Accessibility Professionals Inc.Download PDFTrademark Trial and Appeal BoardApr 15, 2019EX (T.T.A.B. Apr. 15, 2019) Copy Citation Mailed: April 15, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Accessibility Professionals Inc. _____ Serial No. 87052428 _____ Phillip Thomas Horton of Horton Law, PLLC, for Accessibility Professionals Inc. Doritt Carroll, Trademark Examining Attorney, Law Office 116, Christine Cooper, Managing Attorney. _____ Before Mermelstein, Shaw, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: Applicant Accessibility Professionals Inc. seeks to register on the Principal Register the mark , with “showers” disclaimed, for “showers” in International Class 11.1 1 Application Serial No. 87052428 was filed May 27, 2016, under Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e), based on ownership of Canadian Registration No. TMA789692. The description of the mark states: “The mark consists of the wording ‘FREEDOM SHOWERS’ with the word ‘FREEDOM’ in larger, bolder type and the letter ‘D’ comprised of a curved line that partially encloses the word ‘FREEDOM’.” Color is not claimed as a feature of the mark. This Opinion Is Not a Precedent of the TTAB Serial No. 87052428 - 2 - The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied to the goods identified in the application, so resembles the mark FREEDOM BATH, in standard characters and with “bath” disclaimed, for “bathing cabinets for purposes of bathing, especially for the use of use of [sic] invalids in private homes, nursing homes and hospital locations” in International Class 11,2 as to be likely to cause confusion, to cause mistake, or to deceive. After the Examining Attorney made the refusal final, Applicant requested reconsideration, which was denied, and appealed to this Board. After Applicant filed its appeal brief, the Examining Attorney requested and was granted remand to correct the inadvertent omission of the cited registration from the final refusal.3 The Examining Attorney issued a subsequent Final Office Action based on the cited registration and proceedings resumed. Applicant then filed a supplemental appeal brief, the examining attorney filed her brief, and Applicant filed a reply brief. We affirm the refusal to register. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all 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); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2 Registration No. 3381781, issued February 12, 2008; renewed. 3 Registration initially was refused on the basis of the cited registration and a second registration with the same owner, No. 1921827, which has been cancelled. Serial No. 87052428 - 3 - 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods or services. See 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.”). Strength of the Cited Mark We begin by assessing the strength of the cited mark, which affects the scope of protection to which it is entitled. Applicant argues that FREEDOM, the term shared between its mark and cited mark FREEDOM BATH, is weak: [T]here are over 1500 registered marks that use the word [FREEDOM], and at least 25 of those registered marks are in the same International Class as Applicant. Therefore, as the case law sets forth above, if the primary similarity as between the Applicant’s Trademark and that of the registrant are descriptive in nature, this consideration must also lend to a conclusion of an absence of a likelihood of confusion under du Pont. Appeal Brief at 12, 7 TTABVUE 13. We agree that third-party registrations may be relevant to show the sense in which a mark is used in ordinary parlance; that is, an element common to both parties’ marks may have a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is inherently relatively weak. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); see also In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 Serial No. 87052428 - 4 - (TTAB 2016) (“[T]hird-party registrations are relevant evidence of the inherent or conceptual strength of a mark or term because they are probative of how terms are used in connection with the goods or services identified in the registrations.” With its Request for Reconsideration, Applicant submitted printouts of the results of searches of the USPTO Trademark Electronic Search System (TESS) and third-party registrations comprising FREEDOM in International Class 11.4 Some of the registrations are for unrelated goods such as lighting, but the more relevant existing third-party registrations based on use in commerce are: Registration No. Mark Class 11 Goods 3284999 FREEDOM FLANGE Plumbing fittings, namely, flanges for use in heating and cooling systems 2235673 FREEDOM 2 Portable toilets 1925327 FREEDOM Hot water heaters Although “freedom” may be a commonly used term with a positive connotation, neither the third-party registrations nor other record evidence establishes that “freedom” is descriptive or highly suggestive in association with the identified goods. At most, Registrant’s mark may vaguely imply that its goods give individuals with physical limitations the “freedom” to bathe, but there is no evidence that “freedom” is descriptive of Applicant’s “showers.” Nor is there evidence to support Applicant’s argument that consumers perceive its goods to be “designed to give people the freedom to take a shower without having to take a bath. This is, offering consumers 4 5 TTABVUE 37-68. Serial No. 87052428 - 5 - a way to clean themselves faster by using running water as opposed to stagnant water.” Supplemental Appeal Brief at 15, 13 TTABVUE 16. On this record, we accord the cited mark the normal scope of protection for inherently distinctive marks. Similarity of the Marks Next, we assess the du Pont likelihood of confusion factor focusing on “‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.’” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “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.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Because the similarity of the marks is determined based on the marks in their entireties, our analysis is not predicated on dissecting the marks into their various components. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015). On the other hand, “there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Applicant’s mark and the cited mark share the first term FREEDOM. As we have often said, the lead element in a mark has a position of prominence; it is likely to be Serial No. 87052428 - 6 - noticed and remembered by consumers and so to play a dominant role in the mark. See, e.g., Palm Bay, 73 USPQ2d at 1692 (stating that VEUVE is a prominent feature of the mark VEUVE CLICQUOT because it is the first word in the mark); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (stating that consumers will first notice the identical lead word on encountering the marks); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (stating that dominance of BARR in BARR GROUP is reinforced by its location as the first word in the mark). In each mark, the shared term FREEDOM, in standard text or stylized form, is dominant as the first and only distinctive term. This creates similarity between the two marks in sight, sound, and meaning. The trailing words in Applicant’s mark and the cited mark – SHOWERS (stylized) and BATH, respectively – are generic for the two major types of bathing fixtures. We cannot agree with Applicant that: “Consumers viewing the word ‘FREEDOM’ will think of the idea of freedom, rather than indicating a particular source. As such, consumers will then focus on the second part of the trademarks.” Supplemental Appeal Brief at 9, 13 TTABVUE 10. To the contrary, the disclaimed terms SHOWERS and BATH are not distinctive for the identified goods and cannot serve to identify source. Although we consider the marks as a whole, we find that these two generic terms do little to distinguish them. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018). Applicant argues that consumers may interpret the first word of its mark as either “FREEDOM” or “FREE OM,” and that “one thing is certain: consumers will notice Serial No. 87052428 - 7 - the designed curved line which may make up the ‘D,’ as well as symbolizing the swinging of the shower door.” Reply Brief at 2, 17 TTABVUE 3. We do not agree that the stylized “D” in Applicant’s mark significantly distinguishes it from the cited mark. Although we consider each mark on a case-by-case basis, we normally accord the wording in composite word and design marks greater weight in a likelihood of confusion analysis because the verbal portion is more likely to indicate the origin of the goods and be used by purchasers to request or refer to the goods. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018). Because Registrant’s mark is in standard characters, it is not limited to any particular font style, size, or color. Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a); see also In re Mighty Leaf Tea, 160 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010). Registrant thus could display its mark in a stylized form similar to Applicant’s mark. See Viterra, 101 USPQ2d at 1910-11. And, while there is no correct pronunciation of a mark, we find the first term in Applicant’s mark to be easily recognized as the word “freedom,” as reflected in Applicant’s description of its mark, rather than signifying “free om.” Considered in its entirety, we find that Applicant’s mark creates an overall commercial impression highly similar to the cited mark. The first du Pont factor thus weighs in favor of a finding that confusion is likely. Similarity of the Goods and Channels of Trade We next consider the second and third du Pont factors, the similarity of the goods, channels of trade, and classes of customers. Applicant’s goods are “showers,” while Serial No. 87052428 - 8 - Registrant’s goods are “bathing cabinets for purposes of bathing, especially for the use of use of invalids in private homes, nursing homes and hospital locations.” Applicant’s arguments that the trade and marketing channels for these goods are distinct do not acknowledge the obvious fact that private homes, nursing homes, and hospitals, the target markets for Registrant’s bathing cabinets, also are highly likely to feature showers. Said another way, although Registrant’s purchasers and channels of trade are limited, Applicant’s are not and include those of Registrant. Thus, they overlap. Applicant argues that “it is common that consumers at these types of places need help cleaning themselves. As such, they have no need for showers and must focus strictly on enclosures that can hold water.” Supplemental Appeal Brief at 16, 13 TTABVUE 17. This argument is unsupported by any evidence and is contrary to the common-sense observation that “invalids” may be assisted with showering as well as bathing. Applicant’s argument is particularly disingenuous given that, as the Examining Attorney notes, the goods in the foreign registration on which the application is based include “showers for disabled,” and the goods actually offered by Applicant include “portable handicap accessible showers.”5 In addition, the record indicates that patients actually are showered rather than bathed inside Registrant’s “bathing cabinets.”6 The second and third du Pont factors also support a finding that confusion is likely. 5 July 31, 2017 Final Office Action at TSDR 2-5 (from Applicant’s website). 6 September 12, 2016 Office Action at TSDR 8 (from Registrant’s website). Serial No. 87052428 - 9 - Consumer Sophistication Applicant contends that consumers of the relevant goods “are sophisticated, careful consumers because they are dealing with expensive, self-serving [sic] goods that have an impact on their daily lives.” Reply Brief at 4, 17 TTABVUE 5. Purchasers of these goods, Applicant argues, “are not likely to impulsively select how they will wash themselves, especially if they have bodily limitations.” Id. There is no evidence establishing the prices of the respective goods. While we think it is fair to assume that Registrant’s goods are not inexpensive and that their customers may exercise care, we cannot make the same assumption about Applicant’s goods and customers. “Showers” encompasses the full range of such goods, including showers that are inexpensive and may be purchased with little care. We find that the fourth du Pont factor, “the conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing,” weighs slightly in Applicant’s favor. Absence of Evidence of Actual Confusion Finally, we consider Applicant’s argument that there is no evidence of actual confusion between its goods and Registrant’s goods. Applicant contends that it “has sold thousands of Freedom Showers to homes in the US and Canada every year and has been one of the top online retailers in the accessible shower space for over 10 years.” Supplemental Appeal Brief at 16, 13 TTABVUE 17. There is no evidence, however, that Applicant has used its mark in the United States at all. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (“Attorney argument is no substitute for evidence.”) (citations omitted). Serial No. 87052428 - 10 - In the ex parte context, moreover, lack of evidence of actual confusion typically carries little weight. Majestic Distilling Co., 65 USPQ2d at 1205; Integrated Embedded, 120 USPQ2d at 1515. It is not probative unless it is accompanied by evidence demonstrating that in light of the parties’ actual business activities, confusion, if likely, would have occurred. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); see also, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1163-64 (Fed. Cir. 2019) (discussing lack of evidence of actual confusion in more than 40 years of concurrent use in the same geographic market). There is no such evidence here. The eighth du Pont factor is neutral. Conclusion We have considered all arguments and evidence of record as they pertain to the relevant du Pont likelihood of confusion factors. To the extent that any other du Pont factors for which no evidence was presented by Applicant or the Examining Attorney may nonetheless be applicable, we treat them as neutral. As discussed in detail above, the fourth du Pont factor weighs slightly in Applicant’s favor, but all of the other relevant factors either are neutral or weigh in favor of a finding that confusion is likely. We find that Applicant’s mark is likely to cause confusion with the mark in Registration No. 3381781 when used on showers. Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation