E Century LLC

Trademark Trial and Appeal Board

Sep 30, 2017

No. 86888917 (T.T.A.B. Sep. 30, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 30, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re E Century LLC
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Serial No. 86888917
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Daniel M. Cislo and Kristin B. Kosinski of Cislo & Thomas LLP
for E Century LLC.

Rebecca Gilbert, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
_____
Before Quinn, Kuczma, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background
E Century LLC (“Applicant”) seeks registration on the Principal Register of the
mark shown below for “sport utility belts, namely specialty belt holsters specially
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adapted for carrying cell phones while participating in sports” in International Class
9.1

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 registered mark
10TERRA in standard characters for “Carrying cases for mobile computers;
Protective covers and cases for cell phones, laptops and portable media players;
Protective covers and cases for tablet computers” in International Class 9.2 After the
Examining Attorney made the refusal final, Applicant appealed and requested
reconsideration. On remand, the Examining Attorney denied the request. This appeal
then resumed. We affirm the refusal.
II. Likelihood of Confusion
The 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, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between

1 Application Serial No. 86888917 was filed January 27, 2016, based on use in commerce
under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
2 Registration No. 4375130 issued July 30, 2013.
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the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.2d
1340, 71 USPQ2d 1944 (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.”).
A. Number and Nature of Similar Marks for Similar Goods
Before we turn to the comparison of marks, we address Applicant’s argument in
its brief that the cited mark is weak, based on the following third-party registrations:3
• TERRA PEAK (Reg. No. 5155414) for goods that include “All purpose sport
bags”
• [wording in the mark reads “TERRA MOUSE.. THE WORLD
IS YOUR HOUSE] (Reg. No. 4526139) for goods that include “Sports bags”
• TERRA LINDA (Reg. No. 3407055) for a variety of printed items in
International Class 16
• TERRA MUSE (Reg. No. 5156111) for goods that include “Cloth bags for
storage” and “Sacks or bags for the transportation or storage of materials
in bulk”

3 March 14, 2017 Request for Reconsideration at 24-31. We have not considered the TESS
list, to which the Examining Attorney has objected. See In re 1st USA Realty Professionals,
Inc., 84 USPQ2d 1581, 1583 (TTAB 2007). TESS listings do not suffice to make the listed
registrations or applications part of the record. See Edom Labs Inc. v. Lichter, 102 USPQ2d
1546, 1550 (TTAB 2012).
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The Federal Circuit has held that evidence of the extensive registration and use
of a term by others for similar goods can show the term’s weakness. Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. v. 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, 1674 (Fed. Cir. 2015). Third-party registrations
and uses may “show that the common term [between two marks] has an accepted
meaning in a given field and that marks containing the term have been registered
and used for related goods because the remaining portions of the mark may be
sufficient to distinguish the marks as a whole from one another.” Promark v. GFA
Brands, Inc., 114 USPQ2d 1232, 1244 (TTAB 2015); see also In re Box Solutions Corp.,
79 USPQ2d 1953, 1955 (TTAB 2006) (“Third-party registrations can be used in the
manner of a dictionary definition to illustrate how a term is perceived in the trade or
industry”).
As an initial matter, we note that in this case, Applicant offered no third-party
use evidence, instead relying only on registration evidence, to support weakness.
Thus, Applicant’s evidence does not demonstrate actual consumer exposure to other
marks containing or consisting of “terra,” because in this regard, “[t]he probative
value of third-party trademarks depends entirely upon their usage.” See Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1693 (Fed. Cir. 2005). Turning to the third-party registration
evidence, we find it lacking to demonstrate the conceptual weakness of “terra” in the
relevant industry. We have no basis in the record to find the printed items and bags
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– or any other goods in the third-party registrations – sufficiently similar to the goods
at issue, so as to bear on the strength or weakness of TERRA in the field of cell phone
cases or other goods in the cited registration. See In re i.am.symbolic llc, 866 USPQ2d
1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (the applicant “has neither introduced
evidence, nor provided adequate explanation to support a determination that the
existence of I AM marks for goods in other classes … support a finding that
registrants’ marks are weak with respect to the goods identified in their
registrations”).
We therefore find the sixth du Pont factor neutral.
B. Similarity of the Marks
Bearing in mind our finding regarding the strength of the cited mark, we turn
next to the first du Pont factor, comparison of the applied-for and cited marks, we
consider them “in their entireties as to appearance, sound, connotation and
commercial impression.” Palm Bay Imports, 73 USPQ2d at 1691 (quoting du Pont,
177 USPQ at 567). The test assesses 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 goods offered under the respective
marks is likely to result. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Labs, 102 USPQ2d at 1551.
Comparing to 10TERRA, we must disregard Applicant’s
arguments based on the color and script of its mark or the alleged “hard, angular
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edges” of Registrant’s,4 as the standard character mark in the cited registration could
be presented in any color, font style or size, including in the same color and script
used in Applicant’s mark. See In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1909
(Fed. Cir. 2012); see also 37 C.F.R. § 2.52(a). Thus, the difference between the marks
essentially consists of the number “10” preceding TERRA in the registered mark.
Although this single-syllable, two-digit number creates some variation in the
appearance and sound of the marks, we find that the word TERRA, which means
“earth; land,”5 stands out more than 10 in the cited mark. See Packard Press, Inc. v.
Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000) (“Once
all the features of the mark are considered, . . . it is not improper to state that, for
rational reasons, more or less weight has been given to a particular feature of the
mark, provided the ultimate conclusion rests on a consideration of the marks in their
entireties.”). Although Applicant correctly notes that the number 10 portion of the
mark comes first, there is no absolute rule that the first component dominates. We
instead find that TERRA dominates the visual appearance and sound of the
registered mark. Given the nature of the word and its meaning, it plays a more
significant role than the number in the commercial impression of the mark.

4 7 TTABVUE 5-6 (Applicant’s Brief).
5 We take judicial notice of the Dictionary.com entry for “terra,” based on the Random House
Dictionary. See University of Norte Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed Cir. 1983). The Board may
take judicial notice of online dictionary definitions that exist in print format. See In re Red
Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
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Overall, considering the marks in their entireties, we find the connotations and
commercial impressions to be close because of the shared term “terra,” which also
creates a visual resemblance between the two marks and makes them sound similar.
See Viterra, 101 USPQ2d at 1911 (noting the significance of how similar the marks
sound, used by consumers to “call for” the goods). We do not agree with Applicant’s
contention that its mark conjures up “a sense of a utility belt,”6 as we find nothing in
the visual appearance or meaning of “terra” that calls to mind a sport utility belt.
Applicant also argues that the “10” component of the registered mark might signify
to consumers “the strength or size” of the goods.7 Even if we accept Applicant’s
characterization, we find that consumers familiar with Registrant’s 10TERRA mark
likely would view Applicant’s mark as indicating Registrant as the source while also
denoting a smaller or lower strength version of goods.
Given the overall resemblance in sound, appearance, connotation and commercial
impression, we find the two marks similar, weighing in favor of likely confusion.
C. The Goods, Trade Channels, and Classes of Consumers
As to the goods, we must determine whether their degree of relatedness rises to
such a level that consumers would mistakenly believe the parties’ goods emanate
from the same source. In making this analysis of the second du Pont factor, we look
to the identifications of goods in the pleaded and challenged registrations. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,

6 7 TTABVUE 6 (Applicant’s Brief).
7 7 TTABVUE 7 (Applicant’s Brief).
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1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Registrant’s broadly identified cases for cell phones would encompass all types of
such goods. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Linkvest S.A.,
24 USPQ2d 1716, 1716 (TTAB 1992). The record includes a definition of “case” as “[a]
container designed to hold or protect something.”8 Applicant has identified sport
utility belts, namely, specialty belt holsters adapted for carrying cell phones while
participating in sports. The Examining Attorney contends that sport utility belts
featuring holsters for cell phones constitute a type of cell phone case, and therefore
fall within the scope of the cited registration. We take judicial notice of the definition
of “holster” as “a case for carrying a usually small item on the person.”9
To the extent Applicant’s goods may not directly overlap with Registrant’s, the
Examining Attorney also argues they are highly related. In support thereof, the
Examining Attorney submitted 20 third-party use-based registrations that identify
both Applicant’s and Registrant’s goods under the same mark.10 Examples include
the following:
• PILLO for “cellular telephones and cellular telephone accessories, namely,
cases and holsters” (Reg. No. 4527146)
• for goods that include “cell phone cases” and “specialty
holster for carrying cellular phones” (Reg. No. 4587305)

8 Sept. 20, 2016 Office Action at 11.
9 Merriam-webster.com/dictionary/holster, entry for “holster.” See Univ. of Norte Dame du
Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
10 Sept. 20, 2016 Office Action at 14-73.
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• for goods that include “cell phone and tablet cases, cell
phone holsters” (Reg. No. 4679702)

• for goods that include “specialty holsters for carrying
or attaching mobile telephones” and “carrying cases for mobile telephones”
(Reg. No. 4773727)

• GRIFFIN for goods including “Protective cases for portable electronic
devices, namely, … smart phones,” “specialty holsters for carrying personal
electronic devices, namely, smartphones,” and “mobile telephone
accessories, namely, belt clips” (Reg. No. 4837702)

• MAXBOOST ATOMIC for goods including “waterproof cases, waterproof
pouches, protective cases, carrying cases, belt holsters, sleeves and covers
for portable electronic devices, namely cell phones” (Reg. No. 4956900)

• ELLENA for goods that include “Protective cases, carrying cases, belt
holsters, sleeves and covers for portable electronic devices, namely cell
phones” (Reg. No. 5014271)

Applicant disputes that the goods overlap, emphasizing the sport utility belt
aspect of its goods, and taking the position that the cases identified in the registration
differ because they are only protective cases. Also, Applicant notes that the record
lacks evidence of third-party marks used or registered for both cell phone cases and
sport utility belts.
We find Applicant’s and Registrant’s goods at least related, if not overlapping.
Registrant’s identification of “cases for cell phones” is not restricted, and therefore
includes all types of cell phone cases. In the broadest sense of the term “cases for cell
phones,” they encompass belt holsters for cell phones, which constitute a type of case
that is part of a belt. Even if we accepted Applicant’s contention that the goods do not
directly overlap, Applicant’s belt holsters certainly are a type of cell phone holster,
and the third-party registration evidence suggests that cases for cell phones and cell
Serial No. 86888917
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phone holsters commonly emanate from the same source. Third-party registrations
based on use in commerce that cover the same types of goods suggest that the listed
goods and services may emanate from the same source. In re Aquamar, Inc., 115
USPQ26 1122, 1126 n.5 (TTAB 2015); In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988).
Turning to the trade channels, we presume, as we must, that Applicant’s and
Registrant’s goods are available to all potential classes of ordinary consumers and
move in all the normal channels of trade. See i.am.symbolic, 123 USPQ2d at 1751
(“In the absence of meaningful limitations in either the application or the cited
registrations, the Board properly presumed that the goods travel through all usual
channels of trade and are offered to all normal potential purchasers”). Because
Applicant’s cell phone holsters are a type of cell phone case, we find that the goods
would travel through overlapping channels of trade to at least some of the same
purchasers, considerations under the third du Pont factor. See Am. Lebanese Syrian
Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB
2011); see also In re Viterra, 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). While the goods in the application may travel in trade channels for sports
equipment, the cell phone cases in the cited registration are not limited in their trade
channels. Thus, we cannot give credence to Applicant’s unsupported arguments that
Registrant’s trade channels would be limited to “stores that sell electronics, electronic
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accessories, and travel accessories.”11 Registrant’s cell phone cases presumably move
in channels of trade that include those for cases used while participating in sports.
These factors weigh in favor of likely confusion.
D. Actual Confusion
Applicant argues that the lack of actual confusion evidence weighs against likely
confusion. The seventh and eighth du Pont factors concern “[t]he nature and extent
of any actual confusion,” and “[t]he length of time during and conditions under which
there has been concurrent use without evidence of actual confusion”). du Pont, 177
USPQ at 567. While evidence of actual confusion can be persuasive, “[t]he lack of
evidence of actual confusion carries little weight, especially in an ex parte context.”
Majestic Distilling Co., 65 USPQ2d at 1205 (internal citations omitted)
(“uncorroborated statements of no known instances of actual confusion are of little
evidentiary value”). Moreover, lack of actual confusion does not equate to no
likelihood of confusion. See Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 396 (Fed. Cir. 1983); J & J Snack Foods Corp. v. McDonald’s
Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991). We find these factors
neutral.

11 11 TTABVUE 6 (Applicant’s Reply Brief).
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Conclusion
The overall similarity of the marks for overlapping and related goods 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.