Geek Girl CorporationDownload PDFTrademark Trial and Appeal BoardSep 10, 2014No. 85435222 (T.T.A.B. Sep. 10, 2014) Copy Citation Mailed: September 10, 2014 United States Patent and Trademark Office Trademark Trial and Appeal Board ________ In re Geek Girl Corporation ________ Serial No. 85435222 _______ Eugene R. Curry of Law Offices of Eugene R. Curry for Geek Girl Corporation. Alicia Collins Edwards, Trademark Examining Attorney, Law Office 115, John T. Lincoski, Managing Attorney. _______ Before Bucher, Taylor and Wolfson, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Geek Girl Corporation (“Applicant”) seeks registration on the Principal Register of the mark depicted below for “Computer camps; Computer education training services; Education services, namely, providing seminars, workshops, and classes in the field of computer technology,” in International Class 41.1 1 Application Serial No. 85435222 was filed on September 29, 2011, based on an allegation of first use and first use in commerce of March 13, 2008. The mark is described as “a pink stylized image of a woman behind a pink laptop computer. There is a white stylized heart design on the cover of the laptop. At the bottom of the mark on the left is a pink stylized letter g. The pink stylized words geek girl appear to the right of the laptop.” The colors pink and white are claimed as features of the mark. This Opinion is Not a Precedent of the TTAB Serial No. 85435222 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), contending that Applicant’s use of its mark for its identified services is likely to cause confusion with the mark ÜberGeekGirl (in standard character format) for “Computer consultation; Computer network design for others; Computer software consultancy; Computer software design, computer programming, or maintenance of computer software; Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; Information technology consultation; Installation of computer software; Integration of computer systems and networks” in International Class 42.2 When the refusal was made final, Applicant appealed and filed a request for reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. Applicable Law Our determination under Trademark Act § 2(d) is based on an analysis of the probative facts in evidence that are relevant to the factors bearing on a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the 2 Reg. No. 2467087; registered July 15, 2008; Sections 8 & 15 Combined Affidavit accepted. Serial No. 85435222 3 evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the [services] and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). A. Comparison of the Marks In comparing the marks, we must consider the marks in their entireties as to appearance, sound, connotation and commercial impression, to determine the similarity or dissimilarity between them. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting du Pont); Palm Bay, 73 USPQ2d at 1692; and TMEP § 1207.01(b)-(b)(v) (April 2013). Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP § 1207.01(b). The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather “‘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 specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014). Serial No. 85435222 4 Applicant seeks to register the mark ; Registrant’s mark is ÜberGeekGirl. Applicant argues that Registrant’s mark is weak; that the overall commercial impressions of the marks are dissimilar; and that the services are unrelated and directed to different classes of consumers. The Examining Attorney argues that there is a likelihood of confusion because each mark incorporates the phrase “Geek Girl” as its dominant portion, the services are related, and the channels of trade and classes of consumers are the same. Turning first to the strength of the cited mark under the sixth du Pont factor, we consider the meanings of “über,” “geek,” and “girl,” and whether the combination “übergeekgirl” is weak. There are no dictionary definitions for the terms “GEEK” or “GIRL” in the record, but Applicant provided two dictionary definitions for “ÜBER”: “being a superlative example of its kind or class: SUPER-<übernerd>” and “to an extreme or excessive degree: SUPER-<übercool>.”3 With the first Office Action, the Examining Attorney added another definition “which indicates that the term “Über” is a humorous prefix used with nouns to mean ‘total or complete.’”4 We take judicial notice of dictionary definitions of “geek” and “girl.”5 The term GEEK is used as a noun to describe “a person who is socially awkward and unpopular:a usually 3 From Merriam-Webster online at m-w.com; attached to Applicant’s July 26, 2012, response. 4 Citing the MacMillan Dictionary at http://www.macmillandictionary.com; Final Office Action dated August 27, 2012. 5 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 85435222 5 intelligent person who does not fit in with other people.”6 A “girl” is a “female child” or “young woman.”7 As a modifier of “GeekGirl,” the prefix “Über” extols Registrant’s services, giving the impression that highly qualified (“über”) female professionals (“geek girls”) provide Registrant’s services. Although the term “über” is laudatory, the mark as a whole is suggestive only. In an attempt to show that the cited mark is weak, Applicant submitted five third-party registrations of marks incorporating the term “ÜBER,” 14 third-party registrations of marks incorporating “GEEK,”8 and two registrations of marks incorporating “GEEK GIRL” for related computer services.9 In general, absent evidence of actual use, third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of registrations reposing in the U.S. Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). See also Olde 6 Merriam-Webster at m-w.com. 7 Id. 8 The marks of the registrations submitted by Applicant are: SUPERGEEKS, Reg. No. 2820633; GEEK I.T. GEEK IT, Reg. No. 3882823; AMERIGEEKS, Reg. No. 4134270; ADVISORGEEK, Reg. No. 4003529; MAJORGEEKS, Reg. No. 3243994; GEEK SQUAD and design, Reg. No. 3957222; GEEKGINEERING, Reg. No. 4112796; GREEN GEEK, Reg. No. 4088779 (broadcasting); GEEK GATOR and design, Reg. No. 4101505; SEATGEEK, Reg. No. 4062477; GEEKS ON SUPPORT, Reg. No. 4067075; GEEKS123, Reg. No. 4059637; SELLGEEK, Reg. No. 4042054; and FUNDAGEEK and design, Reg. No. 4176956. 9 The additional two pending applications for marks incorporating “GEEK GIRL” that Applicant submitted have no probative value. Third-party applications are evidence only of the fact that they have been filed and not that the marks are in use or have made any impact on prospective purchasers. Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). Serial No. 85435222 6 Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to strength of a mark, however, registration evidence may not be given any weight.”). More specifically in this case, the registrations for Über-derivative marks consistently translate “über” as having a laudatory significance (e.g., super, superior, elite, “the ultimate”). Therefore, we consider the term to have less overall trademark significance than the remaining portion of the mark. With respect to the third-party registrations for marks including the terms “geek” and “geek girl,” however, even if we were to find that the public distinguishes marks containing the term GEEK by the additional, different elements in the marks, we do not find that the public has been conditioned to view the phrase “geek girl” in such a manner. Applicant’s third-party registrations for marks containing “ÜBER,” “GEEK” and “GEEK GIRL” do not show that the cited mark is weak. Accordingly, the cited mark would be considered at worst suggestive, and hence, inherently distinctive. This factor is neutral. Comparing the marks in terms of their appearance, pronunciation, connotation, and overall commercial impressions, we find that they are more similar than dissimilar. Although marks must be considered in their entireties, it is settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a Serial No. 85435222 7 mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”). Because the term “über” is laudatory, it is not the dominant portion of the cited mark. The dominant portion is the suggestive phrase GEEK GIRLS. The dominant portion of Applicant’s mark is also the phrase GEEK GIRLS. When a mark comprises both a word and a design, the word is normally accorded greater weight because it would be used by purchasers to request the goods or services. See In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); CBS Inc. v. Morrow, 218 USPQ at 200 (“[I]n a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods [or services] to which it is affixed.”). See also, In re Mighty Leaf Tea, 94 USPQ2d at 1260 (“the presence of an additional term in the mark does not necessarily eliminate the likelihood of confusion if some terms are identical,” citing China Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 83 USPQ2d 1123 (Fed. Cir. 2007); In re Max Capital Group Ltd., 93 USPQ2d 1243 (TTAB 2010) (design element in applicant’s mark for insurance services not sufficient to distinguish the mark from the cited marks MAX and for insurance services). Because of this shared dominant element, the marks look and sound alike. The marks also have similar connotations and create similar commercial impressions: Applicant’s mark creates the commercial impression of a girl who is a geek and the cited mark creates the commercial impression of a girl who is a total, complete, or “super” geek. Applicant’s argument that confusion is unlikely because Serial No. 85435222 8 there are differences in the “look and feel” of the websites since both Applicant and Registrant use their respective marks in a stylized manner, is unavailing. We are concerned with the marks as they appear in the application and the cited registration, not as they appear in the marketplace. Trademark Act § 2(d), 15 U.S.C. § 1052(d). Thus, the manner in which Applicant and Registrant may use their respective marks on the websites is immaterial. Since Registrant’s mark is in standard characters, it may be used in a font style similar to Applicant’s or in pink and/or white letters. Given the overall similarities in sight, sound, meaning and commercial impression of the marks, prospective consumers of Applicant’s services who are familiar with Registrant’s services may believe that Registrant would now be providing a less expensive (less “über”) line of computer services. The first du Pont factor favors a finding of likelihood of confusion. B. Comparison of the Services; Trade Channels; Classes of Consumers We next turn our attention to a comparison of the similarity or dissimilarity and nature of the services described in the application and registration. In making our determination regarding the relatedness of the services, we must look to the services as identified in the application and the cited registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 17893, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Risesmart, Inc., 104 USPQ2d 1931, 1934 (TTAB 2012). It is settled that it is not necessary that the respective services be identical or even competitive in order to find that they are Serial No. 85435222 9 related for purposes of our likelihood of confusion analysis, it being sufficient that the services are related in some manner and/or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons under circumstances that would give rise, because of the marks employed thereon, to the mistaken belief that the services originate from or are in some way associated with the same producer. In re Home Builders Assn. of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990). Applicant argues that the services are unrelated, and that they are marketed in such a way that they would not be encountered by the same persons in situations that would create a likelihood of confusion. Applicant includes copies of webpages from both its and Registrant’s website and argues that Registrant’s services are directed to a more professional class of consumer. The services identified in Applicant’s application are “Computer camps; Computer education training services; Education services, namely, providing seminars, workshops, and classes in the field of computer technology.” Registrant’s services include “consulting … in the field of … use of computer hardware and software systems for others.” Although these broadly worded recitations use different terminology, it is clear that the services offered by both applicant and registrant encompass guidance in the use of computer hardware and software. Consequently, these services are legally identical. “Likelihood of confusion may be found based on any item that comes within the identification of goods [or services] in the involved application and registration.” In re La Peregrina Ltd., 80 USPQ2d Serial No. 85435222 10 1645, 1646 (TTAB 2008); see also, Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods in the application and cited registration). In addition, the Examining Attorney has submitted copies of printouts from two Internet websites which show marks displayed in connection with the same or similar services as those of Applicant and Registrant herein. A page taken from the website of Eric Wardowski and Associates offers “tutoring in major software applications” as well as “hardware diagnostics and repair.”10 A page taken from the website of Creativity Unlimited offers “computer consultation” and “training.”11 The Examining Attorney further submitted copies from the USPTO X-Search database of the following third-party marks, which are registered for services that are listed in Applicant’s application as well as services listed in Registrant’s registration: Reg. No. 3425529 for the mark IT XPRESS UPGRADE YOUR LIFE and design includes, inter alia, “computer camps and computer education training services” in International Class 41 as well as “computer consultation; computer network design for others; computer programming; computer software consultancy; and repair of computer software” in International Class 42. Reg. No. 4176369 for the mark CREO includes, inter alia, “computer education training services” in International Class 41 and “computer consultation” in International Class 42; Reg. No. 4073319 for the mark MICROASSIST includes, inter alia, “computer education training services” in International Class 41 and “computer services, for others, namely, computer hardware development; computer software design, development, installation, 10 Attached to Office Action dated January 28, 2012. 11 Id. Serial No. 85435222 11 maintenance, repair and updating; computer programming; consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others” in International Class 42. Reg. No. 4052623 for the mark MOTIVATIONAL DESIGN includes, inter alia, “computer education training services” in International Class 41 and “computer consultation; computer network design and computer software design for the interactive internet marketing industry; computer programming and software design” in International Class 42. Reg. No. 4148821 for the mark SOURCEFABRIC and design includes, inter alia, “computer education training” in International Class 41 and “scientific and technological services, namely, designing and developing of computer software; providing search engines for the internet; computer programming” in International Class 42. These printouts have probative value to the extent that they serve to suggest that the services listed therein are of a kind that may emanate from a single source. In re Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii). We also note that of the registrations submitted by Applicant, Reg. No. 3957222 for the mark GEEK SQUAD and design also covers “Providing training in the use of computers and consumer electronics products” in International Class 41 and “Design of computers, computer software and computer networks; Design consultation in the field of computers and consumer electronics” in International Class 42.12 12 Attached to Applicant’s July 26, 2012 response at p. 27. Serial No. 85435222 12 Further, because both the application and registration describe the services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application and registration encompass all services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive… . There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold.”); TMEP § 1207.01(a)(iii). As to the services that are legally identical, we must presume that the identified services are offered in the same channels of trade to the same potential buyers. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in- part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”). 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); In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994) (In view of the identity of the goods and trade channels, the goods must be presumed to be sold to the same class of purchasers). Since the Serial No. 85435222 13 services are broadly offered to the general public, potential customers include ordinary purchasers. Accordingly, these du Pont factors weigh heavily in favor of a finding of likelihood of confusion. C. Sophistication of Purchasers Applicant argues that Registrant’s customers are sophisticated, based on the statement in its website that it “provides professional technology services to clients that require the utmost in privacy, security, and performance.”13 Even were we to accept this statement as true, it does not avoid a likelihood of confusion. Applicant’s clients may also require privacy, security and professional performance. Moreover, Board precedent requires our decision to be based “on the least sophisticated potential purchasers,” Gen. Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011), judgment set aside on other grounds, 110 USQP2d 1679 (TTAB 2014), which in this case includes ordinary purchasers. Further, it is settled that even sophisticated purchasers are not immune from source confusion, especially in cases such as the instant one involving similar marks and legally identical or closely related services. See Stone Lion, 110 USPQ2d at 1163-64; In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers ... are not infallible.”). We find that the similarity between the marks and the identity of 13 Appeal Brief p. 13, 8 TTABVue 18. Serial No. 85435222 14 the goods sold thereunder outweigh any presumed sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods). Accordingly, this factor is neutral. In view of similarity of the marks and the relatedness of the services, we find that registration of Applicant’s mark for computer camps and computer educational services is likely to cause confusion with the cited registration ÜberGeekGirl for computer services. Decision: The refusal to register Applicant’s mark under Section 2(d) is affirmed. Copy with citationCopy as parenthetical citation