Rabbitswag Inc.Download PDFTrademark Trial and Appeal BoardMar 29, 2019EX (T.T.A.B. Mar. 29, 2019) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: March 29, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Rabbitswag Inc. _____ Serial No. 87417619 _____ Songfong Tommy Wang of Wang IP Law Group, P.C. for Rabbitswag Inc. Louis Kolodner, Trademark Examining Attorney, Law Office 122, John Lincoski, Managing Attorney. _____ Before Shaw, Greenbaum, and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background Rabbitswag Inc. (“Applicant”) seeks registration on the Principal Register of the mark PLAY in standard characters for “Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges; Electronic cigarette refill cartridges sold empty” in Serial No. 87417619 - 2 - International Class 34.1 The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the following two registered marks, owned by different entities: for Electric cigarettes; electronic cigarettes; electronic cigarettes for use as an alternative to traditional cigarettes; battery-powered, rechargeable portable vaporizing units in the nature of electronic cigarettes; battery- powered, rechargeable portable vaporizing units in the nature of smokeless cigarette vaporizer pipes; battery-powered, disposable portable vaporizing units in the nature of electronic cigarettes; battery-powered, disposable portable vaporizing units in the nature of smokeless cigarette vaporizer pipes; electronic cigarettes containing tobacco substitutes not for medical purposes that utilize electronic cigarette chargers and not lighters; electronic cigarettes for use as an alternative to traditional cigarettes that utilize electronic cigarette chargers and not lighters; smokeless cigarette vaporizer pipes that utilize electronic cigarette chargers and not lighters in International Class 34 (‘662 Registration).2 for Ashtrays for smokers; Electronic cigarettes; Filter-tipped cigarettes; Flavorings, other than essential oils, for tobacco; Flavorings, other than essential oils, for use in electronic cigarettes; Lighters for smokers; Liquid nicotine solutions for use in electronic cigarettes; Oral vaporizers for smokers; Pocket machines for rolling cigarettes; Tobacco pipes in International Class 34 (‘072 Registration).3 1 Application Serial No. 87417619 was filed April 19, 2017 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on alleged intent to use the mark in commerce. 2 Registration No. 4413662 issued October 8, 2013. The registration contains a disclaimer of VAPOR and the following description of the mark: “The mark consists of a stylized triangular shape with one of the corners pointing to the right with a flame-like shape removed. Located below the stylized triangular shape are the words ‘Play’ and ‘Vapor’ written in a stylized font. Color is not claimed as a feature of the mark.” 3 Registration No. 5086072 issued November 22, 2016. The mark is described as consisting “of the stylized wording ‘iPLAY.’” Color is not claimed as a feature of the mark. Serial No. 87417619 - 3 - After the Examining Attorney made the refusal final, Applicant appealed. The case is fully briefed. 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, hereinafter referred to as “du Pont 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 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.”). A. Similarity of the Marks We first turn to the du Pont factor comparing PLAY to each of the cited marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 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 goods offered under the respective marks is Serial No. 87417619 - 4 - 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). 1. ‘662 Registration The similarity between the applied-for and cited mark in the ‘662 Registration derives from the shared word PLAY. Applicant’s standard-character mark could be presented in the same font as PLAY in the cited mark, resulting in a similar appearance. See 37 C.F.R. § 2.52(a). Contrary to Applicant’s argument, because it seeks a standard-character registration, the specific font style of this cited mark cannot serve as the basis to distinguish it. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012). As the first and largest word in the cited mark, PLAY also is “most likely to be impressed upon the mind of a purchaser and remembered.” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). The remaining word, VAPOR, is in much smaller font, and has been disclaimed as descriptive or generic. While we do not disregard it, its significance in the comparison of marks is diminished because consumers are not inclined to rely on descriptive or generic terms to indicate source. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985). This cited mark also contains a design element consisting of a nondescript triangle shape with a flame-shaped or plume-shaped cutout. The triangle is a common Serial No. 87417619 - 5 - geometric shape, too insignificant to serve as a point of distinction. Cf. In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (in Section 2(d) analysis, holding that rectangular “design is an ordinary geometric shape that serves as a background for the word mark” and did not “offer[] sufficient distinctiveness to create a different commercial impression”); In re Benetton Grp. S.p.A., 48 USPQ2d 1214, 1215-16 (TTAB 1998) (“common geometric shapes such as circles, squares, rectangles, triangles and ovals, when used as backgrounds for the display of word marks, are not regarded as trademarks for the goods to which they are applied absent evidence of distinctiveness of the background design alone”). Or, in the event the triangle could be viewed as a “play” button on an electronic device, it merely reinforces the dominance of the word PLAY in the mark. The flame or plume design is suggestive of the nature of the goods, and therefore consumers would be less likely to rely on the design as source-indicating. Because the dominant term in the ‘662 Registration’s mark, PLAY, is identical to Applicant’s mark, and based on the analysis set forth above of the marks in their entireties, we find them similar overall in appearance and sound, as well as in connotation and commercial impression. See Nat’l Data Corp., 224 USPQ at 751 (“[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”); see also Stone Lion Capital Partners Serial No. 87417619 - 6 - v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). This factor supports a likelihood of confusion. 2. ‘072 Registration In appearance and sound, Applicant’s mark PLAY is highly similar to the cited mark in the ‘072 Registration, which differs only by one letter. Although the “I” at the beginning of the cited mark results in some variation, the Board has often found that marks differing by only a single letter are confusingly similar. See Apple Comput. v. TVNET.net Inc., 90 USPQ2d 1393, 1396 (TTAB 2007) (VTUNES.NET vs. ITUNES); Interlego AG v. Abrams/Gentile Entm’t Inc., 63 USPQ2d 1862, 1863 (TTAB 2002) (“Obviously, the marks LEGO and MEGO are extremely similar in that they differ simply by one letter.”); In re Total Quality Grp. Inc., 51 USPQ2d 1474, 1476 (TTAB 1999) (“Applicant’s mark STRATEGYN and registrant’s mark STRATEGEN are phonetic equivalents and differ by only one letter.”). Applicant contends, without much explanation, that the “prefix ‘I’ … changes the entire character of the ‘072 Mark.”4 We disagree because particularly given the fallibility of consumers’ memories, the “I” at the beginning of the cited mark does not sufficiently distinguish it from Applicant’s mark. Applicant’s standard-character mark could be presented in the same font as IPLAY, increasing the similarity in appearance. See Viterra, 101 USPQ2d at 1909. Applicant’s argument in its Brief about the stylization of the cited 4 4 TTABVUE 13 (Applicant’s Brief). Serial No. 87417619 - 7 - mark is therefore unavailing. We also are not persuaded by Applicant’s argument based on the color in which the marks allegedly appear in the marketplace because the applied-for standard-character mark would cover use in any color. See 37 C.F.R. § 2.52(a)(1). In addition, PLAY and are alike in their meaning and commercial impression because both refer to PLAY. While the cited mark’s “I” at the beginning could either be viewed as a pronoun or as a prefix, neither would result in a significant change in the connotation of the mark. Whether “I” serves as a prefix or pronoun, PLAY stands out as the action word in the cited mark. See Nat’l Data Corp., 224 USPQ at 751; see also Stone Lion Capital Partners, 110 USPQ2d at 1161. Thus, the common element PLAY in Applicant’s and Registrant’s marks is the focus of the connotations and commercial impressions, rendering them highly similar. This factor supports a likelihood of confusion. B. The Goods, Trade Channels, and Classes of Consumers “[L]ikelihood of confusion can be found ‘if the respective products 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 second du Pont factor, we look to the identifications in the application and cited registrations. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018); Stone Lion Capital Partners, 110 USPQ2d at 1162; Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. Serial No. 87417619 - 8 - 1990). “[I]t is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods [or services] within a particular class in the application.” In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015); see also Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). 1. The Goods in the ‘662 Registration The ‘662 Registration identifies “electronic cigarettes” among its goods, and Applicant’s goods include “[e]lectronic cigarette refill cartridges” and liquid flavorings for use in electronic cigarettes. Applicant concedes in its Brief that its cartridges are, in fact, electronic cigarettes.5 In addition, the Examining Attorney points out that the relevant goods also would be used together, and provided supporting evidence, such as the vaporfi website’s product selection and explanation of these types of products and how to use them.6 The Examining Attorney submitted persuasive evidence that consumers are accustomed to encountering the applied-for and cited goods under the same mark. For example: The myblu website shows electronic cigarettes and flavorings (e-liquids and liquipods) offered under the same mark.7 The v2 website features vape pens/“e-cigs”, cartridges, and e-liquids.8 5 4 TTABVUE 11 (Applicant’s Brief, stating, “Applicant’s goods are intended for the discerning consumer who is looking for a sleek and discreet E-cigarette … seeking upgraded technological features and design elements in an E-cigarette.” 6 February 7, 2018 Office Action at 35-67 (vaporfi.com). 7 February 7, 2018 Office Action at 9-34 (blu.com). 8 Id. at 69-78 (v2.com). Serial No. 87417619 - 9 - Also, the Examining Attorney introduced numerous use-based third-party registrations with the applied-for and cited goods under the same mark. For example: Registration No. 4772577 for the mark I-CAPSULE lists both “[e]lectronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges” and “[e]lectric cigarettes.”9 Registration No. 4553289 for the mark CMYK lists “Chemical flavorings in liquid form used to refill electronic cigarette cartridges,” “Electronic cigarette refill cartridges sold empty” and “[e]lectronic cigarettes.”10 Registration No. 5237610 for the mark CITRUS MIST identifies “electronic cigarettes and electronic cigarette liquid (e-liquid) comprised of flavorings, excluding candy, mint or breath freshening flavorings, in liquid form used to refill electronic cigarette cartridges, sold or offered together as a unit or as kits.”11 Registration No. 5201366 for the mark ALEON TECH includes “[e]lectronic cigarettes” as well as “[c]artomizers, namely combination electronic cigarette refill cartridges sold empty and atomizers sold as a component of electronic cigarettes and smokeless cigarette vaporizer pipe.”12 Registration No. 5104328 for the mark lists both electronic cigarettes and electronic cigarette liquid (e- liquid).13 Registration No. 5210785 for the mark BIG CLOUD includes “[e]lectronic cigarettes” and “[c]artomizers, namely combination electronic cigarette refill cartridges 9 July 14, 2017 Office Action at 15-17. 10 Id. at 18-20. 11 Id. at 21-23. 12 Id. at 24-26. 13 Id. at 27-29. Serial No. 87417619 - 10 - sold empty and atomizers sold as a component of electronic cigarettes.”14 Registration No. 5154536 for the mark CALICLEAR lists both electronic cigarettes and electronic cigarette liquid (e- liquid).15 Registration No. 5133058 for the mark BOMB SQUAD includes electronic cigarettes and electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges.16 Such registrations17 serve to suggest that the goods listed therein are of a kind which may emanate from a single source under a single mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). Overall, the evidence convincingly demonstrates that Applicant’s goods overlap with the goods in the ‘662 Registration and are otherwise highly related. We reject Applicant’s argument that the goods, trade channels and consumers differ because the registrant’s actual goods allegedly are “run-of-the-mill,” “disposable,” and for “the unsophisticated beginner user,” while Applicant’s supposedly target “the discerning customer who is looking for a sleek and discreet E-cigarette.”18 Applicant erroneously relies on alleged marketplace realities not reflected in the identifications of goods. See 14 Id. at 30-32. 15 Id. at 33-34. 16 Id. at 35-36. 17 See also February 7, 2018 Office Action at 79-104 (additional use-based registrations with the relevant types of goods under the same mark). 18 4 TTABVUE 11 (Applicant’s Brief). Serial No. 87417619 - 11 - Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where the identification is unrestricted, “we must deem the goods to travel in all appropriate trade channels to all potential purchasers of such goods”). The second du Pont factor therefore strongly weighs in favor of a finding of likely confusion as to the ‘662 Registration. 2. The Goods in the ‘072 Registration This cited registration includes “[f]lavorings, other than essential oils, for use in electronic cigarettes,” while Applicant identifies “[e]lectronic cigarette liquid (e- liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges.” We find that the cited registration’s flavorings for use in electronic cigarettes encompass the liquid flavorings for electronic cigarettes in the application. Thus, the goods at issue are legally identical in part. Applicant again offers arguments to distinguish the goods based on allegations that in the actual marketplace, “they differ vastly in their sophistication, design, functionality, and marketing.”19 We reject this attempt to rely on extrinsic evidence to restrict the unrestricted identifications at issue here. Octocom Sys., 16 USPQ2d at 1787. The second du Pont factor therefore strongly weighs in favor of a finding of likely confusion as to the ‘072 Registration. 19 Id. at 18. Serial No. 87417619 - 12 - 3. Trade Channels and Classes of Consumers Because Applicant’s goods overlap with goods in each of the cited registrations, we must therefore presume that the channels of trade and potential consumers are also identical in part. See Viterra Inc., 101 USPQ2d at 1908 (finding Board entitled to rely on this legal presumption in determining likelihood of confusion); Am. Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). In addition, the third-party Internet evidence discussed above to demonstrate the relatedness of the goods also shows that these goods are promoted and sold through the same websites to the same consumers. Thus, at least some of the trade channels and consumers are the same, and the third du Pont factor weighs strongly in favor of a finding of likely confusion as to both cited registrations. C. Degree of Care in Purchasing Applicant again relies on how its own goods and those in the ‘072 Registration allegedly are actually advertised, rather than how they are identified in the registration and application, to argue that the relevant customers are sophisticated.20 We find that the unrestricted identifications would reach ordinary consumers, and the website evidence discussed above reflects modest price points for electronic cigarettes, cartridges, and e-liquids. Because we must consider the “least sophisticated potential purchasers,” there is no heightened degree of care in purchasing, and we find this factor neutral. See Stone Lion Capital Partners, 110 USPQ2d at 1163 (“Although the services recited in the application also encompass 20 Id. at 19. Serial No. 87417619 - 13 - sophisticated investors, Board precedent requires the decision to be based ‘on the least sophisticated potential purchasers.’”). III. Conclusion The overall similarity of these marks for in-part identical and highly related goods that move in the same channels of trade to the same classes of ordinary customers renders confusion likely as to both cited registrations. Decision: The refusal to register Applicant’s mark is affirmed. Copy with citationCopy as parenthetical citation