88031153 (T.T.A.B. Sep. 30, 2021)

Minted, LLC

Trademark Trial and Appeal BoardSep 30, 2021

88031153 (T.T.A.B. Sep. 30, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: September 30, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Minted, LLC _____ Serial No. 88031153 _____ Meredith M. Wilkes of Jones Day, for Minted, LLC. Rebecca Lee, Trademark Examining Attorney, Law Office 122, Kevin Mittler, Managing Attorney. _____ Before Bergsman, Lynch and Lykos, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: Minted, LLC. (“Applicant”) seeks to register on the Principal Register the standard character mark PIPPA for “Clothing, namely, shirts and t-shirts, leggings, pants, dresses, overalls, one-piece garments for infants and toddlers, and cloth bibs” in International Class 25.1 1 Application Serial No. 88031153, filed July 10, 2018 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce. Citations to the prosecution file refer to the USPTO’s Trademark Status & Document Retrieval (“TSDR”) system. Citations to briefs refer to actual page number, if available, as well as TTABVUE, the Board’s online docketing system. The number preceding “TTABVUE” corresponds to the docket entry number; the number(s) following “TTABVUE” refer to the Serial No. 88031153 - 2 - Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s applied-for mark so resembles the following registered marks, each owned by Pastourelle LLC, that it is likely to cause confusion or mistake or to deceive: Registration No. 3534192 for the standard character mark PIPPA & JULIE on the Principal Register for “Newborn’s, children’s and young teen’s clothing, namely, dresses, tops, skirts and sleepwear” in International Class 25;2 Registration No. 4778166 for the composite mark shown below on the Principal Register for “Newborn’s, children’s and young teen’s clothing, namely, dresses, tops, skirts, short sets and sleepwear” in International Class 25;3 and Registration No. 5547094 for the standard character mark LITTLE BROTHER BY PIPPA & JULIE on the Principal page number(s) of that particular docket entry. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). 2 Registered November 18, 2008; renewed. 3 Registered July 21, 2015. The description of the mark is as follows: “The mark consists of the stylized terms ‘PIPPA & JULIE’ inside a rounded rectangular frame. Four stylized flowers appear in the background, with the flower blooms appearing above the textual element and intersecting the top portion of the rectangle. The stems extend below the textual element and through the bottom portion of the rectangle.” Color is not claimed as a feature of the mark. On July 21, 2020, Post Registration mailed a Section 8 courtesy reminder to Registrant. Serial No. 88031153 - 3 - Register for “Pants; Shirts; Sweaters; T-shirts” in International Class 25.4 Following issuance of the final refusal, Applicant timely filed a request for reconsideration which was denied. The appeal is fully briefed. For the reasons explained below, we affirm the refusal to register. I. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor for which there is evidence or argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). When analyzing these factors, the overriding concerns are not only to prevent buyer confusion as to the source of the goods, but also to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Varying weights may be assigned to each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 26 USPQ2d at 1688 (“the various evidentiary factors may play more or less weighty roles in any particular 4 Registered August 21, 2018. Serial No. 88031153 - 4 - determination”). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”); see also In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (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 differences in the marks.”). These factors, and others, are discussed below. We will concentrate our analysis on the registered standard mark PIPPA & JULIE identified in Registration No. 3534192 for “Newborn’s, children’s and young teen’s clothing, namely, dresses, tops, skirts and sleepwear.” If likelihood of confusion is found as to this registration, it is unnecessary to consider the other cited registrations. Conversely, if likelihood of confusion is not found, we would not find likelihood of confusion as to the other cited registration. See, e.g., In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). A. The Goods and Established, Likely-to-Continue Channels of Trade and Classes of Consumers We commence by comparing the goods as they are identified in the involved Serial No. 88031153 - 5 - application and cited registration.5 See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Applicant’s goods are identified as “Clothing, namely, shirts and t-shirts, leggings, pants, dresses, overalls, one-piece garments for infants and toddlers, and cloth bibs” in International Class 25. The cited registration includes “Newborn’s, children’s and young teen’s clothing, namely, dresses…” Insofar as Applicant’s “Clothing, namely, … dresses” are unrestricted as to type (i.e. men’s, women’s, or children’s) we can assume that the identification encompasses all types of dresses, including Registrant’s more specific dresses for newborns, children, and young teens. See, e.g., 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 such, the goods are legally identical in part. Moreover, it is well-established that likelihood of confusion must be found as to the entire class if there is likely confusion with respect to any good that comes within the identification in that class. Tuxedo Monopoly Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 5 Applicant presented no arguments regarding these DuPont factors in either its main or reply briefs. Serial No. 88031153 - 6 - 1981). In addition, because Applicant’s identification does not contain limitations regarding intended users of its respective goods, we cannot narrow the class of the intended purchasers. See, e.g., Detroit Athletic Co., 128 USPQ2d at 1052 (“the registration does not set forth any restrictions on use and therefore cannot be narrowed by testimony that the applicant’s use is, in fact, restricted to a particular class of purchasers”) (citation omitted); In re i.am.symbolic, LLC, 123 USPQ2d at 1748. Because the goods are legally identical in part, we must presume that these particular goods travel in the same ordinary trade and distribution channels and will be marketed to the same potential consumers seeking clothing items. See 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); 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); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). These DuPont factors weigh in favor of finding a likelihood of confusion. B. The Marks This DuPont likelihood of confusion factor involves an analysis of the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Serial No. 88031153 - 7 - Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (citing DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d, Slip Op. No. 18–2236 (Fed. Cir. Sept. 13, 2019) (mem) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). Accord Krim- Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728 , 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted). “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). Our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). Where, as here, the goods are identical in part, less similarity between the marks is needed for us to find a likelihood of confusion. Coach Servs., 101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, Serial No. 88031153 - 8 - 1700 (Fed. Cir. 1992) (“When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.”). As noted above, we are comparing Applicant’s mark PIPPA with the cited mark PIPPA & JULIE. Applicant acknowledges that both marks contain the given name PIPPA but argues that the similarities stop there insofar as visually and audibly, the marks are different. Applicant disagrees with the Examining Attorney’s determination that PIPPA as it appears in the cited mark is the dominant element, contending that this finding is improper and lacks evidentiary support. Applicant urges the Board to find “& JULIE” co-dominant with PIPPA, thereby differentiating the marks both not only visually and audibly but in meaning and commercial impression as well. We disagree. Applicant’s and Registrant’s marks are similar in appearance and sound. The cited mark PIPPA & JULIE commences with the given name PIPPA, the entirety of the Applicant’s mark. Consistent with our case law, the Examining Attorney made no error in finding that PIPPA, as the first term in the cited mark, is the dominant portion of that mark. It well established that consumers are generally more inclined to focus on the first word in a trademark. See Detroit Athletic Co., 128 USPQ2d at 1049 (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”); Palm Bay, 73 USPQ2d at 1692 (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the Serial No. 88031153 - 9 - first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp., 23 USPQ2d at 1700 (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”). Consumers, focusing on the first shared common element, may perceive the applied-for mark as a shortened form of the cited mark. See, e.g., In re Mighty Leaf Tea, 601 F.3d, 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (affirming Board decision that ML is likely to be perceived as a shortened version of ML MARK LEES, and noting that “the presence of an additional term in the mark does not necessarily eliminate the likelihood of confusion if some terms are identical.”); Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1819 (TTAB 2015) (“While Opposer’s beer was originally sold under the BUDWEISER brand, customers soon began to abbreviate the mark, calling for BUDWEISER beer just by the name ‘BUD.”‘); Big M Inc. v. U.S. Shoe Corp., 228 USPQ 614, 616 (TTAB 1985) (“[W]e cannot ignore the propensity of consumers to often shorten trademarks and, in the present case, this would be accomplished by dropping the ‘T.H.’ in referring to registrant’s stores [T.H. MANDY].”). While there is no explicit rule that we must find marks similar where the cited mark contains Applicant’s entire mark, the fact that it does increases the similarity between the two. See In re Mighty Leaf Tea, 601 USPQ2d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to opposer’s mark ML MARK LEES both for personal care and skin products); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (applicant’s mark THE LILLY for women’s dresses is similar to LILLI ANN for Serial No. 88031153 - 10 - women’s apparel including dresses); Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660 (TTAB 2014) (applicant’s mark PRECISION is similar to opposer’s mark PRECISION DISTRIBUTION CONTROL); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (applicant’s CAREER IMAGE for women's clothing stores and women’s clothing is similar to CREST CAREER IMAGES for uniforms including items of women’s clothing). In U.S. Shoe, the Board observed, “Applicant’s mark would appear to prospective purchasers to be a shortened form of registrant’s mark.” 229 USPQ at 709. Furthermore, the marks share a similar meaning and commercial impression. Both “Pippa” and “Julie” are female given names. Thus, the addition of the name “JULIE” to the cited mark does not create a significantly different overall connotation and impression than Applicant’s mark. For all the foregoing reasons, consumers familiar with the mark PIPPA & JULIE are likely to perceive Applicant’s mark PIPPA as a variant mark denoting a product line extension. See, e.g., Schieffelin & Co. v. Molson Cos., Ltd., 9 USPQ2d 2069, 2073 (TTAB 1989) (“Those consumers who do recognize the differences in the marks may believe that applicant’s mark is a variation of opposer’s mark that opposer has adopted for use on a different product.”); cf. In re Toshiba Med. Sys. Corp., 91 USPQ2d at 1271 (VANTAGE TITAN “more likely to be considered another product from the previously anonymous source of TITAN medical diagnostic apparatus, namely, medical ultrasound devices”). Applicant also argues that because the USPTO permitted the marks listed below Serial No. 88031153 - 11 - for clothing items to coexist on the Principal Register, the Board should make a finding that Applicant’s and Registrant’s marks are dissimilar: DYLAN & ABBEY and DYLAN LOGAN & MARTIN and MARTIN OLIVIA & MCKAYLIE and OLIVIA BELLA & CHLOE and BELLA LISA & DANIEL and DANIEL TODD & DUNCAN and DUNCAN ISLA & LULU and LULU In support thereof, Applicant relies solely on copies of each registered mark obtained from the USPTO database.6 We are unable to determine, however, from the face of the registration certificates the context under which these third-party registrations were permitted. Cf. In re Nett Designs, Inc., 263 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to Nett Design’s application, the PTO’s allowance of such registrations does not bind the Board or this court.”). As such, Applicant’s evidence is of little, if any, probative value. In sum, although we have pointed to Applicant’s mark as identical to the dominant portion of the cited mark, we acknowledge the fundamental rule that the marks must be considered in their entireties and not dissected. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015); Massey Junior Coll., Inc. v. 6 Applicant’s May 1, 2019 Response to Office Action, TSDR, pp. 20-36. Serial No. 88031153 - 12 - Fashion Inst. of Tech., 492 F.2d 1399, 181 USPQ 272, 273-74 (CCPA 1974). We note the specific differences pointed out by Applicant. These differences, however, are outweighed by the similarities of the marks. Thus, when comparing the marks overall, they are similar in sound, meaning, connotation and overall commercial impression. The similarity of the marks also weighs in favor of finding a likelihood of confusion. C. Conditions of Sale We turn now to the conditions under which the goods are likely to be purchased, e.g., whether on impulse or after careful consideration, as well as the degree, if any, of sophistication of the consumers. Purchaser sophistication or degree of care may tend to minimize likelihood of confusion. Conversely, impulse purchases of inexpensive items may tend to have the opposite effect. Palm Bay, 73 USPQ2d at 1695. Applicant argues that “[s]electing clothing is a thoughtful purchase and one that requires time” because “[c]lothing can affect everything from our self-perception to our confidence and productivity.”7 Applicant further adds that “when selecting clothing for children, parents will take particular care and pay extra attention to the brands they are selecting.”8 Applicant also points to evidence in the record that a wide price range exists for clothing items.9 For these reasons, Applicant maintains that 7 Applicant’s Brief, p. 7; 7 TTABVUE 9. 8 Id. 9 November 1, 2018 Office Action, TSDR p. 16-28; January 12, 2020 Office Action, TSDR p. 5-30; August 4, 2020 Final Office Action, TSDR p. 10-22; March 14, 2021 Request for Reconsideration After Final Action Denied, TSDR p. 5-49. Serial No. 88031153 - 13 - prospective consumers will be able to distinguish Applicant’s mark from the cited mark when making purchasing decisions. Applicant’s arguments are misplaced. The identifications in the application and cited registration include “dresses” and dresses for newborns, children, and young teens at no specified price point and are not restricted by fashion sense or sophistication. As noted above, we cannot assume, as Applicant urges, that these items are rendered to different classes of buyers, in different marketing contexts or at different prices. We look to the registration and application, and not to extrinsic evidence about Registrant’s and Applicant’s actual goods, customers, or channels of trade. See Stone Lion, 110 USPQ2d at 1161; Octocom, 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.”); Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods”). Rather, we must assume that the types of buyers overlap to include both the sophisticated fashionista as well as the ordinary bargain hunter shopping for dresses for newborns, children, and young teens. And “the applicable standard of care for the likelihood of confusion analysis is that of the least sophisticated consumer.” Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d Serial No. 88031153 - 14 - 1030, 1039 (TTAB 2016) (citing Stone Lion, 110 USPQ2d at 1163). Ordinary consumers of Applicant’s and Registrant’s goods are likely to exercise only ordinary care, and given the lack of price restrictions in the identifications, may even buy inexpensive items of this type on sale on impulse. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) (“When products are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion is increased because purchasers of such products are held to a lesser standard of purchasing care.”). Accordingly, this factor also weighs in favor of finding a likelihood of confusion. II. Conclusion We have carefully considered all of the evidence made of record, as well as all of the arguments related thereto. The similarities of the marks coupled with the in-part identical nature of the goods and presumptively overlapping trade channels and classes of consumers lead us to the conclusion that prospective consumers are likely to confuse the involved goods as originating from or associated with or sponsored by the same entity. While an addition to a cited mark may be sufficient to avoid a likelihood of confusion if the marks in their entireties convey significantly different commercial impressions (see, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004)) such is not the case here. Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.