No. 85705648 (T.T.A.B. Apr. 22, 2014)

Pelot, LLC

Trademark Trial and Appeal BoardApr 22, 2014

No. 85705648 (T.T.A.B. Apr. 22, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: 4/22/2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ________ In re Pelot, LLC ________ Serial No. 85705648 _______ Matthew H. Swyers of The Trademark Company PLLC for Pelot, LLC. Toby E. Bulloff, Trademark Examining Attorney, Law Office 117 (J. Brett Golden, Managing Attorney). _______ Before Quinn, Taylor and Gorowitz, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Pelot, LLC (“applicant”) filed, on August 16, 2012, an intent-to-use application under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), to register the mark shown below for “hats; pants; shirts; shorts; sweat shirts” in International Class 25. The application is based on a bona fide intent to use Serial No. 85705648 2 the mark in commerce. The application includes a description of the mark as follows: “The mark consists of the wording MTN LIFE written in plain, bold font. In between the words is a circle encompassing a mountain with snow on its top and a sun coming over or setting behind it.” The trademark examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when applied to applicant’s goods, so resembles the previously registered mark shown below for “short-sleeved or long-sleeved t-shirts” in International Class 251 as to be likely to cause confusion. When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs. We affirm the refusal to register. Applicant, although conceding that the letters “MTN” form an abbreviation of the term “MOUNTAIN,” contends that using the abbreviation creates a distinction separate and apart from the 1 Registration No. 3871977, issued November 9, 2010. The registration includes the following description of the mark: “The mark consists of the words ‘Mountain Life’ wherein the letter ‘I’ in the word ‘Life’ is in the form of a hiker wearing a hat and carrying a backpack and walking stick.” Serial No. 85705648 3 use of the full term and, when coupled with the other design features, results in dissimilar marks. Applicant also argues that the cited mark is weak, relying upon several third-party registrations for marks that include the term “MOUNTAIN” or “LIFE,” with three other registrations that include both terms. Applicant also asserts that the goods are different, and travel in different trade channels. As for purchasers, applicant states that they are sophisticated. Applicant also asserts that it is unaware of any actual confusion between the marks. Applicant submitted the affidavit of Russell E. Pelot, III with related exhibits.2 The examining attorney maintains that the marks are similar and that the goods are legally identical in part or otherwise closely related. In support of the refusal the examining attorney introduced a listing in an abbreviations dictionary, and excerpts from third-party websites. 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 set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and 2 Neither the affidavit nor counsel identified Mr. Pelot’s position with applicant, but we assume that he is a principal. In any event, Mr. Pelot asserts that his statements are based on “my own knowledge.” Serial No. 85705648 4 the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). We first direct our attention to the du Pont factor of the similarity/dissimilarity between the goods. It is not necessary that the respective goods be identical or competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective goods are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods 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). We make our determination regarding the similarities between the goods, channels of trade and classes of purchasers based on the goods as they are identified in the application and registration, respectively. Octocom Systems Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); and In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Applicant’s identification of goods reads “hats; pants; shirts; shorts; sweat shirts”; registrant’s Serial No. 85705648 5 identification of goods reads “short-sleeved or long-sleeved t- shirts.” Applicant’s identification of goods includes “shirts”; because this clothing item is broadly described, we must assume that the “shirts” include all types of shirts, including those of the type identified in the cited registration, namely “short- sleeved or long-sleeved t-shirts.” Thus, to that extent, applicant’s goods encompass the goods of registrant, and the goods must be considered to be legally identical. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods in the application). Further, applicant’s other clothing items are closely related to registrant’s t-shirts. Because there are no limitations as to channels of trade or classes of purchasers in the identifications of goods in the application and cited registration, it is presumed that applicant’s and registrant’s goods move in all channels of trade normal for those goods (e.g., clothing stores), and that they are available to all classes of purchasers for those goods, including ordinary consumers. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 Serial No. 85705648 6 (CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Inasmuch as the identified goods are legally identical or otherwise closely related, we presume that the goods are sold through the same trade channels to the same classes of consumers. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade.”). Lest there be any doubt about the relatedness of the goods, the examining attorney introduced excerpts from third-party websites showing that the types of goods involved herein may originate from a common source, often under the same mark. As noted earlier, the record includes Mr. Pelot’s affidavit. Mr. Pelot makes numerous factual allegations, which include the following: Our mark is used exclusively in connection with an outdoor apparel company that also sells stickers, koozies and other marketing products for outdoor enthusiasts such as skiers, snowboarders, hikers, mountain bikers, fly fishermen, snowmobilers, climbers, and campers. Our goods are marketed exclusively to individuals who are looking to create the outdoor lifestyle of those who participate Serial No. 85705648 7 in activities associated with the mountains. Our industry is highly specialized and there is absolutely no overlap in the trade and/or marketing channels utilized by the average purchaser of t-shirts that have motivational text on them. In contrast ... [registrant’s] mark provides [sic] t-shirts featuring witticisms or motivational test sold on a website that features a large array of printed t-shirts. The trade channels of our goods ... are currently offered through our website hosted at www.mtnlife.com. Future plans include sales through retail stores and at sponsored sporting events. In contrast, it appears that the trade channels of the goods bearing [registrant’s] mark are offered exclusively through www.themountain.com, a website carrying many brands of t-shirts. Accordingly, there is simply no overlap in the channels of trade... We will market through social networking, direct sales, word of mouth, event sponsorship, trade shows, and through our website hosted at www.mtnlife.com. Although [registrant] is marketed on an active website, they do not appear to possess a self-titled website, or to be advertising or marketing their goods through social networking, direct sales, word of mouth, event sponsorship, or trade shows. In my experience with our business our clients exercise a very high level of sophistication in choosing the goods offered under our mark. After all, they are choosing goods which are designed to attract very specific consumer[s], namely, those who are looking to create the outdoor lifestyle of those who participate in seasonal activities associated with the mountains. Serial No. 85705648 8 Our goods exist specifically to [sic] men and women between the ages of 15 and 60 who plan to purchase apparel and place a high amount of importance on creating the lifestyle of those who participate in activities associated with the mountains, such as skiers, snowboarders and snowmobilers. The apparel offered under [applicant’s mark] ranges in price from $7.00 to $19.00 for a variety of items. It can only be assumed that [registrant’s mark] was used to attract individuals seeking t- shirts that feature witticisms or motivational text, who focus on a green lifestyle. Their products range towards individuals interested in everything from big face dogs, to fantasy, to military themes t-shirts. The goods bearing [registrant’s mark] range [sic] are all priced at $20.00 per t-shirt. Mr. Pelot’s statements, and the exhibits attached to the affidavit, are irrelevant to our analysis. An applicant may not restrict the scope of the goods covered in its application or in the cited registration by argument or extrinsic evidence. In re Bercut-Vandervoort & Co., 229 USPQ2d 763, 764 (TTAB 1986). Thus, any specific differences between the actual nature of the goods are irrelevant in our analysis. As noted above, neither of the identifications of goods includes any of the limitations highlighted by Mr. Pelot. The identity in part between the goods, and the identity in trade channels and classes of purchasers weigh heavily in favor of a finding of likelihood of confusion. Serial No. 85705648 9 We next direct our attention to the du Pont factor of the similarity/dissimilarity between the marks. We must compare the marks in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1960 (Fed. Cir. 2005), quoting In re E. I. du Pont de Nemours & Co., 177 USPQ at 567. “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) (citation omitted). 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). Moreover, in comparing the marks, we are mindful that where, as here, applicant’s goods are legally identical in part to registrant’s goods, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 Serial No. 85705648 10 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). 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 ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”). Where both words and a design comprise the mark (as in both applicant’s and registrant’s marks), then the words are normally accorded greater weight because the words are likely to make an impression upon purchasers, would be remembered by them, and would be used by them to request the goods and/or services. 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”); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430-31 (TTAB 2013); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 Serial No. 85705648 11 (TTAB 1987). See also Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). In applicant’s mark, the literal portion of the mark, namely “MTN LIFE,” is the dominant portion; in registrant’s mark, the literal portion of the mark is “MOUNTAIN LIFE,” which is the dominant portion. The design portion of registrant’s mark, comprising a representation of a hiker used to represent the letter “I” in the term “LIFE,” is incorporated into the literal portion. As shown by the evidence, the letters “MTN” form a commonly used and recognized abbreviation of the term “MOUNTAIN.” (abbreviations.com). Further, the mountain design in applicant’s mark reinforces the meaning of “MTN” as “MOUNTAIN.” The commonality of the use of the abbreviation “MTN” for “MOUNTAIN” is buttressed by the four third-party website excerpts submitted by the examining attorney showing interchangeable use of the abbreviation and the term. Thus, the dominant portion of the respective marks, “MTN LIFE” and “MOUNTAIN LIFE,” are similar in appearance and identical in meaning. As to sound, it is likely that “MTN” will not be pronounced as an abbreviation consisting of the individual letters “M-T-N,” but rather consumers will view “MTN” as the full term and vocalize it as “MOUNTAIN.” Although the dominant portions are substantially similar, we must, of course, Serial No. 85705648 12 compare the marks in their entireties, with the respective design elements. When we make this comparison, we find that the marks MTN LIFE and design and MOUNTAIN LIFE and design engender similar overall commercial impressions. The similarity between the marks is a factor that weighs in favor of a finding of likelihood of confusion. In addition to the key du Pont factors discussed above, there are additional factors to consider in this case. Applicant has submitted several third-party registrations for marks that include either the term “MOUNTAIN” or “LIFE” and, in three registrations, both of the terms “MOUNTAIN” and “LIFE”; all of the registrations cover clothing. The most relevant registrations are the ones that include both terms: BUILT FOR THE MOUNTAIN LIFE (Reg. No. 3213367), and MOUNTAIN KHAKIS JACKSON HOLE WYOMING BUILT FOR THE MOUNTAIN LIFE and design (Reg. No. 3158402), both for “caps, pants, shirts, shorts” and owned by the same entity; and LIFE’S MOUNTAIN and design (Reg. No. 3188829) for “shirts.” Although we have considered applicant’s evidence of the third-party registrations, it is of limited probative value to support applicant’s position because “[t]he existence of [third- party] registrations is not evidence of what happens in the marketplace or that consumers are familiar with them nor should the existence on the register of confusingly similar marks aid Serial No. 85705648 13 an applicant to register another likely to cause confusion, mistake or to deceive.” AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). None of these registrations is as close in sound, appearance, meaning and commercial impression to registrant’s mark as is applicant’s applied-for mark. We find this factor to be neutral. Applicant contends, based on Mr. Pelot’s statements, that purchasers of the respective goods would exercise “a high level of sophistication” in making a purchasing decision. (Brief, pp. 13-14). There is nothing in the respective identifications of goods that warrants a finding that consumers of applicant’s and registrant’s clothing would make a careful purchasing decision. There are no price restrictions in the identifications, and we must assume that the clothing includes relatively inexpensive items.3 However, even assuming that applicant’s and registrant’s clothing may involve a careful purchase, it is settled that even sophisticated purchasers are not immune from source confusion, especially in cases such as the instant one involving very similar marks and legally identical goods. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), 3 Applicant’s argument is belied by Mr. Pelot’s statement that applicant’s goods range in price from $7-$19 and registrant’s goods cost $20; at these relatively inexpensive price points, the clothing items may be subject to impulse purchases. Serial No. 85705648 14 citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers...are not infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that the similarity between the marks and the legal identity in part between the goods sold thereunder outweigh any presumed sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods). In view thereof, we find this factor to be neutral. Applicant states, through its counsel, that it is unaware of any actual confusion with the cited mark.4 Applicant’s assertion, in this ex parte proceeding, is entitled to little weight. See In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“uncorroborated statements of no known instances of actual confusion are of little evidentiary value”). See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that 4 Applicant asserts that Mr. Pelot’s affidavit makes reference to the length of time that the marks have been used and to their coexistence without actual confusion. (Brief, p. 14). This assertion is incorrect; Mr. Pelot’s affidavit is silent regarding the extent of use of the mark by applicant or the absence of actual confusion. Serial No. 85705648 15 testimony of applicant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion); In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009); In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1588 (TTAB 2007); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any event, applicant’s application is based on an intent to use the mark, and the record is devoid of evidence relating to the extent of use of applicant’s and registrant’s marks and, thus, whether there have been meaningful opportunities for instances of actual confusion to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). Accordingly, the du Pont factor of the length of time during and conditions under which there has been contemporaneous use of the marks without evidence of actual confusion is considered neutral. We have carefully considered all of the evidence made of record pertaining to the issue of likelihood of confusion, as well as all of the arguments related thereto, including any evidence and arguments not specifically discussed in this opinion. We conclude that purchasers familiar with registrant’s “short-sleeved or long-sleeved t-shirts” sold under the mark MOUNTAIN LIFE and design would be likely to mistakenly believe, upon encountering applicant’s mark MTN LIFE and design for Serial No. 85705648 16 “hats; pants; shirts; shorts; sweat shirts,” that the goods originated from or are associated with or sponsored by the same entity. Decision: The refusal to register is affirmed.