F Squared Engineering Corp.Download PDFTrademark Trial and Appeal BoardMar 27, 2019EX (T.T.A.B. Mar. 27, 2019) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: March 27, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re F Squared Engineering Corp. _____ Serial No. 87271388 _____ Erik M. Pelton of Erik M. Pelton & Associates, PLLC for F Squared Engineering Corp. Melissa S. Winter, Trademark Examining Attorney, Law Office 122, John Lincoski, Managing Attorney. _____ Before Ritchie, Lynch, and Larkin, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background F Squared Engineering Corp. (“Applicant”) seeks registration on the Principal Register of the certification mark for “electrical products, parts, and Serial No. 87271388 - 2 - components” in Class A,1 with the certification statement, “[t]he certification mark, as intended to be used by authorized persons, is intended to certify that the goods tested are found to be in compliance with standards regarding product safety.”2 The application contains the following description of the mark: “The mark consists of a connected ‘F’ and ‘2’ inside a white square, which is within a black circle. Color is not claimed as a feature of the mark.” 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 F2 in standard characters for the following goods: Electronic and digital locating data receivers, remote displays in the nature of flat panel displays, and software, all for use in locating and monitoring subsurface transmitters, receivers, drillheads, drillpipes, reamers, augers, boring tools, and buried utility lines, cables and pipes, and for collecting and displaying data relating to same in Int. Class 9.3 After the Examining Attorney made the refusal final, Applicant appealed. For the reasons set forth below, we affirm the refusal to register. 1 As noted in Trademark Manual of Examining Procedure § 1306.02(c) (Oct. 2018), “[i]n a certification mark application, the goods or services that are certified may be identified less specifically than in an application for registration of a trademark or service mark. Ordinarily, it is only necessary to indicate the general category of goods and services, such as the following: … electrical products….” 2 Application Serial No. 87271388 is based on Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), and has a filing date of December 16, 2016. 3 Registration No. 3681331 issued October 20, 2008 on the Principal Register and has been maintained. Serial No. 87271388 - 3 - II. Likelihood of Confusion The determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on the 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 the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (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.”). We assess likelihood of confusion with respect to certification marks using the same analysis of the du Pont factors as with trademarks. However, because the certification mark owner does not itself use the mark, the analysis is based on the goods of the certification mark users, and the channels of trade and purchasers therefor. In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012); Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1897 (TTAB 2006). A. Similarity of the Marks We first turn to the du Pont factor comparing and F2, which we consider “in their entireties as to appearance, sound, connotation and commercial impression.” Serial No. 87271388 - 4 - Palm Bay Imps. 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 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 or, in this case, certified, under the respective marks is likely to result. Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). We find the marks very similar because the entire literal element of Applicant’s mark is identical to the cited mark. The cited standard-character mark F2 could appear in the same font as Applicant’s mark, resulting in a similar appearance. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012) (holding that the specific font style of a mark cannot serve as the basis to distinguish it from a mark in standard character form). Applicant’s background designs, consisting of common geometric shapes, are too insignificant to serve as a point of distinction. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (in Section 2(d) analysis, holding that rectangular “design is an ordinary geometric shape that serves as a background for the word mark” and did not “offer[] sufficient distinctiveness to create a different commercial impression”); In re Benetton Grp. S.p.A., 48 USPQ2d 1214, 1215-16 (TTAB 1998) (“common geometric shapes such as circles, squares, rectangles, triangles and ovals, when used as backgrounds for the display of word marks, are not regarded as trademarks for the goods to which they Serial No. 87271388 - 5 - are applied absent evidence of distinctiveness of the background design alone”). The marks would sound identical when verbalized. See Viterra, 101 USPQ2d at 1911. The record lacks evidence that F2 has any particular meaning, and because the alpha- numeric elements of both marks are identical, we therefore also find the connotation and commercial impression to be highly similar. We are not persuaded by Applicant’s unsupported argument that its mark creates a different commercial impression merely because it is a certification mark. Accepting this line of argument would nullify the legal principle set forth above that “[t]he test for determining likelihood of confusion with respect to certification marks is the same as that applied to trademarks.” Accelerate s.a.l., 101 USPQ2d at 2048. This du Pont factor weighs heavily in favor of likely confusion. B. The Relatedness of the Goods “[L]ikelihood 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. 101 USPQ2d at 1722 (internal citations omitted). In analyzing the second du Pont factor, we look to the identifications in the application and cited registration. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018); Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). For this reason, we reject Serial No. 87271388 - 6 - Applicant’s arguments attempting to narrow the goods in the cited registration based on the alleged actual nature of Registrant’s goods in the marketplace. We find that on their face, the “electrical products, parts, and components” to be certified by Applicant encompass at least some of the goods in the cited registration, making them legally identical in part. Applicant’s broadly identified “electrical products” include any product “operated by electricity,”4 which encompasses Registrant’s “electronic and digital locating data receivers” and “remote displays in the nature of flat panel displays” for the purpose identified. 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 re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) (“Registrant’s goods are broadly identified as computer programs recorded on magnetic disks, without any limitation as to the kind of programs or the field of use. Therefore, we must assume that registrant’s goods encompass all such computer programs including those which are for data integration and transfer.”). Applicant’s responses to requests for information during examination emphasize the breadth of the identified goods, as Applicant stated that it certifies “[a]ll types of electrical goods,” “[a]ll natures of electrical goods,” and “[a]ll fields of electrical goods.”5 4 February 11, 2018 Office Action at 25 (Merriam-Webster definition of “electrical”). 5 December 21, 2017 Response to Office Action at 4-5. Serial No. 87271388 - 7 - Evidence submitted by the Examining Attorney also supports the overlap of the relevant goods. For example, she introduced a definition of “flat panel display” as a type of “electronic display,”6 and provided an example of a flat panel display that clearly is an electrical product.7 Applicant cites case law for the proposition that “there is no per se rule that goods sold in the same field of industry are similar or related for purposes of likelihood of confusion.”8 However, these cases address different goods in the same industry, whereas the goods in this case actually overlap. For the same reason, we find unavailing Applicant’s criticism of the Examining Attorney for not providing sufficient relatedness evidence, as such evidence is unnecessary when Applicant’s identification of the goods to be certified encompasses those in the cited registration. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“[w]hile additional evidence, such as that a single company sells the goods and services of both parties, if presented, is relevant to a relatedness analysis, the TTAB did not consider the important evidence already before it, namely the ITU application and HP’s registrations.”) Applicant also makes a misplaced argument that this case involves a comparison of goods to certification services, and that under In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082 (Fed. Cir. 2014), “something more” than mere use together must 6 February 11, 2018 Office Action at 6 (Indiana.edu). 7 Id. at 15-16 (3m.com). 8 4 TTABVUE 12 (Applicant’s Brief). Serial No. 87271388 - 8 - be shown to establish relatedness. The St. Helena court held that the “something more” requirement applies when comparing goods to services, and their relatedness “is not evident, well-known or generally recognized.” 113 USPQ2d at 1087. The first flaw in Applicant’s argument is that we are not comparing goods to services, given that “the question of whether there is a likelihood of confusion is based on a comparison of the mark as applied to the goods or services of the certification mark users.” Motion Picture Ass’n of Am. Inc. v. Respect Sportswear Inc., 83 USPQ2d 1555, 1559 (TTAB 2007).9 Thus, in this case, we are comparing the goods Applicant intends to certify to the goods in the cited registration. A second flaw in Applicant’s argument is that given the overlap on the face of the identifications, we certainly do not face a situation where the relatedness of these goods is “not evident, well-known or generally recognized,” as set forth in St. Helena. This du Pont factor supports likely confusion. C. Trade Channels and Classes of Consumers Turning to the trade channels and consumers, because the certified goods are legally identical in part to Registrant’s, we presume that they also move at least in part in identical channels of trade and to some of the same classes of potential consumers. See Inter IKEA Sys. B.V. v. Akea, 110 USPQ2d 1734, 1743 (TTAB 2014); L. & J.G. Stickley, Inc. v. Cosser, 81 USPQ2d 1956, 1971 (TTAB 2007) (“Because the 9 Along the same lines, we find inapposite Applicant’s attempt to rely on its ownership of Registration Number 5294577 for the mark F2 LABS for certain product testing services in International Class 42. The registration is not analogous, and regardless, each case must be decided on its own merits. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Serial No. 87271388 - 9 - goods of both parties are at least overlapping, we must presume that the purchasers and channels of trade would at least overlap.”). This factor weighs in favor of likely confusion. D. Sophisticated Purchasing Applicant argues that the goods in the cited registration necessarily involve careful, sophisticated purchasing decisions, thereby minimizing the likelihood of confusion. The Examining Attorney responds that Applicant’s certified goods include ordinary consumer products, and the appropriate standard of care must take account of the least sophisticated potential purchasers. We agree with the Examining Attorney that because “electrical products” include inexpensive ordinary consumer goods, purchasers of the certified goods would not exercise a high degree of care. The nature of the goods in the cited registration, by contrast, makes it likely that consumers would exercise a heightened degree of care in purchasing. Focusing on the least sophisticated potential customers of Applicant’s goods, we find this factor neutral. See Stone Lion Capital Partners, 110 USPQ2d at 1163 (“Although the services recited in the application also encompass sophisticated investors, Board precedent requires the decision to be based ‘on the least sophisticated potential purchasers.’”). However, even were we to consider care in purchasing the goods in the cited registration, particularly in the context of such similar marks and overlapping goods, this would not render the consumers “immune from trademark confusion.” See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1442 (TTAB 2014); see also In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Serial No. 87271388 - 10 - Cir. 1986) (“That the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods.”). Decision: Based on the highly similar marks, and the in-part legally identical goods, with presumptively identical trade channels and classes of consumers, confusion is likely, even if there were some possibly heightened degree of sophistication of the relevant consumers. The refusal to register Applicant’s mark is affirmed. Copy with citationCopy as parenthetical citation