No. 91198482 (T.T.A.B. Jan. 8, 2013)

Braille Battery, Inc.v.Lithionics, LLC

Trademark Trial and Appeal BoardJan 8, 2013

No. 91198482 (T.T.A.B. Jan. 8, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: January 8, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Braille Battery, Inc. v. Lithionics, LLC _____ Opposition No. 91198482 _____ Woodrow Pollack of GrayRobinson, PA for Braille Battery, Inc. Nathan P. Suedmeyer of Larson and Larson PA for Lithionics, LLC. _____ Before Bucher, Grendel and Gorowitz, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: Lithionics, LLC (applicant) has filed an application to register the mark for “batteries, electrical cells and batteries” in Class 9.1 Braille Battery, Inc. (opposer) has opposed the application pursuant to Section 2(d) of the Trademark Act on the ground of likelihood of confusion with its mark 1 Application Serial No. 85088425, filed on July 20, 2010, based Section 1(b) of the Trademark Act (“intent-to-use”) Opposit common Serial N T B Tradem notice o A substan notice o will con the evid ground rule, if t the par TBMP § 2 Attache and “Exh Patent a the party evidence § 2.122. record. ion No. 91 law use o o. 851693 he Recor y rule, th ark Rule 2 f reliance. pplicant m tive groun f reliance sider any ence at fi that the n he Board f ty which f 532. d to the no ibit B.” W nd Tradem to whose p during the Accordingly 198482 for “batte f this mar 35. d and Evi e record in .122(b), 37 Applicant oved to ds. The B but, with outstandin nal hearin otice of rel inds that t iled the n tice of oppo ith the exce ark Office, a leading the period for t , the exhib ries and k for its go dentiary cludes ap CFR §2.1 did not in strike the oard gene respect to g objectio g. TBMP iance does he notice otice of re sition were ption of reg n exhibit a exhibit is he taking o its attached 2 battery ods and al Matters. plicant’s a 22(b).2 In troduce an notice of rally does objections ns in its e § 707.02. not meet is defective liance tim a number o istrations i ttached to a attached un f testimony to the noti chargers.” so alleges pplication addition, y testimon reliance not strik on substa valuation As for m the proced , but cura e within w f document ssued to a p pleading i less identif . Tradema ce of oppos Opposer ownership file and opposer fil y or evide on both p e material ntive grou of the prob otions to ural requi ble, the Bo hich to cu s identified arty by the s not eviden ied and int rk Rule 2.1 ition are no alleges p of applica the pleadi ed evidenc nce. rocedural submitte nd, the B ative valu strike on rements o ard may a re the de as “Exhibi United Sta ce on beha roduced in 22, 37 C.F.R t part of th rior tion ngs. e by and d by oard e of the f the llow fect. t A” tes lf of . e Opposition No. 91198482 3 Turning first to applicant’s procedural objections, applicant asserts that opposer did not indicate the relevance of its registration. However, opposer’s registration was introduced pursuant to Trademark Rule 2.122(d)(2), 37 CFR § 2.122(d)(2), which does not require a party to indicate the general relevance of its registration. Accordingly, we deny applicant’s motion to strike the introduction of this document. As for the printed publications and official records, (consisting of the file of opposer’s U.S. registration, its Florida State registrations, and material from the internet), we agree with applicant that the notice was defective because opposer did not indicate the general relevance of these documents.. See Trademark Rule 2.122(e), 37 CFR § 2.122(e). However, this defect could have been and indeed was cured by opposer’s submission of an amended notice of reliance. Therefore, we deny applicant’s motion with respect to the procedural defects. We deal now with the substantive objections. 1. Opposer’s Reg. No. 4082905 and file of opposer’s registration (Attachments 1 and 3 to notice of reliance) This registration issued from application Serial No. 85169335, which opposer pleaded in its notice of opposition. Applicant objected to the introduction of this registration because opposer’s underlying application was filed after the contested application and because opposer’s registration did not issue until after the filing of the notice of opposition. If a registration issues before the opposer’s testimony period ends, it may be admitted into evidence with a notice of reliance. See Hunt Control Opposit S n a In ob fo o o o 2 o to m P 1 U st ion No. 91 ystems Inc .6 (TTAB 2 registrati c. v. O'Ro jection is r batterie f the record Oppo f opposer’s f the docum . Florid (Atta Appli n the groun A sta establish ark is ent roducers A 976) (state SPQ 877, ate registr 198482 . v. Konin 011) (an a on that m urke, 92 U over-ruled s and batte . ser has al registrati ent. a State R chments cant objec d that the te registra that the itled to fed ssociates, registrati 880 (TTA ation, said klijke Phil pplicant i atured fro SPQ2d 10 , and Reg. ry charge so met the on by intro egistratio 4 - 8 to no ted to the i y are inco tion (whet mark sho eral regist Inc., 530 ons do not B 1981) (a registrat 4 ips Electro s on notice m a plead 42, 1045 n No. 40821 rs, which i requirem ducing a ns tice of re ntroductio nsequentia her owned wn therein ration. Se F.2d 1400 establish lthough p ion is incom nics N.V. that an o ed applic . 12 (TTA 95 for the ssued on J ent of the statement liance) n of oppos l. by a part has ever e, e.g., Fau , 189 US use); and arties stip petent to , 98 USPQ pposer int ation); UM B 2009). mark anuary 19 rule to int of the gen er’s Florid y, or not) been use ltless Star PQ 141, 1 Kraft, Inc ulated to i prove any 2d 1558, ends to rel G Record Therefore, , 2012, is roduce the eral relev a registrat is incompe d, or that ch Co. v. S 42 n.2 (C . v. Balin, ntroductio thing mat 1563 y on ings this part file ance ions tent the ales CPA 209 n of erial Opposition No. 91198482 5 to opposition proceeding). Because the state registration was properly introduced, it is part of the record and has been considered for whatever probative value, if any that it may have. 3. Internet materials (Attachments 9 - 11 to notice of reliance) Applicant objected to the introduction of opposer’s internet materials on the ground that they are inadmissible, asserting, in part, that an elevated standard is required for the admissibility of internet materials, and that “the appropriate materials for introduction by a notice of reliance are printed publications available to the public, such as books and periodicals, or materials that constitute official records.” However, in Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB 2010), the Board specifically held that internet materials may be introduced under a notice of reliance: “[I]f a document obtained from the Internet identifies its date of publication or date that it was accessed and printed, and its source (e.g., the URL), it may be admitted into evidence pursuant to a notice of reliance in the same manner as a printed publication in general circulation in accordance with Trademark Rule 2.122(e).” These internet documents submitted by opposer all bear the URLs and either the date on which they were published (Documents 9 and 10) or the date on which they were printed (Document 11), and are therefore admissible. However, to the extent that opposer relies on these documents to show priority, the reliance is misplaced. Documents 9 and 10 do not reflect use of the mark asserted by opposer, while document 11 was printed on April Opposit 9 a In history BRAILL admissi motion t O included and tha properly Analys - Stand O has esta 222 F.3 Ralston - Prior Opposer and bat priority Tobacco ion No. 91 , 2012, an pplication. addition of applica E BATTE on. Appli o strike. pposer an a photog t applican make thi is ing pposer ha blished it d 943, 55 Purina Co ity is the ow tery char as an iss LP v. Nor 198482 d therefor to the fo nt’s aban RY and a cant did n d applican raph, stat t did not s photogra s properly s standing USPQ2d ., 670 F.2d ner of Re gers.” Opp ue with re th Atlanti e does no regoing d doned app pplicant’s ot object t t have fil ing that it challenge ph of recor made its in this p 1842, 1844 1024, 213 g. No. 408 oser’s own spect to t c Operatin 6 t show us ocuments, lication, answers to o the intr ed trial br had prod its authen d, and the registratio roceeding. (Fed. Ci USPQ 18 2195 for t ership of he goods g Co., 101 e prior to opposer Ser. No. 8 opposer’s oduction o iefs. As p uced this ticity. H refore we h n of recor Cunningh r. 2000); L 5, 189 (CC he mark its plead covered by USPQ2d the filing made of r 5064068, first set f these do art of its picture du owever, op ave not co d. Accord am v. La ipton Ind PA 1982). ed registr the regis 1163, 116 of applica ecord the for the m of request cuments in brief, opp ring disco poser did nsidered i ingly, opp ser Golf C ustries, In for “batte ation rem tration. 9 (TTAB 2 nt’s file ark s for its oser very not t. oser orp., c. v. ries oves Top 011) Opposition No. 91198482 7 referring to King Candy, Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). - Likelihood of confusion. The only ground for opposition is likelihood of confusion. Our determination of this issue 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).3 See also, In re Majestic Distilling Co., 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/or services. See: Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We start our analysis by determining “the similarity between the goods,” which is the second du Pont factor. It is well established that in a proceeding such as this, the question of likelihood of confusion must be determined on the basis of an analysis of the mark as applied to the goods and/or services recited in applicant’s application vis-à-vis the goods and/or services recited in an opposer’s registration. 3 It is noted that opposer has discussed this issue in terms of the seven factor test set forth in Frehling Enter, Inc. v. Int’l Select Group, Inc. 192 F.3d 1330 (11th Cir. 1999). This test is not utilized by the Board. The Board follows the thirteen factor test set forth by the Court of Customs & Patent Appeals, the predecessor of our primary reviewing court, in In re E. I. du Pont de Nemours & Co. 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Opposition No. 91198482 8 Canadian Imperial Bank of Commerce v. Wells Fargo Bank, NA, 811 F.2d 1490, 1 USPQ2d 1813, 1814 (Fed. Cir. 1987). The identifications of goods in both the opposed application and opposer’s registration include “batteries.” As such, the goods are legally identical and thus this du Pont factor weighs in favor of opposer. When the goods are closely related and there is no restriction on the goods in the application or registration, they are presumed to travel in the same channels of trade, and be sold to the same class of purchasers. See: Hewlett -Packard Co. v. Packard Press Inc., 281 F3d 1251, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002). Applicant admitted that these presumptions are in fact reflective of the market in its response to question 33 in opposer’s first set of requests for admission: Request No. 33: “Applicant and Opposer offer goods to the same consuming public.” Answer: “Applicant admits that Applicant and Opposer offer goods to the same consuming public.” Accordingly, the du Pont factor of the similarity of the channels of trade and of the purchasers also favors a finding of likelihood of confusion. We turn now to the first du Pont factor of the similarity or dissimilarity of the marks in their entireties, keeping in mind that in cases such as the current opposition, “[w]hen marks appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likelihood of confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). The marks at issue are: Opposit W marks i reasons provided entiretie 1985). T with a s circle. W within t A trade or chemica Oxfordd in alloy Dictiona 4 T Lac v. J. USPQ 50 have reg ion No. 91 hile “the s n their en , more or the ultim s.” In re N he descrip uperscript ithin the he smaller pplicant s industry. l elemen ictionaries s and gl ry.” The he Board m C. Gourmet 5 (Fed. Cir ular fixed e 198482 an imilarity o tireties… less weigh ate concl ational D tion of ap number opening o circle and tated in th ” However t “lithiu .com.4 “L ass, and use of lith ay take jud Food Imp. . 1983), inc ditions. In d r dissimil there is n t has bee usion rest ata Corp., plicant’s m "3" inside f the circl the small e applicat , we take m,” whi ithium, th in … sto ium in co icial notice Co., 213 US luding onlin re Red Bul 9 arity of the othing imp n given t s on a co 753 F.2d 1 ark in its a circle wi e is anoth er circle ot ion that “L judicial no ch has e lightest rage batt nnection w of dictionar PQ 594 (TT e dictionar l GmbH, 78 marks is roper in o a partic nsideratio 056, 224 U applicatio th an ope er smalle herwise fil i3 has no tice that “ an atom metal kno eries.” “M ith storag y definition AB 1982), ies that exi USPQ2d 1 determine stating tha ular featu n of the m SPQ 749 n is: Th ning on th r circle wi led.” meaning i Li” is the ic num wn, … is u erriam-W e batterie s, Univ. of aff'd, 703 F st in printe 375, 1377 (T d based on t, for rati re of a m arks in t , 751 (Fed. e wording e right sid th a plus- n the rele symbol for ber of sed espec ebster On s renders Notre Dam .2d 1372, 2 d format or TAB 2006 the onal ark, heir Cir. "Li" e of sign vant the “3.” ially line both e du 17 ). Opposit the term descript element In appropr when co F.2d 64 T design e a positi showing element been tak have no C arbitrar in appea of confu re Appl 5 Applica evidence ion No. 91 lithium ive of bat to form ap view of iate for u mparing i 5, 16 USPQ he design lement in ve termin that the s in oppos en into co evidence o omparing y and ther rance and sion was f ication of nt contend was submi 198482 and its teries. Th plicant’s c the descr s to give g t to oppos 2d 1239, element i opposer’s al and a r design ha er’s mark, nsideratio f the mean the mark efore dom that this ound base Computer s in its brie tted suppor combined is descript omposite m iptive nat reater we er’s mark. 1240 (Fed. n applican mark ound batt s any sign consisting n in our e ing of eith s in their inant elem case is sim d on simila Communi f that the d ting its con 10 chemical ive term ark. ure of Li ight to th See In re Cir. 1990) t’s mark . A ery cell, t ificance in of the let valuation o er of these entireties, ents, we c ilar to the r design e cations, In esign is des tention. symbol an is then e and 3 in e arbitrar Electrolyt . is lthough on here is no relation t ter “b” an f the mar elements and givin onclude th following lements in c., 484 F criptive of b d atomic ncompasse applicant y element e Laborat identical e might s evidence o the good d an arrow ks. It is n . g greater at the ma cases in w the mark .2d 1392, atteries, ho number d in a de ’s mark, s of the m ories, Inc., to the circ peculate a in the re s.5 The o design, h otable tha weight to rks are sim hich likelih s at issue 179 USPQ wever, no (Li3) sign it is ark 929 ular bout cord ther ave t we the ilar ood : In 51 Opposition No. 91198482 11 (CCPA 1973) - for computer peripheral equipment and for control panel wiring accessories for electronic data processing machines, etc.; Envirotech Corporation v. National Service Industries, Inc., 197 USPQ 292 (TTAB 1977) - for florescent lighting fixtures and for lights and lighting equipment in conjunction with the advertising, sale and erection of industrial and municipal equipment; and Boise Cascade Corporation v. Mississippi Pine Manufacturers Association,164 USPQ 364 (TTAB 1969) - for an association of manufacturers to indicate membership in the Mississippi Pine Manufacturers Association and for the manufacture and sale of a wide variety of commercial products, including products made of wood such as lumber plywood, paper and the like. Accordingly, we find applicant’s mark, considered in its entirety, to be so similar to opposer’s mark, that when used on identical or closely related goods, there is a likelihood of confusion. Thus, this du Pont factor weighs in favor of finding likelihood of confusion. Opposer has also asserted that applicant adopted its mark in a deliberate intent to trade on opposer’s goodwill, based on the fact that applicant’s principal, Opposition No. 91198482 12 Steven Tartaglia, had worked for opposer before becoming associated with applicant. Although the evidence shows that Mr. Tartaglia “is a former officer of opposer” (response to request for admission No. 32), there is not sufficient evidence in the record to show when he held a position with opposer, the nature of his responsibilities, etc. Even if we presume that he knew of opposer’s mark, we cannot infer from this record that applicant’s adoption of its mark was made in bad faith. Similarly, there is no evidence of record to support such other claims made by opposer in its brief that Mr. Tartaglia “learned nearly all facets of Braille’s business,” including opposer’s customers and vendors. Finally, we note that in its brief opposer makes the bald statement that “there has been actual confusion.” P. 15. However, there is no evidence of record of actual confusion to support this claim, and therefore we treat this du Pont factor as neutral. In view of the similarity of the marks, and the identity of the goods, trade channels and purchasers, we find that opposer has proven that applicant’s mark for its goods is likely to cause confusion with opposer’s mark for its goods. To the extent that there is any doubt on this issue, it is a well-established principle such doubt must be resolved in favor of the prior registrant because the newcomer has the opportunity of avoiding confusion and is charged with the obligation to do so. See In re Shell Oil Co., 992 F.2d 1204, 1209, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 Opposition No. 91198482 13 (Fed. Cir. 1988); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1372 (TTAB 2009). After considering all of the evidence of record and balancing all of the applicable du Pont factors, whether specifically discussed herein or not, we conclude that applicant’s mark for its goods is likely to cause confusion with opposer’s mark for its goods.6 Decision: The opposition is sustained on the ground of likelihood of confusion under Section 2(d) of the Trademark Act. 6 We note that for many of the du Pont factors for which there is no evidence, applicant makes the assertion that they should be resolved in favor of applicant. We disagree. If there is no evidence regarding a particular factor, we treat it as neutral.