Restoration Hardware, Inc.Download PDFTrademark Trial and Appeal BoardFeb 23, 2015No. 85885460 (T.T.A.B. Feb. 23, 2015) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: February 23, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Restoration Hardware, Inc. _____ Serial No. 85885460 _____ Michael J. McCue of Lewis and Roca LLP, for Restoration Hardware, Inc. David C. Reihner, Trademark Examining Attorney, Law Office 111, Robert L. Lorenzo, Managing Attorney. _____ Before Kuhlke, Bergsman and Wellington, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Restoration Hardware, Inc. (“Applicant”) seeks registration on the Principal Register of the mark RH (in standard characters) for Luggage, namely, trunks; tool bags sold empty; patio umbrellas and patio umbrella bases; handbags, purses, tote bags, luggage, brief cases, wallets, in International Class 18.1 1 Application Serial No. 85885460 was filed on March 25, 2013, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. Serial No. 85885460 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the registered mark R.H. VINTAGE (stylized), shown below, for “purses, handbags, backpacks, fanny packs, tote bags, coin purses, and wallets,” in Class 18, as to be likely to cause confusion.2 Registrant disclaimed the exclusive right to use the word “Vintage.” When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. Preliminary Issue Before proceeding to the merits of the refusal, we address an evidentiary matter. Pursuant to Trademark Rule 2.126(a)(1), made applicable to ex parte appeals by Trademark Rule 2.142(b)(2), briefs must be double-spaced. Applicant’s brief was single-spaced. Nevertheless, we exercise our discretion to consider Applicant’s brief. II. Applicable Law Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 2 Registration No. 2478464, issued August 14, 2001; renewed. Serial No. 85885460 - 3 - USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See 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.”). These factors, and any other relevant du Pont factors in the proceeding now before us, will be considered in this decision. A. The similarity or dissimilarity and nature of the goods, established, likely-to- continue channels of trade and classes of consumers. The description of goods in the application and the cited registration are in part identical. They both include purses, handbags, tote bags, and wallets.3 Because the goods described in the application and the cited registration are in part 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 Under this du Pont factor, the Trademark Examining Attorney need not prove, and we need not find, similarity as to each and every product listed in the description of goods of a single class. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods in a class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1588 n.1 (TTAB 2011), judgment set aside on other grounds, 2014 WL 343267 (TTAB Jan. 22, 2014); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1397 (TTAB 2007). Serial No. 85885460 - 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). B. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression. We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, “finding of similarity as to any one factor (sight, sound or meaning) alone ‘may be sufficient to support a holding that the marks are confusingly similar.’” In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (citations omitted). See also In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that where, as here, the goods are in part identical, 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. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); 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 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing- Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). Serial No. 85885460 - 5 - “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). See also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Since the goods at issue include purses, handbags, tote bags, and wallets, the average customer is an ordinary consumer. The letters “R.H.” in Registrant’s mark R.H. VINTAGE are the dominant element of Registrant’s mark because the word “Vintage” is descriptive and has been disclaimed. The word “Vintage” is defined, inter alia, as “representing the high quality of a past time: “vintage car; vintage movies,” or “being the best of its kind: “They praised the play as vintage O’Neill.”4 Similarly, Wikipedia defines “Vintage 4 Dictionary.com based on the RANDOM HOUSE DICTIONARY (2015). 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 have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 85885460 - 6 - clothing” as “a generic term for new or second hand garments originating from a previous era.”5 The Wikipedia entry explains that “vintage style” refers to clothing that imitates the style of a previous era. Fashion design throughout history has turned to previous eras for inspiration. … These styles are generally referred to as “vintage style,” “vintage inspired” or “vintage reproductions.” They serve as a convenient alternative to those who admire an old style but prefer a modern interpretation.6 In his December 17, 2013 Office Action, the Trademark Examining Attorney also submitted excerpts from websites advertising vintage handbags and purses (e.g., fossil.com, ebay.com, etsy.com) to show third parties using the word “Vintage” to describe the goods at issue in this appeal. The examples below from DHGate.com and Google websites are representative: 5 “Vintage clothing,” Wikipedia.com attached to the December 17, 2013 Office Action. 6 Id. Serial No. 85885460 - 7 - It is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1983)); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). While noting that the letters “R.H.” are the dominant elements of Registrant’s mark R.H. VINTAGE, we are cognizant that the similarity or dissimilarity of the marks is determined based on the marks in their entireties and that the analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); In re National Data Corp., 224 USPQ at 751. However, 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 a consideration of the marks in their entireties. In re National Data Corp., 224 USPQ at 751. The position of the letters “R.H.” as the first part of the mark R.H. VINTAGE further reinforces the importance of “R.H.” as the dominant element of the mark. Serial No. 85885460 - 8 - See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word). With respect to the stylized display of Registrant’s mark R.H. VINTAGE, the stylization of the mark, if even noticed by consumers, is not so significant as to serve as a means of distinguishing the marks. In any event, because Applicant’s mark is in standard character form, Applicant may display its RH mark in a style resembling Registrant’s mark. Marks presented in standard characters are not limited to any particular depiction. The rights associated with a mark in standard characters reside in the wording and not in any particular display. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012) (citing, Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“By presenting its mark merely in a typed drawing, a difference cannot legally be asserted by that party. Tomy asserts rights in SQUIRT SQUAD regardless of type styles, proportions, or other possible variations. Thus, apart from the background, the Serial No. 85885460 - 9 - displays must be considered the same.”);7 In re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008) (“Because the registrants’ marks are displayed in typed form, the marks are not limited to any special stylization and we must assume that they could be displayed in the same style as the letters in applicant's mark.”); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988). Because of the fallibility of the memory of purchasers as to specifics of trademarks with the resultant tendency to retain but a general or overall impression of the marks that are encountered in the market place and because purchasers do not generally have an opportunity for a side-by-side comparison of the marks as they appear on the respective goods of the parties, the periods between the letters “R” and “H” in the registered mark R.H. VINTAGE, if noticed by consumers, would not distinguish the registered mark from Applicant’s mark RH. Consumers will react to R.H. as if it were RH. See, e.g., B.V.D. Licensing v. Body Action Design, 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (B.A.D. will be viewed as the word “bad”); Henry I. Siegel Co., Inc. v. Highlander, Ltd., 183 USPQ 496, 499 (TTAB 1974) (H.I.S. will be viewed as “his”). See also Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1712 (TTAB 2010) (hyphen did not distinguish MAGNUM from MAG-NUM); Goodyear Tire & Rubber Company v. Dayco Corporation, 201 USPQ 485, 489 n.4 (TTAB 1978) (“Fast-Finder” with 7 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (January 15, 2015). Serial No. 85885460 - 10 - hyphen is in legal contemplation substantially identical to “Fastfinder” without hyphen). Applicant’s mark RH and the dominant element “R.H.” of Registrant’s mark R.H. VINTAGE are very similar. In similar circumstances, where the registrant’s mark incorporates an applicant’s entire mark, the Board and its primary reviewing court often have found that the marks are similar. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (THE LILLY as a mark for women's dresses is likely to be confused with LILLI ANN for women's apparel including dresses); In re United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for women's clothing stores and women's clothing likely to cause confusion with CREST CAREER IMAGES for uniforms including items of women's clothing). In United States Shoe, the Board observed that “Applicant's mark would appear to prospective purchasers to be a shortened form of registrant's mark.” 229 USPQ at 709. See also Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992) (“[C]ompanies are frequently called by shortened names, such as, Penney's for J.C. Penney's, Sears for Sears and Roebuck (even before it officially changed its name to Sears alone), Ward's for Montgomery Ward's, and Bloomies for Bloomingdale's.”). In this case as well, consumers may shorten R.H. VINTAGE to RH. In the alternative, consumers may mistakenly believe that R.H. Serial No. 85885460 - 11 - VINTAGE products are the vintage line of RH products because of the similarity of the marks and the identity of the products on which the marks are used. Applicant argues that “[t]he R.H. in the R.H. VINTAGE mark stands for RON HERMAN, which is the house mark used in connection with a high-end retail clothing store. On the other hand, the goods sold under the applied for mark [RH] will be sold by Restoration Hardware. Thus, consumers will be immediately aware that the RH stands for Restoration Hardware, which is the house mark for all goods sold by Appellant. … Consumers are unlikely to be confused by goods sold by Restoration Hardware and goods sold by Ron Herman.”8 The house marks which are not part of the marks sought to be registered are not before us. We are concerned here with the mark Applicant is seeking to register and Registrant’s mark as registered, not as displayed in the real world or with any accompanying trade dress or house marks which are not part of Applicant’s mark or the mark in the cited registration. See Trademark Rule 2.52 (“A drawing depicts the mark sought to be registered.”). [A] distinction in trade dress cannot weigh against likelihood of confusion with respect to the registration of a simple word mark like [RH]. The reason is that such dress may well be changed at any time; only the word mark itself is to be registered. Kimberly-Clark Corp. v. H. Douglas Enters., Ltd., 774 F.2d 1144, 227 USPQ 541, 543 (Fed. Cir. 1985). See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000) (“it is irrelevant that Cunningham has a 8 Applicant’s Brief, p. 3 [unnumbered]. Serial No. 85885460 - 12 - particular display for his mark in commerce, and the Board was correct to ignore those features.”); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1268 (TTAB 2011) (“registrant's registrations are evidence of the registrant's exclusive right to use the registered marks in commerce, without being required to include any additional wording that may be displayed on a specimen that was submitted in connection with obtaining one of the registrations. Likelihood of confusion is determined based on the mark as shown in the drawing of an application and the mark(s) shown in the cited registration(s).”); In re Emulex Corp., 6 USPQ2d 1312, 1315 (TTAB 1987) (“the mark sought to be registered herein comprises solely the term JAVELIN and the question of likelihood of confusion must be determined based on the mark sought to be registered.”). Our analysis regarding the similarity of the marks is limited to the mark Applicant is seeking to register RH and the mark in the cited registration R.H. VINTAGE. In view of the foregoing, we find that the similarities in Applicant’s mark RH and the mark in the cited registration R.H. VINTAGE (stylized) outweigh the dissimilarities and, therefore, the marks are similar in terms of appearance, sound, meaning and commercial impression. C. Balancing the factors. Because the marks are similar, the goods are in part identical and we must presume that the goods move in the same channels of trade and are sold to the same classes of consumers, we find that Applicant’s mark RH for “luggage, namely, trunks; tool bags sold empty; patio umbrellas and patio umbrella bases; handbags, Serial No. 85885460 - 13 - purses, tote bags, luggage, brief cases, wallets” so resembles the registered mark R.H. VINTAGE (stylized) for “purses, handbags, backpacks, fanny packs, tote bags, coin purses, and wallets” as to be likely to cause confusion. Decision: The refusal to register Applicant’s mark RH is affirmed. Copy with citationCopy as parenthetical citation