No. 86241626 (T.T.A.B. Nov. 25, 2015)

Icon Shears

Trademark Trial and Appeal BoardNov 25, 2015

No. 86241626 (T.T.A.B. Nov. 25, 2015)

This Opinion is not a Precedent of the TTAB Mailed: November 25, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Icon Shears _____ Serial No. 86241626 _____ Matthew H. Swyers of The Trademark Company PLLC, for Icon Shears Matthew Schwab, Trademark Examining Attorney, 1 Law Office 120, Michael W. Baird, Managing Attorney. _____ Before Bucher, Kuczma and Lynch, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: Icon Shears (“Applicant”) seeks registration on the Principal Register of the mark: 1 On July 1, 2015, the application was reassigned to Trademark Examining Attorney Matthew Schwab who prepared and filed the brief. Serial No. 86241626 - 2 - for “On-line retail store services featuring scissors, shears and cosmetology products” in International Class 35.2 The Trademark Examining Attorney refused registration of Applicant’s mark: (1) under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the ICON mark (in standard characters) shown in U.S. Registration No. 4298299 for “electric hair clippers; electric hair trimmers” in International Class 8 owned by Wahl Clipper Corporation, and (2) a request for the disclaimer of the scissors design. After the Trademark Examining Attorney made the refusals final, Applicant appealed to this Board. We have considered the evidence and arguments presented by Applicant and the Examining Attorney, and affirm the refusals to register. I. Likelihood of Confusion Our determination under § 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Here, the key considerations are the similarities between the marks, the relatedness and nature of the goods and services, and the similarity of the customers and trade channels of the goods and services. See In re 2 Application Serial No. 86241626 was filed on April 3, 2014, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as December 2005. “The mark consists of the green word ICON followed [by] the black word SHEARS in cursive script above a black pair of scissors.” “The color(s) green, black is/are claimed as a feature of the mark.” No claim is made to the exclusive right to use “SHEARS” apart from the mark as shown. Serial No. 86241626 - 3 - Viterra Inc., 671 F. 3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999). A. Similarity or dissimilarity as to appearance/sound/connotation/ and commercial impression In any likelihood of confusion determination, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 101 USPQ2d at 1908; du Pont, 177 USPQ at 567. It is improper to dissect a mark when engaging in this analysis, including when a mark contains both words and a design, as shown in Applicant’s mark. In re Viterra, 101 USPQ2d at 1908; In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993). While the marks at issue are not identical, when comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and services offered under the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014). Given the presentation of the words “Icon” and “Shears,” with “Icon” shown in easily readable font and “Shears” shown in script design, Applicant’s mark conveys a similar commercial impression to Registrant’s ICON mark. In other words, consumers would recognize Applicant’s mark as consisting of the separate elements “Icon” and “Shears.” See In re Carlson, 91 USPQ2d 1198, 1200 (TTAB Serial No. 86241626 - 4 - 2009) (URBANHOUZING found to have same meaning as URBAN HOUSING); In re L.C. Licensing Inc., 49 USPQ2d 1379, 1381 (TTAB 1998) (whether unitary or two separate words, the commercial impression is the same). While Applicant’s mark features design elements in addition to words, the word portion generally may be the dominant and most significant feature of a mark because consumers will refer to Applicant’s services using the wording. See In re Viterra Inc., 101 USPQ2d at 1908, 1911; In re Davia, 110 USPQ2d at 1813. For this reason, greater weight is often given to the word portion of marks when determining whether marks are confusingly similar. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d at 1596). The first word in Applicant’s mark is identical to the cited mark. The wording that distinguishes Applicant’s mark from the cited mark, i.e., the disclaimed word “Shears,” is highly descriptive of, if not generic for, Applicant’s on-line retail store services, which include the sale of shears. See e.g., In re Lens.com, Inc., 83 USPQ2d 1444 (TTAB 2007) (LENS generic for “retail store services featuring contact eyewear products rendered via a global computer network”); In re Eddie Z’s Blinds & Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies, and other wall coverings, conducted via the Internet); In re Candy Bouquet International, Inc., 73 USPQ2d 1883 (TTAB 2004) (CANDY BOUQUET generic for “retail, mail, and computer order services in the field of gift packages of candy”); In re A La Vieille Russie, Inc., Serial No. 86241626 - 5 - 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART generic for dealership services in the field of fine art, antiques, furniture, and jewelry); In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) (LOG CABIN HOMES generic for retail outlets selling kits for building log homes); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) (LA LINGERIE generic for retail stores specializing in the sale of lingerie). More importantly, disclaimed matter that is descriptive of a party’s services is typically less significant or less dominant when comparing marks. Thus, the wording “Shears” in Applicant’s mark is less significant in terms of affecting the mark’s commercial impression, and renders the word “Icon” the dominant element of Applicant’s mark. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004); In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009). Applicant argues that the Examining Attorney violated the “anti-dissection rule” by focusing on the term “Icon” in the applied-for mark.3 It is true that marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (quoting In re 3 Applicant’s Appeal Brief p. 9 (4 TTABVUE 10). Serial No. 86241626 - 6 - National Data Corp., 224 USPQ at 751 (“[I]n 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.”)). Greater weight is often given to a dominant feature when determining whether marks are confusingly similar. The ultimate conclusion nonetheless must rest on consideration of the marks in total. See In re Viterra Inc., 101 USPQ2d at 1908; In re National Data Corp., 224 USPQ at 751. The Examining Attorney attaches more weight to the “Icon” portion of Applicant’s mark because the wording “Shears” describes a particular feature of Applicant’s services, namely, the sale of shears at retail, and was voluntarily disclaimed by Applicant. The same reasoning was applied in determining the lesser weight given to the scissors design in the overall commercial impression of the mark. As discussed in more detail below in connection with the disclaimer requirement, the accurate pictorial depiction of scissors is considered just as descriptive as the word for the object depicted. See, e.g., In re Underwater Connections, Inc., 221 USPQ 95, 95 (TTAB 1983) (pictorial representation of a compressed air gas tank held merely descriptive of travel-tour services involving underwater diving). The evidence shows that the wording “Shears” and the design of hairdresser’s shears or scissors in the applied-for mark merely describe some of the goods offered for sale in Applicant’s on-line retail store. Thus, the Examining Serial No. 86241626 - 7 - Attorney correctly placed greater emphasis on the ICON element when considering Applicant’s mark as a whole. Lastly, Applicant argues that the marks will not appear similar because “the use of the famous brand name ‘WAHL’ on [Registrant’s] products will eliminate the need for consumers to discern the origin of the product, as it specifically states who makes the clippers on the package.”4 However, speculation about the use of a house mark by Registrant is neither probative nor sufficient to weigh against a finding that the marks are similar. “Registrations with typed drawings are not limited to any particular rendition of the mark and, in particular, are not limited to the mark as it is used in commerce.” Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). In conclusion, Applicant’s mark incorporates the registered mark ICON, with the first word of Applicant’s mark being identical to the registered mark. The design elements and disclaimed descriptive wording in Applicant’s mark are not entitled to the same weight for the purposes of a likelihood of confusion analysis. Thus, the similarity of the marks when taken as a whole favors a finding of likelihood of confusion. B. Relatedness of the Goods and Services We turn next to the du Pont factor involving the similarity or dissimilarity of Applicant’s services, “on-line retail store services featuring scissors, shears and 4 Applicant’s Appeal Brief p. 9 (4 TTABVUE 10). Serial No. 86241626 - 8 - cosmetology products,” in relation to the goods in the cited registration, “electric hair clippers; electric hair trimmers.” We first note the following definitions for two terms utilized in Applicant’s identification of services. “Shear” (noun) which is defined as: a cutting implement similar or identical to a pair of scissors but typically larger−usually used in plural;5 and “cosmetology” which is defined as: the cosmetic treatment of the skin, hair and nails. “Cosmetic” is defined as: 1: of, relating to, or making for beauty especially of the complexion, 2: done or make for the sale of appearance.6 The evidence shows that scissors, shears, and electric hair clippers and trimmers have a common purpose, namely, the clipping, trimming, or cutting of hair.7 The evidence also shows examples of on-line retail store services featuring cosmetology products, scissors and shears, as well as electric hair clippers.8 Thus, Registrant’s 5 http://www.merriam-webster.com/dictionary/shears from © 2015 Merriam-Webster, Incorporated. It is well settled that the Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (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, 1378 (TTAB 2006). 6 http://www.merriam-webster.com/dictionary/cosmetology and http://www.merriam- webster.com/dictionary/cosmetic from © 2015 Merriam-Webster, Incorporated. 7 See evidence attached to February 9, 2015 Final Office Action at pp. 12-13 (“Hair Shears”) http://www.washiscissor.com/mm5/merchant.mvc?Screen=SHEARS 02/09/2015, pp. 14- 15 (“Hair Cutting Scissors” and “Wahl Detailer Double Wide Trimmer”) http://www. amazon.com/Best-Sellers-Beauty-Hair-Cutting-Shears/zgbs/beauty/3006300011 02/09/2015, pp. 17-18 (“Grooming Shears”) https://www.sharkfinshears.com/ 02/09/2015, p. 19-21 (“Trimmers: Hair Clippers”) http://www.remingtonproducts.com/mens.aspx#page- 1?category=Groomers&view=14 02/09/2015 and p. 22 (“Scissors”) http:/www.remington products.com/SearchResults.aspx?q=scissors 02/09/2015. 8 See evidence attached to the February 9, 2015 Final Office Action at pp. 14-15 Amazon, “Best Sellers in Shears” http://www. amazon.com/Best-Sellers-Beauty-Hair-Cutting- Shears/zgbs/beauty/3006300011 02/09/2015; pp. 19-22 Remington Products, “Men” http://www.remingtonproducts.com/mens.aspx#page-1?category=Groomers&view=14 Serial No. 86241626 - 9 - goods, electric hair clippers and electric hair trimmers, are included in or related to the products sold at Applicant’s on-line store, particularly scissors, shears and cosmetology products related to hair. There is no question that retail store services and the goods which may be sold in that store are related goods and services for the purpose of determining likelihood of confusion. See In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992); In re Best Products Co., Inc., 231 USPQ 988, 989 (TTAB 1988). The use of similar marks on or in connection with both products and retail store services has been held likely to cause confusion where the evidence shows that the retail store services feature the same type of products. See In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); In re Peebles, Inc., 23 USPQ2d 1795, 1796 (TTAB 1992) (holding the use of nearly identical marks for coats and for retail outlets featuring camping and mountain climbing equipment, including coats, likely to cause confusion, noting that “there is no question that store services and the goods which may be sold in that store are related goods and services for the purpose of determining likelihood of confusion”); In re U.S. Shoe Corp., 8 USPQ2d 1938, 1939 (TTAB 1988) (holding the use of nearly 02/09/2015; pp. 30-32 David Jones, “VS Sassoon;” pp. 34-35 Conair, Search Results: “Clippers and Hair Dryers” http://conair.com/search_result.php?q=clippers 02/09/2015; pp. 38-39, 44-46 Andis, “Barber” https://www.andis.com/barber/product-category.aspx 02/09/2015. Serial No. 86241626 - 10 - identical marks both for leather cowboy boots and for retail western-, outdoor-, and leisure-clothing-store services featuring boots was likely to cause confusion). Here, there is no question that Applicant’s on-line retail store services featuring scissors, shears, and cosmetology products encompass products to cut hair, such as Registrant’s electric hair clippers and electric hair trimmers. Moreover, the Internet evidence submitted by the Examining Attorney shows examples of the same source providing both Applicant’s services, i.e., on-line retail stores featuring scissors, shears, and cosmetology products, and Registrant’s goods, i.e., electric hair trimmers and clippers, sold under the same trademark.9 The evidence establishes that such entities provide the relevant goods and services and market them under the same mark. Therefore, Applicant’s services and Registrant’s goods are related for likelihood of confusion purposes. See, e.g., In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). Further, the application uses broad wording to describe its featured product lines, i.e., “cosmetology products,” and this wording is presumed to encompass all goods of the type described, including those in Registrant’s more narrow identification, i.e., electric hair trimmers and clippers. See In re Jump Designs, LLC, 9 See attachments to the February 9, 2015 Final Office Action at pp. 19-23 Remington® http://www.remingtonproducts.com/mens.aspx#page-1?category=Groomers&view=14 and http://www.remingtonproducts.com/SearchResults.aspx?q=scissors; pp. 38-39, 44-46 Andis® https://www.andis.com/barber/product-category.aspx and https://www.andis .com/barber/Barber-Comb0?product=Barber+Combo¤cy=USD. Serial No. 86241626 - 11 - 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)). Moreover, the evidence shows that electric hair clippers and trimmers are found in on-line stores having the same name as the marks on those goods. Thus, customers, upon encountering Applicant’s mark for on-line retail store services featuring grooming goods including hair cutting tools, are likely to believe that its services emanate from the same source as Registrant’s ICON hair clippers and trimmers and that such goods are available for purchase at Applicant’s on-line store.10 See In re Davey Prods. Pty Ltd., 92 USPQ2d at 1202-03 (accepting Internet evidence to show relatedness of goods in a likelihood of confusion determination). Additionally, Registrant’s goods are shown in the evidence to be found in on-line retail stores with scissors, shears and an array of cosmetology products.11 It has often been recognized that likelihood of confusion may arise where confusingly similar marks are used on goods, on the one hand, and in connection with sales of such goods, on the other. See In re Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1640 (TTAB 2006); see also J. THOMAS MCCARTHY, 4 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 24:25 (4th ed. September 2015) (where the services consist of retail sales services, likelihood of confusion is 10 See web evidence of goods similar to Registrant’s goods offered for sale by on-line retail stores under the same trademarks as those used on the goods, July 16, 2014 Office Action pp. 10-13. 11 See February 9, 2015 Final Office Action, p. 22 http://www.remingtonproducts.com/ SearchResults.aspx?q=scissors; p. 46 https://www.andis.com/product.aspx?ProductId=101 1&product=8%22+Thinning+Shears. Serial No. 86241626 - 12 - found when another mark is used on goods which are commonly sold through such a retail outlet). “[T]rademarks for goods find their principal use in connection with selling the goods” and accordingly marks for goods and marks for the service of selling such goods will have their impact on the purchasing public in the same marketplace. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988). The evidence is sufficient to persuade us that the goods and services are related. If customers were to encounter hair cutting products such as electric hair clippers and electric hair trimmers under a mark that is confusingly similar to the mark of an on-line retail store that sells scissors, shears and cosmetology products, they would likely believe that the product and the services come from the same source. Accordingly, we find that the du Pont factor of the similarity of the goods and services favors a finding of likelihood of confusion. C. Similarity of Trade Channels and Classes of Purchasers Lastly, we consider whether Applicant’s services and Registrant’s goods travel in the same trade channels to the same class of purchasers. Because there is no limitation as to trade channels or classes of purchasers in the description of goods and services in either the application or the cited registration, we must presume that Registrant’s electric hair clippers and electric hair trimmers and Applicant’s on-line retail store services featuring scissors, shears and cosmetology products are marketed in all normal trade channels for such goods/services and to all normal classes of purchasers for such goods/services. See In re Anderson, 101 USPQ2d 1912, Serial No. 86241626 - 13 - 1920 (TTAB 2012); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). See also In re Viterra Inc., 101 USPQ2d at 1908 (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). Applicant argues that its services and Registrant’s goods are marketed to different consumers, and therefore confusion is unlikely.12 Aside from the fact that there is no evidence supporting different consumers for Applicant’s services and Registrant’s products, given the relationship between on-line retail stores featuring scissors, shears and cosmetology products, and electric hair clippers and trimmers, discussed above, at least some of Applicant’s customers are part of the general consuming public for Registrant’s goods. To the extent that Applicant’s services and Registrant’s goods are offered to the general consuming public, the channels of trade and classes of purchasers overlap. Thus, the goods and services of the kind with which the parties use their marks are found together in the same channels of trade and provided to the same consumers. This overlap weighs in favor of a finding of likelihood of confusion, under the third and fourth du Pont factors. In re Wilson, 57 USPQ2d 1863, 1866 (TTAB 2001). Even if we were to accept Applicant’s unsupported assertion that its target audience consists of professional cosmetologists and hair stylists, the fact that purchasers are sophisticated or knowledgeable in a particular field does not 12 Applicant’s Appeal Brief p. 10 (4 TTABVUE 11). Serial No. 86241626 - 14 - necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. See, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1163-64; Top Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). II. Disclaimer The second issue is whether the design element of a pair of scissors is descriptive of Applicant’s services and should be disclaimed. The Examining Attorney contends Applicant must disclaim the scissors design because it merely describes a feature of Applicant’s services, i.e., that Applicant’s retail store services include the sale of scissors and shears, and thus the design is an unregistrable component of the mark.13 Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a) reads, in relevant part, as follows: The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. A disclaimer is a statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark in a trademark application or registration. “The effect of a disclaimer is to disavow any exclusive right to the use of a specified word, phrase, or design outside of its use within a composite mark.” In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662, 665 (CCPA 1979); see also Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ 486, 13 Applicant did not respond to this requirement either in the Response to the Office Action dated January 16, 2015, or in its Appeal Brief. Serial No. 86241626 - 15 - 486-87 (Comm’r Pats. 1954) (“As used in trade mark registrations, a disclaimer of a component of a composite mark amounts merely to a statement that, in so far as that particular registration is concerned, no rights are being asserted in the disclaimed component standing alone, but rights are asserted in the composite; and the particular registration represents only such rights as flow from the use of the composite mark.”). The design description refers to the design element as “a pair of scissors.” The evidence shows that the term “shears” is used interchangeably with the term “scissors” in the field of cosmetology.14 Thus, whether the design is referred to as “scissors” or “shears,” it merely describes the types of goods that Applicant offers through its on-line retail store services. A design and the word(s) which describe the design are legal equivalents; therefore, the design must be disclaimed pursuant to the same rules applicable to the merely descriptive wording “Shears.” In re The Singer Manufacturing Co., 255 F.2d 939, 118 USPQ 310, 311-12 (CCPA 1958) (“It is, of course, true that a design consisting merely or essentially of a pictorial representation of the goods on which it is used is descriptive, and is not a valid trademark.”) (citing In re Pierce Arrow Motor Car Co., 55 F.2d 434, 12 USPQ 315 (CCPA 1932)); In re Eight Ball, Inc., 217 USPQ 1183, 1184 (TTAB 1983) (holding 14 See evidence attached to the February 9, 2015 Office Action at p. 13 washiscissor.com (Washi Scissor Company: Shears for the Creative Professional, product category Hair Shears: Accessories Scissor Bracelet, Razors & more; Click Here To Receive A Free Washi Razor and $10 Off With Scissor Purchase); pp. 14-15 amazon.com (“Bestsellers In Shears” 5. Hair Cutting Scissors; 17. SE Scissors). Serial No. 86241626 - 16 - the mark comprising a pictorial representation of a cue stick and eight ball to be merely descriptive of applicant’s billiard parlor services and thus not registrable). Failure to comply with a requirement for a disclaimer is a basis on which to refuse registration. Because Applicant did not provide the required disclaimer of the merely descriptive scissor design in its mark, the refusal to register the entire mark is appropriate. See In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395, 1399-1400 (Fed. Cir. 2006); In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987). III. Conclusion In view of the foregoing, because the marks are similar, and the goods and services are related and travel in the same trade channels to some of the same customers, there is a likelihood of confusion between Applicant’s mark and the Registrant’s cited ICON mark. Additionally, the requirement for a disclaimer of the scissors design in Applicant’s mark was rightfully raised and maintained. Decision: The refusal to register Applicant’s mark based on a likelihood of confusion under § 2(d) of the Trademark Act is affirmed. Also, the refusal to register based on the requirement for a disclaimer of the scissors design is affirmed.