IOIP Holdings, LLC

Trademark Trial and Appeal Board

Oct 20, 2010

No. 77309516 (T.T.A.B. Oct. 20, 2010)

Mailed: 10/20/10

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re IOIP Holdings, LLC
________

Serial No. 77309516
_______

Gerard T. Gallagher of Barnes & Thornburg for IOIP
Holdings, LLC.

Jennifer H. Dixon, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Quinn, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

IOIP Holdings, LLC filed, on October 22, 2007, an
application to register the mark SUMMIT BRANDS (“BRANDS”
disclaimed) for the following goods:
Chlorine compounds for maintaining
drinking water supplies; chemical
compounds for use in cleaning and
maintaining water softening units;
chemical compound for use in removing
foreign matter from water softeners (in
International Class 1);

Cleaning preparation for use with
washing machines for the purpose of
removing scum, mineral deposits, and
lime scale in washing machines during
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser No. 77309516
2
washing machine operation; drain
cleaner; cleaning preparation for
garbage disposals; all-purpose rust,
iron stain and stain remover for use in
toilet bowls, flush tanks, sinks and
bowls, dishwashers and washing
machines, and with dishes, plastic ware
and glassware and like items; stain
removers for removing stains from
brick, stone, concrete and other
exterior surfaces; stain removers for
removing stains from tubs, chrome,
ceramic tile, shower stalls, and the
like; all-purpose rust removing
preparations and iron stain remover for
whitening, brightening and removing
stains from clothing; drain openers;
cleaner for removing hard water stains,
rust stains and iron stains from
clothing; all-purpose chemical cleaner
for removing lime, rust, soap and hard
water stains; cleaning preparation for
use with dishwashers during dishwasher
operation; general purpose cleaning
preparations for preventing and
removing mineral deposits; cleaners for
water treatment equipment and
appliances, namely, commercial and
industrial water softening equipment
and household appliances, namely, ice
makers, coffee makers, dishwashers,
humidifiers and distillers; all-purpose
rust and stain remover for use in water
systems, namely, toilets, pipes, pumps,
and other water conditions (in
International Class 3); and

Sanitizers for water treatment and
appliances, namely, commercial and
industrial water softening equipment
and household appliances, namely, ice
makers, coffee makers, dishwashers,
humidifiers and distillers; household
deodorant and disinfectant for garbage
disposals; chemical preparations to
prevent mold, mildew, deposit and
corrosion in whirlpool baths, hot tubs
Ser No. 77309516
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and jetted bathtubs (in International
Class 5).

In each class applicant alleged first use anywhere and
first use in commerce on March 7, 2006.
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 in
connection with applicant’s goods, so resembles the
previously registered mark SUMMIT FRESH for “laundry
bleach; fragrance sold as an integral component of laundry
bleach”1 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
The examining attorney maintains that the marks are
similar in that both are dominated by “SUMMIT.” The
examining attorney contends that “SUMMIT” is distinctive
when used in connection with goods of the type involved in
this appeal; in support of this contention, the examining
attorney submitted third-party registrations showing that
the word “SUMMIT” appears in few registered marks in the
relevant classes of goods and, in no case, in connection
with cleaning products. The examining attorney also
asserts that the goods are related, and in support of this

1 Registration No. 3319015, issued October 23, 2007.
Ser No. 77309516
4
assertion, she submitted several use-based third-party
registrations showing that the same entity has registered
the same mark for goods of the type identified in the
involved application and cited registration. The examining
attorney also submitted a dictionary definition of the word
“bleach,” of which we take judicial notice pursuant to her
request to do so. Also of record are several excerpts
retrieved from third-party websites detailing the use of
bleach as a cleaning agent to remove stains.
Applicant argues that the examining attorney has
improperly dissected the marks when comparing them. In
this connection, applicant contends that the examining
attorney has “completely ignore[ed] the terms ‘brands’ and
‘fresh’ which comprises half of the respective marks.”
(Brief, p. 3). Applicant claims that its mark conveys the
commercial impression that its products are “of the topmost
brands or superior brands,” whereas registrant’s mark
“gives the impression of fresh air at the top of a
mountain.” According to applicant, this difference, along
with differences between the marks in appearance, sound and
meaning result in marks that are “substantially different.”
(Brief, p. 4). In support of its position, applicant
introduced dictionary definitions of the words “summit,”
“brand” and “fresh.” Applicant’s briefs are entirely
Ser No. 77309516
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silent regarding the similarity/dissimilarity between the
goods.
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 also: In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
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).
We first turn to consider the similarity and/or
dissimilarity between the goods. At the outset of our
comparison of the goods, we again note that applicant’s
brief is silent on this factor. With respect to this
second du Pont factor on the merits, it is not necessary
that the respective goods be competitive, or even that they
move in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered
Ser No. 77309516
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by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originated from the same producer. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991). The issue is
not whether consumers would confuse the goods themselves,
but rather whether they would be confused as to the source
of the goods. Likelihood of confusion may be found based
on any item that comes within the identification of goods
in each of the classes in the involved application vis-à-
vis the goods in the cited registration. Tuxedo Monopoly,
Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981).
As shown by the dictionary definition furnished by the
examining attorney, “bleach” is “a chemical used to bleach
things and also to sterilize drains, sinks, etc.; make[s]
white or lighter by a chemical process.”
(www.askoxford.com). Thus, registrant’s laundry bleach,
which can be used to clean clothing and, most particularly,
remove stains from clothing, is similar to the variety of
cleaning preparations identified in the involved
application. Applicant’s goods in each of the three
classes are used to clean various things, and to remove
stains (and, in Class 3, specifically from clothing).
Ser No. 77309516
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In connection with this du Pont factor, the examining
attorney introduced several use-based third-party
registrations showing that the same entities have
registered a single mark for both laundry bleach and the
types of cleaning preparations identified by applicant.
“Third-party registrations which cover a number of
differing goods and/or services, and which are based on use
in commerce, although not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, may nevertheless have some probative
value to the extent that they may serve to suggest that
such goods or services are of a type which may emanate from
a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir.
1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993).
Insofar as the trade channels and classes of
purchasers are concerned, we note that there are no
limitations in either applicant’s or registrant’s
identification of goods. Accordingly, we must presume that
the goods, as identified, are marketed in all normal trade
channels for such goods and to all normal classes of
purchasers for such goods. In re Elbaum, 211 USPQ 639
(TTAB 1981). These trade channels would be identical,
Ser No. 77309516
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including mass merchandisers (such as Wal-Mart and Target),
and grocery store chains that sell household cleaning
products. The goods would be purchased by identical
classes of purchasers, including ordinary consumers who are
likely to use nothing more than ordinary care when buying
household cleaning products.
These du Pont factors relating to the goods all weigh
in favor of a finding of likelihood of confusion.
We next turn to consider the marks. 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 (Fed. Cir. 2005). The
test, under the first du Pont factor, is not whether the
marks can be distinguished when subjected to 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 offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Ser No. 77309516
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Although we must compare the marks in their
entireties, it is well 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 mark, provided the
ultimate conclusion rests on consideration of the marks in
their entireties. Indeed, this type of analysis appears to
be unavoidable.”). See Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002).
In each of the marks, the word “SUMMIT” is the first
portion of the mark. This word is arbitrary when used in
connection with cleaning products or is, at worst, only
slightly suggestive. Purchasers in general are inclined to
focus on the first word or portion in a trademark. Presto
Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“it is often the first part of a mark
which is likely to be impressed upon the mind of a
purchaser and remembered”). See Palm Bay Imports, Inc. v.
Ser No. 77309516
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Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d
at 1692.
Applicant’s mark is clearly dominated by “SUMMIT.”
The word “BRANDS” is generic, and has been disclaimed. To
state the obvious, the word “BRANDS” plays no source-
identifying function in applicant’s mark. Lest there be
any doubt that “BRANDS” is subordinate to the “SUMMIT”
portion, the specimens of record show that the word
“BRANDS” is in smaller type and below the “SUMMIT” portion.
See In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997) (disclaimed matter is less
significant when comparing marks).
With regard to registrant’s mark, it too is dominated
by the first word “SUMMIT.” The word “FRESH” is highly
suggestive when used in connection with a laundry cleaning
product (connoting that clothes cleaned with the product
will be “fresh” or have a “fresh” scent). Accordingly,
“FRESH” plays a subordinate role in registrant’s mark.
Because the dominant portion of each mark is
identical, the marks are similar in sound and appearance.
Although the presence of “FRESH” in the cited mark adds, as
noted above, a suggestive quality to the mark that is not
present in applicant’s mark, any difference in meaning is
easily outweighed by the similarities in sound and
Ser No. 77309516
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appearance. Because of the identity in the first word of
each mark, and the similarity between the goods, the marks
engender similar overall commercial impressions.
The similarity between the marks SUMMIT BRANDS and
SUMMIT FRESH weighs in favor of a finding of likelihood of
confusion.
We conclude that consumers familiar with registrant’s
laundry bleach sold under the mark SUMMIT FRESH would be
likely to mistakenly believe, upon encountering applicant’s
mark SUMMIT BRANDS for a variety of chemical compounds and
preparations used for cleaning and removing stains, that
the goods originated with or are somehow associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.