No. 77574384 (T.T.A.B. Oct. 12, 2010)

Jodi Hunter

Trademark Trial and Appeal BoardOct 12, 2010

No. 77574384 (T.T.A.B. Oct. 12, 2010)

Mailed: October 12, 2010 Bucher UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Jodi Hunter ________ Serial No. 77574384 _______ Paul A. Gargano of Gargano & Associates for Jodi Hunter. Debra Lee, Trademark Examining Attorney, Law Office 116 (Michael W. Baird, Managing Attorney). _______ Before Hairston, Bucher and Taylor, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Jodi Hunter, a resident of the Cayman Islands, seeks registration on the Principal Register of the following mark: for goods and services identified as follows: “belts; Bermuda shorts; bikinis; capri pants; caps; cargo pants; dresses; gym shorts; jogging pants; short-sleeved or long-sleeved t-shirts; short-sleeved shirts; shorts; skirts and dresses; sports bras; sweat pants; swim THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77574384 - 2 - trunks; swim wear; swim wear for gentlemen and ladies; swimming costumes; swimming trunks; tennis wear; tops; track pants; tracksuits; waterproof jackets and pants; wind pants; yoga pants; yoga shirts” in International Class 25, and “retail clothing boutiques; retail clothing stores” in International Class 35.1 The Trademark Examining Attorney issued a final refusal to register this designation based upon Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining Attorney has taken the position that applicant’s mark, when used in connection with the named goods and services, so resembles the following three marks, owned by two separate parties: for “t-shirts, tank tops, sweatshirts, pullovers, jumpers, jackets, vests, and hats” in International Class 25;2 1 Application Serial No. 77574384 was filed on September 19, 2008, based upon applicant’s allegation of a bona fide intention to use the mark in commerce. The mark consists of a stylized image of a monkey with a long curled tail along with the phrase "Funky Monkey" written in a stylized script with curled ends similar to the curled tail of a monkey. Color is not claimed as a feature of the mark. 2 Registration No. 2331144 issued on March 21, 2000; Section 8 affidavit (six-year) accepted and Section 15 affidavit acknowledged. Serial No. 77574384 - 3 - for “retail stores in the field of jewelry, non- edible gift items and collectibles, excluding toys” in International Class 35;3 and FUNKY MUNKY for “retail stores in the field of jewelry, non- edible gift items and collectibles, excluding toys” in International Class 35,4 as to be likely to cause confusion, to cause mistake or to deceive. After the Trademark Examining Attorney made the refusal final, applicant appealed to this Board. Applicant and the Trademark Examining Attorney filed briefs in this matter. We affirm the refusal to register. In urging registrability, applicant argues in her appeal brief that the Lanham Act protects only famous marks, and that the cited marks are not sufficiently famous to support this Section 2(d) refusal; that the likelihood of any actual confusion is minimal because the applicant uses her mark in 3 Registration No. 2863952 issued to Jodi Galle on July 20, 2004; Section 8 affidavit (six-year) accepted and Section 15 affidavit acknowledged. 4 Registration No. 2865908 issued to Jodi Galle on July 27, 2004; Section 8 affidavit (six-year) accepted and Section 15 affidavit acknowledged. Serial No. 77574384 - 4 - the Cayman Islands while the owners of the cited registrations reside in Colorado and Illinois; and that applicant remains willing to add the words “Lifestyle Wear” to her mark to further distinguish the marks.5 By contrast, in support of her refusal, the Trademark Examining Attorney contends that inasmuch as the marks of applicant and both registrants are highly similar, even if applicant had submitted the proposed amendment, it would not obviate a likelihood of confusion; that federal registrations are not restricted geographically as applicant suggests, and marks that are not shown to be famous are indeed protected under the Lanham Act; and that applicant’s goods are closely related to the goods of Registration No. 2331144 while her services are closely related to the services of Registration Nos. 2863952 and 2865908. We turn then to a consideration of the issue of likelihood of confusion. Our determination of likelihood of 5 In her response of January 28, 2009, applicant argued that Registration No. 2863952 was an irrelevant citation because it is in a different class; that the differences in stylization of the design marks was enough to overcome any likelihood of confusion; that applicant’s “lifestyle wear” actually “projects a certain style and personality” not found in “generic retail clothing”; and that applicant’s store is more in the nature of a sporting apparel store than a general retail store for clothing or jewelry. In order to rebut these earlier-posed arguments, the Trademark Examining Attorney thoroughly answered each of these points in her brief. However, inasmuch as these contentions were not repeated in applicant’s brief (and they would be of no avail to applicant in any case), we will not respond to these particular arguments. Serial No. 77574384 - 5 - confusion is based upon our analysis of all of the probative facts in evidence that are relevant to the factors bearing on this issue. See 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); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of confusion analysis, however, two key, although not exclusive, considerations are the similarities between the marks and the relationship between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). We turn first to the du Pont factor focusing on the relatedness of the goods and services. As to the relatedness of applicant’s and the first cited registrant’s goods, we notice that both list t-shirts. Additionally, there are pairs of goods that are substantially the same, such as caps vs. hats, sweatshirts vs. sweatpants, tank tops and pullovers vs. tops, jackets vs. waterproof jackets, etc. As to the remaining items, the Trademark Examining Attorney has placed into the record screen shots from the websites of Old Navy,6 6 http://oldnavy.gap.com/ Serial No. 77574384 - 6 - Nike,7 Title Nine,8 Champion,9 and Adidas,10 demonstrating that these five brands, for example, use the same mark in connection with clothing items like those identified by applicant and like those identified in the “FUNKY MONKEY and design” registration. As to the relationship of the services, the Trademark Examining Attorney notes that registrant’s recitation of retail store services in the field of “non-edible gift items and collectables” in Registration Nos. 2863952 and 2865908 is broad enough to include the sale of items of apparel like those named by applicant. However, even without this broad interpretation of the cited registrant’s retail store services, the Trademark Examining Attorney has placed into the record multiple screen shots from the websites of Free People,11 Hysteria,12 Forecast,13 Muse Houston,14 Bebe,15 7 http://www.nike.com/nikewomen/home?locale=en_US 8 http://www.titlenine.com/ 9 http://www.championusa.com/champion/ 10 http://www.shopadidas.com/ 11 http://www.freepeople.com/ 12 http://www.shophysteria.com/ 13 http://www.forecaststore.com/ 14 http://www.musehoustonshop.com/servlet/StoreFront 15 http://www.bebe.com/ Serial No. 77574384 - 7 - JezzaBelle,16 and BCBG|MaxAzria,17 demonstrating that retail clothing outlets, boutiques and stores often sell accessories, jewelry and other gift items, in addition to clothing. Moreover, the Trademark Examining Attorney attached copies of the following registrations having marks registered in connection with goods of the type marketed by the first registrant and to be marketed by applicant, as well as retail store services that feature clothing and accessories such as jewelry, as recited by the second registrant: GO INTERNATIONAL for “clothing, namely, pants, jeans, shorts, skirts, skorts, dresses, sweaters, tops, shirts, t-shirts, blouses, vests, jackets, coats, belts, scarves, hats, caps, gloves, mittens and mufflers” in Int. Class 25; “retail store services featuring clothing, clothing accessories, sunglasses, jewelry, watches, bags, handbags and purses” in Int. Cl. 35;18 OMALA for “clothing namely, tops and bottoms, socks, hats, scarves, gloves, mittens, headwear, footwear and leggings” in International Class 25; “retail store services in the fields of apparel, jewelry, body care products, home furnishings, exercise props, and bags” in International Class 35;19 16 http://jezzabelle.com/ 17 http://www.bcbg.com/home/ 18 Registration No. 3163783 issued on October 24, 2006. No claim is made to the exclusive right to use the word “International” apart from the mark as shown. 19 Registration No. 3330981 issued on November 6, 2007. Serial No. 77574384 - 8 - LOFT PETITES for “clothing, namely, dresses, skirts, suits, blouses, sweaters, shirts, t- shirts, tank tops, jumpers, vests, pants, jeans, shorts, jackets, coats, sleepwear, swimsuits” in International Class 25; “on-line and in store retail store services in the fields of clothing, footwear, handbags, small leather accessories, jewelry, toiletries, consumable bath products and cosmetic products” in International Class 35;20 UNLEASH YOURSELF for, inter alia, “clothing, namely, golf shirts, jackets, lingerie, sleep wear, belts, knit shirts, sweat shirts, blouses, t shirts, pants, sweaters, socks, ties, bow ties, shorts, beachwear, swimsuits, hats, underwear” in International Class 25; “mail order services, retail store services and online retail store services, all featuring gift items, namely, jewelry, jewelry boxes, clothing, glass wares, candy, flowers, body oils and lotions, perfume, cologne, gift cards, and invitation cards” in International Class 35;21 HERITAGE 1981 for, inter alia, “clothing, namely, pants, shirts, jackets, skirts, dresses, scarves, belts, vests and hats; tube tops, tank tops, and underwear” in International Class 25; “retail store services featuring cosmetics, eyewear, namely, sunglasses, jewelry, namely, bracelets, earrings, necklaces, rings, brooches and watches, accessories, namely, shoes, handbags, and clothing, namely, pants shirts, jackets, skirts, dresses, gowns, scarves, belts, robes, pajamas, vests and hats, tube tops, tank tops, 20 Registration No. 3350308 issued on December 4, 2007. No claim is made to the exclusive right to use the word “Petites” apart from the mark as shown. 21 Registration No. 3405309 issued on April 1, 2008. Serial No. 77574384 - 9 - corsets, bras, underwear and shawls” in International Class 35;22 for, inter alia, “clothing, namely, aprons, bandanas, dresses, footwear, hats, hosiery, jeans, pajamas, pants, shirts, shorts, sweaters, sweatshirts, t-shirts, underwear; beach clothes, namely, bathing suits; outerwear, namely, jackets; and clothing accessories, namely, belts, ear muffs, mittens and gloves, neckties, scarves and visors” in International Class 25; “retail store services, mail order catalog services, and electronic retailing services via a computer featuring books, canes, clothing, cosmetics, hats and head coverings, jewelry, personal hygiene products, undergarments, pillows, tapes, therapy items, therapeutic products …” in International Class 35;23 for, inter alia, “clothing and clothing accessories, namely, clothing belts, blazers, blouses, bottoms, capes, coats, rain wear, sport coats, dresses, foul weather gear, gloves, tops, hosiery, jackets, jeans, jerseys, kerchiefs, loungewear, neckwear, pants, scarves, shawls, shirts, sweatshirts, shorts, skirts, sweaters, vests, footwear, and headwear” in International Class 25; “retail store services, mail order services, and electronic retail services using a global computer and/or communications, network, all in the field of clothing, clothing accessories, footwear, headwear, backpacks, purses, wallets, sunglasses, 22 Registration No. 3447097 issued on June 10, 2008. No claim is made to the exclusive right to use the term “1981” apart from the mark as shown. 23 Registration No. 3455383 issued on June 24, 2008. The mark consists of “Boy Lemon.” Color is not claimed as a feature of the mark. Serial No. 77574384 - 10 - jewelry, and candles” in International Class 35;24 for, inter alia, “women's apparel, namely, skirts, pants, shorts, shirts, knit tops, dresses, sweaters, hats, gloves, scarves, belts, jackets, coats, sleepwear, swimwear; intimate apparel, namely, underwear, bras, nightgowns; footwear” in International Class 25; “retail store services and on-line retail store services specializing in women's apparel and accessories” in International Class 35;25 MAVI for, inter alia, “clothing, namely, shorts, pants, shirts, jeans, knit tops, sweaters, sweatshirts, t-shirts; outerwear, namely, jackets and coats; belts, socks, underwear, neckwear, namely, scarves; headwear, and footwear” in International Class 25; “retail store and wholesale distributorship services featuring clothing and accessories” in International Class 35;26 STYLE WITH A CONSCIENCE for, inter alia, “clothing, namely, shirts, T-shirts, sweaters, sweatshirts, pullovers, coats, vests, pants, shorts, bandanas, scarves, belts, ties, rainwear, swim suits, swim trunks, shoes, and headwear, namely, caps and hats” in International Class 25; “retail store services, mail order retail store services, and online retail store services for apparel, clothing accessories, handbags, and jewelry” in International Class 35;27 24 Registration No. 3482577 issued on August 5, 2008. 25 Registration No. 3486249 issued on August 12, 2008. 26 Registration No. 3492722 issued on August 26, 2008. 27 Registration No. 3534204 issued on November 18, 2008. Serial No. 77574384 - 11 - for, inter alia, “wearing apparel, clothing, and clothing accessories, namely, bottoms, gym suits, tops, lingerie, pants, shirts, shorts, skirts, sleep wear, sweaters, swim wear, underwear, footwear, and headwear” in International Class 25; and “retail store services and electronic retail store services using a global computer and/or communications network, all in the field of clothing, clothing accessories, footwear, headwear, cosmetics, personal care products, umbrellas, and jewelry” in International Class 35.28 Third-party registrations are not evidence of commercial usage of the marks shown therein, or if in use, that the public is familiar with them. Nonetheless, this is a common method of presenting probative evidence suggesting that the goods and services listed therein generally are all of a kind that may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993) and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 n.6 (TTAB 1988). Accordingly, this du Pont factor favors the position of the Trademark Examining Attorney herein. We turn then to the du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot 28 Registration No. 3539007 issued on November 25, 2008. Serial No. 77574384 - 12 - Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). In her brief, the Trademark Examining Attorney makes the following observations, supported by the appropriate case law, which we have summarized herein: Similarity in sound alone may be sufficient to support a finding of likelihood of confusion; A miniscule difference in spelling is not sufficient to overcome a likelihood of confusion between marks; When composite marks consist of wording and a design, the word portions are more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services; Because our focus must be on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks, potential consumers will neither notice nor long remember the somewhat different depictions of monkeys as seen in this record; and The connotations and commercial impressions of the involved marks are all quite similar given substantially the same wording in each. We agree with the Trademark Examining Attorney that applicant’s mark is confusingly similar to each of the cited marks. All these goods and services will be asked for with the identical sounding “Funky Monkey” / ”Funky Munky.” While the design features are different, these composite drawings all have images of primates with long curled tails that Serial No. 77574384 - 13 - reinforce the word “Monkey” / “Munky.” However, none of the monkey images is so memorable that one would retain these differences as distinguishing factors among the several marks. Applicant also seems to take the position that the existence of these cited registrations owned by two unrelated parties provides a rationale for permitting its mark a place on the registry as well. However, while the United States Patent and Trademark Office (USPTO) strives for consistency, each case must be decided on its own facts and record. We are not privy to the records in the files of these registered marks. Furthermore, even if faced with these records, previous decisions by Trademark Examining Attorneys in approving other marks are without evidentiary value and are not binding on the United States Patent and Trademark Office or on this Board. In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994); and In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984). Finally, in light of applicant’s specific goods and services, we find that applicant’s mark is more likely to cause confusion with each of these third-party marks than they are with each other. As to the fame of the cited marks, there is nothing in the record to show that either is a famous mark. However, applicant simply misstates the law in saying that the Lanham Serial No. 77574384 - 14 - Act protects only famous marks. The cited registrations on the Principal Register are entitled to all the presumptions afforded a registrant under Section 7 of the Lanham Act. While it is true that a famous mark casts a larger shadow than a non-famous one, we presume that the cited marks are arbitrary for these goods and services, and the registrations are to be protected against a confusingly similar mark used in connection with the same or related goods and/or services. Additionally, absent the rigorous procedures of a concurrent use proceeding, a federal trademark registration is afforded nationwide protection in this context without regard to the trademark owner’s actual trading area. Finally, in responses to Office actions and in her brief, applicant notes her willingness to amend the drawing to include the wording, “Lifestyle Wear.” Perhaps applicant had in mind something like that shown on a hangtag made part of the record. However, as correctly noted by the Trademark Examining Attorney, applicant did not actually amend the application in this manner, and such an amendment, if submitted by applicant, may or may not have been approved by the Trademark Examining Attorney. In any case, she made clear to applicant, that this amendment, if it had been filed and then approved, would not have resulted in her withdrawing the Serial No. 77574384 - 15 - outstanding refusal to register under Section 2(d) of the Trademark Act. In conclusion, we find that applicant’s mark is quite similar to each of the cited marks, that her goods and services are overlapping with the first registrant’s goods in some cases, and closely related as to the remaining goods and services of both registrants, and that the cited marks are arbitrary and hence relatively strong as applied to the registrants’ goods and services. Decision: The refusal to register under Section 2(d) of the Lanham Act is hereby affirmed.