88815647 (T.T.A.B. Jul. 1, 2021)

Mobi Retail, Inc

Trademark Trial and Appeal BoardJul 1, 2021

88815647 (T.T.A.B. Jul. 1, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: July 1, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Mobi Retail, Inc. _____ Serial No. 88815647 _____ Taylor James Howard of A.E.I. Law, P.C., for Mobi Retail, Inc. Geoffrey Fosdick, Trademark Examining Attorney, Law Office 111, Chris Doninger, Managing Attorney. _____ Before Mermelstein, Lynch, and Pologeorgis, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background Mobi Retail, Inc. (“Applicant”) seeks registration on the Principal Register of the mark MOBI in standard characters for: Athletic footwear; Athletic footwear for men, women, and children; Athletic shoes; Boots; Boots for motorcycling; Boots for sport; Shoes; Sneakers; Ankle boots; Basketball shoes; Basketball sneakers; Beach shoes; Boat shoes; Serial No. 88815647 - 2 - Canvas shoes; Climbing boots; Climbing shoes; Deck-shoes; Footwear for track and field athletics; Footwear, namely, work boots; Gym boots; Half-boots; Hiking boots; Leather boots; Leather shoes; Leisure shoes; Mountaineering boots; Outerwear, namely, utility boots, sneakers, running shoes, athletic shoes; Riding boots; Rubber shoes; Running shoes; Shoes for men, women, and children.; Slip-on shoes; Sports shoes; Track and field shoes; Training shoes; Trekking boots; Water repelling boots; Water repelling leather boots; Water repelling leather shoes and boots; Waterproof boots; Waterproof leather boots; Waterproof leather shoes; Waterproof leather shoes and boots; Women’s shoes; Work shoes and boots, in International Class 25.1 The Examining Attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with the previously registered mark MOBY in typed form for goods and services that include “Clothing and accessories, namely jackets, sweaters, T-shirts, underwear; hats and headwear” in International Class 25.2 After the Examining Attorney made the refusal final, Applicant filed a request for reconsideration and appealed. Applicant’s Request for Reconsideration included an amendment that significantly narrowed the identification of goods, deleting the numerous clothing goods in the original identification, and leaving only the footwear set forth above. The Examining Attorney accepted the amendment, but denied the request for reconsideration, maintaining the likelihood of confusion refusal. The Examining 1 Application Serial No. 88815647 was filed February 28, 2020, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). 2 Registration No. 2748580 issued June 2, 2000, and has been maintained. The registered mark is in typed form, which is the predecessor to, and legal equivalent of, a standard character mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (“until 2003, ‘standard character’ marks formerly were known as ‘typed’ marks”); see also Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a) (referring to “Standard character (typed) drawing”). Serial No. 88815647 - 3 - Attorney added to the record some relatedness evidence specific to Applicant’s remaining goods. The appeal then proceeded, and has been fully briefed. For the reasons set forth below, we affirm the refusal to register. II. Likelihood of Confusion Our determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). The Board considers only those DuPont factors for which there is evidence and argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); see also Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 2020 USPQ2d 10341, *3 (Fed. Cir. 2020) (“Not all DuPont factors are relevant in each case . . . .”). Two key considerations are the similarities between the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (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.”). Serial No. 88815647 - 4 - A. Strength of the Cited Mark The fifth and sixth DuPont factors allow consideration of the strength of the cited registered mark, and the extent to which that strength may be attenuated by “[t]he number and nature of similar marks in use on similar … goods.” DuPont, 177 USPQ at 567. “A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace [or commercial] strength (secondary meaning).” In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010). For likelihood of confusion purposes, a mark’s strength “varies along a spectrum from very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (citing Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)). In contrast to the typical arguments about strength of the mark, Applicant and the Examining Attorney in this case argue about the “fame” of the cited mark by disputing the renown of the mark’s owner, musician Richard Melville Hall, who uses the stage name “Moby,” and the effect of any such renown on the mark.3 As is typical in an ex parte proceeding, the record in this case provides no basis for a finding that the cited MOBY mark for clothing is commercially strong. “[I]n an ex parte appeal 3 7 TTABVUE 6-7 (Applicant’s Brief) (arguing that the “[t]he mark is not ‘famous’ as that term is meant in trademark law, certainly not for ‘clothing’ goods.”); 9 TTABVUE 13-14 (Examining Attorney’s Brief) (“in this case, if Registrant’s mark MOBY is famous, as Applicant argues, it should be afforded a broad scope of legal protection”). Serial No. 88815647 - 5 - the ‘fame of the mark’ factor is normally treated as neutral because the record generally includes no evidence as to fame. See [In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006)]; see also In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009) (noting that the absence of evidence as to the fame of the registered mark “is not particularly significant in the context of an ex parte proceeding”).” In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1086 (TTAB 2016). The minimal evidence (a Wikipedia entry) regarding Registrant, the musician known as Moby, does not relate to the strength of the cited mark for clothing. We accord the cited registration the ordinary scope of protection.4 4 Applicant did not argue in its briefing that the cited mark should be considered inherently weak or entitled to a narrowed scope of protection. During prosecution, however, Applicant submitted three third-party registrations of marks including MOBY/MOBI, along with other distinctive matter, for clothing goods. TSDR May 29, 2020 Response to Office Action at 49- 54. See In re Guild Mortg. Co., 2020 USPQ2d 10279 *3 (TTAB 2020) (“[E]vidence of third- party registrations is relevant to ‘show the sense in which . . . a mark is used in ordinary parlance.’”). Applicant also submitted numerous third-party registrations for goods and services unrelated to clothing. TSDR December 18, 2020 Request for Reconsideration at 7- 98. These third-party registrations have no bearing on the strength of the cited mark. Omaha Steaks Int’l v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686 (Fed. Cir. 2018) (error to rely on third-party evidence of similar marks for dissimilar goods, as Board must focus “on goods shown to be similar”); In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (disregarding third-party registrations for goods in other classes where the proffering party “has neither introduced evidence, nor provided adequate explanation to support a determination that the existence of I AM marks for goods in other classes, … support a finding that registrants’ marks are weak with respect to the goods identified in their registrations”). Applicant also submitted some TESS search results, but mere listings of registrations are not sufficient to make the registrations of record. See In re Jonathan Drew, Inc., 97 USPQ2d 1640, 1644 n.11 (TTAB 2011); In re Carolina Apparel, 48 USPQ2d 1542, 1543 n.2 (TTAB 1998). To the extent we consider the lists themselves, given the limited information shown on the face of the lists, which lack even the corresponding goods and services, the lists are not probative of the strength of the cited mark. Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (TESS listing has little, if any, probative value). None of this evidence changes our determination that the cited registration is entitled to the normal scope of protection. Serial No. 88815647 - 6 - We therefore find the fifth and sixth DuPont factors to be neutral in the likelihood of confusion analysis. B. Similarity of the Marks We now compare the marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting 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 mem., 777 Fed. Appx. 516 (Fed. Cir. 2019) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). We assess not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the services offered under the respective marks is likely to result. Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). We compare Applicant’s mark, MOBI, to the cited mark, MOBY, and find the marks very similar in appearance and sound because they differ only by the letter “I” at the end of Applicant’s mark that can be pronounced the same as the letter “Y” at the end of the cited mark. Because the marks are in standard character and typed form, they could appear in exactly the same font, size and color, increasing their similarity. Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (registrant “entitled to depictions of the standard Serial No. 88815647 - 7 - character mark regardless of font style, size, or color”). As to the marks’ connotations and commercial impressions, we also find them similar. Neither word carries significance with respect to the identified clothing or footwear. We are not convinced by Applicant’s arguments regarding the meaning and impressions of the marks. Applicant contends that its mark refers to a Möbius loop, “which is most commonly recognized around the world as a symbol of ‘reduce/reuse/recycle’ (i.e., the three arrows in a circle symbol … and as such is a suggestive referral to the Applicant’s sustainable goods made from ecological products.”5 As such, Applicant argues that the connotation and commercial impression of its mark therefore differs from Registrant’s mark, which Applicant asserts is “the stage name to a once famous musician who hasn’t had a hit album since 1999.”6 First, we do not agree that consumers would perceive Applicant’s mark as a reference to the Möbius loop. As the only support for its claim, Applicant introduced a Wikipedia entry for “Möbius strip” that includes no indication or suggestion that “Mobi” is a recognized abbreviation of Möbius.7 And although the Wikipedia entry refers to the recycling symbol as a Möbius loop,8 Applicant’s goods, as broadly identified, bear no obvious connection to recycling. So we reject Applicant’s claim that 5 7 TTABVUE 5 (Applicant’s Brief). 6 7 TTABVUE 5 (Applicant’s Brief). 7 TSDR May 29, 2020 Response to Office Action at 37-48. 8 TSDR May 29, 2020 Response to Office Action at 46. Serial No. 88815647 - 8 - consumers would perceive its MOBI mark as a suggestive reference to the recycling symbol or to sustainable goods. Second, while Applicant also submitted a Wikipedia entry for the musician “Moby,” whose real name matches that of the owner of the cited registration,9 we find this evidence insufficient to show that consumers encountering the cited mark for clothing necessarily would perceive it as a reference to the musician. We cannot assume that consumers would be aware of the musician, and interestingly, Applicant has repeatedly asserted that the musician currently is not well known. See In re i.am.symbolic, llc, 127 USPQ2d 1627, 1632 (TTAB 2018) (“we must also consider the impact of Applicant’s mark on consumers who are not familiar with that particular album or Mr. Adams’ persona”). Here, we focus on the marks MOBI and MOBY without regard to the alleged “respective actual uses and marketing [that] are not reflected in the identification of goods in the application or the cited registration.” Id. at 1629. We find that consumers would attribute a similar meaning to and derive a similar commercial impression from MOBI and MOBY. Given their overall resemblance in appearance, sound, connotation and commercial impression, we find Applicant’s mark and the cited mark similar. Thus, the first DuPont factor favors a finding of likelihood of confusion. 9 TSDR May 29, 2020 Response to Office Action at 16-36. Serial No. 88815647 - 9 - C. The Goods, Trade Channels and Classes of Consumers The second and third DuPont factors address the relatedness of the goods, the trade channels in which they travel, and the classes of consumers of such goods. Under the second factor, “likelihood of confusion can be found ‘if the respective goods are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs., 101 USPQ2d at 1722 (internal citations omitted). In analyzing the relatedness of the goods, we look to the identifications in the application and cited registration. See In re Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018); Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant identifies various types of footwear while the cited registration identifies “jackets, sweaters, T-shirts, underwear; hats and headwear.” It is sufficient for a finding of likelihood of confusion as to a particular class if relatedness is established for any one of the identified goods within this single-class application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Applicant insists that in the wake of its amendment to the identification, its footwear does not overlap with the clothing in the cited registration. However, as set forth above, this DuPont factor considers not whether goods are legally identical, but whether they are sufficiently related that consumers might believe they come from Serial No. 88815647 - 10 - the same source. See Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989). To show the relatedness of goods such as Applicant’s identified footwear to the clothing goods in the cited registration, the Examining Attorney introduced screenshots from three third-party websites. First, the Nike website features shoes (with photographs), and shows the wording “Fleece” and “Jackets” (under gray boxes that appear to be photographs that had not downloaded prior to the screenshots).10 Second, the Under Armour website includes photos of various articles of clothing as well as a pair of shoes.11 Third, the Vans website features shoes and the “VANS X ANDERSON .PAAK,” with the caption “Vans and Anderson Paak [shown in a photo that includes a hat and shoes] present a special collection of footwear and apparel.”12 Applicant’s own website specimen provides another example of consumer exposure to shoes, hats and other apparel being offered under the same mark. The Vans website and Applicant’s website support the relatedness of the footwear in the application and the hats and clothing in the cited registration by showing that consumers encounter such goods offered under the same mark. See Detroit Ath. Co., 128 USPQ2d at 1050 (crediting relatedness evidence that third parties use the same mark for the goods and services at issue because “[t]his evidence suggests that consumers are accustomed to seeing a single mark associated with a source that sells both”); Hewlett- 10 4 TTABVUE 11-13 (nike.com). 11 4 TTABVUE 14-17 (underarmour.com). 12 4 TTABVUE 18-21 & 5 TTABVUE 2-5 (vans.com). Serial No. 88815647 - 11 - Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (stating that evidence that “a single company sells the goods and services of both parties, if presented, is relevant to a relatedness analysis”). While the Nike and Under Armour website evidence is unclear whether the same marks are used on or in connection with both types of goods, the evidence at least reflects that clothing and footwear travel in the same channels of trade to the same classes of consumers. In addition to the website evidence, we find that by their nature, clothing, hats and footwear are worn together and may be part of an ensemble purchased together. This further demonstrates their complementary and related nature. See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991) (shoes may be featured in a larger ensemble of clothing items frequently purchased in a single shopping expedition, and shoes and clothing may be found in the same stores; thus, shoes found to be complementary with clothing); In re U.S. Shoe Corp., 8 USPQ2d 1938 (TTAB 1988) (cowboy boots and clothing items, including hats, are related and may be sold in the same stores); Nina Ricci, S.A.R.L. v. ETF Enters., Inc., 203 USPQ 947 (TTAB 1979) (shoes and clothing are “commercially related”). While Applicant seeks to distinguish the goods based on alleged actual differences in the marketplace, such as calling Registrant’s goods “‘merch’ sold at the musician Moby’s shows,”13 we cannot consider this narrower characterization of Registrant’s goods because there is no such restriction in the cited registration’s identification of goods. Nor, for the same reason, can we consider Applicant’s narrower 13 7 TTABVUE 5 (Applicant’s Brief). Serial No. 88815647 - 12 - characterization of its own goods as “sustainable.” The second DuPont factor therefore weighs in favor of likely confusion. Under the third DuPont factor, the relatedness evidence discussed above shows that footwear and clothing are offered together through the same retail websites, and therefore travel in some of the same trade channels to some of the same classes of consumers. Applicant argues that “the goods being found on the internet or in large department stores under the same entity, proves little, if anything, about the likelihood that consumers will be confused by similar marks.”14 However, the evidence shows that more specialized retailers such as Nike, Under Armour, Vans, and Applicant sell both clothing and footwear through their websites. We do not consider such retail websites akin to “large department stores” that sell a wide variety of different kinds of goods. Thus, the third DuPont factor also weighs in favor of likely confusion. D. Conditions Under Which and Buyers to Whom Sales Are Made The fourth DuPont factor involves “[t]he conditions under which and buyers to whom sales are made, i.e., impulse vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at 567. Applicant contends “that even the least sophisticated potential purchaser is quite sophisticated in the 21st century.”15 We reject Applicant’s general, unsupported argument, which would render this DuPont factor meaningless by considering all purchasing to be careful and sophisticated. The clothing and footwear 14 7 TTABVUE 5 (Applicant’s Brief). 15 7 TTABVUE 5 (Applicant’s Brief). Serial No. 88815647 - 13 - at issue in this case are common consumer goods whose consumers include at least all adults. Applicant’s specimen shows that some of its shoes are offered at very modest price points.16 We have no basis to find that ordinary consumers purchasing Applicant’s footwear would exercise more than an ordinary degree of care. This factor is neutral. III. Conclusion The similarity of the marks for related goods that move in the same channels of trade to the same classes of customers renders confusion likely. 15 U.S.C. § 1052(d). Decision: The refusal to register Applicant’s mark is affirmed. 16 For example, Applicant’s “Functional Athleisure Sneakers” show a price of $17.98. TSDR February 28, 2020 specimen at 6.