Ballantyne Brands, LLCv.Mistix, Inc.

Trademark Trial and Appeal Board

Mar 3, 2015

No. 91217948 (T.T.A.B. Mar. 3, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Ballantyne Brands, LLC
v.
Mistix, Inc.
_____

Opposition No.: 91217948
_____

Nancy Kennedy of Alix, Yale & Ristas LLP for
Ballantyne Brands, LLC

Wendy Peterson of Not Just Patents LLC for
Mistix, Inc.
_____

Before Cataldo, Wellington and Masiello,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Mistix, Inc. (“Applicant”) has filed an application to register the following mark
for “electronic cigarettes” in International Class 34:1

1 Application Serial No. 85966798, filed on June 21, 2013, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on an allegation of first use in commerce on
June 2, 2013.
Opposition Nos. 91217948
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The mark is described in the application as “the word MISTIV in black lettering
with the blue design over the first letter I in the mark and with the letter V having
a shaded blue center.” The use of the colors black and blue is claimed as a feature of
the mark.
Ballantyne Brands, LLC (“Opposer”) opposes registration of this mark on the
ground of likelihood of confusion. Opposer pleaded ownership of, inter alia, the two
following registrations:2
MISTIC (in standard character format)3

and

4

The goods identified in both registrations are “electronic cigarettes; structural and
replacement parts and fittings for electronic cigarettes” in International 34.

2 Although Opposer pleaded ownership of several other marks containing the element
MIST, the two registered marks shown above in the body of this decision are closest to
Applicant’s mark and more likely to support Opposer’s opposition based on a likelihood of
confusion. That is, to the extent that there would be confusion with these two registered
marks, it would serve little purpose to consider the other registrations. And if there is no
confusion with either of the two registered marks, there would similarly be no confusion
with the marks in the other registrations. Finally, to the extent that Opposer was seeking
to rely on common law rights in any marks, the record does not establish these rights.
3 Registration No. 4041974 issued on October 18, 2011.
4 Registration No. 4295174 issued on February 26, 2013. The mark is described in the
registration as consisting of “the word ‘mistic’ in black, lower case letters with a red square
below the second leg of the letter ‘M’, a red square above the letter ‘I’, and a red square after
the letter ‘C’.”
Opposition Nos. 91217948
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Opposer alleges that the opposed application “identifies the exact same goods, in
the same class, as Opposer’s Registrations, namely, ‘electronic cigarettes’ in Class
34.”5 Opposer also alleges that the applied-for mark is “visually and aurally nearly
identical” to the two aforementioned pleaded registered marks and thus the marks
are “confusingly similar.”6
Applicant, in its answer, denied the salient allegations of the Notice of
Opposition.
A. Accelerated Case Resolution (ACR)
The Board, in an interlocutory order issued on November 12, 2014,
acknowledged that the parties had agreed during their discovery conference to
proceed under ACR procedures. Shortly thereafter, the parties filed an “Agreement
for Accelerated Case Resolution”7 encapsulating several stipulations intended to
expedite and simplify the opposition proceeding. Among the stipulations, the parties
agreed to the following: they will use the Board’s electronic filing system, ESTTA,
for Board filings and will serve each other by email; initial and pretrial disclosures,
as well as discovery, are waived; there will be no trial and the parties will file ACR
briefs with accompanying evidence on a specific schedule; no depositions will be
conducted; materials normally submitted under a notice of reliance may be

5 Notice of Opposition ¶ 10 (1 TTABVUE 9). Record citations are to TTABVUE, the
Trademark Trial and Appeal Board’s publically available docket history system. See Turdin
v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
6 Notice of Opposition ¶ 9 (1 TTABVUE 9).
7 9 TTABVUE.
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submitted with the parties’ ACR briefs; declarations or affidavits may be submitted
in lieu of testimony depositions; and the parties reserve the right to object to
evidence on substantive grounds or attack the probative value of the evidence. The
Board approved the stipulated ACR agreement and the procedures detailed
therein.8 Accordingly, the parties filed ACR briefs, with evidence attached thereto,
including a reply brief from Opposer.9
B. The Record
The record in this case consists of the pleadings and, by rule, the file of the
involved application. Trademark Rule 2.122(b)(1). Opposer submitted, with its ACR
brief,10 copies of its pleaded registrations as well as corresponding printouts from
the Board’s electronic database, TESS, for these registrations. Applicant submitted,
with its ACR brief,11 the following: a copy of a technical report (dated July-August
2013) titled “Peering through the mist: What does the chemistry of contaminants in
electronic cigarettes tell us about health risks?”; Wikipedia printout for “Electronic
cigarette”; and a copy of the definition of the adjective suffix “-ic” obtained from the
Merriam-Webster dictionary website, as well as printouts from the same dictionary
website for the term “mistiv.”

8 Board order issued on November 19, 2014. 10 TTABVUE.
9 Applicant objected to Opposer’s filing of its ACR brief as untimely and improperly served
(by regular mail instead of email as agreed upon in the ACR stipulation). However, as
acknowledged in the Board’s order dated January 30, 2015 (15 TTABVUE), Applicant
withdrew this objection and all ACR briefs have been considered.
10 11 TTABVUE.
11 12 TTABVUE.
Opposition Nos. 91217948
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C. Opposer’s Standing and Priority
Because the two pleaded registrations for the marks MISTIC (in standard
character form) and MISTIC (stylized with design) are of record, this is sufficient to
establish Opposer’s standing and removes priority as an issue with respect to these
registered marks and goods vis-à-vis Applicant’s mark and goods. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and King Candy
Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
D. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); In re Majestic Distilling Company, Inc., 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 and 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.”).
Identity of Goods; Trade Channels and Classes of Customers
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There is no question that the goods are identical inasmuch as the involved
application and the two pleaded registrations cover “electronic cigarettes.”
Furthermore, and because the goods are identical, we must presume that the goods
move in the same channels of trade and are sold to the same classes of consumers.
See American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994). See also In re Viterra Inc., 671 F.3d 1358, 1362,
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).
Accordingly, the factors involving the relatedness of the goods, trade channels
and classes of consumers all strongly weigh in favor of a finding of likely confusion.
Similarity of the Marks
We now consider the similarity or dissimilarity of the marks at issue in terms of
appearance, sound, meaning, and overall commercial impression. Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). In comparing the marks, we are mindful that
“[w]hen marks would appear on virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely confusion declines.” Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB
Opposition Nos. 91217948
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2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d
1323, 1325 (TTAB 2007).
Here, Applicant’s mark, , is similar to both of the cited
registered marks inasmuch as they all begin with the element MISTI and the literal
portions of the marks differ only as to the last letter. Moreover, the font of the
letters in the registered stylized mark, , is reminiscent of that used
in Applicant’s mark and both marks have a colored, square-shaped “dotting of the
letter I,” albeit in a different color and different I’s. We must also assume that the
registered standard character mark, MISTIC, may appear in the same font as
Applicant’s mark. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1258-59 (Fed. Cir. 2011).
As to sound, although there is no correct pronunciation of a trademark, the fact
that the marks begin with the same first five letters and only differ in the last letter
will certainly create aural similarity. See Interlego AG v. Abrams/Gentile Entm't
Inc., 63 USPQ2d 1862, 1863 (TTAB 2002) (finding similarity between LEGO and
MEGO, despite the applicant's contention that consumers would pronounce MEGO
as “me go”).
With respect to the marks’ commercial impressions or connotations, there is
evidence that the term “mist” has significance in connection with electronic
cigarettes. In particular, the “technical article” and Wikipedia evidence submitted
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by Applicant indicate that electronic cigarettes emit or create an aerosol that may
be referred to as a “mist” or “vapor,” similar to tobacco cigarettes creating smoke.12
The term “mist” is also used descriptively by Opposer in its website (“the Mistic
produces just a water vapor mist that tastes and acts like smoke.”)13 Based on this
evidence, Applicant concludes that Opposer’s MISTIC marks are merely the
combination of “a descriptive prefix and a nondistinctive suffix –IC with regard to
the subject goods,”14 whereas Applicant’s own mark is “fanciful” and “has no
dictionary meaning.” Brief, p. 6. Applicant also argues that “Opposer’s marks are
weak and entitled to only a narrow scope of protection.” Id. at p. 5.
In light of the evidence showing that the term “mist” has some significance in
the context of electronic cigarettes, both MISTIV and MISTIC may be viewed as
having some conceptual weakness because they incorporate the suggestive or
descriptive term “mist” into their marks. However, there is no real difference in the
suggestive nature of the marks to the extent that consumers focus on the MIST
elements of the marks. In other words, consumers of electronic cigarettes are likely
to view the MIST element of each mark as reflecting the fact that the goods create a
mist. While Opposer’s addition to this term may be a recognized suffix and
Applicant’s addition of “-IV” is not, this hardly changes the suggestive meaning of

12 See, e.g., Wikipedia printout (“[electronic cigarettes] do not produce cigarette smoke but
rather an aerosol (mist), which is commonly but inaccurately referred to as vapor.”) 12
TTABVUE 38.
13 12 TTABVUE 41.
14 Applicant relies on the definition provided by the Merriam-Webster dictionary website
defining “-IC” as an adjective suffix meaning “of or relating to.” 12 TTABVUE 53.
Opposition Nos. 91217948
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the marks, i.e., the suggestion of “mist.” Although Applicant does not argue the
point, we note that Opposer’s mark may be understood as a misspelling of the word
“mystic.” However, even allowing for such perception by consumers, and
acknowledging the fact that Applicant’s mark does not share this particular
meaning, we would find the marks are overall more similar than not, because of
their appearance, sound, and suggestive meaning. Their commercial impressions
remain quite similar. Furthermore, there is no evidence of third-party use of MISTI-
formative marks in connection with electronic cigarettes or that the marks have
become weak as a result of consumers becoming conditioned to seeing such marks.
On the record before us, the parties here are the only users of MISTI-formative
marks.
Viewing the marks in their entireties, we find them similar in appearance,
sound, meaning and overall commercial impression. Accordingly, this factor favors a
finding of a likelihood of confusion.
E. Conclusion
In view of the fact that Applicant’s goods and Opposer’s goods are identical and
will thus be presumably sold in the same trade channels to the same consumers,
and our finding that the marks are similar, we conclude that there is a likelihood of
confusion.
Decision: The opposition is sustained and registration to Applicant is refused.