90199433 (T.T.A.B. Sep. 15, 2021)

D'Aira Clements

Trademark Trial and Appeal BoardSep 15, 2021

90199433 (T.T.A.B. Sep. 15, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: September 15, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re D’Aira Clements _____ Serial No. 90199433 _____ Beverly Beal of Law Office of Beverly Beal, for D’Aira Clements. Thomas P. Young, Trademark Examining Attorney, Law Office 120, David Miller, Managing Attorney. _____ Before Shaw, Greenbaum, and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background and Description of the Mark D’Aira Clements (“Applicant”) seeks registration on the Principal Register of the mark for: Athletic apparel, namely, shirts, pants, athletic uniforms; Athletic shirts; Athletic shorts; Athletic tights; Athletic Serial No. 90199433 - 2 - tops and bottoms for active activity; Body shapers; Bodysuits; Corsets being foundation clothing; Corsets being underclothing; Girdles; Leggings; Shapewear, namely, girdles and bras, in International Class 25.1 The application includes the following description of the mark, as submitted by Applicant: The mark consists of The mark consists of the stylized term “BADE” with a crown above the letter “B”, an umlaut above the letter “A”, and a macron is registrable “E”. The Examining Attorney refused registration under Trademark Rule 2.37, 37 C.F.R. § 2.37, because Applicant’s description of the mark is unacceptable, and under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark , with a disclaimer of NATURAL, for the following services: The bringing together, for the benefit of others, of bleaching and cleaning preparations, detergents other than for use in manufacturing operations and for medical purposes, laundry bleach, fabric softeners for laundry use, stain removers, dishwasher detergents, perfumery, cosmetics, fragrances, deodorants for personal use and for animals, soaps, dental care preparations, dentifrices, denture polishes, tooth whitening preparations, mouth washes, not for medical purposes, abrasive preparations, emery cloth, sandpaper, pumice stone, abrasive pastes, 1 Application Serial No. 90199433 was filed September 22, 2020, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Serial No. 90199433 - 3 - polishing preparations for leather, vinyl, metal and wood, polishes and creams for leather, vinyl, metal and wood, wax for polishing, hair brushes, combs, body brushes, washing gloves, bathrobes, waist clothes, air purifying preparations, air deodorizing preparations, and candles, enabling customers to conveniently view and purchase those goods, with such services provided by retail stores, wholesale outlets, by means of electronic media, and through mail order catalogues, in International Class 35.2 After the Examining Attorney made the refusals final, Applicant appealed. Applicant and the Examining Attorney filed briefs. As a preliminary matter, we address the Examining Attorney’s requirement for an amended description of the mark. We agree that Applicant’s current description improperly contains duplicative wording at the beginning, improperly refers to an element as “registrable,” and contains the cryptic wording “a macron is registrable ‘E.’” The Examining Attorney rejected this description in his Final Office Action, required an acceptable description, and proposed appropriate language for it.3 Applicant’s Brief includes a statement that “Applicant is happy to amend the mark description as suggested by the Examining Attorney in the March 24, 2021, Final Office Action, and thus Applicant does not appeal the suggested description.”4 2 Registration No. 5832308 issued August 13, 2019. The registration includes the following description: “The mark consists of the stylized wording ‘BÂDE NATURAL’, with a circumflex over the letter ‘A’ in ‘BÂDE’, below two interlocking stylized heart shapes.” Color is not claimed as a feature of the mark. The registration also includes a translation, “The English translation of ‘BÂDE’ in the mark is ‘love’.” The registration also covers goods in International Class 3, but they were not relied on by the Examining Attorney for the likelihood of confusion refusal. 3 TSDR March 24, 2021 Office Action (.pdf version) at 9. 4 6 TTABVUE 7. Serial No. 90199433 - 4 - Applicant has agreed in the Brief to the amended description of the mark already deemed acceptable by the Examining Attorney, which therefore would not require further examination after appeal, in violation of 37 C.F.R. § 2.142(g). We find the description appropriate and have entered it based on Applicant’s acceptance, rendering moot the refusal based on the mark description. See In re S. Malhotra & Co., 128 USPQ2d 1100, 1102 n.3 (TTAB 2018) (refusals to register based on requirements for translation and transliteration statements deemed moot because examining attorney suggested statements during prosecution, applicant accepted them in its brief, and the Board entered them). The amendment is entered to reflect the following description of the mark: The mark consists of the stylized term ‘BADE’ with a crown above the letter ‘B’, an umlaut above the letter ‘A’, and a macron over the letter ‘E’. II. Likelihood of Confusion Our determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). The Board considers only those DuPont factors for which there is evidence and argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). “Not all DuPont factors are relevant in each case, and the weight afforded to each factor depends on the circumstances.” Stratus Networks, Inc. v. UBTA-UBET Communs. Inc., 955 F.3d 994, Serial No. 90199433 - 5 - 2020 USPQ2d 10341 *3 (Fed. Cir. 2020). Two key considerations are the similarities between the marks and the relatedness of the goods and services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); 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.”). Significantly, Applicant has limited arguments against likely confusion in this case to a single DuPont factor – the similarity or dissimilarity of the marks – citing Kellogg Co. v. Pack’em Ent., Inc. 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991) for the proposition that a single DuPont factor can be dispositive.5 A. Similarity of the Marks We compare the marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1691 (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). We assess not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the services offered under the respective marks is likely to result. Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 5 6 TTABVUE 19 (Applicant’s Brief). Serial No. 90199433 - 6 - 1713, 1721 (Fed. Cir. 2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). We compare Applicant’s mark, , to the cited mark, , and find them similar in appearance, sound, and commercial impression. The two marks share the same dominant term, BADE, which includes accent marks in both Applicant’s and the cited mark, differing only in the respective types of accent marks—Applicant’s with an umlaut over the A and a macron over the E, and the cited mark with a circumflex over the A. “[T]he average customer, who retains a general rather than specific impression of the marks,” In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018), likely would recollect both versions of BADE merely as foreign wording, but not distinguish between them based on the different accent marks. This is even more probable because, although each mark uses a stylized font, the font styles are quite similar, with the word appearing all in lowercase, rounded lettering. While Applicant’s font is slightly thicker and somewhat darker, overall this word has a very similar look in both marks. This common term is the only one in Applicant’s mark, and as the first literal element of the cited mark, it is especially prominent. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “[t]he identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (first part of Serial No. 90199433 - 7 - a mark “is most likely to be impressed upon the mind of a purchaser and remembered.”). While the additional wording in the cited mark creates some difference in appearance and sound, we find the marks overall more similar than dissimilar. The additional wording NATURAL in the cited mark is descriptive or generic, and has been disclaimed. This reduces the significance of NATURAL in the likelihood of confusion analysis because consumers would view it merely as referring to the goods and services in the cited mark, and would not rely on the wording to indicate source. See Detroit Athletic, 128 USPQ2d at 1050; In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). Both marks also contain design elements, but the visual impact of Applicant’s small crown design is minimal because it forms the top of the letter B in BADE and does not stand out in terms of size or visual prominence. We are not persuaded by Applicant’s arguments that the crown “suggests prioritizing one’s ‘body’ and represents being the champion of one’s health, and thus Applicant’s Design Mark conveys that Applicant’s athletic apparel encourages women to be victorious in their workouts and honor their bodies by wearing clothes that give them confidence.”6 These arguments greatly overstate any significance that might be attributed to the diminutive crown design. The interlocking hearts in the cited mark, while relatively larger, consist of a fairly common shape, and are not so striking or unusual as to dominate the mark. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA 6 6 TTABVUE 18 (Applicant’s Brief). Serial No. 90199433 - 8 - v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015) (wording often is considered the dominant feature of a mark comprising both literal and design elements because it is most likely to indicate the source of the goods). The words are likely to make a greater impression on purchasers than the designs and would be remembered by them and used by them to request the goods and services. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)). Applicant argues that the different accent marks in BADE in the respective marks, as well as the additional word NATURAL in the cited mark, render the marks different in sound, meaning and impression. Applicant provided no evidentiary support for the assertions about the varying pronunciations stemming from the accent marks. Applicant’s position rests in part on the unlikely proposition, also unsupported by evidence,7 that consumers would view the cited mark as incorporating a Turkish word whereas consumers would view the nearly identical term in Applicant’s mark as a reference “to a woman’s body.”8 We find it more probable that consumers would perceive and pronounce the terms similarly. And as noted above, while we acknowledge that the additional word NATURAL creates some difference in sound and impression, overall we find that the marks look and sound 7 Applicant points to the fact that the cited registration contains a translation statement, but the statement does not indicate the language being translated, so it does not support Applicant’s particular contention that consumers would perceive the cited mark as containing a Turkish word. 8 6 TTABVUE 17 (Applicant’s Brief). Serial No. 90199433 - 9 - similar, and create a similar impression, bearing in mind that consumers often retain a general rather than specific impression of marks. Inn at St. John’s, 126 USPQ2d at 1746. We do not ignore the disclaimed, descriptive word NATURAL, but we find it subordinate to the shared, dominant term. See Viterra, 101 USPQ2d at 1908 (for rational reasons, more or less weight may be given to a particular feature of a mark, such as a common dominant element, provided the ultimate conclusion rests on a consideration of the marks in their entireties). While we have considered the likelihood of confusion cases cited by Applicant, we do not find the nature of their comparison of the marks applicable here. We do not agree that the other cases offer helpful guidance in our analysis “because the critical facts of different cases almost always differ substantially,” as they do here. In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1027 (TTAB 2017). Given their overall resemblance in appearance, sound, connotation and commercial impression, we find Applicant’s mark and the cited mark similar, particularly because we must consider the marks “‘in light of the fallibility of memory.’” See In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). Thus, the first DuPont factor favors a finding of likelihood of confusion. B. The Goods and Services, Trade Channels and Classes of Consumers The second and third DuPont factors address the relatedness of the goods and services, the trade channels in which they travel, and the classes of consumers of such Serial No. 90199433 - 10 - goods and services. Although Applicant has not addressed these factors in the Brief, the Examining Attorney has. Under the second factor, “likelihood of confusion can be found ‘if the respective goods [and services] are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs., 101 USPQ2d at 1722 (internal citations omitted). In analyzing the relatedness of the goods and services at issue, we look to the identifications in the application and cited registration. See Detroit Ath., 128 USPQ2d at 1051; Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any good or service encompassed by the identification in a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d, 123 USPQ2d 1744. The Examining Attorney submitted a sizable quantity of evidence showing online retail store services featuring bathrobes, cosmetics, candles and/or fragrances, as recited in the cited registration, offered under the same marks as clothing goods such as those Applicant has identified, including athletic wear and shapewear. The Examining Attorney points to examples such as VICTORIA’S SECRET, Serial No. 90199433 - 11 - ANTHROPOLOGIE, SKIMS, GUCCI, RAWGANIQUE, and TOMMY BAHAMA.9 As for the trade channels, the Examining Attorney asserts that because the identifications are unrestricted, “the goods and services are ‘presumed to travel in the same channels of trade to the same class of purchasers.’”10 Given that the evidentiary showing for relatedness of the goods and services is uncontested, suffice to say that we agree that the record shows that consumers are accustomed to encountering under the same mark goods such as Applicant’s and services such as the Class 35 services in the cited registration. Representative examples include: the SKIMS retail website featuring robes, as well as “SKIMS shapewear;”11 the VA BIEN retail website featuring robes, as well as “Va Bien Shapewear;”12 and the JOCKEY retail website featuring robes, as well as JOCKEY athletic tops and bottoms.13 The record includes many additional examples and clearly reflects the relatedness of the goods and services.14 As for the third DuPont factor, the Examining Attorney has erred in asserting that merely because the non-identical services and goods at issue lack restrictions, they therefore are deemed to travel in the same trade channels to the same consumers. This presumption applies only where goods or services are legally 9 8 TTABVUE 10-11 (Examining Attorney’s Brief, including citations to the record). 10 8 TTABVUE 11 (Examining Attorney’s Brief, quoting Viterra, 101 USPQ2d at 1908). 11 TSDR March 24, 2021 Office Action (.pdf version) at 28-35 (skims.com). 12 TSDR March 24, 2021 Office Action (.pdf version) at 99-108 (vabienusa.com). 13 TSDR March 24, 2021 Office Action (.pdf version) at 123-34 (jockey.com). 14 See also TSDR February 9, 2021 Office Action; March 24, 2021 Office Action (including other evidence). Serial No. 90199433 - 12 - identical. See, e.g., Viterra, 101 USPQ2d at 1908 (even though there was no evidence regarding channels of trade and classes of consumers, the goods at issue were identical, so the Board was “entitled to rely on this legal presumption” that the trade channels and consumers also were identical); L. & J.G. Stickley, Inc. v. Cosser, 81 USPQ2d 1956, 1971 (TTAB 2007) (“Because the goods of both parties are at least overlapping, we must presume that the purchasers and channels of trade would at least overlap.”). Where, as here, the goods and services are not identical, we may presume only that they travel in whatever trade channels are normal for each type of product or service. Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1357 (Fed. Cir. 2000) (“When the registration does not contain limitations describing a particular channel of trade or class of customer, the goods or services are assumed to travel in all normal channels of trade.”). Nonetheless, the same evidence discussed above shows that online retail services such as those in the cited registration sell goods such as those identified by Applicant, and therefore these goods and services travel in the same trade channels to the same classes of consumers. Thus, the second and third DuPont factors weigh in favor of likely confusion. III. Conclusion Balancing the DuPont Factors The similarity of the marks for related goods and services that move in the same channels of trade to the same classes of customers renders confusion likely. Decision: The refusal to register Applicant’s mark is affirmed. The requirement for an amended description is dismissed as moot.