C. Preme Limited, LLC

Trademark Trial and Appeal Board

Jun 28, 2013

No. 85316370 (T.T.A.B. Jun. 28, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 28, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re C. Preme Limited, LLC
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Serial No. 85316370
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William J. Seiter of Seiter & Co. for C. Preme Limited, LLC

Kristina Morris, Trademark Examining Attorney, Law Office 116 (Michael W.
Baird, Managing Attorney).
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Before Holtzman, Mermelstein and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
C. Preme Limited, LLC (“applicant”) seeks registration of the mark shown
below

Serial No. 85316370
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for, inter alia, bicycles and structural and other parts for bicycles.1 The application
includes the following description of the mark: “The mark consists of a stylized
grinning circular head in right profile showing large teeth represented by eight
squares inside an open smiling mouth, with a five-pointed crown atop the head at a
slight angle. Below the head appears the letter ‘C’ and the term ‘PREME’ in stylized
capital letters separated by a dot.”
The examining attorney refused registration of the mark under Section 2(d)
of the Act, on the ground that applicants’ mark, when used in connection with
applicant’s goods, so resembles the previously-registered mark SUPREME, in typed
format, for “bicycles and structural parts therefor”2 as to be likely to cause
confusion. The examining attorney also refused registration in the absence of a
disclaimer of C•PREME, finding that element of the mark to be “a creative
misspelling of the word SUPREME,” and that “the wording must appear in its
correct spelling in the disclaimer, i.e. SUPREME.”

1 Application Serial No. 85316370, filed May 9, 2011 based on an alleged intent to use
the mark in commerce. The identification of goods in International Class 12 is, in its
entirety: “Bicycles; bicycle handlebar grips; bicycle grip tape; bicycle seats; structural parts
of bicycles; parts for bicycles, namely, frames, handlebars, handlebar stems, bicycle
handlebar grips, derailleurs, gears, saddles, saddle covers, saddle bags, seat posts, pedals,
cranks, wheels, spokes, pumps, forks, cargo and luggage carriers; bicycle mud-guards,
chains, chain-guards, wheel hubs, brakes, handle bar control levers, shift levers, toe straps
and clips, luggage racks adapted for bicycles, bicycle bells, bicycle stop stands, rearview
mirrors, tire patches, bicycle canteen racks, bicycle holders for vehicles, bags adapted for
bicycles, bicycle handle-bar grip covers, trailers, baskets adapted for bicycles, bicycle
protective wheels, wheel covers, bicycle shock absorbers, bicycle rims.” In addition to these
goods, applicant seeks registration for a variety of goods in International Classes 9, 18 and
25.
2 Registration No. 2461239, issued June 19, 2001 from an application filed December
23, 1999, renewed.
Serial No. 85316370
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After the refusals were made final, applicant appealed, and its request for
reconsideration was denied. Applicant and the examining attorney filed briefs. We
reverse both refusals to register.
Likelihood of Confusion
Our determination under 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); 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, 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, 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.”). We discuss each of the
du Pont factors concerning which applicant or the examining attorney submitted
argument or evidence. To the extent that any other du Pont factors for which no
evidence or argument was presented may nonetheless be applicable, we treat them
as neutral.
Applicant’s goods include “bicycles” and “structural parts of bicycles,” and
registrant’s goods are “bicycles and structural parts therefor.” The goods are
therefore identical. Furthermore, because the goods are identical, and neither
applicant’s nor registrant’s identification of goods includes any limitation with
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respect to consumers or channels of trade, we 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) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade, and be sold to the same
class of purchasers.”); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); see also 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). These factors both weigh in favor of a finding of likelihood of confusion.
As for the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is,
we may not dissect the marks into their various components. In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint
Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981). The test
is not whether the marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently similar in terms of their
overall commercial impression so that confusion as to the source of the goods and
services offered under the respective marks is likely to result. San Fernando Elec.
Serial No. 85316370
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Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991).
The focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Of course, one feature of a mark may be more significant than another, and it
is not improper to give more weight to the dominant feature of a mark in
determining its commercial impression. In re Nat’l Data Corp., 224 USPQ at 751
(“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 consideration of the marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.”); Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d
759, 105 USPQ 266, 268 (CCPA 1955).
Here, the examining attorney contends that the literal component of
applicant’s mark, C•PREME, “is the dominant portion because consumers will refer
to applicant’s goods using this portion of the mark.” Examining Attorney’s Brief at
9. The examining attorney also argues that applicant’s mark and the cited mark
are “phonetic equivalents,” in that applicant’s mark “could reasonably be
pronounced ‘seh-preme,’ the equivalent of ‘supreme,’” and even if applicant’s mark
is pronounced “see-preme” the marks would still sound quite similar. Id. at 9-10.
Finally, the examining attorney points out that C•PREME is not found in the
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dictionary, Office Action of May 1, 2012, and argues that it is merely a “creative
spelling” of the word SUPREME.
We do not disagree that C•PREME is the dominant element of applicant’s
mark, because it would be used by purchasers to request the goods. M.C.I. Foods,
Inc. v. Brady Bunte, 96 USPQ2d 1544, 1551 (TTAB 2010); see also, CBS, Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). Nevertheless, we
disagree that this literal element, which is not an actual word, is sufficiently similar
to the actual word “supreme” for confusion to result. In fact, there is no evidence
that there are any words in the English language which include an individual letter
separated from the rest of the word by a symbol such as applicant’s “dot” or “•.”
More importantly, there is no similarity whatsoever between the first two
characters of the respective marks, “SU” and “C•,” and the mere fact that
registrant’s mark and the literal portion of applicant’s mark end in PREME, which
is not itself an English-language word, is not enough for the marks to create similar
overall commercial impressions. Furthermore, the dictionary definitions reveal that
the cited mark means “of the highest quality, degree,” making it laudatory and
therefore weak and not entitled to a broad scope of protection.3 Palm Bay Imports,
396 F.3d at 1369, 73 USPQ2d at 1692; Truescents LLC v. Ride Skin Care LLC, 81
USPQ2d 1334, 1341 (TTAB 2006). In short, C•PREME and SUPREME look

3 See Merriam-Webster definition included with Office Action of February 21, 2012,
http://www.merriam-webster.com/dictionary/supreme, and Dictionary.com definition
included with Office Action of August 22, 2011,
http://dictionary.reference.com/browse/supreme?=66.

Serial No. 85316370
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different because one appears to be a word and the other does not, sound different
because there is not a long or short “u” sound in the literal portion of applicant’s
mark4 and convey different meanings because SUPREME has commonly-
understood meanings while C•PREME does not mean anything.
Furthermore, while we accept that C•PREME is the dominant element of
applicant’s mark, the design element of that mark is large (and larger than the
literal element), distinctive and impossible to ignore, even if we were permitted to
do so, which we are not. There is nothing about the design which calls to mind or
suggests the word SUPREME. To the contrary, the “grinning circular head”
appears similar to the letter “C,” the first portion of the literal element of
applicant’s mark, which is entirely absent from the cited mark.
We have not ignored that both marks include the letters “PREME,” but on
balance find that the parties’ marks create entirely different overall commercial
impressions. This factor therefore weighs against a finding of likelihood of
confusion.
Weighing the factors about which there is evidence or argument together, we
find that the dissimilarity of the marks is dispositive, and outweighs the fact that
the goods and channels of trade are identical. Kellogg Co. v. Pack’em Enterprises
Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). Use of applicant’s mark
for applicant’s goods is not likely to cause source confusion.

4 See pronunciation of “supreme” included with the Dictionary.com definition attached
to the August 22, 2011 Office Action.

Serial No. 85316370
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Disclaimer Requirement
Under Section 6(a) of the Act, “[t]he Director may require the applicant to
disclaim an unregistrable component of a mark otherwise registrable,” such as a
component which is merely descriptive under Section 2(e)(1). Failure to comply
with a disclaimer requirement is a ground upon which registration may be refused.
See In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395, 1399-1400 (Fed. Cir. 2006); In
re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005).
A mark is deemed to be merely descriptive within the meaning of Section
2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007); and In re Abcor
Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A mark need not
immediately convey an idea of each and every specific feature of the applicant’s
goods in order to be considered merely descriptive; rather, it is sufficient that the
mark describes one significant attribute, function or property of the goods. In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338
(TTAB 1973). Whether a mark is merely descriptive is determined not in the
abstract, but in relation to the goods or services for which registration is sought, the
context in which it is being used on or in connection with the goods, and the possible
significance that the mark would have to the average purchaser of the goods
because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). It is settled that “[t]he question is not whether someone presented with only
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the mark could guess what the goods or services are. Rather, the question is
whether someone who knows what the goods or services are will understand the
mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314,
1316-17 (TTAB 2002).
Here, the examining attorney’s disclaimer requirement is based on the
finding that C•PREME is an intentional misspelling of the laudatory and therefore
descriptive word SUPREME. As explained in connection with the likelihood of
confusion refusal, we disagree that C•PREME will be perceived as a misspelling of
SUPREME. Unlike the cited mark, applicant’s mark does not appear to be wording
at all, because the initial “C” stands alone and is separated from PREME (which is
also not a word) by the character “•,” which is not standard English punctuation.
And to the extent that it is perceived as wording, applicant’s mark comprises the
mere initial “C” separated by a nonstandard character from the term PREME, and
the term PREME is not sufficient, by itself, to call to mind the word SUPREME,
because the initial “C” is so different, in almost every way, including how it looks
and sounds, from the initial syllable of the cited mark “SU.” In short, because we do
believe that C•PREME is a misspelling of or calls to mind SUPREME, or is
otherwise descriptive of anything, a disclaimer is not necessary or appropriate.
Decision: Because we find that use of applicant’s mark is not likely to cause
confusion with registrant’s mark, and that the literal component of applicant’s mark
is not descriptive, both the likelihood of confusion refusal and the disclaimer
requirement are reversed.