E. K. Success, Ltd.

Trademark Trial and Appeal Board

Jun 11, 2007

No. 76540506 (T.T.A.B. Jun. 11, 2007)

Mailed: June 11, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re E.K. Success, Ltd.
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Serial No. 76540506
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Robert Haroun of Sofer & Haroun, LLP for E.K. Success, Ltd.

Chris Wells, Trademark Examining Attorney, Law Office 106 (Mary
I. Sparrow, Managing Attorney).
_______

Before Hohein, Walsh and Wellington, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

E.K. Success, Ltd. has filed an application to register
the mark "COLOR OASIS" on the Principal Register in standard
character form for "stickers" in International Class 16.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "OASIS," which is registered on the Principal Register in
standard character form for "posters and stickers" in

1 Ser. No. 76540506, filed on August 27, 2003, which is based an
allegation of a bona fide intention to use such mark in commerce. The
word "COLOR" is disclaimed.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 76540506
2
International Class 16,2 as to be likely to cause confusion, or
to cause mistake, or to deceive.
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods at issue and the similarity or
dissimilarity of the respective marks in their entireties.3
Turning first to consideration of the respective goods,
it is well settled that the issue of likelihood of confusion must
be determined on the basis of the goods as they are respectively
set forth in the particular application and the cited
registration, and not in light of what such goods are asserted to
actually be. See, e.g., Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.

2 Reg. No. 2,327,042, issued on March 7, 2000, which sets forth a date
of first use of such mark anywhere of June 1995 and a date of first
use of the mark in commerce of March 1996; combined affidavit §§8 and
15.

3 The court, in particular, pointed out that: "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."
192 USPQ at 29.

Ser. No. 76540506
3
1990); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987); CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983); and Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Moreover, where the goods in the application at issue and in the
cited registration are broadly described as to their nature and
type, such that there is an absence of any restriction as to the
channels of trade and no limitation as to the classes of
purchasers, it is presumed that in scope the identification of
goods encompasses not only all goods of the nature and type
described therein, but that the identified goods are provided in
all channels of trade which would be normal therefor, and that
they would be purchased by all potential buyers thereof. See,
e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Here, as is obvious, registrant's goods are identical
in part to applicant's goods in that both are identified as
"stickers." Based upon the evidence which applicant made of
record, which consists of samples of its products (although an
amendment to allege use has not been filed) and its catalog,
along with printouts from two websites which offer registrant's
goods, applicant argues that because registrant's mark also is
the name of a rock music band, registrant's stickers and those of
applicant "differ in their nature and appearance." In
particular, applicant insists that "[t]he essence of Applicant's
goods is use in the craft and scrapbooking channels of trade,"
Ser. No. 76540506
4
while "[t]he essence of the cited mark's goods is use with the
promotion of the musical group 'Oasis' rather than craft
products." "Craft stickers," applicant maintains, "are sold in
stationary [sic] stores, specialty craft stores, and on
stationary [sic] websites, while promotional stickers for rock
bands are encountered at concerts and sold in music stores and
music websites." Besides asserting that "[t]here is very little
overlap between the channels of trade for these stickers,"
applicant also urges, although notably without any evidentiary
support, that:
Scrapbooking is a sophisticated hobby.
Those involved in the trade invest time and
money into perfecting their scrapbooks and
crafts. The customers of stationary [sic]
and specialty craft stores are discerning and
take the time to analyze the differences
between the merchandise.

Music fans are also sophisticated buyers
when purchasing band paraphernalia. Such
consumers are enthusiasts who examine the
merchandise associated with their favorite
music group.

In view thereof, applicant contends that confusion as
to the source or sponsorship of the respective goods is unlikely
inasmuch as:
Applicant's stickers depict decorative
designs varying in color and creating the
impression of a texture. The stickers
bearing the registered mark display the
images of the band members and the band name.
Applicant's stickers exude a soft impression,
while the stickers bearing the cited mark
have a harsher appearance and create a more
stark impression. A purchaser is not likely
to be deceived into thinking that the two
sets of stickers emanate from the same
source. The stickers used with the mark
COLOR OASIS are artful creations invoking the
feel of various beach retreats. Applicant's
Ser. No. 76540506
5
goods are unrelated to the goods connected to
the cited mark and it is unlikely that the
owner of the cited mark will expand into the
craft supplies market [served by applicant].
Due to the different nature of the goods at
issue, it is unlikely that a consumer would
think that the manufacturer of the stickers
related to the hard rock band were also the
manufacturers of Applicant's decorative
design stickers. Although ... both marks
recite stickers as goods, the stickers are of
such a different character when encountered
in the marketplace ... that a likelihood of
confusion as to source is improbable.

The Examining Attorney, however, correctly points out
in his brief that, as identified, applicant's and registrant's
"stickers" must be considered legally identical goods. Among
other things, he properly observes that "[n]o limitation appears
in registrant's identification of goods" and, we note, the same
is likewise the case with applicant's identification of goods.
Accordingly, both applicant's and registrant's "stickers"
encompass in legal contemplation all goods of the type described.
Such goods would consequently be sold through the same channels
of trade, including stationery stores and various other retail
environments, to the identical classes of purchasers, including
members of the general public who lack any expertise in the field
as well as rock music fans seeking promotional items concerning
their favorite bands. Conditions are therefore such that, if
applicant's and registrant's stickers were to be offered under
the same or similar marks, confusion as to the origin or
affiliation of such goods would be likely to occur.
Turning, then, to consideration of the respective
marks, applicant maintains that its "COLOR OASIS" mark is not
similar to registrant's "OASIS" mark in sight, sound, meaning or
Ser. No. 76540506
6
commercial impression. Viewed in their entireties and citing du
Pont, supra, applicant insists that "all components [of the marks
at issue] must be given appropriate weight," including any
disclaimed portion, "since the public will not be aware of the
disclaimer when considering the mark," and that "[t]here is no
dominant part of a ... mark [which is] sought to be registered in
plain block letters." Applicant, in light thereof, specifically
asserts that:
Applicant's mark COLOR OASIS differs
from the cited mark OASIS when viewed as a
whole, in sound, appearance and meaning. The
two marks differ in sound in that the cited
mark contains one term, OASIS and Applicant's
mark is comprised of two words COLOR and
OASIS. Applicant's mark and the cited mark
differ in appearance as well, since the
subject mark appears as two words, COLOR and
OASIS and the cited mark is merely one word.
Applicant's mark, COLOR OASIS, refers to a
sanctuary filled with various beautiful
colors and textures. The cited mark refers
to the name of a musical band and does not
conjure the image of a color or textured
filled haves. Hence the two marks differ in
meaning as well.

We agree with the Examining Attorney, however, that
applicant's "COLOR OASIS" mark is sufficiently similar to
registrant's "OASIS" mark that confusion would be likely,
especially since such marks are for use in connection with
legally identical goods. As stated by our principal reviewing
court in Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992), cert.
denied, 506 U.S. 1034 (1994), "[w]hen marks would appear on
virtually identical goods ..., the degree of similarity necessary
to support a conclusion of likely confusion declines." We also
Ser. No. 76540506
7
observe that while applicant is correct that, under du Pont,
supra, the marks at issue must be considered in their entireties
and, thus, any descriptive term therein cannot be ignored, the
Examining Attorney properly points out in his brief that such
authority lends no support to applicant's further contention that
"[t]here is no dominant part of a ... mark [which is] sought to
be registered in plain block letters," as is the case with
applicant's mark. To the contrary, we note, as does the
Examining Attorney, that our principal reviewing court has
indicated that, in articulating reasons for reaching a conclusion
on the issue of likelihood of confusion, "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
[that] the ultimate conclusion rests on consideration of the
marks in their entireties." In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). For instance,
according to the court, "[t]hat a particular feature is
descriptive ... with respect to the involved goods ... is one
commonly accepted rationale for giving less weight to a portion
of a mark" and that, "[i]ndeed, this type of analysis appears to
be unavoidable." Id. In light of applicant's admission that its
"stickers depict decorative designs varying in color" and, thus,
that the word "COLOR" is descriptive of its goods, as further
evidenced by its disclaimer thereof, we concur with the Examining
Attorney that "[i]n this instance, the term OASIS is clearly the
dominant feature of applicant's mark in that the remaining term
[COLOR] is descriptive and, by itself, not an indicator of
Ser. No. 76540506
8
source." Such feature, of course, is identical in all respects
to registrant's "OASIS" mark.
The Examining Attorney additionally argues in his brief
that "[t]he mere addition of a term to a registered mark is not
sufficient to overcome a likelihood of confusion," citing inter
alia TMEP Section 1207.01(b)(iii) (4th ed. 2005), which states
that:
It is a general rule that likelihood of
confusion is not avoided between otherwise
confusingly similar marks merely by adding
... a house mark or matter that is
descriptive or suggestive of the named goods
or services. .... See, e.g., ... In re
Apparel Ventures, Inc., 229 USPQ 225 (TTAB
1986) (SPARKS BY SASSAFRAS (stylized) for
clothing held likely to be confused with
SPARKS (stylized) for footwear); ... [and] In
re Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD
PETTY’S ACCU TUNE and design for automotive
service stations held likely to be confused
with ACCUTUNE for automotive testing
equipment).

Exceptions to the above stated general
rule regarding additions ... to marks may
arise if: (1) the marks in their entireties
convey significantly different commercial
impressions, or (2) the matter common to the
marks is not likely to be perceived by
purchasers as distinguishing source because
it is merely descriptive or diluted. ....

In this case, applicant has in essence simply added the
descriptive term "COLOR" to registrant's "OASIS" mark. The word
"OASIS," as used in connection with stickers, is clearly
arbitrary rather than suggestive or descriptive and, on this
record, has not been shown to be diluted or otherwise in such
widespread use that, as to its source-indicative significance,
customers for stickers would distinguish marks which include the
term "OASIS" by the remaining portions thereof. Thus, in light
Ser. No. 76540506
9
of the fact that the marks at issue have in common the arbitrary
term "OASIS," it is plain that, in their entireties, applicant's
"COLOR OASIS" mark and registrant's "OASIS" mark are not only
substantially similar in appearance, sound and connotation, but
such marks also are substantially similar in overall commercial
impression.
We accordingly conclude that, due to the shared
arbitrary term "OASIS," customers and prospective purchasers who
are familiar or acquainted with registrant's "OASIS" mark for
"stickers" would be likely to believe, upon encountering
applicant's substantially similar "COLOR OASIS" mark for
"stickers," that such legally identical goods emanate from, or
are sponsored by or associated with, the same source. In
particular, consumers could reasonably believe that applicant's
"COLOR OASIS" mark designates a new or expanded line of stickers
from the same source as the stickers marketed under registrant's
"OASIS" mark.
Decision: The refusal under Section 2(d) is affirmed.