepreneurships and startups” are identical to registrant’s services of “arranging and conducting conferences and Serial No. 85368760 6 seminars in the field of marketing strategy.” To the extent that they are not identical, all of applicant’s services are closely related to the relevant services in the cited registration, which are: “personal coaching services in the field of brand, marketing and business strategy; arranging and conducting conferences, seminars and exhibitions all in the field of marketing strategy.” Accordingly, we find that the services are overlapping or sufficiently related to support a finding of likelihood of confusion. Further, given that the applicant’s services and the services in the cited registration are overlapping or closely related, they are presumed to travel in the same channels of trade and to be sold to the same customers. “It is well established that absent restrictions in the application and registration, [identical or related] goods and services are presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F3d 1358, 101 USPQ2d, 1905, 1908 (Fed. Cir. 2012). Accordingly, the third and fourth DuPont factors also support a finding of likelihood of confusion. Next, we consider the similarity of the marks and the strength of registrant’s mark. The mark in the cited registration is BRAND CAMP (in standard character form). It is registered on the Supplemental Register, which is an admission that when it was registered, it was descriptive. See In re Quik-Print Copy Shop, Inc., 616 F2d 523, 205 USPQ 505, 506 (CCPA 1980) and In re The Clorox Company, 578 F2d 305, 198 USPQ 337, 338 (CCPA 1978). See also In re Bush Brothers & Co., 884 Serial N F2d 56 descript or unlik Supplem soil and the Sup T A on the m rational mark, p their en (Fed. Ci stylized such as word po which it (Fed. Ci o. 853687 9, 12 US iveness of ely, that ental Reg stain rem plemental he applica lthough, “t arks in th reasons, m rovided th tireties.” I r. 1985). I letters “B this where rtion of th is affixed r. 1983). M 60 PQ2d 10 a cited ma fact does ister.” In over held Register, f nt’s mark he similar eir entiret ore or les e ultimate n re Natio n this case C” with the there is a e mark is . See CBS oreover, i 58, 1059 rk may in not prec re The Clo confusing or a stain is: ity or diss ies… there s weight h conclusion nal Data C , applican words “br composite the one mo Inc. v. Mo n this case 7 (Fed. Cir fluence the lude citati rox Comp ly similar remover). imilarity o is nothin as been giv rests on a orp., 753 t’s mark co andcamp mark com st likely t rrow, 708 F , the styliz . 1989). conclusio on under any, at, 34 to STAIN . f the mark g improper en to a pa considera F.2d 1056, nsists of a university prising a o indicate .2d. 1579 ed letters While “ n that con §2(d) of 1 (ERASE ERASER s is determ in stating rticular fe tion of the 224 USPQ design co ” thereund design and the origin , 128 USPQ “BC” reinf [t]he leve fusion is li marks on for a lau , registere ined base that, for ature of a marks in 749, 751 mprised of er. In cas words, th of the good 198, 200 orce the l of kely the ndry d on d the es e s to Serial No. 85368760 8 dominant wording of applicant’s mark. Thus, we give less weight to the stylized letters “BC” than we do to the wording of the mark “BRANDCAMP UNIVERSITY.” Looking at the wording of the mark, the term “BRANDCAMP” dominates since it is the first portion of the mark and it is depicted on a single line with the word “UNIVERSITY” thereunder in smaller letters. Accordingly, the dominant wording of applicant’s mark is legally identical to the entire mark in the cited registration, BRAND CAMP. The presence of additional terms in the mark does not necessarily eliminate the likelihood of confusion if some terms are identical. See, In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (ML similar to ML MARK LEES). When, as in this case, the marks are used in connection with virtually identical services, the degree of similarity necessary to support a conclusion of likely confusion declines. See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Accordingly, we find that the despite the descriptive nature of the cited mark, the marks are sufficiently similar to support a finding of likelihood of confusion. In fact, applicant has not argued that the marks are not similar.4 Instead applicant argues that there is no likelihood of confusion because registrant has “abandoned the use of the trademarked words “BRAND CAMP.” Appeal Brief p.5. An ex parte proceeding is not the forum for challenging the validity of a cited 4 To the contrary, applicant asserted that “courts will not interfere where the only confusion, if any, results from a similarity of names and not from the manner of use.” Appeal Brief, p. 4. Serial No. 85368760 9 registration. The proper action for attacking the validity of a cited registration is a cancellation action. In re Mountaire Corporation, 231 USPQ 986, 988 (TTAB 1986) citing In re Calgon Corp. 435 F.2d 596, 598, 168 USPQ 278, 280 (CCPA 1971); In re Home Federal Savings and Loan Association, 213 USPQ 68, 70 (TTAB 1982). The DuPont factors discussed above are the only ones raised. To the extent that there are other relevant DuPont factors, we treat them as neutral. Having considered all the evidence and argument on the relevant DuPont factors, we find that applicant’s mark is likely to cause confusion with the cited registration. Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation