No. 85035068 (T.T.A.B. Jun. 25, 2013)

DOCnMOM LLC

Trademark Trial and Appeal BoardJun 25, 2013

No. 85035068 (T.T.A.B. Jun. 25, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: June 25, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re DOCnMOM LLC _____ Serial No. 85035068 _____ Matthew H. Swyers of The Swyers Law Firm, PLLC for DOCnMOM LLC. Renee McCray, Trademark Examining Attorney, Law Office 111 (Robert L. Lorenzo, Managing Attorney). _____ Before Bucher, Taylor and Kuczma, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: DOCnMOM LLC (“applicant”) appeals from the final refusal to register the following mark in standard character format: for the following goods: Automobiles and structural parts, including propulsion systems, therefor in Class 12.1 1 Application Serial No. 85035068 filed May 11, 2010, under Sections 1(b) and 44(e) of the Trademark Act, 15 U.S.C. §§ 1051(b) and 1126(e). Serial No. 85035068 2 The examining attorney issued a final refusal to register the mark pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing the following Registration as a bar to registration: Registration No. 39681762 Mark: BLUE HARMONY (standard character claim) For inter alia (in relevant part as designated by the examining attorney):3 Navigation apparatus for vehicles, remote controls for engine starters, remote controls for headlights, turning signals, tail lights, remote controls for navigation systems, automatic indicators of low pressure in vehicle tires; multiplexers; speedometers; tachometers; fuel meters and gauges; temperature meters and gauges; oil pressure meters and gauges; voltmeters; ammeters; instrument clusters comprising meters indicating vehicle and engine conditions; combination pressure, temperature, speed engine rotational speed, fuel and voltage meters; odometers; tachographs; air flow meters for engines; output signal level, signal timing, voltage and amperage testers for engine/automobile control computer; oxygen sensor; throttle sensor; intake air temperature sensor; coolant temperature sensor; knock sensor; crank position sensor; exhaust gas temperature sensor; lean mixture sensor; ambient air temperature sensor; steering sensor; piezoelectric sensor; wheel speed sensor; accelerometer; rear axle sensor; crash sensor; safety sensor; ultrasonic sensor; speed sensor; magnetic field sensor; rain sensor; computer programs for controlling vehicles, engines, industrial design and manufacturing, namely, ignition timing control, light control, emission control, anti-lock brake control, electronic door locks, electric motorized door locks, remote controlled locking apparatus for vehicle doors, navigation apparatus; computers for controlling air mix temperature, direction of the air, air volume, humidity, intake air and ambient air switches; satellite navigational system for use in automobiles comprising computers, computer software, receivers and displays; remote controlled door locks for vehicles in Class 9 2 Registration No. 3968176 issued May 31, 2011, based on Japanese Trademark Registration Nos. 5109071, 5113310 and 5172161. 3 Registration No. 3968176 also includes vacuum cleaners in Class 7, as well as additional non-automotive products in Classes 9 and 11. Serial No. 85035068 3 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, namely, lighting fixtures, lighting apparatus for vehicles, lighting tracks, lighting tubes, electric lamps, light control apparatus in vehicles, households and industrial installations, heaters for vehicles and their parts and fittings, defrosters for vehicles, cooling installations and machines for vehicles and factories, namely, air cooling apparatus, cooling evaporators, ventilators for vehicles, ventilation installations and apparatus for vehicles and factories, namely, air-conditioning, air cooling and ventilation apparatus and instruments; air conditioners for vehicles and their parts and fittings sold as a unit; air conditioning units for household use, automobile use and factory use consists of ECUs, pipes, ducts, horses, dampers, step-servo motors, heater cores, compressors, condensers, gas coolers, evaporators, expansion valves, receivers, accumulators, blower motors, fans and cases; air cooling units for domestic use, household use, automobile use and factory use in Class 11, and Vehicles, namely, automobiles, bicycles, cars, motorbuses, motor cars, motorcycles; Apparatus for locomotion by land, namely, automobiles, bicycles, cars, motorbuses, motor cars, motorcycles; electric vehicles, namely, electric cars, electric railcar, electric trollybuses, wheelchair, electric scooter, electric automobiles, electric bicycles, electric motor buses, electric motorcycles; anti-theft alarms and devices for vehicles; anti-dazzle review mirrors for vehicles; anti-theft alarms for vehicles; horns for vehicles; rearview mirrors; reversing alarms for vehicles; automatic steering apparatus for vehicles comprised of electric steering gears, steering brakes, steering knuckles, steering units for vehicles, and steering wheels; anti-theft warning apparatus for motor cars; warning alarms for drivers for vehicle abnormal and failure conditions; burglar alarms for vehicles in Class 12. Owner: Denso Corporation of Kariya-city, Japan After the refusal was made final, applicant appealed. Applicant and the examining attorney have filed briefs. For the reasons set forth below, the refusal to register is affirmed. Serial No. 85035068 4 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 and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We have considered these two factors as well as the other du Pont factors on which applicant and the examining attorney have submitted evidence and argument. A. Similarity of the Marks We consider the first du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, and commercial impression. 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 in their entireties 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. Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) and San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977). Serial No. 85035068 5 In light of the fact that applicant’s mark and the cited mark both include the word “Harmony,” applicant’s HARMONY mark is similar in appearance and sound to the cited BLUE HARMONY mark. The meanings and commercial impressions of the marks are also similar. 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. In re Warnaco Inc. v. Holiday Golf Products, 204 USPQ 69, 73 (TTAB 1979). The word HARMONY is arbitrary and possesses the same meaning in each mark with respect to the involved automotive products of applicant and registrant and, the addition of the word BLUE in the cited mark does not alter this meaning. Thus, the omission of the word BLUE in applicant’s mark, which is otherwise identical to the cited mark, is insufficient to distinguish the marks. Indeed, the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See China Healthways Institute Inc. v. Xiaoming Wang, 491 F.3d 1337, 83 USPQ2d 1123 (Fed. Cir. 2007) (the common word in CHI and CHI PLUS is likely to cause confusion despite difference in the marks’ designs); and In re West Point–Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (CCPA 1972) (WEST POINT PEPPERELL likely to cause confusion with WEST POINT for similar Serial No. 85035068 6 goods). This is particularly so where, as here, the difference between the marks is merely the name of a color. Cf. In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (JOSE GASPAR GOLD for tequila likely to cause confusion with GASPAR’S ALE for ale); Warnaco, 204 USPQ at 73-74 (STAG for golf clubs is substantially similar in sound and appearance to WHITE STAG for clothing and likely to cause confusion) and In re Red Diamond Battery Co., 203 USPQ 472 (TTAB 1979) (holding RED DIAMOND for storage batteries likely to be confused with DIAMOND for rubber automobile and vehicle tires). 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). In the cited BLUE HARMONY mark, the word HARMONY is immediately recognizable and would be associated with something musical or tranquil, and the word BLUE does not alter this association.4 In some circumstances, “one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark.” In re National Data 4 Definition of Harmony: 1. Archaic: tuneful sound: MELODY; 2a: the combination of simultaneous notes in a musical chord, b: music with respect to the composition and progression of chords, c: the science of the structure, relation, and progression of chords; 3a: pleasing or congruent arrangement of parts . . . b: CORRESPONDENCE, ACCORD . . . , c: internal calm: TRANQUILLITY [sic] … . www.merriam-webster.com/dictionary/harmony. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). Serial No. 85035068 7 Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); also see Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ 1842, 1845 (Fed. Cir. 2000). Given the arbitrary meaning of the word HARMONY and the minimal impact of the word BLUE, HARMONY is the dominant part of the cited mark. Inasmuch as applicant’s mark consists solely of the word HARMONY, it is identical to the dominant portion of the cited mark. Based on the overall similarity of the HARMONY and BLUE HARMONY marks in appearance, sound, meaning and commercial impressions, it is likely that the average purchaser would retain the same recollection for each mark. B. Number and Nature of Similar Marks in Use on Similar Goods Relying on third-party registrations to show the weakness of the cited mark, applicant argues that the fifth du Pont factor, the number and nature of similar marks, favors applicant because the registrations show the “dilution” of the word “Harmony.”5 Applicant’s heavy reliance on third-party registrations to support its position is misplaced. While evidence of third-party usage of similar marks on similar goods is relevant to show the weakness of a mark, third-party registrations are not evidence that the marks depicted therein are in use or that the public is aware of them, and they are thus of no probative value as to the weakness of the cited mark. See Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). 5 See Brief of the Applicant (“Applicant’s Appeal Brief”) pp. 5-6; and Exhibits 4-12 attached to June 12, 2012 Response to Office Action. Serial No. 85035068 8 In addition to the fact that the third-party registrations are not probative of third-party use, most of the registrations recite non-automotive products which appear to be unrelated to applicant’s goods. In view of the foregoing, the third-party registrations do not support a finding that the cited mark is weak or otherwise entitled to a narrow scope of protection. The absence of evidence that HARMONY is a weak term for automotive products further supports the similarity of applicant’s mark and the cited mark. C. Similarity of Goods, Channels of Trade and Classes of Consumers We next consider the du Pont factors involving the similarity or dissimilarity of applicant’s goods in relation to the goods in the cited registration and their respective channels of trade and classes of consumers. Applicant’s goods are automobiles and structural parts, including propulsion systems therefor. Registrant’s goods comprise automobiles, electric vehicles and structural parts and accessories therefor. To the extent that both the subject application and the cited registration cover automobiles, the goods are identical in part. As to applicant’s remaining goods, “structural parts for automobiles, including propulsion systems,” the evidence shows that such goods are marketed by the sellers of automobiles to the same customers in the same channels of trade: ● Spokane Valley Online Website: “Looking for a new or used car? How about parts and accessories?” Website also contains listings of New Vehicle dealers and sellers of automotive Parts and Accessories. http://www.spokanevalleyonline.com/automobiles6 6 See attachment Nos. 9-11 to April 21, 2012 Office Action. Serial No. 85035068 9 ● Honda website containing links to “Honda Automobiles” [by model] with a sublink to “Buy Honda Accessories and Parts;” also having a link for “Acura Automobiles” with a sublink to “Acura Store: Accessories, Parts.” http://www.honda.com/sitemap.sapx.7 ● OldWheels.com website: “OldWheels.Com is an e- commerce marketplace where buyers and sellers can come together to find buy sell and auction a variety of vehicles, parts and accessories . . . “ http://www.oldwheels.com.8 ● Automotive Classifieds listing on Yahoo containing list of websites featuring ads for cars other motor vehicles, parts and accessories. http://dir.yahoo.com/Business_and_Economy/Sho pping_and_Services/Automotive/Classifieds/?o=a.9 ● Ford Motor Company websites for cars and parts. http://ford.com/?searchid=35041264|1184032024 |11430330 and http://www.fordparts.com/.10 ● Dealer website marketing vehicle incentives and vehicle parts. http://www.koonschrysler.net/tcd/parts/?tcdkwid =33429777&tcdcmpid=39468&tcdadid=165230589 91&locale=en US.11 7 See attachment Nos. 16-17 to April 21, 2012 Office Action. 8 See attachment Nos. 19-20 to April 21, 2012 Office Action. 9 See attachment Nos. 21-29 to April 21, 2012 Office Action. 10 See attachment Nos. 21-22 to July 15, 2012 Office Action. 11 See attachment No. 23 to July 15, 2012 Office Action. Serial No. 85035068 10 The record also contains five third-party registrations12 in addition to Internet and Lexis-Nexis excerpted articles13 that show the same sources offering a wide variety of automobiles, and automobile parts and accessories. The foregoing evidence establishes not only that applicant’s remaining products are related to those in the cited registration, but they will be sold in the same trade channels to the same consumers. Applicant argues that its goods differ from registrant’s goods because registrant’s mark is used in connection with an aftermarket automobile accessory for owners of Toyota automobiles in Japan, namely, an in-vehicle device allowing users to access their consumer electronic devices, as well as connect to an outside data source.14 Its argument however, is contrary to the well-settled doctrine that the issue of likelihood of confusion between applied-for and registered marks must be determined on the basis of the goods and services 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); In re Accelerate s.a.l., 101 USPQ2d 2047, 2050 (TTAB 2012). Because the goods are in part identical and otherwise closely related, and because neither applicant’s identification of goods nor the identifications of goods contained in the cited registration contain any restriction with respect to the 12 See attachment Nos. 21-22 to July 15, 2012 Office Action. 13 See attachment No. 23 to July 15, 2012 Office Action. 14 Applicant’s Appeal Brief p. 7. Serial No. 85035068 11 channels of trade or classes of customers, we can also presume that the goods move in the same channels of trade and are sold to the same classes of customers. See 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). The Affidavit of Russell Darnell submitted by applicant does not overcome the legal presumption resulting from the lack of restrictions in the application and cited registration. Moreover, Mr. Russell’s statements regarding the registrant’s goods, channels of trade and customers are not based on personal knowledge and accordingly, have little, if any probative value.15 Based on the legally identical and highly related nature of the goods set forth in the application and cited registration, and the similar trade channels and customers, the du Pont factors of the similarity of the goods, trade channels and customers favor a finding of likelihood of confusion. 15 The affiant, Russell Darnell, appears to have some unexplained relationship with applicant. Mr. Darnell’s statements about registrant’s BLUE HARMONY products, channels of trade and customers are based on information appearing on the website densocorp-na.com/visions/2010spring-summer/coverstory.php, as well as his conclusion concerning the lack of evidence he was able to find regarding the sales and distribution of registrant’s goods in the United States. See Affidavit of Russell Darnell and Exhibit D to Affidavit, attached as Exhibit 3 to June 12, 2012 Response to Office Action. Serial No. 85035068 12 D. The Absence of Actual Confusion as Between the Marks and the Length of Time in Which the Marks Have Co-existed Without Actual Confusion Occurring Although applicant has asserted that the absence of confusion is a relevant factor in this case, it has not presented any argument why this factor weighs in its favor.16 In view of Mr. Darnell’s admission that applicant’s goods have not yet been placed on the market, it is highly unlikely that any confusion would have occurred. Therefore, this factor is not applicable and we treat it as neutral. Conclusion In view of the presence of the distinctive word HARMONY in both applicant’s mark and the cited BLUE HARMONY mark, and the identical and closely related products of applicant and registrant, the omission of the word BLUE from applicant’s mark is not sufficient to distinguish the marks so as to avoid a likelihood of confusion. Moreover, where the goods of the applicant and cited registrant are identical in part and/or closely related as they are in this case, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); also see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004). Decision: The refusal to register applicant’s mark under § 2(d) of the Trademark Act based on a likelihood of confusion with the mark shown in Registration No. 3968176 is affirmed. 16 See Applicant’s Appeal Brief p. 5.