Metro Pins, LLC

Trademark Trial and Appeal Board

Sep 9, 2014

No. 85867017 (T.T.A.B. Sep. 9, 2014)

This Opinion is not a
Precedent of the TTAB

Mailed: September 9, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Metro Pins, LLC
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Serial No. 85867017
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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).
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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

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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.
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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

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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).
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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.
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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.
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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
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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
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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
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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.”).
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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.”).
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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
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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.