No. 86575846 (T.T.A.B. Dec. 8, 2016)

Basicxx Worldwide LLC

Trademark Trial and Appeal BoardDec 8, 2016

No. 86575846 (T.T.A.B. Dec. 8, 2016)

This Opinion is not a Precedent of the TTAB Mailed: December 8, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Basicxx Worldwide LLC _____ Serial No. 86575846 _____ Matthew H. Swyers of The Trademark Company, PLLC, for Basicxx Worldwide LLC. W. Kay H. Price, Trademark Examining Attorney, Law Office 103, Michael Hamilton, Managing Attorney. _____ Before Quinn, Zervas and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Basicxx Worldwide LLC (“Applicant”) seeks registration on the Principal Register of the mark KNIGHTS BRIDGE POLO CLUB and design, shown below, Serial No. 86575846 - 2 - for the goods listed below:1 Belts; Business wear, namely, suits, jackets, trousers, blazers, blouses, shirts, skirts, dresses and footwear; Caps; Children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; Coats for men and women; Denims; Footwear; Footwear for men; Footwear for women; Gloves; Hats; Hats for infants, babies, toddlers and children; Jackets; Ladies' underwear; Men's underwear; Pants; Polo shirts; Robes; Scarves; Shirts; Shirts for infants, babies, toddlers and children; Shorts; Sleep pants; Sleep shirts; Socks; Suits; Sweaters; Sweatshirts; Swim wear for gentlemen and ladies; T-shirts; Tee shirts; Trousers; Underwear; Vests; Women's clothing, namely, shirts, dresses, skirts, blouses, in Class 25. Applicant disclaimed the exclusive right to use the words “Polo Club.” The Trademark Examining Attorney has 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 two registered marks listed below, and owned by the same entity, as to be likely to cause confusion: 1. Registration No. 1516436 for the mark KNIGHTS BRIDGE, in typed drawing form, for “men’s sport and casual shirts, slacks and sweaters,” in Class 25;2 and 2. Registration No. 1508211 for the mark KNIGHTSBRIDGE, in typed drawing form, for “men’s clothing, namely, men’s suits, sportcoats [sic] and slacks,” in Class 25.3 1 Application Serial No. 86575846 was filed on March 25, 2015, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1052(b), based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. 2 Registered December 13, 1988; renewed. 3 Registered October 11, 1988; renewed. Serial No. 86575846 - 3 - When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. 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 issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis Ind., 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 du Pont factor that is relevant and 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.”). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944 (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, 116 USPQ2d 1406, 1409 (TTAB 2015). Serial No. 86575846 - 4 - A. The similarity or dissimilarity and nature of the goods.4 Registration No. 1516436 for the mark KNIGHTS BRIDGE is registered for “men’s sport and casual shirts, slacks and sweaters.” Applicant’s description of goods includes shirts, sweaters, and trousers.5 Accordingly, the goods are in part identical. Registration No. 1508211 for the mark KNIGHTSBRIDGE is registered for “men’s clothing, namely, men’s suits, sportcoats [sic] and slacks.” Applicant’s description of goods includes suits, blazers, and trousers.6 Accordingly, the goods are in part identical. Under this du Pont factor, the Trademark Examining Attorney need not prove, and we need not find, similarity as to each and every product listed in the description of goods. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods in a particular class in the application. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d at 1409; Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014). B. Established, likely-to-continue channels of trade. 4 Applicant concedes that the goods are related. Applicant’s Brief, pp. 13 and 15 (8 TTABVUE 14 and 16). 5 “Slacks” are defined as “men’s or women’s trousers for informal wear.” (Dictionary.com based on the Random House Dictionary (2016)). “Trousers” are “also called pants.” Id. 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). 6 A “blazer” is a synonym for a sports coat. (Dictionary.com based on Roget’s 21st Century Thesaurus (3rd ed. 2013)). Serial No. 86575846 - 5 - Because the goods described in the application and the cited registrations are in part identical, we must presume that the channels of trade and classes of purchasers are the same. See 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 Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). Applicant contends, without any supporting evidence, that the goods will move in different channels of trade because Registrant’s clothing is sold in K-Mart retail and online stores and “[t]here is no evidence to suggest that the Applicant is supplying or will be supplying its KNIGHTS BRIDGE POLO CLUB branded apparel to K-Mart.”7 However, because there are no restrictions or limitations in the descriptions of goods in the application and cited registrations, the goods are presumed to move in the same channels of trade and to the same class of purchasers. See In re Viterra Inc., 101 USPQ2d at 1908 (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983)). Therefore, Applicant has failed to rebut the 7 Applicant’s Brief, p. 15 (8 TTABVUE 16). Serial No. 86575846 - 6 - presumptions that the goods move in the same channels of trade and are sold to the same class of purchasers. C. The similarity or dissimilarity of the marks. We now turn to 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. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In comparing the marks, we are mindful that where, as here, the goods are in part identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); 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 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). “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, 101 USPQ2d at 1721; see also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants 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 Serial No. 86575846 - 7 - 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 noted above, because the goods are clothing without any restrictions or limitations as to the class of purchasers, we presume that the average customer is an ordinary consumer. In viewing Applicant’s mark in its entirety, we find that the name KNIGHTS BRIDGE is the dominant element. Although it is not proper to dissect a mark, it is well settled that one feature of a mark may be more significant than other features and that, therefore, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, such as a common dominant element, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this regard, the words KNIGHTS BRIDGE POLO CLUB is accorded greater weight than the design element because words are likely to make an impression upon purchasers, would be remembered by them, and would be used by them to request the apparel. See In re Viterra Inc., 101 USPQ2d at 1908, 1911 (citing CBS Inc. v. Morrow, 218 USPQ at 200); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987). Serial No. 86575846 - 8 - Applicant disclaimed the exclusive right to use the term “Polo Club” after the Trademark Examining Attorney required the disclaimer contending that it is descriptive of “polo shirts.”8 It is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re National Data Corp., 224 USPQ at 752; In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). The significance of KNIGHTS BRIDGE as the dominant part of Applicant’s mark is reinforced by its location as the first part of the mark. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 23 USPQ2d at 1700 (upon encountering the marks, consumers will first notice the identical lead word); Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) 8 July 16, 2015 Office Action. The Trademark Examining Attorney also asserted, without any evidence, that “the term ‘POLO CLUB’ presumably describes an intended user or consumer of applicant’s clothing and apparel, namely, members of the applicant’s polo club.” Serial No. 86575846 - 9 - (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). Because KNIGHTS BRIDGE is the dominant part of Applicant’s mark and is followed by disclaimed wording, consumers will shorten Applicant’s mark to KNIGHTS BRIDGE. [C]ompanies are frequently called by shortened names, such as Penney’s for J.C. Penney’s, Sears for Sears and Roebuck (even before it officially changed its name to Sears alone), Ward’s for Montgomery Ward’s, and Bloomies for Bloomingdales. Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992); see also Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983) (“Although the record does not indicate that applicant's business is commonly referred to as “Giant”, it does indicate that people have called it by that name, omitting the word “Hamburgers”. Thus, in a conversation between two consumers in opposer's area about a place of business called “Giant”, there likely would be confusion about which “Giant” they were talking about.”); Big M Inc. v. The United States Shoe Co., 228 USPQ 614, 616 (TTAB 1985) (“we cannot ignore the propensity of consumers to often shorten trademarks and, in the present case, this would be accomplished by dropping the “T.H.” in referring to registrant's stores [T.H. MANDY].”). The marks are similar because they all include the name KNIGHTS BRIDGE. Although one of the registered marks is presented without a space, consumers are likely to view and verbalize it as KNIGHTS BRIDGE, based on normal English Serial No. 86575846 - 10 - pronunciation. Thus, the presence or absence of a space between the two words is an inconsequential difference that even if noticed or remembered by consumers would not serve to distinguish these marks. See, e.g., Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1025 (TTAB 2009) (finding that DESIGNED TO SELL does not create a distinct commercial impression from DESIGNED2SELL); Seaguard Corp. v. Seaward Intern’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (SEA GUARD and SEAGUARD are "essentially identical"); In re Best Western Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“there can be little doubt that the marks [BEEFMASTER for restaurant services and BEEF MASTER for frankfurters and bologna] are practically identical and indeed applicant has not argued otherwise.”). Because the dominant part of Applicant’s mark KNIGHTS BRIDGE is identical to the registered marks KNIGHTS BRIDGE and KNIGHTSBRIDGE, we find that the marks are more similar than dissimilar. Applicant argues that the marks create different commercial impressions. According to Applicant, by adding the design element and the words “Polo Club,” Applicant’s mark engenders apparel that is “classic and athletic,”9 but on the other hand, the registered marks KNIGHTS BRIDGE and KNIGHTSBRIDGE are “plain word marks and bare of any stylization and design” that “fail to elicit the same connotation and commercial impression as the Applicant’s mark.”10 We disagree. Based on the record before us the name KNIGHTS BRIDGE is an arbitrary term 9 Applicant’s Brief, p. 9 (8 TTABVUE 10). 10 Applicant’s Brief, p. 10 (8 TTABVUE 11). Serial No. 86575846 - 11 - when used in connection with clothing and its meaning does not change whether it is followed by the terms “Polo Club” and/or displayed in connection with a design element. Moreover, because Applicant’s mark incorporates Registrant’s entire marks, consumers may mistakenly believe that Applicant’s mark identifies the “classic and athletic” line of Registrant’s clothing. While there is no explicit rule that likelihood of confusion automatically applies where an applicant’s mark includes in part the whole of another mark, the fact that the cited registered marks are subsumed by Applicant’s mark increases the similarity between the two. See, e.g., Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s mark BENGAL LANCER for club soda, quinine water and ginger ale is likely to cause confusion with BENGAL for gin); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (applicant’s mark VANTAGE TITAN for medical magnetic resonance imaging diagnostic apparatus confusingly similar to TITAN for medical ultrasound diagnostic apparatus); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (applicant’s mark MACHO COMBOS for food items confusingly similar to MACHO for restaurant entrees). In view of the foregoing, we find that the marks are similar in appearance, sound, connotation and commercial impression. D. The conditions under which and buyer to whom sales are made, i.e., “impulse vs. careful, sophisticated purchasing. Applicant contends, without any evidence, that the consumers will exercise a high degree of purchasing care for the following reason: Serial No. 86575846 - 12 - Traditionally, consumers of these goods are sophisticated insofar as The [sic] buyers of the Registrant consist of discount store shoppers who seek value for money in their purchases, and stretch the benefits afforded by the money spent. As such, we submit that the buyers of discount department store apparel would not regard clothing as an impulse buy. The buyer here would make careful purchase [sic] decisions. The Applicant’s buyers are presumably inclined to appreciate finer, more classic athletic and casual wear, the aesthetics and taste level of which would not be consistent with the merchandise of the Registrant.11 Because the respective descriptions of goods include clothing without any limit regarding channels of trade, classes of consumers, price points, etc., we must presume that the purchasers of both Applicant’s apparel and Registrant’s apparel include ordinary consumers who may buy inexpensive clothing on impulse. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163- 64 (Fed. Cir. 2014) (recognizing Board precedent requiring consideration of the “least sophisticated consumer in the class”); see also In re Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992) (finding that all purchasers of wine may not be discriminating because while some may have preferred brands, “there are just as likely to be purchasers who delight in trying new taste treats.”). E. Balancing the factors. Because the marks are similar, the goods are in part identical and there is a presumption that the goods move in the same channels of trade and are sold to some of the same classes of consumers, which Applicant has not rebutted, we find that 11 Applicant’s Brief, p. 13 (8 TTABVUE 15). Serial No. 86575846 - 13 - Applicant’s mark KNIGHTS BRIDGE POLO CLUB and design for, inter alia, shirts, sweaters, trousers, suits, blazers, and trousers is likely to cause confusion with the registered marks KNIGHTS BRIDGE for “men’s sport and casual shirts, slacks and sweaters” and KNIGHTSBRIDGE for “men’s suits, sportcoats [sic] and slacks.” Decision: The refusal to register Applicant’s mark KNIGHTS BRIDGE POLO CLUB and design is affirmed.