No. 85135885 (T.T.A.B. Feb. 13, 2013)

Singapore-math.com, Inc.

Trademark Trial and Appeal BoardFeb 13, 2013

No. 85135885 (T.T.A.B. Feb. 13, 2013)

Mailed: February 13, 2013 United States Patent and Trademark Office Trademark Trial and Appeal Board ________ In re Singaporemath.com, Inc. ________ Serial No. 85135885 _______ David P. Cooper of Kolisch Hartwell PC for Applicant. Colleen Kearney, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _______ Before Seeherman, Ritchie, and Shaw, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: Applicant, Singaporemath.com, Inc., seeks registration on the Principal Register of the mark shown below: for goods identified in the application, as amended, as follows: Printed educational publications, namely, educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, printed puzzles, teacher guides, manuals, math themed posters, and educational booklets in the field of mathematics, in International Class 16; and This Opinion is not a Precedent of the TTAB Serial No. 851 E C Th Tradem used on below, o Registra P su Registra P g su Registra for: P fi li 1 Applic allegatio 35885 ducationa lass 28.1 e examinin ark Act, 15 applicant’ wned by th tion No. 1 ublishing bjects, in tion No. 3 ublishing raphic wo bjects, in tion No. 3 ublication elds of terature, ation Serial n of a bona l card gam g attorney U.S.C. § s goods, so e same en 471699, is services, n Internatio 712826, is services, n rks of oth Internatio 207102, is s, namely, linguistics art, phys No. 85135 fide intenti es in the has refus 1052(d), on resembles tity, as to sued Janu amely pu nal Class 4 sued Nove amely, of b ers on CD nal Class 4 sued Febru magazine , mathem ics, chem 885 was file on to use th - 2 - field of m ed registra the groun the previo be likely t ary 5, 1988 blishing b 1; mber 17, 2 ooks; elect , DVD, a 1; ary 13, 20 s, books, m atics, sc istry, bio d on Septe e mark in c athematic tion unde d that app usly regis o cause con and rene ooks and 009, for: ronic publ nd on lin 05, Sectio anuals an ience, ge logy for mber 22, 20 ommerce. s, in Inter r Section 2 licant’s m tered mark fusion. wed, for: periodical ication of e featurin n 8 affidav d textbook ography, use in t 10, based u national (d) of the ark, when s shown s on all text and g school it accepted s in the history, eaching pon applic , ant’s Serial No. 85135885 - 3 - languages; printed teaching material, namely, children's activity books, teacher's guide books featuring linguistics, mathematics, science, geography, history, literature, art, physics, chemistry, biology for use in teaching languages; series of fiction and nonfiction books on a variety of matters with educational and entertainment purposes , in International Class 16; and Registration No. 3702735, issued October 27, 2009, for: Publishing services, namely, of books; electronic publication of text and graphic works of others on CD, DVD, and on line featuring school subjects, in International Class 41. The Spanish language term “ediciones,” which translates as “editions,” has been disclaimed in each of the first three registrations, i.e., in the registrations in which this word forms part of the mark. When the examining attorney issued a final refusal, applicant filed a request for reconsideration. Upon denial of the request, applicant filed this appeal. Applicant and the examining attorney have filed briefs and applicant filed a reply brief. Evidentiary Issue Before turning to the merits of the appeal, we first address an evidentiary matter. Applicant submitted, for the first time with its reply brief, evidence identified as a printout from registrant’s Internet home page as well as Spanish language translations, from the “Yahoo Babel Fish” translation service, of the phrases “we are masterful,” “Mexican society,” “Madrid society,” and the word “editions.” This evidence is untimely and has not been considered. See Trademark Serial No. 85135885 - 4 - Rule 2.142(d); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1363 n.5 (TTAB 2007) (“Applicant relies for support for this example on an entry in an online encyclopedia, which it submitted with its reply brief. The submission is untimely and therefore is not properly of record.”); and In re Zanova Inc., 59 USPQ2d 1300, 1302 (TTAB 2001) (“By attempting to introduce evidence with its reply brief, applicant has effectively shielded this material from review and response by the Examining Attorney.”).2 Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of 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., 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/or services. 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.”). We will consider these two factors, together with any other relevant du Pont factors, in making our decision. 2 We add that even if this material had been properly made of record, it would not change our decision in this appeal. Serial No. 85135885 - 5 - For purposes of our likelihood of confusion analysis, we focus on Registration No. 3207102 because we find that mark to be most similar to the applicant’s mark. The Marks We first consider the du Pont factor of the similarity/dissimilarity of the marks. We must compare the marks in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1690 (Fed. Cir. 2005), quoting du Pont, 177 USPQ at 567. The test, under this du Pont factor, 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 terms of their overall commercial impression that confusion as to the source of the goods or services offered under the respective marks is likely to result. Applicant’s entire mark consists of the letters “SM” in upper case within a diamond shape. A horizontal line appears immediately below the letters “SM” and connects with the two lower sides of the diamond. The mark in Registration No. 3207102 consists of the letters “sm” in lower case inside a red square shape. Within the square, a vertical line separates the letters and connects with the top and bottom sides of the square. When we compare the marks in their entireties, we find that the marks are very similar. Both marks consist of the letters “sm,” and in both marks these letters appear within a simple geometric shape carrier—a square or a diamond, which Serial No. 851 shapes t running registra claimed includin A differen red rect recollect specific USPQ 1 between consider A register afforded disagree therefor support Consol. 3 Applic 4 Id. 35885 hemselves through t nt’s mark color as a g red. pplicant a t from the angles.3 T ion of the impression 06 (TTAB the mark ed in their pplicant a ed marks w the broad . There is e entitled in the reco Specialty R ant’s Br. a are very s he respect does not se feature of rgues that cited whit his argum average pu of tradem 1975). Th s, the simi entireties lso argues ith the le scope of p no eviden to only a n rd cannot ests. Inc., t 2. imilar. Fu ive carrier rve to dist its mark a “[a]ll of th e-lettered, ent is unav rchaser, w arks. See us, while w larities ou , engender that the m tters ‘s’ an rotection r ce in the r arrow scop compel a f 71 USPQ2 - 6 - rther, bot s. The pre inguish th nd thus co e features small-case ailing bec ho norma Sealed Ai e recogniz tweigh the similar ov arks are w d ‘m’, so th elied upon ecord that e of protec inding tha d 1921, 19 h marks e sence of th e marks b uld display of applica letters po ause the fo lly retains r Corp. v. S e that the difference erall com eak becau e cited reg by the Ex these lette tion. Atto t these let 29 (TTAB ven have a e color red ecause app its mark nt’s mark a sitioned ov cus is on t a general cott Paper re are som s and the mercial im se “there a istration s amining a rs are wea rney argu ters are w 2004) (“[A single lin in licant has in any colo re very er separa he rather tha Co., 190 e differenc marks, wh pressions. re several hould not ttorney.”4 k and ment with eak. In re ]ttorney e not r, te n a es en be We out Serial No. 851 argume case.”). B appeara the sam confusio W and serv not be id Kleen C 1975); T conditio some m consum similar way ass Inc., 748 T publicat Registra 35885 nt without ecause the nce, mean e, we find n. e next tur ices of app entical or orp. v. Dre MEP § 12 ns surroun anner, the ers under c marks wou ociated wi F.2d 156 he goods in ions” and nt’s servic support in marks, w ing, and co this du Po n to consid licant and directly co sser Indus 07.01(a)(i). ding their goods and ircumstan ld lead to th, the sam 5, 1566-68 the appli “education es are iden the recor hen consid mmercial nt factor w The Good er the sim registran mpetitive ., Inc., 518 Rather, i marketin /or service ces such t the mistak e source. , 223 USPQ cation are al card gam tified as “ - 7 - d . . . does ered in the impression eighs in fa s and Ser ilarities a t. The goo to find a li F.2d 1399 t is sufficie g, or becau s would be hat offerin en belief t See In re M 1289, 12 identified es in the publishing not overco ir entireti , and are vor of find vices nd differen ds and ser kelihood o , 1404, 186 nt to show se they ar encounter g the good hat they c artin’s Fa 90 (Fed. C as “printe field of ma services, me the pri es, are sim likely to be ing a likel ces betwe vices of th f confusion USPQ 47 that beca e otherwis ed by the s and/or se ome from, mous Pas ir. 1984). d educatio thematics namely, of ma facie ilar in pronounc ihood of en the good e parties n . See Safe 6, 480 (CC use of the e related in same rvices und or are in s try Shoppe nal .” books; ed s eed ty- PA er ome , Serial No. 85135885 - 8 - electronic publication of text and graphic works of others on CD, DVD, and on line featuring school subjects.” To show that applicant’s printed publications are related to registrant’s book publishing services, the examining attorney introduced a number of third-party registrations encompassing both publications and publishing services. The following examples are representative (emphases added): • Registration No. 3552116, YOUR PARTNER IN STUDENT SUCCESS, for, inter alia: “printed instructional, educational, and teaching materials in the fields of English, language arts, reading and writing, mathematics, science and social studies,” and “publication of textbooks, books, magazines, manuals, teacher's guides and workbooks;” • Registration No. 3855009, CHATEAU MEDDYBEMPS for, inter alia: “educational publications, namely, training manuals in the field of early childhood development, elementary education and entertainment” and “book publishing services;” • Registration No. 3800218, MATH IN FOCUS, for, inter alia: “printed matter, namely, books and handbooks featuring mathematics; photographs; educational publications, namely, books, workbooks and teachers' resources in the field of mathematics; printed instructional and teaching materials in the field of mathematics” and “publication of books, magazines, newspapers, printed matter and texts; publishing services, namely, publication of books and handbooks, in the field of mathematics;” • Registration No. 3424356, PEOPLES EDUCATION , for, inter alia: “Printed instructional, educational, and teaching materials in the fields of English, language arts, reading and writing, mathematics, science and social studies” and “Publication of textbooks, books, magazines, manuals, teacher's guides and workbooks;” • Registration No. 77368129, UNIVERSAL MEDIA, for, inter alia: “Children's activity books; Children's books; Children's interactive educational books” and “Publication of books;” and • Registration No. 3874584, PRO PUBLISHING and design, for, inter alia: “printed educational materials, namely, books” and “publishing services, namely, the publication of books and educational materials.” Serial No. 85135885 - 9 - There is an inherent connection between books, such as applicant’s “workbooks, textbooks, activity books, story books, [and] puzzle books” and registrant’s book “publishing” services. Simply put, publishers publish books. These third-party registrations demonstrate that applicant’s printed educational publications and registrant’s book publishing services are goods and services of a kind that the public is likely to expect to emanate from a single source, and that a single mark may be adopted for both. “Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may nevertheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Similarly, the examining attorney introduced a number of third-party registrations encompassing both educational card games and publishing services. The following examples are representative (emphases added): • Registration No. 3588550, SLEEPY HOLLOW BOOKS, for, inter alia: “educational books featuring myths, fables, fairytales, legends, folk tales, and nature stories; Educational publications, namely, educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, puzzles, teacher guides, manuals, posters, educational card games and educational booklets in the field of metaphysics; book . . . and “publication of book[s], booklets, magazines, posters, games;” Serial No. 85135885 - 10 - • Registration No. 3032829, FLASH KIDS, for, inter alia: “children's books, flash cards, children's board books, picture books, novels, binders, printed charts and posters; educational publications, namely, study guides and printed study charts,” “toys and games, namely . . . card games and board games,” and “publishing and electronic publishing services, namely, publication of text and graphic works of others on electronic media, paper and on-line featuring children's education and entertainment;” • Registration No. 3836237, SANDY CREEK, for, inter alia: “series of fiction and non-fiction books on a variety of topics; blank paper journals and sketchbooks; fiction and non-fiction children's books, toddler books, beginner reader books, young-reader books, teen books, books featuring Christmas, Easter, Jewish, Muslim and other religious holiday stories, picture books, educational publications, namely, educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, puzzles, teacher guides, manuals, educational card games and educational booklets in the fields of reading, writing, language, mathematics, history and science” and book publishing services;” • Registration No. 3809891, BE A 10, for, inter alia: “Books in the field of money management, personal finance, financial planning, personal development, entrepreneurship, leadership training; Educational publications, namely, educational learning cards, flash cards, activity cards, workbooks, textbooks, card games and educational booklets in the field of money management, personal finance, financial planning, personal development, entrepreneurship, leadership training” and “publishing books, magazines, journals, newspapers, periodicals, and catalogs, brochures in the fields of money management, personal finance, financial planning, personal development, entrepreneurship, leadership training;” and • Registration No. 3621830, INVESTITUDE, for, inter alia: “educational publications, namely . . . educational card games and educational booklets in the field of business, finance, investing, and economics . . . educational publications, namely, books, handout, and workbooks in the fields of business, finance, investing, and economics . . . book publishing . . . multimedia publishing of books, magazines, journals, software, games, music, and electronic publications.” These third-party registrations show that educational card games are related to book publishing services because they too are of a kind that the public is likely to expect to emanate from a single source. The similarity of the parties’ goods and services weighs in favor of finding a likelihood of confusion. Serial No. 85135885 - 11 - Conclusion The similarity of the marks and the similarity of the goods and services are the only du Pont likelihood of confusion factors discussed by applicant and the examining attorney, or on which we have any evidence. To the extent that any other du Pont factors apply, we treat them as neutral. After considering all of the evidence of record and argument pertaining to the du Pont likelihood of confusion factors, we conclude that there is a likelihood of confusion between applicant’s mark and Registration No. 3702735. In view thereof, we need not consider the issue of likelihood of confusion with respect to the other cited registrations. Decision: The refusal to register based on a likelihood of confusion under Section 2(d) of the Trademark Act is affirmed.