79286269 (T.T.A.B. Sep. 10, 2021)

"Interpipe Ukraine" Limited Liabilty Company

Trademark Trial and Appeal BoardSep 10, 2021

79286269 (T.T.A.B. Sep. 10, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: September 10, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re “Interpipe Ukraine” LLC _____ Serial No. 79286269 _____ Alexander Lazouski of Lazouski IP LLC for “Interpipe Ukraine” LLC. Eliana Torres, Trademark Examining Attorney, Law Office 110, Chris A. F. Pedersen, Managing Attorney. _____ Before Dunn, English, and Hudis, Administrative Trademark Judges. Opinion by Dunn, Administrative Trademark Judge: Applicant, “Interpipe Ukraine” LLC seeks registration on the Principal Register of the mark for “water-pipes of metal; junctions of metal for pipes; steel pipes; pipe muffs of metal; pipework of metal” in International Class 6.1 The 1 Application Serial No. 79286269, filed March 10, 2020, is a request for an extension of protection based on an international registration under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141(a). References to the application are to the downloadable .pdf version of documents available from the TSDR (Trademark Status and Document Retrieval) database. The TTABVUE Serial No. 79286269 - 2 - application states “The mark consists of the wording ‘INTERPIPE’ with the capital letters and a graphic design on the top composed of an image of fragments of several circles that collide with each other in a rectangle.” and “The color(s) yellow, gray and white is/are claimed as a feature of the mark.” 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, when used in connection with the identified goods, so resembles the registered marks shown below as to be likely to cause confusion, mistake or deception. Registration No. 4930093 issued April 5, 2016 Registration No. 4930094 issued April 5, 2016 The mark consists of a blue letter “I” bisecting a blue circle to the left of the black stylized wording “ITP INTERPIPE”. The color(s) black and blue is/are claimed as a feature of the mark. The mark consists of the words “ITP INTERPIPE” in stylized form. The cited registrations are owned by the same entity and registered on the Principal Register for the same goods, namely “transportable metal constructions; metal pipes; metal pipes for the transport of hydrocarbons; heated double-walled metal pipes for citations refer to the Board’s electronic docket, with the first number referring to the docket entry and the second number, if applicable, referring to the page within the entry. Serial No. 79286269 - 3 - the transport of hydrocarbons; electrically heated double-walled pipes for the transport of hydrocarbons,” in International Class 6.2 After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. Applicant and the Examining Attorney filed briefs. We affirm the refusal to register. I. Likelihood of Confusion When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co. (DuPont), 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relatedness of the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). A. Relationship between the Goods and Channels of Trade and Classes of Purchasers With regard to the relationship between Applicant’s goods and the goods in the cited registrations, their channels of trade and classes of purchasers, we must make our determination under these factors based on the goods as they are identified in the 2 Both cited registrations also include services in International Classes 35 and 42, but those services were not the basis for the refusal. Serial No. 79286269 - 4 - application and cited registrations. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017). In assessing the similarity or dissimilarity and nature of the goods, the Board “considers whether ‘the consuming public may perceive [the respective goods of the parties] as related enough to cause confusion about the[eir] source or origin ….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)). As stated, Applicant seeks registration, inter alia, for “pipework of metal,” and “metal pipes” are one of the items listed in the cited registrations. Because pipework is synonymous with pipe,3 the goods are in part identical. No more is necessary to support a finding of similarity that supports a likelihood of confusion. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a single good from among several may sustain a finding of likelihood of confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods or services in the application). 3 pipework noun 1: PIPE Merriam-Webster.com Dictionary, https://www.merriam-webster.com/dictionary/pipework. Accessed 9 Sep. 2021. 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). Serial No. 79286269 - 5 - Where, as here, the goods of the application at issue and the cited registration are, in part, identical, we must presume that the channels of trade and classes of purchasers for these goods are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Information Builders Inc., 2020 USPQ2d 10444, *3 (TTAB 2020). Applicant does not contest the identity in part of the goods, or contend that they travel in different channels of trade or to different classes of purchasers. We find the DuPont factors regarding the goods, channels of trade and classes of purchasers weigh in favor of finding a likelihood of confusion. B. Similarity or Dissimilarity of the Marks We consider Applicant’s mark and the registered marks and and compare them “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). Serial No. 79286269 - 6 - The marks “must be considered … in light of the fallibility of memory.” St. Helena Hosp., 113 USPQ2d at 1085 (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average consumer - here, a purchaser of metal pipes and fittings - who retains a general rather than specific impression of the marks. 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). Moreover, “[w]hen the goods are identical, the appearance of a mark of similar sound, appearance, or connotation is more likely to cause confusion than if the goods are significantly different.” See Bridgestone Ams. Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012). See Century 21 Real Estate v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.1992) (“When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.”). In assessing the scope of protection to be accorded the registered marks and we find that the literal term INTERPIPE is the dominant part of both marks in creating its overall commercial impression. In a stylized mark, or a mark comprising word and design elements, the verbal portion likely will be the dominant portion. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal portion of a word and design mark likely will be the dominant portion … given that Serial No. 79286269 - 7 - the literal component of brand names likely will appear alone when used in text and will be spoken when requested by consumers.”); Bos. Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, (TTAB 2007) (“It has frequently been stated that it is the word portion of marks, rather than the particular display of the words, that is likely to have a greater impact on purchasers and be remembered by them.”). The term INTERPIPE is a coined term with no meaning, and is therefore a very distinctive component of the registered marks. See In re Ginc UK Ltd., 90 USPQ2d 1472, 1479 (TTAB 2007) (“the completely unique and arbitrary, if not coined, nature of ZOG in relation to clothing not only entitles the registered mark to a broad scope of protection, but significantly increases the likelihood that the marks, when used in connection with the identical goods would cause confusion.”). We also find that the additional elements in the registered marks serve to emphasize the term INTERPIPE. In both, the prefatory letters ITP are repeated in a bold, more prominent font when incorporated in the term INTERPIPE. Based on this display, we find that the prefatory letters ITP do not make a separate commercial impression from the term INTERPIPE. Instead we find that the display may be perceived as showing that ITP is a shorthand reference to INTERPIPE. Similarly, we do not find the stylized letter I and design which appears in cited Registration No. 4930093 creates a strong impression on its own. Because it is a stylized version of the first letter of the term INTERPIPE which it precedes, the stylized letter I emphasizes or reinforces the term INTERPIPE in cited Registration No. 4930093. See UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1887 Serial No. 79286269 - 8 - (TTAB 2011) (“The ‘M’ in the first design mark above merely reinforces the first letter in MOTOWN, and the font and square border are insignificant.”); In re Continental Graphics Corp., 52 USPQ2d 1374, 1376 (TTAB 1999) (“Indeed, the dominant role of the word CONTINENTAL in the overall commercial impression created by the registered mark is reinforced, rather than negated, by the inclusion in the mark of the globe design depicting stylized continents and the inclusion of the large letter ‘C,’ which is the first letter of the word CONTINENTAL.”). In sum, we find the coined term INTERPIPE, emphasized by the letters ITP and the letter “I” design, forms the dominant part of both registered marks. The obvious point in comparing Applicant’s mark to Registrant’s marks is that they share the identical literal term INTERPIPE. In addition to forming the dominant part of both registered marks, the coined term INTERPIPE is the only wording in Applicant’s mark, and is therefore also dominant. While the stylization of INTERPIPE in Applicant’s mark does not include the bolded letters ITP, the stylization used by both Applicant and the registrant is much the same, displaying INTERPIPE in all capital letters in a plain block font. Applicant disagrees that the literal term INTERPIPE forms the dominant part of its mark, instead contending that its mark is dominated by the distinctive design element.4 Applicant points out that INTERPIPE is displayed below the design 4 Applicant’s Brief, 4 TTABVUE 7. Serial No. 79286269 - 9 - element, making the design the first part of the mark encountered, and contends that the first part of a mark generally is the part first impressed upon the prospective consumer.5 We agree with the general principle, but note that in each of the cases cited by Applicant, the “first part” of the mark was a literal term, and not a design. See Palm Bay Imps., 73 USPQ2d at 1692 (“To be sure, CLICQUOT is an important term in the mark [VEUVE CLICQUOT], but VEUVE nevertheless remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label.”); Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1375 (TTAB 2006) (“In view of the descriptive nature of the terms RIGS and RODS, and because RAD is the first term in each mark, it is the term RAD which dominates the commercial impression of each mark and is entitled to greater weight in our comparison of the marks.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“Although there are differences in appearance between the marks [KID WIPES and KID STUFF], there are also similarities between them in that both start with the term ‘KID’ (a matter of some importance since it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered) and have the same number of letters and syllables.”). We do not dismiss the visual impact of the large yellow square in Applicant’s mark, described as featuring “fragments of several circles that collide with each other” which appears over the term INTERPIPE in Applicant’s mark. We agree that the registered marks visually differ from Applicant’s mark. However, the test is not 5 Id. at 9. Serial No. 79286269 - 10 - whether Applicant’s mark can be distinguished from the registered marks but whether they are so similar that confusion is likely. As noted, the design element of a mark is not involved when a customer calls for the goods by voice or in writing. In re Viterra Inc., 101 USPQ2d at 1911 (The verbal portion of a word and design mark “likely will appear alone when used in text and will be spoken when requested by consumers.”). Moreover, we agree with the Examining Attorney that in Applicant’s mark, the design element, a yellow square with “fragments of several circles that collide with each other”, is “not so novel or visually arresting as to diminish the dominant role of the wording in the mark.”6 Compare In re Calder, Serial No. 4808681, 2015 TTAB LEXIS 17 (TTAB January 29, 2015) (CALIFORNIA REPUBLIC in standard characters for clothing not likely to be confused with composite mark also for clothing.)7 Although we consider the marks as a whole, “in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for 6 Examining Attorney’s Brief, 6 TTABVUE 6. 7 The other cases cited by Applicant (4 TTABVUE 7-8) where no likelihood of confusion was found did not involve use of the marks on identical goods, as is the case here. See Ferro Corp. v. Ronco Labs., Inc., 356 F.2d 122, 148 USPQ 497 (CCPA 1966); In re White Rock Distilleries, Inc., 92 USPQ2d 1282, 1284 (TTAB 2009); Parfums de Coeur Ltd. v. Lazarus, 83 USPQ2d 1012 (TTAB 2007); Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477 (TTAB 1987). Serial No. 79286269 - 11 - rational reasons, more or less weight has been given to a particular feature of a mark. . . .” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Addressing the marks in their entireties, we find that the similarity created by the inclusion in all three marks of the distinctive coined term INTERPIPE is not diminished by either the addition of the letters ITP and letter “I” design in the registered marks or the yellow square with “fragments of several circles that collide with each other” in Applicant’s mark. We find, as a result, that the differences between the marks are outweighed by their similarity, particularly when applied to in-part identical goods. We find that the first DuPont factor, similarity of the marks, also weighs in favor of finding likelihood of confusion. C. Balancing the Factors In conclusion, we have considered all of the arguments and evidence of record, and all relevant DuPont factors. While we recognize the visual differences between the respective marks, we find that that the inherently distinctive registered marks are entitled to broad protection, and that Applicant’s mark incorporates the same dominant term INTERPIPE – therefore creating a highly similar commercial impression. Thus, when the marks are applied to, in part, identical goods, confusion is likely. Serial No. 79286269 - 12 - Decision: The refusal to register Applicant’s mark under Trademark Act Section 2(d) is affirmed.