LG Electronics Inc.

Trademark Trial and Appeal Board

May 15, 2018

No. 86515915 (T.T.A.B. May. 15, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 15, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re LG Electronics Inc.
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Serial No. 86515915
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Mark Sommers and Naresh Kilaru of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P. for LG Electronics Inc.

Meghan Reinhart, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
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Before Zervas, Bergsman and Gorowitz,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
LG Electronics Inc. (“Applicant”) seeks registration on the Principal Register of
the mark G5, shown below, for “smart phones; mobile phones,” in International Class
9.1

1 Application Serial No. 86515915 was filed on January 27, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce. Also, Applicant claimed priority under Section 44(d)
of the Trademark Act, 15 U.S.C. § 1147(d), based on application No. 4020140075760 filed in
the Republic of Korea on November 10, 2014. Subsequently, on August 18, 2016, Applicant
filed an Amendment to Allege Use claiming February 21, 2016 as its date of first use
anywhere and April 1, 2016 as its date of first use in commerce.
Serial No. 86515915
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Applicant’s stylized mark consists of the letter “G” followed by the number “5.”
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the two registrations listed below, owned by the same
entity, as to be likely to cause confusion:
• Registration No. 4495380 for the mark G’FIVE (standard characters) for
“Batteries; battery chargers; blank electronic chip cards; burglar alarms;
computer screens; computers; electric wires and cables; integrated circuits;
laptops; mobile phones; personal stereos; prerecorded magnetic data
carriers featuring music; scientific measuring instruments, namely,
conductivity meters; video phones; wireless telephones,” in Class 9;2 and
• Registration No. 4564482 for the stylized mark G’FIVE, shown below, for
“Computers; Batteries; Laptop; Electronic publications, specifically, e-zines
about gaming that are available for download; Video Phone; Mobile phones;
Portable wireless telephone; Prerecorded magnetic audio carrier featuring

2 Registered March 11, 2014, based on an application filed April 26, 2012.
Serial No. 86515915
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music; Personal stereos; Measuring equipment and instruments,
specifically, conductivity meters and gravity measuring instruments;
Supply Material, namely, electric wires and cables; Integrated circuits;
Electronic chip; Computer screens; Burglar Alarm; Battery Charger,” in
Class 9.3

After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
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 issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“du Pont”) cited in B&B Hardware, Inc. v. Hargis
Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each du Pont factor that is relevant or for which there is evidence of record.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242
(TTAB 2015) (“While we have considered each factor for which we have evidence, we

3 Registered July 8, 2014, based on an application filed March 31, 2011.
Serial No. 86515915
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focus our analysis on those factors we find to be relevant.”). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods or services. See In re Chatam Int’l Inc., 380
F.2d 1340, 71 USPQ2d 1944, 1945-46 (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.”); see also In re
i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
I. The similarity of dissimilarity and nature of the goods and established,
likely-to-continue channels of trade.4
The description of goods are identical inasmuch as the description of goods in both
the application and the cited registrations include “mobile phones.” A “smart phone,”
listed in Applicant’s description of goods, is a “mobile telephone with a display screen
… built-in personal information management programs … typically found in a
personal digital assistant (PDA), and an operating system (OS) that allows other
computer software to be installed for Web browsing, e-mail, music, video, and other

4 Applicant did not argue that the goods, channels of trade, or classes of consumers differ.
Serial No. 86515915
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applications.”5 Therefore, the term “mobile phones” in Registrant’s description of
goods encompasses “smart phones” in Applicant’s description of goods.
Because the goods described in the application and the cited registrations are
identical, we must presume that the channels of trade and classes of purchasers are
the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (legally identical goods are presumed to travel in same channels of trade to
same class of purchasers); 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); United Glob. Media Grp.,
Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
II. The similarity or dissimilarity of the marks.6
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014). In comparing the marks, we are mindful that
where, as here, the goods are identical, the degree of similarity necessary to find

5 Smartphone, Encyclopaedia Britannica (2016). The Board may take judicial notice of
information from encyclopedias. B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d
727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (“dictionaries and encyclopedias may be
consulted”); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc.,
98 USPQ2d 1921, 1934 n.61 (TTAB 2011); In re Broyhill Furniture Indus. Inc., 60 USPQ2d
1511, 1514 n.4 (TTAB 2001) (dictionary entries and other standard reference works).
6 Applicant did not argue that the marks differ or are not similar.
Serial No. 86515915
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likelihood of confusion need not be as great as where there is a recognizable disparity
between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of
Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v.
Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prod. Inc.
v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721; see also Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d
1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). The proper focus is on the recollection
of the average customer, who retains a general rather than specific impression of the
marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39,
40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012);
Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because the
goods at issue are mobile phones without any restrictions or limitations as to
channels of trade, classes of consumers, or price points, and considering the ubiquity
of mobile phones, the average customer is an ordinary consumer.

Serial No. 86515915
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The marks are reproduced below:
Applicant’s Mark Registrant’s Marks

G’FIVE (standard characters)

The marks are similar because they begin with the letter “G” followed by, in
Applicant’s case, the numeral “5” and, in Registrant’s case, the word “five.” The word
“five” is the spelling for the numeral “5” and, therefore, Applicant’s mark G5 (stylized)
and Registrant’s marks G’FIVE (standard characters or stylized) have the same
meaning and engender the same commercial impression especially when used in
connection with identical products. Moreover, based on standard English
pronunciation, the marks are phonetically identical.
Neither Applicant’s mark G5 (stylized), nor Registrant’s G’FIVE (stylized), are so
highly stylized as to distinguish the marks in terms of their appearance or
commercial impression. In any event, Registrant’s G’FIVE registration in standard
character form may be presented in a stylized font similar to Applicant’s stylized font.
See In re Viterra Inc., 101 USPQ2d at 1909; Citigroup Inc. v. Capital City Bank Grp.,
Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011).
We find that the marks are similar in their entireties in terms of appearance,
sound, connotation and commercial impression.
Serial No. 86515915
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III. Applicant claims priority based on its ownership of a prior registration.
In its March 3, 2017 Response to an Office Action, Applicant asserts that it has
priority over the cited registrations based on its ownership of Registration No.
4857432 for the mark G5 (standard characters) for the goods listed below:
Wireless handheld telecommunications devices, namely,
wireless telecommunications devices that combine wireless
voice and data telecommunications functions, digital
imaging functions, computing functions, permit the two-
way wireless transmission of e-mail and text, permit
wireless access to a global computer network, gaming and
multimedia functionality, in Class 9.7
The cited registrations have later filing dates: Registration No. 4495380 is based on
an application filed April 26, 2012 and Registration No. 4564482 is based on an
application filed March 31, 2011. However, the question of priority is not germane in
an ex parte appeal to determine an applicant’s right to registration because Section
2(d) of the Trademark Act proscribes the registration of a mark that so resembles a
mark previously registered as to be likely to cause confusion. See In re Calgon Corp.,
435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971); In re Ginc UK Ltd., 90 USPQ2d 1472,
1480 n.9 (TTAB 2007).
Applicant also argues that the facts in this appeal are analogous to those in In re
Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012). Strategic Partners involved
co-existing registrations each more than five years old and immune to attack on
likelihood of confusion grounds. See Section 14 of Trademark Act, 15 US.C. § 1064.

7 Registered November 24, 2015, based on an application filed January 24, 2011.
Serial No. 86515915
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In finding no likelihood of confusion in Strategic Partners, the Board provided the
following explanation:
[T]he present case involves the unique situation presented
by the coexistence of applicant’s existing registration with
the cited registration for over five years, when applicant's
applied-for mark is substantially similar to its existing
registered mark, both for identical goods. When we
consider these facts under the thirteenth du Pont factor,
we find in this case that this factor outweighs the others
and leads us to conclude that confusion is unlikely.
Strategic Partners, 102 USPQ2d at 1400.
In the case before us, Applicant’s existing registration has coexisted with the cited
registrations for less than five years. This is significant not only because it is less
time, but because the five-year milestone carries added weight because of its legal
significance under the Lanham Act: it means that Applicant’s registration, issued
November 24, 2015, is still subject to a cancellation action by Registrant based on
likelihood of confusion. This represents a key factual distinction from Strategic
Partners. See Section 14 of the Trademark Act, 15 U.S.C. § 1064. We therefore find
that, while the 2½ year co-existence of Applicant’s prior registration and the cited
registrations is a relevant consideration, it does not outweigh the other du Pont
factors in this case. See In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d
1790, 1793 (TTAB 2017).
As we stated in USA Warriors Ice Hockey Program,
[T]o hold otherwise would essentially give binding effect to
the decision of a Trademark Examining Attorney in
granting Applicant’s prior registration. Neither the Board
nor any Trademark Examining Attorney is bound by
decisions of Examining Attorneys to register prior marks.
To the contrary, “the [US]PTO must decide each
Serial No. 86515915
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application on its own merits, and decisions regarding
other registrations do not bind either the [USPTO] or [the
reviewing] court.” See In re Boulevard Entm’t, 334 F.3d
1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003). The issuance
of Applicant’s first registration does not require the
approval of a second registration if, on the facts of the case,
it would be improper to do so under the governing legal
standard. See, e.g., In re Cordua Rests., Inc., 823 F.3d 594,
118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (“The PTO is
required to examine all trademark applications for
compliance with each and every eligibility requirement,
including non-genericness, even if the PTO earlier
mistakenly registered a similar or identical mark suffering
the same defect.”)
Id. at 1793 n.10. Accordingly, we are not persuaded by Applicant’s argument that
since a likelihood of confusion was not found between its G5 mark in standard
characters and Registrant’s G’FIVE marks, then no likelihood of confusion exists
between Applicant’s G5 stylized mark sought to be registered in the application
before us and Registrant’s G’FIVE marks.8
Also, we are not persuaded by Applicant’s argument that the risk of Registrant
seeking to cancel Applicant’s prior registration “is not present here.” Applicant’s
argument assumes that priority is based solely on the filing dates and claimed dates
of use in Applicant’s and Registrant’s registrations.9 This assumption is incorrect. In
a cancellation proceeding, priority must be proven. See Brewski Beer Co. v. Brewski
Bros., Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) (when both parties in a cancellation
proceeding own registrations, the petitioner must prove its priority). A party in a
cancellation proceeding may rely on its application filing date for priority, or

8 Applicant’s Brief, p. 6 (4 TTABVUE 10).
9 Applicant’s Brief, p. 6 (4 TTABVUE 10).
Serial No. 86515915
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introduce evidence of its actual date of first use. Media Online Inc. v. El Classificado
Inc., 88 USPQ2d 1285, 1288 (TTAB 2008); Brewski Beer Co. v. Brewski Bros., Inc., 47
USPQ2d at 84. In this regard, a party is not restricted to the dates of use claimed in
the registration. See Hydro-Dynamics, Inc. v. George Putnam & Co., 811 F.2d 1470,
1 USPQ2d 1772, 1773-74 (Fed. Cir. 1987); Brooks v. Creative Arts By Calloway LLC,
93 USPQ2d 1823, 1832-33 (TTAB 2009). Accordingly, if Registrant believes that it
may be damaged by the registration of Applicant’s G5 mark in standard characters,
it may file a petition for cancellation and prove its priority.
Applicant points out that Registrant has had knowledge of Applicant’s G5 mark
in standard characters since July 2011 and has taken no steps to oppose or otherwise
object to Applicant’s registration or use of the mark.10 First, at the Board, we are
concerned only with the registration of marks and not whether Registrant objects to
Applicant’s use of the G5 mark. Second, because this is an ex parte proceeding, we
have not had an opportunity to hear from Registrant and confirm that it has had
knowledge of Applicant’s G5 mark since July 2011. Finally, because we have not had
an opportunity to hear from Registrant, we can only speculate as to why Registrant
has not sought to cancel Applicant’s G5 mark in standard characters―or for that
matter, why Applicant has not sought to cancel Registrant’s registrations or to obtain
a consent to use and register.

10 Id.
Serial No. 86515915
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IV. Analyzing the factors.
Because the marks are identical in sound, meaning and commercial impression,
and otherwise very similar, because all of Applicant’s goods are within registrant’s
identification and because we must presume that they are offered in the same
channels of trade to the same classes of consumers, we find that Applicant’s stylized
G5 mark for “smart phones; mobile phones” is likely to cause confusion with the
registered marks G’FIVE in standard characters and a stylized format for, inter alia,
mobile phones.

Decision: The refusal to register Applicant’s mark G5 in a stylized format is
affirmed.