EX (T.T.A.B. Mar. 22, 2019)

Flyte LLC

Trademark Trial and Appeal BoardMar 22, 2019

EX (T.T.A.B. Mar. 22, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: March 22, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Flyte LLC _____ Serial No. 87347139 _____ Nigamnarayan Acharya of Lewis Brisbois Bisgaard & Smith LLP, for Flyte LLC. Jason Malashevich, Trademark Examining Attorney, Law Office 114, Laurie Kaufman, Managing Attorney. _____ Before Zervas, Taylor and Shaw, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Flyte, LLC (“Applicant”) seeks registration on the Principal Register of the mark FLYTE (in standard character format) for, as amended, “clocks; watches; timepieces; chronographs for use as timepieces; horological and chronometric instruments” in International Class 14.1 1 Application Serial No. 87347139 was filed on February 23, 2017, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C § 1051(b). Serial No. 87347139 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),2 on the ground that it is likely to cause confusion with the mark in Registration No. 1535206, AIRFLYTE (in typed format3) for, inter alia, “clocks, namely wall clocks and desk clocks” in International Class 14.4 When the refusal was made final, Applicant appealed. Both Applicant and the Examining Attorney filed briefs. We affirm the refusal to register. I. Likelihood of Confusion A. Applicable Law Section 2(d) of the Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C. § 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all probative facts in the record that are relevant to the likelihood of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 2 Applicant also was required to clarify its identification of goods and pay additional fees, if necessary. That requirement was satisfied. 3 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. A typed mark is the legal equivalent of a standard character mark. TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (Oct. 2018). 4 Registered April 18, 1989; renewed. Serial No. 87347139 - 3 - USPQ 24 (CCPA 1976). We discuss below these and other relevant factors. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant and of record” need be considered). B. Relatedness of the Goods, Channels of Trade and Classes of Consumers Applicant’s goods are identified as “clocks, watches, timepieces, chronographs for use as timepieces, [and] horological and chronometric instruments” and Registrant’s goods are identified “clocks, namely wall clocks and desk clocks.” On comparison, we find Applicant’s broadly worded “clocks” and “horological and chronometric instruments” clearly encompass the more narrowly defined “wall and desk clocks” in the cited registration. The remaining goods identified in Applicant’s application, i.e., watches, timepieces and chronographs for use as timepieces, are complementary and related to the “clocks” identified in the cited registration, all being instruments for telling time. Even so, given the in-part identical “clocks” we need not discuss the similarity of all of Applicant’s goods because it is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application. In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015); Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007). Nonetheless, to support the relatedness of the goods, the Examining Attorney made of record web pages from the websites of various entities, e.g., Fisher Scientific, Serial No. 87347139 - 4 - Extech, Princeton Watches, Braun, Cobb & Co. Clocks, Arne Jacobsen, and Swatch, showing the same mark used in connection with a variety of timepieces, including timers, stopwatches, watches and clocks.5 We thus find the goods identical or closely related for purposes of our likelihood of confusion analysis. Applicant appears to concede that the goods are related.6 Furthermore, because the goods are identical in-part, the channels of trade and classes of purchasers for such goods are considered to be the same. In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 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 consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). As such the channels of trade and classes of purchasers at a minimum overlap. The du Pont factors of the relatedness of the goods, channels of trade and classes of purchasers strongly favor a finding of likelihood of confusion. B. Similarity/Dissimilarity of the Marks We now consider the du Pont likelihood of confusion factor of the similarity or dissimilarity of the marks in their entireties in terms of sound, appearance, meaning 5 May 19, 2017 Office Action; TSDR 8-17 and January 13, 2018 Office Action; TSDR 8-30. The TSDR citations are to the downloadable .pdf format. 6 Applicant, in its brief, specifically stated: “while the goods connected with the marks are substantially appear [sic] identical as described….” 4 TTABVUE 8 (Applicant’s Br. p. 7). Serial No. 87347139 - 5 - and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In comparing the marks, we are mindful that “[t]he 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. v. Triumph Learning, 101 USPQ2d at 1721; see also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. L’Oreal v. Marcon, 102 USPQ2d at 1438; Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). The average customers include members of the general public seeking clocks. Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); 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 Serial No. 87347139 - 6 - determining likelihood of confusion.”). On the other hand, different features may be analyzed to determine whether the marks are similar. Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, 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. In re Nat’l Data Corp., 224 USPQ at 751. Applicant’s mark FLYTE and the cited mark AIRFLYTE are similar in appearance and sound in that they each include, or solely consists of, the term “FLYTE.” The only difference between the two marks is the addition of the word “AIR” to the cited registered mark, which does little to distinguish them. Given the structure of Registrant’s mark, the “AIR” portion, defined, in part, as “[o]f or relating to aircraft or aeronautics,”7 while appearing first and contributing to the mark’s commercial impression, merely modifies the word FLYTE, the phonetic equivalent of the “flight.”8 Likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting other matter. If an important 7 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2019) (www.ahdictionary.com, retrieved March 18, 2019). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff'd, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 8 Flight is defined, in part, as “[a] scheduled airline run.” THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2018). January 13, 2018 Office Action; TSDR 32. Serial No. 87347139 - 7 - or, as in the case here, significant portion and sole portion of both marks is the same, then the marks may be confusingly similar notwithstanding some differences. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (affirming TTAB’s finding that the marks DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB are nearly identical in terms of sound, appearance and commercial impression, and noting that, while “the words ‘Co.’ and ‘Club’ technically differentiate the marks, those words do little to alleviate the confusion that is likely to ensue”); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (affirming TTAB’s finding that applicant’s mark STONE LION CAPITAL incorporated the entirety of the registered marks LION CAPITAL and LION, and that the noun LION was the dominant part of both parties’ marks); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (finding that, even though applicant’s mark PACKARD TECHNOLOGIES, with “TECHNOLOGIES” disclaimed, does not incorporate every feature of opposer’s HEWLETT PACKARD marks, a similar overall commercial impression is created). Also, both Applicant’s and Registrant’s marks are in standard characters and, as such, their display is not limited to any particular font style, size, or color. We therefore must consider that both marks might be used in any stylized display, including the same or similar lettering style or color. See In re Viterra, 101 USPQ2d at 1909-10; Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); In re Aquitaine Wine USA, LLC, 126 USPQ2d Serial No. 87347139 - 8 - 1181, 1886 (TTAB 2018) (literal elements of standard character marks may be presented in any font style, size or color). As to connotation, there is no evidence that the term FLYTE (which as Applicant asserts, and we concur, “is a play on the word ‘flight’”9) has any particular meaning with regard to clocks and other timepieces. Accordingly, both Applicant’s and Registrant’s marks are likely to impart the same arbitrary meaning. Applicant’s argument that its mark connotes “the action or process of leaving,” while the cited mark imparts the impression of an ‘“airplane or air flight’” is unsupported. Moreover, the different connotations of the marks are not apparent in the marks themselves, and, in fact, conflicts with the definition of “flight” set out in footnote 8 of this decision. To the extent consumers may view the term “FLYTE” in Registrant’s mark as “air flight,” they could attribute that same meaning to Applicant’s mark. We recognize that in comparing the marks, we must consider Registrant’s mark in its entirety. Thus, we have taken into account the differences in appearance and sound between them. We nonetheless find that despite these differences, given the similarities between the marks in sound, appearance and meaning due to the shared term FLYTE, the marks engender similar commercial impressions. Because of the similarities between Applicant’s and Registrant’s marks and the syntax of Registrant’s mark, consumers are likely to believe that that the respective marks are variant marks used by a single entity to identify and distinguish a companion product line. 9 4 TSDR 6 (Applicant’s Br. p. 5). Serial No. 87347139 - 9 - The factor of the similarity of the marks thus favors a finding of likelihood of confusion. C. Prior Decisions Applicant has relied on a number of prior decisions, including several unpublished ones,10 to bolster its position with regard to the likelihood of confusion issue. While our decision is made within the confines of established statutes, rules and case precedent, it is axiomatic that each case must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [Applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”); In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). We are therefore obligated to assess, and have assessed the registrability of Applicant’s mark on its own merits and have carefully considered the arguments and evidence of record in this case, even if not specifically addressed in the decision. E. Analyzing the Factors When we consider the record, the relevant likelihood of confusion factors, and all of the arguments and evidence relating thereto, the marks are sufficiently similar for confusion to be likely when used in connection with in-part identical and otherwise 10 While applicants may cite to non-precedential decisions, such decisions are not binding on the Board and the Board does not encourage this practice. In re Fiat Grp. Mktg. & Corporate Commc'ns S.p.A., 109 USPQ2d 1593, 1596 n.6 (TTAB 2014); In re Procter & Gamble Co., 105 USPQ2d 1119, 1121 (TTAB 2012); In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1875 n.5 (TTAB 2011). Serial No. 87347139 - 10 - related goods in overlapping trade channels, and we conclude that prospective purchasers familiar with the registered mark AIRFLYTE for “clocks, namely wall clocks and desk clocks” would be likely to believe, upon encountering Applicant’s similar mark FLYTE for “clocks; watches; timepieces; chronographs for use as timepieces; [and] horological and chronometric instruments,” that such goods emanate from, or are sponsored by or affiliated with, the same source. Decision: The refusal to register Applicant’s mark FLYTE is affirmed.