Shadow Creek Products, LLCDownload 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 Shadow Creek Products, LLC _____ Serial No. 87050890 _____ Clark A. Puntigam, of Jensen & Puntigam, P.S., for Shadow Creek Products, LLC. John M. Gartner, Trademark Examining Attorney, Law Office 102, Mitchell Front, Managing Attorney. _____ Before Bergsman, Larkin, and Coggins, Administrative Trademark Judges. Opinion by Coggins, Administrative Trademark Judge: Shadow Creek Products, LLC (“Applicant”) seeks registration on the Principal Register of the mark for “skin lotion” in International Class 3.1 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, as 1 Application Serial No. 87050890 was filed May 26, 2016, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as August 7, 2015. The application contains the following statements: “The mark consists of the stylized lower case letters ‘DB’ positioned back to back” and “Color is not claimed as a feature of the mark.” Serial No. 87050890 - 2 - applied to the goods identified in the application, so resembles the mark for “soaps, namely, bath soap, liquid soap, hand soap; perfumery products, namely, perfume, perfume oils, perfumed creams; essential oils; cosmetics; hair lotions; dentifrices,” in International Class 9,2 as to be likely to cause confusion, to cause mistake, or to deceive. When the refusal was made final, Applicant requested reconsideration. After the Examining Attorney denied the request for reconsideration, Applicant appealed to this Board. We affirm the refusal to register. I. Applicable Law Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods. 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.”). 2 Registration No. 5107153, issued December 27, 2016. The registration contains the following statements: “The mark consists of the stylized letters ‘DB’ in gold” and “The color(s) gold is/are claimed as a feature of the mark.” The registration also includes services in Class 44 that do not appear to have been cited by the Examining Attorney as a basis for the refusal and are therefore not involved in this appeal. Serial No. 87050890 - 3 - A. Similarity of the Goods and Channels of Trade We first consider the second and third du Pont factors, the similarity of the goods, channels of trade, and classes of customers. Applicant’s goods are “skin lotions.” The cited registrant’s goods include “cosmetics.” We take judicial notice that “cosmetic” means “[a] preparation, such as powder or a skin cream, designed to beautify the body by direct application” and “(usually cosmetics) [a] product applied to the body, especially the face, to improve its appearance.”3 These definitions complement the definition submitted by the Examining Attorney (i.e., “substances that you use on your skin to make yourself look more attractive”).4 The broad term “cosmetics” in the registration encompasses all types of cosmetics, including the skin lotion identified in the application.5 See 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 3 The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010). The first definition is taken from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE at ahdictionary.com, and the second from OXFORD LIVING DICTIONARIES at en.oxford dictionaries.com/definition/us, both accessed March 28, 2019. 4 From MACMILLAN DICTIONARY at macmillandictinoary.com, September 14, 2017 Office Action at TSDR 7 (.pdf version). 5 While the other goods listed in the registration appear highly related to Applicant’s goods, we need not discuss them because the application and registration contain legally identical goods. 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 particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014). Serial No. 87050890 - 4 - furniture.”’). In its appeal brief, Applicant does not dispute that its identified goods are identical to (or encompassed by) the registrant’s “cosmetics;” indeed, Applicant “acknowledge[s] that the goods in the registration and the present application are similar.” Brief, p. 2 (4 TTABVUE 3). To the extent indicated, the identified goods in the application are legally identical to the goods in the registration. Given the legal identity of the goods in part, and the lack of restrictions or limitations in the application and registration as to their nature, channels of trade, or classes of purchasers, we must presume that the channels of trade and classes of purchasers are also the same (i.e., ordinary consumers who purchase and use skin lotion). In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion). The second and third du Pont factors weigh in favor of a finding that confusion is likely. B. Similarity of the Marks We next consider the first du Pont likelihood of confusion factor, which focuses on “‘the similarity or dissimilarity of the 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 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 Serial No. 87050890 - 5 - 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) (quotation omitted). Under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009). Here, as noted above, the average purchaser includes ordinary consumers who purchase and use skin lotion. Applicant’s mark is and the cited mark is . The only literal element in both is DB, and this identity makes the marks identical in pronunciation and connotation. The main point raised by Applicant is, of course, the stylized nature of the DB letters comprising each mark. Applicant argues that the marks are distinct because its mark “comprises stylized lower case letters ‘db’ in which the two letters are positioned back to back . . . the vertical lines in each letter are the same height and thickness, while the approximately semi-circular portions are identical” and form “a ‘mirror image’” of each other; while the cited mark, in contrast, “is a complex, highly stylized, almost fanciful, combination of the capital letters DB” which “are joined by what appears to be a concluding portion of the letter D continuing as an initial part of the letter B.” Applicant’s Brief, p. 3 (4 TTABVUE 4). Serial No. 87050890 - 6 - As noted above, the test is not a side-by-side comparison, but instead a question of whether the marks are sufficiently similar in their overall commercial impression such that consumers would be likely to assume a connection between the parties. Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721. As a general rule, when a mark consists of both a word and a design, the word is normally accorded greater weight because the word would be used by purchasers to request the goods. In re Viterra Inc., 101 USPQ2d at 1911; see also L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2007). That principle applies in this case, where the parties’ marks do not have separate design elements, but merely stylization of the same lettering. Consumers will refer to each mark as “DB,” not, in Applicant’s case, as the “more straightforward, somewhat ‘industrial’” DB mark, or, in the cited registrant’s case, as the “artistic” DB mark.” Brief, p. 3 (4 TTABVUE 4). There are clearly some differences in the stylization of Applicant’s mark and the cited mark; however, the stylization of the marks is not so compelling that consumers would view them as identifying different sources of the goods. Although there are differences in stylization (i.e., the font in which each DB mark is presented), the marks are fundamentally both DB and will be understood and pronounced as DB. Merely because Applicant’s mark has a “more straightforward” stylization does not mean that ordinary consumers will regard this stylization as indicating a source different from the source of the cited registrant’s goods. The commercial impression of the marks is the same, that of the letter combination “DB.” Although consumers may note that the letters in Applicant’s mark are stylized more simply than the Serial No. 87050890 - 7 - letters in the cited DB mark, they are likely to view the two marks as variations of each other, with both indicating a single source. The identity in pronunciation and connotation, and the similar commercial impression of the DB marks outweigh any differences in appearance due to the stylization of the marks. Where, as in the present case, the marks are used in connection with legally identical goods, the degree of similarity between the marks necessary to support a finding of likely confusion declines. Viterra, 101 USPQ2d at 1908; In re RiseSmart Inc., 104 USPQ2d 1931, 1935 (TTAB 2012); see also Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). The first du Pont factor regarding the similarity of the marks weighs in favor of a likelihood of confusion. II. Decision We find that Applicant’s mark is similar to the registered mark , such that when they are used in connection with legally identical goods found in the same trade channels offered to the same class of consumers, confusion is likely. The refusal to register is affirmed. Copy with citationCopy as parenthetical citation