Gene Pahlmann, Jr.Download PDFTrademark Trial and Appeal BoardMar 28, 2014No. 85415532 (T.T.A.B. Mar. 28, 2014) Copy Citation Luke Br Kathlee Bishop, Before B Opinion Gen the mar photogr Interna the Tra ground followin 1 Serial N Act, alle Septemb UNIT ean of Bre n M. Van Managing ucher, Wo by Gorow e Pahlman k Luckys aphy and/ tional Clas demark Ac that appli g registere o. 8541553 ging first us er 4, 2011. ED STAT Trad anLaw, LL ston, Trad Attorney) lfson, and itz, Admin n, Jr. (ap tar Photo or videog s 41.1 Reg t, 15 U.S.C cant’s mar d mark sh 2, filed Sep e anywhere The term “P This Op Preceden ES PATEN emark Tr In re Serial C for Gen emark Ex . 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The examining attorney issued a final refusal of registration, which applicant has appealed. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in 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., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We start our analysis with the first du Pont factor, the similarity of the marks. In comparing the marks we must consider the appearance, sound, connotation and commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The emphasis of our analysis must be on the recollection of the average purchaser who normally retains a general, rather than 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). 2 Reg. No. 4128162, issued April 17, 2012. The term “Media” in the mark is disclaimed. Serial No. 85415532 3 In this case, applicant asserts that the marks, when viewed in their entireties, do not support a finding of likelihood of confusion. We disagree. While “the similarity or dissimilarity of the marks is determined based on the marks in their entireties, … 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 National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Looking first at the verbal portion of the marks, we note that “[i]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.” Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (Likelihood of confusion found between KIDWIPES and KID STUFF for pre-moistened disposable towelettes). See also Palm Bay Imports Inc., 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “Veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word). In this case, the first portion of the marks at issue, “LUCKYSTAR” and “LUCKY STARS,” are not only the dominant portions of the marks, they are also legally identical. Neither the space between the words of registrant’s mark nor registrant’s use of the plural term “STARS” creates a significant difference in the marks. See Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 54 (TTAB Serial No. 85415532 4 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (The presence or absence of a space between virtually the same words, e,g., STOCKPOT and STOCK POT, is not a significant difference); Weider Publ'ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (“It is well established that trademarks and/or service marks consisting of the singular and plural forms of the same term are essentially the same mark.”) see also Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark); In re Pix of Am., Inc., 225 USPQ 691, 692 (TTAB 1985) (noting that the pluralization of NEWPORT is “almost totally insignificant” in terms of likelihood of confusion among purchasers); and In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962) (finding no material difference between the singular and plural forms of RED DEVIL). The suffixes of the respective marks, “Photobooth” and “Media,” are descriptive terms that have been disclaimed. Applicant’s services include the rental of portable photo3 booths (aka photography booths); as such, the term “Photobooth” is descriptive of a feature of applicant’s services. Media is defined as “a mode of artistic expression or communication.”4 Since photography is clearly a mode of artistic expression, the word “media” is descriptive of a feature of registrant’s 3 We take judicial notice that one of the definitions of “photo” is “photography.” The definition was obtained from the Merriam-Webster Online Dictionary, www.m-w.com. 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 have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 4 We take judicial notice of the definition of “media” from the Merriam-Webster Online Dictionary, www.m-w.com. Serial No. 85415532 5 photography services. In general, the addition of merely descriptive matter does not obviate a finding of similarity. In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004). Applicant has asserted that “[t]here is no explicit rule that likelihood of confusion automatically applies where a junior user’s mark contains in part the whole of another mark.”5 While this assertion is true, the presence of additional terms in the mark does not necessarily eliminate the likelihood of confusion if some terms are identical. Id., at 1946 (“Viewed in their entireties with non-dominant features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical…”). Applicant contends that the commercial impressions of the marks are different, and that registrant’s mark “presents a commercial impression related to astronomy or constellations of stars,” while “the term ‘star’ in [a]pplicant’s mark connotes being a [sic] famous or the center of attention.” Appeal Brief, p. 7; 4 TTABVue, 8. While applicant has submitted no evidence supporting these contentions, the examining attorney has submitted the only evidence in this record of the meaning of the expression, “lucky star,” which is: “a certain star or planet which, by itself or with others, is seriously or jokingly thought to bring a person good luck and success in life.” Office action dated February 5, 2013 (from the website English Slang, located at www.english-slang.com). Since there is no evidence that the term has any other meaning, we find that the commercial impression conveyed by both marks is that of “good luck stars.” Therefore, the commercial impressions conveyed by both marks 5 Appeal Brief, p.3.; 4 TTABVUE, 4. Serial No. 85415532 6 are similar. Furthermore, since “media” is defined as a mode of artistic expression, it describes features of both registrant’s photography services and the purpose of applicant’s photography and videography booths, namely, that they are for the taking of pictures and videos. In short, the addition of these terms does not change the commercial impression of the marks. Applicant also asserts that the “non-word elements” in the cited mark “support[] a finding that they are clearly different.” Appeal Brief, p. 6, 4 TTABVue, 7. In support of this position, applicant argues that “there is no general rule as to whether letters or designs will dominate in composite marks.”6 While applicant is correct that there is no per se rule, “in the case of a composite mark containing both words and a design, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.” In re Viterra Inc., 671 F3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) citing CBS Inc. v. Morrow, 708 F.2d. 1579, 128 USPQ 198 (Fed. Cir. 1983) (internal quotations omitted). Moreover, in this case, the design portion of registrant’s mark, which consists of a series of stars, is subordinate to the verbal portion of the mark and thus, the verbal portion indicates the source of origin of the services. In view thereof, we find that the similarities in the marks outweigh the dissimilarities and that the first du Pont factor favors a finding of likelihood of confusion. 6 Appeal Brief, p. 5; 4 TTABVue, 6 citing TMEP § 1207.01(c)(ii). Serial No. 85415532 7 We look next at the second du Pont factor, the similarity or dissimilarity of the services. As discussed, supra, the recitation of services in the application is “rental of portable photography and/or videography booths for taking of pictures and videos” and the recitation of services in the cited registration is “photography.” In the context of arguing the commercial impression of its mark, applicant describes its services as consisting of “renting a portable photo booth to parties and events, complete with attendants and boxes of props so that attendees can memorialize the occasion,” which applicant indicates is “a very limited and specific business model.” Appeal Brief, pp. 7-8; 4 TTABVue, 8-9. However, other than the limitations inherent in the rental of a portable booth, we are not limited by applicant’s explication of its business model. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). As such, our analysis is restricted to the services described in the application, “rental of portable photography and/or videography booths for taking of pictures and videos.” Other than its comments in conjunction with the meaning of its mark, applicant has submitted no argument regarding the similarity or dissimilarity of the services at issue. The examining attorney has submitted evidence that photography services and the rental of photo booths are rendered by the same parties, at the same events. For example, Cheetah Design Studios “offers a variety of products for today’s modern events and businesses,” which include photography and Photo Booths for weddings and parties. (www.cheetahdesignstudio.com) (attachment to Office action dated July 19, 2012); Serial No. 85415532 8 Glitter Lens –is “equipped with state of the art portable photo booths and a professional staff of seasoned photographers. Choose one or both for your party.” (www.glitterlens.com), (attachment to Office action dated July 19, 2012); Counter Clockwise Productions –“provide[s] professionally attended and operated photo booth rentals with instant prints personalized for your special event.” Also “provide[s] professional event photography services with onsite printing of those photographs.” www.counter- clockwise.com) (attachment to Office action dated July 19, 2012); and WeddingWire – CL Photography, Photobooth and Planning – provides packages, which include “two photographers and unlimited time … photobooth [added] to packages …” (www.weddingwire.com) (attachment to Office action dated February 5, 2013). The foregoing evidence establishes that photography services and the rental of photography and/or videography booths for taking of pictures and videos, are closely related services, which are sold in the same channels of trade to the same purchasers. Thus, the second and third du Pont factors favor a finding of likelihood of confusion. Having considered all the evidence and arguments on the relevant du Pont factors discussed herein, we find that applicant’s mark Luckystar Photobooth is likely to cause confusion with the cited mark, LUCKY STARS MEDIA & design. The remaining du Pont factors we treat as neutral. Decision: The refusal under Section 2(d) of the Act is affirmed. Copy with citationCopy as parenthetical citation