91238603 (T.T.A.B. Sep. 13, 2019)

Grendene S.A.v.Guangzhou Jinyue Auto Parts & Accessories Co. Ltd.

Trademark Trial and Appeal BoardSep 13, 2019

91238603 (T.T.A.B. Sep. 13, 2019)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 13, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _______ Trademark Trial and Appeal Board _______ Grendene S.A. v. Guangzhou Jinyue Auto Parts & Accessories Co. Ltd. _______ Opposition No. 91238603 to Application Serial No. 87526145 _______ Michael J. Bradford of Luedeka Neely Group, P.C. for Grendene S.A. Yaoping Li for Guangzhou Jinyue Auto Parts & Accessories Co. Ltd. _______ Before Cataldo, Shaw and Greenbaum, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: Guangzhou Jinyue Auto Parts & Accessories Co. Ltd. (“Applicant”) seeks registration of the mark1 MELISSA & LUST, in standard characters, for goods and services identified as: Hosiery; Lingerie; Lingerie accessories, namely, removable silicone breast enhancer pads used in a bra; Pajamas; 1 Application Serial No. 87526145, filed on July 12, 2017 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce. Opposition No. 91238603 2 Pants; Robes; Scarves; Underwear, in International Class 25; and On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring clothing, in International Class 35. Grendene S.A. (“Opposer”) opposes registration of Applicant’s mark on the grounds of priority and likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Opposer pleaded ownership of the following eleven registered marks: Mark Reg. No. Goods and Services MELISSA 2526595 Plastic sandals M MELISSA (stylized) 2737154 Plastic sandals MELISSA (stylized) 3047672 Footwear, namely, injection-molded plastic sandals, sneakers, and clogs GALERIA MELISSA2 4198554 Retail store services in the field of footwear and accessories GALERIA MELISSA (stylized) 4198619 Retail store services in the field of footwear and accessories MEL DREAMED BY MELISSA 4302688 Footwear MELISSA (stylized) 4785929 Footwear MINI MELISSA 4892685 Footwear MINI MELISSA (stylized) 4892687 Footwear CLUBE MELISSA (stylized)3 4958043 Bottoms, Footwear, Headwear, Tops; and Retail store services featuring footwear and clothing ACADEMY MELISSA (stylized) 4990976 Designer footwear, namely, injection-molded plastic sandals, sneakers, and clogs 2 The registration for this mark and for Reg. No. 4198619 states: The English translation of the word “GALERIA” in the mark is “GALLERY”. 3 The registration states: The English translation of “CLUBE” in the mark is “CLUB”. Opposition No. 91238603 3 Applicant’s answer, in effect, denies the allegation of likelihood of confusion and argues that there are a number of third-party registrations for Melissa-formative marks for similar goods.4 I. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the involved application. Opposer submitted a notice of reliance with the following evidence: 1. Status and title copies of its eleven pleaded registrations for MELISSA- formative marks; 2. Copies of Chinese and Brazilian registrations for MELISSA marks, with certified English translations; 3. Excerpts from several online retail websites advertising Opposer’s goods; 4. A google street view image of Opposer’s retail store; 5. Excerpts from Opposer’s website, ShopMelissa.com, and Opposer’s Facebook page showing Opposer’s products for sale; and 4 4 TTABVUE. Pursuant to Rule 8(b) of the Federal Rules of Practice, A party shall state in short and plain terms his defenses to each claim asserted and shall admit or deny the averments upon which the adverse party relies. If he is without knowledge or information sufficient to form a belief as to the truth of an averment, he shall so state and this has the effect of a denial. Applicant’s answer is more in the nature of a general denial with arguments than an answer. However, inasmuch as the proceeding is ready for decision, we will accept the answer as filed. Applicant’s answer also included a list of four registrations for MELISSA-formative marks purportedly owned by third parties. Inasmuch as these registrations were not properly made of record during trial, we have not considered them. See Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (listing of third-party marks does not make registrations of record). Opposition No. 91238603 4 6. Twenty-one third-party registrations for marks used in connection with the parties’ respective goods and services. Applicant has not introduced any evidence, nor has it filed a brief. II. Standing and Priority Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). Our primary reviewing court, the U.S. Court of Appeals for the Federal Circuit, has enunciated a liberal threshold for determining standing, namely that a plaintiff must demonstrate that it possesses a “real interest” in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his belief of damage.” Empresa Cubana Del Tabaco at 1062 (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). A “real interest” is a “direct and personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026. In this case, Opposer made of record by notice of reliance copies of its pleaded registrations for MELISSA-formative marks. In view thereof, Opposer has established its standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). In addition, priority is not an issue in the opposition as to the marks and the goods and services covered by the pleaded registrations. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Opposition No. 91238603 5 III. Likelihood of Confusion Our determination of the issue is based on an analysis of all the probative facts in evidence 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 goods and services and the similarities between the marks. See 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.”). 1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression We first consider the marks, comparing them for similarities and dissimilarities in appearance, sound, connotation and commercial impression. See Palm Bay Imps., 73 USPQ2d at 1692. Similarity in any one of these elements is sufficient to support a determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”). Opposer has registered a number of MELISSA-formative marks including MELISSA and GALERIA MELISSA in both standard characters and stylized form. We focus our likelihood of confusion analysis on these marks. If we do not find a likelihood of confusion with these registered marks and their goods and services, then Opposition No. 91238603 6 there would be no likelihood of confusion with the marks in the other registrations. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). Beginning with a comparison of MELISSA & LUST and MELISSA, we find these marks are similar to the extent that they both include the term MELISSA, Opposer’s entire mark. While there is no rule that likelihood of confusion automatically applies where one mark encompasses another, in this case, as in many others, the fact that Opposer’s entire mark is incorporated in Applicant’s mark increases the similarity between the two. See, e.g., Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (finding CALIFORNIA CONCEPT marks substantially similar to prior mark CONCEPT); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (finding applicant’s mark VANTAGE TITAN confusingly similar to registered mark TITAN); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (finding applicant’s CAREER IMAGE marks similar to registered mark CREST CAREER IMAGES). We find MELISSA is the most dominant portion of Applicant’s mark. The term “& LUST” in Applicant’s mark does not change the connotation of MELISSA as a women’s name. Rather, “& LUST” tends to reinforce MELISSA and draw additional attention thereto. Thus, MELISSA has the same meaning or connotation in all of the marks. Although we consider 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 consideration of the Opposition No. 91238603 7 marks in their entireties.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In addition, both MELISSA & LUST and MELISSA begin with MELISSA. It is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered. Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (noting that the dominance of BARR in the mark BARR GROUP is reinforced by its location as the first word in the mark). Turning to a comparison of MELISSA & LUST and GALERIA MELISSA, we find significant similarities between these marks as well. Melissa is the most dominant portion of these marks too. It comes first in Applicant’s mark, and the term GALERIA in Applicant’s mark, although it comes first, is less dominant because it is suggestive of retail store services.5 Nat’l Data Corp., 224 USPQ at 751. Lastly, the fact that some of Opposer’s marks are stylized is of no consequence. It is well settled that a standard character mark, such as Applicant’s, “could be used in any typeface, color, or size, including the same stylization actually used . . . by the other party, or one that minimizes the differences or emphasizes the similarities 5 A “gallery” is defined as “a privately owned building or room where people can look at and buy works of art.” Collinsdictionary.com. To the extent that consumers would not translate GALERIA, the slight misspelling of “galleria” does not compel a different connotation. A “galleria” is defined as a “usually glass-roofed passageway or indoor court containing shops or businesses.” Thefreedictionary.com. The Board may take judicial notice of dictionary definitions, including online dictionaries. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). We do so here. Opposition No. 91238603 8 between the marks.” Anheuser- Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1823 (TTAB 2015) (citing Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011). We find that the du Pont factor regarding the similarity of the marks weighs in favor of a finding that confusion is likely. 2. The similarity or dissimilarity of the goods and services, trade channels, and purchasers We next consider the du Pont factors regarding the similarity or dissimilarity of the parties’ respective goods and services, their channels of trade, and purchasers. It is not necessary that the goods or services be identical or competitive, or even that they move in the same channels of trade, to support a finding of likelihood of confusion. Rather, it is sufficient that they are related in some manner, or that the circumstances surrounding their marketing are such that they would or could be encountered by the same persons in situations that would give rise, because of the similarity of the marks, to a mistaken belief that they originate from the same source or that there is an association or connection between the sources of the goods and services. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). Opposer’s registrations for MELISSA cover “plastic sandals” and “footwear.” Opposer has introduced twenty-one third-party registrations for marks used in connection with Opposer’s “footwear” and Applicant’s “Hosiery; Lingerie; . . . Opposition No. 91238603 9 Pajamas; Pants; Robes; Scarves; [and] Underwear.”6 These third-party registrations suggest that the goods are of a type that may emanate from a single source. Hewlett- Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that “a single company sells the goods and services of both parties, if presented, is relevant to the relatedness analysis”). Accordingly, we find Opposer’s “footwear” is closely related to Applicant’s “Hosiery; Lingerie; . . . Pajamas; Pants; Robes; Scarves; [and] Underwear.” It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods or services in a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Opposer’s registrations for GALERIA MELISSA cover “retail store services in the field of footwear and accessories” which are legally identical to Applicant’s broadly worded “On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring clothing.” That is, the Applicant’s retail store services featuring “consumer goods of the others” and “clothing” would include Opposer’s more narrowly worded retail store services featuring “footwear and accessories.” See Nazon v. Ghiorse, 119 USPQ2d 1178, 1187 (TTAB 2016) (broadly- worded identification encompasses more narrowly-worded identification). We also find that Applicant’s identified clothing items are commercially related to Opposer’s retail store services in the field of footwear and accessories. See In re Hyper 6 Exs. AA-UU, 6 TTABVUE 136-238. Opposition No. 91238603 10 Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988) (likelihood of confusion found between goods and services of selling the same goods); Safety-Klean Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 186 USPQ 476 (CCPA 1975); and Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983). Considering the channels of trade and classes of purchasers, because the goods are services are closely related or legally identical and there are no limitations as to channels of trade or classes of purchasers in either the application or Opposer’s registration, we must presume that Applicant’s and Opposer’s goods and services will be sold in the same channels of trade and will be bought by the same classes of purchasers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (TTAB 2012) (“[I]t is well established that, ‘absent restrictions in the application and registration, goods and services are presumed to travel in the same channels of trade to the same class of purchasers.’”) (quoting Hewlett-Packard Co. v. Packard Press Inc., 62 USPQ2d at 1005); 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.”). These du Pont factors weigh in favor of a finding that confusion is likely. 3. Conclusion After considering all of the applicable du Pont factors, we find that Applicant’s mark, MELISSA & LUST, for the identified clothing goods and retail store services Opposition No. 91238603 11 is likely to cause confusion with Opposer’s marks, MELISSA and GALERIA MELISSA also for clothing goods and retail store services. Decision: The opposition is sustained on the grounds of likelihood of confusion and registration of the mark is refused.