87781412 (T.T.A.B. Feb. 19, 2020)

UTG, LLC

Trademark Trial and Appeal BoardFeb 19, 2020

87781412 (T.T.A.B. Feb. 19, 2020)

Mailed: February 19, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re UTG, LLC _____ Application Serial No. 87781412 _____ Todd T. Taylor of Taylor IP, P.C. for UTG, LLC. Brian Pino, Trademark Examining Attorney, Law Office 114, Laurie Kaufman, Managing Attorney. _____ Before Bergsman, Greenbaum and Hudis, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: UTG, LLC (Applicant) seeks registration on the Principal Register for the mark FLEETSPEC, in standard characters, for “coatings for industrial, transportation, commercial, and maintenance purposes, namely coatings for truck fleets and trailers,” in Class 2.1 The Examining Attorney refused to register Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so 1 Serial No. 87781412, filed February 2, 2018, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in commerce. This Opinion Is Not a Precedent of the TTAB Serial No. 87781412 - 2 - resembles the registered mark FLEET-DRY, in typed drawing form, for “coatings in the nature of quick drying enamels for metal surfaces,” in Class 2, as to be likely to cause confusion.2 The Examining Attorney also issued a final requirement that Applicant amend the description of goods to identify the nature of the coating. See Trademark Rule 2.32(a)(6), 37 C.F.R. §2.32(a)(6); TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §1402.01 (2018). I. Preliminary Issue Applicant, for the first time in its brief, proffered that there are eight different “Fleet” “trademarks” in Class 2 owned by four different entities.3 The Examining Attorney, in his brief, “objects to the alleged search evidence” on the ground that the evidence was not timely filed pursuant to Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d).4 Trademark Rule 2.142(d) reads as follows: The record in the application should be complete prior to the filing of an appeal. Evidence should not be filed with the Board after the filing of a notice of appeal. If the appellant or the examining attorney desires to introduce additional evidence after an appeal is filed, the appellant or the examining attorney should submit a request to the Board to suspend the appeal and to remand the application for further examination. 2 Registration No. 1819619, registered February 8, 1994; third renewal. Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended to replace the term “typed” drawing with “standard character” drawing. A typed mark is the legal equivalent of a standard character mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly were known as ‘typed’ marks.”). 3 Applicant’s Brief, p. 8 (4 TTABVUE 9). 4 Examining Attorney’s Brief (6 TTABVUE 4). Serial No. 87781412 - 3 - We sustain the Examining Attorney’s objection because Applicant submitted the “search evidence” for the first time with its brief and, therefore, it is untimely. We give no consideration to the “search evidence.” Even if we were to consider the “search evidence,” it has little, if any, probative value. First, Applicant did not submit copies of the “trademarks.” To make registrations of record, an applicant or the Examining Attorney must submit copies of the registrations or the complete electronic equivalent (i.e., complete printouts taken from any of the USPTO’s automated systems (X-Search, TESS, TSDR, or TRAM)). See In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002); In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998). Second, Applicant identified only “trademarks.” Applicant did not identify any specific registrations, applications, or trademarks. Pending applications are evidence only that the applications were filed on a certain date; they are not evidence of use of the marks. Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). Third, Applicant proffered that the marks were in Class 2. Applicant did not provide the descriptions of goods. Class 2 includes paints, varnishes, lacquers, preservatives against rust and against deterioration of wood, colorants, dyes, inks for printing, marking and engraving, raw natural resins, metals in foil and powder form for use in painting, printing and art.5 Thus, the identified “trademarks” may or may not be relevant because they may not be used to identify coatings or related products. 5 TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1401.02(a) (2018). Serial No. 87781412 - 4 - See Omaha Steaks Int’l v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686 (Fed. Cir. 2018) (error to rely on third-party evidence of similar marks for dissimilar goods, as Board must focus “on goods shown to be similar”); In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (disregarding third-party registrations for other types of goods where the proffering party had neither proven nor explained that they were related to the goods in the cited registration); In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (the third-party registrations are of limited probative value because the goods identified in the registrations appear to be in fields which are far removed from the goods at issue). Finally, eight “trademarks” owned by four different entities “is a far cry from the large quantum of evidence of third-party use and third-party registrations that was held to be significant in both Jack Wolfskin v. New Millennium Sports, [797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), cert. denied, 136 S.Ct. 982 (2016)], and Juice Generation v. GS Enters., [794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)].” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) aff’d 777 Fed. Appx. 516 (Fed. Cir. 2019). II. Likelihood of Confusion We base our determination under Section 2(d) on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor for which Serial No. 87781412 - 5 - there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). “[E]ach case must be decided on its own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. 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, 123 USPQ2d at 1747 (“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)). A. The similarity or dissimilarity and nature of the goods. Applicant’s description of goods is “coatings for industrial, transportation, commercial, and maintenance purposes, namely coatings for truck fleets and trailers.” The description of goods in the cited registration is “coatings in the nature of quick drying enamels for metal surfaces.” Applicant’s “coatings” is broad enough to encompass Registrant’s “coatings in the nature of quick drying enamels.” In addition, Registrant’s use of enamel coatings on “metal surfaces” is broad enough to include Serial No. 87781412 - 6 - Applicant’s use of coatings on trucks and trailers because trucks and trailers may have metal surfaces. Where an applicant or registrant broadly identifies products in an application or registration, we presume the description of goods encompass all products of the type identified. See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). See also Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); Venture Out Props. LLC v. Wynn Resorts Holdings, LLC, 81 USPQ2d 1887, 1893 (TTAB 2007). Applicant contends that the goods are different because Applicant’s “goods are coatings for the automotive market (trucks and trailers) and the registrants [sic] goods are coatings for the agricultural and construction industries.”6 However, we must consider the goods as described in the application and registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys, Inc. v. Houston Comput. 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 Paula Payne 6 Applicant’s Brief, p. 7 (4 TTABVUE 8). Serial No. 87781412 - 7 - Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods”). Notwithstanding Applicant’s argument and evidence regarding the actual scope of its own and the cited Registrant’s commercial use of its mark, we may not limit, by resort to extrinsic evidence, the scope of goods as identified in the cited registration or in the subject application. E.g., In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Fisher Scientific Co., 440 F.2d 43, 169 USPQ 436, 437 (CCPA 1971); In re La Peregrina Ltd., 86 SPQ2d 1645, 1646 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). We find that the goods in the Application and cited Registration are legally identical. B. Established, likely-to-continue channels of trade and classes of consumers. Because the description of goods in the application and the cited registration are legally identical, we presume that the channels of trade and classes of purchasers are the same. Viterra Inc., 101 USPQ2d at 1908 (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); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). Serial No. 87781412 - 8 - Applicant argues that the channels of trade and classes of consumers are different because Applicant’s “coatings are used in the market of high end refinishing systems for trucks and trailers, whereas the goods associated with the cited mark are used on agricultural and construction equipment.”7 As explained above, we are bound by the description of goods in the application and registration and we may not consider extrinsic evidence about Applicant’s and Registrant’s actual goods, channels of trade, and classes of consumers. See Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987) (quoting CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983)); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958)). We find that Applicant offers its goods in the same channels of trade to the same classes of consumers as Registrant’s goods. C. The similarity or dissimilarity of the marks. We now turn to the DuPont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. 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) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 7 Applicant’s Brief, p. 7 (4 TTABVUE 8). Serial No. 87781412 - 9 - 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted). In comparing the marks, we are mindful that where, as here, the goods are legally identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). “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.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d at 1721). The marks are similar because they both start with the word “Fleet,” but are different to the extent they have different suffix terms. The word “Fleet” in Applicant’s mark is followed by the term “Spec” and the word “Fleet” in the registered mark is followed by the term “-Dry.” In determining whether the marks are more similar or more dissimilar, we look first to the strength of the registered mark FLEET-DRY. FLEET-DRY is at worst a suggestive term and, therefore, inherently distinctive. The word “Fleet” is defined, Serial No. 87781412 - 10 - inter alia, as “a number of aircraft, buses, cars, or other vehicles under the control of one company or organization.”8 “Dry” is defined, inter alia, as “free from moisture or excess moisture; not moist, not wet.”9 Thus, Registrant’s mark FLEET-DRY when used in connection with an enamel coating for metal surfaces suggests that Registrant’s coating will keep the surface dry. Since FLEET-DRY is registered on the Principal Register, we operate on the legal assumption, dictated by Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), that Registrant’s mark is a valid trademark entitled to the presumptions included in the statute (i.e., the validity of the registered mark and of the registration of the mark, Registrant is the owner of the mark, and Registrant has the exclusive right to use the mark in commerce). Thus, in view of these presumptions, we have no basis for presuming that the mark in the cited registration has a limited scope of protection.10 Under these circumstances, consumers will perceive the word “Fleet” as the dominant element of both marks because of its location as the first part of the marks. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) 8 CAMBRIDGE DICTIONARY (Dictionary.cambridge.org/us/) attached to the November 23, 2018 Response to Office Action (TSDR 5). Citations to the examination record refer to the Trademark Status and Document Retrieval (TSDR) system in the downloadable .pdf format. 9 Dictionary.com based on THE RANDOM HOUSE UNABRIDGED DICTIONARY (2020) accessed February 14, 2020. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). 10 As discussed above, Applicant failed to submit any admissible evidence of third-party use or registrations of “Fleet” formative marks used in connection with coatings in Class 2. That which Applicant tried to submit has little, if any, probative value. Serial No. 87781412 - 11 - (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”); Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“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); 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). There is nothing improper in stating that, for rational reasons, we give more or less weight to a particular feature of a mark, such as a common dominant element, provided the conclusion rests on a consideration of the marks in their entireties. Viterra, 101 USPQ2d at 1908; In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Applicant contends that the commercial impressions engendered by the marks are different. On one hand, consumers will perceive Registrant’s mark FLEET-DRY as creating the commercial impression of a coating that sheds water and keeps the surface dry. On the other hand, consumers will perceive Applicant’s mark FLEETSPEC as creating the commercial impression of coatings applied to meet certain specifications.11 However, there is no reason that a coating which sheds water and a coating that meets certain specifications are mutually exclusive. For example, a coating specification may be for the coating to shed water. Thus, it is just as likely that consumers familiar with Registrant’s mark FLEET-DRY for “coatings in the 11 Applicant’s Brief, p. 6 (4 TTABVUE 7). Serial No. 87781412 - 12 - nature of quick drying enamels for metal surfaces” upon encountering Applicant’s mark FLEETSPEC for “coatings for truck fleets and trailers” will mistakenly believe that FLEETSPEC is Registrant’s coating product line for trucks and trailers. We find that Applicant’s mark FLEETSPEC is similar in its entirety to the Registered mark FLEET-DRY in terms of appearance, sound, meaning and commercial impression. D. Conclusion Because the marks are similar, the goods are legally identical and, therefore, we presume that the goods are offered in the same channels of trade to the same classes of consumers, we find that Applicant’s mark FLEETSPEC for “coatings for industrial, transportation, commercial, and maintenance purposes, namely coatings for truck fleets and trailers” is likely to cause confusion with the registered mark FLEET-DRY for “coatings in the nature of quick drying enamels for metal surfaces.” III. Applicant’s description of goods The Examining Attorney issued a final requirement that Applicant identify the type of coating.12 The identification of goods is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. In this case, the amended identification describes the goods for which the coatings are intended, but does not identify the nature of the coatings. The applicant must define the nature of the coatings. The applicant must identify the goods and/or services specifically to provide public notice to the average person who does not have an in-depth knowledge of the relevant 12 December 6, 2018 Office Action. Serial No. 87781412 - 13 - field(s) and to enable the USPTO to classify the goods and/or services properly and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d).13 Applicant, however, contends: “Coatings” is the common commercial name for the goods, and the goods were previously amended to recite the intended use of the coatings, namely, “for truck fleets and trailers”. Thus, the Appellant submits that the amended identification of goods is definite.14 Applicants must provide “[a] list of the particular goods or services on or in connection with which the applicant uses … the mark.” Trademark Rule 2.32(a)(6), 37 C.F.R. § 2.32(a)(6). “The PTO will generally accept any identification of goods or services so long as it is ‘specific, definite, clear, accurate, and concise.’” Cordua Rests., 118 USPQ2d at 1639 (quoting TMEP § 1402.01). Because clarity of the identification of goods/services is crucial to its public notice function, however, “[t]he PTO has discretion to determine whether and how a trademark registration should include a more particularized statement of the goods for which the mark is [to] be used.” In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007). Applicant’s description of goods does not include the definiteness required for a clear and particular list of goods because it fails to state the nature of the coating or coatings identified by Applicant’s mark FLEETSPEC. Applicant submitted an excerpt from the BarilCoatings.us website advertising FleetSpec OEM Fleet 13 Id. at TSDR 5. 14 Applicant’s Brief, p. 9 (4 TTABVUE 10). Serial No. 87781412 - 14 - Finishes. The website identified FLEETSPEC as a collection of primers and finishes. It included the following: These systems incorporate cutting edge zine fortified primers with advances Acrylic Enamel, Urethane and Polyester top-coat finish options.15 Accordingly, Applicant is aware that its coatings comprise primers and finishes. Applicant’s description of goods is not so vague, indefinite, or general in character that it prevented us from analyzing the similarity or dissimilarity and nature of the goods. In this regard, as noted above, Applicant contends that “coatings” is the common commercial name for Applicant’s products. Nevertheless, if allowed to stand, future applications might be unnecessarily refused registration because of the indefiniteness of Applicant’s description of goods. The requirement that Applicant define the nature of the coatings is affirmed. Decision: The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act is affirmed. The requirement that Applicant amend the description of goods is affirmed. 15 November 23, 2018 Response to Office Action (TSDR 8).