Jai Group, S.A.

Trademark Trial and Appeal Board

Mar 31, 2016

No. 85935843 (T.T.A.B. Mar. 31, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: March 31, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jai Group, S.A.
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Serial No. 85935843

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Albert Bordas, of Albert Bordas PA,
for Jai Group, S. A.

Margery Tierney, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Taylor, Hightower and Greenbaum,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Jai Group, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark TST TECHNOSPORT shown below

Serial No. 85935843
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for “Chronometers; Chronometric instruments and watch movements; Clocks; Watch
bands; Watches; Wrist watches” in International Class 14.1 The mark is described in
the application as follows: “The mark consists of the word ‘TECHNOSPORT’ in
stylized letters. ‘SPORT’ appears inside a rectangle. The word ‘TECHNO’ is in black
color on a white background. The word SPORT is in yellow color on a black
background. The letter ‘E’ appears as three horizontal lines in black and white color.
Directly above the first letter ‘O’ appears an abstract design that is formed by the
letters ‘TST’, one above the other in black color.” The application also contains the
following color claim: “The colors black, white and yellow are claimed as feature of
the mark.”
The Trademark Examining Attorney (“Examining Attorney”) has finally refused
registration of Applicant’s mark on the ground that the mark for which registration
is sought so resembles the mark in Registration No. 3377485, TECNO SPORT
(standard characters), SPORT disclaimed, for “watches” in International Class 142 as
to be likely, when used on or in connection with the identified goods, to cause
confusion, or to cause mistake or to deceive, pursuant to Section 2(d) of the
Trademark Act 15 U.S.C. § 1052(d).
Applicant appealed to this Board. We affirm the refusal to register.

1 Application Serial No. 85935843 was filed on May 17, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. On April 15, 2015, Applicant filed a Statement of Use (“SOU”), which was
accepted, asserting March 15, 2005 as the date of first use of the mark anywhere and in
commerce.

2 Issued February 5, 2008.
Serial No. 85935843
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Evidentiary Matter
With its appeal brief Applicant has submitted webpages from the Amazon.com
website displaying the results of a search for the term “Techno” appended to pages
21-34 of its brief and copies of five (5) third-party registrations that were previously
listed in its June 30, 2015 Response to Office Action. The Examining Attorney has
objected solely to the excerpt from Amazon.com, arguing that it is untimely having
been submitted in the record for the first time in Applicant’s brief.
The Examining Attorney’s objection is sustained inasmuch as the record must be
complete prior to the filing of an appeal. Trademark Rule 2.142(d). Thus, the
webpages from Amazon.com appended to pages 21-34 of Applicant’s brief will not be
further considered. Because the Examining Attorney did not object to the submission
of the five third-party registrations, and because she addressed them in her brief,
they are considered timely-filed and properly of record.
Likelihood of Confusion
We turn then to the merits of this appeal. 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 issue. 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 between the marks and the similarities
between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors, and the other relevant
du Pont factors in the proceeding now before us, are discussed below.
Serial No. 85935843
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The Goods/Channels of Trade/Classes of Consumers
We first consider the second du Pont factor regarding the relatedness of the goods.
The goods are identical insofar as they both include “watches.” We consider the “wrist
watches” identified in Applicant’s application to be encompassed by, and legally
identical to, the “watches” identified in the cited registration. The remaining goods in
the application, i.e., chronometers, chronometric instruments and watch movements,
clocks and watch bands, are otherwise closely related time keeping instruments and
components or accessories therefor. Even so, we need not discuss the similarity of all
of Applicant’s goods because it is sufficient for a refusal based on likelihood of
confusion that relatedness is established for any item encompassed by the
identification of goods in the application. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v.
TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
Furthermore, because the goods are identical in-part, the channels of trade and
classes of purchasers for such goods are considered to be the same. In re Yawata Iron
& Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); American Lebanese
Syrian Associated Charities Inc. v. Child Health Research Institute, 101 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).
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Accordingly, we find that the du Pont factors of the relatedness of the goods,
channels of trade and classes of purchasers favor a finding of likelihood of confusion.
Conditions of Sale
Applicant argues, without any supporting evidence, that the likelihood of
confusion is reduced by the care consumers exercise when purchasing watches.
Applicant asserts that “Applicant’s products specifically target consumers interested
in expensive Chronometers; Chronometric instruments and watch movements;
Clocks; Watch bands; Watches; Wrist watches. Applicant’s consumers are considered
to be detailed oriented consumers looking for watches that enhance their fashion
life.”3 However, because the goods are in-part identical, and considering the absence
of any limitations in the identifications in both Applicant’s application and the cited
registration, as to, for example, costs, it is presumed that Applicant’s goods will
include relatively inexpensive watches that will appeal to ordinary consumers who
will exercise no more than ordinary care in their purchasing decisions. See In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that relevant
goods are expensive wines sold to discriminating purchasers must be disregarded
given the absence of any such restrictions in the application or registration).
Thus, this du Pont factor is neutral.

3 4 TTABVUE 10.
Serial No. 85935843
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The Similarities/Dissimilarities of the Marks
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks, keeping in mind that where, as here, the goods are
identical in part, the degree of similarity necessary to find likelihood of confusion
need not be as great as where there is a recognizable disparity between the goods.
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 America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85
USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-
Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
We compare the marks, as we must, in their entireties in terms of sound,
appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “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, 101 USPQ2d at 1721. See
also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d
683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. June 5, 1992).
The proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. L’Oreal S.A. v. Marcon, 102 USPQ2d
Serial No. 85935843
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1434, 1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207
USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975).
With these principles in mind, we compare Applicant’s mark
with the cited registered mark TECNO SPORT. We note, first, that because the cited
mark is presented in standard characters, Registrant is not limited to any particular
depiction of its mark. Thus, Registrant is entitled to all depictions of its mark
regardless of the font style, size, or color; Registrant’s mark could at any time be
displayed in a manner similar to Applicant’s mark, that is, the terminology TECNO
SPORT could be displayed in the same font style, size and coloration. In re Viterra,
101 USPQ2d at 1909-10; Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011). See Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (rejecting argument that a mark in
standard character format (typed) is distinct from a mark in a logo format; “[b]y
presenting its mark in a typed drawing, a difference cannot legally be asserted by
that party”) (emphasis in original).
We find the term “TECHNOSPORT” to be the dominant element in Applicant’s
mark. While we compare the marks in their entireties, as we must, there is nothing
improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of the mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The term TECHNOSPORT is the
Serial No. 85935843
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dominant part of the Applicant’s mark because it is the largest feature of the mark
and the part that consumers will most likely notice, remember and use to call for
Applicant’s goods.
The dominant portion of Applicant’s mark TECHNOSPORT is very similar to the
cited mark TECNO SPORT. The slight differences between the these two terms, i.e.,
the presence of the letter “H” in the word TECHNO in Applicant’s mark and the
absence of a space in that mark between the terms “TECHNO” and “SPORT,” does
not distinguish them. It is unlikely that consumers will even notice the “H” in
Applicant’s mark because it is embedded in the middle of the term TECHNO. See,
e.g., In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) (“Moreover,
although there are certain differences between the [marks CAYNA and CANA] in
appearance, namely, the inclusion of the letter ‘Y’ and the design feature in
applicant’s mark, there are also obvious similarities between them. Considering the
similarities between the marks in sound and appearance, and taking into account the
normal fallibility of human memory over a period of time (a factor that becomes
important if a purchaser encounters one of these products and some weeks, months,
or even years later comes across the other), we believe that the marks create
substantially similar commercial impressions.”). The absence of the space between
the words TECHNO and SPORT has no trademark significance. See In re Iolo
Technologies, LLC, 95 USPQ2d 1498 (TTAB 2010) (difference between ACTIVECARE
and ACTIVE CARE has no trademark significance).
Serial No. 85935843
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The letters TST also do not serve to distinguish Applicant’s mark from that of the
cited mark in appearance, sound or connotation. As to appearance, because the letters
are so small as compared to the rest of Applicant’s mark, even if noticed by consumers
they are more likely to be perceived as an abstract design element rather than
discrete letters that will be remembered and used to call for Applicant’s goods.
Applicant argues that the marks have different pronunciations because
Applicant’s mark includes the letters TST before the term TECHNO SPORT. As just
stated, it is unlikely that consumers will notice the letters TST or use them when
referring to Applicant’s products. Even if consumers notice the letters TST, the
dominant terms TECHNOSPORT and TECNO SPORT are phonetically equivalent,
and thus consumers may perceive the letters simply as a house mark. The addition
of a house mark or trade name to one of two otherwise confusingly similar marks
generally does not serve to avoid a likelihood of confusion. Menendez v. Holt, 128 U.S.
514, 521 (1888); In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007).
As regards the connotation of the marks, Applicant, while acknowledging that the
connotation of a mark must be determined in relation to the identified goods,
nonetheless contends they differ. Because the goods at issue here are in-part
identical, the respective marks are likely to mean the same thing. That being said, if
Registrant’s mark imparts the meaning of technological watches for sports, as
Applicant suggests, so would Applicant’s mark.
While clearly there are differences between the two marks when viewed on a side-
by-side basis, we find when viewed in their entireties, Applicant’s mark
Serial No. 85935843
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and Registrant’s mark TECNO SPORT are substantially similar in
appearance, sound, meaning and commercial impression due to the shared
phonetically equivalent term, TECHNOSPORT/TECNO SPORT.
The du Pont factor concerning the similarity of the marks thus favors a finding of
likelihood of confusion.
Applicant, with little evidentiary support, argues that Registrant’s mark
“overwhelmingly suggests that the offered goods are technological products [for
sports activities]” and therefore is ‘“entitled to a narrower range of protection than
arbitrary marks’ (citations omitted).”4 Even if we were to attribute some degree of
suggestiveness to the cited mark TECNO SPORT, as Applicant would have us do,
even weak marks are entitled to protection where confusion is likely. See Matsushita
Electric Company v. National Steel Co., 442 F.2d 1383, 170 USPQ 98, 99 (CCPA 1971)
(“Even though a mark may be ‘weak’ in the sense of being a common word in common
use as a trademark, it is entitled to be protected sufficiently to prevent confusion as
to source from arising”). Here, Registrant is at least entitled to protection from
registration of Applicant’s substantially similar mark for in-part identical goods.
The Number and Nature of Similar Marks in use on Similar Goods
Applicant submitted copies of five registrations for marks incorporating the term
“Techno” or a variation thereof for watches (i.e., TECHNO COM [Registration No.
3466542], TECHNO KING [Registration No. 3820594], T TECHNOS [Registration

4 4 TTABVUE 7.
Serial No. 85935843
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No. 3683322], TECHNO PAVE [Registration No. 3996627], and TECHNO BLING
[Registration No. 4415605]), essentially arguing that the co-existence of these
registrations demonstrates that the cited mark is weak and entitled to only a narrow
scope of protection.
The above-listed third-party registrations, however, do not persuade us that the
cited mark is so weak due to common usage of TECHNO/TECNO that confusion is
not likely between it and Applicant’s mark. None of the third-party trademarks are
as similar to the cited mark as is Applicant’s mark or, for that matter, are any of
those registered marks similar to one another. Cf. Juice Generation, Inc. v. GS Enters.
794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015) (finding third-party registrations
relevant to prove that some segment of the composite marks which both contesting
parties use has normally understood and well-recognized descriptive or suggestive
meaning); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1362, 116 USPQ2d 1129 (Fed. Cir. 2015) (same).
Here, the existence of only five registrations do not evidence such a widespread and
significant use of the term TECHNO in the watch industry that we can conclude that
the cited marks are so weak that the public would be able to distinguish the source
of Applicant’s goods from those of Registrant by the slight differences in their
respective marks. Cf., In re Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB 1996)
(“Broadway” is weak for restaurant services based on evidence that hundreds of
restaurants and eating establishments use Broadway as a trademark or trade name).
Serial No. 85935843
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We note, too, that the Board is not bound by the prior decisions of examining
attorneys in allowing marks for registration. It is well established that each case
must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some
characteristics similar to [applicant’s] application, the PTO’s allowance of such prior
registrations does not bind the Board or this court.”); In re Merrill Lynch, Pierce,
Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987).
Conclusion
For the reasons discussed, we conclude that purchasers familiar with Registrant’s
TECNO SPORT mark for “watches” would be likely to believe, upon encountering
Applicant’s mark for watches and otherwise closely related goods,
that such goods originate from or are sponsored by or are otherwise affiliated with
the same source.
Decision: The refusal to register is affirmed.