Shark Branding Corp.

Trademark Trial and Appeal Board

Jun 20, 2014

No. 85152415 (T.T.A.B. Jun. 20, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 20, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Shark Branding Corp.
_____

Serial No. 85152415
_____

Peter J. Vranum of Gordon Herlands Randolph & Cox LLP
for Shark Branding Corp.
Christina Sobral, Trademark Examining Attorney, Law Office 109,
Dan Vavonese, Managing Attorney.
_____

Before Bucher, Wolfson and Lykos,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Shark Branding Corp. (“Applicant”) seeks registration on the Principal Register
of the mark THE MOGULS GROUP, in standard character format, for “Clothing,
Namely Shirts, Vests, Sweaters, Shoes, Caps, Bandannas, Shorts, Sweat Shirts,
Pants, Belts For Clothing, Socks, Swimwear, Jackets, Rainwear, Blouses, Dresses,
Footwear, Hosiery, Scarves, Hats, Head Bands, Pajamas and Sleepwear” in
International Class 25 and “Advertising services, namely, providing a web site that
enables users to post items for sale through on-line classified advertisements;
promoting the goods and services of others over the Internet; providing on-line
Serial No. 85152415
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computer databases and on-line searchable databases featuring classified listings
and want ads” in International Class 35.1
Applicant has appealed the Trademark Examining Attorney’s final refusal to
register the mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s applied-for mark so resembles the
registered mark MOGUL MARKETING, in typed format,2 for “advertising agency
services” in International Class 35 that when used on or in connection with
Applicant’s identified services, it is likely to cause confusion or mistake or to
deceive.3 The Examining Attorney’s refusal applies only to the International Class
35 services.4
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the Request for
Reconsideration, the appeal was resumed. For the reasons set forth below, we
affirm the refusal to register.

1 Application Serial No. 85152415, filed October 14, 2010, based upon Applicant’s allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b). During ex parte prosecution, Applicant disclaimed the word
GROUP apart from the mark as shown.
On May 29, 2013, Applicant filed a Request to Divide the Application, whereby the services
listed in International Classes 38, 42 and 45, which were not subject to the refusal to
register, were transferred to Application Serial No. 85979395.
2 A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i)
(April 2014).
3 Registration No. 2313536, registered February 1, 2000; Sections 8 and 15 affidavits
accepted and acknowledged; renewed. The word MARKETING is disclaimed apart from the
mark as shown.
4 The Examining Attorney had also refused registration under Section 2(d) as to the goods
listed in International Class 25 based on Registration No. 3884762. On November 25, 2013,
the Examining Attorney withdrew this refusal following cancellation of the cited
registration.
Serial No. 85152415
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We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also, In re Majestic Distilling Company, Inc., 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 services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976). These factors, and the other relevant du Pont factors
are discussed below.
A. The Services and Trade Channels
First we compare Applicant’s and Registrant’s respective services as they are
identified in the application and cited registration. See Stone Lion Capital Partners,
LP v. Lion Capital LLP, __ F.3d __, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014);
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). See also, Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). The relevant services
identified in the Application are “Advertising services, namely, providing a web site
that enables users to post items for sale through on-line classified advertisements;
promoting the goods and services of others over the Internet; providing on-line
computer databases and on-line searchable databases featuring classified listings
and want ads;” Registrant’s services are identified as “advertising agency services.”
Serial No. 85152415
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Applicant argues that the services are different and not sufficiently related to
warrant a finding of likelihood of confusion:
Consumers wishing to place an on-line classified advertisement would
search for the Applicant’s web site on line and then place the ad. Whereas
one looking to hire an advertising agency is looking for a company
providing a range of services and advice concerning the marketing of
products or services. Such a search will require telephone calls, meetings
and proposals and is not services pertaining to a website.

Applicant’s Brief, p. 5.
Applicant overlooks that its identified services also include “promoting the goods
and services of others over the Internet.” This particular portion of Applicant’s
identification of services is not limited to the placement of online classified
advertisements. Furthermore, Registrant’s “advertising agency services” are, on
their face, sufficiently broad to encompass Applicant’s more specific services of
“promoting the goods and services of others over the Internet.” The fact that some of
the services identified in the Application are legally identical to the services
identified in the Registration weighs in favor of finding a likelihood of confusion. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be
confusion with respect to any item that comes within the identification of goods in
the application).
Furthermore, because the services are legally identical in part, we must presume
that these services travel in the same channels of trade to the same classes of
consumers. See Stone Lion Capital Partners, 110 USPQ2d at 1161. See also In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though
Serial No. 85152415
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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). Insofar as Registrant’s “advertising agency services” are unrestricted,
we must presume that they may also be provided over the Internet. As such, the
du Pont factor regarding the similarity or dissimilarity of established, likely to
continue trade channels also favors a finding of likelihood of confusion.
B. Comparison of the Marks
Because the services are identical, the degree of similarity between the marks
that is necessary to support a finding of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992). With this in mind, we now turn to the first du Pont likelihood of confusion
factor regarding the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). “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 dissection of the marks. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Rather, we are obliged to
consider each mark in its entirety. Id. See also Franklin Mint Corp. v. Master Mfg.
Serial No. 85152415
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Co., 667 F.2d 1005, 212 USPQ 23, 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”). 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.
Applicant argues that when considered in their entireties, the involved marks
are significantly different in sight and sound, pointing to the term MARKETING in
Applicant’s mark and the words THE and GROUP in Registrant’s mark. Applicant
also notes that its mark contains the plural as opposed to the singular version of the
word “mogul.” Applicant maintains that these distinctions result in different
meanings and commercial impressions, arguing that Applicant’s mark when
considered as a whole refers to “an assemblage of people or entities who are or
aspire to be or wish to suggest a connection to the rich or powerful” whereas
Registrant’s mark refers to marketing “directed to a MOGUL or marketing
undertaken by or for a MOGUL.” Applicant’s Brief, p. 4. In making these
arguments, Applicant relies upon In re Farm Fresh Catfish Co., 231 USPQ 495
(TTAB 1996) in which the Board found no likelihood of confusion between CATFISH
BOBBERS (with CATFISH) disclaimed for fish and BOBBER for restaurant
services and In re Shawnee Milling Co., 225 USPQ 747 (TTAB 1985) in which the
Board found no likelihood of confusion between GOLDEN CRUST for flour and
Serial No. 85152415
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ADOLPH’S GOLD N’ CRUST and DESIGN (with GOLD’N CRUST disclaimed) for
coating and seasoning items.
Applicant’s arguments are unconvincing. As noted, Applicant’s and Registrant’s
marks are comprised, either in whole or in part, of the word “mogul” or the plural
thereof. The pluralization of the word does not in this instance alter its connotation
or meaning. See Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (CCPA
1957) (finding no material difference between the singular and plural forms of
ZOMBIE such that the marks were considered the same mark); In re Pix of Am.,
Inc., 225 USPQ 691, 692 (TTAB 1985) (noting that the pluralization of NEWPORT
is “almost totally insignificant” in terms of likelihood of confusion among
purchasers). We further observe that Applicant’s mark commences with THE
MOGULS and Registrant’s mark commences with the word MOGUL. It is well-
established that prospective consumers are often more inclined to focus on the first
word, prefix or syllable in any trademark or service mark. See Palm Bay Imps., Inc.,
73 USPQ2d at 1692. See also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372,
1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., 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” when making
purchasing decisions). Because MOGUL is the first word of Registrant’s mark, we
find that it is its dominant element. See Palm Bay Imps., Inc., 73 USPQ2d at 1692.
Moreover, the addition of the article THE preceding the plural noun MOGULS in
Applicant’s mark fails to obviate the similarities. As previously stated by the Board
Serial No. 85

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- 8 -
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Serial No. 85152415
- 9 -

We further observe that the cases upon which Applicant relies are
distinguishable. In those cases, the involved goods and/or services were not
identical, and the involved marks were not as similar. Here however, because the
Applicant’s and Registrant’s services are legally identical in part, the degree of
similarity required to find confusion is diminished.
We therefore find that Applicant’s and Registrant’s marks are similar in
appearance, sound, connotation and commercial impression. This first du Pont
factor also weighs in favor of finding a likelihood of confusion.
To the extent that there are any other relevant du Pont factors, we treat them as
neutral.
After considering all of the evidence of record and arguments pertaining to the
du Pont likelihood of confusion factors, we find that because the marks are similar
in sound, appearance, connotation and commercial impression, and some of
Applicant’s services are legally identical to and presumed to travel in the same
channels of trade as Registrant’s services and are directed towards the same
purchasers, confusion is likely between Applicant’s mark for its identified services
and the mark in the cited registration.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed as to
International Class 35. The application will proceed to publication in the Official
Gazette for the goods listed in International Class 25.