No. 86829371 (T.T.A.B. Feb. 1, 2017)

Karacus LLC

Trademark Trial and Appeal BoardFeb 1, 2017

No. 86829371 (T.T.A.B. Feb. 1, 2017)

This Opinion is Not a Precedent of the TTAB Mailed: February 1, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Karacus LLC _____ Serial No. 86829371 _____ Kevin Keener of Keener and Associates, PC for Karacus LLC. Christina Sobral, Trademark Examining Attorney, Law Office 109, Michael Kazazian, Managing Attorney. _____ Before Taylor, Adlin and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: Karacus LLC (“Applicant”) seeks registration on the Principal Register of the mark KARACUS in standard characters for “Smart watches comprised primarily of Serial No. 86829371 - 2 - a wristwatch and also featuring software and display screens for viewing, sending and receiving texts, emails, data and information” in International Class 9.1 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 for a variety of goods and services in three classes, including “horological and chronometric instruments; chronometers; and watch chains” in International Class 14.2 After the Examining Attorney made the refusal final, Applicant appealed and requested reconsideration. On remand, the Examining Attorney denied the request for reconsideration. The appeal resumed and has been fully briefed. We affirm the refusal to register. Likelihood of Confusion Our determination under Section 2(d) requires an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours & 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 1 Application Serial No. 86829371 was filed November 23, 2015 based on use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). 2 Registration No. 4169808 issued July 12, 2012. Serial No. 86829371 - 3 - the marks and the relatedness of the goods. 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 and differences in the marks.”). While Applicant limits its arguments against the refusal to a single du Pont factor, the relatedness of the goods, we consider all factors about which there is evidence of record. A. Similarity of the Marks Turning first to the comparison of the applied-for and cited mark, we consider them “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). The test assesses not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the goods 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 Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). Applicant’s proposed mark consists only of the term KARACUS, which Applicant indicates has no meaning in a foreign language, and the mark in the cited registration consists of the term CARACAS with a flower design. The two marks are essentially phonetic equivalents. Any minor differences in the sound of these marks would go Serial No. 86829371 - 4 - undetected by consumers and, therefore, would not be sufficient to distinguish the marks. Cf In re Viterra Inc., 671 F3d 1358, 101 USPQ2d 1905, 1913 (Fed. Cir. 2012) (“there is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner”). Visually, the marks appear similar because the applied-for mark consists of a very similar term which differs by only two letters from the dominant and literal element of the registered mark. Applicant’s standard character mark could be presented in the identical font to that used in the cited mark. See id. at 1909; see also 37 C.F.R. § 2.52(a). While the registered mark contains a design element, we do not find it particularly prominent, and we give the word greater weight in this analysis because consumers likely would focus on it as the indication of origin because they would use CARACAS when calling for the goods. See Viterra, 101 USPQ2d at 1911. Considering the marks in their entireties, they are quite similar visually, are phonetically identical and to the extent they convey a particular commercial impression, it would be similar. This factor weighs in favor of likely confusion. B. The Goods, Trade Channels, and Classes of Consumers In comparing the goods, the test is not whether consumers would be likely to confuse the goods, but rather whether they would be likely to be confused as to their source. In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012). Therefore, to support a finding of likelihood of confusion, the goods need not be identical or even competitive. “Rather, it is sufficient that the goods are related in some manner, or that the circumstances surrounding their marketing are such that they would be Serial No. 86829371 - 5 - encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief that they originate from the same source or there is an association or connection between the sources of the goods.” In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). We must focus on the goods as identified in the application and cited registration, not on any extrinsic evidence of actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The subject application identifies “Smart watches comprised primarily of a wristwatch and also featuring software and display screens for viewing, sending and receiving texts, emails, data and information,” while the cited registration’s goods include “horological and chronometric instruments; chronometers; and watch chains.” A “chronometer” is defined as a “timepiece; especially: one designed to keep time with great accuracy.”3 The record includes strong marketplace evidence of the relatedness of smart watches such as Applicant’s and chronometers, as identified in the cited registration. As background, the term “chronograph,” used in some of the marketplace evidence, 3 Merriam-Webster.com, entry for “chronometer,” accessed January 27, 2017. 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 have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). A consistent definition appears in the online Collins English Dictionary (American English): “an instrument for measuring time precisely; highly accurate kind of clock or watch, as for scientific use”). Collinsdictionary.com, entry for “chronometer,” accessed January 30, 2017. Serial No. 86829371 - 6 - refers to “an instrument for measuring and recording time intervals,”4 which the Court of Appeals for the Federal Circuit has noted can include both watches and time recording devices. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007). We therefore find the “chronograph” watches in the marketplace evidence of record to be a type of chronometer. The following examples show entities offering smart watches such as those in Applicant’s identification under the same mark as watches that are encompassed by the cited registration’s identification of goods: • Under the FOSSIL mark, the Nordstrom.com website offers goods designated “Men’s Smart Watches”5 and “Men’s Chronograph Watches,”6 and the Macys.com website offers the “Fossil Men’s Q Founder Black Leather Strap Smartwatch,” the “Fossil Men’s Chronograph Q Pilot Brown Leather Strap Smartwatch,” the “Fossil Men’s Chronograph Q Pilot Smoke-Tone Stainless Steel Bracelet Smartwatch,” and the “Fossil Men’s Chronograph Decker Black Silicone Strap Watch;”7 • Under the MOVADO mark, the Nordstrom.com website offers goods designated “Men’s Smart Watches”8 and “Men’s Chronograph Watches;”9 • Under the MICHAEL KORS mark, michaelkors.com offers traditional watches as well as goods designated “smartwatches”;10 • Under the ALPINA mark, goods include “Horological Smartwatches” as well as “Chronographs;”11 4 Id., entry for “chronograph,” accessed January 27, 2017. 5 May 13, 2016 Office Action at 66, 68-71. 6 Id. at 45, 47, 52, 54-56, 58-60, 62, 64. 7 Id. at 86, 103. 8 Id. at 68, 70, 72, 77. 9 Id. at 49-54, 60; see also September 12, 2016 Denial of Reconsideration at 73-82 (Movado.com). 10 September 12, 2016 Denial of Reconsideration at 39-48. 11 Id. at 62-66 (alpinawatches.com; google.com). Serial No. 86829371 - 7 - In addition to this evidence, the record includes media articles demonstrating that traditional high end watchmakers also offer smart watches bearing the same brand names as the traditional watches. Specifically, an article in Chief Executive Magazine bears the title “Luxury Watch-Makers Join the Smart Watch Game,” and details how “manufacturers of luxury watches have jumped on the smart watch trend,” mentioning Breitling, Tag Heuer, Frederique Constant and Movado as examples.12 In addition, an online article from Fortune Magazine discusses the entry of traditional luxury watchmakers into the smart watch market, noting that watchmaker TAG Heuer will offer a smart watch in partnership with Google and Intel, and “Frederique Constant and Alpina is developing a phone-agnostic Horological Smartwatch….”13 These media articles provide further evidence of consumer exposure to traditional and smart watches sold under the same mark. As further evidence of relatedness, numerous use-based third-party registrations identify goods such as Applicant’s as well as the relevant goods in the cited registration. This suggests that such goods may emanate from the same source. See Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1432 (TTAB 2013) (“The use-based, third-party registrations . . . also have probative value to the extent that they serve to suggest that the goods listed therein are of a kind which may emanate from a single source under a single mark.”); see also In re Infinity 12 September 12, 2016 Denial of Reconsideration at 7-12 (chiefexecutive.net). 13 September 12, 2016 Denial of Reconsideration at 2-6 (fortune.com). Serial No. 86829371 - 8 - Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). For example: • Registration No. 4709145 for VOCEAMA covers goods that include “Horological and chronometric instruments” and “Watches,” including specifically, “Smart watches;”14 • Registration No. 4676500 for BOROUGH 6 covers goods that include “Chronometric instruments,” “Watch chains” and “Watches,” including specifically “Smart watches;”15 • Registration No. 4856573 for a design mark covers goods that include “Watches,” “Chronometric apparatus and instruments” and “Smart watches comprised primarily of a wristwatch also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information;”16 • Registration No. 4798411 for MONTRICHARD covers goods that include “Chronometric instruments,” “Watches,” “Smart watches comprised primarily of a wristwatch also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information,” and “Watch chains;”17 • Registration No. 4803917 for GOSASA covers goods that include “Chronometers; Chronometric instruments,” “watches,” “Smart watches comprised primarily of a wristwatch also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information,” and “Watch chains;”18 • Registration No. 4827142 for GOLD EDITION identifies goods that include “Horological and chronometric instruments,” “Smart watches comprised primarily of a wristwatch also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information,” and “Watch chains;”19 14 March 15, 2016 Office Action at 5-8. 15 Id. at 9-11. 16 Id. at 12-14. 17 Id. at 15-17. 18 Id. at 18-20. 19 Id. at 21-23. Serial No. 86829371 - 9 - • Registration No. 4912502 for TOMORO identifies goods that include “Chronometric instruments,” “Smart watches comprised primarily of a wristwatch also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information,” and “Watch chains,” and “Watches;”20 and • Registration No. 4912732 for MIKOL and design identifies goods that include “Chronometric instruments,” “Horological and chronometric instruments,” “Smart watches comprised primarily of a wristwatch and also featuring marble,” “Timepieces,” “Watch chains,” and “Watches.”21 Applicant contends that “chronometers” are “primarily antique style watches that users need to wind or are pocket watches.”22 However, based on the dictionary evidence, which is consistent with Applicant’s own Wikipedia submission,23 we find that the identified chronometers and chronometric instruments in the cited registration are not limited to antique style watches or pocket watches. See Thor Tech, 85 USPQ2d at 1477 (“A term in an identification of goods should be read to have its ordinary meaning.”); see also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“the identification of goods/services statement in the registration … frames the issue.”). Because the evidence shows the relatedness of traditional watches, chronographs, watch chains, and smart watches, Applicant’s arguments about their differences are unavailing. Similarly, we reject Applicant’s assertion that because it amended its 20 Id. at 24-26. 21 Id. at 27-29. 22 10 TTABVUE 9 (Applicant’s Brief). 23 August 16, 2016 Request for Reconsideration at 29-32 (Wikipedia.org) (Wikipedia entry for “Chronometer watch” defines a chronometer as “a specific type of timepiece tested and certified to meet certain precision standards”). Serial No. 86829371 - 10 - application to reclassify its smart watches in International Class 9, the smart watches “are in an unrelated class of goods where there is no overlap” with those in the cited registration. As noted in Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993), classification is “wholly irrelevant to the issue of registrability under section 1052(d), which makes no reference to classification.” See 15 U.S.C. § 1112 (“The Director may establish a classification of goods and services, for convenience of Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights”). Turning to the trade channels, the evidence discussed above clearly shows that smart watches move in the same trade channels and to the same consumers as horological and chronometric instruments and chronometers. The second and third du Pont factors strongly weigh in favor of a finding of likely confusion. Conclusion We have considered all of the arguments and evidence of record concerning all relevant du Pont factors. The overall similarity of the marks for related goods that move in the same channels of trade to the same classes of customers makes confusion likely. Decision: The refusal to register Applicant’s mark is affirmed.