Timezone Trademark Management Limited

Trademark Trial and Appeal Board

Mar 31, 2008

No. 78523456 (T.T.A.B. Mar. 31, 2008)

Hearing: Mailed:
07 February 2008 31 March 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Timezone Trademark Management Limited
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Serial No. 78523456
_______

Michelle Morris and Jane F. Collen of Collen IP for
Timezone Trademark Management Limited.

Christopher Wells, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Drost, and Taylor, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On November 29, 2004, Timezone Trademark Management
Limited (applicant) filed an application to register the
mark shown below on the Principal Register for the
following services:
Retail stores; import and export agencies;
advertising, marketing and promotion services;
business information services; dissemination of
advertising matter; demonstration of products;
distribution of samples; shop window dressing;
arranging exhibitions for business and advertising
purposes; business advisory and consultancy services;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78523456
2
all of the above featuring watches, clocks,
horological and chronometric instruments in Class 35.1

The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of two registered marks. The
first registration is for the mark TIMEZONE (in typed or
standard character form) for “advertising agencies and
business management services” in Class 35. Registration
No. 2892691 issued October 12, 2004.2 The second
registration is for the mark TIMEZONE and design shown
below for “electronic watches and electronic clocks” in
Class 14.3

1 Serial No. 78523456. The application is based on an allegation
of a bona fide intention to use the mark in commerce.

2 The registration is owned by Scenario Communications Limited.
The registration also includes services in Class 42 that are not
relevant to this appeal.

3 Registration No. 1227379, issued February 15, 1983, renewed.
As a result of partial Section 8 and 15 affidavits, goods and
services in Classes 9, 28, and 42 were deleted. The registration
contains a disclaimer of the word “Time” and it is owned by
Calconix, Inc.
Ser No. 78523456
3

When the refusal was made final, applicant filed this
appeal. A hearing was held on February 7, 2008.
In a case involving a refusal under Section 2(d), 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., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
“The first DuPont factor requires examination of ‘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 Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
Ser No. 78523456
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USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973)). We begin by addressing applicant’s argument
that the “round image of the clock is repeated three times,
and at first glance, the mark reads TIMOZONO, which creates
an entirely different commercial impression from either of
the cited marks.” Brief at unnumbered p. 4. We disagree.
In the section of its application entitled “Literal
Element,” applicant inserted the word “TIMEZONE.” The
header of applicant’s brief (first page) identifies the
mark as TIMEZONE. Consistent with applicant’s own
references to its mark, most consumers are also likely to
view the mark as a stylized version of the common words
“time zone” rather than an invented word with no apparent
meaning. Indeed, the three clock faces, which are used to
indicate the time, are more likely to reinforce the “time
zone” meaning instead of representing stylized letters “O.”
Therefore, applicant’s and registrants’ marks are for the
identical word “TIMEZONE.” They would have the identical
pronunciation and meaning. Furthermore, inasmuch as the
‘691 registration is shown in typed or standard character
form, we must assume that it can be used in the same
stylized form as applicant’s mark (without the design
element). Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
Ser No. 78523456
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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. Tomy asserts rights in SQUIRT
SQUAD regardless of type styles, proportions, or other
possible variations. Thus, apart from the background
design, the displays must be considered the same”). See
also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1847 (Fed. Cir. 2000) (“Registrations
with typed drawings are not limited to any particular
rendition of the mark and, in particular, are not limited
to the mark as it is used in commerce”). Therefore, while
the addition of the clock faces is a difference,
nonetheless the appearance of the marks TIMEZONE and
TIMEZONE and clock face design are still similar.
Finally, the commercial impressions of the marks are
likewise very similar inasmuch as they are for the
identical word and the only additional feature in
applicant’s mark is the presence of clock faces, which
would certainly be suggestive of applicant’s retail stores
featuring watches, clocks, horological and chronometric
instruments. See In re Dixie Restaurants, Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (The Federal
Ser No. 78523456
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Circuit held that, despite the addition of the words “The”
and “Cafe” and a diamond-shaped design to registrant’s
DELTA mark, there still was a likelihood of confusion).
See also In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
USPQ2d 1025, 1026 (Fed. Cir. 1988) (BIGG’S (stylized) for
grocery and general merchandise store services found likely
to be confused with BIGGS and design for furniture).
Therefore, we conclude that the marks TIMEZONE and TIMEZONE
and clock face design are similar in sound, appearance,
meaning, and commercial impression.
Regarding the ‘379 registration, the marks are again
identical in pronunciation and meaning inasmuch as they
would be pronounced the same and their meaning would be the
same. As to their appearance and commercial impression,
the designs in the marks are different but both marks
feature various symbols associated with clocks.
Applicant’s design includes clock faces and the ‘379
registration seems to include a symbol “suggesting sound or
vibration” (examining attorney’s brief at 3) such as a
clock’s “alarm sounding” (applicant’s reply brief at
unnumbered p. 3). Both symbols are suggestive of the
clock-related goods and services in the application and
registration. Inasmuch as the words in the marks are
identical and the designs are suggestive of clock-related
Ser No. 78523456
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goods and services, we do not agree with applicant’s
argument that they “create wholly divergent commercial
impressions” (reply brief at 4). Rather, we hold that the
appearances and commercial impressions of the marks would
be similar. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“We agree with the Board that
the words dominate these marks, and that their differences
in script and arrow design do not diminish their
substantial identity when viewed as a whole”). Therefore,
applicant’s mark and the mark in the ‘379 registration are
dominated by the word TIMEZONE and they are similar in
sound, appearance, meaning, and commercial impression.
We add that the identical nature of the word portion
of the marks is a significant factor in our likelihood of
confusion analysis. Id. (“Without a doubt the word portion
of the two marks are identical, have the same connotation,
and give the same commercial impression. The identity of
the words, connotation, and commercial impression weighs
heavily against the applicant”).
Next, we look at whether the goods and services in the
application and registrations are related. It “has often
been said that goods or services need not be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that goods
Ser No. 78523456
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or services are related in some manner or that
circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same producer or
that there is an association between the producers of each
parties' goods or services.” In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991). See also Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB
2002).
Here, applicant’s retail stores and advertising and
marketing and business advisory services all feature
watches, clocks, horological and chronometric instruments.
The ‘379 registration is for electronic watches and
electronic clocks while the ‘691 registration is for
advertising agencies and business management services. We
start by noting that the ‘691 registration’s advertising
and business management services are not limited to any
industries or types of businesses so they would include
applicant’s advertising services featuring watches, clocks,
and horological and chronometric instruments. Therefore,
these services overlap because they are identical in part.
Applicant’s business advisory services and the ‘691
Ser No. 78523456
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registrant’s business management services would also be
closely related, if not overlapping, to the extent that
they both include business advisory services and business
management services featuring watches and clocks.
Concerning the ‘379 registration’s electronic watches
and electronic clocks, we note that these items would be
items sold in retail stores featuring watches and clocks
that are included within applicant’s identification of
services. In a similar situation, the Federal Circuit has
held that “retail grocery and general merchandise store
services” and furniture are related.
The only aspect of this case which is unusual is that
the marks sought to be registered are for services
while the prior registration on which their
registration is refused is for wares. Considering the
facts (a) that trademarks for goods find their
principal use in connection with selling the goods and
(b) that the applicant's services are general
merchandising -- that is to say selling -- services,
we find this aspect of the case to be of little or no
legal significance.

Hyper Shoppes, 6 USPQ2d at 1026.
In this case, the relationship between applicant’s
services and registrant’s goods is even more direct because
applicant’s stores specifically sell the goods identified
in registrant’s registration.
The examining attorney has also included several use-
based registrations to show that a common mark has been
Ser No. 78523456
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registered by the same entity for, inter alia, watches
and/or clocks and retail store services. See, e.g.,
Registration No. 3122537 (“watches, clocks” and “retail
store services in the field of jewelry, watches…”); No.
3106335 (“watches, watch chains, clocks” and “retail store,
computerized online retail and retail distributorship
services all featuring… watches, clocks…”); No. 3136453
(“jewelry, namely watches…” and “retail store, wholesale
and mail-order catalog services featuring jewelry”) and No.
2863810 (“watches” and “retail store services”). Although
third-party registrations are “not evidence that the marks
shown therein are in use on a commercial scale or that the
public is familiar with them, [they] may nonetheless have
some probative value to the extent that they may serve to
suggest that such goods or services are of a type which may
emanate from a single source.” In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). See also In re
Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214,
1217-18 (TTAB 2001).
Based on the nature of the goods and services and the
evidence of record, we conclude that these goods and
services are closely related. Consumers are likely to
assume that there is some association or relationship
between watches and clocks and stores that sell these same
Ser No. 78523456
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products. In addition, the potential customers of
applicant and registrant would overlap to the extent that
purchasers of watches and clocks would use retail store
services featuring watches and clocks. Schieffelin & Co.
v. Molson Companies Ltd., 9 USPQ2d 2069, 2073 (TTAB 1989)
(“[M]oreover, since there are no restrictions with respect
to channels of trade in either applicant's application or
opposer's registrations, we must assume that the respective
products travel in all normal channels of trade for those
alcoholic beverages”).
Purchasers seeking to purchase a watch or clock are
obviously likely to patronize a retail store featuring
watches and clocks. Thus, the purchasers of these goods
and services would overlap. We also point out that we do
not read limitations into the identification of goods and
services. Octocom Systems, Inc. v. Houston Computers
Services 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 [or services] set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods
[or services], the particular channels of trade or the
class of purchasers to which the sales of goods [or
Ser No. 78523456
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services] are directed”). Therefore, we must assume that
registrant’s clocks and watches and applicant’s retail
stores both feature clocks and watches in various price
ranges. We add that while some purchasers of these goods
may be careful and sophisticated purchasers, there is no
evidence that would dissuade us from concluding that some
of these purchasers would simply be ordinary purchasers who
were not particularly careful in making these purchases.
Regarding the advertising services of both applicant
and the ‘691 registrant, we must consider these services to
be overlapping and therefore the channels of trade and
purchasers would be identical. In re Smith and Mehaffey,
31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”). While the purchasers of advertising services
may be more sophisticated purchasers, even sophisticated
purchasers are likely to be confused when the marks
TIMEZONE and TIMEZONE and design are used on the same
services. In re Hester Industries, Inc., 231 USPQ 881, 883
(TTAB 1986) (“While we do not doubt that these
institutional purchasing agents are for the most part
sophisticated buyers, even sophisticated purchasers are not
immune from confusion as to source where, as here,
Ser No. 78523456
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substantially identical marks are applied to related
products”).
Finally, applicant has attached four registrations to
its reply brief. While we normally do not consider new
evidence submitted with appeal briefs, the examining
attorney, at oral argument, stated that he did not object
to our consideration of these registrations. We agree that
they do not support applicant’s argument that there is no
likelihood of confusion here. The “third party
registrations relied upon by applicant cannot justify the
registration of another confusingly similar mark." In re
J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987),
quoting Plus Products v. Star-Kist Foods, Inc., 220 USPQ
541, 544 (TTAB 1983). These registrations for marks
consisting of or containing the words TIME ZONE or
variations thereof are for unrelated goods and services
such as leisure centers and arcade facilities services,
electronic controllers for controlling volume and radio
programs. The only registration that is even remotely
relevant is one for business advertising cards and
brochures and flyers in the field of advertising (No.
3145669). These registrations hardly demonstrate that the
word TIMEZONE is weak or entitled only to a narrow scope of
protection.
Ser No. 78523456
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Therefore, we conclude that there would be a
likelihood of confusion if applicant’s mark TIMEZONE and
design was used in association with the identified services
in view of the registered marks TIMEZONE and TIMEZONE and
design for the identified goods and services.4
Decision: The examining attorney’s refusal to
register applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.

4 A refusal under Section 2(d) is proper if there is a likelihood
of confusion involving any of the goods and/or services set forth
in the application and cited registration. See, e.g., Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981); and Shunk Mfg. Co. v. Tarrant Mfg.
Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA 1963).