Joseph Tsiyoni d/b/a Shairon Int’l Trade

Trademark Trial and Appeal Board

Nov 14, 2013

No. 85737891 (T.T.A.B. Nov. 14, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
November 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Joseph Tsiyoni d/b/a Shairon Int’l Trade
_____

Serial No. 85737891
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Joseph Tsiyoni, pro se.

Robin Mittler, Trademark Examining Attorney, Law Office 117 (Brett J. Golden,
Managing Attorney).
_____

Before Grendel, Greenbaum and Adlin, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Joseph Tsiyoni d/b/a Shairon Int’l Trade (“applicant”) filed, on September 25,
2012, an application to register on the Principal Register the standard character
mark PRIDER for goods ultimately identified as “Motor standing scooters,
Motorized personal mobility scooters, personal mobility device namely standing
motor scooters for multi purposes, for persons who can stand and drive” in
International Class 12.1

1 Asserting February 10, 2009, as the date of first use, and September 21, 2012, as the date
of first use in commerce.
Serial No. 85737891
2

The 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
applied to applicant’s goods, so resembles the following previously registered
standard character marks, all owned by Pride Mobility Products Corporation, as to
be likely to cause confusion:
PRIDE for “electrically powered scooter vehicles for use by
elderly, infirm or disabled persons” in International Class
12;2
PRIDE MOBILITY PRODUCTS (the words “Mobility
Products” disclaimed) for “lift chairs for use primarily by
elderly, disabled and infirm persons, electrically powered
scooter vehicles, powerchairs and wheelchairs for use
primarily by elderly, disabled and infirm persons” in
International Class 12;3
PRIDE for “electrically driven mid-wheel drive powered
wheelchairs” in International Class 12;4
PRIDE--THE FIRST NAME IN SCOOTERS for
“Electrically powered scooter vehicles for use primarily by
elderly, disabled and infirm persons” in International
Class 12;5
PRIDE for “Pre-recorded audio visual playback media,
namely, compact discs, digital video discs and video tapes
encoded with promotional and instructional information
concerning sales, service, maintenance and/or use of
electrically powered scooter vehicles, power chairs,
wheelchairs, lift chairs and accessories for the same, all
such vehicles and chairs being for use by elderly,
infirmed, handicapped and/or disabled persons” in
International Class 9;6 and

2 Reg. No. 1790294. Renewed.
3 Reg. No. 2476247. Renewed.
4 Reg. No. 2484480. Renewed.
5 Reg. No. 2942281. Section 8 & 15 combined declaration accepted and acknowledged.
6 Reg. No. 2996410. Section 8 & 15 combined declaration accepted and acknowledged.
Serial No. 85737891
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PRIDE for “Electrical, mechanical and hydraulic lifts for
personal mobility vehicles, personal mobility vehicle
accessories, and equipment, including repair and
replacement parts therefor; ramps for use in loading and
unloading personal mobility vehicles onto and off of
automobiles, vans and trucks” in International Class 12;7
This appeal ensued following applicant’s unsuccessful request for reconsideration.
Before we turn to the merits of the case, we must address two preliminary
issues. First, the examining attorney's objection to late-filed evidence is sustained.
Trademark Rule 2.142(d). The exhibits attached to applicant's brief comprise more
than 150 pages, much (and possibly all) of which appears to be included in the
approximately 190 pages that applicant attached to his response to the first Office
action and/or the approximately 225 pages that applicant attached to his request for
reconsideration. “The record in the application should be complete prior to the filing
of an appeal. The Trademark Trial and Appeal Board will ordinarily not consider
additional evidence filed with the Board by the appellant or by the examiner after
the appeal is filed.” 37 C.F.R. § 2.142(d). See In re Giovanni Food Co., 97 USPQ2d
1990, 1990-91 (TTAB 2011). The applicant has the responsibility to make sure that
the record is complete prior to filing a notice of appeal. In re Van Valkenburgh, 97
USPQ2d 1757, 1768 n.32, 1769 (TTAB 2011). Rather than engaging in a time-
consuming comparison of the attachments to the brief and the previously-filed
material, we have only considered the previously-filed material, because even if
some of the attachments to applicant’s brief were not previously filed, they are late,
and cannot be considered.

7 Reg. No. 4219174, issued October 2, 2012.
Serial No. 85737891
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Second, the examining attorney raised a “conduct-based objection” directed to
applicant’s inclusion, on the first and last pages of his brief, of a cartoon figure
seated in a wheelchair with his middle finger extended upwards and a partial
verbal bubble containing symbols usually associated with expletives. Applicant
labels the graphic a “wheelchair representing registrant.” We agree with the
examining attorney that applicant should not have included this unseemly graphic
in his brief. We therefore sustain the objection to the extent that we remind
applicant that the Board expects all parties, whether represented by counsel or
proceeding pro se, “to conduct their business with decorum and courtesy.” 37 C.F.R.
§ 2.192. However, we will not require applicant to submit a substitute brief without
the graphic because the inclusion or exclusion of the graphic has no effect on our
decision on the merits.
We now turn to the merits of this proceeding. 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., 476 F.2d 1357, 177 USPQ 563, 567 (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, two key considerations are
the similarities between the marks and the similarities between the goods or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976).
We begin by considering the similarity between the respective goods,
channels of trade and classes of purchasers. It is sufficient to find goods to be
Serial No. 85737891
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similar where the circumstances surrounding their marketing are such that they
would be encountered by the same potential purchasers under circumstances that
would give rise to the mistaken belief that they originate from the same source. On-
line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir.
2000). The issue is not whether the goods will be confused with each other, but
rather whether the public will be confused as to their source. Safety-Kleen Corp. v.
Dresser Indus. Inc., 518 F.2d 1399, 186 USPQ 476, 480 (CCPA 1975). Finally, we
base our evaluation on the goods as they are identified in the application and cited
registrations. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
The “electrically powered scooter vehicles8 for use by elderly, infirm or
disabled persons” identified in cited Reg. No. 1790294 (for PRIDE), and the
“electrically powered scooter vehicles” with the intended users listed in a slightly
different order, identified in cited Reg. Nos. 2476247 (for PRIDE MOBILITY
PRODUCTS) and 2942281 (for PRIDE-THE FIRST NAME IN SCOOTERS),
encompass the “motor standing scooters,” “motorized personal mobility scooters,”
and “personal mobility device namely standing motor scooters for multi purposes,
for persons who can stand and drive” identified in the involved application. Because

8 “Vehicle” is defined as “a machine that is used to carry people or goods from one place to
another.” Merriam-Webster Online Dictionary, retrieved from merriam-
webster.com/dictionary/vehicle. 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, 596 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries
that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78
USPQ2d 1375, 1378 (TTAB 2006).
Serial No. 85737891
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applicant does not specify the users of his “motor standing scooters” or “motorized
personal mobility scooters,” and broadly identifies “persons who can stand and
drive” as the intended users of his “personal mobility device namely standing motor
scooters for multi purposes,” his goods, as identified, encompass scooters for elderly,
disabled, and infirm individuals. The identifications of goods in the cited
registrations do not exclude “persons who can stand and drive,” and we cannot read
such a limitation into registrant’s identification of goods. While some elderly,
disabled and infirm individuals undoubtedly cannot stand and drive, others surely
are able to do so. Thus, as to those registrations, the goods are legally identical.
Moreover, with regard to the remaining registrations for PRIDE, we find that
registrant's wheelchairs, lifts and ramps, and recorded information about these
products, have similar or related functions and purposes as applicant’s scooters. All
of these items are designed to assist people with mobility limitations. In addition,
the examining attorney submitted approximately ten use-based, third-party
registrations showing, in each instance, that the same mark has been registered to
different owners for both applicant's and registrant's types of products.9 These
third-party registrations, while not evidence of use of the marks therein, may serve
to suggest that the goods are of a type which may emanate from a single source.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). See,
e.g., Reg. No. 3145417 (motorized and non-motorized mobility scooters, electric
mobility scooters, wheelchairs and electric wheelchairs); Reg. No. 3352455
(accessibility devices, namely, wheelchair lifts, mobility scooter lifts, power

9 January 30, 2013 Office action.
Serial No. 85737891
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wheelchair lifts, power operated stairlifts and vertical platform lifts; and personal
mobility devices, namely, manual wheelchairs, power wheelchairs and motorized,
self-propelled, wheeled personal mobility devices, namely, scooters); Reg. No.
3467981 (personal mobility vehicles, namely, motorized scooters, and manual and
motorized wheelchairs for elderly, disabled, infirm and handicapped individuals;
lifts attached to vehicles for lifting scooters and manual and motorized wheelchairs
into or onto automobiles or other vehicles); Reg. No. 4166720 (chair lifts,
wheelchairs, motorized personal mobility scooters, power transfer seats for vehicles
to provide easier ingress and egress from a vehicle for disabled of mobility impaired
people); Reg. No. 3972407 (power and manual wheelchairs, motorized scooters, and
chair lifts).
As further evidence of the relationship between applicant’s and registrant’s
goods, the examining attorney submitted printouts from third-party websites that
offer various types of mobility aids, including several types of scooters and/or
wheelchairs, lifts and ramps, under the same mark. See, e.g., webpages for United
Seating & Mobility , Mrs. Mobility and
Hoveround .10
Further, because the identifications in the application and cited registrations
contain no limitations as to channels of trade, we must presume that they move in
all channels of trade normal for those goods. In re Viterra, Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012), quoting Hewlett-Packard Co., 62 USPQ2d at
1005. Because the goods are mobility and accessibility devices, the goods are

10 January 30, 2013 Office action.
Serial No. 85737891
8

presumed to be sold through medical equipment suppliers. Further, as discussed
above, as identified in the application and cited registrations, the intended classes
of consumers for applicant’s and registrant’s goods overlap, and would include those
with mobility impairments. In addition, the third-party registrations and websites
of record, including those mentioned above, demonstrate that applicant’s scooters
and registrant’s wheelchairs, lifts and ramps are of a type that in fact move in the
same channels of trade, and would be encountered by the same classes of
consumers.
Accordingly, we find that applicant’s and registrant’s goods are legally
identical or otherwise related accessibility and mobility devices, and that they are
offered in the same channels of trade to the same potential customers.
We turn then to the du Pont factor of the similarity of the marks, i.e.,
whether applicant’s mark PRIDER and registrant’s marks PRIDE, PRIDE
MOBILITY PRODUCTS and PRIDE-THE FIRST NAME IN SCOOTERS are
similar or dissimilar when compared in their entireties in terms of 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. 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. Further, in making our
Serial No. 85737891
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determination, we keep in mind that where, as here, the goods are legally identical,
the degree of similarity between the marks necessary to support a determination
that confusion is likely declines.11 Viterra, 101 USPQ2d at 1908; In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital
Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
Applicant’s mark PRIDER is highly similar in appearance and sound to
registrant’s mark PRIDE, the mark in four of the cited registrations, differing only
by the final letter “R” in applicant’s mark. Slight differences in marks do not
normally create dissimilar marks. In re Great Lakes Canning, Inc., 227 USPQ 483,
485 (TTAB 1985) (“Moreover, although there are certain differences between the
[marks’ CAYNA and CANA] 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.”). See
also United States Mineral Products Co. v. GAF Corp., 197 USPQ 301, 306 (TTAB
1977) (“‘AFCO’ and ‘CAFCO,’ which differ only as to the letter ‘C’ in USM’s mark,
are substantially similar in appearance and sound”) and In re Bear Brand Hosiery

11 As discussed above, the goods identified in Reg. Nos. 1790294, 2476247 and
2942281, for PRIDE, PRIDE MOBILITY PRODUCTS and PRIDE-THE FIRST
NAME IN SCOOTERS, respectively, are legally identical to the goods identified in
the application.
Serial No. 85737891
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Co., 194 USPQ 444, 445 (TTAB 1977) (“The mark of the applicant, ‘KIKS’ and the
cited mark ‘KIKI’ differ only in the terminal letter of each mark. While differing
in sound, the marks are similar in appearance and have a somewhat similar
connotation.”).
PRIDE also is the most prominent part of registrant’s marks PRIDE-THE
FIRST NAME IN SCOOTERS and PRIDE MOBILITY PRODUCTS as it is the first
word in both marks. See Palm Bay, 73 USPQ2d at 1692; see also Presto Products
Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the
first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered.”). The slogan PRIDE-THE FIRST NAME IN
SCOOTERS emphasizes the word PRIDE, stressing that PRIDE is “the first name
in scooters.” Moreover, at a minimum, the disclaimed wording MOBILITY
PRODUCTS merely describes a significant feature of registrant’s wheelchairs, lifts,
scooters, etc. Descriptive and disclaimed matter typically is less significant or less
dominant when comparing marks. See In re Dixie Restaurants, Inc., 105 F.3d 1405,
1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re National Data Corp, 753
F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985).
Furthermore, PRIDER is a telescoped term consisting of the recognizable
words PRIDE and RIDER. As such, PRIDER and PRIDE have related connotations
and create the same overall commercial impression, namely, mobility products that
individuals (riders) use with pride. Moreover, purchasers reasonably could assume
Serial No. 85737891
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that registrant refers to users of its PRIDE products (or the users refer to
themselves) as “PRIDERs.”
Due to the overall similarities in sound, appearance, connotation and
commercial impression, purchasers likely will assume that applicant’s goods sold
under the PRIDER mark constitute a new or related product line from the same
source as the goods sold under the PRIDE and PRIDE-inclusive marks with which
they are acquainted, with the “R” possibly referring to a particular model of
registrant’s PRIDE scooters. Applicant’s specimens, which display the mark as
“PrideR”, support this interpretation.
Therefore, we find that when applicant's mark and registrant's marks are
compared in their entireties, they are sufficiently similar in appearance, sound,
connotation and commercial impression that, if used in connection with related
goods, confusion would be likely to occur.
Applicant has peppered his brief with references to issues that are not
pertinent to our determination, such as acquired distinctiveness, acceptability of
specimens, laches, and consent or concurrent use agreements. We need not discuss
these issues, and focus instead on arguments directed to the relevant du Pont
factors. To this end, applicant raises numerous arguments to support his position
that confusion is unlikely because the marks, goods, classes of consumers and
channels of trade differ, and the consumers are sophisticated.
As to the similarity of the goods, as noted above, the issue is not whether the
goods will be confused with each other, but rather whether the public will be
Serial No. 85737891
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confused about their source. Majestic Distilling, 65 USPQ2d at 1205; In re Shell Oil
Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993). Clearly,
consumers routinely are exposed to these types of goods coming from the same
source. The cited registrations for various accessibility and mobility devices,
including those of applicant and registrant, and examples of third-party websites
submitted by the examining attorney, wherein scooters, wheelchairs, lifts, ramps
and scooter parts are sold on the same site under the same mark, further support
this conclusion.
As to applicant’s arguments regarding the differences between standing and
seated scooters, we refer to the EV Rider “Stand-N-Ride” Electric Scooter, offered on
the Electric Scooters Galore website .12 This product
transforms from a standing into a sitting scooter, thus indicating that standing and
sitting scooters may be one in the same. In addition, we note that the “motorized
personal mobility scooters” identified in the application are not limited to “standing”
scooters, and registrant’s “electrically powered scooter vehicles” do not specify
whether they are standing or sitting scooters. As noted above, the question of
likelihood of confusion is determined based on the identification of goods set forth in
the application and registrations at issue, not on extrinsic evidence of actual use.
See, e.g., Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101
USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom, 16 USPQ2d at 1787. Also as noted
above, unrestricted and broadly-worded identifications of goods are presumed to
encompass all goods of the type described. See In re Jump Designs, LLC, 80

12 June 14, 2013 Denial of Request for Reconsideration.
Serial No. 85737891
13

USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB
1981)). Consequently, applicant’s “motorized personal mobility scooters” and
registrant’s “electrically powered scooter vehicles” include both sitting and standing
scooters.
Applicant also argues that the classes of consumers are different because
there is no evidence that they are the same, and because “PrideR is for everyone
who can stand but can’t walk long; Pride wheelchairs are only for ‘elderly, disabled
and infirm persons.’” App. Br., pp. 4, 21. However, as the examining attorney aptly
notes, the “persons who can stand and drive” limitation pertains only to one item in
applicant’s identification of goods; the other two items contain no such limitation.
Moreover, an individual who can stand and drive but is unable to walk for a long
time or over a long distance may have such physical limitations due to age,
disability or infirmity. Thus, the intended users, as identified in the application and
registrations, may be identical. In addition, the identification of goods in cited Reg.
No. 2476247 includes lift chairs and electrically powered scooter vehicles and
wheelchairs “for use primarily by elderly, disabled and infirm persons,” with the
word “primarily” indicating that others, such as “those who can stand but can’t walk
long,” may use the goods, and the identification of goods in cited Reg. No. 2484480 is
for “electrically driven mid-wheel drive powered wheelchairs” with no limitations as
to intended users.
Next, applicant argues that the channels of trade are different because there
is no evidence that wheelchairs are sold online, as are applicant’s scooters.
Serial No. 85737891
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However, the application and cited registrations do not specify whether they are
sold online or in brick and mortar stores, and we cannot presume that registrant
does not sell wheelchairs online or that applicant only sells scooters online, when
such limitations are absent from the application and registrations. Viterra, 101
USPQ2d at 1908, quoting Hewlett-Packard, 62 USPQ2d at 1005 (absent restrictions
in an application and/or registration, the identified goods are “presumed to travel in
the same channels of trade to the same class of purchasers.”). In any event, the
record includes printouts of web pages from the heartwayusa.com and
unitedseating.com websites, each of which shows scooters and wheelchairs for sale
at an “Online Store” associated with the website.13
Applicant further contends that registrant does not actually make scooters
because registrant’s goods have more than two wheels, and that “scooters” should
not have been included in the registrant’s identifications of goods. However, a
trademark or service mark registration on the Principal Register is prima facie
evidence of the validity of the registration and the registrant’s exclusive right to use
the mark in commerce in connection with the specified goods and/or services. 15
U.S.C. § 1057(b). Consequently, such arguments constitute an impermissible
collateral attack on the cited registrations, and may not be considered in an ex parte
proceeding. See Dixie Restaurants, 41 USPQ2d at 1534-35; In re Peebles Inc., 23
USPQ2d 1795, 1797 n.5 (TTAB 1992).
As to applicant’s argument that purchasers of mobility devices are
sophisticated and would exercise care in buying such products, it is well-settled that

13 January 30, 2013 Office action.
Serial No. 85737891
15

even if purchasers are sophisticated or knowledgeable in a particular field, that
does not necessarily mean that they are sophisticated or knowledgeable in the field
of trademarks or immune from source confusion. This is especially true in cases
such as the instant one, involving similar marks and legally identical and otherwise
closely related goods. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ
49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman & Holden
Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of
discriminating purchasers ... are not infallible.”). See also In re Decombe, 9 USPQ2d
1812 (TTAB 1988). We find that the similarities between the marks and the goods
sold thereunder outweigh any sophisticated purchasing decision. See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) (similarities of goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods).
As to the marks, applicant argues, without support, that PRIDE is weak and
diluted. The third-party registrations that applicant made of record do not include
the word PRIDE, or any derivative thereof, and none of the registrations identifies
mobility devices such as those identified in the involved application or cited
registrations. Therefore, while third-party registrations may be used to show that a
term has some significance in the industry such that consumers would look to other
elements of the mark to distinguish source, the third-party registrations that
applicant submitted have little probative value on this point. Moreover, there is no
Serial No. 85737891
16

other evidence that third-parties use the word PRIDE or any derivative thereof to
identify the source of such mobility devices.
When we consider the record and the relevant likelihood of confusion factors,
and all of applicant’s arguments relating thereto, including arguments not
specifically addressed herein, we conclude that in view of the substantial similarity
in the appearance, sound and commercial impression of applicant’s mark, PRIDER,
and registrant’s marks, PRIDE, PRIDE MOBIILTY PRODUCTS and PRIDE-THE
FIRST NAME IN SCOTERS, their contemporaneous use on the legally identical
and otherwise closely related goods involved in this case is likely to cause confusion
as to the source or sponsorship of such goods. To the extent that any of applicant's
arguments raises a doubt about likelihood of confusion, that doubt is required to be
resolved in favor of the prior registrant “because the newcomer has the opportunity
and obligation to avoid confusion with existing marks.” Hewlett-Packard, 62
USPQ2d at 1003.
Decision: The refusal of registration under Trademark Act Section 2(d) is
affirmed.