No. 79184755 (T.T.A.B. Nov. 17, 2017)

Kai Haenel

Trademark Trial and Appeal BoardNov 17, 2017

No. 79184755 (T.T.A.B. Nov. 17, 2017)

This Opinion is Not a Precedent of the TTAB Mailed: November 17, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board _____ In re Kai Haenel _____ Serial No. 79184755 _____ Anthony J. Malutta of Kilpatrick Townsend & Stockton LLP for Kai Haenel. Allison P. Schrody, Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney. _____ Before Kuhlke, Wellington, and Goodman, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Kai Haenel (“Applicant”) seeks registration on the Principal Register of the standard character mark TOPLINE POWER for the following services in International Class 41:1 1 Application Serial No. 79184755 was filed based on Applicant’s ownership of an International Registration, under Section 66(a) of the Trademark Act, and has been accorded a filing date of November 26, 2015. The application also includes services in International Class 35 which are not subject to refusal. Serial No. 79184755 - 2 - Basic and advanced training in the field of market analysis, price management and price assessment; education, namely, providing seminars, workshops and conferences in the field of market analysis, price management, and price assessment; organization and arranging of educational seminars, workshops and conferences within the scope of management, namely, in the field of market analysis, price management, and price assessment; arranging of educational seminars in the field of market analysis, price management and price assessment. The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark TOPLINE LEADERSHIP INC., in standard characters, for services that include “educational services, namely, seminars on the subjects of sales and sales management” in International Class 41.2 The term INC. has been disclaimed. Although the involved application also covers services in International Class 35, the Examining Attorney specifically “limited the refusal to applicant’s services in International Class 41 only.”3 After the Examining Attorney made the refusal final, Applicant appealed and filed a request for reconsideration. The Examining Attorney denied the request for reconsideration and the appeal has been briefed. For the following reasons, we affirm the refusal to register with respect to the services in International Class 41. Likelihood of Confusion Our determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours 2 Registration No. 2656076 issued on December 3, 2002, and has been renewed. 3 11 TTABVUE 3. Serial No. 79184755 - 3 - & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, hereinafter referred to as “du Pont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relatedness of the goods or services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”). A. Similarity of the Marks We find Applicant’s TOPLINE POWER mark and Registrant’s TOPLINE LEADERSHIP INC. are similar “in their entireties as to 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). Although the shared term, TOPLINE, is followed in each mark with a term that is not found in the other mark, we must keep in mind that the test is not whether the marks can be distinguished in a side-by-side comparison; rather, we must consider whether the marks’ overall commercial impressions are so similar that confusion as to the source of the goods or 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); see also Edom Labs Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). Serial No. 79184755 - 4 - As to the common term in the marks, TOPLINE, we point to the significance of it appearing first and that it is “most likely to be impressed upon the mind of a purchaser and remembered.” See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). This obviously creates a significant visual resemblance between the two marks and makes them sound similar. The compound term “topline” has no demonstrated significance or special meaning in the context of Applicant’s or Registrant’s services. To the extent the term conjures the phrase “top of the line,” the term may be understood by consumers as suggestive of superior instructional services being offered by Applicant and Registrant. We have considered the possibility that the additional, non-shared terms help consumers distinguish the two marks. However, in this regard, we disagree with Applicant’s argument that: [T]he addition of POWER to TOPLINE conveys an entirely different commercial impression than that of the Cited Mark. As noted in the Request for Reconsideration, the owner of the Cited Mark successfully argued that the addition of LEADERSHIP INC. to its mark when compared to two prior registered TOPLINE marks “[n]ot only. . . add[s] visual and phonetic differences, it suggests qualities important in sales professionals; the same word has little to do with market research.”4 … As such, the Cited Mark conveys, somewhat suggestively, that its services provide a path to sales management leadership. Conversely, Applicant’s Mark is far more arbitrary in that it does not immediately convey the services offered under the mark. Rather, it alludes at most to an ability to achieve a high level of success through a charge or surge of power or assistance – namely through the combination of TOPLINE, implying a high level of achievement, and POWER, implying gaining supremacy and control, or in the alternative, power in the electrical sense. Accordingly, 4 Applicant cites to a copy of a response to an Office action filed by registrant during the prosecution of the application that matured into the cited registration. Attached to Applicant’s request for reconsideration (8 TTABVUE 28-29). Serial No. 79184755 - 5 - despite their common component, Applicant’s Mark and the Cited Mark leave entirely distinct commercial impressions upon consumers, and therefore, should not be regarded as confusingly similar. Specifically, we find that the two additional terms, LEADERSHIP and POWER, do not convey such different connotations or create different overall commercial impressions. Actually, the terms may be understood in a similar manner given that “power” is defined as “legal or official authority, capacity, or right” and “leadership” is defined as the “capacity to lead.”5 Thus, the terms are somewhat complimentary in the field of management educational services. That is, if one acquires power, he or she may have the capacity to lead; or, put differently, those striving to be in management leadership positions will require power and authority in order to lead. Ultimately, although the additional terms are different, they do not sufficiently change the overall meaning of the respective marks. We agree with the Examining Attorney that “consumers who are already familiar with registrant’s mark TOPLINE LEADERSHIP INC. … are likely to assume that applicant’s mark TOPLINE POWER … simply represents new or special services offered from the registrant.”6 5 We take notice that these meanings, found in Webster’s New World College Dictionary, 4th ed. (Houghton Mifflin Harcourt 2010). 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). We further note that “Inc.” is merely an entity type designation and has no source-indicating capacity. See In re Piano Factory Grp., Inc., 85 USPQ2d 1522 (TTAB 2006); see also TMEP § 1213.03(d) (Oct. 2017). Accordingly, it has been disclaimed and does not help distinguish the marks. 6 11 TTABVUE 6. Serial No. 79184755 - 6 - Considering the marks in their entireties in the context of the involved services, we find the appearance, sound, connotation and commercial impression of Applicant’s TOPLINE POWER mark to be very close to the cited mark, TOPLINE LEADERSHIP INC., leading us to find that the du Pont factor regarding the similarity of the marks weighs in favor of finding confusion likely. See Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000) (“Once all the features of the mark are considered, . . . it is not improper to state 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.”). B. Relatedness of the Services, Trade Channels and Consumers We next consider the relatedness of the services. Here, we find that Registrant’s “educational services, namely, seminars on the subjects of sales and sales management” is broad enough to include, or at least be very closely related to, Applicant’s services “education, namely, providing seminars … in the field[s] of market analysis, price management, and price assessment … ; organization and arranging of educational seminars, workshops and conferences within the scope of management, namely, in the field of market analysis, price management, and price assessment; arranging of educational seminars in the field of market analysis, price management and price assessment.” In this regard and at the Examining Attorney’s request, we agree to take judicial notice of the following definition:7 7 Notre Dame, 213 USPQ at 596; and Red Bull, 78 USPQ2d at 1377. Definition from the online Oxford dictionary (“U.S. English” version), www.en.oxforddictionaries.com/definition/us/sale – 11 TTABVUE 7, note 1 (request) and 11 TTABVUE 15-16 (printouts of definition). Serial No. 79184755 - 7 - Sales: • a quantity or amount sold; [or] the activity or business of selling products; • a period during which a retailer sells goods at reduced prices. We also take judicial notice of the following relevant definition:8 Pricing Policy: • The area of business decision-making that involves setting price. Thus, the term “sales” may be understood fairly broadly to include the very broad idea or activity of a business of selling products. In which case, we agree with the Examining Attorney that “[a]rguably, ‘marketing’ and ‘pricing’ are subsets of the broader category ‘sales,’ … [and it] must be presume[d] that the Registrant’s seminars on ‘sales’ could encompass more particular topics … particularly the topics ‘market analysis,’ ‘price management’ or ‘price assessment.’”9 To the extent that Registrant provides seminars in the field of the latter meaning of sales, i.e., selling goods at reduced price for a certain period of time, this type of instruction is extremely similar to, or even encompassed by Applicant’s seminars in the fields of “price management and price assessment.” In support of the refusal, the Examining Attorney submitted printouts from various websites that discuss or advertise seminars aimed at businesses, sales and marketing professionals, and others.10 One such website, Karrass, offers an “Effective Negotiating” seminar and projects a scenario involving pricing for sales professionals (“You are negotiating … It’s with a major account over pricing issues on a new order 8 From The New Penguin Business Dictionary (Graham Bannock. Penguin, 2003). 9 11 TTABVUE 7-8. 10 Attached to Office action issued on May 15, 2017 (4-6 TTABVUE). Serial No. 79184755 - 8 - …”).11 Another website, HCDC, advertises a “Marketing/Sales strategies for Small Business” seminar which covers “developing your marketing plan, market research, and how to develop a sales plan.”12 This evidence helps demonstrate that sales and sales management are seminar topics that may cover or are closely related to pricing and market research. In addition, the Examining Attorney also submitted copies of the following three, use-based registrations:13 Reg. No. 4018895 for the mark PEOPLE + KNOWLEDGE ACCELERATING SALES covering services in International Class 41 that include the following: “providing training, workshops and seminars for others in the fields of market research … market analysis … sales, pricing …” in International Class 41; Reg. No. 4408468 for the mark MODEL N for services in International Class 41 that include the following: “educational services, namely, conducting classes, seminars, conferences, and workshops in … conducting analytics regarding optimization related to price setting, price execution and price management … marketing and sales resource and spend management and optimization”; and Reg. No. 5005771 for the mark CAMPBELL MARKETING & COMMUNICATIONS covering services in International Class 35 that include: “market analysis and research”; and services in International Class 41 that include: “educational services, namely, training in the fields of sales, promotion and marketing, and brand value recognition, promotion and marketing.” These registrations, while few in number, help further show that the topics covered by Applicant’s and Registrant’s instructional seminar services are of such a type that they may emanate from the same source. In re Aquamar, Inc., 115 USPQ2d 11 Id. at pp. 16-17. 12 Id. at 18. 13 Id. at 4-15. Serial No. 79184755 - 9 - 1122, 1126 n.5 (TTAB 2015); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785- 86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). As to the channels of trade and classes of purchasers for Applicant’s and Registrant’s services, the internet evidence shows that seminars like Applicant’s and Registrant’s may be advertised in online newspapers and websites and will be offered to business owners, sales and marketing professionals. This helps demonstrate the services have some common trade channels and will be offered to some of the same classes of purchasers. Accordingly, the du Pont factors relating to the similarity of the services, channels of trade, and classes of purchasers all favor a finding of likelihood of confusion. C. Other Factors and Arguments Applicant argues that his services are offered “globally … in a multitude of languages in a broad range of locations … [and that] consumers would not be likely to enroll in a conference halfway around the world in a different language by accident.”14 Applicant also asserts that registrant’s customers “are also sophisticated, and as seeking customized training plans” and “such services require extensive customer involvement.”15 However, because there are no restrictions in either Applicant’s or registrant’s recitation of services limiting their services with regard to how they are being offered, we must presume that their seminars will be offered in 14 9 TTABVUE 12. 15 Id. at 12-13. Serial No. 79184755 - 10 - the same manner as the seminars referenced in internet printouts submitted by the Examining Attorney. That is, they may be advertised online, with online registration, or through local newspapers and can take place at venues such as a community college or in an office. Applicant also argues that the cited mark is weak and not entitled to a broad scope of protection. Specifically, Applicant asserts that “[s]everal marks incorporating the phonetically equivalent term ‘TOPLINE’ coexist on the Register without any likelihood of confusion, including training services in the banking industry.”16 In support, Applicant references only three other live registrations for marks containing the term TOPLINE[R]. However, none of these registrations covers services similar to those of Applicant and registrant. Specifically, one registration involves “providing a web site featuring information for predictive modeling an analysis of sports,”17 the second involves “training in the field of banking for the banking industry,”18 and the third involves “training … in the field of swimming pool maintenance.”19 Thus, the existence of these registrations, for clearly unrelated services, do not support Applicant’s argument. At best, they show that three other entities in three other diverse fields chose to adopt the same term TOPLINE[R] as part of their marks. Finally, we note that in his request for reconsideration Applicant asserts that he and “the owner of the cited mark have been negotiating a valid consent agreement 16 Id. at 13. 17 Reg. No. 4728245 for the mark TOPLINE GAME LABS. 18 Reg. No. 4098846 for the mark TOPLINE TRAINING BOTTOM LINE GROWTH. 19 Reg. No. 4326341 for the mark TOPLINER (stylized). Serial No. 79184755 - 11 - whereby Applicant agrees to narrow the scope of its description of services to expressly exclude any services related to the subjects of sales and sales management in Class 41.”20 Applicant attached a copy of such an agreement signed only by Applicant. Applicant does not mention the possibility of a consent agreement in his appeal brief or mention that negotiations are ongoing. Accordingly, we give this no further consideration. Conclusion Based on the overall strong similarity of the marks, the relatedness of the services identified in Class 41, and the overlap in trade channels and classes of consumers, we find that Applicant’s mark, TOPLINE POWER, is likely to cause confusion with the cited registered mark, TOPLINE LEADERSHIP INC. Decision: The refusal to register Applicant’s mark in International Class 41 is affirmed. The application will be forwarded, in due course, for publication in International Class 35. 20 8 TTABVUE 4.