La Montre Hermes S.A.v.Michael Akkawi

Trademark Trial and Appeal Board

Sep 27, 2012

No. 92051860 (T.T.A.B. Sep. 27, 2012)

Mailed: September 27, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

La Montre Hermes S.A.
v.
Michael Akkawi
_____

Cancellation No. 92051860
_____

Andrew Baum of Foley & Lardner LLP for La Montre Hermes S.A.

Milton Oliver of Oliver Intellectual Property for Michael Akkawi.
______

Before Holtzman, Bergsman and Shaw, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:
Petitioner, La Montre Hermes S.A. filed a petition to cancel
a registration on the Supplemental Register owned by Michael
Akkawi (respondent) for the standard character mark CAPE COD
WATCH for "clocks and watches; jewellery and watches; jewellery,
clocks and watches; jewelry watches; watch bracelets" in Class
14.1 The word WATCH is disclaimed.

1 Registration No. 3433601, issued May 20, 2008 from a use-based
application filed on December 27, 2007. The Acceptable Identification
of Goods and Services Manual (ID Manual) provides for an alternate
spelling of "jewelry" as "jewellery" and both spellings are used in
respondent's identification of goods. For purposes of consistency, we
will refer only to "jewelry."
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Cancellation No. 92051860
2
The grounds for the petition, as alleged in the amended
pleading, are set forth below.
1. Likelihood of confusion: Petitioner alleges that
respondent's mark when applied to respondent's goods so resembles
petitioner's previously used and registered mark, CAPE COD 2
ZONES for watches, as to be likely to cause confusion.2
Petitioner has pleaded ownership of Registration No. 2753802 for
the mark CAPE COD 2 ZONES for watches.
2. Nonuse of the mark in commerce as of the filing date of
respondent's underlying use-based application: Petitioner
essentially alleges that respondent's business has been solely
intrastate, asserting that respondent manufactures its identified
goods in Massachusetts and has sold them only to two retail
stores in Massachusetts and that the goods have never been
available for purchase through any website.
3. Fraud based on nonuse of the mark on certain goods at
the time of filing the underlying application and, alternatively,
nonuse of the mark on such goods: Petitioner asserts that at the
respondent knowingly, and with an intent to deceive the U.S.
Patent and Trademark Office, falsely alleged use of his mark on
"'clocks,' 'jewelry' [and] 'jewelry clocks' under respondent's
mark" when there had never been any use of the mark on such
goods. Petitioner alleges that the application is void ab initio

2 Petitioner also alleged use of the mark CAPE COD on watches.
However, inasmuch as petitioner submitted no evidence or argument
Cancellation No. 92051860
3
based on fraud, or alternatively, that the registration should be
partially cancelled as to such goods.
Respondent, in his answer, admits that prior to respondent's
first use of its mark, petitioner "has sold watches under various
marks" and that petitioner "has sold watches under the mark CAPE
COD 2 ZONES." With respect to lack of use in commerce, in
particular, while admitting that his goods are manufactured in
Massachusetts, respondent asserts that he and his licensee,
Hannoush Jewelers of Cape Cod, sell the goods in Falmouth and
Hyannis, Massachusetts to residents of Massachusetts "and of
other states." Respondent affirmatively or effectively denies
the remaining salient allegations in the petition.
The record includes the pleadings and the file of
respondent's involved registration. In addition, petitioner
filed a notice of reliance on an electronic printout of its
pleaded registration on the Principal Register for the mark CAPE
COD 2 ZONES for "watches" showing that the registration is in
effect and owned by petitioner;3 and respondent's responses to
certain of petitioner's interrogatories and requests for
admissions.

regarding this mark, its claim based on this mark is given no further
consideration.
3 Registration No. 2753802 issued August 19, 2003; Sections 8 and 15
combined declaration accepted and acknowledged. The registration
originally included additional goods which were subsequently deleted by
petitioner's Section 8 declaration.
Cancellation No. 92051860
4
Respondent did not introduce any testimony or other evidence
in his own behalf. Only petitioner filed a brief.
Standing
Because petitioner's pleaded registration is properly of
record, petitioner has established its standing. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 189 (CCPA 1982).
Likelihood of confusion
We turn first to the issue of priority. In a cancellation
proceeding, where both parties own registrations, a petitioner
asserting a claim under Section 2(d) must prove priority of use.
See Brewski Beer Co. v. Brewski Brothers, Inc., 47 USPQ2d 1281
(TTAB 1998). Petitioner argues that respondent admitted
priority, but in fact respondent admitted only that petitioner
"has sold watches under various marks" prior to respondent's
first use. Respondent affirmatively or effectively denied
petitioner's allegations of priority with respect to its pleaded
mark.
Nevertheless, petitioner may rely on its registration as
proof that the mark was in use as of the April 4, 2001 filing
date of the underlying application. See J. C. Hall Company v.
Hallmark Cards, Incorporated, 340 F.2d 960, 144 USPQ 435, 437
(CCPA 1965) ("The presumption of use emanating from the fact of
registration [under Section 7(b) of the Trademark Act] relates
Cancellation No. 92051860
5
back to the filing date of the application on which the
registration is predicated.").
On the other hand, respondent's registration on the
Supplemental Register is entitled to no statutory presumptions
under Section 7(b) of the Act and therefore it is incompetent as
evidence of use. See Section 26 of the Trademark Act
("registrations on the supplemental register shall not be subject
to or receive the advantages of [Section 7(b) of the Act]"; In re
Federated Department Stores Inc., 3 USPQ2d 1541, 1543 (TTAB 1987)
(a Supplemental Register registration is evidence of nothing more
than the fact that the registration issued on the date printed
thereon). Inasmuch as respondent submitted no evidence of use of
his mark, petitioner is entitled to its priority.
We turn then to the merits of petitioner's likelihood of
confusion claim. Our determination under Section 2(d) is based
on an analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of confusion
issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In any likelihood of confusion analysis,
however, two key considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Cancellation No. 92051860
6
As to the goods, petitioner's "watches" are identical or
legally identical to the "watches" and "jewelry watches"
identified in respondent's registration. It is sufficient if
likelihood of confusion is established for any item encompassed
by the identification of goods in the registration. See Tuxedo
Monopoly, Inc. v. General Mills fun Group, 648 F.2d 1335, 209
USPQ 986, 987 (CCPA 1981).
Because the parties' goods are identical in part, and there
are no restrictions in either registration, we must assume that
the channels of trade and classes of purchasers for the goods are
identical as well. See Hewlett-Packard Co. v. Packard Press,
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) (“[A]bsent
restrictions in the [registrations], goods and services are
presumed to travel in the same channels of trade to the same
class of purchasers.”); In re Smith & Mehaffey, 31 USPQ2d 1531
(TTAB 1994).
We turn next to a comparison of respondent's mark CAPE COD
WATCH with petitioner's mark CAPE COD 2 ZONES, keeping in mind
that when marks appear on identical goods, as they do here, the
degree of similarity between the marks necessary to support a
finding of likelihood of confusion declines. Century 21 Real
Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992).
In determining the similarity or dissimilarity of marks, we
consider the marks in their entireties in terms of sound,
Cancellation No. 92051860
7
appearance, meaning and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). While marks must be
compared in their entireties, one feature of a mark may have more
significance than another, and in such a case there is nothing
improper in giving greater weight to the more dominant feature.
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
The term CAPE COD is the dominant portion of both marks.
The disclaimed word WATCH in respondent's mark is generic for the
goods, and the term 2 ZONES in petitioner's mark, as petitioner
notes, merely describes a feature of its watches, i.e., watches
that display time in two time zones. Thus, these portions of the
marks are less significant than CAPE COD in creating the marks'
commercial impressions. See In re National Data Corp., 224 USPQ
at 751 ("That a particular feature is descriptive or generic with
respect to the involved goods or services is one commonly
accepted rationale for giving less weight to a portion of a
mark").
Further, the more significant term CAPE COD is the first
part of both marks, and as such it is more likely to have a
greater impact on purchasers and be remembered by them when
encountering the marks at separate times. See Palm Bay, 73
USPQ2d at 1692 (consumers are generally more inclined to focus on
the first word, prefix or syllable in a mark); Presto Products
Cancellation No. 92051860
8
Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“it is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered”).
Because both marks consist in significant part of the
identical term CAPE COD, the marks as a whole are similar in
sound and appearance. In addition, the marks as a whole connote
the same, or variations of the same, goods, and they convey
substantially similar images and overall commercial impressions.
As used on identical goods, CAPE COD WATCH and CAPE COD 2 ZONES
may simply be perceived as different versions of the same mark or
as identifying different lines of watches from the same source.
As to the strength of petitioner's mark, the fact that
respondent's mark is registered on the Supplemental Register,
presumably due to the geographic significance of CAPE COD, cannot
affect the scope of protection to which petitioner's mark is
entitled. Petitioner's mark is registered on the Principal
Register without a claim of acquired distinctiveness under
Section 2(f) of the Trademark Act, and as such, the mark is
presumed to be inherently distinctive with an arbitrary or at
worst a suggestive meaning in relation to petitioner's watches.
We also note that there is no evidence that CAPE COD is commonly
used by others in the relevant field or that the mark is
otherwise weak and entitled to only a narrow scope of protection.
Cancellation No. 92051860
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In any event, we find that the scope of protection accorded
petitioner's mark encompasses respondent's highly similar mark
for identical goods.
In view of the foregoing, the petition to cancel on the
ground of likelihood of confusion is granted.
Although we have determined that the registration must be
cancelled on ground of likelihood of confusion, for the sake of
completeness, we will address petitioner's remaining claims.
Fraud and/or nonuse of the mark on certain goods as of
filing of respondent's underlying application

Petitioner pleaded fraud based on nonuse, but concedes in
its brief "that the record does not show an intent to deceive by
'clear and convincing evidence.'" Brief, p. 8. Accordingly, the
petition to cancel on the ground of fraud is denied. We consider
then whether petitioner has established its claim of nonuse of
the mark on certain of the goods identified in the registration.
Respondent's goods are identified as "clocks and watches;
jewelry and watches; jewelry, clocks and watches; jewelry
watches; watch bracelets." Petitioner argues, based on
respondent's responses to its admission requests, that respondent
"has never used his mark for clocks, jewelry or jewelry clocks,"
and that therefore these goods must be deleted from the
registration.
There is no question that respondent never used the mark on
clocks. Respondent specifically admits that he "has never sold

Cancellation No. 92051860
10
any clocks" under his mark.4 Adm. No. 7. The evidence with
respect to "jewelry" and "jewelry clocks," however, is not so
clear. To begin with, there is no such item as "jewelry clocks"
listed in respondent's identification of goods. Further,
respondent specifically denied that he "has never sold any
jewelry" under the mark. Adm. No. 8. Amplifying this denial,
respondent stated that he "considers [his] watches to be a
species of jewelry, since [his] watches comprise 14K gold and
sterling silver." Petitioner disputes this contention, arguing
that there is an identification of goods in the ID Manual for
"jewelry and watches" and "if watches were just a species of
jewelry, there would be no reason to have two separate
specifications or to identify them separately in the 'jewelry and
watches' specification." Br., p. 4.
Petitioner's argument is not persuasive. The ID Manual
contains a number of entries for watches, listing "watches," of
course, but also more specifically "jewelry watches" and "non-
jewelry watches" as acceptable identifications of goods.5 Thus,
the Office recognizes that watches can be characterized as
jewelry and/or non-jewelry items. Inasmuch as watches are

4 Respondent's assertion in its answer that "watches are a species of
clock, namely a clock worn on the wrist" (¶12), is not well taken. A
"clock" is defined as "1. a device other than a watch for indicating or
measuring time...." (Emphasis added.) Merriam-webster.com. The Board
may take judicial notice of dictionary definitions. See University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
5 The Board may take judicial notice of entries from the ID Manual.
Cancellation No. 92051860
11
considered a form of jewelry, petitioner's claim that respondent
has not used his mark on jewelry must fail.
The petition to partially cancel the registration on the
ground of nonuse is granted as to "clocks," and is otherwise
denied.
Nonuse of the mark in commerce as of the filing
of respondent's underlying application

An applicant seeking registration of a mark under Section
1(a) of the Trademark Act must have used the mark in commerce on
the identified goods as of the filing date of the application.
For goods, the "use in commerce" requirement is met when a mark
"is placed in any manner on the goods or their containers ... and
the goods are sold or transported in commerce." Section 45 of
the Trademark Act (emphasis added).
Respondent's admissions or qualified admissions in this
regard include the following:
Registrant manufactures Registrant's goods in
Massachusetts, and ... Registrant and Registrant's
licensee Hannoush Jewelers of Cape Cod sell the goods
in Falmouth and Hyannis, Massachusetts to residents
of Massachusetts and of other states. Ans., ¶7

Hannoush Jewelers of Cape Cod has retail stores only
in the Commonwealth of Massachusetts, in the towns of
Falmouth and Barnstable on Cape Cod (Barnstable
County). Adm. No. 3

Registrant has a website, www.capecodwatch.com, on
which the availability of Registrant's watches is
indicated, but the website states that sales are made
only at the stores, located in Falmouth, MA or
Hyannis MA (a village within the town of Barnstable
MA); Registrant has never sold any goods under
Registrant's mark by orders taken through a website.
Adm. Nos. 6 and 20.
Cancellation No. 92051860
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Registrant's licensee Hannoush Jewelers of Cape Cod
has sold watches, which it considers a species of
jewelry, under the mark CAPE COD WATCH, to multiple
customers outside the Commonwealth of Massachusetts.
Adm. No. 11.

[Response to petitioner's request to "specify the
channels of trade" through which respondent's goods
"are sold or distributed"]: "Two retail stores of
Hannoush Jewelers of Cape Cod...." Interrog. Resp.
No. 2.

Petitioner argues that respondent has admitted his business
is wholly intrastate, considering his admissions that he
manufactures the goods in Massachusetts and sells them only
through the two retail stores in Massachusetts and not through
any website. Relying on In re Bagel Factory, 183 USPQ 553, 554-
555 (TTAB 1974), petitioner states that "'transportation' of
goods by purchasers after intrastate retail sale is not
'transportation' for purposes of satisfying 'use in commerce'
requirement," and contends that there is no evidence that either
store "has ever made any sales under the mark except to customers
who walk into the store and buy watches there." Br., p. 7.
Petitioner claims that respondent's discovery responses set forth
a prima facie case of lack of use in commerce, and that
respondent has come forth with no evidence to rebut it.
Respondent does admit that his goods are manufactured in
Massachusetts and sold only in Massachusetts. However,
respondent has not admitted that his sales have been "purely
intrastate" as petitioner contends. To the contrary, respondent
has consistently maintained by his answer and his responses to
Cancellation No. 92051860
13
discovery requests that his goods are not sold only to residents
of Massachusetts but that they are also sold to "out of state"
customers as well.6 Thus, respondent's discovery responses must
be construed as denying any contention by petitioner that his
mark was not used in commerce.
It is possible that respondent's sales to "out of state"
customers were in fact purely intrastate. However, it is also
possible that those sales, although made exclusively through the
retail stores, involved an interstate transaction. An obvious
example of this would be the store's shipment of the items
purchased by a customer to an out of state location. It is clear
that the use in commerce requirement would be satisfied if the
goods were transported in commerce by or on behalf of respondent
and with respondent's knowledge and control. Cf., Bagel Factory,
183 USPQ at 554. The point is that we simply do not know the
circumstances of respondent's sales to "out of state" customers,
and we will not speculate as to how they may have occurred. It
was petitioner's responsibility, when confronted with this
assertion by respondent, to seek further information or
clarification from respondent regarding his claimed use of the
mark in commerce.

6 There is no evidence or argument by either party regarding the
effect, if any, of respondent's advertising of the watches on his
website.
Cancellation No. 92051860
14
In view of the foregoing, we find that petitioner has not
met its burden of showing prima facie, by preponderance of the
evidence, that respondent did not use his mark in commerce.
Decision: The petition to cancel on the ground of fraud is
denied; on the ground of nonuse of the mark on certain goods is
granted in part and denied in part; on the ground of nonuse of
the mark in commerce is denied; and on the ground of likelihood
of confusion is granted. Registration No. 3433601 will be
cancelled in due course.