Hy-Vee, Inc.

Trademark Trial and Appeal Board

Mar 25, 2015

No. 86105555 (T.T.A.B. Mar. 25, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hy-Vee, Inc.
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Serial No. 86105555
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Timothy J. Zarley of Zarley Law Firm PLC,
for Hy-Vee, Inc.
Lyndsey Kuykendall, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Bucher, Taylor and Gorowitz,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Hy-Vee, Inc. (“Applicant”) seeks registration on the Principal Register of the
stylized mark

(the wording Digital Coupons disclaimed) for, as amended:
consumer coupons downloaded from a global computer
network, namely, digital coupons with barcodes which can
be scanned onto a [sic] stored value cards; downloadable
Serial No. 86105555
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mobile application for users to review products and
services and to award points whereby mobile application
users are eligible to exchange points earned for
promotional items consisting of coupons, rebates,
discounts or special offerings on goods and/or services in
Class 9; and
an interactive web site featuring technology for users to
review products and services and to award points
whereby web site users are eligible to exchange points
earned for promotional items consisting of coupons,
rebates, discounts or special offerings on goods and/or
services in Class 42.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Trademark Action Section 2(d), 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark as used on or in connection with the identified goods and services
is likely to cause confusion under Trademark Act Section 2(d), with the mark in
Registration No. 3914513,

(the wording Digital Coupons disclaimed), for:
An interactive web site for users to review and rate
internet content, people, companies, products and/or
services utilizing a software application to award points
whereby web site users are eligible to exchange points
earned for promotional items consisting of coupons,
rebates, discounts or special offerings on goods and/or

1 Application Serial No. 86105555 was filed on October 30, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act as to both classes of goods and services. The application includes the
following description: “The mark consists of the words Digital Coupons in a stylized font.
Digital appears on the first line and Coupons appear on the next line. The first occurrence
of the "i" in digital and the "u" in coupons are represented by an artistic impression of a
computer mouse connecting cord.” Color is not claimed as a feature of the mark.
Serial No. 86105555
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service provided by web site sponsors; Promoting the sale
of goods and services of others through electronic
couponing, promotions and discounts in Class 35.2
After the Examining Attorney made the refusal final, Applicant appealed to this
Board.
We reverse.
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods. 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.”).
We first consider the similarity or dissimilarity of the goods and services. It is
settled that the question of likelihood of confusion must be determined based on an
analysis of the goods and services recited in Applicant’s application vis-à-vis the
services recited in the cited registration and we cannot read limitations into those
goods. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110

2 Registered February 1, 2011, and claiming May 1, 2010 as the date of first use of the
mark and May 28, 2010 as the date of first use of the mark in commerce. The registration
includes the following description: “The mark consists of the capital letters "DQ" with the
words "DIGITAL QPONS" centered below.”
Serial No. 86105555
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USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Press Inc., 281 F.3d 1261, 62
USPQ 2d 1001 (Fed. Cir 2002); Octocom Systems Inc. v. Houston Computer Services
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). If the application and
registration describe the goods and services broadly, and there is no limitation as to
the nature, type, channels of trade or class of purchasers, it is presumed that the
registration encompasses all goods of the type described, and that they move in all
channels of trade normal for these goods, and that they are available to all classes
of purchasers for the described goods. See In re Linkvest S.A., 24 USPQ2d 1716
(TTAB 1992).
With these principles in mind, we compare Applicant’s “consumer coupons
downloaded from a global computer network, namely, digital coupons with barcodes
which can be scanned onto a stored value cards; downloadable mobile application
for users to review products and services and to award points whereby mobile
application users are eligible to exchange points earned for promotional items
consisting of coupons, rebates, discounts or special offerings on goods and/or
services” and “interactive web site featuring technology for users to review products
and services and to award points whereby web site users are eligible to exchange
points earned for promotional items consisting of coupons, rebates, discounts or
special offerings on goods and/or services” with Registrant’s “interactive web site for
users to review and rate internet content, people, companies, products and/or
services utilizing a software application to award points whereby web site users are
eligible to exchange points earned for promotional items consisting of coupons,
Serial No. 86105555
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rebates, discounts or special offerings on goods and/or service provided by web site
sponsors; Promoting the sale of goods and services of others through electronic
couponing, promotions and discounts.” Although the language is not exact, both
Applicant’s goods and services and Registrant’s services, as identified in the
respective identifications, are essentially the same and may be used
interchangeably by the same people to promote the goods and services of others,
because both Applicant and Registrant use website technology to review and
evaluate products and services and both websites can be used to generate coupons
based on an awards program. We thus find them to be legally identical. To the
extent that Applicant also provides its services by way of a mobile application, we
note that the Examining Attorney has made of record web pages from various
companies providing the same goods and/or services by means of both the content
provides’ websites (e.g., www.cnn.com, www.coupons.com and www.ibotta.com) as
well as through mobile applications available through Apple’s iTunes store. While
we cannot say that these examples evidence the behavior of a “majority” of
companies as the Examining Attorney would have us believe, they nonetheless
show the provision of the same services by a single entity via both a website and a
mobile application. We thus find Applicant’s mobile application related to the
services provided by Registrant via the Internet.
Further, we must presume with respect to the legally identical services that they
will be offered in the same channels of trade and will be purchased by the same
classes of purchasers, i.e., ordinary consumers, and that the related services will be
Serial No. 86105555
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offered in some of the same channels of trade, and will be bought by some of the
same purchasers. See 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 Yawata Iron & Steel Co., 403 F.2d 752,
159 USPQ 721, 723 (CCPA 1968); Edom Laboratories Inc. v. Lichter, 102 USPQ2d
1546, 1550 (TTAB 2012); American Lebanese Syrian Associated Charities Inc. v.
Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
We find unpersuasive Applicant’s argument that its services are unrelated to
those of Registrant because its mark covers services that are “directed at both a
website and mobile application” and are limited to the review and rating of products
and/or services, while the Registrant’s services are “directed at a website for
reviewing and rating any number of things a sponsor may want evaluated.” Simply
because Registrant’s services are more comprehensive in that they are not limited
by subject matter or, similarly, because Applicant’s services are additionally
directed to mobile applications, does not obviate the fact that, as noted above, both
Applicant’s and Registrant’s services perform overlapping functions, namely, the
promotion of goods and services of others via the Internet by way of offering coupons
and discounts in exchange for product and/or service reviews.
Accordingly, we find that the du Pont factors of the similarity of the goods and
services, and the similarity of the channels of trade, favor a finding of likelihood of
confusion.
Serial No. 86105555
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Despite this finding, however, we find that confusion is not likely because of the

fundamental differences between
Applicant’s mark (shown at left)
and the cited mark (shown at right). In comparing the marks, we recognize that test
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.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1721 (Fed. Cir. 2012) (citation omitted). While we must consider the marks in their
entireties, it is entirely appropriate to accord greater importance to the more
distinctive elements in the marks. See In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). For instance, as our principal reviewing court has
observed, “[t]hat a particular feature is descriptive or generic with respect to the
involved goods or services is one commonly accepted rationale for giving less weight
to a portion of the mark.” See In re National Data Corp., 224 USPQ at 751.
Here, the obvious similarity between the two marks is that they share the term
DIGITAL COUPONS or the phonetic equivalent DIGITAL QPONS. However,
DIGITAL COUPONS (QPONS) has descriptive, if not generic, significance with
respect to the goods and services in both the application and cited registration.
Given that significance, it is more likely that consumers will equate the term with
the respectively identified goods and services than with the source of those goods
and services. With particular regard to the cited registered mark, the stylized
Serial No. 86105555
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letters DQ play a dominant role because they appear significantly larger and
prominently above the smaller font-sized and descriptive element DIGITAL
QPONS. Because DQ visually dominates Registrant’s mark, it is the part of the
mark that will most likely be impressed upon the minds of consumers. The
Examining Attorney’s unsupported statement that the letters comprise a “stylized
acronym” and “would be read in conjunction with the wording that is displayed
beneath it” is unavailing. We also find the “mouse” design element (which replaces
the first letter “I” and the letter “U” in Applicant’s mark) is dissimilar enough from
Registrant’s mark to distinguish Applicant’s goods and services Registrant’s.
Given these prominent visual distinctions, we find the respective marks create
substantially different commercial impressions.
In making this finding, we are mindful of the Examining Attorney’s argument
that the words DIGITAL COUPONS are the dominant features in Applicant’s mark
because the literal portion of a word and design mark generally makes the greatest
impact on a prospective customer, and her further argument that, because of the
similarity of the words DIGITAL COUPONS and, its phonetic equivalent DIGITAL
QPONS, the marks are confusingly similar. While it is often true that the words in
a composite word and design mark are considered to be dominant, that is not
always the case. The Board addressed a very similar situation in In re Covalinski,
113 USPQ2d 1166, 1168 (TTAB 2014), and noted:
In Viterra, the Federal Circuit acknowledged this general
rule while affirming a Board decision that found the
dominant portion of the registered mark was
Serial No. 86105555
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the literal portion (X-SEED) rather than the stylized
letter “X” alone, see 101 USPQ2d at 1911; but it also
found no inconsistency between the Board’s Viterra
decision and its earlier decision in In re White Rock
Distilleries, Inc., 92 USPQ2d 1282, 1284 (TTAB 2009),
wherein the Board found no likelihood of confusion
between applicant’s standard character mark VOLTA for
caffeine-infused vodka and the cited mark (shown below)
for wines, due to the prominent design in the registered
mark:
.
We also acknowledge that “when marks would appear on virtually identical
goods or services, the degree of similarity necessary to support a conclusion of likely
confusion declines.” In re Covalinski, 113 USPQ2d at 1169; In re Might Leaf Tea,
601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (internal citations omitted).
However, we find that given the highly descriptive or generic meaning of the term
DIGITAL COUPONS (QPONS), Applicant’s mark is so different from the cited
registered mark than even when used in connection with in-part identical services,
there is no likelihood of confusion.
In conclusion, we find the first du Pont factor, the differences between the
marks, outweighs the other factors. See Champagne Louis Roederer S.A. v. Delicato
Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460-61 (Fed. Cir. 1998) (Federal
Circuit affirmed Board finding of no likelihood of confusion between mark
CRYSTAL CREEK for wine and marks CRISTAL for wine and CRISTAL
CHAMPAGNE for champagne, where Board relied solely on dissimilarity of marks);
Serial No. 86105555
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Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed.
Cir. 1991) (“We know of no reason why, in a particular case, a single du Pont factor
may not be dispositive”).
Decision: The refusal to register Applicant’s mark is reversed.