Eveden Inc.v.Godesia Inc.Download PDFTrademark Trial and Appeal BoardMar 30, 2017No. 91219321 (T.T.A.B. Mar. 30, 2017) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: March 30, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Eveden Inc. v. Godesia Inc. ________ Opposition No. 91219321 _______ William J. Seiter of Seiter Legal Studio, for Eveden Inc. Paul T. Davis of Law Office of Paul T. Davis, for Godesia Inc. _____ Before Zervas, Wolfson and Pologeorgis, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Godesia Inc. (“Applicant”) seeks to register the standard character mark GODESIA1 for the following International Class 25 goods: Clothing, namely, yoga pants, yoga shirts, tee shirts, hooded sweatshirts, hooded shirts, sweatshirts, hooded sweat sport jackets, jackets, sports bras, scarves, sashes, 1 Application Serial No. 86270094, filed May 20, 2014 pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), claiming a bona fide intent to use the mark in commerce. Opposition No. 91219321 - 2 - belts, pants, bottoms, tops, blouses, sweaters, shorts, skirts, dresses, socks, leggings, undergarments, sleepwear, swimwear, hats, gloves. Eveden Inc. (“Opposer”) asserts confusion is likely under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), with its typed2 mark GODDESS which is the subject of Registration No. 0816641 (registered October 11, 1966, third renewal October 28, 2016) for “brassieres, corsets, corselets, girdles, and bra slips” in International Class 25. Registration No. 0816641 claims both first use and first use in commerce on December 1, 1945. In its answer, Applicant denied the salient allegations of the amended notice of opposition. Applicant also pleaded certain affirmative defenses, but did not discuss them in its briefs. They are therefore waived. See, e.g., Daniel J. Quirk, Inc. v. Vill. Car Co., 120 USPQ2d 1146, 1147 n.4 (TTAB 2016) (affirmative defenses not pursued through the presentation of evidence or in brief deemed waived). Both parties filed main briefs. The Record In addition to the pleadings and Applicant’s opposed application, which is automatically of record pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the evidence of record consists of the following: ● Opposer’s notice of reliance3 submitting: 2 Prior to November 2, 2003, “standard character” marks were known as “typed” drawings. A typed mark is the legal equivalent of a standard character mark. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly were known as ‘typed’ marks.”) 3 17 TTABVUE. Record citations are to TTABVUE, the Board’s publically available docket history system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Opposition No. 91219321 - 3 - - A printout from the USPTO’s TESS database for Opposer’s pleaded registration demonstrating its status and ownership by Opposer; - Applicant’s responses to Opposer’s first set of interrogatories, along with produced documents; - Applicant’s responses to Opposer’s requests for production of documents and produced documents; and - Webpage printouts purporting to show that Applicant’s website www.godesia.com is inactive. ● Applicant’s notice of reliance4 submitting: - A printout of the TESS record for Applicant’s application Serial No. 85132169 for the mark GODECIA, now abandoned; - Opposer’s responses to certain interrogatories and requests for admissions propounded by Applicant; and - Webpage printouts purporting to show Opposer’s limited use of its mark and the meaning of the Spanish term “caricia.” The material submitted as Exhibit 3 to Opposer’s notice of reliance5 has not been properly introduced into evidence. A party that has received documents produced by another party in response to a request for production of documents may not make such documents of record by notice of reliance alone, except to the extent that they are admissible by notice of reliance under Trademark Rule 2.122(e); 37 C.F.R. § 2.122(e). Trademark Rule 2.120(k)(3)(ii); 37 C.F.R. § 2.120(k)(3)(ii). The correspondence does not fall within the category of documents contemplated by Rule 2.122(e) and, therefore, has not been considered as evidence. Syndicat Des 4 18 TTABVUE. 5 17 TTABVUE 52. Opposition No. 91219321 - 4 - Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1932 n.7 (TTAB 2013) (documents produced in response to a request for production of documents may not be introduced under notice of reliance); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 704.11 (Jan. 2017). Standing Standing is a threshold issue that must be proven by a plaintiff in every inter partes case. To establish standing in an opposition or cancellation proceeding, a plaintiff must show “both a ‘real interest’ in the proceedings as well as a ‘reasonable basis’ for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports, Inc., v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Opposer has established its standing through its submission of a TESS printout for its pleaded registration, which demonstrates that the registration is valid and subsisting, and owned by Opposer. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (party’s ownership of pleaded registration establishes standing). Priority and Likelihood of Confusion Regarding priority, because Opposer’s pleaded registration is of record, and Applicant has not filed a counterclaim to cancel Opposer’s pleaded registration, priority is not an issue with respect to the goods covered by Opposer’s extant, pleaded Opposition No. 91219321 - 5 - registration. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)). Turning to the question of likelihood of confusion, our determination is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); 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., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In considering the evidence of record on these factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). “Not all of the du Pont factors are relevant to every case, and only factors of significance to the particular mark need be considered.” In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). For example, the Board can “focus ... on dispositive factors, such as similarity of the marks and relatedness of the goods.” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (citation omitted). These factors and the other relevant du Pont factors are discussed below. The goods At the outset, we compare the parties’ respective goods as they are identified in the application and registration at issue. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (goods as Opposition No. 91219321 - 6 - identified in involved application and registration compared); Octocom Systems, Inc. v. Houston Computers Services 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). Here, the involved application and Opposer’s registration involve goods that are in part legally identical. This is because Applicant’s “clothing, namely, … sports bras … undergarments …” necessarily encompass, or are encompassed within, Opposer’s “brassieres, corsets, corselets, girdles, and bra slips.” See, e.g., In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.”‘). In view thereof, this du Pont factor weighs in favor of finding a likelihood of confusion. Established, likely-to-continue channels of trade and classes of consumers Because the goods are in part legally identical, and neither Opposer’s registration nor Applicant’s application contains any limitations on the channels of trade and classes of purchasers, we must presume that the channels of trade and classes of purchasers are the same for those legally identical goods. See Stone Lion, 110 USPQ2d at 1161 (goods as identified in involved application and registration compared); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). 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 Opposition No. 91219321 - 7 - consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). As such, the factors regarding trade channels and classes of purchasers favor a finding of likelihood of confusion. Similarity of the marks/conditions of purchase We now turn to the du Pont likelihood of confusion factor regarding the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression (Palm Bay Imp., 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 577), keeping in mind that because Opposer’s and Applicant’s goods are in part legally identical, the degree of similarity between the marks that is necessary to support a finding of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). This is particularly true when not only are the goods in part legally identical, but in addition they include items (such as inexpensive bras) purchased by ordinary consumers exercising limited care. See Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984); In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984). “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) (citation omitted). The focus is on the recollection of the average purchaser, who normally retains a general rather than a Opposition No. 91219321 - 8 - specific impression of trademarks. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009) (citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975)). In this case, the average purchaser is the relevant consumer. Our analysis cannot be predicated on dissection of the involved marks. Stone Lion, 110 USPQ2d at 1161. Rather, we are obliged to consider the marks in their entireties. Id. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). Nonetheless, 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 the ultimate conclusion rests on a consideration of the marks in their entireties. Stone Lion, 110 USPQ2d at 1161. We are immediately struck by the similarity in appearance between the marks, which we find purchasers will take note of. Applicant’s mark has the very same letters that appear in the first five letters of Opposer’s pleaded mark, in the same order. Of course, the last two letters of Applicant’s mark, “IA,” are not in Opposer’s pleaded mark, but this does not diminish the association created by the first five letters of Applicant’s mark with Opposer’s mark, which in its entirety is the word “goddess.” That leads us to the sound of the two marks. There is no correct way to pronounce a trademark that is not a recognized English word, as is the case with Applicant’s mark GODESIA. Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1518 (TTAB 2009). Thus, GODES in Applicant’s mark may be pronounced identically to Opposition No. 91219321 - 9 - Opposer’s mark GODDESS. We therefore find the sound of the marks considered as a whole are similar. As for the meaning of the marks, there is no evidence that GODESIA has any meaning in English or in a foreign language. Thus, for purposes of our analysis, we consider the mark taken as a whole to be a coined term, with no particular meaning, but with an association with the term “goddess” due to the same shared initial five letters.6 Applicant argues, [I]n the instant case, Opposer’s mark GODDESS is the common English word “goddess,” which has two universally-known and recognized definitions that the average American purchaser will be familiar with and easily understand. Unlike Opposer’s mark, Applicant’s mark GODESIA is an unfamiliar coined term that will be given closer scrutiny and easily differentiated from Opposer’s mark GODDESS by purchasers familiar with the word “goddess,” which is commonly known and understood to mean either (i) a female deity or (ii) a woman who is adored for her beauty.7 Applicant concludes that “[w]here, as here, one mark is an arbitrary, coined or uncommon term and the other mark is a familiar, common term, no likelihood of 6 See Applicant’s response to Opposer’s Interrogatory No. 1, which supports our finding: Caricia Ramirez is the name of one of the sisters of Applicant’s President (Jacqueline Lyoussi) who was the named after the Spanish word “caricia.” Applicant’s Mark is the first name of Applicant’s President’s sister, and the Spanish word “caricia,” spelled phonetically in English. Applicant’s Mark was a nickname for Applicant’s President’s sister that developed after one of Caricia Ramirez’s friends misspelled her name as “Godesia” on a birthday card. 17 TTABVUE 22. 7 Applicant’s brief at 14, 20 TTABVUE 15. Opposition No. 91219321 - 10 - confusion is found to exist since common marks are readily distinguishable from uncommon marks.”8 Applicant discusses, among other cases, In re General Electric Co., 304 F.2d 688, 134 USPQ 190 (CCPA 1962) where the Court found no likelihood of confusion between VULKENE for electrical wires and cables and VULCAN in stylized form for electrical building wires. General Electric is inapposite to this case. First, General Electric states that consumers buying and using the overlapping goods of Applicant and registrant are “those who do the electrical wiring of buildings, for the most part licensed electricians and electrical contractors [and] … such persons would buy their electrical supplies with a reasonable amount of care and with considerable professional know-how as to what they are buying.”9 Here, however, the purchasers of Applicant’s and Opposer’s overlapping goods are ordinary consumers, and women’s undergarments may be purchased with limited care. Second, General Electric states as follows regarding the pronunciation of the marks: We do not believe building wire is the sort of merchandise likely to be advertised on radio or television, which media devote their advertising time mostly to attempting to influence the mass consumer market which they reach, rather than the kind of professional industrial buyers who are interested in building wire. As to telephone orders, we do not think an electrician phoning the knowledgeable order clerk in an electrical supply house would be likely to get the wrong product … . 8 Applicant’s brief at 13, 20 TTABVUE 14. 9 Id. at 192. Opposition No. 91219321 - 11 - In the present case, of course, the goods are consumer goods which may well be advertised on radio, such that similarity in sound plays an important role. Moreover, as discussed above, GODES in Applicant’s mark may be pronounced identically to GODDESS, Opposer’s entire mark. Thus, we find that the similarity in appearance and sound outweighs any differences due to the fact that Applicant’s mark is a coined term, and find that the commercial impression of both marks is linked to the term “goddess.” “Two marks may be found to be confusingly similar if there are sufficient similarities in terms of sound or visual appearance or connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). We find that the du Pont factor regarding the similarity of the marks weighs in favor of finding a likelihood of confusion. Balancing the Factors As explained above, the marks are similar, and the goods, trade channels and purchasers overlap. The goods may be purchased with limited care by ordinary consumers. We therefore find that Opposer has established a likelihood of confusion between Opposer’s mark GODDESS for “brassieres, corsets, corselets, girdles, and bra slips” and Applicant’s mark GODESIA for “clothing, namely, yoga pants, yoga shirts, tee shirts, hooded sweatshirts, hooded shirts, sweatshirts, hooded sweat sport jackets, jackets, sports bras, scarves, sashes, belts, pants, bottoms, tops, blouses, sweaters, shorts, skirts, dresses, socks, leggings, undergarments, sleepwear, swimwear, hats, gloves.” We acknowledge the differences in the marks noted by Opposition No. 91219321 - 12 - Applicant, however, we resolve any doubt (as we must) against Applicant as the newcomer. Century 21 Real Estate, 23 USPQ2d at 1701 (citing In re Hyper Shoppes (Ohio), 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988). Decision: Opposer’s claim of likelihood of confusion is sustained. Copy with citationCopy as parenthetical citation