87093088 (T.T.A.B. Nov. 13, 2019)

Icon LM, LLC

Trademark Trial and Appeal BoardNov 13, 2019

87093088 (T.T.A.B. Nov. 13, 2019)

Mailed: November 13, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Icon LM, LLC _____ Application Serial No. 87093088 _____ Theodore R. Remaklus of Wood Herron & Evans LLP for Icon LM, LLC. Sarah E. Kunkleman, Trademark Examining Attorney, Law Office 105, Jennifer Williston, Managing Attorney. _____ Before Cataldo, Bergsman and Heasley, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Icon LM, LLC (Applicant) seeks registration on the Principal Register of the mark LM LUXURY MARKET WORLD’S BEST BRANDS and design, reproduced below, for “on-line retail store services featuring women's, men's and children's clothing, headwear and apparel accessories, bags, handbags, tote bags, luggage, footwear, jewelry, personal care and beauty products,” in Class 35.1 1 Application Serial No. 87093088 was filed on July 5, 2016, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in commerce. This Opinion Is Not a Precedent of the TTAB Serial No. 87093088 - 2 - The description of the mark reads as follows: The mark consists of the stylized letters “LM” above the words “LUXURY MARKET” all above the words “WORLD'S BEST BRANDS”, with a horizontal line on either side of this last phrase. The rectangle on which all of the wording and the horizontal lines appear is merely for shading and is not part of the mark. Color is not claimed as a feature of the mark. Applicant disclaims the exclusive right to use “Luxury Market” and “World’s Best Brands.” The Examining Attorney refused to register 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 LM LUX MARKET AUTHENTIC LUXURY GOODS and design, reproduced below, for “computerized online marketplace services featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; operating on-line marketplaces featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; on-line consignment services whereby goods are received on consignment in on-line retail stores featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; Serial No. 87093088 - 3 - providing a website for connecting sellers with buyers,” in Class 35, as to be likely to cause confusion.2 The description of the mark reads as follows: Color is not claimed as a feature of the mark. The mark consists of the letter “L” appearing within the center dip of the stylized letter “M”, altogether over a small horizontal line. Below the line is the stylized wording “LUXMARKET” centered over the wording “AUTHENTIC LUXURY GOODS”. Registrant disclaims the exclusive right to use “AUTHENTIC LUXURY GOODS.” Our determination under Section 2(d) is based on an analysis of all of the probative 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, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor that is relevant or 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); 2 Registration No. 5243793, registered July 18, 2017. Serial No. 87093088 - 4 - 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.”). “[E]ach case must be decided on its own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). I. The similarity or dissimilarity and nature of the services. Applicant is seeking to register its mark for “on-line retail store services featuring women's, men's and children's clothing, headwear and apparel accessories, bags, handbags, tote bags, luggage, footwear, jewelry, personal care and beauty products.” The description of services in the cited registration is “computerized online marketplace services featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; operating on-line marketplaces featuring luxury Serial No. 87093088 - 5 - goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; on-line consignment services whereby goods are received on consignment in on-line retail stores featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; providing a website for connecting sellers with buyers.” Applicant’s “on-line retail store services featuring … bags, handbags, tote bags, luggage … jewelry” are in part identical with Registrant’s “on-line consignment services whereby goods are received on consignment in on-line retail stores featuring luxury goods, namely, jewelry, watches …bags.” Applicant’s “on-line retail stores” encompasses Registrant’s “on-line consignment services … in on-line retail stores” and both Applicant’s services and Registrant’s services feature jewelry and bags. Where services are broadly identified in an application or registration, “we must presume that the services encompass all services of the type identified.” Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). Further, to prove that the services are related, the Examining Attorney submitted 12 third-party registrations with services of a type listed in both the application and registration at issue. Third-party registrations based on use in commerce that individually cover a number of different services may have probative value to the extent that they serve to suggest that the listed services are of a type that may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, Serial No. 87093088 - 6 - 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d mem. 864 F.2d 149 (Fed. Cir. 1988). The registrations, with relevant portions of the identifications, are listed below.3 Mark Reg. No. Pertinent Services FOR THE LOVE OF MUSIC 4419474 Providing a website featuring an on-line marketplace for exchanging goods and services with other users; On-line retail store services featuring clothing, jewelry, handbags, purses, shoes, artwork, musical equipment, hats and sunglasses BINIDUCKLING 5236509 Retail clothing stores; Providing an on-line marketplace for buyers and sellers of goods and services PICKYBUNNY 4341706 Online retail store services featuring new and used kids clothing; Providing a website featuring an online marketplace that allows users to buy, sell and swap clothing and clothing accessories BORGIFY.ME 4822809 On-line retail stores in the fields of computers, clothing, electronics, furniture, appliances, jewelry, vehicles and wearable digital devices for communication which accept virtual currency via smart electronic devices; Operating on-line marketplaces featuring the same BE A LEGEND IN ANY TIME AT THE ORIGINAL ANTIQUE BOUTIQUE 5022989 On-line retail store services in the field of clothing and accessories; 3 November 19, 2017 Office Action (TSDR 16-18 and 22-41); July 20, 2018 Office Action (TSDR 85-99). Citations to the examination record refer to the Trademark Office’s online Trademark Status and Document Retrieval system (TSDR) by page number in the downloadable .pdf versions of the documents. Serial No. 87093088 - 7 - Mark Reg. No. Pertinent Services Operating on-line marketplace featuring clothing and accessories TIBI 5180731 Online retail store services featuring a wide variety of products; Providing an online marketplace for buyers and sellers of goods and services RO•MEN•SA 5331115 On-line retail store services featuring general consumer merchandise; Providing an on-line marketplace for buyers and sellers of goods and services YOGGI’S CLOSET 3885732 On-line retails store services featuring pre- owned luxury handbags, wallets, briefcases, luggage, belts, shoes, metal and non-metal key chains, jewelry, watches and sunglasses; On-line consignment services whereby goods are received on consignment in on- online retail store services featuring the same goods LEFTOVER LUXURIES 3907332 Retail online consignment store services featuring home furnishings, clothing, jewelry and other luxury items TOYS FOR BOYS 4768088 Retail store services and online retail consignment stores featuring luxury items for adult consumers in the field of art, automobiles, jewelry, clothing, and toy models EKLOZET 4983067 Online consignment services and online retail consignment stores featuring luxury fashion clothing, apparel and other finished products made from fabrics and similar materials ANNA’S CONSIGNMENT CLOSET 5090168 Retail consignment stores and online retail consignment stores featuring luxury brands of clothing, jewelry, furniture and cosmetics In addition, the Examining Attorney submitted excepts from third-party websites showing that online retail stores services and online marketplaces connecting buyers Serial No. 87093088 - 8 - and sellers and online consignment services are interconnected (i.e., they are rendered together and offered to the same consumers).4 See, e.g., the Tradesy website (tradesy.com) advertising its online retail sales services and its online consignment services both which provide a website for connecting sellers with buyers.5 The excerpt from the Tradsy.com website, reproduced below, explains how Tradsy.com renders its services. 6 4 July 20, 2018 Office Action (TSDR 55-84 and 100-109). 5 Id. at TSDR 55-63. 6 Id. at 61. Serial No. 87093088 - 9 - Applicant, in its brief, did not contest that the services at issue are related.7 We find that the services are in part identical and otherwise closely related. II. Established, likely-to-continue channels of trade and classes of consumers. Because the services described in the application and the cited registration are in part identical and otherwise closely related, we presume that the channels of trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels of trade to same class of purchasers); 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); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018), aff’d mem. (No. 18-2236) (Fed. Cir. September 13, 2019) (“Because the services described in the application and the cited registration are identical, we presume that the channels of trade and classes of purchasers are the same.”); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). Moreover, the third-party websites noted in the previous section advertise their consignment services and online retail sales services to both buyers and sellers. For example, the Luxury Exchange website (luxuryexchange.com) advertises that people 7 Applicant’s Reply Brief, p. 1 (10 TTABVUE 2) (“Applicant has not argued that the services or channels of trade differ to any significant extent.”). Serial No. 87093088 - 10 - should “Shop With Us” and “Sell To Us.”8 See also the Tradesy website (tradesy.com) discussed above. As noted above, Applicant, in its brief, did not contest that the services at issue are offered in the same channels of trade to the same classes of consumers. We find that the Applicant and Registrant offer their services in the same channels of trade to the same classes of consumers. III. The similarity or dissimilarity of the marks. We now turn to the DuPont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. 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); accord Krim-Ko Corp. v. Coca-Cola Bottling 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.”) (citation omitted). In comparing the marks, we are mindful that where, as here, the services are closely related, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the services. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 8 July 20, 2018 Office Action (TSDR 100). Serial No. 87093088 - 11 - 1108 (TTAB 2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). “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.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs. v. Triumph Learning, 101 USPQ2d at 1721); see also Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In this appeal, the average customer is a consumer who buys and sells products online. As noted above, Applicant’s seeks to register the mark: The mark in the cited registration is: Serial No. 87093088 - 12 - The marks are similar because they share the letters LM, the terms “Luxury Market” or “Lux Market,” and a similar advertising tagline (i.e., “World’s Best Brands” or “Authentic Luxury Goods”). In Applicant’s mark, the letters LM mean “Luxury Market.” In the Registrant’s mark, the letters LM mean “Lux Market.” The term “Lux Market” market means “Luxury Market” as indicated by the advertising tagline “Authentic Luxury Goods.” Further, the term “Lux” is a shortened form of the word “Luxe” which is defined as “luxury; elegances; sumptuousness.”9 The marks have the same structure: the letters LM over the term “Luxury Market” or “Lux Market” over the advertising tagline “World’s Best Brands” or “Authentic Luxury Goods.” Accordingly, the marks look the same, sound the same, and have the same meaning and engender the same commercial impressions. On the other hand, Applicant argues that the marks are not similar. When considered in their entireties, in view of the weakness of the term/phrase “LUXURY MARKET” or “LUXMARKET”, and in view of the co-existing stylized “LM” marks and the very different stylization of the “LM” portion of Applicant's mark, Applicant’s mark and the cited … marks are readily distinct in overall appearance and 9 Dictionary.com based on THE RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed November 6, 2019. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). Serial No. 87093088 - 13 - commercial impression so that there is no likelihood of confusion.10 While Applicant argues that “[t]he suggestive phrase ‘LM LUXMARKET’ in [the cited registration] [is] weak when used in connection with a website that is for the sale of luxury goods,” there is no evidence in the record of that the letters LM have been used or registered for the sale of luxury products other than by Registrant.11 The only third-party marks of record incorporating the letters LM are registrations that the Examining Attorney cited as potential bars to registration: 1. Registration No. 3810370, reproduced below, for “online retail store services featuring hair care products and accessories, styling tools, vitamins, and skin care products and treatments; 2. Registration No. 3966102, reproduced below, for “retail store services and on- line retail store services featuring jewelry, watches, glass ware and gifts”; and 10 Applicant’s Brief, p. 5 (4 TTABVUE 9). 11 Applicant’s Brief, p. 10 (4 TTABVUE 14). Serial No. 87093088 - 14 - 3. Registration No. 4486925, reproduced below, for retail store services and online retail store services in the field of cosmetics and skin care products. First, none of these marks is as close to Applicant’s mark or Registrant’s mark as Applicant’s mark and Registrant’s mark are to each other. Second, unlike cases in which extensive evidence of third-party use and registration was found to be “powerful on its face” inasmuch as “a considerable number of third parties use [of] similar marks was shown,” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015), this record presents only three such registrations, well short of the volume of evidence found convincing in Juice Generation and Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). The crux of Applicant’s argument, however, is that the marks are so highly stylized that they are not similar.12 Applicant argues that the marks at issue are 12 Applicant’s Brief, pp. 10-19 (4 TTABVUE 14-23). Serial No. 87093088 - 15 - analogous to the marks in In re Electrolyte Labs., Inc., 929 F.2d 645, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) reproduced below: The Court held that “[t]he nature of stylized letter marks is that they partake of both visual and oral indicia, and both must be weighed in the context in which they occur.” The Court reversed the Board, finding that the Board erred by focusing on the K+ in both marks to the exclusion of the other elements of both marks. Id. Applicant also cited In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003) to support its contention that a stylized display can differentiate marks. Although we uphold the Board’s finding that the two marks are generally similar, principally because they both use the term “Blue Moon,” we note that similarity is not a binary factor but is a matter of degree. Because there are significant differences in the design of the two marks, the finding of similarity is a less important factor in establishing a likelihood of confusion than it would be if the two marks had been identical in design or nearly indistinguishable to a casual observer. Id. at 68 USPQ2d at 1062. In this appeal, though, we are not focusing our finding solely on the similarity of the marks’ wording. To the contrary, as noted above, it is the structure of the marks in their entireties—comprising the dominant stylized letters LM above the terms “Luxury Market” or “Lux Market” above the advertising taglines “World’s Best Brands” or “Authentic Luxury Goods”—that renders the marks more similar than Serial No. 87093088 - 16 - dissimilar. It is undeniable that marks have different stylizations. However, “[e]xact identity is not necessary to generate confusion as to source of similarly-marked [services].” Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012). The public does not scrutinize marks. See B.V.D. Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (“The purchasing public, we believe, does not indulge in such recognitional contortions but sees things as they are.”); In re Johnson Prods. Co., Inc., 220 USPQ 539, 540 (TTAB 1983) (“It is undeniable that if the mark is carefully examined, the two overlapping ‘S’’s can be discerned. What is more significant, however, is that this sort of studied analysis of the mark is unlikely to occur in the marketplace where these products are sold.”). Because the test is not a side-by-side comparison of the marks, but the similarity or dissimilarity of the commercial impressions engendered by the marks, the marks are sufficiently similar that the average customer, who retains a general recollection rather than a specific impression of the marks, will believe that the services emanate from the same source. The similarities of the marks outweigh the dissimilarities. Therefore, we find that the marks are similar in their entireties in terms of appearance, sound, connotation and commercial impression. IV. Conclusion Because the marks are similar, the services are in part identical and otherwise closely related and are offered in the same channels of trade to the same classes of Serial No. 87093088 - 17 - consumers, we find that Applicant’s mark for “on-line retail store services featuring women's, men's and children's clothing, headwear and apparel accessories, bags, handbags, tote bags, luggage, footwear, jewelry, personal care and beauty products” is likely to cause confusion with the registered mark for “computerized online marketplace services featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; operating on-line marketplaces featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; on-line consignment services whereby goods are received on consignment in on-line retail stores featuring luxury goods, namely, jewelry, watches, artwork, bags, collectibles, and memorabilia; providing a website for connecting sellers with buyers.” Decision: The refusal to register Applicant’s proposed mark LM LUXURY MARKET WORLD’S BEST BRANDS and design is affirmed.