Jai Group, S.A.

Trademark Trial and Appeal Board

Apr 13, 2016

No. 86410233 (T.T.A.B. Apr. 13, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: April 13, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Jai Group, S.A.
_____

Serial No. 86410233

_____

Albert Bordas of Albert Bordas, P.A.
for Jai Group, S.A.
Cristiana Schwab, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____

Before Zervas, Taylor and Bergsman,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Jain Group, S.A. (“Applicant”) seeks registration on the Principal Register of the
mark for “Chronographs as watches; Chronometric instruments and
watch movements; Watch bands; Watches; Watches, clocks; Wrist watches” in
Serial No. 86410233
- 2 -
International Class 14.1 The mark is described in the record as consisting of “a
vertical arrangement resembling a dollar symbol comprising a first letter ‘T’
positioned above a letter ‘S’ positioned above a second letter ‘T’ above the letters
‘TSW.’”
The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on U.S. Registration No.
43747232 for the mark TSW MALL (in standard characters) for services identified, in
relevant part, as “automated and computerized selling, purchasing and trading of
goods and services for others provided over a global communication information
network, namely, online retail store services featuring … horological instruments and
parts thereof …; and online mail order services featuring … horological instruments
and parts thereof” in International Class 35. The term “MALL” has been disclaimed.
After the Examining Attorney issued a Final Office Action, Applicant appealed.
Both Applicant and the Examining Attorney have filed briefs.
I. Evidentiary Issue
The Examining Attorney objected to Applicant’s submission of a printout of U.S.
Registration No. 4596353 and printouts of webpages, first submitted with Applicant’s
appeal brief. The record in an application should be complete prior to the filing of an
appeal. Trademark Rule 2.142(d), 37 C.F.R. §2.142(d); TBMP §§1203.02(e), 1207.01;
TMEP §710.01(c). The Examining Attorney’s objection is sustained, and we have

1 Application Serial No. 86410233, filed September 30, 2014, claiming an intent to use the
mark in commerce pursuant to Trademark Act § 1(b), 15 U.S.C. § 1051(b).
2 U.S. Registration No. 4374723 registered on July 30, 2013.
Serial No. 86410233
- 3 -
given no further consideration to this material and Applicant’s arguments regarding
this material.3
II. Applicable Law
Our determination under Trademark Act Section 2(d) is based on an analysis of
the probative facts in evidence that are relevant to the factors bearing on a likelihood
of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of
record on these factors, we keep in mind that “[t]he fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re
Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
As argued by Applicant and the Examining Attorney, the relevant du Pont factors
in this appeal are the similarities or dissimilarities of the marks, goods and services
and trade channels, as well as the strength of registrant’s mark.

3 The registration has no probative value inasmuch as it recites services involving goods
unrelated to the goods identified in the present application and cited registration.
Serial No. 86410233
- 4 -
A. Similarity or Dissimilarity of the Marks.
We compare the marks for similarities and dissimilarities in appearance, sound,
connotation and commercial impression. Palm Bay, 73 USPQ2d at 1692. The test 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 and
services offered under the respective marks is likely to result. Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).
Under actual marketing conditions, consumers do not necessarily have the luxury of
making side-by-side comparisons between marks, and must rely upon their imperfect
recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB
1980). The focus is on the recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks. In re Association of the
United States Army, 85 USPQ2d 1264 (TTAB 2007); Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106 (TTAB 1975). As discussed more fully below, the average
purchaser of Applicant’s products and Registrant’s services is the general public.
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, the analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. V. Master Mfg. Co., 667
F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It is axiomatic that a mark should not
Serial No. 86410233
- 5 -
be dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion”). On the other hand, different features may be
analyzed to determine whether the marks are similar. Price Candy Co. v. Gold Medal
Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, 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 a
consideration of the marks in their entireties. In re National Data Corp., 224 USPQ
at 751.
Registrant’s mark is TSW MALL (in standard characters) for services identified
as, in relevant part, “automated and computerized selling, purchasing and trading of
goods and services for others provided over a global communication information
network, namely, online retail store services featuring … horological instruments and
parts thereof …; and online mail order services featuring … horological instruments
and parts thereof” in International Class 35. The term “MALL” has been disclaimed,
a shortened form of the merely descriptive term “electronic mall” as applied to online
retail store services featuring differing goods.4 In view thereof, we find that the term
“TSW” is the dominant element of registrant’s mark. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re National

4 See definition of “electronic mall” from Macmillan Dictionary, accessed at
http://www.macmillandictionary.com/us/dictionary/american/electronic-mall, stating “a
website that sells the products and services of different companies.” The Board may take
judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food
Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983),
including online dictionaries that exist in printed format or regular fixed editions. In re Red
Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 86410233
- 6 -
Data Corp., 224 USPQ at 752 (“Regarding descriptive terms, this court has noted that
the descriptive component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion”); In re Code Consultants, Inc., 60 USPQ2d
1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the
mark’s commercial impression”).
Applicant’s mark is and includes the letters TST in a stylized vertical
display, with the letter “S” touching or integral with each letter “T.” Under this group
of letters are the letters TSW. TST is considerably smaller in size than TSW, and the
letters in TST are not immediately recognizable. The TST portion of Applicant’s
mark, however, is not so stylized that it creates a commercial impression separate
and apart from the letters “TST.”5 We therefore find that the letters TSW form the
dominant portion of Applicant’s marks. Due to the shared dominant term TSW, and
because the record does not reflect that TSW has any significance in connection with
Applicant’s or registrant’s services, we find that the marks are similar in appearance,
sound and commercial impression, without any particular meaning. In addition,
registrant’s mark is presented in standard character form, meaning that the rights
associated with registrant’s mark reside in the wording and not in any particular
display. In re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Pollio

5 The Examining Attorney and Applicant have commented that the TST portion resembles a
dollar sign. We find their interpretation to be plausible, but not a likely interpretation in
view of the horizontal portion of the letter “T” at the top of the collection of letters.
Serial No. 86410233
- 7 -
Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988). Registrant therefore could
present its mark in a script form similar to the script in Applicant’s mark.
B. Strength of Registrant’s Mark.

Applicant argues:
Registrant’s TSW MALL mark overwhelmingly suggests that the
services it offers are not products manufactured by Registrant. Instead,
the TSW MALL mark implies retailer or shopping mall services offering
the products of others. Therefore, Registrant’s TSW MALL mark is
“entitled to narrower range of protection than arbitrary marks.”
Minturn Advertising, Inc. v. Hermsen Design Associates, Inc., 728
F.Supp. 430 [(N.D. Texas 1990)]. Given the narrow scope of protection
mandated by the long established law for a mark as highly suggestive
as the mark of the cited reference, Registrant’s mark should not
preclude the registration of Applicant’s mark, TS [sic] TSW & Design.6

We do not agree with Applicant’s logic. The addition of a descriptive or generic
term to an otherwise arbitrary term does not limit the strength of the mark as a
whole. By comparison, there is no reason to accord COCA-COLA SOFT DRINK for
soft drinks a narrower scope of protection than COCA-COLA in view of the inclusion
of SOFT DRINK. Here, Applicant has not submitted any evidence demonstrating that
TSW has any meaning or significance in the relevant field of business. Thus, there is
no evidence in the record to demonstrate that registrant’s mark, taken as a whole, is
other than arbitrary. The fact that MALL appears in registrant’s mark does not
render the mark as a whole “highly suggestive.”
On the present record, we find registrant’s mark to be a strong arbitrary mark.

6 Applicant's Brief at 9, 4 TTABVUE 10.
Serial No. 86410233
- 8 -
B. Similarity or Dissimilarity of the Goods and Services, Trade Channels and
Purchasers.

With respect to the relatedness of the goods and services, it is well settled that the
question of likelihood of confusion must be determined based on an analysis of the
goods recited in the application vis-à-vis the services identified in the cited
registration, see In re Dixie Restaurants, 41 USPQ2d at 1534; Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990), and that it is sufficient that the
respective goods and services are related in some manner, and/or that the conditions
and activities surrounding the marketing of the goods and services are such that they
would or could be encountered 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). Further, Applicant’s recited goods are broadly identified as to their nature and
type; there is an absence of any restrictions relating to the channels of trade and no
limitations relating to the classes of purchasers. It is therefore presumed that in scope
the identification of goods encompass not only all the goods of the nature and type
described therein, but that the identified goods are offered in all channels of trade
which would be normal therefor, and that they would be purchased by all potential
buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Serial No. 86410233
- 9 -
Applicant’s goods are identified as “Chronographs as watches; Chronometric
instruments and watch movements; Watch bands; Watches; Watches, clocks; Wrist
watches.” Chronometric instruments, watches, watch bands, and clocks are all types
of “horological instruments and parts thereof.”7 Registrant’s services include online
retail store and mail order services that feature horological instruments and parts
thereof. Thus, Applicant’s goods and registrant’s services are closely related because
registrant’s services may feature the same types of products as Applicant’s products.
Because the goods offered by Applicant which are also the subject of registrant’s
online and by online mail order services are common consumer goods, we find that
the purchasing public is the general public.
Our finding is reinforced by the fact that 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 Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025
(Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store
services likely to be confused with BIGGS for furniture). 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

7 “Horological” is defined as “of or relating to horology.” The American Heritage Dictionary of
the English Language, accessed at ahdictionary.com, submitted with the Final Office Action.
“Horology” is defined as the “science of measuring time.” Id. Because the term “horological
instruments” in registrant’s identification of services is not restricted, it includes watches.
Serial No. 86410233
- 10 -
for retail-jewelry and mineral-store services likely to cause confusion). Here, there is
no question that registrant’s online retail store and mail order services that feature
horological instruments and parts encompass watches, chronometric instruments,
watch movements, clocks and wrist watches, recited in Applicant’s identification of
goods.
Moreover, the Internet evidence submitted by the Examining Attorney shows
examples of the same source providing under the same mark both online retail store
and mail order services that feature horological instruments, and the horological
instruments themselves. Thus, customers, upon encountering Applicant’s mark for
horological instruments are likely to believe that Applicant’s goods emanate from the
same source as registrant’s online retail and mail order store services and that such
goods are available for purchase at registrant’s on-line store. See In re Davey Products
Pty Ltd., 92 USPQ2d 1198, 1202-03 (TTAB 2009) (accepting Internet evidence to show
relatedness of goods in a likelihood of confusion determination). Therefore,
Applicant’s goods and registrant’s services are related for likelihood of confusion
purposes. See, e.g., In re Davey Products, 92 USPQ2d at 1202-04; In re Toshiba
Medical Systems Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
We are not persuaded by Applicant’s arguments that the goods and services are
not related because “Registrant sells other manufacturer’s products under their
respective brands,” and “[b]ecause Applicant’s goods… are different from Registrant’s
shopping mall services, and … the products Registrant does sell do not bear
Registrant’s registered mark, it is unlikely that they will be marketed in such a way
Serial No. 86410233
- 11 -
that they would be encountered by the same persons in situations that would create
the incorrect assumption that the goods originate from the same source.”8 Registrant
does not have to offer to sell goods manufactured by Applicant in order for confusion
between Applicant’s and registrant’s marks to be likely.
We conclude that the application and registration recite related goods and
services, and that the same classes of consumers are likely to believe that such goods
marketed under one mark emanate from the same source as an online retail and mail
order store offering the same goods under similar marks. These du Pont factors also
favor a finding of a likelihood of confusion.
D. Conclusion
We conclude that Applicant’s mark for “Chronographs as watches;
Chronometric instruments and watch movements; Watch bands; Watches; Watches,
clocks; Wrist watches” is likely to be confused with registrant’s TSW MALL mark for
services including online retail store and mail order services that feature horological
instruments and parts thereof.
Decision: The refusal under Section 2(d) to register Applicant’s mark is affirmed.

8 Applicant's Brief at 13-14, 4 TTABVUE 5.