EX (T.T.A.B. Feb. 26, 2019)

Glenn Dale Gordon

Trademark Trial and Appeal BoardFeb 26, 2019

EX (T.T.A.B. Feb. 26, 2019)

This Opinion is not a Precedent of the TTAB Mailed: February 26, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Gordon _____ Serial No. 87053010 _____ Michael Bartholomew of Kunzler PC, for Glenn Dale Gordon Parker Howard, Trademark Examining Attorney, Law Office 117, Hellen Bryan Johnson, Managing Attorney. _____ Before Wolfson, Greenbaum, and Heasley, Administrative Trademark Judges. Opinion by Heasley, Administrative Trademark Judge: Glenn Dale Gordon (“Applicant”) seeks registration on the Principal Register of the composite mark for goods ultimately identified as “support belts for workers including a pocket” in International Class 9.1 1 Application Serial No. 87053010 was filed on May 27, 2016, based on Applicant’s claim of first use anywhere and use in commerce since at least as early as Oct. 28, 2015. The description of the mark reads: “The mark consists of a backside view of a belt with stylized word [sic] of We Gotcha starting slightly above the top left portion of the belt and proceeding right and slightly downward with the stylized word Back underneath and partially below the belt line.” Color is not claimed as a feature of the mark. Serial No. 87053010 - 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), on the ground of likelihood of confusion with two registered marks owned by two different registrants: for “Neck and shoulder support devices for medical purposes; Shoulder bands, namely, manually-operated resistance bands for physical therapy purposes; Back supports for medical purposes; Posture support devices for backs for medical purposes; Posture correction devices, namely, an adjustable harness to correct one’s posture for medical purposes” in International Class 10;2 and ELITE SPORTS BAND: WE’VE GOT YOUR BACK (in standard characters, with “SPORTS BAND” disclaimed) for “Compression garments for athletic or non-medical use, namely, compression waistbands” in International Class 25.3 After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. Page references to the application record are to the downloadable .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions and orders on appeal are to the Board’s TTABVUE docket system. 2 Registration No. 5122550 issued on the Principal Register on Jan. 17, 2017. The description of the mark reads: “The mark consists of the blue stylized word ‘GOTCHA’ with grey shadowing of the letters where the ‘G’ and ‘A’ are larger and the arched blue stylized word ‘BACK’ with grey shadowing is below ‘GOTCHA’ between the ‘G’ and ‘A’, all of which is above a blue, red, pink, and purple image of a human upper back, shoulders, and neck.” The colors grey, blue, red, pink and purple are claimed as a feature of the mark. 3 Registration No. 4380839 issued on the Principal Register on Aug. 6, 2013. Serial No. 87053010 - 3 - I. Likelihood of Confusion We base our determination of likelihood of confusion under Section 2(d) on an analysis of all of the probative facts in evidence that are relevant to the factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. __, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In applying the DuPont factors, we bear in mind the fundamental purposes underlying Section 2(d), which are to prevent confusion as to source, and to protect registrants from damage caused by registration of confusingly similar marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995); DuPont, 177 USPQ at 566. We have considered each DuPont factor that is relevant, and have treated any other factors as neutral. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). Varying weights may be assigned to each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more or less Serial No. 87053010 - 4 - weighty roles in any particular determination”). Two key considerations are the similarities between the marks and the similarities between the goods. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). A. Similarity of the Marks Under the first DuPont factor, we determine the similarity or dissimilarity of Applicant’s and Registrants’ marks in their entireties, taking into account their appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). 1. Comparison with the Composite Mark Applicant attempts to distinguish each cited registered mark in turn. With respect to the composite registered mark, he argues that the design elements and stylization of letters distinguish the marks: Serial No. 87053010 - 5 - Applicant’s applied for mark [ ] includes the phrase “WE GOTCHA BACK” with stylized letters alternating between different styles and formed on a drawing of a wrap-around belt that symbolizes the product belt, thereby inhibiting confusion with a source of products for the mark “GOTCHA BACK” [ ] that consists of the blue stylized word “GOTCHA” with grey shadowing of the letters where the “G” and “A” are larger and the arched blue stylized word “BACK” with grey shadowing is below “GOTCHA” between the “G” and “A,” all of which is above a blue, red, pink, and purple image of a human upper back, shoulders, and neck.4 We agree with the Examining Attorney, however, that the marks are more similar than dissimilar. Although the composite registered mark contains some design and style elements that differ from those in Applicant’s mark, we accord the words of each mark greater weight because they are likely to make a greater impression upon purchasers, to be remembered by them, and to be used by them to request the goods. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018). Applicant’s mark adopts the wording of the composite mark, GOTCHA BACK, in its entirety, adding only the nondistinctive prefix WE. But Applicant cannot avoid likelihood of confusion by adopting Registrant’s entire literal mark and adding subordinate matter thereto. See In re Integrated Embedded, 120 USPQ2d 1504, 1513 4 Applicant’s brief, 4 TTABVUE 6; see also Applicant’s reply brief, 7 TTABVUE 3. Serial No. 87053010 - 6 - (TTAB 2016). “Marks have frequently been found to be similar where one mark incorporates the entirety of another mark, as is the case here. Coca-Cola Bottling Co. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL is similar to BENGAL LANCER); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY is similar to EBONY DRUM)….” TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1115 (TTAB 2019). Adding the prefix WE merely suggests that Applicant is the source of Registrant’s GOTCHA BACK products. Cf. In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (holding VANTAGE TITAN for MRI diagnostic apparatus, and TITAN for medical ultrasound device likely to cause confusion, noting that the marks are more similar than they are different and that the addition of applicant’s “product mark,” VANTAGE, to the registered mark would not avoid confusion). 2. Comparison with the Standard Character Mark With respect to the standard character registered mark, Applicant argues that his mark is distinguishable by its stylized lettering, by its design elements and by its different wording. “Indeed,” he argues, “by simply looking at the word portions of the word mark ‘ELITE SPORTZ BAND: WE’VE GOT YOUR BACK’ and Applicant’s applied for mark ‘WE GOTCHA BACK,’ a consumer would not be confused. The exact words used and the formality of the words used are vastly different between the two marks.”5 Applicant also argues that Registrant drops the phrase WE’VE GOT YOUR BACK or uses it only in a logo when it advertises, markets, and sells its products in 5 Applicant’s brief, 4 TTABVUE 4. Serial No. 87053010 - 7 - commerce.6 But as the Examining Attorney correctly observes,7 since Registrant’s mark is in standard characters, it can display that wording in a wide variety of ways, including lettering that is substantially similar to Applicant’s. In re Davia, 110 USPQ2d at 1814. And as noted above, the wording of the marks weighs more heavily than Applicant’s design element in determining the similarity of the marks. In re Aquitaine Wine, 126 USPQ2d at 1184. In fact, the wording of Applicant’s mark is likely to appear to consumers as a shortened version of ELITE SPORTS BAND: WE’VE GOT YOUR BACK. See In re United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (finding that “Applicant’s mark [CAREER IMAGE] would appear to prospective purchasers to be a shortened form of registrant’s mark [CREST CAREER IMAGES].”); Hunter Indus., Inc. v. The Toro Co., 110 USPQ2d 1651, 1661 (TTAB 2014) (finding “applicant’s mark PRECISION would appear to prospective purchasers to be a shortened form of opposer’s mark PRECISION DISTRIBUTION CONTROL.”). The difference between the formal WE’VE GOT YOUR BACK and the informal WE GOTCHA BACK does little to distinguish them. See In re FabFitFun, Inc., 127 USPQ2d 1670, 1676 (TTAB 2018) (“As an initial matter, the informal spelling of SMOKIN’ in the registered mark versus the traditional spelling of SMOKING in Applicant’s mark does little to create a distinction between them.”) (citing In re South 6 Applicant’s reply brief, 7 TTABVUE 4. 7 Examining Attorney’s brief, 6 TTABVUE 12. Serial No. 87053010 - 8 - Bend Toy Mfg. Co., 218 USPQ 479, 80 (TTAB 1983) (LIL’ LADY BUGGY vs. LITTLE LADY; “Contractions of a term do not alter the essential identity of character and meaning between the full word and the contraction.”)). Even if Registrant displays its registered mark differently in commerce―either shortened, or in logo form, as Applicant asserts―we must compare the marks as they appear in the Application and the cited registrations. In re Shell Oil, 26 USPQ2d at 1690 n.4 (Fed. Cir. 1993) (“Registrability is determined based on the description in the application, and restrictions on how the mark is used will not be inferred.”); In re Aquitaine Wine, 126 USPQ2d at 1186. 3. Comparison with Both Cited Registered Marks At bottom, no matter how formally or informally it is phrased, “GOTCHA BACK” or “GOT YOUR BACK,” the shared wording in Applicant’s mark and the two cited registered marks convey the same fundamental connotation and commercial impression. They all play on the familiar phrase “got your back,” meaning “[t]o be willing and prepared to help or defend someone; to look out for someone in case they need assistance,”8 and they all suggest that their goods help support the human back. Applicant argues that if two such similar registrations can coexist on the Principal Register without one invalidating the other, then his application should be registrable, as well.9 However, it is well established that the existence of confusingly similar marks already on the Register will not aid an applicant in registering yet 8 TheFreeDictionary.com 12/8/2017, Dec. 14, 2017 Office Action TSDR at 7; see Examining Attorney’s brief, 6 TTABVUE 8, 11. 9 Applicant’s brief, 4 TTABVUE 6; Applicant’s reply brief, 7 TTABVUE 3 Serial No. 87053010 - 9 - another confusingly similar mark. AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016). We find, therefore, that Applicant’s mark is similar to the two cited registered marks, and that the first DuPont factor accordingly weighs in favor of finding a likelihood of confusion. B. Similarity of the Goods, Channels of Trade, and Classes of Customers The second DuPont factor concerns the “similarity or dissimilarity and nature of the goods or services as described in an application or registration…,” and the third DuPont factor concerns the “similarity or dissimilarity of established, likely-to- continue trade channels.” DuPont, 177 USPQ at 567; Stone Lion Capital Partners v. Lion Capital, 110 USPQ2d at 1159, 1161. The goods in Registration No. 4380839 are “Compression garments for athletic or non-medical use, namely, compression waistbands” in International Class 25, and the goods identified in Registration No. 5122550 are “Neck and shoulder support devices for medical purposes; Shoulder bands, namely, manually-operated resistance bands for physical therapy purposes; Back supports for medical purposes; Posture support devices for backs for medical purposes; Posture correction devices, namely, an adjustable harness to correct one’s posture for medical purposes” in International Class 10. Applicant argues that the goods identified in the registrations differ from those in his application: Serial No. 87053010 - 10 - In contrast, Applicants mark is directed to International Class 9 for support belts for workers including a pocket. Indeed, the product corresponding to U.S. Registration No. 5122550 is not a belt, has no adjustment features like a belt, does not wrap around a person’s waist, and does not include a pocket. Specifically, the product corresponding to U.S. Registration No. 5122550 is an upper body support product, which is very different from a belt. Furthermore, the company owning U.S. Registration No. 5122550 has not expanded to manufacture belt like products. … Indeed, the product corresponding to U.S. Registration No. 4380839 is not a belt, has no adjustment features like a belt, and does not include a pocket. Specifically, the product corresponding to U.S. Registration No. 4380839 is a non-adjustable product used for compression. Furthermore, the company owning U.S. Registration No. 4380839 has not expanded to manufacture belt like products.10 As the Examining Attorney correctly points out, though, the differing International Classifications have no bearing on the question of likelihood of confusion.11 As the Federal Circuit has declared, “Classification is solely for the ‘convenience of Patent and Trademark Office administration,’ 15 U.S.C. § 1112, and ‘is wholly irrelevant to the issue of registrability under section 1052(d), which makes no reference to classification,’ Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993).” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018). Indeed, Applicant initially described his goods as “Supporters for medical purposes; Supports for general medical use; Abdominal belts; Back supports for medical purposes; Physical exercise apparatus, for medical purposes” in Class 10.12 During the course of examination, he amended the 10 Applicant’s brief, 4 TTABVUE 5, 7. 11 Examining Attorney’s brief, 6 TTABVUE 13. 12 Application, May 27, 2016, TSDR at 4. Serial No. 87053010 - 11 - description to “Abdominal belts; Physical exercise apparatus, for medical purposes” in Class 10,13 and then to its final form, “Support belts for workers including a pocket” in Class 9―all without changing his specimen of use: 14 The International Classification of Applicant’s goods thus has no bearing on their similarity to Registrants’ goods. See In re Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992). “When analyzing the similarity of the goods, ‘it is not necessary that the products of the parties be similar or even competitive to support a finding of likelihood of confusion.’… Instead, likelihood 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., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). 13 Sept. 22, 2016 Response to Office Action, TSDR at 2. 14 Specimen, Application, May 27, 2016. Serial No. 87053010 - 12 - In this case, as the Examining Attorney rightly states, the goods in all three identifications are highly related, as they have a common purpose or function. Whether they are described as “support belts,” “back supports,” or “compression waistbands,” they are all designed to support the back for health purposes, as their marks suggest.15 Goods of this sort are commonly offered to consumers by the same source, as is demonstrated by the Examining Attorney’s third-party evidence: • Scrip Hessco: 16 “[a]bdominal braces are designed to improve posture and reduce the strain on the back.”17 Offers back braces, shoulder braces, compression straps.18 15 Examining Attorney’s brief, 6 TTABVUE 8, 11, 14. 16 Dec. 14, 2017 Office Action 17 Scriphessco.com 5/18/2017, May 19, 2017 Office Action TSDR at 8-9. 18 Dec. 14, 2017 Office Action TSDR 21-30. Serial No. 87053010 - 13 - • Breg: 19 • Braceability: 19 Breg.com/products/spine-bracing/lumbar/ 12/13/2017, Dec. 14, 2017 Office Action TSDR 14- 20. Serial No. 87053010 - 14 - 20 Goods of this sort also come with pockets. For example: • Surefit: 21 20 Braceability.com 5/18/2017, May 19, 2017 Office Action TSDR at 10, Dec. 14, 2017 Office Action TSDR at 8-13. 21 https://www.surefitlab.com/by-product-type/orthotics/spinal/lumbar-sacral- orthosis/binders/elastic-lumbar-supportwith-neoprene-pocket.html, Dec. 14, 2017 Office Action TSDR at 31. Serial No. 87053010 - 15 - 22 This evidence supports a finding that the respective goods are related products that will be offered to the same consumers by the same sources. Therefore, Applicant’s and Registrants’ goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69 (TTAB 2009). This evidence also demonstrates how the goods are normally sold or provided through the same trade channels, where they are offered to the same class of customers―those who seek back support in order to promote or maintain health.23 See In re i.am.symbolic, 123 USPQ2d at 1749 (“Likelihood of confusion “must be resolved on the basis of the goods named in the registration and, in the absence of specific limitations in the registration, on the basis of all normal and usual channels of trade and methods of distribution.”) (quoting Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)). Applicant may not rely on argument or extrinsic evidence to restrict the channels of trade or the classes of customers, and since the identification of goods do not restrict either, we cannot consider the asserted differences in our 22 Breg.com/products/spine-bracing/lumbar/back-support-pocket/ 12/13/2017, Dec. 14, 2017 Office Action, TSDR at 14-20. 23 Examining Attorney’s brief, 6 TTABVUE 11. Serial No. 87053010 - 16 - determination. In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re Bercut- Vandervoot & Co., 229 USPQ 763, 764-65 (TTAB 1986) (extrinsic evidence and argument suggesting trade-channel restrictions not specified in application rejected). For these reasons, the second and third DuPont factors also weigh in favor of finding a likelihood of confusion. II. Conclusion We have considered all of the arguments and evidence of record, including those not specifically discussed herein, and all relevant DuPont factors. We find that Applicant’s mark is similar to Registrants’, that Applicant’s goods are highly related to Registrants’, and that they will tend to travel through the same channels of trade to the same classes of customers. In sum, we find that Applicant’s mark, as used on his goods, so resembles the cited registered marks as to be likely to cause confusion, mistake or deception as to the source of Applicant’s goods. 15 U.S.C. § 1052(d). Decision: The refusal to register Applicant’s mark is affirmed.