Hallmark Licensing, LLC

Trademark Trial and Appeal Board

Nov 12, 2019

87752038 (T.T.A.B. Nov. 12, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 12, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hallmark Licensing, LLC
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Serial No. 87752038
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Clinton G. Newton and Patrick J. Koncel of Shook, Hardy & Bacon, LLP for
Hallmark Licensing, LLC.
Christina Calloway, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
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Before Wellington, Ritchie and Heasley,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Hallmark Licensing, LLC (“Applicant”) seeks registration of the standard
character mark OUT OF THE BLUE on the Principal Register for “greeting cards;
packaged greeting cards” in International Class 16.1

1 Application Serial No. 87752038 was filed on January 11, 2018, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intention to
use the mark in commerce.
Serial No. 87752038
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The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the word and design
mark:

(GIFT COMPANY disclaimed) in connection with “retail store services featuring
personal gifts, namely, artwork, jewelry, sculptures, [and] toys” in International
Class 35.2 The registration contains the following description of the mark:
The mark consists of the square top of a gift wrapped box with the
stylized words "OUT OF THE BLUE" in the upper left quadrant that is
formed by the ribbon of the gift wrap. Below the drawing are the words
"GIFT COMPANY" in stylized font. Color is not claimed as a feature of
the mark.

After the refusal was made final, Applicant filed a request for reconsideration and
an appeal of the refusal.3 The request for reconsideration was denied by the
Examining Attorney.4 The appeal to the Board has been briefed. For the following
reasons, we affirm the refusal.
Likelihood of Confusion -- Applicable Law

2 Registration No. 4295651 issued on February 26, 2013; Section 8 declaration accepted.
3 4 and 1 TTABVUE, respectively.
4 6-8 TTABVUE.
Serial No. 87752038
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The issue of likelihood of confusion requires an analysis of the facts as they relate
to the relevant factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (DuPont). See also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont
factor for which there is evidence of record. See In re Guild Mortg. Co., 912 F.3d 1376,
129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); 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.”).
A. Similarity of the Marks
Under the first DuPont factor, we consider “‘the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.”’ Palm Bay Imps., Inc. v. Veuve Cliquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177
USPQ at 567). “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) (citing
In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)).
The proper test regarding similarity “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.” Zheng Cai v. Diamond Hong, Inc., 901
Serial No. 87752038
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F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(internal quotation marks and citation omitted)). “The proper perspective on which
the analysis must focus is on the recollection of the average customer, who retains a
general rather than specific impression of marks.” In re i.am.symbolic, 127 USPQ2d
1627, 1630 (TTAB 2018) (citations omitted).
The marks must be considered in their entireties, but “in articulating reasons for
reaching a conclusion on the issue of confusion, 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 marks in
their entireties.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050
(Fed. Cir. 2018) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985)).
We will begin our analysis by determining that the dominant portion of the cited
mark is the wording OUT OF THE BLUE. It appears rather prominently in the top
left of the word-and-design mark. Also, with composite marks, like the registered one,
“the words are normally accorded 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.” In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184
(TTAB 2018) (citing In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012)). The key underlying rationale for this general principle is “that the literal
component of brand names likely will appear alone when used in text and will be
Serial No. 87752038
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spoken when requested by consumers.” Viterra, 101 USPQ2d at 1911. In saying this,
we have considered the mark in its entirety, as we must, and we find the wording
OUT OF THE BLUE is what will make the primary and more lasting impression in
the minds of consumers who encounter the mark. The design element, which
Registrant describes as a “gift wrapped box,” may reinforce the additional wording in
the mark, GIFT COMPANY, which suggests that Registrant offers the identified
“personal gifts” through its “retail store services.” Consumers are thus most likely to
focus on the expression OUT OF THE BLUE for purposes of identifying the source of
the services.
Given that Applicant’s standard character mark, OUT OF THE BLUE, is the same
wording that dominates the registered mark, we find the two marks to be overall very
similar. While there is an obvious difference in appearance, due to the design element
in the registered mark, the marks will be used in text and spoken by consumers in a
very similar way. In terms of connotation, the expression “out of the blue,” means
coming as a surprise or unexpected. We further point out that there is no evidence
showing third-party marks containing the phrase OUT OF THE BLUE in connection
with retail gift store services or greeting cards. Thus, we find this shared arbitrary,
or at worst suggestive, expression is presumably an inherently strong source-
identifying element. Even if the phrase evokes one giving or receiving an unexpected
gift or surprise greeting card, that same connotation is present in both marks.
Serial No. 87752038
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Ultimately, we find OUT OF THE BLUE and OUT OF THE BLUE GIFT
COMPANY with design are very similar marks. Accordingly, this DuPont factor
weighs in favor of finding a likelihood of confusion.
B. Relatedness of Goods and Services; Trade Channels
We compare the respective goods and services, as well their respective trade
channels, based on how they are identified in the application and cited registration.
See 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 Computer Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also, Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Likelihood of
confusion “must be resolved on the basis of the goods [or services] 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.” SquirtCo v.
Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983).
The Examining Attorney argues there is a relationship because “it is common
practice for applicant’s goods and registrant’s services to emanate from the same
source.”5 In support, the Examining Attorney submitted Internet printouts from
Applicant’s own website, as well as nine third-party websites offering greeting cards
and retail store services featuring gifts, including artwork, jewelry, sculptures, or
toys. For example:6

5 12 TTABVUE 8.
6 Submitted with Office Actions issued on February 20, 2018, September 27, 2018, and May
1, 2019.
Serial No. 87752038
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• Hallmark (Applicant, www.hallmark.com) offering greeting cards and retail
store services featuring personal gifts, namely, artwork, jewelry, and toys
being sold and provided under the same mark.7

• The Paper Source (www.papersource.com) offering greeting cards and retail
store services featuring personal gifts, namely, artwork, jewelry, and toys
being sold and provided under the same mark.8

• Papyrus (www.papyrusonline.com) offering greeting cards and retail store
services featuring personal gifts, namely, artwork and jewelry being sold and
provided under the same mark.9

• The National Gallery of Art (www.shop.nga.gov) offering greeting cards and
retail store services featuring personal gifts, namely, artwork, jewelry,
sculptures being sold and provided under the same mark.10

Additionally, the Examining Attorney submitted copies of eight third-party, use-
based registrations for marks covering greeting cards and retail store services
featuring the some of the same goods for sale as Registrant.11 These registrations are
probative because they serve to suggest that the goods and services are of a kind that
emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-
18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1785-86; In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).

7 Attached to Office Action issued on February 20, 2018, TSDR pp. 5-12, 48.
8 Id., TSDR pp. 49-54.
9 Id., TSDR pp. 13-47.
10 Attached to Office Action issued on May 1, 2019, TSDR pp. 5-12.
11 Submitted with Office Action issued on May 1, 2019. The Examining Attorney attached
copies of other registrations; however, they do not contain dates of use in commerce. Thus
they are not probative and have not been considered. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1786 (TTAB 1993) (“[T]hird-party registrations which have issued under
Section 44(e) of the Act, 15 U.S.C. 1126(e), without any use in commerce basis, have very
little persuasive value” to suggest that the listed goods and/or services are of a type which
may emanate from a single source); In re 1st USA Realty Prof’s. Inc., 84 USPQ2d 1581, 1583
(TTAB 2007).
Serial No. 87752038
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Based on this evidence, we find that Applicant’s goods are related to Registrant’s
services. Particularly, we agree with the Examining Attorney’s contentions that the
evidence shows that “consumers are accustomed to seeing retail store services
featuring personal gifts producing and/or selling greeting cards and packaged
greeting cards under the same mark,” and that the involved goods and services “are
sold and provided through the same trade channels and used by the same classes of
consumers in the same fields of use.”12
Applicant argues that “Registrant voluntarily used carefully chosen limiting
language to describe the items sold in Registrant’s retail store,” and thus, its services
are “exceedingly narrow in scope.”13 Applicant further asserts that, by maintaining
the refusal, the Examining Attorney is granting the Registrant “rights that
encompass all goods sold by other retail stores that share some services … [and] cover
all items that could be classified as personal gifts, and potentially all items sold in
retail gift stores or retail stores generally.”14 Applicant believes this “overly broad
interpretation of the [services described in the registration] led to the erroneous
conclusion that Applicant’s Goods are related to the Registered Services.”15
We agree that a likelihood of confusion analysis must be based on how the goods
and services are identified in the application and cited registration. Stone Lion
Capital Partners, LP, 110 USPQ2d 1161. But this does not mean that in order for

12 12 TTABVUE 10.
13 13 TTABVUE 4.
14 Id.
15 Id.
Serial No. 87752038
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there to be a relationship between them, the retail store services described in the
registration must feature the goods identified in the application. Consumers are
unaware of the registration’s recitation of services limitation of Registrant’s “personal
gift” retail store services to the sale of artwork, jewelry, sculptures, and toys.
Consumers are also accustomed to retail gift stores featuring goods like those
Registrant sells and greeting cards. Even if a consumer is aware that Registrant’s
OUT OF THE BLUE GIFT COMPANY and design-branded services are limited to
the sale of artwork, jewelry, sculptures, and toys, that same consumer may encounter
Applicant’s OUT OF THE BLUE greeting cards and mistakenly believe that
Registrant has expanded its offerings to include greeting cards, as other retail gift
stores have done. Finally, we point out that the class of consumers for both
Applicant’s greeting cards and registrant’s retail gift store services would be the same
– namely, anyone from the general public who seeks to give a gift that is often
accompanied by a greeting card for special occasions, e.g., birthday, holiday,
anniversary, etc. And where, as here, the goods are complementary, that supports a
finding that they are related. See, e.g., In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (“Such complementary use has
long been recognized as a relevant consideration in determining a likelihood of
confusion.”) quoted in In re Davia, 110 USPQ2d 1810, 1815 (TTAB 2014).
Accordingly, the second and third DuPont factors strongly support the likelihood
of confusion refusal.
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C. Conclusion
We conclude that when Applicant’s OUT OF THE BLUE proposed mark is used
on greeting cards, it is likely to cause confusion amongst consumers with Registrant’s
OUT OF THE BLUE GIFT COMPANY and design mark, as used in connection with
retail gift store services featuring artwork, jewelry, sculptures, and toys. We make
this determination based on our findings that the marks are overall very similar, that
there is an established relationship between the goods and services because
consumers are accustomed to greeting cards being sold in retail gift stores that
feature other goods, and these goods and services are offered to the same class of
purchasers.
Decision: The refusal to register Applicant’s proposed mark under Section 2(d) is
affirmed.