Mark Jones and Catrice Johnson

Trademark Trial and Appeal Board

Apr 2, 2013

No. 77698644 (T.T.A.B. Apr. 2, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mark Jones and Catrice Johnson
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Serial No. 77698644
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David A. Dalia for Mark Jones and Catrice Johnson.

Jimmy Stein, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop,
Managing Attorney).
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Before Bucher, Taylor, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On March 25, 2009, Mark Jones and Catrice Johnson applied to register the
composite mark shown below, with “CANDLE” disclaimed:

Serial No. 77698644
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for “scented candles” in International Class 4 pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a).1
The examining attorney refused registration on the following three grounds:
1. there exists a likelihood of confusion pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), with the mark JUST CANDLES,
in standard character form (with “CANDLES” disclaimed), registered
for “candles” in International Class 4;2
2. the mark differs on the drawing page and specimen of use under
Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1127; and
3. applicant failed to amend the application to seek registration on the
Principal Register rather than the Supplemental Register.
Applicant appealed, and briefing is complete.
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 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 similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192

1 Application Serial No. 77698644, alleging first use anywhere and first use in commerce at
least as early as January 2009.
2 Registration No. 3135122, issued August 29, 2006, Section 8 affidavit accepted, Section 15
affidavit acknowledged.
Serial No. 77698644
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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.”). We discuss each of the du Pont factors as to which
applicant or the examining attorney submitted argument. To the extent that any
other du Pont factors for which no argument was presented may nonetheless be
applicable, we treat them as neutral.
A. Similarity of the Goods, Channels of Trade, and Classes of Customers
We turn first to the similarity of the goods and the channels of trade, the
second and third du Pont factors, respectively. Applicant’s goods are “scented
candles.” The goods in the cited registration are “candles,” not limited as to nature,
type, channels of trade, or classes of purchasers. Applicant’s scented candles are a
type of candles, that is, a subset of the goods covered by the prior registration.
Therefore, we presume that the registration encompasses applicant’s more specific
goods, the goods move in all normal channels of trade, and they are available to all
potential classes of ordinary consumers. See Citigroup Inc. v. Capital City Bank
Group, 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). Moreover, because the goods described in the application and the
cited registration are legally identical, we presume that the channels of trade and
classes of purchasers are the same. See American Lebanese Syrian Assoc. Charities
Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); In re
Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994); see also In re Viterra Inc.,
Serial No. 77698644
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671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to
rely on this legal presumption in determining likelihood of confusion).
Applicant argues that the owner of the cited registration “is merely a candle
distributor,” whereas applicant “actually manufactures triple scented candles, as
well as manufactures several other categories of goods, including manicure and
pedicure products, air fresheners, perfumes, fragrance oils, body washes, body
butter, and body lotions.”3 However, we are bound by the identification as written
in the registration and cannot limit registrant’s goods, channels of trade, or classes
of customers to what any 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-a-vis
the goods recited in the registration, rather than what extrinsic evidence shows
those goods to be.”).
Accordingly, in our likelihood of confusion analysis, these findings under the
second and third du Pont factors strongly support a finding of likely confusion.
B. Similarity of the Marks
We next consider 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.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691

3 Appeal Brief at 2.
Serial No. 77698644
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(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). In comparing the marks, we
are mindful that the test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial impression so that
confusion as to the source of the goods offered under the respective marks is likely
to result. San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d
683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d
1735, 1741 (TTAB 1991), aff’d, No. 92-1086 (Fed. Cir. June 5, 1992). We focus on
the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975).
Because the goods here are legally identical, furthermore, we keep in mind
that “[w]hen marks would appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely confusion declines.” Century
21 Real Estate Corp. v. Century Life of America, 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 Prods., Inc. v. Ing-Jing Huang, 84 USPQ2d
1323, 1325 (TTAB 2007).
We recognize that applicant’s mark incorporates a prominent design
component. However, a number of our cases “reflect the principle that if a mark
comprises both a word and a design, the word is normally accorded greater weight
because it would be used by purchasers to request the goods or services.” M.C.I.
Serial No. 77698644
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Foods, Inc. v. Brady Bunte, 96 USPQ2d 1544, 1551 (TTAB 2010). We find that the
wording of applicant’s mark is the dominant part of the mark. See In re Strathmore
Prods., Inc., 171 USPQ 766, 767 (TTAB 1971) (stating that for composite marks
including a word and a design, which of the two features dominates the mark is
usually controlling in determining likelihood of confusion). Moreover, because the
design portion of applicant’s mark is primarily an image of an animated candle, it
serves to reinforce the meaning of the descriptive word “CANDLE,” which is
common to both marks.
The literal portion of applicant’s mark is IT’S JUST A CANDLE and the cited
registration is JUST CANDLES. The marks share the term “JUST” followed by
“CANDLE,” in singular and plural form, respectively. There is no material
difference between singular and plural forms of the same term. See, e.g., In re
Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969); Wilson v. Delaunay,
245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957); In re Sarjanian, 136 USPQ 307,
308 (TTAB 1962). The additional terms “IT’S” – the contraction of the pronoun “it”
and the verb “is” – and the indefinite article “A” in applicant’s mark are
insignificant as source-identifiers and do not distinguish applicant’s mark from the
cited registration in any meaningful way.
Although the design component of applicant’s mark may distinguish it from
the registered mark in appearance, we find applicant’s mark to be highly similar to
the cited mark JUST CANDLES in sound, connotation, and commercial impression.
Therefore, the first du Pont factor supports a conclusion that confusion is likely.
Serial No. 77698644
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C. Conclusion under Trademark Act Section 2(d)
In view of our findings that the marks are similar and the goods are identical
and move in the same channels of trade to the same customers, we find that
applicant’s composite mark for scented candles is likely to cause confusion with the
registered mark JUST CANDLES and affirm the refusal on that basis.
For the sake of completeness, we address the two other grounds for refusal.
Specimen Differs from Drawing
In a trademark application, if color is claimed as a feature of the mark, the
specimen and the drawing of the mark must match and the specimen must show
use of the color. Trademark Rule 2.51(a) and 2.72(a)(2); see also Trademark Manual
of Examining Procedure (TMEP) §§ 807.12(a) and 904.02(c)(ii) (October 2012).
Applicant’s drawing displays the literal portion of its composite mark in blue
lettering. Moreover, applicant’s description of its mark states that the wording is
blue.4 However, as the examiner correctly notes, the specimen displays this
wording in the color purple.
Applicant does not argue otherwise. During prosecution, applicant stated
that it would submit either a new drawing or a substitute specimen,5 but
apparently did not. We affirm the refusal of registration on the basis that the mark
on the specimen disagrees with the mark on the drawing and thus fails to show use
of the mark for the applied-for goods.

4 See application and Appeal Brief at 2 (“The terms ‘IT’S JUST A’ and ‘CANDLE’ appear
above and below the candle design, respectively, in the color blue and outlined in white
with black shading.”).
5 December 28, 2009 response to Office action, at 3.
Serial No. 77698644
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Amendment to Principal Register
Finally, the examining attorney refused registration on the ground that
marks eligible for the Principal Register may not be registered on the Supplemental
Register, as explained in TMEP § 815.01 (“An application requesting registration on
the Supplemental Register must be amended to the Principal Register, or refused
registration, if the mark is registrable on the Principal Register.”). See In re U.S.
Catheter & Instrument Corp., 158 USPQ 53, 54 (TTAB 1968); In re Hunt, 132 USPQ
564 (TTAB 1962); Daggett & Ramsdell, Inc. v. I. Posner, Inc., 115 USPQ 96 (Comm’r
Pats. 1957). Applicant did not amend its application to the Principal Register or
address this requirement in its appeal brief.
We agree with the examining attorney that applicant’s mark includes
inherently distinctive matter and so would be eligible for registration on the
Principal Register (if not refused for the other reasons addressed herein). We thus
affirm the refusal to register the application on the Supplemental Register.
Decision: We affirm the refusals to register applicant’s mark (1) due to a
likelihood of confusion with Registration No. 3135122 under Trademark Act Section
2(d); (2) on the basis that the drawing is not a substantially exact representation of
the mark as used on the goods pursuant to Trademark Rule 2.51 and Trademark
Act Sections 1 and 45; and (3) because applicant’s mark is eligible for registration
on the Principal Register rather than the Supplemental Register.