87467535 (T.T.A.B. Jun. 14, 2019)

David Vahman

Trademark Trial and Appeal BoardJun 14, 2019

87467535 (T.T.A.B. Jun. 14, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: June 14, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re David Vahman _____ Serial No. 87467535 _____ David Vahman, pro se. Parker Howard, Trademark Examining Attorney, Law Office 117, Hellen Bryan Johnson, Managing Attorney. _____ Before Kuhlke, Ritchie, and Coggins, Administrative Trademark Judges. Opinion by Coggins, Administrative Trademark Judge: David Vahman (“Applicant”) seeks registration on the Supplemental Register of the mark TRUCK TRADER (in standard characters, with TRUCK disclaimed) for “providing a website featuring a search engine for new and used automobile listings for sale,” in International Class 42.1 The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied 1 Application Serial No. 87467535 filed on May 30, 2017, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as July 27, 2016. Serial No. 87467535 - 2 - to the services identified in the application, so resembles the mark COMMERCIAL TRUCK TRADER (in standard characters, with COMMERCIAL TRUCK disclaimed) for “advertising services, namely, preparing and disseminating advertising for others via an online electronic communications network; [and] computer services, namely, providing a database featuring vehicle sales information, vehicle dealership services information, and vehicle classified and display advertising via an online electronic communications network,” in International Class 35,2 on the Principal Register with a claim of acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f), as to be likely to cause confusion, to cause mistake, or to deceive. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. 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 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., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the 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 2 Registration No. 3605107, issued April 14, 2009; renewed. Serial No. 87467535 - 3 - effect of differences in the essential characteristics of the goods and differences in the marks.”). See also Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (“Not all of the [du ]Pont factors are relevant to every case, and only factors of significance to the particular mark need be considered.”)); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). Varying weights may be assigned to each du Pont factor depending on the evidence and circumstances presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more or less weighty roles in any particular determination”). A. Similarity of the Services, Channels of Trade, and Classes of Customers Under the second and third du Pont factors, we consider the similarity of the services, channels of trade, and classes of customers. We must make our determinations under these factors based on the services as they are identified in the application and cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); Serial No. 87467535 - 4 - Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s services are “providing a website featuring a search engine for new and used automobile listings for sale.” Registrant’s services include “computer services, namely, providing a database featuring vehicle sales information, vehicle dealership services information, and vehicle classified and display advertising via an online electronic communications network.” The broadly identified computer services in the cited registration encompass the more narrowly identified search engine services in Applicant’s identification. See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.”’). To the extent indicated, the identified services in the cited registration are legally identical in part to the services in the application.3 In its appeal brief, Applicant does not dispute that Registrant’s computer services encompass Applicant’s search engine services; instead, Applicant appears to focus on the differences between its search engine and Registrant’s advertising services.4 Given the legal identity of the services 3 Given the in-part identical services, we need not discuss the similarity of Applicant’s services with Registrant’s advertising services because it is sufficient for a finding of likelihood of confusion if relatedness is established for any service encompassed by the identification of services within a particular class in the application and cited registration. In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Comput. v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007). 4 Applicant argues that “the services identified by Applicant are different [from] Registrant’s for the reasons” set forth in the brief. Brief p. 6 (7 TTABVUE 7). However, no reason was clearly provided. As best we can tell, it appears that Applicant either relies on the alleged Serial No. 87467535 - 5 - in part, the common restriction as to their nature (i.e., vehicles and automobiles), and the lack of restrictions or limitations in the application and the cited registration as to channels of trade or classes of consumers, we must presume that the channels of trade and classes of purchasers are also the same. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion). Based on the in-part legally identical services set forth in the application and the cited registration, and the presumptive overlapping trade channels and classes of purchasers, the du Pont factors of the similarity of the services, channels of trade, and classes of customers weigh heavily in favor of likelihood of confusion. B. Similarity of the Marks Under the first du Pont factor, we determine the similarity or dissimilarity of Applicant’s and Registrant’s marks in their entireties, taking into account their appearance, sound, connotation, and commercial impression. du Pont, 177 USPQ at 567; Stone Lion Capital Partners v. Lion Capital, 110 USPQ2d at 1160; Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). “The marks ‘must be considered ... in light of the fallibility of memory’ sophistication of prospective purchasers, discussed below, or on Registrant’s advertising services instead of Registrant’s computer services vis-à-vis its own search engine. See id. at p. 5 (7 TTABVUE 6). Serial No. 87467535 - 6 - and ‘not on the basis of side-by-side comparison.”’ 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, 3 (CCPA 1977)). The proper focus is on the recollection of the average consumer, who retains a general rather than specific impression of the marks. In re FabFitFun, Inc., 127 USPQ2d 1670, 1675 (TTAB 2018). Applicant’s mark is TRUCK TRADER, with TRUCK disclaimed. Registrant’s mark is COMMERCIAL TRUCK TRADER, with COMMERCIAL TRUCK disclaimed. Applicant argues that the examining attorney erred by dissecting the marks and disregarding the word COMMERCIAL which is present in Registrant’s mark but is absent from Applicant’s mark. Brief, p. 4 (7 TTABVUE 5). The Examining Attorney argues that while Applicant’s mark does not feature the word COMMERCIAL, Applicant’s mark is still likely to appear to prospective purchasers as a shortened form of Registrant’s mark; and that Applicant’s mark does not create a distinct commercial impression different from the cited mark because Applicant’s mark is fully comprised of the last two words of the cited mark and does not contain any additional wording that would distinguish it from that mark. Brief, unnumbered p. 4 (9 TTABVUE 5). Our analysis cannot be predicated on dissection of the involved marks. See Stone Lion Capital Partners v. Lion Capital, 110 USPQ2d at 1161. Rather, we are obliged to consider the marks in their entireties. Id. See also, Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a Serial No. 87467535 - 7 - mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). Nonetheless, “‘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 a consideration of the marks in their entireties.’” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)); accord TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1116 (TTAB 2018). Where, as here, the services are legally identical in part, less similarity between the marks is needed for us to find a likelihood of confusion. See, e.g., Viterra, 101 USPQ2d at 1908; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (“When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.”). Applicant’s TRUCK TRADER mark is encompassed by Registrant’s mark. While there is no rule that likelihood of confusion automatically applies where one mark encompasses another, likelihood of confusion has often been found where the entirety of one mark is incorporated within another. See In re Denisi, 225 USPQ 624, 626 (TTAB 1985) (PERRY’S PIZZA for pizza restaurants and PERRY’S for restaurant and bar services); see also Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL LANCER for club soda, quinine water and ginger ale likely to cause confusion with Serial No. 87467535 - 8 - BENGAL for gin); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (BARR GROUP wholly encompasses the registered mark BARR); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY DRUM for hairdressing and conditioner likely to cause confusion with EBONY for cosmetics); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE marks similar to registered mark CREST CAREER IMAGES). The marks are similar in appearance and sound to the extent that Registrant’s mark fully encompasses Applicant’s mark. Although Applicant has disclaimed TRUCK in its application for registration on the Supplemental Register, and Registrant has disclaimed COMMERCIAL TRUCK in its registration on the Principal Register under Section 2(f), and this means that the word TRADER in each mark is the least descriptive term, see TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1213.03(b) (Oct. 2018) (“If a mark is comprised in part of matter that, as applied to the . . . services, is generic or does not function as a mark, the matter must be disclaimed to permit registration on the Principal Register (including registration under §2(f) . . .) or on the Supplemental Register.”), the disclaimed terms nonetheless play a part in creating similar commercial impressions with the marks. Each mark conveys the impression of a business involving the buying and selling of trucks – whether commercial or not.5 5 A “trader” is “a person whose business is buying and selling or barter: such as” a “merchant.” MERRIAM-WEBSTER DICTIONARY, August 25, 2017 Office Action at TSDR 18. Citations to the examination record refer to the USPTO’s online Trademark Status and Document Retrieval System (TSDR), by page number in the downloadable .pdf format. Serial No. 87467535 - 9 - Far from distinguishing Applicant’s mark, the deletion of COMMERCIAL from COMMERCIAL TRUCK TRADER to create the shortened mark TRUCK TRADER tends to suggest another vehicle database emanating from the same source. See In re Collegian Sportswear, Inc., 224 USPQ 174, 176 (TTAB 1984) (“...customers familiar with registrant’s ‘COLLEGIENNE’ clothing might believe that ‘COLLEGIAN OF CALIFORNIA’ clothing was a new line of clothing from registrant featuring a ‘California’ or west coast style.”). As the Examining Attorney argues, Applicant’s mark is likely to appear to prospective purchasers as a shortened form of Registrant’s mark. See In re Mighty Leaf Tea, 94 USPQ2d at 1260 (“the Board found ... that ML is likely to be perceived as a shortened version of ML MARK LEES when used on the same or closely related skin care products. ... Avoidance of this kind of confusion about the provenance of goods is the very problem to which the Lanham Act was directed.”); Big M. Inc. v. U.S. Shoe Corp., 228 USPQ 614, 616 (TTAB 1985) (“[W]e cannot ignore the propensity of consumers to often shorten trademarks....”). Inasmuch as the marks have similar sounds, appearances, and commercial impressions, the first du Pont factor also weighs in favor of likelihood of confusion. C. Buyers to whom Sales Are Made Under the fourth du Pont factor, we consider “[t]he conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” du Pont, 177 USPQ at 567. Applicant argues in its main brief that its “services clearly require selection with care and deliberation after significant investigation.” Brief, p. 5 (7 TTABVUE 6). However, the record does not support Applicant’s statement; there Serial No. 87467535 - 10 - is no evidence that users of a search engine featuring automobiles exercise any care or deliberation when choosing a website on which to search for new or used cars. Applicant modifies its argument in the reply brief, stating that its “goods are significant, long-term, high-value purchases” and “that consumers devote substantial time, energy, and expense” when purchasing vehicles. Reply Brief, p. 2 (10 TTABVUE 3). Applicant’s argument is unpersuasive, and Applicant’s reliance on the presumed sophistication of vehicle purchasers is misplaced. We must focus on the identifications of services in the application and cited registration. Neither Applicant nor Registrant is the source of vehicles as goods; instead, their services are providing websites (or computer databases via an online electronic communications network) on which third-party vehicles may be sold.6 While we acknowledge that “in view of the substantial cost of a new automobile, the consumer typically makes a purchasing decision based on style, performance and price rather than on impulse or whim,” In re Gen. Motors Corp., 23 USPQ2d 1465, 1469 (TTAB 1992), it is not necessarily the case that the same degree of sophistication and discrimination is applied to the selection of a third-party website on which a search for a vehicle may be conducted. Even if we were to assume that Applicant meant that users of its and Registrant’s website services are sophisticated or exercise some degree of care when choosing an online automotive search engine, Applicant did not provide evidence that purchasers 6 Cf. In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207, 1209 (Fed. Cir. 1987) (“activities which are ‘necessarily done’ in connection with the sale of one’s goods are the quintessential ‘routine or ordinary’ activities associated with the sale of one’s goods”); Landmark Commc’ns, 204 USPQ 692, 695 (TTAB 1979) (the mere advertising of one’s own product is not a separate service). Serial No. 87467535 - 11 - of vehicles who use websites to search for cars or trucks would exercise any increased degree of care when choosing which website to browse. At any rate, as noted above, we focus on the identification of services, not on any extrinsic evidence of the nature of the services, see In re Detroit Athletic Co., 128 USPQ2d at 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)), and there are no restrictions on consumers in either of the identifications. We must base our decision on the “least sophisticated potential purchasers” for the services as identified, search engines for automobiles and online databases for vehicles. Consumers at all income levels use these ubiquitous services, which as identified are not limited to any particular consumers or price points.7 See e.g. Stone Lion Capital Partners v. Lion Capital, 110 USPQ2d at 1163 (citing Gen. Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011), judgment set aside on other grounds, 2014 WL 343267 (TTAB 2014)). While care and deliberation may be used in purchasing a vehicle, it has not been shown that care or deliberation is used to select the search engine used to shop for vehicles. Accordingly, this factor is neutral. D. Summary We have considered all of the arguments and evidence of record, and all relevant du Pont factors. We have found that the marks at issue are similar; that Applicant’s 7 “[I]t is common to provide online digital databases to facilitate the researching, buying, and selling of vehicles.” August 25, 2017 Office Action at TSDR 3 (citing websites from Autotrader .com, Cars.com, CarGurus.com, CarStory.com, and CarSquare, attached at TSDR 10-14). Serial No. 87467535 - 12 - identified services are encompassed by and legally identical in part to Registrant’s services; that the respective services move in the same or overlapping trade channels, and that they are offered to the same class of relevant purchasers, who cannot necessarily be expected to avoid confusion, even if they exercise sophistication and care in their purchases of third-party goods sold via the services.8 II. Decision The refusal to register Applicant’s mark TRUCK TRADER is affirmed. 8 Nonetheless, any care in purchasing is outweighed by the similar marks and in-part legally identical services. See HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840, 1841-42 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods or services).