Kimberly J. Cruickshanks

Trademark Trial and Appeal Board

Dec 15, 2016

No. 86148516 (T.T.A.B. Dec. 15, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 15, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cruickshanks
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Serial No. 86148516
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Songfong Tommy Wang of Yang & Wang, P.C.
for Kimberly J. Cruickshanks.

Daniel F. Capshaw, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
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Before Ritchie, Shaw and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Kimberly J. Cruickshanks (“Applicant”) seeks registration of the mark shown
below

Serial No. 86148516
2

for “advertising and publicity services, namely, promoting the goods, services, brand
identity and commercial information and news of third parties through print, audio,
video, digital and on-line medium.”1 The Examining Attorney refused registration
under Section 2(d) of the Act on the ground that Applicant’s mark so resembles the
following registered marks:
FUSE, in typed form, for “advertising agency services,
public relations, business marketing and consultation;”2
and

FUZEBUY, in standard characters and a stylized/design
form, , for “Advertising and marketing
services; information and data compiling and analyzing
relating to business management; preparing mailing lists;
on-line profiling survey and analysis, namely, analysis of
market research data and statistics pertaining to on-line
and in-store shopping;”3

that use of Applicant’s mark in connection with Applicant’s services is likely to cause
confusion or mistake or to deceive. After the refusal became final, Applicant appealed
and Applicant and the Examining Attorney filed briefs.

1 Application Serial No. 86148516, filed December 19, 2013 under Section 1(a) of the
Trademark Act, based on alleged first use dates of October 1, 2013. The application includes
this description of the mark: “The mark consists of stylized text ‘FUZE’ in capitalized font
placed inside four interlocking circles. The F and circle are orange, the U and circle are
blue, the Z and circle are fuchsia and the E and circle are mint green. The color white
appears as background only and is not claimed as a feature of the mark.”
2 Registration No. 2244175, issued May 11, 1999; renewed.
3 Commonly owned Registration Nos. 4124299 and 4124327, respectively, each issued April
10, 2012. The registration for the design version of the mark includes this description: “The
mark consists of the wording ‘FUZEBUY’ in stylized font where there are two parallel
horizontal bands in the top portion of the letter ‘Y’ and two circles below the bottom portion
of the letter ‘Y’ forming a stylized shopping cart.” These registrations also cover services in
International Classes 40 and 42.
Serial No. 86148516
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Evidentiary Objection
The Examining Attorney’s objection to evidence attached to Applicant’s Appeal
Brief which was not previously made of record is sustained. Trademark Rule 2.142(d).
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. 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 Company, Inc., 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 similarities between
the services. See 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.”).
With respect to commonly owned Registration Nos. 4124299 and 4124327, we
focus our analysis on the standard character mark FUZEBUY in Registration No.
4124299, because if we find confusion likely between that cited mark and Applicant’s
mark, we need not consider the likelihood of confusion between Applicant’s mark and
cited Registration No.. 4124327, while if we find no likelihood of confusion between
Applicant’s mark and FUZEBUY in standard characters, we would not find confusion
between Applicant’s mark and the design version of the FUZEBUY mark. In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
Serial No. 86148516
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Turning first to the services, channels of trade and classes of purchasers, they are
identical, as both Registrants and Applicant offer advertising services.4 Furthermore,
because the services are identical, we must presume that the channels of trade and
classes of purchasers for those services are too. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence
regarding channels of trade and classes of consumers, the Board was entitled to rely
on this legal presumption in determining likelihood of confusion); In re Yawata Iron
& Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same); American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
The identical services and their overlapping channels of trade and classes of
purchasers not only weigh heavily in favor of a finding of likelihood of confusion, but
also reduce the degree of similarity between the marks necessary to find a likelihood
of confusion. In re 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).
As for the marks, they are highly similar “in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve

4 The Examining Attorney submitted evidence which establishes that “advertising agency
services” are essentially the same as advertising services. Office Action of November 25,
2015 (printouts from “branditadvertising.net,” “thewoodagency.com,” “creativenoggin.com”
and “commercehouse.com”).
Serial No. 86148516
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Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). Indeed, the literal portion of
Applicant’s mark differs from FUSE by only one letter, and as is commonly the case,
the literal portion of Applicant’s mark is its most dominant feature, because the
design features of Applicant’s mark, circles enclosing each letter, merely emphasize
the letters. See e.g. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB
1987) (holding that “if one of the marks comprises both a word and a design, then the
word is normally accorded greater weight because it would be used by purchasers to
request the goods or services” and “because applicant’s mark shares with registrant’s
mark that element responsible for creating its overall commercial impression, the
marks are confusingly similar”) and In re Viterra Inc., 101 USPQ2d at 1911 (“the
verbal portion of a word and design mark likely will be the dominant portion”).
Moreover, the marks would likely be pronounced the same, or almost the same, given
that “s” and “z” are generally pronounced similarly or identically depending on the
surrounding letters. In fact, the Examining Attorney has introduced a definition from
the American Heritage Dictionary indicating that “fuze” is a “variant of fuse.” Office
Action of May 15, 2015. Therefore, not only is it likely that the “variant” terms fuse
and fuze would be pronounced the same, or at least quite similarly, but they would
convey the same meaning.
As for FUZEBUY, it is also quite similar to Applicant’s mark. Indeed, the first
portion of FUZEBUY is identical to the dominant, literal portion of Applicant’s mark.
Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
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often the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”); see also, Palm Bay Imports Inc., 73 USPQ2d at 1692;
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992). The design portion of Applicant’s mark is not sufficient
to distinguish it from FUZEBUY, which as a standard character mark could be
displayed in any font, including the “stylized font” in Applicant’s drawing and the
description of her mark. See In re Viterra, 101 USPQ2d at 1910. Not only do the marks
look and sound similar because they share and begin with the term FUZE, but they
convey similar meanings, especially because BUY in the cited mark is somewhat
suggestive and therefore weak for Applicant’s and Registrant’s services.
In short, this factor also weighs in favor of finding a likelihood of confusion with
respect to both the cited FUSE and FUZEBUY marks.
Applicant’s arguments against the refusal are not well taken. Her claim that
FUZEBUY “is no longer an active mark in the marketplace” and that its owner
“dissolved more than three years ago,” Applicant’s Appeal Brief at 4, constitutes an
impermissible collateral attack on the cited FUZEBUY registrations, which while
appropriate for a petition for cancellation based on abandonment or nonuse, is not
appropriate or permissible in this ex parte proceeding. In re Dixie Restaurants Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997) (“Dixie’s argument that
DELTA is not actually used in connection with restaurant services amounts to a
thinly-veiled collateral attack on the validity of the registration … the present ex
parte proceeding is not the proper forum for such a challenge.”); Cosmetically Yours,
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Inc. v. Clairol Inc., 424 F.2d 1385, 165 USPQ 515, 517 (CCPA 1970) (“in the absence
of a counterclaim for cancellation under section 14 of the Act (15 U.S.C. 1064), it is
not open to an applicant to prove abandonment of the opposer’s registered mark; and
appellant’s argument (upon which it now stakes its appeal) that opposer no longer
uses the registered mark ‘Come Alive’ must be disregarded.”).
Applicant’s argument that notwithstanding her and Registrants’ identifications of
services, she in fact provides different services than either registrant is also invalid.
It does not matter that registrants in fact offer specialized services distinct from
Applicant’s, when Applicant’s and registrants’ identifications of services are not so
limited. Indeed, we are bound by Applicant’s and registrants’ identifications and we
simply cannot limit the services, channels of trade or classes of customers to what
Applicant’s evidence shows them to be. In re Bercut-Vandervoort & Co., 229 USPQ
763, 764-65 (TTAB 1986) (“It is well settled that in a proceeding such as this, the
question of likelihood of confusion must be determined by an analysis of the marks
as applied to the goods identified in the application vis-à-vis the goods recited in the
registration, rather than what extrinsic evidence shows those goods to be.”); see also
Tuxedo Monopoly Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981) and In re Thor Tech Inc., 90 USPQ2d 1634, 1637-38 (TTAB 2009)
(“we must also analyze the similarity or dissimilarity and nature of the goods based
on the description of the goods set forth in the application and the registration at
issue … we may not limit or restrict the [goods] listed in the cited registration based
on extrinsic evidence”).
Serial No. 86148516
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Applicant’s claim that the relevant consumers for her and registrants’ services are
“sophisticated” is unsupported by any evidence. Furthermore, Applicant’s and
registrant’s identifications of services are not limited to any particular type of
consumer, and therefore we must presume that those services would be offered to sole
proprietors and small businesses which are unsophisticated about advertising,
marketing or publicity. In fact, Applicant’s and registrants’ services are presumed to
encompass all services of the type described, such as, for example, advertising fliers
placed on windshields,5 and the services are presumed to move in all normal channels
of trade and be available to all classes of consumers. Stone Lion Capital Partners,
L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014)
(“An application with ‘no restriction on trade channels’ cannot be ‘narrowed by
testimony that the applicant’s use is, in fact, restricted to a particular class of
purchasers.’”); Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d 1370,
1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Applicant’s argument that the cited marks are weak and entitled to only a narrow
scope of protection is unsupported. While Applicant introduced with her September
29, 2014 Office Action response a partial list of “live” and “dead” applications and
registrations for marks which contain the term FUZE, mere lists are not probative of
commercial weakness. In re Jump Designs, LLC, 80 USPQ2d 1370, 1372 (TTAB

5 Applicant concedes that her mark “would be encountered by small business owners
looking for website and graphic design services.” Applicant’s Appeal Brief at 14.
Serial No. 86148516
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2006). And while Applicant argues that “fuze” or “fuse” is merely descriptive, and
therefore conceptually weak, she does not indicate what the term is descriptive of,
much less establish that it is descriptive of advertising or marketing services.
Applicant’s argument that her mark should be registered because several
registered marks are more similar to each other than Applicant’s mark is to
registrants’ cited marks is essentially irrelevant. This is especially so because the
allegedly more similar registered marks are in no way similar to Applicant’s mark or
the cited marks, nor are the goods and services sold thereunder similar to those
identified in the involved application or cited registrations. Cf. In re Nett Designs,
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board must decide
each case on its own merits … Even if some prior registrations had some
characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior
registrations does not bind the Board or this court.”).
Applicant’s argument that there has been no actual confusion is essentially
irrelevant. The lack of evidence of actual confusion carries little weight, especially in
an ex parte context. In re Majestic Distilling, 65 USPQ2d at 1205.
Finally, Applicant’s argument that there is doubt which should be resolved in her
favor is misplaced here. Doubt is resolved in an applicant’s favor when the refusal is
based on descriptiveness, as the cases upon which Applicant relies make clear.
However, where, as here, the issue is likelihood of confusion, doubt is resolved in favor
of the prior registrant(s). In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d
Serial No. 86148516
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1025 (Fed. Cir. 1988) (“Any doubts about likelihood of confusion, etc., under § 2(d)
must be resolved against applicant as the newcomer.”).
Conclusion
In this case we have no doubt – because Applicant’s mark is similar to the cited
FUSE and FUZEBUY marks, the services are identical and we must presume that
the channels of trade overlap, confusion is likely.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.