Christophe Jouaudin

Trademark Trial and Appeal Board

Feb 14, 2017

No. 86117679 (T.T.A.B. Feb. 14, 2017)

This Opinion is Not a
Precedent of the TTAB
Mailed: February 14, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jouaudin
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Serial No. 86117679
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H. David Starr of Nath, Goldberg & Meyer for Christophe Jouaudin.

Sophia S. Kim, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
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Before Adlin, Gorowitz and Pologeorgis,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Christophe Jouaudin (“Applicant”) seeks registration of the stylized mark shown
below

for
Telephones, mobile phones, cellular phones, component
parts of mobile phones, accessories for mobile phones
namely earphones, headphones, hands free microphones,
hands free kits comprising earphones and microphones,
covers, cases and protective cases for mobile phones;
chargers for mobile phones, batteries for mobile phones,
Serial No. 86117679
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stands and docking stations for connecting mobile phones,
docking stations specially designed to receive mobile
phones; digital computer tablets and pocket computers;
accessories for digital tablets, computers and pocket
computers namely headphones, ear headphones, hands-
free microphones, hands free kits comprising earphones
and microphones, covers, cases and protective cases for
digital tablets and pocket computers; battery chargers for
digital tablets and pocket computers, batteries for digital
tablets and pocket computers; docking bases and docking
stations specially designed to receive digital tablets,
computers and pocket computers; apparatus for recording
and reproducing sound and images; game software;
operating software for use with mobile phones and digital
tablets; memory cards; microprocessor cards; bags and
protective cases specially adapted for digital tablets, pocket
computers and mobile phones.1

The Examining Attorney refused registration under Section 2(d) of the Act on the
ground that Applicant’s mark so resembles the previously registered mark WICO, in
standard characters, for “Computer stylus; Instrument to facilitate text-messaging in
the nature of a stylus-type device that is attached to the hand for use in conjunction
with personal digital assistants”2 that use of Applicant’s mark in connection with
Applicant’s goods is likely to cause confusion or mistake or to deceive. After the
refusal became final, Applicant appealed and Applicant and the Examining Attorney
filed briefs.
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the likelihood of confusion factors set forth in In re

1 Application Serial No. 86117679, filed November 13, 2013 under Section 1(b) of the
Trademark Act, based on an alleged bona fide intent to use the mark in commerce. Applicant
proposed an amendment to its identification of goods in its Appeal Brief, which the
Examining Attorney accepted, and the identification set forth above reflects the amendment.
2 Registration No. 4255905, issued December 11, 2012.
Serial No. 86117679
3

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. 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.”).
Turning first to the marks, they are highly similar “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). In fact, the marks
differ by only one letter, which, given the spelling of the two marks, is not significant.
It is generally known that when followed by the letter “o,” the letter “c” may be
pronounced as a hard “c” which could sound identical or similar to a “k” followed by
an “o.” In other words, at least some consumers would pronounce the cited mark
WICO the same as Applicant’s mark . Furthermore, the marks look much more
similar than different, as they are spelled the same but for the third letter, which in
many cases will not result in a different pronunciation. Finally, there is no evidence
that either mark has any meaning, and even if we were to assume that their
meanings will be perceived as different, this assumed difference would be outweighed
by the marks’ similarities in sight and sound. In analogous cases, we have found that
Serial No. 86117679
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marks differing by only a single letter are confusingly similar. See Apple Computer v.
TVNET.net Inc., 90 USPQ2d 1393, 1396 (TTAB 2007) (VTUNES.NET vs. ITUNES);
Interlego AG v. Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862, 1863 (TTAB
2002) (“Obviously, the marks LEGO and MEGO are extremely similar in that they
differ simply by one letter.”); In re Total Quality Group Inc., 51 USPQ2d 1474, 1476
(TTAB 1999) (“Applicant’s mark STRATEGYN and registrant’s mark STRATEGEN
are phonetic equivalents and differ by only one letter.”). This factor weighs in favor
of finding a likelihood of confusion.3
Applicant’s argument that Registrant’s mark is entitled to only a narrow scope of
protection is not well-taken. As Applicant himself points out, “evidence of third-party
use of similar marks on similar goods is relevant to show that a mark is relatively
weak and entitled to only a narrow scope of protection.” Applicant’s Appeal Brief at
10 (quoting Palm Bay Imports, 73 USPQ2d at 1693) (emphasis added)). But here,
there is no evidence of third-party use.4 Instead, Applicant relies on third-party
registrations alone, which do not establish that Registrant’s mark is commercially or

3 Applicant’s argument that “the design elements of [his] mark convey totally distinguishing
and significant features that cannot be overlooked” is simply incorrect. Applicant’s mark does
not contain “design elements,” but rather, according to the application itself, Applicant’s
mark consists merely of “letters” in “stylized form,” while Registrant’s mark is in standard
characters. Accordingly, Registrant’s mark is not “limited to any particular font, size, style,
or color,” and could be displayed in the same manner as Applicant’s stylized mark. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Strategic Partners
Inc., 102 USPQ2d 1397, 1399 (TTAB 2012).
4 While Applicant relies on a single website printout which appears to discuss stylus
products that may be similar or related to Registrant’s goods, the almost three year old and
“Copyright 2014” printout itself indicates that “our WICO Stylus line of products will no
longer be available.” It therefore cannot establish commercial weakness in 2017. Office
Action response of September 9, 2014 at 25.
Serial No. 86117679
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conceptually weak, especially they because none of them are for goods similar to
Registrant’s or Applicant’s goods. See National Cable Television Ass’n Inc. v.
American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991)
and SBS Products Inc. v. Sterling & Rubber Products, Inc., 8 USPQ2d 1147, 1149 n.6
(TTAB 1988). Indeed, Applicant’s argument is exactly the type of “abstract
proposition” asserted in National Cable Television Ass’n, and here, as there, it is
“essentially meaningless.” Of all the marks about which there is information of
record, Applicant’s is the closest to Registrant’s. This factor weighs in favor of finding
a likelihood of confusion.
As for the goods, they are related on their face, because Registrant’s styli for
computers and personal digital assistants could be used in connection with digital
computer tablets, pocket computers or mobile phones (which are included among
Applicant’s goods). It is settled that complementary goods may be found related. See
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed.
Cir. 1984); General Mills, Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d
1584, 1597-98 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679
(TTAB 2014); In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1272 (TTAB
2009). Furthermore, Applicant intends to offer a variety of “accessories for digital
tablets, computers and pocket computers,” such as personal digital assistants, and
consumers encountering Applicant’s pocket computer accessories who are familiar
with Registrant’s goods may very well believe that Registrant has expanded from
Serial No. 86117679
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offering only styli to also offering other types of pocket computer accessories, such as
those Applicant intends to offer under its mark.
In addition, the Examining Attorney introduced more than 20 third-party
registrations suggesting that goods identical to Applicant’s and Registrant’s goods
are offered under the same marks by many different sources. For example:
S & Design (Reg. No. 4326999) is registered for “cases for
mobile phones,” “computer carrying cases,” “computer
docking stations” and “accessories, namely, computer
styluses and earbuds for internet capable multimedia
handheld electronic devices and digital audio players” on
the other.

FIREWIRE in standard characters (Reg. No. 4304337) is
registered for “cases for mobile phones and MP3 players,
chargers for mobile devices for use in cars … stylus pens
for touch screens ….”

MUVIT in standard characters (Reg. No. 4448758) is
registered for “carrying cases for electronic equipment,
namely, cell phones … computers and tablet PCs,” “battery
chargers,” “cradles and docking stations for tablet PCs,
computers, portable music players and mobile phones” and
“touch pen stylus, to be used on touchscreen tablet PCs and
smartphones.”

TZUMI in standard characters (Reg. No. 4668097) is
registered for “battery chargers,” “mobile phone docking
stations,” “protective cases for mobile phones and smart
phones” and “stylus pens.”

MOBILITY REINVENTED in standard characters (Reg.
No. 4452618) is registered for “accessories for portable
electronic devices, namely … battery chargers … stylus
pens for touch screens, protective covers and cases ….”

BUTTERFLYPHOTO in standard characters (Reg. No.
4532274) is registered for “electronic tablet accessories,
namely, tablet cases, tablet skins … tablet batteries, tablet
stylus ….”
Serial No. 86117679
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CASELAND in standard characters (Reg. No. 4573647) is
registered for “cell phone battery chargers; computer
stylus; carrying cases for cell phones.”

NANOCELL4ALL (Reg. No. 4574760) is registered for
“snap-on protector cases for mobile phones, portable music
players, tablets; silicone cases for mobile phones …,”
“stylus pen for cell phones and touch screen tablets,” “cell
phone battery chargers” and “carrying pouches for cell
phones and tablets.”

IMGUARDZ in standard characters (Reg. No. 4619686) is
registered for “display screen protectors for mobile phones,
mobile computing devices, tablet computers, notebook
computers and desktop computers; stylus pen for mobile
phones, mobile computing devices, tablet computers,
notebook computers and desktop computers.”

Office Action of January 12, 2015 at 2-64. “Third-party registrations which cover a
number of differing goods and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in use on a commercial scale
or that the public is familiar with them, may nevertheless have some probative value
to the extent that they may serve to suggest that such goods or services are of a type
which may emanate from a single source.” See, In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re Davey Prods. Pty. Ltd., 92
USPQ2d 1198, 1203 (TTAB 2009).5

5 Applicant’s claim that Registrant is no longer using its mark constitutes an impermissible
collateral attack on the cited registration, which while appropriate for a petition for
cancellation based on abandonment or nonuse, is not appropriate or permissible in this ex
parte proceeding. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed.
Cir. 1997) (“Dixie’s argument that DELTA is not actually used in connection with restaurant
services amounts to a thinly-veiled collateral attack on the validity of the registration … the
present ex parte proceeding is not the proper forum for such a challenge.”); Cosmetically
Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 165 USPQ 515, 517 (CCPA 1970) (“in the absence
of a counterclaim for cancellation under section 14 of the Act (15 U.S.C. 1064), it is not open
Serial No. 86117679
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Styli for computers and personal digital assistants, and other accessories for
digital computer tablets, computers and pocket computers, as well as digital
computer tablets and pocket computers themselves, are the type of goods sold in
electronics, computer and mobile phone stores. Moreover, because neither Applicant’s
nor Registrant’s goods are limited to any particular channel of trade or class of
consumer, we must presume that Applicant’s and Registrant’s goods could be offered
in the normal channels of trade therefor, which could include the same electronics,
computer and mobile phone stores. See Stone Lion Capital Partners, L.P. v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“An application
with ‘no restriction on trade channels’ cannot be ‘narrowed by testimony that the
applicant’s use is, in fact, restricted to a particular class of purchasers.’”); Citigroup
Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum,
211 USPQ 639, 640 (TTAB 1981). The relatedness of the goods and their channels of
trade also weigh in favor of finding a likelihood of confusion.
In short, because the marks are similar, the goods related and the channels of
trade overlap, confusion is likely.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.

to an applicant to prove abandonment of the opposer’s registered mark; and appellant’s
argument (upon which it now stakes its appeal) that opposer no longer uses the registered
mark ‘Come Alive’ must be disregarded.”).