87542492 (T.T.A.B. Apr. 25, 2019)

DJ Direct Inc.

Trademark Trial and Appeal BoardApr 25, 2019

87542492 (T.T.A.B. Apr. 25, 2019)

Mailed: April 25, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re DJ Direct Inc. _____ Serial No. 87542492 _____ Michael Steinmetz of Garson Segal Steinmetz Fladgate LLP, for DJ Direct Inc. Megan Hartnett, Trademark Examining Attorney, Law Office 123, Susan Hayash, Managing Attorney. _____ Before Cataldo, Taylor, and Wolfson, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: DJ Direct Inc. (“Applicant”) seeks registration on the Principal Register of the mark VYSTA (in standard characters) for “Fitted picnic baskets, including dishes, cooking forks, hand-operated meat tenderizer claws in the nature of forks used for shredding and serving meat, cooking skewers, corn cob holders” in International Class 21.1 1 Application Serial No. 87542492 was filed on July 25, 2017, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging June 2017 as Applicant’s dates of first use and first use in commerce. This Opinion is Not a Precedent of the TTAB Serial No. 87542492 - 2 - The Trademark Examining Attorney refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with Registration No. 4152474 for the mark VISTA (in standard characters) for “pitchers.”2 After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board and filed a Request for Reconsideration that was denied. Applicant then moved for remand to allow the Examining Attorney to consider its proposed amendment to the identification of goods. The Examining Attorney accepted the amendment of the identified goods but maintained the Section 2(d) refusal. We affirm the refusal to register. I. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key, though not exclusive, considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). A. The Marks We begin our analysis by addressing the du Pont likelihood of confusion factor focusing on “the similarity or dissimilarity of the marks in their entireties as to 2 Reg. No. 4152474 issued on June 5, 2012; Sections 8 and 15 combined declaration accepted and acknowledged. Serial No. 87542492 - 3 - appearance, sound, connotation and commercial impression.” Palm Bay Imps. 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). “The proper test is not a side- by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Applicant’s mark is VYSTA. The cited mark is VISTA. The marks are visually highly similar, each consisting of five letters starting with the letter “V” and the letter “S” in the middle and ending with the suffix “-TA.” Applicant argues that the marks are dissimilar due to the differing second letter in each, and that the “Y” in its mark is “the most prominent and noticeable part of Applicant’s trademark.” 11 TTABVUE 12. While “there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark,” Coach Services, 101 USPQ2d at 1721, Applicant has not shown that rational reasons exist for finding that the “Y” would attract the eye as its most prominent feature, rather than blend in as the middle letter of the first syllable of its mark. Indeed, Applicant’s mark appears to be a misspelling of Serial No. 87542492 - 4 - the word “vista,” which supports, rather than attenuates, the likelihood of confusion between VISTA and VYSTA. Importantly, the marks are phonetic equivalents. The Oxford dictionary excerpt that has been made of record notes that when the letter Y is used as a vowel, which in this case it is, “it’s often interchangeable with the letter I.”3 The Examining Attorney has shown that “y” and “i” share the same “short i” sound in many English-language words such as “gym” and “myth.”4 Although there are other words (e.g., “flying”) where the “y” is pronounced with a long letter “i” sound,5 there is no record evidence to show consumers’ preference with respect to Applicant’s mark. In pronouncing Applicant’s mark VYSTA, relevant purchasers will likely interchange the “y” with an “i” and pronounce the mark as VISTA, since “vista” is a recognizable word in English. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). Applicant argues that “given the numerous uses of ‘VISTA,’ consumers are able to distinguish between variations of the mark due to even slight differences.” 11 TTABVUE 13. In support, Applicant submitted with its March 28, 2018, Request for 3 At https://en.oxforddictionaries.com, attached to the Examining Attorney’s April 17, 2018 Reconsideration Letter at TSDR 3. 4 See, e.g., excerpt from http://www.really-learn-english.com, attached to the Examining Attorney’s April 17, 2018 Reconsideration Letter at TSDR 6. 5 Id. Serial No. 87542492 - 5 - Reconsideration, copies of registrations for three marks: VISTA,6 SPRING VISTA,7 and .8 Applicant also submitted five registrations, owned by the same company, for the mark VISTA OUTDOOR.9 We note that Applicant did not submit any marketplace evidence of use of third-party VISTA marks. Cf. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (Evidence of use of similar marks by third parties for similar or related goods or services, in turn, is relevant to a mark’s commercial strength). The first, for the mark VISTA, was not renewed and therefore has no probative value. See Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 1566, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] canceled registration does not provide constructive notice of anything.”); In re Pedersen, 109 USPQ2d 1185, 1197 (TTAB 2013) (citing 6 Reg. No. 502331, expired. At TSDR 7 Reg. No. 2134252, renewed. At TSDR 8 Reg. No. 4154411, registered June 5, 2012. At TSDR Applicant also submitted a list of records from the Trademark Electronic Search System (TESS) of “VISTA” marks. See December 4, 2017 Response at TSDR 8. The list includes 7 registered marks. Because the Examining Attorney did not object to the list and discussed the registrations in a subsequent Office Action, they form part of the record. In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001). Nonetheless, none of the goods or services for which the listed marks are apparently registered have been included, nor have their owners been identified. All 7 marks may have been registered for unrelated goods or services, and multiple marks may be owned by the same owner or owners. Accordingly, the list has little, if any, probative value. 9 The registrations, attached to Applicant’s March 28, 2108 Request for Reconsideration, are: Reg. No. 5246753, issued July 18, 2107; at TSDR 49-58. Reg. No. 5276711, issued August 29, 2017; at TSDR 59-67. Reg. No. 5276712, issued August 29, 2017; at TSDR 68-76. Reg. No. 5296720, issued September 26, 2017; at TSDR 77-85, 86-94, and 104-112 (Applicant need not have submitted three copies of the same registration). Reg. No. 5330020, issued November 7, 2017; at TSDR 95-103. Serial No. 87542492 - 6 - Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 1248, 178 USPQ 46, 47 (CCPA 1973) (statutory benefits of registration disappear when the registration is cancelled). The mark VISTAPRINT and design is registered for “graphic design services: providing temporary use of online software tools for use in designing and ordering electronic and printed products; website hosting services; logo design services.” None of these services are related to either Applicant’s goods or those identified in the cited registration. Thus, this registration also has no probative value. Similarly, the five VISTA OUTDOOR registrations have no probative value because they issued for unrelated goods such as hunting game calls, hunting blinds, axes, battering rams, ammunition, firearms, flashlights, and clothing for sporting and outdoor purposes and activities. The mark SPRING VISTA is for “dinnerware, namely, dinner plates, cups, saucers, bowls, non- metal serving platters, gravy boats with stands, non-precious metal tea pots, sugar bowls with lids, cream pitchers and salt and pepper shakers,” which goods are related to Opposer’s “pitchers.” However, the registration has little probative value standing alone and the mark includes the distinguishing term “SPRING,” giving it a different commercial impression than Opposer’s mark VISTA. In connotation and overall commercial impression, to the extent Applicant’s mark VYSTA will be perceived as having a meaning, it will, like the cited mark, bring to mind the idea of a “vista,” that is, “a distant view through or along an avenue or opening.”10 Accordingly, the marks are essentially identical in pronunciation, and highly similar in 10 At https://www.merriam-webster.com/dictionary/vista, accessed April 20, 2019. The Board may take judicial notice of definitions from dictionaries, including online dictionaries that exist in printed format. E.g., In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018). Serial No. 87542492 - 7 - sight, connotation and overall commercial impression. For these reasons, we find that the first du Pont factor favors a finding of likelihood of confusion. B. Similarities Between The Goods; Trade Channels; Classes of Purchasers Our determination regarding the similarity of the goods, channels of trade and classes of purchasers is based on the goods as they are identified in Applicant’s application and the cited registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). The goods need not be identical or even competitive in order to support a finding that confusion is likely to result from the use of similar marks thereon. It is sufficient for that purpose that the goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that the goods emanate from the same source.” Coach Servs., 101 USPQ2d at 1722; see also In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984). Applicant has applied to register the mark VYSTA for “fitted picnic baskets, including dishes, cooking forks, hand-operated meat tenderizer claws in the nature of forks used for shredding and serving meat, cooking skewers, corn cob holders.” The cited mark VISTA is registered for “pitchers.” The Examining Attorney has shown that these goods are related by record evidence that demonstrates a number of companies sell pitchers and fitted picnic baskets under the same mark; or sell pitchers and baskets of Serial No. 87542492 - 8 - other types (for household use) under the same mark; or sell pitchers and those individual items included in Applicant’s fitted baskets under the same mark. Through online advertising, consumers have been exposed to seeing these types of goods sold together under a single mark. For example, the Examining Attorney introduced website evidence from “Servappetit,” which sells a FruitFusion Iced Beverage Pitcher and an 18-piece Picnic Party Set under the same mark:11 11 At http://servappetit.com, attached to April 17, 2018 denial of Applicant’s Request for Reconsideration, TSDR 30-31. Serial No. 87542492 - 9 - Twine sells a “Country Cottage: Hobnail Pitcher” and a “Seaside Newport Wicker Picnic Basket”:12 12 At http://www.twineliving.com, attached to July 10, 2018 denial of Applicant’s Request for Reconsideration, TSDR 12-13. Serial No. 87542492 - 10 - TableCraft Retail sells Beverage Pitchers and a Classic Picnic Pack:13 13 At http://retail.tablecraft.com, attached to October 27, 2017 Office Action at TSDR 50 and 57. Serial No. 87542492 - 11 - The Examining Attorney also introduced printouts from two online retailers selling picnic baskets (sold empty) and “pitchers” under a single mark: Sur la Table sells a Willow Picnic Basket and a variety of pitchers:14 14 At http://www.surlatable.com, attached to July 10, 2018 denial of Applicant’s Request for Reconsideration, at TSDR X Serial No. 87542492 - 12 - Crate & Barrel sells a leather-handled picnic basket and an all-purpose pitcher:15 15 At http://www.crateandbarrel.com, attached to January 4, 2018 Office Action at TSDR 64 and 72. Serial No. 87542492 - 13 - The Examining Attorney also introduced use-based, third-party registrations to demonstrate the close relationship between “baskets” and “pitchers.” Two of the third-party registrations are for “fitted picnic baskets” and “pitchers”: Reg. No. 5335415 for the mark , registered for “fitted picnic baskets, including dishes” and “pitchers;”16 and Reg. No. 5247202 for the mark MICHAEL BASTIAN, registered for “ready picnic sets comprised primarily of baskets and dishes” and “pitchers.”17 About ten other registrations cover household “baskets” and “pitchers”; for example: Reg. No. 86283678 for the mark ARTASTE is registered for “baskets for domestic use, not of metal” and “pitchers;”18 Reg. No. 5304113 for the mark LE CREUSET is registered for “bamboo baskets for household use” and “pitchers;”19 and Reg. No. 5357590 for the mark is registered for “plastic baskets; woven baskets of wicker, straw, wood or cloth; bread baskets for domestic use” and “pitchers.”20 Several additional registrations and usage examples show that those goods that are individually contained in Applicant’s picnic baskets (namely, “dishes, cooking forks, hand-operated meat tenderizer claws in the nature of forks used for shredding and serving meat, cooking skewers, corn cob holders”) are registered or sold under a single 16 Issued November 14, 2017, attached to January 4, 2018 Office Action at TSDR 51-53. 17 Issued July 18, 2017, attached to January 4, 2018 Office Action at TSDR 26-28. 18 Issued February 3, 2015, attached to January 4, 2018 Office Action at TSDR 7-9. 19 Issued October 10, 2017, attached to January 4, 2018 Office Action at TSDR 14-18. 20 Issued December 19, 2017, attached to January 4, 2018 Office Action at TSDR 32-34. Serial No. 87542492 - 14 - mark together with “pitchers.” For example, Martha Stewart Collection corn holders and a Martha Stewart Collection glass pitcher are sold at Macy’s,21 and Vollrath online sells a stainless steel pitcher and stainless skewers.22 Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods are of a type which may emanate from a single source. In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015); In re L.C. Licensing Inc., 49 USPQ2d 1379, 1381 (TTAB 1998); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Moreover, the website evidence of third-party use is probative to show that the public has been exposed to seeing these goods sold under the same marks, such that they would expect that “pitchers” and “picnic baskets fitted with dishes, cooking forks, meat tenderizer claws, cooking skewers and corn cob holders,” when sold under similar marks, would emanate from the same source. Because the goods involved are common household items, the relevant purchasers are average buyers exercising no more than ordinary care in their purchases. Applicant argues that there are “wholesale differences between Applicant’s narrow identification of goods in connection with barbequing and the Cited Mark which is exclusively used for water filtration pitchers.”23 Applicant has submitted copies of other registrations held by Registrant for air filters for central heating and air conditioning 21 At https://www.macys.com, attached to July 10, 2018 Reconsideration Letter at TSDR 2-3. 22 At http;//vollrath.com, attached to January 4, 2018 Office Action at TSDR 94 and 100. 23 11 TTABVUE 13. Serial No. 87542492 - 15 - units to support its argument that “the kind of pitcher used and marketed with the cited mark ‘VISTA’ is actually a ‘water-filter pitcher’ and not the kind of pitcher found at a backyard-barbeque/cook-out.”24 There are two shortcomings in Applicant’s argument. First, we consider Registrant’s goods as they are identified in the cited registration, and may not restrict the scope of the goods by argument or extrinsic evidence. In re Midwest Gaming & Enter. LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008) (‘[I]t is the identification of goods that controls, not what extrinsic evidence may show about the specific nature of the goods.”). Second, unlike “air filters,” the identifications of goods of the only registration that includes “water filters” as well as air filters does not restrict them; on its face, the identified water filters may include those used in household pitchers.25 Accordingly, the second and third du Pont factors regarding the goods, and the trade channels and classes of purchasers to whom the goods are offered, favor a finding of likelihood of confusion. II. Summary Prospective consumers familiar with Registrant’s VISTA pitchers would be likely, when confronted with Applicant’s VYSTA fitted picnic baskets, to believe that the goods are manufactured by the same company. Applicant’s mark and Registrant’s mark are phonetic equivalents. They are highly similar in appearance, connotation, and overall 24 11 TTABVUE 14. 25 Reg. No. 4485775 for the mark is registered for “Air filters for, namely, central heating and air conditioning units, HVAC units, air conditioning units, and heating units; air filters for domestic use; Water filters.” March 28, 2108 Request for Reconsideration at TSDR 44-48. Serial No. 87542492 - 16 - commercial impression. The goods are related, travel through similar trade channels, and are sold to average consumers exercising ordinary purchasing care. Decision: The refusal to register Applicant’s mark under Trademark Act Section 2(d) is affirmed.