Shop.ca Network Inc.

Trademark Trial and Appeal Board

Jun 1, 2015

No. 85668588 (T.T.A.B. Jun. 1, 2015)

Mailed:
June 1, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Shop.ca Network Inc.
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Serial No. 85668588 and 85668640
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Stephen J. Strauss of Fulwider Patton LLP for Shop.ca Network Inc.

Marc J. Leipzig, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
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Before Kuhlke, Bergsman and Hightower, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Shop.ca Network Inc., filed applications to register on the
Principal Register the standard character mark SHOP.US DIRECT1 with a

1 Application Serial No. 85668588, filed on July 3, 2012, based on an 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).

This Opinion is Not a
Precedent of the TTAB
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disclaimer for the word DIRECT and the mark ,2
described as consisting of “the words ‘SHOP’ and ‘US’ in fanciful lettering, with
‘SHOP’ superimposed over the fanciful design of a hang-tag, and the punch-hole of
the hang-tag design separating ‘SHOP’ and ‘US’,” both for services identified as:
On-line retail department store services; On-line ordering
services in the fields of home improvement, appliances,
barbecues, cds, dvds, video games, clothing and
accessories, computers, computer software, computer
peripherals, consumer electronics, cameras, floral
arrangements, preserved plants, christmas trees, food,
personal care and beauty products, fragrances, vitamins,
herbal and mineral supplements, non-prescription
remedies, home furnishings, indoor and outdoor furniture,
rugs, housewares, mattresses, jewelry, luggage,
briefcases, handbags, office machines, office supplies,
sporting goods and exercise equipment, toys, outdoor
furnishings, saunas and spas, gardening supplies, pet
supplies, plumbing supplies, gardening tools, hand tools,
power tools, musical instruments, tires, automotive
accessories, chainsaws, lawnmowers, compressors, infant
products, and leisure, sporting, vacation and
entertainment certificates, tickets and vouchers;
Computerized on-line ordering in the fields of home
improvement, appliances, barbecues, cds, dvds, video
games, clothing and accessories, computers, computer
software, computer peripherals, consumer electronics,
cameras, floral arrangements, preserved plants,
christmas trees, food, personal care and beauty products,
fragrances, vitamins, herbal and mineral supplements,
non-prescription remedies, home furnishings, indoor and
outdoor furniture, rugs, housewares, mattresses, jewelry,
luggage, briefcases, handbags, office machines, office
supplies, sporting goods and exercise equipment, toys,
outdoor furnishings, saunas and spas, gardening supplies,

2 Application Serial No. 85668640, filed on July 3, 2012, based on an 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).
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pet supplies, plumbing supplies, gardening tools, hand
tools, power tools, musical instruments, tires, automotive
accessories, chainsaws, lawnmowers, compressors, infant
products, and leisure, sporting, vacation and
entertainment certificates, tickets and vouchers; On-line
retail department stores; The bringing together, for the
benefit of others, of a variety of goods and services,
enabling customers to conveniently view and purchase
those goods and services from an internet web site
particularly specializing in the marketing of the sale of
goods and services of others; Provision of websites
featuring consumer information in the nature of product
ratings, product reviews and buying suggestions in the
fields of shopping, retailing, electronic commerce, order
fulfillment, and a wide variety of products and services in
the fields of home improvement, appliances, barbecues,
cds, dvds, video games, clothing and accessories,
computers, computer software, computer peripherals,
consumer electronics, cameras, floral arrangements,
preserved plants, christmas trees, food, personal care and
beauty products, fragrances, vitamins, herbal and mineral
supplements, non-prescription remedies, home
furnishings, indoor and outdoor furniture, rugs,
housewares, mattresses, jewelry, luggage, briefcases,
handbags, office machines, office supplies, sporting goods
and exercise equipment, toys, outdoor furnishings, saunas
and spas, gardening supplies, pet supplies, plumbing
supplies, gardening tools, hand tools, power tools, musical
instruments, tires, automotive accessories, chainsaws,
lawnmowers, compressors, infant products, and leisure,
sporting, vacation and entertainment certificates, tickets
and vouchers; Dissemination of advertising for others via
the internet; On-line services, namely, web sites featuring
wish list and gift registry, and consumer information in
the nature of product recommendations; Promoting the
goods and services of others by means of operating an on-
line shopping mall with links to the retail web sites of
others; Promoting the goods and services of others by
providing a website featuring coupons, rebates, price-
comparison information, product reviews, links to the
retail websites of others, and discount information;
Providing on-line consumer information in the nature of
buying trend and buying guide information services in the
field of consumer products and technology; Contests and
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incentive award programs to promote the products and
services of others, in International Class 35.
Registration has been refused in each application under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s marks, when
used with the identified services, so resemble the following marks SHOPUSA in
standard characters,3 SHOPUSA AUSTRALASIA in standard characters,4 and
5 owned by the same registrant all for services identified as
“on-line retail store services featuring a wide variety of consumer goods of others” in
International Class 35, as to be likely to cause confusion, mistake or deception.
When the refusal was made final, Applicant filed a notice of appeal.
Applicant and the Examining Attorney have filed briefs. We affirm the refusals to
register. 6
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in 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.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion

3 Registration No. 4113337 issued on March 13, 2012 on the Supplemental Register.

4 Registration No. 4113329 issued on March 13, 2012 on the Supplemental Register.

5 Registration No. 4149599 issued on May 29, 2012 on the Principal Register with SHOP
USA AUSTRALASIA disclaimed.

6 In view of the common issues present in these appeals, we are deciding both appeals in
this single decision. See In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009). See also TBMP §
1214.
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analysis, two key considerations are the similarities between the marks and the
similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
SIMILARITY OF THE SERVICES/CHANNELS OF TRADE/CONSUMERS
We first consider the services, channels of trade and classes of consumers. We
must make our determinations under these factors based on the services as they are
identified in the registrations and applications. See In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157 (Fed. Cir.
2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Applicant’s “On-line retail department store services” are legally identical to
Registrant’s “on-line retail store services featuring a wide variety of consumer goods
of others” because “on-line retail store services” encompasses “on-line retail
department store services” and this portion of Applicant’s identification is not
limited and encompasses online retail department stores “featuring a wide variety
of consumer goods.” In re Midwest Gaming & Entertainment LLC, 106 USPQ2d
1163, 1166 (TTAB 2013) (“Under standard examination practice, a semicolon is
used to separate distinct categories of goods or services.”). In addition, the “on-line
ordering services” for various consumer goods in the application is, on its face,
closely related to Registrant’s online retail store services in that the service of an
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online retail store would include ordering services. In view of our findings with
respect to these services, we need not discuss Applicant’s remaining services. For
purposes of our analysis, it is sufficient if likelihood of confusion is found with
respect to use of Applicant’s mark in connection with any service in a particular
class. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981); Inter IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734,
1745 (TTAB 2014).
Moreover, because these services are legally identical in part and there are
no limitations as to channels of trade or classes of consumers in the applications or
cited registrations, we must presume that Applicant’s and Registrant’s services will
be offered in the same channels of trade to the same classes of consumers. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Hewlett-
Packard Co., 62 USPQ2d at 1005; Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Genesco Inc. v. Martz, 66 USPQ2d
1260, 1268 (TTAB 2003) and In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB
1994). Applicant does not dispute the relatedness of the services or the overlap in
channels of trade and classes of consumers.
In view of the above, the du Pont factors of the similarity of the services, the
channels of trade and classes of purchasers strongly favor a finding of likelihood of
confusion.

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SIMILARITY OF THE MARKS
We next consider Applicant’s marks SHOP.US and
with Registrant’s mark SHOPUSA in standard
characters. We confine our analysis to the mark in Registration No. 4113337 as it is
the closest to Applicant’s mark. If confusion is likely with this mark, there is no
need for us to consider the likelihood of confusion with the other cited marks, while
if there is no likelihood of confusion between Applicant’s mark and SHOPUSA in
standard characters, then there would be no likelihood of confusion with the other
cited marks. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010). We compare the marks “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports 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. We must also keep in mind that
“when marks would appear on virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely confusion declines.” Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992).
We find the marks SHOP.US DIRECT and SHOPUSA to be very similar in
appearance, sound, connotation and commercial impression. The only differences
between the first portion of Applicant’s mark and Registrant’s mark are the
addition of the dot to Applicant’s mark and the representation of the United States
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as USA rather than US in Registrant’s mark. We do not view the compression of
Registrant’s mark to be of any note as the terms are clearly separable and the dot in
Applicant’s mark serves to unify its word SHOP with its representation the United
States as US.
Moreover, the designations share the identical meaning of shopping in the
United States. Applicant argues that its mark is comprised of the word SHOP and
the country code top level domain US, as shown by the dot separating the words.
Applicant asserts that “consumers and the public” would view it as an “Internet
domain name address.”7 While Applicant’s proposed mark may evoke this
connotation it does not detract from the shared connotation of shopping in the
United States and underscores that the shopping is online. This is the same for
Registrant’s mark when viewed in the context of its services which are also
specifically provided online.
Finally, the addition of the, at minimum, merely descriptive word DIRECT to
Applicant’s proposed mark is not sufficient to distinguish the marks. While we
consider the mark as a whole “in articulating reasons for reaching a conclusion on
the issue of confusion, there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark… .” In
re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). We find the
first portion of Applicant’s proposed mark to be slightly dominant by virtue of its

7 While Applicant’s argument may raise the question of the capability of its standard
character mark, given that it appears it is simply a combination of the word SHOP with a
top level domain, In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed.
Cir. 2009), that issue is not before us.
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placement at the beginning of the mark, and the word DIRECT has little source-
identifying capability in the field of online shopping. Palm Bay Imports Inc., 73
USPQ2d at 1692.
With regard to Applicant’s other mark the addition of the
hang tag design does not create a different connotation or commercial impression as
it simply enhances the shopping connotation. Moreover, consumers are more likely
to focus on the word portion rather than the design portion of the mark, particularly
a minor design that serves to underscore the words, as is the case here. In re Viterra
Inc., 101 USPQ2d at 1908, 1911.
We find that the similarities between the marks in sound, appearance,
meaning and commercial impression, outweigh the dissimilarities. In view thereof,
the du Pont factor of the similarity of the marks also favors a finding of likelihood of
confusion.
Applicant argues that the marks in the cited registrations are weak and their
scope of protection does not reach its proposed marks. Registrant’s mark SHOPUSA
is registered on the Supplemental Register and is presumed merely descriptive.
Nonetheless, weak marks, even those on the Supplemental Register, receive
protection when the marks and goods or services are close. King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). See
also In re Clorox Co., 578 F.2d 305, 198 USPQ 337, 340 (CCPA 1978). Here, the
services are legally identical and the marks very similar.
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In conclusion, because the marks are similar, the services are legally
identical, and the channels of trade and consumers are presumed to overlap,
confusion is likely between Applicant’s marks SHOP.US DIRECT and
, and the mark SHOPUSA in the cited Registration No. 4113337.
Decision: The refusals to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act are affirmed.