No. 85556033 (T.T.A.B. Jan. 22, 2014)

Adam Khatib

Trademark Trial and Appeal BoardJan 22, 2014

No. 85556033 (T.T.A.B. Jan. 22, 2014)

Matthew David Y Managi Before K Opinion A standar in Inter T Tradem resembl 1 Applic assertion UNIT H. Swye ontef, Tra ng Attorne uhlke, Ly by Greenb dam Khat d characte national C he exami ark Act, es the pre ation Seria of his bona P ED STAT Trad rs of the Tr demark Ex y). kos and G aum, Adm ib (applica r mark EN lass 25.1 ning attor 15 U.S.C. viously reg l No. 8555 fide intent THIS OPI RECEDEN ES PATEN emark Tr In re A Serial ademark amining A reenbaum, inistrativ nt) seeks DORPHIN ney refus §1052(d) istered m 633 was fi to use the NION IS N T OF TH T AND T _____ ial and Ap _____ dam Kha _____ No. 855560 _____ Company f ttorney, L _____ Administr e Tradema registratio S for “ha ed registr , on the ark led Februa mark in com OT A E TTAB RADEMAR peal Board tib 33 or Adam K aw Office ative Trad rk Judge: n on the ts; sweats ation und ground th ry 29, 201 merce. Mail Janu K OFFIC hatib. 105 (Thom emark Ju Principal R hirts; t-shi er Sectio at applica for a vari 2, based u ed: ary 22, 20 E as G. How dges. egister of rts; tank t n 2(d) of nt’s mark ety of clot pon applic 14 ell, the ops” the so hing ant’s Serial No. 85556033 2 items including hats and t-shirts in International Class 25, as to be likely to cause confusion when used on applicant’s goods.2 This appeal ensued following a final refusal and a denial of applicant’s request for reconsideration. As discussed below, we affirm the refusal. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, 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 (CCPA 1976). We turn first to a consideration of the goods, channels of trade and class of purchasers. We must make our determinations under these factors based on the goods as they are recited in the registration and application. See In re Elbaum, 211 USPQ 639 (TTAB 1981). In this case, the goods in the application and cited registration include identical hats and t-shirts. It is sufficient for a finding of likelihood of confusion if the relatedness is established for any item encompassed by the identification of goods within a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981). Further, because the goods include identical hats and t-shirts, and there are no limitations as to channels of trade or classes of purchasers in either the 2 Registration No. 3927040, issued March 1, 2011 to Endorphin Corporation. Serial N applicat goods w classes (Fed. Ci In channel W descript of goods as well with a likelihoo 1899 (F impulse of such omitted W between analyze commer Maison quoting o. 855560 ion or cite ill be sold of purchas r. 2012); In view of t s of trade a ith regar ion of good are not r as expensi great deal d of confu ed. Cir. 2 buying, th products ). This fact e turn th applicant “the mar cial impre Fondee E du Pont, 1 33 d registrat in the sa ers. See In re Smith he above, nd classes d to the s in the ap estricted a ve clothing of care or sion. Reco 000) (“Wh e risk of are held or also fav en to the ’s mark E ks in thei ssion.” P n 1772, 39 77 USPQ ion, we m me chann re Viterra and Meha the du Po of purcha condition plication s to price, . Inexpens require p t Inc. v. M en produc likelihood to a less ors a findi du Pont NDORPH r entiretie alm Bay 6 F.3d 13 at 567. Th 3 ust presum els of trad Inc., 671 F ffey, 31 US nt factors sers favor s of sale, and registr the goods ive hats a urchaser s .C. Becton ts are re of confusio er standar ng of likeli factor of t INS and r s as to ap Imports 69, 73 US e proper te e that ap e and will .3d 1358, PQ2d 153 of the sim a finding o because ation and at issue m nd t-shirts ophisticat , 214 F.3d latively lo n is incre d of purc hood of co he similar egistrant’s pearance, Inc. v. Ve PQ2d 168 st is not a plicant's a be bough 101 USPQ 1 (TTAB 1 ilarity of f likelihoo we are because th ust inclu would no ion, which 1322, 54 w-priced a ased becau hasing ca nfusion. ities and mark sound, co uve Clicq 9, 1691 (F side-by-si nd registra t by the s 2d 1905, 994). the goods d of confu bound by e descript de inexpen t be purch increases USPQ2d 1 nd subjec se purcha re”) (citat dissimilar nnotation uot Ponsa ed. Cir. 2 de compar nt’s ame 1908 , the sion. the ions sive ased the 894, t to sers ions ities . We and rdin 005) ison Serial N of the m their co likely to Learnin omitted present the degr of likeli America the mar feature give m impress USPQ 7 In mark minima In re De USPQ2d element (App. B ENDOR o. 855560 arks, but mmercial i assume a g LLC, 66 ). In mak case, regis ee of simi hood of co , 970 F.2d ks at issue of a mark ore weigh ion created 49 (Fed. C this case l and do n combe, 9 U 1553 (TT in registr r., p. 9), PHIN, an 33 instead ‘w mpression connectio 8 F.3d 13 ing this d trant’s goo larity betw nfusion de 874, 23 U must be may be m t to this by the m ir. 1985). , the word . The sty ot overcom SPQ2d 1 AB 1987) ant’s mar the design d does no hether th ’ such tha n between 56, 101 U eterminat ds include een the m clines. Cen SPQ2d 1 considered ore signifi dominan ark. See I ENDORP lization an e the dom 812, 1814 . To the e k as a “m merely s t distingui 4 e marks a t persons w the parti SPQ2d 17 ion, we ar goods tha arks whic tury 21 R 698 (Fed. in their e cant than t feature n re Natio HIN is th d design inance of (TTAB 198 xtent cons olecular d erves to v sh registr re sufficie ho encou es.” Coach 13, 1721 ( e mindfu t are iden h is neces eal Estate Cir. 1992) ntireties, i another, a in deter nal Data C e domina element i the litera 8); In re A umers wo esign of t isually re ant’s mar ntly simil nter the m Servs., In Fed. Cir. l that wh tical to app sary to sup Corp. v. C . Furtherm t is well-s nd it is n mining th orp., 753 nt portion n registra l element ppetito Pr uld recogn he chemic present th k from ap ar in term arks woul c. v. Triu 2012) (cita ere, as in licant’s go port a fin entury Li ore, altho ettled that ot imprope e comme F.2d 1056, of registra nt’s mark ENDORPH ovisions C ize the de al endorph e literal t plicant’s m s of d be mph tion the ods, ding fe of ugh one r to rcial 224 nt’s are IN. o., 3 sign in,” erm ark Serial No. 85556033 5 ENDORPHINS. In re Max Capital Group. Ltd., 93 USPQ2d 1243, 1247 (TTAB 2010); Appetito, 3 USPQ2d at 1554. In addition, applicant’s mark ENDORPHINS is simply the plural form of the word ENDORPHIN. Contrary to applicant’s assertions, there is no material difference between singular and plural forms of the same term. See, e.g., In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969). In view of the foregoing, we find that when applicant's mark and registrant's mark are compared in their entireties, they are sufficiently similar in appearance, sound, connotation and commercial impression that, if used in connection with related goods, confusion would be likely to occur. As such, this du Pont factor favors a finding of likelihood of confusion. The next factor we consider is that of third-party use. As applicant points out, evidence of third-party use can be used to show that a registrant's mark is weak and thus entitled to a limited scope of protection. To this end, applicant submitted copies of seven active third-party registrations, which, according to applicant, “incorporate[e] the term ‘ENDORPHINS’ and literal equivalents thereof used in relation to similar goods.” App. Br., p. 9. However, unlike the marks in the application and cited registration, none of the third-party registrations consists of the words ENDORPHINS or ENDORPHIN alone or with a minimal design element.3 In addition, five of the seven third-party registrations are for services, and not clothing, and the two third-party registrations for clothing (ENDORPHIN 3 The third-party registrations are for the following marks: ENDORPHIN WARRIOR; GOT ENDORPHINS?; ENDORPHUN SPORTS; SWIM WITH THE ENDORPHINS; EF ENDORPHIN FITNESS; ENDOMONDO FREE YOUR ENDORPHINS; and NDORFNZ. Serial N WARRI impress event, t use of th re Alber Mucky Moreove that is America evidenc weak on 75 USP Rocket (ELEME W and all specifica in the ENDOR the iden or spons o. 855560 OR and G ions that a he third-p e marks i t Trostel Duck Mu r, third-p likely to ca n Leisure e does not its face fo Q2d 1313 Trademar NTS wea hen we co of applica lly addres appearan PHINS an tical good orship of s 33 OT END re quite d arty regist n commer & Sons Co stard Co. arty regist use confu Products, show that r clothing (TTAB 200 ks Pty Lt k on its fac nsider the nt's argum sed herein ce, sound d registra s involved uch goods OPRHINS ifferent fro rations ar ce or that ., 29 USP Inc., 6 U rations ca sion with Inc., 177 the term E . See, e.g., 5) (ESSEN d. v. Pha e for cloth record an ents rela , we concl and com nt's mark in this cas . 6 ?) are fo m applica e of limite the public Q2d 1783 SPQ2d 1 nnot assis a register USPQ 26 NDORPH Knight Te TIALS is rd S.p.A., ing). d the relev ting there ude that in mercial i e is likely r marks nt’s and re d value as is familia , 1785-86 467, 1470 t applican ed mark. S 8 (CCPA IN in its s xtile Corp. weak on i 98 USPQ ant likelih to, includi view of t mpression , their to cause c that crea gistrant’s they are n r with the (TTAB 19 at n. 6 t in regis ee AMF I 1973). Ac ingular or v. Jones I ts face for 2d 1066 ood of con ng those a he substan s of app contempor onfusion a te comme marks. In ot eviden m. See, e.g 93); and I (TTAB 19 tering a m ncorporate cordingly, plural for nvestment clothing), (TTAB 2 fusion fac rguments tial simila licant's m aneous us s to the so rcial any ce of ., In n re 88). ark d v. the m is Co., and 011) tors, not rity ark, e on urce Serial No. 85556033 7 Decision: The refusal to register based on a likelihood of confusion under Section 2(d) of the Trademark Act is affirmed.