Metro Pins, LLCDownload PDFTrademark Trial and Appeal BoardSep 9, 2014No. 85867017 (T.T.A.B. Sep. 9, 2014) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: September 9, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ________ In re Metro Pins, LLC ________ Serial No. 85867017 _______ Matthew H. Swyers of The Trademark Company, PLLC for Metro Pins, LLC. Ellen Awrich, Trademark Examining Attorney, Law Office 116 (Michael W. Baird, Managing Attorney). _______ Before Quinn, Taylor, and Wolfson. Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Metro Pins, LLC (“Applicant”) filed, on March 5, 2013, an application to register the mark METRO PINS (in standard characters) (“PINS” disclaimed) for charms; charms for collar jewelry and bracelet; cloisonné pins; collectible coins; commemorative coins; commemorative medals; earrings; jewelry, namely, dog tags for wear by humans for decorative purposes; key chains as jewelry; lapel pins; medals; medals and medallions; medals for use as awards; non-monetary coins; ornamental pins; rubber or silicon wristbands in the nature of a bracelet; souvenir pressed coins; tie pins; tie tacks (in International Class 14). Serial No. 85867017 2 The application was filed pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on a claim of first use anywhere and first use in commerce on January 1, 2005. The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when applied to Applicant’s goods, so resembles the previously registered mark METRO CABLE (in standard characters) for “fine jewelry” in International Class 141 as to be likely to cause confusion. When the refusal was made final, Applicant appealed. Applicant and the Examining Attorney filed briefs. Applicant argues that the marks are dissimilar, and that the goods “differ significantly.” Applicant contends that the goods travel in different trade channels and are subject to different marketing methods. Applicant also states that purchasers are sophisticated and that it is unaware of any instances of actual confusion. In support of its arguments Applicant submitted the declaration of an individual, with related exhibits, and copies of third-party registrations. The Examining Attorney maintains that the marks are “very similar,” and that the goods are identical or otherwise closely related. The Examining Attorney also is not persuaded by the lack of actual confusion or the purported sophistication 1 Registration No. 3599276, issued March 31, 2009; combined Sections 8 and 15 declaration accepted and acknowledged. Serial No. 85867017 3 of purchasers. In support of the refusal the Examining Attorney introduced two dictionary definitions,2 and copies of pages from third-party websites. Our determination under Section 2(d) is based on an analysis of all of the 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, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). We initially consider the second du Pont factor regarding the similarity/dissimilarity between the goods. It is well settled that the goods of Registrant and Applicant need not be identical or competitive, or even be offered through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective goods of Registrant and Applicant are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. See Hilson Research, 2 One of these definitions is attached to the Examining Attorney’s brief, and of which the Examining Attorney requested the Board to take judicial notice. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). See In re Thomas White Int’l Ltd., 106 USPQ2d 1158, 1160 n.1 (TTAB 2013). Serial No. 85867017 4 Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993). The issue here, of course, is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). 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 in the application and cited registration. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007). In making our determination regarding the relatedness of the goods, we must look to the goods as identified in the application and the cited registration. See Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Applicant’s goods, in part, include “charms for collar jewelry and bracelet; earrings; jewelry, namely, dog tags for wear by humans for decorative purposes; key chains as jewelry; and tie tacks.” Registrant’s goods are identified as “fine jewelry.” Because the identifications of Applicant’s and Registrant’s respective goods have no limitations or restrictions, it is presumed that as recited the goods encompass all goods of the type identified. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera- Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). Serial No. 85867017 5 Registrant’s identification of goods, “fine jewelry,” is broadly worded and, as such, the goods are deemed to include the specific types of jewelry items in Applicant’s identification, such as earrings, charms and dog tags to be worn as jewelry. Accordingly, we consider these goods to be legally identical or, at the very least, highly related goods for purposes of the likelihood of confusion analysis. Further, because 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 are the same. See 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); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). The goods are likely to be sold through the same trade channels (e.g., jewelry stores, online retailers of jewelry) to the same classes of purchasers (e.g., ordinary consumers). Lest there be any question on the close relationship between Applicant’s and Registrant’s goods, the Examining Attorney’s submitted pages from third-party websites showing the same retailer offering jewelry and the various types of other items listed in the application (e.g., medals and medallions), at times under the same mark. Serial No. 85867017 6 The record includes the affidavit of Morgan Flom, an individual who apparently is affiliated with Applicant, yet no formal title or job responsibility is indicated. In any event, the affiant indicates that his statements are based “upon my own knowledge.” The accompanying exhibits include pages from Applicant’s and Registrant’s websites, as well as from third-parties’ websites. Mr. Flom makes numerous factual statements relating to the goods, which include the following: Our mark METRO PINS is used exclusively in connection with the design and creation of custom-made promotional items. Our goods are marketed exclusively to organizations, companies, and individuals that need multiple pieces of custom promotional items. Our industry is highly specialized and there is absolutely no overlap in the trade and/or marketing channels utilized by the average purchaser of luxury jewelry items. In contrast, the David Yurman IP LLC [Registrant] mark is used only with fine jewelry made from metals such as platinum and gold and precious gemstones. The trade channels of our goods bearing the METRO PINS mark are currently offered through our website hosted at www.metropins.com, as well as via phone and email order. In contrast, it appears that the trade channels of the goods bearing the [Registrant’s] mark are offered at numerous locations wherever [Registrant] distributes jewelry, including both boutiques under the name David Yurman as well as at upscale department stores. Accordingly, there is simply very little overlap in the channels of trade between the goods provided under our METRO PINS mark and the goods provided under the [Registrant’s] mark. Serial No. 85867017 7 In my experience with our business our clients exercise a very high level of sophistication in choosing the goods offered under our METRO PINS mark. After all, they are choosing goods which are designed to attract very specific consumer[s], namely, organizations, companies, and individuals that need multiple pieces of custom promotional items. The prices of the promotional items offered under the METRO PINS mark range depending on the item and quantity ordered, but are generally available for between $1.00 and $12.00 per item. It can only be assumed that the [Registrant’s] mark was used to attract individuals seeking luxury jewelry sold under the David Yurman brand. The prices for the find [sic] jewelry bearing the [Registrant’s] mark range from $500 to $32,000. Mr. Flom’s statements, and the exhibits attached to the affidavit, are largely irrelevant to our analysis. An applicant may not restrict the scope of the goods covered in its application or in the cited registration by argument or extrinsic evidence. In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1165 (TTAB 2013), In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008), In re Bercut-Vandervoort & Co., 229 USPQ2d 763, 764 (TTAB 1986). Thus, any specific differences between the actual nature of the goods are irrelevant in our analysis. As noted above, neither of the identifications of goods includes any of the limitations in trade channels, classes of purchasers or prices highlighted by Mr. Flom. The legal identity, in part, of the goods, and the presumed identity in trade channels and purchasers are factors that weigh heavily in favor of a finding of likelihood of confusion. We next turn to consider the similarity between Applicant’s mark METRO PINS and Registrant’s mark METRO CABLE. We must compare the marks in their Serial No. 85867017 8 entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005), quoting In re E. I. du Pont de Nemours & Co., 177 USPQ at 567. “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, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In comparing the marks, we are mindful that where, as here, the goods are in part legally identical, the degree of similarity between the marks necessary to find 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, 101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). Although marks must be considered in their entireties, it is settled that one feature of a mark may be more significant than another, and it is not improper to Serial No. 85867017 9 give more weight to this dominant feature in determining the commercial impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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. Indeed, this type of analysis appears to be unavoidable.”). Each mark begins with the identical distinctive word, METRO, followed by a descriptive/highly suggestive word. In Applicant’s mark, METRO is followed by the word “pin,” which is defined as “an ornament fastened to clothing by means of a clasp.” (). Being a generic name for some of Applicant’s goods, the word is properly disclaimed apart from Applicant’s mark. The word “cable” in Registrant’s mark is defined as “something that resembles [a strong, large-diameter, heavy] steel or fiber rope.” (). Registrant’s jewelry items sold under the mark have a cable-like appearance, resembling twisted rope. Accordingly, each mark is dominated by the word METRO. The other words in the respective marks, PINS and CABLE, are subordinate and lack distinctiveness when considered in the context of the goods. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,” is the dominant portion of the mark THE DELTA CAFE). Moreover, purchasers in general are inclined to focus on the first word or portion in a trademark; in this case, the first word in each mark is Serial No. 85867017 10 identical, namely METRO. Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is likely to be impressed upon the mind of a purchaser and remembered”). See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. Simply put, the difference between PINS and CABLE in the marks is insufficient to distinguish the marks, especially when used in connection with identical goods.3 In sum, the marks METRO PINS and METRO CABLE, when considered in their entireties, are very similar in sound, appearance, meaning and overall commercial impression. The similarity between the marks is a factor that weighs in favor of a finding of likelihood of confusion. In an attempt to show that the cited mark is weak under the sixth du Pont factor, applicant introduced fifteen third-party registrations of METRO formative marks. Contrary to Applicant’s argument, this evidence does not establish that METRO is a weak mark in the jewelry industry. In general, absent evidence of actual use, third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of 3 Applicant argues that its mark “creates a feeling of PINS that are Metropolitan or sleek and sophisticated” while in contrast Registrant’s mark “creates an impression of a wire or telegraph system or some more industrial instrument.” (Brief, p. 10). Suffice it to say, Applicant’s argument is disingenuous, given that the commercial impression of Registrant’s mark is considered in the context of the goods, in this case, jewelry. See TMEP § 1207.01(b)(v) (2014) (“The meaning or connotation of a mark must be determined in relation to the named goods or services.”). Serial No. 85867017 11 registrations reposing in the U.S. Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). See also Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to strength of a mark, however, registration evidence may not be given any weight.”). More specifically in this case, only one of the registrations covers jewelry, and the registered mark is METROPOLITAN. The remaining fourteen registrations cover goods such as clothing, and retail services related thereto, as well as motorcycle boots, picnic tote bags, luggage and retail store services featuring pet goods. Such registrations that do not cover goods that are similar to those involved herein are irrelevant to our analysis. See In re Melville Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991). This factor is neutral. As indicated above in Mr. Flom’s affidavit, Applicant claims that the relevant customers of the involved goods are sophisticated. Even assuming that Applicant’s and Registrant’s goods may involve a careful purchase, it is settled that sophisticated purchasers are not immune from source confusion, especially in cases such as the instant one involving highly similar marks and legally identical or closely related goods. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers...are not infallible.”). Serial No. 85867017 12 See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that the similarity between the marks and the identity of the goods sold thereunder outweigh any presumed sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods). Accordingly, this factor is neutral. With respect to the eighth du Pont factor, Applicant states that it is unaware of any instances of actual confusion between its mark and Registrant’s mark. More specifically, Mr. Flom stated the following: We began using the mark METRO PINS in association with our goods since January 13, 2005. In that time there have been no instances of actual confusion with the [Registrant’s] mark. We believe this period of co-existence without any evidence of actual confusion between [the marks] to be significant insofar as if a likelihood of confusion truly existed would we not have seen some evidence thereof? Correspondingly, if there has been no such confusion how can it be argued that such is still “likely” devoid of any evidence thereof? It is not necessary to show actual confusion in order to establish likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990). Applicant’s assertion, particularly in this ex parte proceeding, is entitled to little weight. See In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“uncorroborated statements of no known instances of actual confusion are of little evidentiary value”). See also In Serial No. 85867017 13 re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that testimony of applicant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion); In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009); In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1588 (TTAB 2007); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any event, the record is devoid of evidence relating to the extent of use of Applicant’s and Registrant’s marks that would enable us to determine whether there have been meaningful opportunities for instances of actual confusion to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). Accordingly, the du Pont factor of the length of time during and conditions under which there has been contemporaneous use of the marks without evidence of actual confusion is considered neutral. We have carefully considered all of the evidence made of record pertaining to the issue of likelihood of confusion, as well as all of the arguments related thereto, including any evidence and arguments not specifically discussed in this opinion. We conclude that purchasers familiar with Registrant’s “fine jewelry” sold under the mark METRO CABLE would be likely to mistakenly believe, upon encountering Applicant’s mark METRO PINS for “earrings, key chains as jewelry” and related jewelry-type items identified in the application, that the goods originate from or are associated with or sponsored by the same entity. Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation