Cariloha, LLCv.Carloha, Inc.

Trademark Trial and Appeal Board

Apr 28, 2017

No. 91227895 (T.T.A.B. Apr. 28, 2017)

MW Mailed: April 28, 2017 Opposition No. 91227895 Cariloha, LLC v. Carloha, Inc. Before Richey, Deputy Chief Administrative Trademark Judge, Wolfson and Pologeorgis, Administrative Trademark Judges. By the Board: This case now comes before the Board for consideration of Carloha, Inc.’s (“Applicant”) motion (filed December 20, 2016) for summary judgment on Cariloha, LLC’s (“Opposer”) asserted claim of likelihood of confusion. The motion is fully briefed.1 Background Applicant seeks registration of the mark CARLOHA, in standard characters, for “advertising services in the field of automobiles; advertising, marketing and 1 In its brief, Applicant refers to its motion as a motion to dismiss under Fed. R. Civ. P. 12(b)(6) which should be “considered as a motion for summary judgment.” 5 TTABVUE 4. However, a motion under Rule 12(b)(6) must be filed before, or concurrently with, the movant’s answer. Fed. R. Civ. P. 12(b). Inasmuch as the motion is based on the merits of the claims, includes matters outside the pleadings, and is not a motion to test the legal sufficiency of the complaint, the motion is clearly one for summary judgment. Further, Opposer has treated the motion as such. See 7 TTABVUE 4 n.2. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 General Contact Number: 571-272-8500 THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91227895 2 promotional services for automotive dealerships; automobile dealerships; on-line retail store services featuring automobiles, automobile dealerships and online automobile dealerships” in International Class 35.2 On May 11, 2016, Opposer filed a notice of opposition to the registration of Applicant’s mark. As grounds for opposition, Opposer claims likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based upon ownership of the following two registered marks: CARILOHA, in standard characters, for: Bags, namely, tote bags, souvenir bags, shoulder bags, sports bags, beach bags, in International Class 18; Clothing, namely, T-shirts, in International Class 25; and Retail store services featuring general merchandise, namely, jewelry, sacks, clothing, outerwear, footwear, souvenirs, and gifts, in International Class 35.3 CARILOHA, in standard characters, for: Bags, namely, textile or mesh shopping bags, in International Class 18; Linens, namely bedroom linens, and bathroom linens, in International Class 24; and Clothing, namely, sweatshirts, tank tops, long-sleeved shirts, hats, and sweatpants, in International Class 25.4 2 Application Serial No. 86732563, filed on August 21, 2015, based on an allegation of use in commerce under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), claiming August 17, 2015 as both the date of first use of the mark anywhere and the date of first use of the mark in commerce. 3 Registration No. 3745408 registered on February 2, 2010. Opposer claims September 9, 2009 as the date of first use anywhere and the date of first use in commerce for the goods in Class 18, and August 27, 2009 as the date of first use anywhere and the date of first use in commerce for the goods and services in Classes 25 and 35. 4 Registration No. 3931326 registered on March 15, 2011. Opposer claims January 11, 2008 as the date of first use anywhere and the date of first use in commerce for the goods in Class 18. For the goods in Class 24, Opposer claims December 20, 2008 as the date of first use anywhere and the date of first use in commerce. For the goods in Class 25, Opposer claims February 29, 2008 as the date of first use anywhere and the date of first use in commerce. Opposition No. 91227895 3 Opposer further alleges likelihood of confusion with its common law “CARIHOLA Marks.”5 Opposer claims use of the mark CARIHOLA “on or in connection with a variety of goods and service related to the above registrations, as well as numerous other goods and services including retail services, various types of clothing, hats, headwear and footwear, sunglasses, watches, jewelry, bed linens and blankets, bath linens, and various kinds of bags, in interstate commerce.”6 Applicant filed an answer to the notice of opposition in which it discusses the merits of Opposer’s asserted claim of likelihood of confusion. Although the answer does not comport with Fed. R. Civ. P. 8(b), we construe it to be a general denial of the salient allegations set forth in Opposer’s pleading. See Turner Entertainment Co. v. Ken Nelson, 38 USPQ2d 1942, 1943 (TTAB 1996). Applicant’s Motion for Summary Judgment We now turn to Applicant’s motion for summary judgment. In support thereof, Applicant argues that the marks CARLOHA and CARILOHA are different in sound because Opposer’s mark contains an additional letter and syllable; that the connotations of the marks are different because the beginning of Applicant’s mark refers to cars while the beginning of Opposer’s mark refers to the Caribbean; and that 5 Notice of Opposition at ¶8, 1 TTABVUE 6. To the extent that Opposer alleges likelihood of confusion based on common law use of marks other than CARILOHA, we find the allegations vague and insufficient to provide Applicant with fair notice of the basis of the claim (no such other marks are identified) and, therefore, such a claim is dismissed as insufficiently pleaded. See Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007) (elements of each claim should be stated concisely and directly, and include enough detail to give the defendant fair notice). 6 Id. Opposition No. 91227895 4 the common portion of the marks “LOHA” is a derivative of “aloha” and, thus, has a merely descriptive significance as applied to the goods of the parties.7 With respect to the goods and services of the parties, Applicant argues that the services identified in its application are specifically limited to the field of automobiles and automobile dealerships, whereas Opposer’s goods and services relate to general merchandise, in particular, jewelry, bags, clothing, outerwear, footwear, souvenirs, and gifts. Applicant further argues that Opposer’s claim that the parties’ services overlap because both provide retail services would allow Opposer “to impose [a] trademark monopoly upon literally any person whose mark is similar to Opposer’s who engages in retail services, despite how different the goods are.” 5 TTABVUE 10. Applicant further argues that the parties’ goods and services are not in any way related and do not compete. In response to the motion, Opposer argues that the parties’ marks are “virtually identical,” 7 TTABVUE 8, because they differ by only one letter that appears in the middle of Opposer’s mark; that the marks are “phonetically quite similar,” 7 TTABVUE 9; and that there is no evidence in the record to indicate what connotation and commercial impression an ordinary consumer would assign to the marks. Thus, Opposer contends, there is a genuine dispute of materal fact as to the similarity in 7 The online resource, Dictionary.com, defines “aloha” as a noun meaning “hello; greetings” and as an adjective meaning “friendly; hospitable; welcoming.” The Board may take judicial notice of dictionary definitions, including definitions or entries from references that are the electronic equivalent of a print reference work. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Applicant, however, has not submitted any evidence to support its argument that the term “aloha” describes a characteristic, function, feature, purpose or use of either party’s goods or services. Applicant’s argument therefore is unavailing. Opposition No. 91227895 5 appearance, sound, connotation and commercial impression of Applicant’s mark and Opposer’s registered mark. With regard to the goods and services of the parties, Opposer argues that the services are related and, in fact, overlap because both parties offer retail store services on the Internet. In addition, Opposer contends that because the marks of the parties are virtually identical, there is a greater likelihood that consumers would be confused as to the source, affiliation or sponsorship of the goods and services associated with the parties’ marks. Therefore, Opposer submits that there is a genuine dispute of material fact as to the relatedness of Applicant’s retail services and Opposer’s retail services provided under their respective marks. In its reply brief, Applicant argues that Opposer’s analysis of the similarity of the services is flawed because Opposer omitted wording in both parties’ services that sufficiently narrows the scope of the services, thereby avoiding likelihood of confusion. Applicant concludes that, despite the arguable similarities in the marks, the dissimilarities in the goods and services outweigh the other du Pont factors; thus, “there is no genuine issue of fact” on the issue of likelihood of confusion.8 8 TTABVUE 4. The Record For purposes of the summary judgment motion, the evidentiary record includes the pleadings and, by rule, the file of Applicant’s application for registration. 8 The 2010 amendments to Fed. R. Civ. P. 56 changed the terminology in the summary judgment standard from genuine “issues” to genuine “disputes” to better reflect the focus of a summary judgment determination. See Fed. R. Civ. P. 56 and Fed. R. Civ. P. 56(a) Advisory Committee’s notes (2010 amendment). Opposition No. 91227895 6 Trademark Rule 2.122(b). In addition, in connection with its motion, Applicant has submitted a page from Opposer’s website (Exhibit A) and a page from Applicant’s website (Exhibit B) showing the parties’ respective marks. With its brief in response to the motion for summary judgment, Opposer has submitted the declaration of Opposer’s attorney. However, only the statement in paragraph 6 referring to the pronounciation of Opposer’s mark supports Opposer’s response to the motion.9 Evidentiary Objections Opposer argues that the website evidence submitted with Applicant’s motion is inadmissible because the printouts “are not supported by an affidavit or declaration, and have no markings or identifying information to show the date they were printed or even the website address.” 7 TTABVUE 10-11. For purposes of summary judgment, a party may make of record as attachments to the party’s brief, inter alia, printed publications available to the general public if the publication is competent evidence and relevant to an issue. See Trademark Rules 2.122(e) and 2.127(e)(2); see also Raccioppi v. Apogee Inc., 47 USPQ 1368, 1369-70 (TTAB 1998) (at summary judgment, a party may rely on documents admissible under Rule 2.122(e)). Pursuant to the Board’s ruling in Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010), documents obtained from the Internet are “presumptively true and genuine” and may be admitted into evidence if 9 The statements in the remaining paragraphs of the declaration relating to Opposer’s discovery requests are not relevant to the issues on summary judgment. Opposition No. 91227895 7 they identify the date of publication or the date accessed and printed and their source (URL). See also Trademark Rule 2.122(e)(2); 10 TBMP § 704.08(b) (Jan. 2017). Because Applicant’s website evidence does not include the date on which the pages were downloaded from the Internet or the web page URL designations, Opposer’s objection to the evidence is sustained. Accordingly, the Board has not considered Exhibits A or B submitted with Applicant’s motion for summary judgment in our determination herein. We turn next to the merits of Applicant’s motion for summary judgment. Summary judgment is an appropriate method of disposing of cases in which there are no genuine disputes as to any material facts and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). In reviewing a motion for summary judgment, the evidentiary record and all justifiable inferences to be drawn from the undisputed facts must be viewed in the light most favorable to the non-moving party. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029-30 (Fed. Cir. 1993); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1546 (Fed. Cir. 1992). The Board may not resolve disputes of material fact; it may only ascertain whether a genuine dispute regarding a material fact exists. See Lloyd’s Food Prods., 25 USPQ2d at 2029; Old Tyme Foods, 22 USPQ2d at 1544. Applicant, as the party moving for summary judgment, has the burden of demonstrating that there is no genuine dispute as to any material fact and that it is 10 Effective January 14, 2017, the Board amended Trademark Rule 2.122(e), 37 C.F.R. 2.122(e), to add subsection (2), to codify the Board’s decision in Safer regarding Internet evidence. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 81 Fed. Reg. 69950, 69952 (October 7, 2016). Opposition No. 91227895 8 entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). See generally Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Opposer, as the nonmoving party, may not rest on mere allegations, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine dispute of material fact for trial. See Venture Out Props. LLC v. Wynn Resort Holdings LLC, 81 USPQ2d 1887, 1890 (TTAB 2007); see also Fed. R. Civ. P. 56(c)(1). Consideration of likelihood of confusion in the context of summary judgment involves an analysis of all of the undisputed facts in evidence that are relevant to the thirteen evidentiary factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). Any of the du Pont factors “may from case to case play a dominant role.” Id. Accordingly, we look to whether there are genuine disputes with respect to any of these du Pont factors which would be material to a decision on the merits. Turning first to the du Pont factor concerning the relatedness of the goods and services, we note that while Applicant has not submitted any evidence on summary judgment to support its argument regarding the differences in the parties’ goods and services, we must consider the evidence already in the record, namely the identifications of the goods and services in the subject application, the pleadings and Opposer’s pleaded registrations. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (Board erred in failing to consider the Opposition No. 91227895 9 “important evidence” of the goods and services described in the application and registration). Upon consideration of the identifications in the application and pleaded registrations, we find that there is no identifiable similarity or relationship between Applicant’s services relating to the promotion and retail sale of automobiles and Opposer’s general merchandise stores featuring jewelry, sacks, bags, clothing, outerwear, footwear, souvenirs, and gifts. Automobiles, unlike general merchandise products, are highly expensive goods that would only be purchased after careful consideration. See Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1932 (TTAB 2006). In addition, there is no evidence in the record that consumers are likely to mistakenly believe that any of Opposer’s general merchandise products may emanate from the same source as automobiles even if provided under similar marks. See, e.g., The North Face Apparel Corp. v. Sanyang Ind. Co., Ltd., 116 USPQ2d 1217, 1232 (TTAB 2015) (no confusion as to source between opposer’s clothing and backpacks and applicant’s motorcycles even when offered in the same stores); Standard Knitting, 77 USPQ2d at 1932 (clothing and automobiles “vastly different goods”; no likelihood of confusion despite identical marks); Ferrari S.p.A. Esercizio Fabbriche Automobili e Corse v. Dover Shirt Co. Inc., 172 USPQ 84, 85 (TTAB 1971) (no confusion between applicant’s shirts, blouses, dresses and opposer’s automobiles); Gen. Motors Corp. v. Monet Prods. Corp., 142 USPQ 516 (TTAB 1961) (same mark on wrist watches and automobiles not likely to cause confusion). Opposition No. 91227895 10 Moreover, Opposer’s only argument relating to the parties’ goods and services is that both parties offer “retail store services” over the Internet. However, to the extent both parties provide retail activities via the Internet, these factors relate to the channels of trade and potential consumers, not the du Pont factor regarding the relatedness of the goods and services. See Sports Auth. Michigan, Inc. v. PC Auth. Inc., 63 USPQ2d 1782, 1793 (TTAB 2002). “The Internet is such a pervasive medium that virtually everything is advertised and sold through the Internet.” Parfume de Couer Ltd. v. Lazarus, 83 USPQ2d 1012, 1021 (TTAB 2007). The mere fact that both Opposer and Applicant provide online retail store services does not mean that their respective goods and services will be offered to consumers under similar circumstances and through channels of trade which would create a likelihood of confusion. Id. at 1794; see also Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1743 (TTAB 2014) (citing Parfums de Couer Ltd. v. Lazarus, 83 USPQ2d at 1021 (“[T]he mere fact that goods and services may both be advertised and offered through the Internet is not a sufficient basis to find that they are sold through the same channels of trade.”)); Standard Knitting, 77 USPQ2d at 1932 (“simply because automobiles and clothing may be marketed over the Internet does not lead to the conclusion that goods would emanate from the same source.”). Opposer, as the non-moving party, has relied solely on its conclusory assertions and has failed to submit any evidence that would raise a genuine dispute of material fact regarding the relatedness of the parties’ goods and services or with respect to consumers’ belief that the products are likely to emanate from the same source. Fed. Opposition No. 91227895 11 R. Civ. P. 56(c)(1). See Venture Out Props. LLC v. Wynn Resort Holdings LLC, 81 USPQ2d 1887, 1890 (TTAB 2007) (“The nonmoving party may not rest on the mere allegations of its pleadings and assertions of counsel, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine issue of material fact for trial.”). Although we acknowledge a high degree of similarity between the marks and, therefore, the lower the degree of similarity needed between the parties’ goods and services to support a finding of likelihood of confusion, Opposer’s conclusory arguments, unsupported by any evidence whatsoever, fail to raise a genuine dispute of material fact as to the necessary, viable relationship between its retail services and those of Applicant. Cf. In re Concordia Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983) (necessary viable relationship found between air freight forwarding services and sea freight handling services because each involves movement of the goods of others to a final destination).11 In view of the foregoing, we find that, based on the record herein, no genuine dispute of material fact exists regarding the relatedness of the parties’ goods and services. Even conceding that resolution of the other du Pont factors favors Opposer and even assuming that Opposer has proven its standing and that priority is not an 11 To the extent that Opposer believed that it could not present facts regarding the relatedness of the parties’ goods and services and that the dispute needed to be “further developed during discovery,” 7 TTABVUE 14, Opposer could have filed a motion to take discovery under Fed. R. Civ. P. 56(d). However, we note that, generally, evidence regarding consumer perception of the relatedness of goods and services, if any, is available without discovery. See, e.g., In re Davia, 110 USPQ2d 1810, 1816-17 (TTAB 2014) and cases cited therein. Opposition No. 91227895 12 issue, the dissimilarities between the parties’ respective goods and services so outweigh the other du Pont factors that Applicant must prevail on its summary judgment motion. See, e.g., E.I. du Pont de Nemours & Co., 177 USPQ at 567 (“The evidentiary elements are not listed above in order of merit. Each may from case to case play a dominant role.”); Dixie Rests., 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) (noting that “any one of the factors may control a particular case”). Based on the record before us, we conclude that the differences between the parties’ goods and services are considerable with no viable relationship between them. Accordingly, we find no genuine dispute for trial about likelihood of confusion, i.e., likelihood of confusion does not exist as a matter of law. See Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (a single du Pont factor may be dispositive). Accordingly, Applicant’s motion for summary judgment on the ground of likelihood of confusion is GRANTED and the opposition is hereby dismissed.