87290299 (T.T.A.B. Sep. 25, 2019)

Dream Labs, LLC

Trademark Trial and Appeal BoardSep 25, 2019

87290299 (T.T.A.B. Sep. 25, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: September 25, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Dream Labs, LLC _____ Serial No. 87290299 _____ David B. Sunshine and Brianne L. Polito of Cozen O’Connor P.C. for Dream Labs, LLC Xheneta Ademi, Trademark Examining Attorney, Law Office 122, John Lincoski, Managing Attorney. _____ Before Bergsman, Wellington, and Ritchie, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Dream Labs, LLC (“Applicant”) seeks registration of the standard character mark RILEY on the Principal Register for the following goods and services:1 Bath robes; Pajamas; Sleep masks; Slippers, in International Class 25; and Retail store services featuring gel eye masks, candles, perfumed candles, scented candles, pillows, mattresses, mattress toppers, bedding, namely, pillow covers, pillow cases, mattress covers, comforters, bed blankets, comforter covers, sheets, sheet covers, duvet covers, throws, quilts, pillow shams, bed skirts and mattress pads, bath linens, namely, towels, bath 1 Application Serial No. 87290299 was filed on January 5, 2017, and is based on Applicant’s claim of a bona fide intent to use the mark in commerce, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 87290299 - 2 - towels, hand towels, wash cloths, bath sheets, shower curtains, bath robes, bath mats and bath rugs, slippers, pajamas, and sleep masks; On-line retail store services featuring gel eye masks, candles, perfumed candles, scented candles, pillows, mattresses, mattress toppers, bedding, namely, pillow covers, pillow cases, mattress covers, comforters, bed blankets, comforter covers, sheets, sheet covers, duvet covers, throws, quilts, pillow shams, bed skirts and mattress pads, bath linens, namely, towels, bath towels, hand towels, wash cloths, bath sheets, shower curtains, bath robes, bath mats and bath rugs, slippers, pajamas, and sleep masks, in International Class 35. The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the following two registered marks, owned by different entities: RILEY (in standard characters) (Reg. No. 4845847)2 for: Jeans; Shorts; Skirts; Sweatpants; Sweatshirts; T-shirts; Tank-tops, in International Class 25; and RG RILEY (in standard characters) (Reg. No. 4375767)3 for: Wholesale distributorships featuring clothing and general consumer merchandise, in International Class 35. Specifically, the Examining Attorney cites solely to Reg. ‘847 as a bar to registration for the Class 25 goods, and to Reg. ‘767 as a bar to registration with respect to the Class 35 services.4 2 Registration No. 4845847 issued on November 29, 2016. 3 Registration No. 54375767 issued on July 30, 2013; Sections 8 and 15 affidavits accepted and acknowledged. The registration is based on a claim of acquired distinctiveness, under Section 2(f), as to the mark in whole, and contains a statement that “the name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual.” 4 9 TTABVUE 6 (Examining Attorney’s Brief, Notes 1-2). Serial No. 87290299 - 3 - After the refusal was made final, Applicant filed an appeal and requested reconsideration. Reconsideration was denied by the Examining Attorney, the proceeding was resumed, and the appeal has been briefed. For the following reasons, we affirm the refusal as to the goods in Class 25 and the services in Class 35. I. Applicable Law When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in 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). We have considered each DuPont factor for which there is argument and evidence of record. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); 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.”). “[E]ach case must be decided on its own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). A. Degree of Strength or Weakness of the Shared Term RILEY Serial No. 87290299 - 4 - We begin our likelihood of confusion analysis by first addressing a key point of contention between Applicant and the Examining Attorney – namely, the degree of strength or weakness in the name RILEY. Applicant argues that RILEY is weak “in light of the numerous third party registrations and uses of marks containing RILEY in connection with apparel.”5 Applicant submitted third-party registration and use evidence and, based thereon, argues that the cited registrations are only entitled to a narrow scope of protection. The Examining Attorney, on the other hand, asserts that the evidence is “insufficient to establish that the word RILEY is weak or diluted.”6 “In determining the strength of a mark, we consider both its inherent strength based on the nature of the mark itself and its commercial strength, based on the marketplace recognition value of the mark.” American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011) (citing Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) and McCarthy on Trademarks and Unfair Competition § 11:83 (4th ed. 2011) (“The first enquiry focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another's use.”)). “[T]he strength of a mark is not a binary factor” and “varies along a spectrum from very strong to very weak.” Juice Generation, 115 USPQ2d at 1675-76 5 6 TTABVUE 11. 6 9 TTABVUE 10. Serial No. 87290299 - 5 - (internal citations omitted). “The weaker [the Registrant's] mark, the closer an applicant's mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Id. at 1676 (internal citations omitted). See also Palm Bay, 73 USPQ2d at 1693 (“Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”). As to any inherent weakness, RILEY is not a coined term but is a recognized surname as well as a given (first) name. The Examining Attorney notes that the “predominant meaning” of the term “is that of an Irish surname,” that also has “increasing popularity as a unisex given name.”7 The mere fact that Riley is a name does not necessarily result in the term being inherently weak. Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, n.20 (TTAB 2007) (“The fact that ARDEN is a surname does not automatically render the mark weak or entitled to only a narrow scope of protection.”). “Section 2(d) ... does not set forth special rules regarding the registration of marks involving surnames in determining the issue of likelihood of confusion.” Hunt Foods & Indus., Inc. v. Gerson Stewart Corp., 367 F.2d 431, 151 USPQ 350, 352 (CCPA 1966). We further find that there is insufficient evidence that consumers will view RILEY as being “primarily” merely a surname. Brooks v. Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1829 (TTAB 2009) (case citations omitted) (“A personal name mark, unless it is primarily merely a surname, is 7 9 TTABVUE 8, at Note 3, in explaining why a surname refusal was not issued, and citing to Wikipedia evidence attached to Office Action issue on October 10, 2017, at TSDR 10-12. Serial No. 87290299 - 6 - registrable on the Principal Register without a showing of secondary meaning, and thus is deemed to be inherently distinctive under the Lanham Act if the record shows that it is used in a manner that would be perceived by purchasers as identifying the services in addition to the person.”) Accordingly, we do not find the term, as registered, to be inherently weak. In terms of commercial weakness, however, the sixth du Pont factor includes consideration of the number and nature of similar marks, if any, that are in use on similar goods or services. “The purpose of [an applicant] introducing third-party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different such marks on the bases of minute distinctions.” Palm Bay, 73 USPQ2d at 1694. See also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted). In support of its argument that RILEY is a commercially weak mark, Applicant submitted printouts from various third-party websites showing the name RILEY (or what appears to be a phonetically equivalent name) used in marks in connection with retail store services featuring clothing. We find the most relevant examples to include: 1. RILEY BOUTIQUE (www.rileyboutique.com);8 8 Printouts attached to Applicant’s response filed September 18, 2017, TSDR p. 24. Serial No. 87290299 - 7 - 2. RACHEL RILEY (www.rachelriley.com);9 3. RILEYLAND FASHIONS (www.rileylandfashions.bigcartel.com);10 4. WILKES & RILEY (www.wilkesandriley.com);11 5. BLAKE AND RILEY (www.blakeandriley.com);12 6. LAUREN AND RILEY (www.laurenandriley.com);13 7. RILEY’S (www.shoprileysclothing.com);14 8. MAX & RILEY (www.shopmaxandriley.com);15 9. RILEY GRACE (www.shoprileygrace.com);16 10. RILEY & MCCORMICK (www.realcowboys.com);17 11. SASSY RILEY (www.sassyriley.com);18 and 12. RILEY BLAKE DESIGNS (www.rileyblakedesigns.com).19 Applicant also submitted printouts from various retail websites showing different women’s apparel items being offered for sale under a mark containing the term RILEY. This includes “Riley Relaxed Straight” jeans and a “Riley Tee” shirt offered 9 Id., TSDR p. 25. 10 Id., TSDR p. 30 11 Id., TSDR p. 33 12 Id., TSDR p. 34 13 Id., TSDR p. 35 14 Attached to Applicant’s response filed April 9, 2018, TSDR p. 49. 15 Id., TSDR p. 50. 16 Id., TSDR p. 51. 17 Id., TSDR p. 55. 18 Id., TSDR p. 51. 19 Id., TSDR p. 51. Serial No. 87290299 - 8 - for sale on the Revolve website (www.revolve.com),20 and a “Riley Off-the-Shoulder Textured Silk Blouse” offered for sale by Neiman Marcus (www.neimanmarcus.com).21 The retail clothing store Anthropologie (www.anthropologie.com) offers a “Riley Striped Knit Dress” for sale.22 We have also reviewed Applicant’s submission of copies of 12 third-party registrations for marks containing the term RILEY (or a similarly spelled term, e.g., REILEY, REILLY, RYLEE, etc.).23 The most relevant of these registrations are the following the following that cover apparel: J. RILEY (Reg. No. 4955518); RILEY + JAMES (Reg. No. 4346998); REESE + RILEY NEW YORK (Reg. No. 5076588); WILKES & RILEY (Reg. No. 5096470); REILEY JADE (Reg. No. 4435088); RYLEE + CRU (Reg. No. 5258815); and REILLY with design (Reg. No. 1913419).24 Although these registrations, by themselves, are not evidence that the marks are in use in commerce or that consumers are even aware of them, they are “relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.” Juice Generation, 115 USPQ2d at 1675 (quoting Textronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 20 Printouts attached to Applicant’s response filed September 18, 2017, TSDR p. 26-28. 21 Id., TSDR p. 32. 22 Attached to Applicant’s response filed April 9, 2018, TSDR p. 55. 23 Copies attached to Applicant’s responses filed September 18, 2017 and April 9, 2018. 24 The other registrations have less relevance because they either have additional matter that makes the inclusion of RILEY or similar term less significant or they cover unrelated services and goods. Serial No. 87290299 - 9 - 693, 694 (CCPA 1976)). In other words, the registrations help further show how third- parties may adopt a mark containing the name RILEY. Based on the evidence before us, there is some commercial weakness in the term RILEY when used in connection with retail services featuring apparel as well as in connection with use of this term on apparel. We are reminded, however, that weakness is not a binary question. Rather, we weigh this weakness of the name RILEY into our analysis involving the similarity of the marks and ultimately into our conclusion whether there is likelihood of confusion. We continue our likelihood of confusion analysis. In doing so, and in view of the fact that the Examining Attorney cites one registered mark with respect to Applicant’s goods in Class 25 and a second registered mark with respect to Applicant’s services in Class 35, we separate our findings as to each class. B. Refusal as to Applicant’s Class 25 Goods The Examining Attorney has cited the registered, standard character mark RILEY (in standard characters) for “Jeans; Shorts; Skirts; Sweatpants; Sweatshirts; T-shirts; Tank-tops” as a bar to registration of the same mark by Applicant for “Bath robes; Pajamas; Sleep masks; Slippers.” 1. Identical Marks Under the first du Pont factor, we compare the involved marks “in their entireties as to appearance, sound, connotation and commercial impression.” Viterra, 101 USPQ2d at 1908 (quoting du Pont, 177 USPQ at 567); see also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d Serial No. 87290299 - 10 - 1689, 1691 (Fed. Cir. 2005). In this case, the marks are identical and thus this factor weighs strongly in favor of finding confusion likely. 2. Related Goods and Same Trade Channels With respect to the second and third du Pont factors, the similarity of the goods and their channels of trade, we must make our determinations as to these factors based on the goods 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); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The goods need not be the same and a likelihood of confusion may be found even when the respective goods are not “competitive or intrinsically related.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1737 (Fed. Cir. 2017). “Instead, likelihood of confusion can be found ‘if the respective products 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. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (internal citations omitted). Finally, we also keep in that the involved marks here are identical and in such situations the relatedness of the goods required to support a finding of likelihood of Serial No. 87290299 - 11 - confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (internal citation omitted), aff'd, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). The Examining Attorney has submitted evidence showing goods like Applicant’s, e.g., pajamas, bath robes, and slippers, being offered for sale under the same mark as the more general apparel items listed in the registration, all under the same mark on the same retail website.25 For example, Gap (www.gap.com) sells “jeans … shorts … tees and tops … sleepwear.”26 Other examples of retailers selling the same goods under the same mark include American Eagle Outfitters (www.ae.com), Victoria’s Secret (www.victoriassecret.com), Soma (www.soma.com), and Kensie (www.kensier.com). The record clearly establishes relatedness of the involved goods and that they are offered in the same type of retail outlets to the same classes of consumers. Accordingly, the du Pont factors involving the relatedness of the goods, as well as the channels of trade and classes of consumers to whom the goods are being offered, all weigh in favor of finding a likelihood of confusion. 3. Conclusion Given the identity of the marks and our finding that the goods are closely related and will be offered to the same classes of purchasers in the same trade channels, we find that confusion is likely. We make this ultimate finding as to Applicant’s Class 25 goods despite our finding of weakness of the term RILEY in connection with clothing 25 Attached to Office Actions issued on March 21, 2017, Octoboer 10, 2017, and May 4, 2018. 26 March 21, 2017 Office Action, TSDR pp. 6-23. Serial No. 87290299 - 12 - and retail clothing services. That is, in spite of any narrowing of the scope of protection for Registrant’s mark, we find it is still entitled to protection against registration of identical mark for closely related goods. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 1401 182 USPQ 108, 109 (CCPA 1974); see also In re i.am.symbolic, 127 USPQ2d 1627, 1636 n.13 (TTAB 2018). C. Refusal as to Applicant’s Class 35 Services We turn now to the Examining Attorney’s refusal to register RILEY for retail store services featuring a variety of bed, bath and linen products, including “bath robes; pajamas; sleep masks; [and] slippers,” on the basis that it is likely to be confused with the registered, standard character mark RG RILEY for “Wholesale distributorships featuring clothing and general consumer merchandise.” 1. Similarity of the Marks Here, there is the obvious similarity between the marks stemming from their shared use of the name RILEY. The marks differ only because Applicant has omitted the initials that preface the registered mark, RG RILEY. Thus the marks are overall visually and aurally quite similar. In terms of connotation, Registrant’s mark will most likely be perceived as identifying an individual with the surname RILEY and given name initials of RG. Applicant’s mark can either be understood as identifying an individual’s first name RILEY or last name. To the extent consumers understand Applicant’s mark in the latter sense, as a surname, the consumer may mistakenly believe it is a reference to the same owner or individual associated with Registrant’s services, and merely including a variation of Registrant’s mark without first initials. Serial No. 87290299 - 13 - Accordingly, we find the marks are more similar than dissimilar. This factor weighs in favor of finding a likelihood of confusion. 2. Relatedness of the Services The record demonstrates that Applicant’s retail services are related to Registrant’s wholesale “clothing and general consumer merchandise” services to the extent that consumers may be accustomed to the same entity offer goods for sale at the online retail and wholesale level. The Examining Attorney submitted printouts from several different third-party websites showing the offering of retail and wholesale services for clothing as well as other general consumer goods.27 For example, the Spinster Sisters Co. website (www.spinstersistersco.com) offers a variety of consumer merchandise, including shirts and “bath & body” products, that can be purchased online directly and the website offers instructions on “How to Order Wholesale.”28 We further point out that Registrant’s field of wholesale services includes “general consumer merchandise,” and this may include many of the same specific products that are listed in the application as Applicant offering at the retail level, e.g., “candles, perfumed candles, scented candles, pillows, mattresses, mattress toppers, bedding, namely, pillow covers, pillow cases, mattress covers, comforters, bed blankets, comforter covers, sheets, sheet covers, duvet covers, throws, quilts, pillow shams, bed skirts and mattress pads, bath linens, namely, towels, bath towels, hand towels, wash 27 Attached to Office Actions issued on October 10, 2017 (at TSDR 8-16), May 4, 2018 (at TSDR 7-43. 28 October 10, 2017 Office Action, TSDR 8-12. Serial No. 87290299 - 14 - cloths, bath sheets, [and] shower curtains.” In other words, these are all products that Registrant may be selling as “general consumer merchandise” at the wholesale level. 3. Conclusion In view of the similarity of the marks and evidence showing that Applicant’s and Registrant’s services are of a type that may emanate from a single source, we find that consumers are likely to be confused. Again, we carefully considered and weighed into our analysis Applicant’s evidence demonstrating some weakness in the term RILEY in connection with clothing and retail clothing services. We also keep in mind that the marks are not identical. Nevertheless, for the reasons explained above, we find the marks remain overall quite similar and consumers are likely to believe both are referring to the same individual. To the extent there is some uncertainty as to the level of weakness of the term RILEY and the ability of consumers to distinguish marks with this based on otherwise minimal differences, we resolve any doubt in favor of Registrant. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002) (“This court resolves doubts about the likelihood of confusion against the newcomer because the newcomer has the opportunity and obligation to avoid confusion with existing marks.”); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993). Decision: For the aforementioned reasons, the refusal under Section 2(d) to register Applicant’s mark as to both Classes 25 and 35 is affirmed.