PaperClip Club, LLC

Trademark Trial and Appeal Board

Mar 2, 2010

No. 77501562 (T.T.A.B. Mar. 2, 2010)

Mailed: March 2, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

The PaperClip Club, LLC
________

Serial No. 77501562
_______

Eric H. Melzer, Esq. of Greenbaum, Rowe, Smith & Davis LLP
for The PaperClip Club, LLC.

Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Hairston, Cataldo and Taylor, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

The PaperClip Club, LLC filed an application to
register the mark PAPERCLIP CLUB, as shown below,

THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Serial No. 77501562
2
for services ultimately identified as “on-line wholesale
and retail store services featuring office and home office
supplies” in International Class 35.1
The trademark examining attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), on the ground that applicant’s mark,
when used in connection with applicant’s services, so
resembles the previously registered mark PAPERCLIP for
“office and residential furniture,”2 as to be likely to
cause confusion.3
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
Before turning to the substantive merits of the
appeal, an evidentiary issue requires our attention.

1 Application Serial No. 77501562, filed on June 18, 2008,
asserting first use and first use in commerce on October 31,
2006. The application contains the following description of the
mark: “The mark consists of in one straight line spelled out to
say PaperclipClub: the word ‘Paper’ in white letters with a black
outline, a red letter ‘c’ with a black outline, a white paperclip
in the place of the letter ‘l’ with a black background, the
letters ‘i’, ‘p’ and ‘C’ in red with a black outline, a white
paperclip in the place of the letter ‘l’ with a black background,
and the letters ‘u’ and ‘b’ in red with a black outline.” In
addition, the application states: “The color(s) white, black,
and red is/are claimed as a feature of the mark.”
2 Registration No. 2415886, issued on December 26, 2000; Sections
8 and 15 affidavits accepted and acknowledged, respectively.
3 The examining attorney also cited another registration owned by
a different entity, Registration No. 2711217, as a basis for the
refusal under Section 2(d). However, we note that this
registration was cancelled under Section 8 of the Trademark Act
on December 5, 2009. Thus, the refusal is moot as to this
registration.
Serial No. 77501562
3
Applicant submitted evidence with its appeal brief, and the
examining attorney has objected thereto on the basis of its
untimely submission.
As pointed out by the examining attorney, the record
in an application should be complete prior to the filing of
an appeal. Trademark Rule 2.142(d). Accordingly, exhibits
attached to a brief that were not made of record during
examination are untimely, and will not be considered. TBMP
§§1203.02(e) and 1207.01 (2d ed. rev. 2004). In view
thereof, the examining attorney’s objection is sustained
and the attachments have not been considered.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on the likelihood of confusion issue. See In re E.I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
Serial No. 77501562
4
and services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We turn first to a comparison of the marks, i.e.,
whether the respective marks are similar or dissimilar when
viewed in their entireties in terms of appearance, sound,
connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, supra. The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods and services offered under
the respective marks is likely to result. The focus is on
the average purchaser, who normally retains a general
rather than specific impression of trademarks. Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, it is well settled that one feature of a
mark may be more significant than another, and it is not
improper to 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
Serial No. 77501562
5
ultimate conclusion rests on a consideration of the marks
in their entireties. Indeed, this type of analysis appears
to be unavoidable.”]
In this case, applicant’s mark PAPERCLIP CLUB and
design incorporates in its entirety registrant’s mark
PAPERCLIP as its most distinctive and dominant feature.
Neither the addition of the term CLUB nor the design offer
sufficient distinctiveness to create a different commercial
impression. The term CLUB is descriptive of applicant’s
services as applicant indicates on its Internet homepage
that its services are membership club services.4
Furthermore, the design of applicant’s mark is not so
unique as to distinguish applicant’s mark from registrant’s
mark. The paperclips in the place of the letter “l” in
“clip” and “club” simply reinforce the term PAPERCLIP in
applicant’s mark.
We find that due to the shared term PAPERCLIP,
applicant’s mark PAPERCLIP CLUB and design is highly
similar to registrant’s mark PAPERCLIP in sound, appearance
and connotation.

4 A printout of applicant’s Internet homepage was submitted by
the examining attorney with her office action dated September 25,
2008.
Serial No. 77501562
6
Although we have focused on the dominant portion of
applicant’s mark, which is identical to registrant’s mark,
we have considered the marks in their entireties. And, in
doing so, we find that they engender similar overall
commercial impressions.
We next turn to the issue of the similarity of
applicant’s and registrant’s respective goods and services.
The examining attorney argues that office and home office
supplies encompass office furniture and, therefore,
registrant’s office furniture, on the one hand, and
applicant’s on-line wholesale and retail store services
featuring office and home offices supplies, on the other,
are related. Furthermore, the examining attorney points to
applicant’s Internet homepage which shows that applicant
does sell office furniture.
Applicant, on the other hand, argues that the key
element of its services is office and home office supplies
which do not have anything to do with office furniture. In
addition, applicant argues that the purchasers of its on-
line wholesale and retail store services and registrant’s
office furniture are sophisticated.
It is not necessary that the respective goods and
services be competitive, or even that they move in the same
channels of trade to support a holding of likelihood of
Serial No. 77501562
7
confusion. Rather, it is sufficient that the respective
goods and services are related in some manner, and/or that
the conditions and activities surrounding their marketing
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 originated from the same producer. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978). In addition, it is well recognized that
confusion is likely to result from the use of the same or
similar mark for goods, on the one hand, and for services
involving those goods, on the other hand.
Applying these principles to the present case, we find
that the examining attorney has failed to establish that
applicant’s services and registrant’s goods are similar or
related in any way which would result in source confusion,
even when marketed under similar marks. Although the
examining attorney contends that office furniture is
encompassed within office and home office supplies, there
is no evidence to support this contention. In particular,
there is no evidence that purchasers understand or refer to
office furniture such as desks, chairs, and bookcases as
office supplies. Indeed, applicant’s Internet homepage
Serial No. 77501562
8
suggests otherwise inasmuch as there are separate category
headings for office supplies, on the one hand, and office
furniture, on the other, e.g., “Binders & Binding
Supplies,” “Files & Filing Supplies,” and “Furniture & Room
Accessories.” Thus, the principle that confusion is likely
to result from the use of the same or similar mark for
goods, on the one hand, and for services involving those
goods, on the other, is not applicable in this case.
Furthermore, the mere fact that office furniture is one of
the many products applicant sells is insufficient to show
that applicant’s identified services and registrant’s goods
are related. There is no evidence that applicant’s
services and registrant’s goods are of a type which may
emanate from a single source, and consumers are not likely
to believe that on-line wholesalers and retailers of office
and home office supplies also manufacture office and
residential furniture. In short, there is no evidence from
which we may conclude that applicant’s services and
registrant’s goods are sufficiently related to give rise to
a likelihood of confusion.
The examining attorney bears the burden of presenting
evidence to support her refusal. Where, as in this case,
the respective goods and services, on their face, do not
appear to be sufficiently related, it is incumbent on the
Serial No. 77501562
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examining attorney to present evidence establishing such
relationship. Mere argument and conclusory assertions do
not suffice.
In reaching our decision, we should point out that we
have not relied on applicant’s contention that the
purchasers of its services and registrant’s goods are
sophisticated. It is well settled that in the absence of
any limitations in the identifications of goods and
services in the application and cited registration, we must
presume that applicant’s services and registrant’s goods
are purchased by all the normal classes of purchasers.
Purchasers of on-line wholesale and retail store services
featuring office and home office supplies and office and
residential furniture comprise a broad market consisting of
both discriminating and ordinary consumers who would not be
expected to exercise more than ordinary care in making
their purchasers.
In sum, we find that there is no likelihood of
confusion. On this record, applicant’s services and
registrant’s goods do not appear to be sufficiently related
for any confusion to be likely, even when marketed under
similar marks. We might reach a different conclusion on a
different, more complete evidentiary record, but on this
record, we cannot find that confusion is likely.
Serial No. 77501562
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Decision: The refusal to register is reversed.