Peace Love World, LLC

Trademark Trial and Appeal Board

Feb 9, 2015

No. 85906794 (T.T.A.B. Feb. 9, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Peace Love World, LLC
_____

Serial No. 85906794
_____

Mark Terry of Office of Mark Terry, Esq. for Peace Love World, LLC.
Lyndsey Kuykendall, Trademark Examining Attorney, Law Office 102 (Mitchell
Front, Managing Attorney).
_____

Before Zervas, Bergsman and Masiello, Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Peace Love World, LLC (“Applicant”) seeks registration on the Principal
Register of the mark I AM LOVE (in standard character form) for “Book bags; Tote
bags,” in International Class 18.1 The Examining Attorney refused registration of
Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
having determined that Applicant’s mark is likely to cause confusion or mistake or

1 Application Serial No. 85906794 was filed on April 17, 2013, based on an allegation of a
bona fide intent to use the mark in commerce.
The application also lists goods in International Class 9. The International Class 9 goods
have not been refused registration and hence are not involved in this appeal.
Serial No. 85906794

2

to deceive in view of Reg. No. 0856297 for the mark for “travel
bags” in International Class 18.2
When the refusal was made final, Applicant appealed. Applicant and the
Examining Attorney filed briefs. We affirm the refusal to register.
Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., 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
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). In this case, Applicant
has discussed only the du Pont factor regarding the marks, and the Examining

2 Renewed September 8, 2008.
Serial No. 85906794

3

Attorney has discussed only the du Pont factors regarding the marks and goods. We
therefore focus only on these factors.
Similarity or Dissimilarity of the Goods
We base our evaluation on the goods as they are identified in the registration
and application. Octocom Systems, Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
Registrant’s identified goods are “travel bags” and Applicant’s goods include
“tote bags.” A tote bag is defined in the online version of Merriam Webster’s
Dictionary as “a large bag used for carrying things.”3 Because Applicant’s “tote
bags” may be used as a travel bag, Applicant’s goods are encompassed within
registrant’s identification of goods. For purposes of our analysis, we therefore
consider the goods to be legally identical. Indeed, Applicant does not address the
Examining Attorney’s contention, and thereby concedes, that Applicant’s goods are
encompassed within registrant’s registration.
Because the goods described in the application and the cited registration are
legally identical, we must presume that the channels of trade and classes of
purchasers are the same. 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

3 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
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006).
Serial No. 85906794

4

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); American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
Similarity or Dissimilarity of the Marks
We turn now to a comparison of registrant's mark which contains the
wording I AM LOVED with Applicant's mark I AM LOVE. We determine the
similarity or dissimilarity of the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See du Pont, 117 USPQ at 567.
See also Palm Bay Imports, 73 USPQ2d 1689. In making this determination, we
keep in mind that the more similar the goods, the less similarity in the marks is
required to support a finding of likelihood of confusion. See Century 21 Real Estate
v. Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). In addition, while
marks must be compared in their entireties, “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.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985).
The marks are substantially similar in sound. The only difference in sound
between I AM LOVE and I AM LOVED stems from Applicant’s removal of the D in
LOVED. When spoken, the elimination of the sound of the letter “D” at the end of
Serial No. 85906794

5

I AM LOVED is slight and insignificant in light of the remainder of the mark.
The marks are also considered substantially similar in appearance.
Applicant’s mark is a standard character form mark, and we must therefore
consider all manners in which Applicant could depict its mark. See Phillips
Petroleum v. C.J. Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). See also
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir.
2000) (typed drawings are not limited to any particular rendition of the mark).
Applicant could reasonably depict its mark in a wide variety of typefaces or fonts,
including a display very similar to the format of the wording in the cited
registration, thereby increasing the visual similarity of these marks. In addition,
the removal of the letter “D” does not suffice to distinguish the appearance of the
marks in light of the identity of the other words and letters in the marks.
Turning to the commercial impression and meaning of the marks, Applicant
argues, “I AM LOVE makes the statement that [the] speaker is, or embodies the
concept of, love and feelings of fondness for others”; and “[t]he words I AM LOVED
… make a completely different statement. I AM LOVED makes the statement that
the speaker is loved by others. I AM LOVED is a statement about others doing the
loving.”4 The distinction Applicant makes is subtle, and is not so significant that it
is likely to be noted or remembered by purchasers when seeing the marks at
separate times. 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 impressions that confusion

4 Applicant's Brief at 3-4.
Serial No. 85906794

6

as to the source of the goods offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser, who normally retains a
general, rather than a specific, impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). As the Examining Attorney states,
“both marks give the commercial impression of being loved.”5
Registrant’s mark includes a design or, more specifically, a carrier element
that is not present in registrant's mark. However, the wording I AM LOVED is
clearly the predominant visual element of this mark. It is the part of the mark on
which consumers would focus their attention and which would be used in calling for
the goods. See CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
1983) (“in a composite mark comprising a design and words, the verbal portion of
the mark is the one most likely to indicate the origin of the goods to which it is
affixed”); In re Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554 (TTAB 1987)
(“the dominant feature of applicant's mark is the literal portion … which is the
portion that purchasers will remember and use in calling for the goods.”). The
Examining Attorney properly accorded greater weight to the wording in registrant’s
mark, rather than the design, which functions as a carrier for the wording in the
mark and does not make a strong commercial impression. See In re Kysela Pere et
Fils, Ltd., 98 USPQ2d 1261, 1267 (TTAB 2011) (“the oval designs in the marks are
merely background or ‘carrier’ elements, and do not make a strong commercial
impression,” citing In re Dixie Restaurants Inc., 41 USPQ2d at 1534).

5 Examining Attorney’s Brief at 9.
Serial No. 85906794

7

Applicant submitted printouts of eight third-party registrations, all for marks
with the format “I AM _____,” arguing that this format is weak, diluted, or so widely
used that it should not be afforded a broad scope of protection. Evidence of
weakness or dilution consisting solely of third-party registrations, such as those
submitted by Applicant in this case, is generally entitled to little weight in
determining the strength of a mark, because such registrations do not establish that
the registered marks identified therein are in actual use in the marketplace or that
consumers are accustomed to seeing them. See AMF Inc. v. Am. Leisure Prods., Inc.,
474 F.2d 1403, 1406, 177 USPQ 268, 269 (CCPA 1973); In re Davey Prods. Pty Ltd.,
92 USPQ2d 1198, 1204 (TTAB 2009). In addition, the marks which are the subject
of the third-party registrations are dissimilar from the registered mark and not
persuasive because they do not contain the term LOVED, or any variation of
LOVED.
When Applicant's and registrant's marks are considered in their entireties,
giving appropriate weight to the features thereof, and considering that the marks
are used on legally identical and otherwise closely related goods, we find that the
marks are similar in appearance, sound, meaning and commercial impression, and
that the similarities between the marks outweigh their differences.
Conclusion
In view of the legal identity of the goods, the presumed identity of trade
channels and classes of purchasers, as well as the similarity of the marks, and
because Applicant has not established that registrant’s mark is weak, we agree with
Serial No. 85906794

8

the Examining Attorney that Applicant’s mark is likely to cause confusion with
registrant’s mark.
Decision: The refusal to register Applicant’s mark I AM LOVE for the goods
in International Class 18 is affirmed.
The application will move forward with regard to the International Class 9
goods.