Royal Caribbean Cruises Ltd.v.Allan Warren

Trademark Trial and Appeal Board

Sep 20, 2010

No. 91182846 (T.T.A.B. Sep. 20, 2010)

Mailed: September 20, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Royal Caribbean Cruises Ltd.
v.
Allan Warren
_______

Opposition No. 91182846
to Application No. 77019528
filed on October 12, 2006
_______

Ronald E. Shapiro of Shapiro & Silverstein for Royal
Caribbean Cruises Ltd.

Christopher J. Schulte of Merchant & Gould for Allan Warren.
_______

Before Hairston, Walters and Mermelstein, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Royal Caribbean Cruises Ltd. filed its opposition to
the application of Allan Warren to register the mark shown
below.1

1 Application Serial No. 77019528, filed October 12, 2006, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91182846
2
The goods are identified in the application as follows:
“optical goods, namely, eyeglasses, sunglasses,
contact lenses; prescription and non-prescription eye
glasses and spectacles for adults and children;
prescription and non-prescription sunglasses; cases,
chains, cords and frames for all of the above;
containers for contact lenses,” in International Class
9;

“watches; watch straps; watch fobs; clocks; earrings;
necklaces; rings; bracelets; trinkets, namely, charms,
pins and pendants; jewelry charms; jewelry boxes,
jewelry cases; buckles of precious metal, for
clothing, belts and watchstraps; tie pins and clips;
cuff links; keys, key rings, key fobs, and key chains,
all being made wholly or principally of precious metal
or coated therewith; costume jewelry; silver
ornaments; objects of imitation gold, namely,
earrings, trinkets, charms, rings, bracelets,
pendants, necklaces; precious gemstones,” in
International Class 14;

“suitcases; trunks; traveling bags; garment bags for
travel; school bags, satchels; hold alls; back packs;
rucksacks; beach bags; duffel bags; athletic bags;
handbags; shoulder bags; attaché cases, briefcases;
umbrellas, umbrella covers; parasols; purses; pocket
wallets, check book holders; credit card holders;
credit card cases; key cases; business card cases;
calling card cases; vanity cases sold empty; valises;
walking canes, walking sticks; bands and straps of
leather for all of the foregoing,” in International
Class 18; and

“articles of outer clothing, namely, pants, trousers,
jeans, shorts, shirts, suits, T-shirts, pique shirts,
polo shirts, skirts, dresses, blouses, tops,
dungarees, overalls, coats, jackets, sweaters,
sweatshirts, jerseys, jumpers, cardigans, capes;
articles of sports clothing, namely, jerseys,
sneakers, track suits, track pants, warm-up shirts and
pants; leisurewear, namely, T-shirts, sweat pants,
hooded tops, fleece suits; articles of underclothing;
underwear; boxer shorts; lingerie; hosiery; footwear
being articles of clothing; socks; articles of
footwear, namely, boots, shoes, sandals, slippers,
running shoes, golf shoes; football boots and shoes,
soccer boots and shoes; headwear; caps, hats, berets,
ear muffs; scarves; dressing gowns; pajamas; beach
clothes, namely, beach shorts, sarongs and beach
shoes; baby boots; cloth diapers and bibs; romper
suits; baby pants and sleep suits; suspenders, namely,
braces; belts; wrist bands; ties; cravats; aprons;
bathrobes; bathing caps and suits; bathing trunks;
Opposition No. 91182846
3
galoshes; garters; gloves and mittens; headbands;
boots; jackets; jerseys; jumpers; leggings; parkas;
shawls; singlets; skirts; vests; visors; waistcoats,”
in International Class 25.

The application includes the following statements:
The mark consists of an anchor at the bottom and a
crown shaped object near the top of the anchor with
two corresponding crown shaped objects off-centered
above the first crown. Color is not claimed as a
feature of the mark.

As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods so
resembles opposer’s previously used and registered mark
shown below as to be likely to cause confusion, under
Section 2(d) of the Trademark Act.2
Mark:

Opposer owns two registrations for the above mark as
follows:
Registration No. 1838554, registered June 7, 1994 (Renewed;
Section 15 affidavit acknowledged):
Goods:
“key rings made of metal; money clips made of metal,”
in International Class 6;

“pocket knives,” in International Class 8;

2 Opposer also included in its pleading a claim of dilution; however,
opposer did not pursue this claim and we consider it to be waived.

Opposition No. 91182846
4
“magnets,” in International Class 9;

“lapel pins, cufflinks, tie bars; jewelry; namely,
charms and pin,” in International Class 14;

“playing cards, photographic albums, pens,” in
International Class 16;

“luggage with wheels; wallets; purses; handbags;
luggage tags,” in International Class 18;

“corkscrews; bottle openers; mugs; beverage glassware;
plastic coasters; [bottles sold empty; champagne
bottles sold empty]; sports bottles sold empty;
portable beer coolers,” in International Class 21;

“beach towels,” in International Class 24;

“clothing; namely, golf shirts, T-shirts, sweatshirts,
sweaters, jogging pants, shorts, socks, robes, camp
shirts, beach pants, tank tops, jackets, scarves,
hooded shirts, rain ponchos; headgear; namely, hats
and visors,” in International Class 25;

“belt buckles not of precious metal,” in International
Class 26; and

“Christmas tree ornaments; aerodynamic disks for use
in playing catching games; toy model ships; stuffed
toys,” in International Class 28.

Registration No. 1396130, registered June 3, 1986 (Renewed;
Section 15 affidavit acknowledged):
Services:
“arranging and conducting cruises for others,” in
International Class 39.

Applicant, in his answer, denied the salient
allegations of the claim. Applicant admitted, inter alia,
that opposer owns the two pleaded registrations; and that
applicant had not used his mark in connection with his
identified goods prior to the application filing date.
Applicant asserted several affirmative defenses that he did
not pursue and to which we have given no consideration.
Opposition No. 91182846
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The Record
The record consists of the pleadings; the file of the
involved application; and certified status and title copies
of opposer’s Registration Nos. 1838554 and 1396130, made of
record by opposer’s notice of reliance. Applicant submitted
no testimony or other evidence. Only opposer submitted a
brief on the case.
Analysis
Standing
Because opposer has properly made its pleaded
registrations of record, we find that opposer has
established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Priority
In view of opposer’s ownership of valid and subsisting
registrations, there is no issue regarding opposer’s
priority. King Candy, Inc. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Thus, the only
issue to decide herein is likelihood of confusion.
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
Opposition No. 91182846
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probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). Opposer must establish that there is a
likelihood of confusion by a preponderance of the evidence.
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 Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein. The relevant du
Pont factors in the proceeding now before us are discussed
below.
The Goods and Services
It is well established that the goods and/or services
of the parties need not be similar or competitive, or even
offered through the same channels of trade, to support a
holding of likelihood of confusion. It is sufficient that
Opposition No. 91182846
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the respective goods and/or services of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and/or
services 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 originate from the same source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue,
of course, is not whether purchasers would confuse the goods
and/or services, but rather whether there is a likelihood of
confusion as to the source of the goods and/or services. In
re Rexel Inc., 223 USPQ 830 (TTAB 1984). The question of
likelihood of confusion must be determined based on an
analysis of the goods recited in applicant’s application
vis-à-vis the goods and services identified in opposer’s
pleaded registrations. Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992.
We begin by noting that we have conducted our
likelihood of confusion analysis by focusing on opposer’s
Registration No. 1396130. It is unnecessary to consider
opposer’s Registration No. 1838554.
With respect to the goods and services of the parties,
we observe that there is a substantial overlap in the goods
Opposition No. 91182846
8
identified in International Classes 14, 18 and 25 in the
application and in pleaded Registration No. 1396130. In
particular, with respect to applicant’s goods in
International Class 14, both the noted registration and the
application include key rings. While it may be relevant for
classification purposes that applicant’s key rings may be
made of precious metal and opposer’s key rings are not, it
is immaterial in connection with our likelihood of confusion
finding that the goods are essentially the same.
Additionally, both the application and the noted
registration include charms and pins; and applicant’s tie
pins and clips are very similar to opposer’s tie bars and
could be used interchangeably.
With respect to applicant’s goods in International
Class 18, both the noted registration and the application
include wallets, purses and handbags. Moreover, applicant’s
suitcases and opposer’s luggage with wheels are clearly
overlapping.
With respect to applicant’s goods in International
Class 25, both the noted registration and the application
include sweaters, T-shirts, shorts, sweatshirts, socks,
hats, scarves and robes/bathrobes. Additionally,
applicant’s pants encompass opposer’s jogging pants.
Because likelihood of confusion must be found if there
is likely to be confusion with respect to any item that is
Opposition No. 91182846
9
the same as or related to any of opposer’s goods, opposer
need show only that at least one of the goods identified in
each class in the opposed application is the same as or
related to the goods identified in opposer’s registration
under consideration. See Tuxedo Monopoly, Inc. v. General
Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981). Thus, we conclude that applicant’s above-noted goods
are the same as or substantially similar to the above-noted
goods in opposer’s Registration No. 1396130.
However, with respect to applicant’s goods in
International Class 9, opposer has not established any
relationship or overlap with respect to opposer’s goods and
services in either of its registrations. Also, since the
only evidence in the record is opposer’s two pleaded
registrations, there is no evidence establishing that
opposer’s mark may be well known or that applicant’s Class 9
goods are related in any way to the goods and services in
opposer’s registrations.
Therefore, the du Pont factor regarding the similarity
of the goods favors opposer only with respect to the goods
in International Classes 14, 18 and 25.
Trade Channels and Purchasers
With respect to applicant’s goods in International
Classes 14, 18 and 25, both parties’ identifications of
goods are broadly worded, without any limitations as to
Opposition No. 91182846
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channels of trade or classes of purchasers. Thus, we must
presume that the goods of applicant and opposer are sold in
all of the normal channels of trade to all of the usual
purchasers for goods of the type identified. See Canadian
Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987). Because several of applicant’s goods in
International Classes 14, 18 and 25 are identical or closely
related to those of opposer, the trade channels and classes
of purchasers are the same. All of these goods are consumer
goods and, thus, the general public is likely to be the
relevant consumer.
Therefore, with respect to applicant’s goods in
International Classes 14, 18 and 25, we conclude that the
parties’ trade channels and classes of purchasers are either
the same or closely related. These factors also favor
opposer.
The Marks
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 73 USPQ2d at 1692. In a particular case, any one
of these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534,
Opposition No. 91182846
11
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988). The respective marks are shown below:
applicant’s mark: opposer’s mark:

Applicant’s mark is a stylized anchor with three crowns
representing the upper end of the vertical line and the
crossbar at the top of the anchor. Opposer’s mark is a
stylized anchor with a crown above the crossbar at the top
of the anchor. Thus, there are differences between the two
marks. However, we must remember that 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 their entireties that confusion as
to the source of the services 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. Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In this case, the connotation and appearance of the
mark that the viewer is likely to remember in each case is
that of an anchor topped by a crown(s), but not necessarily
the more minor visual differences between the marks. In
Opposition No. 91182846
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other words, we find the similarities between the marks
substantially more significant than the differences between
the marks. Therefore, we find this du Pont factor weighs
strongly in opposer’s favor.
Conclusion
With respect to applicant’s goods in International
Classes 14, 18 and 25, in view of the identical and closely
related nature of some of the goods in each class with those
of opposer, the identity in trade channels and class of
purchasers, and the substantial similarities of the marks,
we conclude that confusion as to source is likely.
Inasmuch as opposer failed to establish a relationship
between applicant’s goods in International Class 9 and any
of the goods and services identified in its registration,
despite the similarities of the marks, opposer has not
established a likelihood of confusion with respect to
applicant’s goods in International Class 9.
Decision: The opposition is sustained on the ground of
priority and likelihood of confusion with respect to
International Classes 14, 18 and 25 in the application, and
registration to applicant in these classes is refused. The
opposition is dismissed as to International Class 9 in the
application and the application will go forward to
registration in this class.