EX (T.T.A.B. Mar. 15, 2019)

Marte Ravn Tovik

Trademark Trial and Appeal BoardMar 15, 2019

EX (T.T.A.B. Mar. 15, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: March 15, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Marte Ravn Tovik _____ Serial No. 87503236 _____ Marte Ravn Tovik, pro se. Ellen J. G. Perkins, Trademark Examining Attorney, Law Office 110, Chris A. F. Pedersen, Managing Attorney. _____ Before Cataldo, Ritchie and Greenbaum, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, Marte Ravn Tovik, seeks registration on the Principal Register of the mark SUCCULENT (in standard characters), identifying the following goods: Bath bombs; Bath melts; Body butter; Body and beauty care cosmetics; Bubble bath; Lip balm; Shower and bath gel; Bar soap; Bath soaps in liquid, solid or gel form; Beauty soap; Body scrub; Cosmetic soaps; Cream soaps; Hand scrubs; Lotions for face and body care; Natural soap bars; Perfumed soap; Skin care preparations, namely, body balm; Skin soap; Toilet soaps, in International Class 3.1 1 Application Serial No. 87503236 was filed on June 23, 2017, based upon Applicant’s allegation of a bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 87503236 - 2 - The Trademark Examining Attorney has 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, when used in connection with the identified goods, so resembles the mark SUCCULENT SCENTS (in standard characters with SCENTS disclaimed), registered on the Principal Register for Cosmetic preparations for body care; Non-medicated bath preparations; Room fragrances in International Class 3,2 as to be likely to cause confusion, mistake or deception. When the refusal was made final, Applicant appealed. The Examining Attorney and Applicant filed briefs. We affirm the refusal to register. I. Likelihood of Confusion When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in 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., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relatedness of the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). A. Relatedness of the Goods/Channels of Trade/Consumers With regard to the goods, channels of trade and classes of consumers, we must make our determinations under these factors based on the goods as they are 2 Registration No. 4493950 issued on March 11, 2014. Serial No. 87503236 - 3 - identified in the application and cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming public may perceive [the respective goods or services of the parties] as related enough to cause confusion about the source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett Packard, 62 USPQ2d at 1004). In this case, the “Cosmetic preparations for body care” identified in the cited registration are essentially identical to the “Body and beauty care cosmetics” identified in the involved application inasmuch as both are cosmetics intended for body care. Similarly, the broadly worded “Non-medicated bath preparations” identified in the cited registration must be presumed to include, at least, Applicant’s more narrowly and specifically identified “Bath bombs; Bath melts; Bubble bath; Bath soaps in liquid, solid or gel form.” In other words, Applicant’s bath bombs, melts and soaps, and bubble bath are subsumed under the more generally identified bath preparations identified in the cited registration. See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). As a result, Applicant’s goods are presumed Serial No. 87503236 - 4 - to be included among the goods in the cited registration and are legally identical thereto.3 Because the goods in the application and cited registration are legally identical as to bath product and cosmetics, there is no need for us to further consider the relatedness of the goods. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a single good from among several may sustain a finding of likelihood of confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods or services in the application). Inasmuch as the goods identified in the application and the cited registration are, in part, legally identical, we must presume that the channels of trade and classes of purchasers for these goods are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same 3 We note that in her brief, Applicant does not argue that her goods are dissimilar from those in the cited registration. See generally 4 TTABVUE. In her March 7, 2018 Response to the Examining Attorney’s first Office Action, (at .pdf 6, 9, 30-33) Applicant argues that Registrant’s social media site suggests that it is primarily a candle store. However, and as discussed above, we must base our determination regarding the relatedness of the goods on their identification in Applicant’s involved application and the cited registration. See, e.g., In re Dixie Rests. Inc., 41 USPQ2d at 1534; Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1161. We cannot read restrictions into these identified goods based upon Applicant’s arguments and evidence. Nonetheless, we note that Applicant’s social media site (Id. at .pdf 30-31) mentions “shimmering body sprays” and “spa gift sets” as well as a “bath and body line” of products which indicate that Registrant offers goods in addition to candles. Serial No. 87503236 - 5 - classes of purchasers through the same channels of trade”); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”). See also Octocom Sys., Inc., 16 USPQ2d at 1787 (“The authority is legion that 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 regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.”). We find that the du Pont factors of the in-part legal identity of the goods, channels of trade and consumers weigh heavily in favor of likelihood of confusion. B. Conditions of Sale Neither identification of goods restricts the identified bath products and cosmetics by price. Because the identifications of goods in the application and cited registration include ordinary consumer products used on a daily basis and contain no limitations as to price points, we must presume that the bath products and body care cosmetics include lower cost items that may be purchased without a high degree of care. There is no evidence that Applicant’s bath and cosmetic products or the bath and cosmetic products identified in the cited registration are limited to high-priced items such that consumers would exercise a heightened degree of care in their purchasing decisions. Serial No. 87503236 - 6 - We therefore presume that the recited goods includes lower cost bath and cosmetic items that may be subject to casual, impulse purchase. As a result, this du Pont factor also favors a finding of likelihood of confusion. C. Similarity/Dissimilarity of the Marks We consider Applicant’s mark SUCCULENT and the registered mark SUCCULENT SCENTS, both in standard characters, and compare them “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 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). The marks “must be considered … in light of the fallibility of memory.” St. Helena Hosp., 113 USPQ2d at 1085 (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average consumer, who retains a general rather than specific impression of the marks. 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). Applicant’s mark SUCCULENT and Registrant’s mark SUCCULENT SCENTS are similar inasmuch as Applicant’s mark consists in its entirety of the most distinctive and prominent term in the registered mark. The disclaimed word SCENTS in the registered mark has little, if any, trademark significance because, at a minimum, it is highly descriptive of Registrant’s identified goods, which include room fragrances. It is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See Cunningham v. Laser Golf Serial No. 87503236 - 7 - Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 41 USPQ2d at 1533-34; In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, such as a common dominant element, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data Corp., 224 USPQ at 751. The presence of the additional term SCENTS would not be likely to distinguish the marks since it would merely indicate that the owner of the cited registration offers a group of products under its mark. See In re Jewelmasters, Inc., 221 USPQ 90 (TTAB 1983) (JEWELMASTERS for retail jewelry store services held likely to be confused with MASTER JEWELER’S COLLECTION for jewelry); Drexel Enterprises, Inc. v. Prescolite Mfg. Corp., 148 USPQ 92 (TTAB 1965) (HERITAGE COLLECTION, Collection disclaimed, for lighting fixtures confusingly similar to HERITAGE for a line of furniture). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Given the dominance of the word ‘Packard’ in PACKARD TECHNOLOGIES and HP’s heavy involvement in the technology field, this court agrees with the Board that the similarities in the marks [PACKARD Serial No. 87503236 - 8 - TECHNOLOGIES and HEWLETT PACKARD] outweigh the differences. Substantial evidence supports the Board’s finding that the marks are similar in their entireties”). Further highlighting the importance of the term SUCCULENT in the registered mark is its location as the first part thereof. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994) (upon encountering the marks, consumers will first notice the identical lead word); Presto Prod. Inc. v. Nice-Pak Prod., 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”). “[I]f the dominant portion of both marks is the same, then confusion may be likely notwithstanding peripheral differences.” In re Denisi, 225 USPQ 624, 624 (TTAB 1985). The peripheral difference in this case, namely, the addition of the word SCENTS in the registered mark, is insufficient to distinguish the marks. As discussed above, “SCENTS” is at best highly descriptive of Applicant’s goods and modifies SUCCULENT in the registered mark and thus serves to reinforce it. While we recognize the obvious differences between the marks presented by the term SCENTS in the registered mark, the marks overall are much more similar than dissimilar in appearance and sound. Serial No. 87503236 - 9 - With regard to meaning or connotation, the term SUCCULENT may be defined, inter alia, as “full of juice, juicy; rich in desirable qualities; affording mental nourishment; (of a plant) having fleshy and juicy tissues.”4 Applicant argues: While the registrant’s mark consists of two words - SUCCULENT (adjective) plus SCENTS (noun), the applicant is applying for one word SUCCULENT (noun) only. The literal meanings (and hence connotations) of the marks are very different: juicy/delicious scents vs a plant. Such differences in meaning and connotation are to be considered key factors in determining the likelihood of confusion, and the mark SUCCULENT should not be considered the same as SUCCULENT SCENTS minus SCENTS.5 There is little, if any, evidence in the record to support Applicant’s contention that consumers will perceive the term SUCCULENT as referring to a plant in her mark and to juicy, delicious scents in the registered SUCCULENT SCENTS mark.6 To the contrary, we find it is equally likely that consumers will view the term SUCCULENT in both marks as suggesting that the identical bath and cosmetic products identified in the application and cited registration are rich in desirable qualities. Thus, consumers will perceive Applicant’s SUCCULENT mark as suggesting the same or closely related qualities as the registered SUCCULENT SCENTS mark. 4 Applicant’s March 7, 2018 Response to first Office Action at .pdf 11. Definition retrieved from dictionary.com. 5 4 TTABVUE 2. Emphasis supplied by Applicant. 6 Applicant’s evidence, submitted with her March 7, 2018 Response to first Office Action at .pdf 12-15, listing pending applications and registrations from the USPTO’s Trademark Electronic Search System (TESS) database displaying marks, most of which include the term “scent,” does not compel a different result. Because of the very limited information contained in the listing, it has little probative value with regard to the connotations of the term “scent” in the marks listed therein. “It has been said many times that each case must be decided on its own facts.” In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) (internal citation omitted). We further note that none of the third-party applications or registrations include the term “succulent.” Serial No. 87503236 - 10 - Based upon the above analysis, we find that SUCCULENT is more similar than dissimilar to SUCCULENT SCENTS in terms of appearance, sound, connotation and commercial impression. As a result, consumers encountering SUCCULENT could mistakenly believe that it represents a variation on the registered SUCCULENT SCENTS mark used to identify bath and cosmetic produces emanating from the same source. This is particularly the case because, “[w]hen marks would appear on virtually identical ... [goods or] services, the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines.” See Century 21 Real Estate Corp. v. Century Life of America, 23 USPQ2d at 1700. See also ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443, 449 (TTAB 1980). In view thereof, the du Pont factor of the similarity of the marks favors a finding of likelihood of confusion. II. Conclusion In conclusion, we find that the goods are legally identical in part and are presumed to be available in the same channels of trade at all price points to the same classes of consumers. We further find Applicant’s mark SUCCULENT and the SUCCULENT SCENTS mark in the cited registration are more similar than dissimilar, and no evidence of record establishes that most distinctive portion of the registered mark, i.e., SUCCULENT, is weak in connection with the goods at issue. We find, therefore, that confusion is likely between Applicant’s mark SUCCULENT and the mark in the cited registration. Serial No. 87503236 - 11 - Decision: The refusal to register based on likelihood of confusion under Section 2(d) of the Trademark Act is affirmed.