America Directo Corporation

Trademark Trial and Appeal Board

Jul 19, 2016

No. 86406889 (T.T.A.B. Jul. 19, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: July 19, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re America Directo Corporation
_____

Serial No. 86406889
_____

Matthew H. Swyers of the Trademark Company PLLC
for America Directo Corporation.
Howard Smiga, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Wolfson, Lykos and Pologeorgis,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On September 26, 2014, America Directo Corporation (“Applicant”) filed an
application to register on the Principal Register the mark SMARTSOCKS in standard
characters for “[h]osiery; [s]ocks” in International Class 25.1
The Trademark Examining Attorney refused registration of 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 following two registered marks, each owned by

1 Application Serial No. 86406889, filed under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), alleging a bona fide intent to use the mark in commerce.
Serial No. 86406889
- 2 -
different individuals, that when used on or in connection with Applicant’s identified
goods, it is likely to cause confusion or mistake or to deceive:2
Registration No. 2734333 for the mark SMART SOCKS SOCKS THAT THINK
ON YOUR FEET displayed below for “Hosiery, namely socks” in International
Class 25:3

Registration No. 4649441 for the mark, “HEEL 2 HEAL SMARTSOCKS”
displayed below for “socks” in International Class 25:4

2 The Examining Attorney also initially refused registration on the ground that the mark is
merely descriptive within the meaning of Trademark Act Section (2)(e)(1), 15 U.S.C.
§ 1052(e)(1). This refusal was later withdrawn.
3 Issued July 8, 2003 on the Principal Register with a disclaimer of SMART SOCKS; renewed.
The description of the mark is as follows: “The mark consists of the words ‘smart socks’ with
the word ‘smart’ being the color gold and the word ‘socks’ being the color white. The words
‘socks that think on your feet’ are the color gold. The design element is in white and the
background color upon which the mark is displayed is black.”
4 Issued December 2, 2014 on the Principal Register with a disclaimer of SMARTSOCKS. The
description of the mark is as follows: “The mark consists of the wording ‘HEEL 2 HEAL’ with
the number ‘2’ stylized to look like the shape of a person’s foot or a heeled shoe with toes
showing; the wording ‘SMARTSOCKS’ appears beneath the term ‘HEAL’. Color is not
claimed as a feature of the mark.
Serial No. 86406889
- 3 -
Applicant has appealed the final refusal to register the mark, and the appeal is
now briefed.
Likelihood of Confusion Analysis
We base our determination under Section 2(d) on an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). In any likelihood of confusion analysis, however, two key considerations are
the similarities between the marks and the similarities between the goods. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These
factors and others are discussed below. See M2 Software, Inc. v. M2 Commc’ns, Inc.,
450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir. 2006) (even within du Pont list, only
factors that are “relevant and of record” need be considered).
The Goods and Channels of Trade
We turn first to the goods. It is undisputed, and Applicant concedes, that the
application and cited registrations each share the common product of “socks.” See
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Given the identity of the
goods in part and absence of restrictions, we must also presume that these goods
travel in the same ordinary trade and distribution channels and will be marketed to
Serial No. 86406889
- 4 -
the same potential consumers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels
of trade and classes of consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion); 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);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). Accordingly, with respect to both of
the cited registrations, the du Pont factors regarding the relatedness of the goods as
described in the application and registration as well as the similarity of established,
likely to continue trade channels both weigh in favor of finding a likelihood of
confusion.
The Marks
We now turn to the du Pont likelihood of confusion factor which involves an
analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). “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) (quoting Leading Jewelers Guild,
Serial No. 86406889
- 5 -
Inc. v. LJOW Holdings, LLC, 82 USPQ2d, 1901, 1905 (TTAB 2007)). The focus is on
the recollection of the average purchaser, who normally retains a general rather than
a specific impression of trademarks. In re Binion, 93 USPQ2d 1531 (TTAB 2009);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). That being said, our
analysis cannot be predicated on dissection of the involved marks. Stone Lion, 110
USPQ2d at 1161. Rather, we are obliged to consider the marks in their entireties. Id.
See also, Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234
(CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”). Nonetheless, 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 a consideration of the marks in their entireties. Stone
Lion, 110 USPQ2d at 1161.
Commencing first with Registration No. 2734333 for the mark SMART SOCKS
THAT THINK ON YOUR FEET and design, we find this cited mark to be similar in
appearance, sound, connotation and commercial impression when compared to
Applicant’s mark. The dominant portion of the registered mark is “SMART SOCKS”
because it appears in relatively larger sized, bold lettering. The tag line SOCKS
THAT THINK ON YOUR FEET appears in significantly smaller lettering, and given
its meaning, merely serves to reinforce the dominance of the term SMART SOCKS.
In addition, the presence of the circular design element in the cited mark fails to
mitigate the similarities. When a mark consists of a literal portion and a design
Serial No. 86406889
- 6 -
portion, the literal portion is more likely to be impressed upon a purchaser’s memory
and to be used in calling for the goods and/or services; therefore, the literal portion is
normally accorded greater weight in determining whether marks are confusingly
similar. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also
CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir. 1983); In
re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011). The circular
design in the mark of this cited registration merely serves as a carrier for the wording
and is not a distinctive design element with strong source-identifying characteristics.
Thus, when compared to Applicant’s mark SMART SOCKS, both marks engender
highly similar meanings and commercial impressions.
We reach a different result, however, as to Registration No. 4649441 for the mark,
displayed below:

The dominant portion of this cited mark is the much visually larger phrase “Heel 2
Heal” while the term “SMARTSOCKS’ is relegated to the right bottom corner and is
proportionally smaller. Consumers are much more likely to remember the phrase
“Heel 2 Heal” in calling for the goods because it appears first. Palm Bay Imports, 73
USPQ2d at 1692 (“VEUVE nevertheless remains a ‘prominent feature’ as the first
word in the mark”). The phrase “Heel 2 Heal” is also a play on words engendering its
Serial No. 86406889
- 7 -
own distinct connotation and meaning and is sufficiently distinct from Applicant’s
mark in its overall appearance and pronunciation. Thus, both the content and pattern
of the words are sufficiently dissimilar such that consumers would readily distinguish
the marks on this basis. We therefore find that the marks are distinct in appearance,
sound, connotation and commercial impression.
Conclusion
We have carefully considered all of the evidence of record and arguments
pertaining to the du Pont likelihood of confusion factors, including any evidence and
arguments not specifically addressed in this opinion. We treat as neutral any du Pont
factors for which there is no evidence or argument of record. With regard to
Registration No. 2734333, each of the du Pont factors discussed above favor a finding
of likelihood of confusion. However, with regard to Registration No. 4649441, despite
the fact that the goods are identical and the trade channels are presumed identical
due to the legal presumptions we are entitled to make, we find the differences in the
marks to be dispositive. See Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21
USPQ2d 1142, 1145 (Fed. Cir. 1991).
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed as to
Registration No. 2734333 but reversed as to Registration No. 4649441.