No. 79108598 (T.T.A.B. Sep. 11, 2013)

CYBEX GmbH

Trademark Trial and Appeal BoardSep 11, 2013

No. 79108598 (T.T.A.B. Sep. 11, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 11, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re CYBEX GmbH _____ Serial No. 79108598 _____ Adam L. Brookman and Peter C. Stomma of Boyle, Fredrickson, S.C. for CYBEX GmbH, applicant. David H. Stine, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _____ Before Cataldo, Lykos and Kuczma, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: CYBEX GmbH (“applicant”) appeals from the final refusal to register the mark CBX in standard character format for the following goods: Clothing and shoes, in particular sportswear in the nature of shorts, t-shirts and sports shoes; children’s clothing in the nature of stockings, hats, caps, sweaters, pants, jackets, dresses and children’s shoes; bibs, not of paper in Class 25.1 1 Application Serial No. 79108598 filed on February 16, 2012, by Columbus Trading- Partners GmbH under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f, for goods in International Classes 3, 8, 9, 10, 11, 12, 18, 20, 21, 24, 25 and 28, based on International Registration No. 1105299 dated August 31, 2011. Columbus Trading-Partners GmbH subsequently changed its name to CYBEX GmbH as evidenced by Change of Name Serial No. 79108598 2 The examining attorney issued a final refusal to register the mark with respect to the goods in Class 25 pursuant to § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing the previously-registered mark ICBX, in typed form,2 as a bar to registration: Registration No. 26837003 For: Men’s women’s and children’s clothing, namely, denim jackets, denim jeans, knit shirts, knit pants, woven jackets, woven shirts, woven pants, sweat pants, sweaters, leather jackets, leather pants and outerwear, namely jackets, coats, wind resistant jackets, rainwear, skiwear, parkas and pullovers Class 25. Owner: Siegfried & Parzifal, Inc. After the refusal to register applicant’s mark for the goods in Class 25 was made final, applicant simultaneously filed a Request to Divide, a Request for Reconsideration and a Notice of Appeal. The Request to Divide was granted resulting in the goods in Class 25 remaining in this parent application and the non- Class 25 goods being assigned to child application Serial No. 79975232.4 The Request for Reconsideration was denied and this appeal ensued. Applicant and the examining attorney have filed briefs including a reply brief by applicant. For the reasons set forth below, the refusal to register is affirmed. documentation recorded in connection with the International Registration on November 15, 2012, and also recorded in the USPTO Assignment Branch on November 17, 2012, at Reel 4902 Frames 0011-12. 2 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. 3 Registration No. 2683700 issued February 4, 2003; renewed. 4 Serial No. 79975232 issued as Registration No. 4359741 on July 2, 2013. Serial No. 79108598 3 Likelihood of Confusion Our determination under § 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 Co., 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). A. Similarity of the Goods, Channels of Trade and Purchasers We first consider the second and third du Pont factors, namely, the similarity of the goods, channels of trade and purchasers. It is well-settled that the issue of likelihood of confusion between applied-for and registered marks must be determined on the basis of the goods as they are identified in the involved application and registration. Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). The identifications of goods in the subject application and the cited registration both include children’s clothing, namely sweaters, pants and jackets (set forth in the application) and sweaters, knit pants, woven pants, sweat pants and leather pants, denim jackets, woven jackets, leather jackets and wind resistant jackets (set forth in the cited registration). Because the children’s pants and jackets in the application are not limited to a particular type of such articles, we must presume that they cover all types of such items, including the knit, woven, leather, Serial No. 79108598 4 denim and wind resistant pants and jackets in the cited registration. Therefore, the goods of applicant and the cited registrant are, at minimum, identical in part to the extent they both include children’s sweaters, pants and jackets. In determining the similarity of applicant’s and registrant’s goods and services, it is sufficient if likelihood of confusion for each class of goods is established for any item encompassed by the identification of goods for that class. See In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010) citing Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Additionally, the relatedness of applicant’s and registrant’s nonoverlapping goods is essentially conceded as applicant admits that it “cannot deny that such [clothing] items can and do often emanate from the same source. Moreover, neither the Cited Registration nor the present application place any limitations on trade channels in which the goods move or the consumers who purchase the goods.”5 There is nothing in the record which indicates that the non-overlapping products are not closely related and many cases have recognized different types of clothing items to be related goods. See Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 128 USPQ 549, 550 (CCPA 1961) (women’s boots related to men’s and boy’s underwear); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of America, Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer 5 Applicant’s Appeal Brief p. 3. Serial No. 79108598 5 shirts); and In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats and trousers related to ladies’ pantyhose and hosiery). Because the goods are in part identical and otherwise related, and because neither applicant’s identification of goods nor the identification of goods in the cited registration contain a limitation of any kind with respect to consumers or channels of trade, we must presume that the goods move in the same channels of trade and are sold to the same classes of consumers. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002); 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). 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). In view of the foregoing, we find that the goods are identical in part and otherwise related, travel in the same channels of trade, and are sold to the same classes of purchasers, supporting a likelihood of confusion under the second and third du Pont factors. B. Similarity of the Marks We next consider the first du Pont factor focusing on ‘‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Serial No. 79108598 6 Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). In comparing the marks, we are mindful that 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 offered under the respective marks is likely to result. San Fernando Elec. 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, No. 92-1086 (Fed. Cir. June 5, 1992). Visually, the marks each contain the “CBX” letter string. Neither mark consists of a pronounceable word and is thus likely to be pronounced by its respective letters, three of which will be articulated in the same order in each mark. In view of the foregoing, the marks are similar in appearance and sound. The record is silent as to the meaning(s) of CBX and ICBX in applicant’s and registrant’s respective marks and applicant admits that they have no discernible meanings.6 Because there is no evidence that either of applicant’s CBX mark, or the cited ICBX mark, have any particular meaning, the terms CBX and ICBX are arbitrary. Accordingly, given the nature and relatedness of the goods, whatever meanings and/or commercial impressions the marks may have render them more similar than not. 6 Applicant’s Appeal Brief p. 2. Serial No. 79108598 7 Although the cited mark begins with a different letter, both marks contain the arbitrary letter sequence “CBX.” It is well settled that in determining the question of likelihood of confusion where the mark of one party includes the entire mark of another, consideration must be given to the nature of that portion of the mark which is incorporated in the other’s mark. For example, is it a coined or arbitrary term, or is it descriptive or suggestive of the properties of the goods with which it is used, and how frequently it has been registered or used by others as a trademark for the same goods. Warnaco Inc. v. Holiday Golf Products, 204 USPQ 69, 73 (TTAB 1979). Applicant argues that the marks are not similar because its mark contains three letters while the cited mark contains four letters. Given the arbitrariness of the marks, the number of letters contained in each mark is less significant as it is more difficult to remember a series of arbitrarily arranged letters that to remember words or figures. See Crystal Corp. v. Manhattan Chem. Mfg. Co., 75 F.2d 506, 506, 25 USPQ 5, 6 (CCPA 1935) (holding Z.B.T. likely to be confused with T.Z.L.B. for talcum powder). Similarly, given the arbitrariness of the CBX letter string in the marks and the relatedness of the goods, the fact that the letter marks do not begin with the same letter does not avoid a likelihood of confusion. See Vitamin Corp. of America v. American Home Products Corp., 166 F.2d 203, 76 USPQ 611 (CCPA 1948) (mark dominated by “VCA” is confusingly similar to mark dominated by “I.V.C.” where both marks are for vitamin products); Campbell Soup Co. v. Hy-V Co., Inc., 86 Serial No. 79108598 8 USPQ 217, 219 (Comm’r Pats. 1950), aff’d 193 F.2d 338, 92 USPQ 212 (CCPA 1951) (refusal to register “hyV” for fruit juices in light of V-8 mark for vegetable juices); Hudnut v. Helena Rubenstein, Inc., 86 USPQ 221, 222 (Comm’r Pats. 1950) (affirming refusal to register stylized HR mark in view of stylized RHR mark where both marks are for cosmetic products); Mutual Citrus Products Co., Inc. v. Pacific Citrus Products Co., 74 USPQ 240 (Comm’r Pats. 1947) (PCP is confusingly similar to M.C.P. where both marks are for goods that are in part identical); R. C. Williams & Co., Inc. v. Wyandotte Chemicals Corp., 69 USPQ 410, 411 (Comm’r Pats. 1946) (“B.W.C.” is confusingly similar to “R.C.W.” for related products; both have “C” and “W”, although in transposed relation and initial letters “B” and “R” are much alike in appearance). Even lettered marks having only two letters in common, used, as herein, on identical or closely related goods, have been held likely to cause confusion. See, e.g., Feed Service Corp. v. FS Services, Inc., 432 F.2d 478, 167 USPQ 407, 408 (CCPA 1970) (finding confusion between FSC and FS); Cluett, Peabody & Co., Inc. v. J.H. Bonck Co., Inc., 390 F.2d 754, 156 USPQ 401 (CCPA 1968) (finding confusion between TTM and T.M.T.); Edison Bros. Stores, Inc. v. Brutting E.B. Sport-Int’l GmbH, 230 USPQ 530 (TTAB 1986) (finding confusion between EB and EBS). When considering the similarity of the marks, we are mindful that where, as here, the goods and services are legally identical and otherwise closely related, 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 and services. Century 21 Real Serial No. 79108598 9 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). In determining likelihood of confusion, the focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. See L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); and Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). As explained by the predecessor to our primary reviewing court, “. . . it is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures, syllables, words, or phrases. The difficulty of remembering such lettered marks makes confusion between such marks, when similar, more likely.” Crystal Corp., 25 USPQ at 6; B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ 2d 1500, 1509 (TTAB 2007) (“Several cases state that marks involving letter combinations are likely to be inherently difficult to remember and, therefore, consumers are more susceptible to confusion or mistake than with word marks.”). Accordingly, arbitrary arrangements of letters, such as the cited mark, have generally been given a wider scope of protection. See J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 7:10 (4th ed. June 2013). In view of the foregoing, the similarities between applicant’s CBX mark and the cited ICBX mark in appearance, sound, meaning and commercial impression Serial No. 79108598 10 outweigh any differences such that it is likely the average purchaser would retain the same recollection for each mark. C. Number and Nature of Similar Marks in Use on Similar Goods Applicant observes that the record shows there are “numerous registered and allowed marks that co-exist on the register that have single letter differences from its mark and the cited mark for the same or similar goods.”7 Given the large number of these registered marks, applicant argues: it is clear the Office views such marks as not confusingly similar, the existence of the registrations should be sufficient to establish that such similar marks are in frequent use in commerce, and consumers are used to making fine distinctions with respect to arbitrary letter marks that differ only slightly from one another.8 As applicant recognizes, it is well established that absent proof of use of the registered marks, the existence of the registrations has no impact on the strength or weakness of the cited mark. In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010) citing to 2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §11:89 (4th ed. 2009); AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). See also, Chemetron Corp. v. Matsuo Electric Co., Ltd., 153 USPQ 372, 374-75 (TTAB 1967) (the third party registrations relied on by applicant are insufficient in and of themselves to establish that letter marks are basically “weak” marks). 7 Applicant’s Appeal Brief p. 6. A chart summarizing the specific registrations and applications is shown on pp. 7-10 of Applicant’s Appeal Brief. 8 Applicant’s Appeal Brief p. 7. Serial No. 79108598 11 Indeed, in Mighty Leaf Tea, the Federal Circuit flatly rejected applicant’s argument that the cited registrations themselves establish use because use in commerce is a prerequisite to registration. 94 USPQ2d at 1259. It is also noteworthy that only one of the thirty marks set forth in applicant’s chart contains the letter string CBX. Moreover, that mark, “CB-X,” which is set forth in Serial No. 85540147, is not relevant as the goods recited therein, namely, “devices conducive to male chastity, namely chastity belts for men,” are not similar to the clothing items involved in applicant’s application and the cited registration.9 To support its argument that the current case law is flawed in failing to recognize that use-based registrations are, in fact, evidence of a mark used in commerce, applicant posits that the current interpretation of the law utilizes a double standard. That is, in refusing to register applicant’s mark on the ground of likelihood of confusion under § 2(d) of the Trademark Act, the Office cites to an existing registration, without evidence of use of the cited mark in the marketplace. Yet, when applicant submits evidence of third-party registrations, the Office refuses to consider those marks as having any impact on the likelihood of confusion analysis because they do not evidence use of the mark in the marketplace.10 However, the language in § 2(d) of the Trademark Act mandates the refusal of an 9 Additionally, applications are evidence of nothing more than that they were filed; the Board does not take judicial notice of status changes in third-party applications made of record. In re Binion, 93 USPQ2d 1531, 1535 n.3 (TTAB 2009); In re Juleigh Jeans Sportswear, Inc., 24 USPQ2d 1694 (TTAB 1992). 10 Applicant’s Appeal Brief p. 4. Serial No. 79108598 12 application when the mark therein is similar to a registered mark, regardless of whether that registered mark is in fact in use in the marketplace: No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— . . . (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, . . . as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive . . . . Therefore, the refusal of registration of applicant’s mark based upon its similarity to the cited registered mark, without evidence of use of that mark, is mandated by the express language of the Trademark Act. On the other hand, the reason third-party registrations are not probative of likelihood of confusion absent proof of use of the marks therein in the marketplace is well documented in the case law. Lastly, prior decisions concerning the registrability of third-party marks are not binding on the Board. “Even if all of the third-party registrations should have been refused registration...such errors do not bind the USPTO to improperly register Applicant’s marks.” In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009), citing In re Boulevard Entertainment, Inc., 334 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003). See also In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”) Serial No. 79108598 13 In view of the well-established case law, the registrations cited by applicant do not impact the meaning of applicant’s mark or the cited mark, nor do they support a finding that the cited mark is weak or otherwise entitled to a narrow scope of protection. D. Conclusion Because the goods are identical in part and otherwise related, the channels of trade and classes of purchasers are the same. Overall, the marks are similar in appearance, sound, meaning and commercial impression. Considering the relevant du Pont factors, we find the Office has met its burden in showing a likelihood of confusion between applicant’s CBX mark and the cited ICBX mark for the identified goods. Decision: The refusal to register the mark under Section 2(d) of the Trademark Act is affirmed.