IBrand Accessories LLC

Trademark Trial and Appeal Board

Jun 29, 2015

No. 86185362 (T.T.A.B. Jun. 29, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re IBrand Accessories LLC
_____

Serial No. 86185362
_____

Matthew H. Swyers of The Trademark Company,
for IBrand Accessories LLC.
Michael P. Keating, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Quinn, Zervas and Shaw,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
IBrand Accessories LLC (“Applicant”) seeks registration on the Principal
Register of the mark BULLETPROOF SCREEN PROTECTOR (in standard
characters) (SCREEN PROTECTOR disclaimed) for “display screen protectors for
providing shade and privacy specially adapted to electronic devices, namely,
laptops, cell phones, and personal digital assistants” in International Class 9.1

1 Application Serial No. 86185362, filed February 5, 2014 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intention to use the mark in
commerce.
Application Serial No. 85185362

2

The Trademark Examining Attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when
used for Applicant’s goods, so resembles the previously registered mark
BULLET-PROOF SHIELDS (in standard characters) for “protective sheet for
covering laptop computers, MP3 players, ipods, personal digital assistance [sic],
mobile phones and other electronics” in International Class 92 as to be likely to
cause confusion.3
When the Examining Attorney made the refusal final, Applicant appealed.
Applicant and the Examining Attorney filed briefs. We affirm the refusal.4
Applicant argues that the goods are different; more specifically, Applicant
asserts that its goods “consist of a drop-proof, shock proof clear film placed over the
screen of the named devices to dim the light emitted by the phone screen, thereby
prohibiting the vision of what is displayed on the screen from a side view,” and “also
provide shade from the sun.” (4 TTABVUE 10). Applicant contrasts its goods with
Registrant’s goods, which are “used with hard shell cases for [electronic devices].”
Id. As to the marks, Applicant argues that the Examining Attorney improperly
dissected the marks, and that any likelihood that consumers will be confused is

2 Registration No.3640795, issued June 16, 2009. In passing we note that the identification
impermissibly includes a registered trademark (Reg. No. 2835698 for IPOD), and that
“personal digital assistance” should be “personal digital assistants.”
3 We note that the cited registration recently passed its sixth anniversary. Office records do
not show the filing as yet of a Section 8 affidavit of continued use, but as indicated in
Section 8(a)(3) of the Trademark Act, 15 U.S.C. § 1058(a)(3), Registrant may file the
affidavit within a grace period of six months after the sixth anniversary date. See
Trademark Rule 2.160(a); TMEP § 1604.04 (2015). In any event, Applicant did not request
a suspension of the appeal. See TBMP § 1213 (2014).
4 Citations to the briefs in this opinion are to the TTABVUE docket entry number and the
electronic page number where the statement appears.
Application Serial No. 85185362

3

removed by the inclusion of the words “SCREEN PROTECTOR” in Applicant’s
mark that explicitly tells consumers what they are buying, whereas the word
“SHIELD” in Registrant’s mark “suggests a cover, protecting the hardware of the
phone or device.” (4 TTABVUE 11). Applicant asserts that Applicant’s goods are
sold via its website, www.ibrandaccessories.com, trade shows and social media,
whereas Registrant’s goods are sold on Registrant’s website www.handstands.com
and Amazon.com. (4 TTABVUE 11-12). Applicant also argues that its goods “are
geared toward people who are interested in phone accessories with a purpose other
than protecting the phone or device’s outer body, such as providing privacy and
shade to allow users to be able to read their display screen in the sun,” contrasted
with Registrant’s goods which target “people who are prone to dropping their device,
and want a form of protection to keep the device from cracking and breaking.” (4
TTABVUE 12). Applicant introduced the affidavit of Muhammad Khalid.
The Examining Attorney maintains that the marks are similar and that the
goods are identical. In support of the refusal, the Examining Attorney submitted
dictionary definitions, and copies of pages retrieved from the websites of Applicant
and Registrant, as well as those of third parties in the industry.
Our determination under Section 2(d) is based on an analysis of all of the facts
in evidence that are relevant to the factors bearing on the likelihood of confusion. In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
any likelihood of confusion analysis, two key considerations are the similarities
Application Serial No. 85185362

4

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 (CCPA 1976).
With respect to the first du Pont factor, we must compare the marks in their
entireties as to appearance, sound, connotation and commercial impression to
determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005), quoting In re E. I. du Pont de Nemours & Co., 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). The focus is
on the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC,
110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Although marks must be considered in their entireties, it is settled that one
feature of a mark may be more significant than another, and it is not improper to
give more weight to this dominant feature in determining the commercial
impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a
Application Serial No. 85185362

5

mark, provided the ultimate conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be unavoidable.”).
With respect to Applicant’s mark, the generic term “SCREEN PROTECTOR”
has been disclaimed apart from the mark. In view of the generic nature of this
disclaimed term, this portion of the mark plays no source-indicating function in this
mark. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,” is the
dominant portion of the mark THE DELTA CAFE). As to Registrant’s mark, the
term “SHIELDS” is, at the very least, highly suggestive.
Accordingly, the dominant portion of Applicant’s mark, BULLETPROOF, is
essentially identical to the dominant portion of Registrant’s mark, BULLET-
PROOF. The marks BULLETPROOF SCREEN PROTECTOR and BULLET-
PROOF SHIELDS are similar in appearance, sound, and meaning (suggesting that
the goods will protect electronic device screens from forceful impacts). Given these
similarities, the marks engender virtually identical overall commercial impressions.
The first du Pont factor weighs heavily in favor of a finding of likelihood of
confusion.
As to the second du Pont factor, in making our determination regarding the
relatedness of the goods, we must look to the goods as identified in the application
and the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014), quoting Octocom Sys., Inc.
v. Houston Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
Application Serial No. 85185362

6

1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Applicant’s
goods are identified as “display screen protectors for providing shade and privacy
specially adapted to electronic devices, namely, laptops, cell phones, and personal
digital assistants”; Registrant’s goods are “protective sheet for covering laptop
computers, MP3 players, ipods, personal digital assistance [sic], mobile phones and
other electronics.”
Because the goods identified in the cited registration have no limitations or
restrictions, it is presumed that as recited the goods encompass all goods of the type
identified. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901,
177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119
USPQ 139 (CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). Thus,
we must presume that Registrant’s goods encompass all types of protective sheets,
including those for providing shade and privacy. As such, the goods are legally
identical. Moreover, in point of fact, the respective websites of Applicant and
Registrant confirm that their goods are both in the nature of protective covers for
the screens of electronic devices.
Inasmuch as the goods identified in the application and the cited registration are
legally identical, we must presume that the channels of trade and classes of
purchasers are the same. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159
USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels
of trade and classes of purchasers are considered to be the same); American
Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101
Application Serial No. 85185362

7

USPQ2d 1022, 1028 (TTAB 2011). See also 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). The goods are likely to be
sold through the same trade channels (e.g., online retailers of accessories for
electronic devices) to the same classes of purchasers (e.g., ordinary consumers).
As indicated earlier, the record includes the affidavit of Mr. Khalid, an
individual who apparently is affiliated with Applicant, yet no formal title or job
responsibility is indicated. In any event, the affiant claims that his statements are
based “upon my own knowledge.” Mr. Khalid believes that there is no likelihood of
confusion between the marks. The affidavit is accompanied by pages from
Applicant’s and Registrant’s websites.
Mr. Khalid makes numerous statements relating to the goods, which include the
following: Applicant’s and Registrant’s goods are specifically different; and
Applicant’s goods are marketed through its website, trade shows and social media,
and are sold through its website and mobile retail stores, whereas Registrant’s
goods are sold through Registrant’s website and Amazon.com.
Mr. Khalid’s statements, and the exhibits attached to the affidavit, are largely
irrelevant to our analysis. An applicant may not restrict the scope of the goods
covered in its application or in the cited registration by argument or extrinsic
evidence. In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1165
(TTAB 2013), In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008), In re
Application Serial No. 85185362

8

Bercut-Vandervoort & Co., 229 USPQ2d 763, 764 (TTAB 1986). Thus, any specific
differences between the actual natures of the goods are irrelevant in our analysis.
As noted earlier, Applicant’s and Registrant’s goods comprise a sheet or film that
offers protection for the screens of electronic devices. Further, neither of the
identifications of goods includes any of the limitations in trade channels highlighted
by Mr. Khalid.
The legal identity of the goods, and the presumed identity in trade channels and
purchasers are factors that also weigh heavily in favor of a finding of likelihood of
confusion.
We conclude that purchasers familiar with Registrant’s “protective sheet for
covering laptop computers, MP3 players, ipods, personal digital assistance [sic],
mobile phones and other electronics” sold under the mark BULLET-PROOF
SHIELDS would be likely to mistakenly believe, upon encountering Applicant’s
mark BULLETPROOF SCREEN PROTECTOR for “display screen protectors for
providing shade and privacy specially adapted to electronic devices, namely,
laptops, cell phones, and personal digital assistants,” that the goods originate from
or are associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.