87775190 (T.T.A.B. Sep. 23, 2019)

MV Enterprises LLC

Trademark Trial and Appeal BoardSep 23, 2019

87775190 (T.T.A.B. Sep. 23, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: September 23, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re MV Enterprises LLC _____ Serial No. 87775190 _____ Colin P. Abrahams of Law Office of Colin P. Abrahams for MV Enterprises LLC. Doritt Carroll, Trademark Examining Attorney, Law Office 116, Christine Cooper, Managing Attorney. _____ Before Kuczma, Lynch, and Larkin, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background MV Enterprises LLC (“Applicant”) seeks registration on the Principal Register of the mark CLOUD NURDZ in standard characters for “Electronic cigarette liquid (e- liquid) comprised of flavorings in liquid form, other than essential oils, used to refill Serial No. 87775190 - 2 - electronic cigarette cartridges” in International Class 34.1 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 registered mark NERDZ in standard characters for “Electronic cigarette liquid (e-liquid) comprised of flavorings and/or nicotine in liquid form used to refill electronic cigarette cartridges; vapor or E-cigarette liquids, namely, propylene glycol, vegetable glycerin based liquids featuring different flavorings used in electronic cigarettes or personal vaporizers to produce the vapor production” in International Class 34.2 After the Examining Attorney made the refusal final, Applicant requested reconsideration and appealed. Once the Examining Attorney denied reconsideration, the appeal resumed. 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. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, hereinafter referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Two key considerations are the similarities between the marks and the relatedness of the services. 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, 1 Application Serial No. 87775190 was filed January 29, 2018 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on an alleged use of the mark in commerce. 2 Registration No. 4945204 issued April 26, 2016. Serial No. 87775190 - 3 - 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.”). A. The Goods, Trade Channels, and Classes of Consumers In analyzing the second DuPont factor, we look to the identifications in the application and cited registration. See 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). The Examining Attorney asserts, and we agree, that Applicant’s e-liquid “flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges” are legally identical to the e-liquid “flavorings and/or nicotine in liquid form used to refill electronic cigarette cartridges” in the cited registration. Applicant concedes that “there is agreement” that the “goods are identical or very similar,” and Applicant therefore directs its argument against a likelihood of confusion to the DuPont factor on similarity of the marks.3 Because the goods in the cited registration are legally identical to Applicant’s, and there are no restrictions or limitations in the respective identifications, we presume that the goods travel through at least some of the same channels of trade to the same class of purchasers, considerations under the third DuPont factor. See Am. Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011) (where the services were legally identical, “the marketing channels of 3 13 TTABVUE 2 (Applicant’s Reply Brief). Serial No. 87775190 - 4 - trade and targeted classes of consumers and donors are the same”); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion). Thus, the second and third DuPont factors weigh heavily in favor of likely confusion. B. Similarity of the Marks We next compare CLOUD NURDZ to NERDZ “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). The test assesses 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. Inc. 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 find the marks to look and sound similar because of their very similar terms NURDZ and NERDZ, which are phonetically identical,4 and differ visually only by one letter. Applicant’s mark also includes the term CLOUD. While, as Applicant contends, the first part of a mark often dominates it, Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) and Palm Bay Imps., 73 USPQ2d at 4 Applicant acknowledges this by stating that “[a]s regards the ‘sound’ part of the test, there is an overlap between NURDZ and NERDZ, but the test does not end there.” 7 TTABVUE 12 (Applicant’s Brief). Serial No. 87775190 - 5 - 1692, in this mark that is not the case. The Examining Attorney has submitted evidence of the weakness of CLOUD for these types of goods, thereby making it less likely to dominate the mark in the minds of consumers. Specifically, the record includes approximately 20 use-based third-party registrations for marks that include CLOUD for e-liquid or e-cigarettes and accessories.5 Numerous third-party registrations may be considered “powerful” evidence of conceptual weakness of a term, including a term comprising only part of a mark. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Thus, we find that the significance of CLOUD in the comparison of marks to be diminished by its highly suggestive nature, likely referring to the cloud of vapor emitted when an e- cigarette user exhales.6 See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1840 (TTAB 2013) (“The shared element, STUDIO, is extensively used by third parties in connection with various kinds of software, and consumers are therefore less likely to attribute source-identifying significance in this highly suggestive term.”); see also In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[I]n articulating reasons for reaching a conclusion on the issue of confusion, 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”). 5 5 TTABVUE 4-52 (April 1, 2019 Denial of Reconsideration). Examples of marks include CLOUD PHANTOM, CLOUD COMPOUND, CLOUD BEAST, CRAZY CLOUD and HEAVENLY CLOUD E-LIQUIDS. 6 Applicant’s specimen also shows its e-liquid flavors appearing on clouds, reinforcing the same suggestive significance of CLOUD. January 29, 2018 Application at 3. Serial No. 87775190 - 6 - As to the connotation and commercial impression of the marks, we also find them very similar because NURDZ and NERDZ are so similar, and because CLOUD reinforces the nature of Applicant’s goods, which are used in vaping, and thus adds little to the overall meaning and impression of Applicant’s mark that would distinguish it from the cited mark. The record includes no evidence to suggest that the combination of CLOUD and NURDZ has any new or different meaning than its component parts. The common element in the marks, NURDZ and NERDZ, is the focus of the connotations and commercial impressions, rendering the marks highly similar. Although Applicant argues that both words are coined, it also previously acknowledged that the cited mark NERDZ could be perceived “as its ordinary meaning, which may be an over-studious person,”7 and that because “the present application uses the letter ‘U’ in the word NURDZ, while the cited registration uses the letter ‘E’ instead[, t]he cited registration thus uses the more conventional form of the word.”8 Consistent with that admission, we find both NURDZ and NERDZ to be misspelled variations of “nerds,” creating the same meaning and commercial impression. We take judicial notice of the entry for “nerd” in thefreedictionary.com, sourced from the American Heritage Dictionary of the English Language, which recognizes that “nurd” is an alternative spelling of “nerd.”9 7 September 6, 2018 Response to Office Action at 8. 8 September 6, 2018 Response to Office Action at 7. 9 Thefreedictionary.com entry for “nerd,” accessed September 23, 2019. See In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010). Serial No. 87775190 - 7 - Given their overall resemblance in sound, appearance, connotation and commercial impression, we find CLOUD NURDZ and NERDZ very similar. This factor weighs in favor of a likelihood of confusion. III. Conclusion The overall similarity of the marks for legally identical goods that move in some of the same channels of trade to the same classes of customers renders confusion likely. Decision: The refusal to register Applicant’s mark is affirmed.