No. 79191723 (T.T.A.B. Jul. 13, 2018)

Runa Vodka AB

Trademark Trial and Appeal BoardJul 13, 2018

No. 79191723 (T.T.A.B. Jul. 13, 2018)

This Opinion is Not a Precedent of the TTAB Mailed: July 13, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Runa Vodka AB _____ Serial No. 79191723 _____ George A. Coury of Bachman & LaPointe, P.C., for Runa Vodka AB. Jaime Batt, Trademark Examining Attorney, Law Office 125, Mark Pilaro, Managing Attorney. _____ Before Cataldo, Kuczma and Coggins, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: Runa Vodka AB (“Applicant”) seeks registration on the Principal Register of the mark for “alcoholic beverages except beer” in International Class 33.1 1 Application Serial No. 79191723 accorded an effective filing date of May 17, 2016, requesting an extension of protection under the Madrid Protocol based on International Registration No. Serial No. 79191723 - 2 - The Trademark Examining Attorney refused registration of Applicant’s mark under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the mark RUNE (in standard characters) set forth in Registration No. 5053593 for “alcoholic beverages except beer.”2 After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. Applicant and the Examining Attorney filed briefs and Applicant filed a reply brief. For the reasons set forth below, the refusal to register is affirmed. I. Evidentiary Issues Before proceeding to the merits of the refusal, we address a couple of evidentiary matters. In its briefs, Applicant contends that third-party registrations have been granted for RUNA marks showing that RUNA has different translations.3 Applicant refers in its appeal brief to a specific third-party registration and “a related family of registrations.”4 However, Applicant did not submit copies of these registrations 1309087 under § 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a), and claiming a date of priority pursuant to § 67 of the Trademark Act, 15 U.S.C. 1141g, of November 19, 2015 based on European Union trademark Registration No. 014816359. The mark consists of the stylized wording “RUNA” where a dragon’s head forms the end of the letter “A.” The English translation of “RUNA” in the mark is “rune.” 2 Registration No. 5053593 issued on October 4, 2016. 3 Applicant’s Brief p. 3 (4 TTABVUE 4); Applicant’s Reply p. 2 (7 TTABVUE 3). Citations to the briefs and to the record include references to the Board’s TTABVUE online docketing system. Specifically, the number preceding “TTABVUE” corresponds to the docket entry number(s), and any number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the cited materials appear. Page references to the application record refer to the .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. 4 Applicant’s Brief p. 2 (4 TTABVUE 3). Serial No. 79191723 - 3 - during prosecution or, for that matter, with its appeal brief. The Examining Attorney objects to consideration of such third-party registrations on the ground that they were not submitted prior to the filing of this appeal.5 We are not persuaded by Applicant’s argument that “[t]hese trademark registrations are a matter of public record.”6 The Board does not take judicial notice of applications or registrations; they must be proved by competent evidence. See, e.g., In re Jonathan Drew Inc., 97 USPQ2d 1640, 1644 n.11 (TTAB 2011) (stating that “the Board’s well-established practice is not to take judicial notice of registrations that reside in the USPTO”); Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1293 (TTAB 1986) (“[W]e do not take judicial notice of application and registration files that reside in the Patent and Trademark Office on the basis of their mere identification in briefs, pleadings and evidentiary submissions.”). The record in an application should be complete prior to the filing of an appeal. 37 C.F.R. § 2.142(d); Trademark Board Manual of Procedure (TBMP) §§ 1203.02(e), 1207.01 (June 2017)7; Trademark Manual of Examining Procedure (TMEP) § 710.01(c) (Oct. 2017). Thus, to make third-party registrations part of the record, Applicant should have submitted copies of the registrations, or their electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP § 1208.02; TMEP 5 Examining Attorney’s Appeal Brief (6 TTABVUE 10). 6 Applicant’s Brief p. 3 (4 TTABVUE 4). 7 The June 2018 edition of the TBMP issued after this case was submitted to the Board for decision. Serial No. 79191723 - 4 - § 710.03. The evidence Applicant seeks to admit was available during the prosecution of its application. Because Applicant did not submit copies of the third-party registrations prior to its filing of the appeal and the Examining Attorney did not treat them as being of record, the objection is sustained and the third-party registrations are not in evidence and will be disregarded. See In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1596 (TTAB 2014); In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013). Applicant also argues, for the first time, that “the term RUNA is registered to third parties for beverages such as tea,”8 and that it owns registrations containing the term RUNA.9 The Examining Attorney objects to those registrations because Applicant did not provide copies of the registrations prior to the filing of its appeal, and requests the Board to disregard them. For the same reason the prior evidence is not admitted, Applicant’s registrations are not in evidence and have not been considered. Moreover, even if those registrations were considered, neither the Board nor an examining attorney is bound by decisions of other examining attorneys to register prior marks. To the contrary, “the [US]PTO must decide each application on its own merits, and decisions regarding other registrations do not bind either the [USPTO] or [the reviewing] court.” In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 67 USPQ2d 8 Applicant’s Brief p. 3 (4 TTABVUE 4). 9 Id. at 4 (4 TTABVUE 5). Serial No. 79191723 - 5 - 1475, 1480 (Fed. Cir. 2003)); In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). In view of the foregoing, the third-party registrations mentioned in Applicant’s brief, and Applicant’s asserted registrations, are excluded and have not been considered. II. Likelihood of Confusion Our determination under § 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. __, 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015); 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 goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We have considered all of the evidence as it pertains to the relevant du Pont factors, as well as Applicant’s arguments (including any evidence and arguments not specifically discussed in this opinion). The other factors we treat as neutral. A. Comparison of the Goods, Channels of Trade and Classes of Customers Both Applicant’s and Registrant’s goods are “alcoholic beverages except beer.” When the goods are identical and their identifications have no restrictions as to nature, type, channels of trade, or classes of purchasers — as is the case here — the Serial No. 79191723 - 6 - identified goods are presumed to travel in the same channels of trade to the same class of purchasers. In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983) (“absent restrictions in the application and registration, goods and services are presumed to travel in the same channels of trade to the same class of purchasers.”). B. Similarity of the Marks We now turn to the du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. du Pont, 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). Our analysis cannot be predicated on dissecting the marks into their various components; the decision must be based on the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). Once all of the features of the mark are considered, however, it is not Serial No. 79191723 - 7 - improper to state that, for rational reasons, more or less weight has been given to a particular feature of the mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. In re Viterra, 101 USPQ2d at 1908; In re Nat’l Data Corp., 224 USPQ at 751. Looking at the marks, Applicant’s mark is presented in stylized font spelling the word RUNA, and has a design of a dragon head at the end of the letter “A.” Inasmuch as the dragon head appears at the very end of the letter “A” in the mark in essentially the same size as the font used, it is a subtle design resulting in the word RUNA being the dominant portion of Applicant’s mark. Registrant’s mark is RUNE in standard characters. Thus, the dominant portion of both marks differs by a single letter. 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.”). While Applicant’s mark comprises both a word and a design, “the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015), Serial No. 79191723 - 8 - citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). Greater weight is often given to the wording because it is the wording that customers would use to refer to or request the goods or services. See, e.g., In re Viterra, 101 USPQ2d at 1908, 1911 (“In the case of a composite mark containing both words and a design, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed. (internal quotation marks omitted)); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999) (“In the case of marks which consist of words and a design, the words are normally accorded greater weight because they would be used by purchasers to request the goods.”). Moreover, the stylized font utilized in Applicant’s mark does not alter the meaning or the commercial impression formed by the word “RUNA.” The cited mark is for the term RUNE in standard character format. A mark that is in standard characters may be displayed in any lettering style; the rights reside in the wording or other literal elements and not in any particular display. In re Davia, 110 USPQ2d 1810, 1814 (TTAB 2014) (“Although . . . such analysis would not extend to include consideration of that term combined with a snake design, registrant is entitled to protection of its mark . . . in any font style, size, or color, including a stylization that uses the font style employed by applicant, and therefore we must consider its mark as though it were depicted in such font style.”). Therefore, Registrant is entitled to all depictions of its standard character mark regardless of the font style, size, or color, including the identical font style and size in which Applicant’s applied-for mark is shown. In re Viterra, 101 USPQ2d at 1909; Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d Serial No. 79191723 - 9 - 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012). While Applicant’s mark also includes the design of a small dragon head integrated into the final stroke of the letter “A”, the design does not significantly impact the overall commercial impression and will not avoid a likelihood of confusion with the cited mark. Moreover, customers tend to remember words rather than designs in marks because they use the words to refer to the goods. Thus, customers will recall the word “RUNA” in Applicant’s mark more readily than the small, stylized dragon head design placed at the end of its mark. See In re Viterra, 101 USPQ2d at 1911; In re Dakin’s Miniatures, Inc., 59 USPQ2d at 1596 (“It is the word portion of the marks which is most likely to be impressed upon a customer’s memory as it is used by prospective purchasers when asking for applicant’s and registrant’s goods.”). Additionally, Applicant argues that because in its mark “the word used is so short, the difference in the final letter creates a clear distinction in sound and appearance of the mark.”10 Although Applicant’s mark and the cited mark may be distinguishable in a side-by-side comparison, such is not the test for purposes of the likelihood of confusion analysis. Rather, whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result is the test. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 10 Id. at 1-2 (4 TTABVUE 2-3). Serial No. 79191723 - 10 - (Fed. Cir. 2012); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721). Looking at the marks, Applicant’s use of the vowel “A” at the end of its mark in place of the vowel “E” located at the end of Registrant’s mark does not sufficiently distinguish them to avoid a likelihood of confusion. See, e.g., In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (finding MILTRON and MILLTRONICS (stylized) to be highly similar in appearance); In re Bear Brand Hosiery Co., 194 USPQ 444, 445 (TTAB 1977) (“The mark of the applicant, ‘KIKS’ and the cited mark ‘KIKI’ differ only in the terminal letter of each mark. While differing in sound, the marks are similar in appearance and have a somewhat similar connotation.”); see also Apple Comput. v. TVNET.net Inc., 90 USPQ2d at 1396 (substitution of the letter “v” at the beginning of applicant’s VTUNES.NET mark for the letter “i” in opposer’s ITUNES marks is insufficient to distinguish the dominant portions of the parties’ marks). “Considering the similarities between the marks in sound and appearance, and taking into account the normal fallibility of human memory over a period of time . . . the marks create substantially similar commercial impressions.” In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) (“Moreover, although there are certain differences between the [marks’ CAYNA and CANA] in appearance, namely, the inclusion of the letter ‘Y’ and the design feature in applicant’s mark, there are also obvious similarities between them.”). Applicant contends that the difference in the spelling between its mark and Registrant’s mark “should not be summarily dismissed due to the cognate languages Serial No. 79191723 - 11 - from which the terms are said to derive.”11 While acknowledging that the English translation of the Spanish word RUNA is “rune,”12 Applicant argues that it is not from a Spanish speaking country and “[t]hus, there was certainly no intention for the mark to be translatable to RUNE.”13 Applicant goes on to note that “other registered marks including the term RUNA show a different translation. For example, in U.S. Registration No. 5348698 and a related family of registrations, the English language translation of RUNA is listed as ‘fully alive.’”14 Inasmuch as copies of the registrations that Applicant is referring to were not submitted as evidence as discussed above, the third-party registrations mentioned in Applicant’s brief are excluded and have not been considered (see section I. Evidentiary Issues supra). Finally, the Examining Attorney contends that it is likely that a consumer would “stop and translate” the marks in question in the course of a transaction, and therefore applies the doctrine of foreign equivalents (translating foreign words into English) in finding the marks similar. Applicant responds that the foreign equivalents case law is not applicable noting that the ordinary American consumer would not be likely to stop and translate the RUNA mark and conclude coincidence in source with products marketed under the RUNE mark and no evidence provided by the Examining Attorney supports this 11 Id. at 1 (4 TTABVUE 2). 12 October 21, 2016 Response to Office Action at 4. 13 Applicant’s Brief p. 2 (4 TTABVUE 3). 14 Id. (4 TTABVUE 3). Serial No. 79191723 - 12 - conclusion.15 Applicant further argues, without support, that “a consumer is not likely to assume that the source of Registrant’s or [Applicant’s] products utilizes different language versions of its trademarks” as “[t]his is not a common practice in the beverage industry, and the different spelling in the marks, as used on the listed goods, is a significant difference that cuts against any likelihood of confusion among consumers.”16 When deciding to employ the doctrine of foreign equivalents, “[t]he test is whether, to those American buyers familiar with the modern foreign language, the word would denote its English equivalent.” 4 J. Thomas McCarthy, TRADEMARKS AND UNFAIR COMPETITION § 23:26 (5th ed.). “The doctrine of foreign equivalents is not an absolute rule, but merely a guideline, which should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. . . . The ‘ordinary American purchaser’ includes ‘all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.’” In re Weiss Watch Co., 123 USPQ2d 1200, 1204 (TTAB 2017) (citations omitted). See also 5 CALLMANN ON UNFAIR COMPETITION, TRADEMARKS & MONOPOLIES § 21:20 (4th ed.) (“The doctrine of foreign equivalents applies when an ‘ordinary American purchaser’ would be likely to ‘stop and translate the foreign word into its English equivalent,’ and is generally applied to words from modern languages, such as . . . Spanish.”) (footnotes omitted). However, 15 Id. at 3 (4 TTABVUE 4); Reply Brief p. 2 (7 TTABVUE 3). 16 Applicant’s Brief p. 2 (4 TTABVUE 3). Serial No. 79191723 - 13 - absent any evidence or case law in support of Applicant’s argument, its argument offers no support for reversing the refusal. Regardless of whether foreign equivalents case law applies, there is sufficient evidence to support a likelihood of confusion. Despite the letter “A” at the end of Applicant’s mark RUNA and the “E” at the end of Registrant’s mark RUNE, the marks are likely to be pronounced in a similar way, and convey the same meaning. Thus, we find that in overall commercial impression they are quite similar. As indicated earlier, we bear in mind that the “marks ‘must be considered … in light of the fallibility of memory …,’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014), and that the proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013). III. Conclusion Where the goods of an applicant and a cited registrant are identical as they are in this case, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods. In re Viterra, 101 USPQ2d at 1912 (citing Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). Based on the foregoing, the marks when considered in their entireties are similar in appearance and sound, creating a similar commercial impression weighing in favor of finding a likelihood of confusion. Additionally, the marks are used on identical Serial No. 79191723 - 14 - goods that are presumably sold through the same channels of trade to the same classes of customers. In view of the foregoing, there is a likelihood of confusion between Applicant’s mark and the cited registered mark RUNE. Accordingly, we find that confusion is likely. Decision: The refusal to register Applicant’s mark pursuant to § 2(d) of the Trademark Act is affirmed.