Thus, while the goods and services are not identical, they substantially overlap, which weighs in favor of finding a likelihood of confusion. See Hewlett-Packard , 281 F.3d at 1268 (finding confusion to be likely between HEWLETT PACKARD and PACKARD TECHNOLOGIES where "several of HP’s registrations cover goods and services that are closely related to the broadly described services that Packard Press seeks to register"); In re Hyper Shoppes (Ohio), Inc. , 837 F.2d 463, 464 (Fed. Cir. 1988) ("[A]pplicant’s ‘general merchandise store services’ would include the sale of furniture .... What else it sells is irrelevant; there is overlap.").Indeed, the record evidence shows that several third-party apparel retailers—i.e., Adidas, Hanes, Nike, and Puma—sell clothing bearing their own marks in addition to clothing bearing sports team names and logos.
NetJets argues that it uses the INTELLIJET mark for software that is used to perform various aspects of its private aviation operations, which are related to IntelliJet Group's aviation services. In support of its proposition, NetJets cites Wynn Oil Co. v. Thomas, 839 F.2d 1183 (6th Cir. 1988), and In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463 (Fed. Cir. 1988). But in Wynn Oil, we found that there was a likelihood of confusion between two car care product companies, where one sold bulk car wax for use in car washes and the other sold numerous car finishing products, including waxes.
Tribe of Two argues that "all doubts as to whether confusion, mistake, or deception is likely should be resolved in favor of the senior user." Appellant's Br. 47 (citing In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65 (Fed. Cir. 1988), and Century 21 Real Est. Corp. v. Century Life of Am., 970 F.2d 874, 878 (Fed. Cir. 1992)). Tribe of Two, however, has not identified where the TTAB has expressed any doubt regarding a likelihood of confusion between the marks.
Considering all the factors, and for the reasons we have discussed, we conclude that there is a likelihood of confusion between the registrant's mark RIGHT-A-WAY and design and Shell's mark RIGHT-A-WAY and design. Doubt is resolved against the newcomer, In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988), for the newcomer has the opportunity of avoiding confusion, and is charged with the obligation to do so. At the hearing Shell argued that doubt should be resolved by approving the application for registration, and publishing the mark for opposition. The purpose of trademark examination is for the Office to determine the issue of likelihood of confusion in ex parte proceedings with the applicant.
Therefore, L'Oreal's knowledge of ZHD's use defeats any claim L'Oreal may have to priority. One of the keys here seems to be the use of ZAZU as a service mark connected with the provision of salon services by ZHD. A service mark can be infringed by its use on a closely related product.See, e.g., Re Hyper Shoppes (Ohio), Inc., 837 F.2d 463 (Fed. Cir. 1988) (affirming refusal to register two "closely related" marks: one for furniture and the other for general merchandise services that included the sale of furniture); Steelcase, Inc. v. Steelcare, Inc., 219 U.S.P.Q. 433 (TMTAB 1983) (mark used for furniture refinishing service likely to be confused with mark used for office furniture); see also 2 J. Thomas McCarthy, Trademark and Unfair Competition § 24:6, at 71 (2d ed. 1984 Supp. 1991) (stating that "[w]here the services consist of retail sales services, likelihood of confusion is found when another mark is used on goods which are commonly sold through such a retail outlet"). A service and a product are related if buyers are likely to assume a common source or sponsorship.
" In such instances, "[a]ny doubts about likelihood of confusion . . . must be resolved against applicant as the newcomer." In re Hyper Shoppes (Ohio), 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); accord Giant Food v. Nation's Foodservice, 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983); SquirtCo v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983). This is especially true when the prior mark is famous.
In reaching this conclusion, we are well aware that "[a]ny doubts about likelihood of confusion ... must be resolved against applicant as the newcomer." In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988) (citation omitted). See Crown Radio Corp. v. Soundscriber Corp., 506 F.2d 1392, 1393, 184 USPQ 221, 223 (CCPA 1974) (doubt resolved against newcomer in cancellation proceeding).
Furthermore, as to the third factor - the similarity of the plaintiff's and defendant's products - while the goods may not be identical, they substantially overlap, both being South Asian snack and food products, which weighs in favor of finding a likelihood of confusion. See Xtreme Lashes, LLC, 576 F.3d at 227; see also Hewlett-Packard Company v. Packard Press, Inc., 281 F.3d 1261, 1266, 1268 (Fed. Cir. 2002) (finding confusion to be likely between HEWLETT PACKARD and PACKARD TECHNOLOGIES where “several of HP's registrations cover goods and services that are closely related to the broadly described services that Packard Press seeks to register under the PACKARD TECHNOLOGIES mark[]”); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464 (Fed. Cir. 1988) (“[A]pplicant's ‘general merchandise store services' would include the sale of furniture ....What else it sells is irrelevant; there is overlap.”).
See, e.g., In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464 (Fed. Cir. 1988) (upholding Trademark Trial and Appeal Board rejection of registration of "Biggs" mark in connection with "general merchandise services" due to likely confusion with previously registered "Biggs" mark for use on "wooden and upholstered furniture"); Beef/Eater Restaurants, Inc. v. James Burrough, Ltd., 398 F.2d 637, 639 (former 5th Cir. 1968) ("It is true that appellant operates a restaurant and appellees on the other hand make and vend gin. Both are consumable and it is repeatedly held that the parties need not be in competition and that the goods or services need not be identical.") Defendant takes great pains to attempt to distinguish these and other cases cited by Plaintiffs on the grounds that the "senior" users in those cases were trademark holders, while the "junior" users were service providers.
Id. (adding that any doubt regarding the likelihood of confusion was to be resolved in favor of HM's existing mark) (citing In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463 (Fed.Cir. 1988)). The court recognizes, of course, that the filing of Interland's "blueHALO Architecture" application predated the actual registration of HM's "HALO" mark by some twelve days.