No. 86415751 (T.T.A.B. Jun. 7, 2017)

Sledge, LLC

Trademark Trial and Appeal BoardJun 7, 2017

No. 86415751 (T.T.A.B. Jun. 7, 2017)

This Opinion is not a Precedent of the TTAB Mailed: June 7, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Sledge, LLC _____ Serial No. 86415751 _____ Mark A. Goldstein of SoCal IP Law Group LLP, for Sledge, LLC. Samuel E. Sharper, Jr., Trademark Examining Attorney, Law Office 108, Andrew Lawrence, Managing Attorney. _____ Before Kuhlke, Kuczma and Heasley, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Sledge, LLC (“Applicant”) seeks registration on the Principal Register of the mark TREK FRESH in standard characters for “Portable dental care kit containing tooth brush, dental floss and toothpaste,” in International Class 21.1 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 1 Application Serial No. 86415751 was filed on October 6, 2014, under Section 1(b) of the Trademark Act, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. Serial No. 86415751 - 2 - Applicant’s mark, when used in connection with the identified goods, so resembles the mark MINT CHOCOLATE TREK in standard characters registered on the Principal Register for “Dentifrices” in International Class 3,2 as to be likely to cause confusion, mistake or deception. When the refusal was made final, Applicant appealed and requested reconsideration. Upon the denial of the request for reconsideration, the appeal was resumed and briefs were filed. We affirm the refusal to register. Likelihood of Confusion 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., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, 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 (CCPA 1976). See also M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within the du Pont list, only factors that are “relevant and of record” need be considered). Similarity of the Goods/Channels of Trade/Consumers With regard to the goods, channels of trade and classes of consumers, we must make our determinations under these factors based on the goods as they are 2 Registration No. 4590333, issued on August 19, 2014, the wording “MINT CHOCOLATE” disclaimed. Serial No. 86415751 - 3 - identified in the application and cited registration. See In re Dixie Rests. 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, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming public may perceive [the respective goods of the parties] as related enough to cause confusion about the source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett Packard, 62 USPQ2d at 1004). Applicant “admit[s] that the goods are not distinguishable.” 7 TTABVUE 3. In addition, the Examining Attorney points to the dictionary definition of “dentifrices” as “a powder, paste or liquid for cleaning the teeth”3 explaining that toothpaste, which is listed as a component of Applicant’s kit, is a dentifrice. Moreover, the Examining Attorney asserts that toothbrushes, another component of Applicant’s kit, are closely related to dentifrices. In support of this assertion, the Examining Attorney submitted printouts of third-party websites showing toothpaste and toothbrushes offered separately or as part of a kit under the same marks. See COLGATE for toothpaste and toothbrushes, SENSODYNE for toothpaste and toothbrushes, and AQUAFRESH for toothpaste and toothbrushes.4 The Examining Attorney also attached printouts of 3 MERRIAM-WEBSTER DICTIONARY (www.merriam-webster.com) February 26, 2015 Office Action at 4. 4 March 18, 2015 Office Action at 2-12. Serial No. 86415751 - 4 - third-party registrations that include dentifrices and toothbrushes in the list of goods. See, e.g., Registration No. 4078829 for a Design mark for dentifrices and toothbrushes; and Registration No. 4598367 for BRUSH. WHITEN. GO. for dentifrices and toothbrushes.5 See In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009) (third-party registrations may serve to suggest that the goods listed therein are of a kind which may emanate from a single source under a single mark) (citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)). In view of Applicant’s concession and the record, Applicant’s “Portable dental care kit containing tooth brush, dental floss and toothpaste” and Registrant’s “Dentifrices” are closely related. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981) (it is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004). As to channels of trade, Applicant’s kits contain goods that are legally identical to Registrant’s goods (toothpaste and dentifrices) and there are no limitations as to channels of trade or classes of purchasers. In these circumstances, we find it appropriate to apply the legal presumption that because certain of the goods are legally identical, Applicant’s and Registrant’s goods will be sold in the same channels 5 February 26, 2015 Office Action at 10-18. Serial No. 86415751 - 5 - of trade and will be bought by the same classes of purchasers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though 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). We further observe the record includes an example of toothpaste and toothbrushes sold as a unit next to such items also sold separately.6 In view thereof, these du Pont factors strongly favor a finding of likelihood of confusion. Similarity/Dissimilarity of the Marks We consider Applicant’s mark TREK FRESH and Registrant’s mark MINT CHOCOLATE TREK and compare them “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). When comparing marks, the test is not whether the marks can be distinguished in 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 and/or services offered under the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). Further, the marks “‘must be considered … in light of the fallibility of memory ….’” In re St. Helena Hosp., 113 USPQ2d at 1085 (quoting San Fernando Elec. Mfg. Co. v. 6 March 18, 2015 Office Action at 10-12. Serial No. 86415751 - 6 - JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). “[S]imilarity is not a binary factor but is a matter of degree.” In re St. Helena Hosp., 113 USPQ2d at 1085 (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003)). Finally, when the goods are identical or virtually identical, the degree of similarity between the marks necessary to support a determination that confusion is likely declines. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). The Examining Attorney contends that the marks are “similar in appearance, meaning and connotation because they share an identical feature, which creates a common commercial impression that the applicant’s goods and the registrant’s goods originate from a single source or sponsor i.e., TREK.” 9 TTABVUE 6. The Examining Attorney asserts that the identical portion of the marks, TREK, is the dominant feature of both marks inasmuch as the additional word FRESH in Applicant’s mark is suggestive of the intended result of providing users with fresh breath and the disclaimed wording MINT CHOCOLATE in Registrant’s mark is the generic name of Serial No. 86415751 - 7 - an ingredient of the Registrant’s goods. 9 TTABVUE 6-7. Finally, the Examining Attorney contends that the overall commercial impression of both marks is derived from the word TREK; thus, the commercial impression of the marks is similar. 9 TTABVUE 10. Applicant contends that “the cited mark is significantly different from applicant’s mark.” 7 TTABVUE 4. Aside from pointing to the obvious differences in appearance and sound, Applicant focuses its argument on the difference in meaning and overall commercial impression brought by the additional wording MINT CHOCOLATE in Registrant’s mark. Applicant argues that MINT CHOCOLATE TREK is “a flavor designation of a line of CREST toothpaste…” and asserts that: Because the registered mark includes a flavor, the unitary phrase MINT CHOCOLATE, and an arbitrary term, TREK, it is the flavor that will leave a lasting impression. This is because the flavor serves a purpose in the consumer’s mind where the arbitrary term, TREK, will be forgotten as it is not useful to a consumer. The arbitrary term TREK will be forgotten because it does not help the consumer remember or identify the flavor or any other characteristic of the toothpaste on which it is used. As such, the dominant portion of the cited mark is MINT CHOCOLATE as the mark is used as a flavor of a toothpaste. … Because the cited mark MINT CHOCOLATE TREK leaves an overall commercial impression of a flavor and applicant’s mark TREK FRESH does not, there is no likelihood of confusion between applicant’s mark and the cited mark. 7 TTABVUE 6-7. The marks are similar in appearance and sound by virtue of the identical element TREK. In addition, the common element TREK has the same meaning, to travel or Serial No. 86415751 - 8 - migrate, a journey or trip,7 and commercial impression in both marks. The addition of FRESH to Applicant’s mark and MINT CHOCOLATE to Registrant’s mark present differences in sound and appearance, and add other meanings to each mark, but do not create a difference in the meaning of TREK in either mark. While the marks must be viewed in their entireties “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, provided the ultimate conclusion rests on consideration of the marks in their entireties.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 750-51 (Fed. Cir. 1985); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1161. Although there is no mechanical test to select a “dominant” element of a compound word mark, consumers are generally more likely to perceive a fanciful or arbitrary term, rather than a descriptive or generic term, as the source-indicating feature of the mark. See, e.g., In re Dixie Rests., Inc., 41 USPQ2d at 1533-34 (affirming TTAB’s finding that “DELTA,” not the disclaimed generic term “CAFE,” is the dominant portion of the mark THE DELTA CAFE); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (finding that “BINION’S,” not the disclaimed descriptive wording “ROADHOUSE,” is the dominant portion of the mark BINION’S ROADHOUSE). We 7 Dictionary.com based on RANDOM HOUSE DICTIONARY (2017) (www.dictionary.com). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 86415751 - 9 - agree that TREK is the dominant portion of both marks. We are not persuaded by Applicant’s reasoning that consumers are more likely to remember the descriptive/generic aspect of Registrant’s mark, i.e., the flavor MINT CHOCOLATE and will mentally discard the only source-identifying aspect of the mark, namely the word TREK. Because Applicant’s mark incorporates the dominant element of Registrant’s mark and the goods are closely related, consumers could view Applicant’s mark as another in the line of TREK dental hygiene product marks. In addition, because Applicant’s and Registrant’s marks are in standard characters, they are not limited to any particular depiction. The rights associated with a mark in standard characters reside in the wording and not in any particular display. In re RSI Sys., LLC, 88 USPQ2d 1445 (TTAB 2008); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); TMEP § 1207.01(c)(iii) (Jan. 2017). We must consider Applicant’s and Registrant’s mark “regardless of font style, size, or color,” Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011), including iterations highlighting the common element TREK. Overall, and in view of the closely related goods, we find that the similarities outweigh the dissimilarities and that this du Pont factor also weighs in favor of finding a likelihood of confusion. Balancing of Factors In conclusion, because the marks are more similar than dissimilar, the goods are closely related, and the channels of trade and consumers overlap, we find that Serial No. 86415751 - 10 - confusion is likely between Applicant’s mark TREK FRESH and Registrant’s mark MINT CHOCOLATE TREK. Decision: The refusal to register Applicant’s mark is affirmed.