Iawaken

Trademark Trial and Appeal Board

Mar 9, 2018

No. 87975073 (T.T.A.B. Mar. 9, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: March 9, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re IAWAKEN
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Serial No. 87975073

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Brooke A. Johnson of Kampbell and Johnson PLLC,
for IAWAKEN.
Tasneem Hussain, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
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Before Kuhlke, Bergsman and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
IAWAKEN (“Applicant”) seeks registration on the Principal Register of the mark
iAwaken & design for “Baseball caps; Beanies; Pants; T-shirts.”1 The mark, which is
set forth below, is described as consisting of an eye, with eyelashes on top and bottom,
floating inside the eye are 8 stars and in the iris and pupil area is the sun, earth and

1 Application Serial No. 87975073 was filed on May 16, 2016, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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moon all inside of one another. Under the eye is the word "iAwaken" written and
under that is a lightning bolt with 3 points on the right side of it.
.
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered mark IWAKE in standard characters
for “clothing, namely, shirts, t-shirts, tank tops, button down shirts, blouses, tops,
sweaters, jackets, pants, sweatpants, shorts, dresses, yoga pants, beachwear;
footwear, namely, shoes; headgear, namely, hats, caps and beanies,” in International
Class 252 that as used in connection with Applicant's identified goods, it is likely to
cause confusion or mistake or to deceive.
When the refusal was made final, Applicant appealed. We affirm the refusal to
register Applicant’s mark.
I. Likelihood of confusion.
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

2 Registration No. 4890582, issued January 19, 2016.
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also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In considering the evidence of
record on these factors, we keep in mind that “[t]he fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” See Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re
Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
A. Similarities or dissimilarities of the goods and channels of trade.
We start our analysis with the third and fourth du Pont factors, the similarities
or dissimilarities of the goods and the channels of trade. We must make our
determinations under these factors based on the goods as they are identified in the
registration and application. Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014). See also Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990).
The goods in the cited registration include “T-shirts, pants, caps and beanies,”
which are identical to all of Applicant’s goods, “baseball caps, beanies, pants and T-
shirts.”3 The goods are in part identical.

3 We take judicial notice of the definition of “baseball cap” from Merriam-Webster Online
Dictionary. “Baseball cap” is defined as “a cap of the kind worn by baseball players that has
rounded crown and a long visor. “Baseball Cap.” Merriam-Webster.com.
https://www.merriam-webster.com/dictionary/ baseball cap. Since baseball caps are a type of
cap, the term “caps” in the cited registration encompasses “baseball cap.”
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“[I]t is well established that, absent restrictions in the application and
registration, [identical] goods are presumed to travel in the same channels of trade
to the same class of purchasers.” In re Viterra Inc., 671 F3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002). Therefore, Applicant’s goods are
presumed to be sold in the same channels of trade and to the same customers.
Accordingly, the second and third du Pont factors strongly favor a finding of
likelihood of confusion.
B. Similarity or dissimilarity of the marks.
When marks appear on virtually identical goods, the degree of similarity
necessary to support a conclusion of likely confusion declines. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).

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), See also, In re
Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014).

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Keeping this in mind, we look at the first du Pont factor, the similarity or
dissimilarity of Applicant’s mark and the cited mark IWAKE
in standard characters. We determine the similarity of marks by comparing them “in
their entireties as to appearance, sound, connotation and commercial impression.”
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73
USPQ2d at 1691, quoting du Pont, 177 USPQ at 567. “The proper 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). Moreover, the emphasis 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). The average
purchaser of clothing is a general consumer.
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
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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).
In this case, Applicant’s mark is a composite mark consisting of a verbal or literal
portion and a design. When evaluating a composite mark containing both words and
designs, the verbal portion of the mark is the one most likely to indicate the origin of
the goods to which it is affixed because it is the portion of the mark that consumers
would use to refer to or request the goods. In re Viterra Inc., 101 USPQ2d at 1908 and
1911 (Likelihood of confusion found between XCEED and for
agricultural seed.)
There is only a two letter difference between the verbal portion of Applicant’s
mark, IAWAKEN and the cited mark IWAKE. Thus, the verbal portions of the marks
are similar in both appearance and sound. Moreover, the verbal portions of the marks
are very similar, if not identical.4 These similarities create a similar commercial
impression.
Thus, we find that the similarities in the marks outweigh any dissimilarities and
that the first du Pont factor favors a finding of likelihood of confusion.

4 We take judicial notice of the definitions of “wake” and “awaken” from Merriam-Webster
Online Dictionary. The verb, “Wake” is defined as: “to rouse from or as if from sleep:
AWAKE – often used with up.” "Awake." Merriam-Webster.com. https://www.merriam-
webster.com/dictionary/awake and the verb, “Awaken” is defined as “to stop sleeping: to
wake up.” “Awaken.” Merriam-Webster.com. https://www.merriam-
webster.com/dictionary/awaken.

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II. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Because we have
found that the marks at issue are similar; that Applicant’s identified goods are in part
identical to goods in the cited registration goods; and that we must presume they
would move in the same trade channels and are offered to the same class of
purchasers, we conclude that Applicant’s mark IAWAKEN and design for “Baseball
caps; Beanies; Pants; T-shirts” is likely to cause confusion with the registered mark
IWAKE for “clothing, namely, shirts, t-shirts, tank tops, button down shirts, blouses,
tops, sweaters, jackets, pants, sweatpants, shorts, dresses, yoga pants, beachwear;
footwear, namely, shoes; headgear, namely, hats, caps and beanies.”
Decision: The refusal to register Applicant’s mark iAwaken & design, as set
forth below
,
is affirmed.