5tar International Limited

Trademark Trial and Appeal Board

Jun 21, 2019

87456429 (T.T.A.B. Jun. 21, 2019)

Mailed: June 21, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re 5tar International Limited
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Application Serial No. 87456429
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Nicholas D. Wells and Stephen H. Bean of Legends Law Group, PLLC,
for 5tar International Limited.

Teague Avent, Trademark Examining Attorney, Law Office 125,
Heather Biddulph, Managing Attorney.
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Before Kuhlke, Bergsman and Goodman, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

5tar International Limited (Applicant) seeks registration on the Principal
Register for the mark 5TAR and design, shown below, for “luggage; luggage and
trunks; general purpose sport trolley bags,” in Class 18.1

1 Application Serial No. 87456429, filed May 19, 2017, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere as of October 15,
2015, and first use in commerce as of May 1, 2017.
Applicant also claimed a filing basis under Section 44(e) of the Trademark Act, 15 U.S.C.
§ 1126(e), based on Registration No. 014682413 issued by the European Office for
Harmonization in the Internal Market on March 31, 2016.
This Opinion Is Not a
Precedent of the TTAB
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The description of the mark in the application reads as follows:
The mark consists of a rectangular black background
including the wording “5TAR” in white characters, with
five red stars above the wording.
The color(s) black, red and white is/are claimed as a feature
of the mark.
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
resembles the registered mark FIVE STAR (in standard character form) for
“messenger bags, tote bags, backpacks,” in Class 18, as to be likely to cause
confusion.2
Our determination under Section 2(d) is based 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.,
135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each

2 Registration No. 3878189, registered November 16, 2010; Sections 8 and 15 declarations
accepted and acknowledged.
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DuPont factor that is relevant or for which there is evidence of record. See M2
Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.
2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB
2015) (“While we have considered each factor for which we have evidence, we focus
our analysis on those factors we find to be relevant.”). “[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) (internal citations removed).
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, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“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)).
I. The similarity of dissimilarity and nature of the goods.
As noted above, Applicant is seeking to register its mark for “luggage; luggage and
trunks; general purpose sport trolley bags” and the cited mark is registered for
“messenger bags, tote bags, backpacks.” “Luggage” is defined as “suitcases or other
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bags in which to pack personal belongings for traveling.”3 Backpacks are “other bags
in which to pack personal belongings for traveling.” See “What is the Best Backpack-
Suitcase Combo? at Tortuga.com, a blog article analyzing the best elements of a
backpack and a suitcase for a travel backpack.4 The theme of the blog is stated in its
opening sentence: “Suitcases versus backpacks is a common debate among travelers.”
Suitcases and backpacks each have their own strengths
and weaknesses. The ideal piece of luggage would combine
the best parts of each into a suitcase/backpack hybrid.5
Thus, the term “luggage” is broad enough to encompass “backpacks.” 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.’”).
In addition, the Examining Attorney submitted numerous third-party websites
advertising the sale of luggage and backpacks under the same marks. See, e.g.,
Tous.com,6 Kraffs.com,7 American Eagle (ae.com),8 as well as the designer products

3 ENGLISH OXFORD LIVING DICTIONARIES (en.oxforddictionaries.com/definition/us/luggage)
attached to the Examining Attorney’s Brief (9 TTABVUE 9). 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).
4 January 11, 2018 Office Action (TSDR 14-19).
All citations to documents contained in the Trademark Status & Document Retrieval (TSDR)
database are to the downloadable .pdf versions of the documents.
5 Id. at TSER 15.
6 January 11, 2018 Office Action (TSDR 10-13).
7 Id. at TSDR 20-22.
8 October 21, 2018 Office Action (TSDR 44-50).
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at Tommy Hilfiger (usa.tommy.com),9 KateSpade.com,10 Gucci.com,11 and
RaphLauren.com.12
Applicant contends that while the goods at issue differ, it “concedes that the
difference is not significant and that the goods may be related.”13
We find that the goods are related.
II. Established, likely-to-continue channels of trade.
Because the term “luggage” is broad enough to encompass “backpacks,” we
presume that the channels of trade and classes of purchasers are the same. See In re
Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018) (“Because the services
described in the application and the cited registration are identical, we presume that
the channels of trade and classes of purchasers are the same.”); In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (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).

9 Id. at TSDR 6-20.
10 Id. at TSDR 21-43.
11 Id. at TSDR 52-53.
12 Id. at TSDR 55-66. The Ralph Lauren website also includes messenger bags and tote bags.
13 Applicant’s Brief, p. 4 (7 TTABVUE 5).
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In addition, the above-noted third-party websites advertise the sale of luggage and
backpacks through company websites. Thus, luggage and backpacks are offered in at
least one similar channel of trade.
III. The strength of the cited mark including the number and nature of similar
marks in use on similar goods.
To determine the conceptual strength of the cited mark under the sixth DuPont
factor, we evaluate its intrinsic nature, that is, where it lies along the generic-
descriptive-suggestive-arbitrary-fanciful continuum of words. Word marks that are
arbitrary, fanciful, or suggestive are “held to be inherently distinctive.” Wal-Mart
Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000). See
also, In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1684 (Fed. Cir.
2010) (“In general, trademarks are assessed according to a scale formulated by Judge
Friendly in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ
759 (2d Cir. 1976), which evaluates whether word marks are ‘arbitrary’ or ‘fanciful,’
‘suggestive,’ ‘descriptive,’ or ‘generic.’”). We also look to evidence pertaining to the
number and nature of similar marks in use on similar goods or services.
The term “Five Star” is defined as “having five stars to indicate rank or quality”
and “of the highest quality.”14 Further, Applicant submitted 13 third-party
registrations for marks consisting, in part, of FIVE STAR or 5 STAR with the term

14 Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2018) attached to
the September 24, 2018 Response to an Office Action (TSDR 18); see also ENGLISH OXFORD
LIVING DICTIONARIES (en.oxforddictionaries.com/definition/us/five-star) attached to the
September 24, 2018 Response to an Office Action (TSDR 16); Merriam-Webster.com attached
to the September 24, 2018 Response to an Office Action (TSDR 17).
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“Five Star” or “5 Star” disclaimed.15 Third-party registrations may be considered as
a form of a dictionary definition. See Institut National des Appellations D’Origine v.
Vintners Int’l Co. Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (third-
party registrations show the sense in which a word is used in ordinary parlance and
that a particular term has descriptive significance as applied to certain goods or
services); Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926,
198 USPQ 151, 153 (CCPA 1978) (“we find no error in the citation of nine third-party
registrations ‘primarily to show the meaning of * * * [‘zing’] in the same way that
dictionaries are used.’”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1270 (TTAB
2009); General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1277 (TTAB 1972)
(“Although the registrations are not evidence of use, the registrations show the sense
in which the term ‘fiber’ is employed in the marketplace, similar to a dictionary
definition.”). Finally, Applicant submitted numerous third-party websites using the
term “Five Star” and five stars as a rating system. See, e.g., Target.com, Costco.com,
Walmart.com, Etsy.com, and Amazon.com.16
The evidence shows that FIVE STAR is a laudatory term attributing quality or
excellence to goods or services. Generally, laudatory terms are merely descriptive
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). See Duopross
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1759
(Fed. Cir. 2012) (finding SNAP SIMPLY SAFER merely descriptive for “medical

15 December 14, 2018 Request for Reconsideration (4 TTABVUE 7-55).
16 September 24, 2018 Response to an Office Action (TSDR 11-15); see also December 14, 2018
Request for Reconsideration (4 TTABVUE 56-94).
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devices, namely, cannulae; medical, hypodermic, aspiration and injection needles;
medical, hypodermic, aspiration and injection syringes”); In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (finding THE ULTIMATE BIKE RACK
to be merely descriptive and, therefore, subject to disclaimer); In re Boston Beer Co.
L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (finding THE BEST BEER IN
AMERICA so highly laudatory and descriptive as applied to beer and ale that it is
incapable of acquiring distinctiveness). However, because the cited mark is registered
on the Principal Register, it is entitled to the presumptions accorded a registration
pursuant to Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b) (“A certificate of
registration of a mark upon the principal register provided by this chapter shall be
prima facie evidence of the validity of the registered mark and of the registration of
the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to
use the registered mark in commerce on or in connection with the goods or services
specified in the certificate.”). In fact, because the registration has become
incontestable under Section 15 of the Trademark Act, 15 U.S.C. § 1065, the
registration is conclusive evidence of the validity of the registered mark and of the
registration of the mark, of the registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the registered mark in commerce in connection with
the goods specified in the registration.
For purpose of our likelihood of confusion analysis, the registered mark is placed
on the weak side of the “spectrum from very strong to very weak” because it suggests
products that have a very high quality. See Joseph Phelps Vineyards, LLC v.
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Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017).
As a result, a mark comprising, in whole or in part, the term “Five Star,” “5 Star,” or
some variation thereof should be given a narrow scope of protection. See Anthony’s
Pizza & Pasta Int’l, Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1278
(TTAB 2009), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010); Pizza Inn, Inc. v. Russo, 221
USPQ 281, 283 (TTAB 1983). In other words, the cited mark FIVE STAR is not
entitled to such a broad scope of protection that it is a bar to the registration of every
mark comprising, in whole or in part, FIVE STAR, 5 STAR, or some variation thereof;
it will only bar the registration of marks “as to which the resemblance to [the
registered mark] is striking enough to cause one seeing it to assume that there is
some connection, association or sponsorship between the two.” Id. Compare In re
Broadway Chicken, Inc., 38 USPQ2d 1559 at 1566 (TTAB 1996) (wide-spread third-
party use supported the finding that the marks were not likely to cause confusion
because “at least half, if not more, of the third-party telephone directory listings of
enterprises whose trade name names/marks contain the term BROADWAY have
listed addresses on a street, road, avenue, etc., named ‘BROADWAY.’ To purchasers
familiar with these enterprises, the term BROADWAY will have geographic
significance”).
IV. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
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
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elements may be sufficient to find the marks confusingly similar.” In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling
Co., 390 F.2d 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).
“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, 1801 (Fed.
Cir. 2018) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012)); see also Midwestern Pet Foods, Inc. v. Societe
des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012);
San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683, 196 USPQ
1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB
1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The proper focus is on the
recollection of the average customer, who retains a general rather than specific
impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d
1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438
(TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344
(TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
As indicated above, because the goods at issue include luggage and backpacks, the
average customer is an ordinary consumer.
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Applicant is seeking to register 5TAR and design reproduced below and the cited
mark is FIVE STAR.

The marks have the same meaning and engender the same commercial impression
(i.e., five star high quality). In this regard, Applicant submitted excerpts from
Target.com, Costco.com, Walmart.com, Esty.com and Amazon.com displaying five
stars as a rating system for the quality of goods.17
Because the number 5 in the term “5TAR” resembles the letter “S,” because
Applicant’s mark has five stars above 5TAR and because the meaning and
commercial impression engendered by Applicant’s mark, many consumers will refer
to Applicant’s mark as “Five Star” and, thus, Applicant’s mark and the registered
mark sound alike. By submitting seven third-party registrations consisting of the
term “5 Star,” Applicant has conceded that FIVE STAR and 5 STAR are similar.
Applicant relies on In re White Rock Distilleries, Inc., 92 USPQ2d 1282 (TTAB
2009), for the proposition that the prominent design may distinguish marks.18 In
White Rock Distilleries, Applicant applied to register VOLTA (in standard character
form) for vodka infused with caffeine. The examining attorney cited the registration

17 September 24, 2018 Response to an Office Action (TSDR 11-15).
18 Applicant’s Brief, p. 5 (7 TTABVUE 6).
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for the mark TERZA VOLTA and design, shown below, for wine as a bar to
registration.

The Board found that the marks were not similar because of the prominent design
feature and the term “Terza” distinguish the marks. Id. at 92 USPQ2d at 1284. This
case differs from White Rock Distilleries in two significant ways. First, unlike in White
Rock Distilleries, Applicant’s composite mark does not include an arbitrary term like
TERZA to distinguish it from the registered mark. Second, in White Rock Distilleries,
the design element in the composite mark had no meaning with respect to the word
portion, whereas in this case, the design portion of Applicant’s composite mark
consisting of five stars highlights or reinforces the word portion of the mark.
Although the marks have visual differences, because the marks sound alike and
have the same meanings and engender the same commercial impressions, they are
more similar than dissimilar.
V. Conclusion
Because the marks are similar, the goods are related, and the goods are offered in
at least one similar trade channel, we find that Applicant’s mark 5TAR and design
for “luggage; luggage and trunks; general purpose sport trolley bags” is likely to cause
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confusion with the registered mark FIVE STAR for “messenger bags, tote bags,
backpacks.”
In finding that there is a likelihood of confusion, we acknowledge that “Five Star,”
“5 Star,” or some variation is entitled to a narrow scope of protection. Nonetheless,
laudatory marks, such as Registrant’s, are protectable, and especially in a case where,
as here, where substantially similar marks and goods are involved. King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401 182 USPQ 108, 109 (CCPA 1974).

Decision: The refusal to register Applicant’s mark 5TAR and design is
affirmed.