Refael Yitzhaki

Trademark Trial and Appeal Board

Apr 16, 2018

No. 86910020 (T.T.A.B. Apr. 16, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: April 16, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Refael Yitzhaki
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Serial No. 86910020
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Stephen T. Scherrer of Scherrer Patent & Trademark Law PC,
for Refael Yitzhaki.
Samir Ramesh-Patel, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
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Before Kuhlke, Bergsman and Masiello,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Refael Yitzhaki (“Applicant”) seeks registration on the Principal Register of the
mark THE SURPRISE MYSTERY BOX in standard characters for services
ultimately identified as “On-line retail store services featuring a wide variety of
consumer goods of others, but not a monthly subscription service that provides
anglers with fishing equipment, namely fishing lures; On-line retail store services
featuring general consumer merchandise and a wide variety [sic] general consumer
goods of others, but not a monthly subscription services [sic] that provides anglers
Serial No. 86910020
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with fishing equipment, namely fishing lures,” in International Class 35.1 The word
“BOX” is disclaimed.
The Trademark Examining Attorney refused registration of 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 the identified goods, so resembles
the mark THE OC MYSTERY BOX in standard characters, registered on the
Principal Register for “Retail variety stores,” in International Class 35,2 as to be likely
to cause confusion, mistake or deception.
When the refusal was made final, Applicant appealed and briefs were filed. We
affirm the refusal to register.
I. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis
Ind., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Even within the du
Pont list, only factors that are “relevant and of record” need be considered. M2

1 Application Serial No. 86910020 was filed on Feb. 17, 2016, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051, based upon Applicant’s allegation of a bona fide intention
to use the mark in commerce.

2 Registration No. 4500494, issued on March 25, 2014. The term “OC” is disclaimed. An
additional refusal under Section 2(d) based on Registration Nos. 4817354 and 4817355 was
apparently obviated by the amendment to Applicant’s identification of services and is not an
issue on appeal. Dec. 9, 2016 Final Office Action. All citations to the prosecution history for
the application are to the TSDR (Trademark Status and Document Retrieval) database.
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Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.
2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB
2015) (“While we have considered each factor for which we have evidence, we focus
our analysis on those factors we find to be relevant.”). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods. See In re i.am.symbolic, llc, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers
all DuPont factors for which there is record evidence but ‘may focus … on dispositive
factors, such as similarity of the marks and relatedness of the goods.’”) (quoting
Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002)); 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 Services/Channels of Trade/Consumers
With regard to the services, channels of trade and classes of consumers, we must
make our determinations based on the services as they are identified in the
application and cited registration. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming public may
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perceive [the respective goods or services of the parties] as related enough to cause
confusion about the source or origin of the goods and services.’” In re St. Helena Hosp.,
774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co.
v. Packard Press Inc., 62 USPQ2d at 1004).
“Variety store” is defined as “a retail store that carries a wide variety of
merchandise especially of low unit value.”3 Registrant’s “Retail variety stores”
encompass Applicant’s “On-line retail store services featuring a wide variety of
consumer goods of others, but not a monthly subscription service that provides
anglers with fishing equipment, namely fishing lures; On-line retail store services
featuring general consumer merchandise and a wide variety general consumer goods
of others, but not a monthly subscription services that provides anglers with fishing
equipment, namely fishing lures” and, as such, the services are legally identical. See,
e.g., In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015)
(“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses
Registrant’s narrowly identified ‘residential and commercial furniture.’”).
Considering the channels of trade and classes of consumers, because the services
are legally identical and there are no limitations as to channels of trade or classes of
purchasers in either the application or cited registration, we must presume that

3 MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 2000). The Examining
Attorney’s request for judicial notice of the definition of “variety store” is granted. 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) (Board may take judicial notice of dictionary
definitions); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006) (judicial notice of
online dictionaries that exist in printed format or regular fixed editions).

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Applicant’s and Registrant’s services travel in the same ordinary trade channels and
will be offered to the same potential consumers. 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 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).
Applicant presented no argument on these factors.
In view of the above, these du Pont factors favor a finding of likelihood of
confusion.
B. Similarity/Dissimilarity of the Marks
Under this factor, we compare Applicant’s and Registrant’s marks “in their
entireties as to appearance, sound, connotation and commercial impression.” Palm
Bay Imports 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
proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem.
Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon,
102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). Because the services are “retail variety store services” and
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“online retail store services featuring general consumer merchandise,” the average
customer is an ordinary consumer.
When the services are identical or legally identical, the degree of similarity
between the marks necessary to support a determination that confusion is likely
declines. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330,
102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra, 101 USPQ2d at 1908; In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); Century 21
Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed.
Cir. 1992); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010); In re
Ginc UK Ltd., 90 USPQ2d 1472, 1477 (TTAB 2007).
Applicant’s mark, THE SURPRISE MYSTERY BOX, and Registrant’s mark, THE
OC MYSTERY BOX, share wording presented in a similar structure. Applicant’s
additional word, SURPRISE, underscores the connotation and commercial
impression of the word MYSTERY4 and Registrant’s additional term, OC, describes
a geographic location of its services; the term OC referring to Orange County, CA,
Registrant’s location.5 The first part in a mark may have more source-identifying
significance as it is “often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered.” Presto Prods., Inc. v. Nice-Pak

4 The definitions for SURPRISE and MYSTERY are respectively “an unexpected … thing”
and “a thing whose … nature is … unknown.” Oxford Living Dictionary
(https://en.oxforddictionaries.com) Dec. 9, 2016 Office Action at 4-8.
5 Registrant’s address is in Mission Viejo, California. June 6, 2016 Office Action at 2. We take
judicial notice that Mission Viejo, California is in Orange County, California. In re Morinaga
Nyuguo Kabushiki Kaisha, 120 USPQ2d 1738, 1744 n.4 (TTAB 2016) (Board took judicial
notice of the locations of Puyallup, Washington and Mount Rainer).
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Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1987) (KIDWIPES confusingly similar to
KID STUFF). See also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 73 USPQ2d at 1692 (“The presence of this strong distinctive term
as the first word in both parties’ marks renders the marks similar, especially in light
of the largely laudatory (and hence non-source identifying) significance of the word
ROYALE.”). However, here, where the beginning of the marks either conveys the
same connotation and commercial impression of the common element MYSTERY
BOX, or simply provides information as to the location of the source, we find that the
differing terms OC and SURPRISE are insufficient to distinguish the marks. We
recognize that the word BOX is disclaimed in Applicant’s mark; however, the addition
of the word BOX to both marks right after MYSTERY creates a very similar
appearance and commercial impression. Even if there is no particularly dominant
component of either mark, we find that the marks, despite their differences, are
similar in meaning and overall commercial impression.
Applicant argues that the Examining Attorney’s analysis improperly dissects the
marks and thereby ignores the differences. We find no error in the Examining
Attorney’s analysis. It is well-settled that although we consider the marks in their
entireties “[t]here 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 Nat’l Data
Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985). As discussed above,
OC is geographically descriptive and disclaimed in Registrant’s mark. Although there
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is no mechanical test to select a “dominant” element of a compound word mark,
consumers would be more likely to perceive a fanciful or arbitrary term, rather than
a descriptive or generic term, as the source-indicating feature of the mark. See, e.g.,
In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir.
1997) (affirming TTAB’s finding that “DELTA,” not the disclaimed generic term
“CAFE,” is the dominant portion of the mark THE DELTA CAFE). In addition, the
word SURPRISE in Applicant’s mark serves to emphasize the meaning and
commercial impression of the common word MYSTERY. We are mindful that these
words are merely part of a phrase in each mark and “that the message of a whole
phrase may well not be adequately captured by a dissection and recombination.” Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340-41, 115 USPQ2d 1671, 1676
(Fed. Cir. 2015). However, if two marks for legally identical services share identical
or similar dominant features and the marks, when viewed in their entireties, create
similar overall commercial impressions, then confusion is likely. See In re Denisi, 225
USPQ 624, 624 (TTAB 1985) (“[I]f the dominant portion of both marks is the same,
then confusion may be likely notwithstanding peripheral differences.”). In this case,
the peripheral differences fail to distinguish the marks.
When comparing marks, “[t]he 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 [consumers] who encounter the marks would be
likely to assume a connection between the parties.” In re U.S. Warriors Ice Hockey
Program, Inc., 122 USPQ2d 1790, 1795 (TTAB 2017) (citing Coach Servs., Inc. v.
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Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012)); TMEP §1207.01(b). Here, consumers would more likely remember the
MYSTERY BOX portion of the marks and to the extent they recall OC or SURPRISE,
they could ascribe that difference to being variations from the same source.
We find the marks’ similarities in appearance, sound, connotation and commercial
impression outweigh the dissimilarities.
This du Pont factor weighs in favor of a likelihood of confusion.
II. Balancing of Factors
Considering that the services, channels of trade and consumers are legally
identical, and the marks are similar, we find that confusion is likely.
Decision: The refusal to register Applicant’s mark is affirmed.