No. 86965147 (T.T.A.B. Mar. 15, 2018)

Mark Bezik

Trademark Trial and Appeal BoardMar 15, 2018

No. 86965147 (T.T.A.B. Mar. 15, 2018)

This Opinion is Not a Precedent of the TTAB Mailed: March 15, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Mark Bezik _____ Serial No. 86965147 _____ Brie A. Crawford of Crawford Intellectual Property Law LLC for Mark Bezik. Katy Halmen, Trademark Examining Attorney, Law Office 109, Michael Kazazian, Managing Attorney. _____ Before Wolfson, Adlin, and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background Mark Bezik (“Applicant”) seeks registration on the Principal Register of the mark TRUSPORT in standard characters for: Athletic flooring; Floor panels not of metal; Floor tiles, not of metal; Flooring comprised of rubber adapted for physical fitness activities; Flooring underlayments; Rubber flooring; Rubber and synthetic non-metal tiles for use on indoor and outdoor floors; Sports surfaces, namely, running Serial No. 86965147 - 2 - tracks and playing fields made of polyurethane; Non-metal floor panels; Non-metal floor tiles; Rubber floor tiles; Synthetic, non-metal surfaces for playgrounds, sports terrains and play areas in International Class 19.1 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 TRUESPORTS NETWORK in typed form2 for “Dealership services in the field of commercial, institutional and residential sports playing surfaces” in International Class 35.3 After the Examining Attorney made the refusal final, Applicant appealed. For the reasons set out below, we affirm the refusal. II. Likelihood of Confusion The 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 & 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 and services. See In re Chatam Int’l Inc., 1 Application Serial No. 86965147 was filed April 5, 2016 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a) based on an allegation of first use and use in commerce as of March 27, 2006. 2 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. “‘Standard character’ or ‘typed’ registrations are federal mark registrations that make no claim to any particular font style, color, or size of display and, thus, are not limited to any particular presentation.” Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citations omitted); see also 37 C.F.R. § 2.52(a). 3 Registration No. 2797446 issued December 23, 2003, and has been renewed. Serial No. 86965147 - 3 - 380 F.3d 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 services] and differences in the marks.”). “[I]t is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application.” In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015); see also Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). A. Number and Nature of Similar Marks for Similar Services Because the strength of the cited mark under the sixth du Pont factor impacts our comparison of the marks, we first address Applicant’s claim under this factor that the cited registration deserves a narrow scope of protection in view of third-party registrations that consist of or include the terms TRU/TRUE and SPORT(S). The Federal Circuit has held that evidence of extensive registration and use of a term by others for related goods or services can be powerful evidence of the term’s weakness. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). However, in this case, the record does not include any such evidence. Applicant did not provide any third-party evidence of actual use of the same or similar marks to show commercial weakness, and instead relies exclusively on a mere Serial No. 86965147 - 4 - list of third-party registrations appearing for the first time in his brief. During prosecution of the application, the only Response to Office Action Applicant submitted contained no evidence, and failed even to list any of the third-party registrations consisting of or including the terms TRU/TRUE and SPORT(S), which now form the basis of its weakness argument.4 The Examining Attorney objects.5 As the Board held in In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012): [f]irstly, applicant did not submit copies of the registrations; merely listing third-party registrations is insufficient to properly make them of record. In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998). Secondly, even if copies were submitted with the brief, they would be untimely and, thus, not proper for consideration. See also TBMP § 1208.02 (June 2017) (“Mere listings of registrations ... are not sufficient to make the registrations of record”). Under Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d): The record in the application should be complete prior to the filing of an appeal. Evidence should not be filed with the Board after the filing of a notice of appeal. If the appellant or the examining attorney desires to introduce additional evidence after an appeal is filed, the appellant or the examining attorney should submit a request to the Board to suspend the appeal and to remand the application for further examination. 4 TSDR January 18, 2017 Response to Office Action at 1-4. 5 6 TTABVUE 17 (Examining Attorney’s Brief). Serial No. 86965147 - 5 - Accordingly, because neither the list nor these third-party registrations are in the record, we give them no consideration. We find no evidence that the cited mark is commercially weak. B. Similarity of the Marks We turn to comparing TRUSPORT to TRUESPORTS NETWORK “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps., 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 and 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). The nearly identical term TRUSPORT/TRUESPORTS forms the entirety of Applicant’s mark and the dominant portion of the cited mark. See In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985) (“in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties”); see also Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). As the first word in the cited Serial No. 86965147 - 6 - mark, we find that TRUESPORTS “is most likely to be impressed upon the mind of a purchaser and remembered.” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Although the first syllable in Applicant’s mark is spelled TRU while in Registrant’s mark it is TRUE, and Applicant’s mark has the singular SPORT rather than the plural SPORTS in Registrant’s mark, these differences are very minor. See, e.g. Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (“It is evident that there is no material difference, in a trademark sense, between the singular and plural forms of the word ‘Zombie’ and they will therefore be regarded here as the same mark”); In re Calphalon, 122 USPQ2d 1153, 1163 (TTAB 2017) (SHARPIN deemed equivalent to “sharpen”); Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (SWISS GRILL and SWISS GRILLS deemed “virtually identical”). Applicant acknowledges that a mark may not necessarily have a “correct” pronunciation, but nonetheless argues that in its mark, the first syllable TRU (or TRUS, according to Applicant)6 would more likely be pronounced with a short U-sound, rather than with a long U-sound as in TRUE in Registrant’s mark. We agree with the Examining Attorney that in Applicant’s mark, consumers most likely would perceive the TRU component as a minor misspelling of TRUE and pronounce it as such. Regardless of the vowel pronunciation, consumers who hear the terms spoken by others might not notice, or could easily forget, the difference. See Viterra, 101 USPQ2d at 1912; In re Energy Telecomms. & Elec. Ass’n, 6 Applicant’s specimen displays the TRU component of its mark in a different color than the SPORT component. Serial No. 86965147 - 7 - 222 USPQ 350, 351 (TTAB 1983) (“Slight differences in the sound of similar marks do not avoid a likelihood of confusion.”). Applicant concedes that the second word in Registrant’s mark, NETWORK, refers to Registrant’s dealership network.7 Because it is generic for or descriptive of Registrant’s network of dealers, its significance is diminished. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); Nat’l Data Corp., 224 USPQ at 752. Applicant argues that the term changes the connotation and look of the cited mark. While the additional word is a difference between the marks, its descriptive or generic nature, which Applicant acknowledges,8 makes the difference insufficient to prevent confusion. Id. We find the meaning and commercial impression of TRUSPORT and TRUESPORTS NETWORK very similar. In fact, while there is no evidence that TRUESPORTS or TRUSPORT has a particular meaning, the component terms TRUE/TRU and SPORTS/SPORT are so similar in how they look and sound that consumers are likely to ascribe to them the same meaning and take from them the same commercial impression. The additional term NETWORK in the cited mark modifies and calls attention to TRUESPORTS.9 Cf. Lever Bros. Co. v. The Barcolene 7 4 TTABVUE 8. 8 Id.; see also TSDR February 23, 2017 Office Action at 2-3 (definition of NETWORK). 9 We have not considered the cited registration’s prosecution history, on which Applicant relies to make arguments about the significance of NETWORK in the cited mark, because it is not automatically of record, and Applicant failed to introduce any of it into evidence. In re Sela Products LLC, 107 USPQ2d 1580, 1583 (TTAB 2013) (declining to consider statements made during prosecution by owner of the cited registration where the file was not introduced, and further noting that such statements are unpersuasive regardless). Serial No. 86965147 - 8 - Co., 463 F.2d 1107, 174 USPQ 392 (CCPA 1972) (additional word CLEAR in ALL CLEAR changes the meaning of the single word ALL); see also In re P. Ferrero & C.S.p.A., 479 F.2d 1395, 178 USPQ 167 (CCPA 1973) (TIC TAC TOE creates a different impression than TIC TAC). Thus, the marks have similar overall commercial impressions. Given their resemblance in sound, appearance, connotation and commercial impression, Applicant’s and Registrant’s marks are very similar. This factor weighs heavily in support of finding a likelihood of confusion. C. The Goods and Services and Trade Channels We next address the second du Pont factor, the relatedness of the goods and services, and the third du Pont factor, the channels of trade and classes of customers. 1. Relatedness of the Goods and Services The test is not whether consumers would be likely to confuse the goods and services, 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 and services need not be identical or even competitive. “Rather, it is sufficient that the goods [and services] are related in some manner, or that the circumstances surrounding their marketing are such, that they would be 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 [and services].” In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). We must focus on the goods and Serial No. 86965147 - 9 - services as identified in the application and the registration, not on extrinsic evidence of how the marks are actually used. Stone Lion Capital Partners, 110 USPQ2d at 1162; Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The subject application includes athletic flooring and sports surfaces, namely, running tracks and playing fields made of polyurethane, while the cited registration is for dealership services in the field of commercial, institutional and residential sports playing surfaces. On their face, the identifications reflect that Registrant’s dealership services are in the field of goods such as Applicant’s. Indeed, a dealership is “a business that sells the products of a particular company….”10 It is settled that goods and services may be related, and retail sales of particular goods are often found related to those goods. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGGS for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture); In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347 (CCPA 1961) (“a customer who attends a banquet which he knows is catered by the appellant would, when he encounters a food product in the grocery store under an almost identical mark, naturally assum[e] that it came from the catering firm”); In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (“It is clear that consumers would be likely to believe that jewelry on the one hand and retail stores 10 We take judicial notice of the Merriam-Webster definition provided in the Examining Attorney’s Brief, 9 TTABVUE 9. See Univ. of Note 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); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 86965147 - 10 - selling jewelry on the other emanate from or are sponsored by the same source if such goods and services are sold under the same or similar marks.”); see also, In re Accelerate s.a.l., 101 USPQ2d 2047, 2050 (TTAB 2012) (affirming refusal to register COLOMBIANO COFFEE HOUSE for “providing food and drink” based on registered certification mark COLOMBIAN for “coffee”); In re Opus One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001) (affirming refusal to register OPUS ONE for restaurant services based on a likelihood of confusion with the same mark for wine). While the Examining Attorney did not submit third-party use evidence showing that these types of goods and services emanate from the same source, she introduced screenshots of Registrant’s website showing the cited mark used in connection with “sports surfaces and related equipment,” “[n]ow available for individuals … for [their] recreational project,” and “custom build[ing of] the finest game court amenities available.”11 We rely on this evidence not to expand the scope of the identification in the cited registration, but rather as example of consumer exposure to goods such as Applicant’s and services such as Registrant’s emanating from the same source. Accordingly, we find Applicant’s goods closely related to Registrant’s services. This factor also weighs heavily in favor of finding a likelihood of confusion. 2. Trade Channels Turning to the trade channels, Applicant’s goods have no limitations on channels of trade channel or classes of consumers. We therefore presume that they move in all channels of trade usual for the identified sports surfaces and athletic flooring and are 11 February 23, 2017 Office Action at 5 (truesports.net); see also id. at 6-11. Serial No. 86965147 - 11 - available to all potential classes of ordinary consumers. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where the identification is unrestricted, “we must deem the goods to travel in all appropriate trade channels to all potential purchasers of such goods”); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Registrant’s identification specifically indicates that the type of goods Applicant identifies could be offered by Registrant’s dealers. Obviously, one normal channel of trade for goods such as Applicant’s sports surfaces and athletic flooring is through sports surface dealers. This establishes overlap in the channels of trade and classes of purchasers and also weighs in favor of finding a likelihood of confusion. Applicant asserts that customers could not actually encounter its goods through Registrant’s dealers, which do not carry Applicant’s products, but we must “focus on the application and registrations rather than on real-world conditions, because ‘the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application.’” Stone Lion Capital Partners, 110 USPQ2d at 1162 (quoting Octocom Sys., 16 USPQ2d at 1787); see also Cunningham, 55 USPQ2d at 1848 (holding that the appellant “misstates the law” in arguing that the Board must focus on the goods as sold in the marketplace, and stating that “the Board must look to the registrations themselves to determine the scope of goods covered”). In any event, consumers familiar with Registrant’s sports surface dealer network likely would be confused upon encountering Applicant’s highly similar mark Serial No. 86965147 - 12 - on sports surfaces, whether or not they encountered Applicant’s particular sports surfaces in Registrant-affiliated dealerships. D. Sophisticated Purchasing Applicant argues that “athletic flooring is not an impulse buy.”12 Although Applicant did not properly submit supporting evidence, because of the nature of the goods and services, we accept that customers would bring an increased degree of care to their selection of the goods. This factor therefore weighs to some degree in Applicant’s favor. E. Actual Confusion The seventh and eighth du Pont factors concern “[t]he nature and extent of any actual confusion,” and “[t]he length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” du Pont, 177 USPQ at 567. Applicant argues that the lack of actual confusion evidence weighs against finding likely confusion, on the basis that “the marks have coexisted in commerce for over eleven years, and Applicant is unaware of any instances of actual confusion.”13 While evidence of actual confusion can be persuasive, “[t]he lack of evidence of actual confusion carries little weight, especially in an ex parte context.” Majestic Distilling Co., 65 USPQ2d at 1205 (internal citations omitted) (“uncorroborated statements of no known instances of actual confusion are of little evidentiary value”). Moreover, 12 4 TTABVUE 12 (Applicant’s Brief). 13 Id. Serial No. 86965147 - 13 - lack of actual confusion does not equate to no likelihood of confusion. See Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991). III. Conclusion The overall similarity of these marks for closely related goods and services that move in the same channels of trade to the same classes of customers renders confusion likely, regardless of any degree of care consumers may exercise in purchasing the goods and services. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (“That the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods.”). Decision: The refusal to register Applicant’s mark is affirmed.