Spectrum Enterprise General Trading LLC

Trademark Trial and Appeal Board

Jul 30, 2019

87540077 (T.T.A.B. Jul. 30, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: July 30, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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In re Spectrum Enterprise General Trading LLC
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Serial No. 87540077
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David L. Oppenhuizen of Oppenhuizen Law PLC,
for Spectrum Enterprise General Trading LLC.
Cassie Anderson, Trademark Examining Attorney, Law Office 103,
Stacy Wahlberg, Managing Attorney.
_____

Before Cataldo, Goodman, and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Spectrum Enterprise General Trading LLC (“Applicant”) seeks registration on the
Principal Register of the proposed composite mark shown below for “cigarettes” in
International Class 34:1

1 Application Serial No. 87540077 was filed on July 24, 2017, based on 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). The description of the proposed mark reads: “The mark consists of
a semicircular arc extending in a clockwise direction from an upper middle portion to a lower
left portion, and including the literal element ‘VOXX’ positioned between the ends of the arc,
and a horizontal line extending across the arc and being positioned above the literal element.”
Color is not claimed as a feature of the proposed mark.

Serial No. 87540077
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The Trademark Examining Attorney has refused registration of Applicant’s
proposed mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground of likelihood of confusion with the cited registered mark VOX (in standard
characters) for inter alia “electronic cigarettes; … cigarettes containing tobacco
substitutes not for medical purposes…” in International Class 34.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Likelihood of Confusion

We base our determination of likelihood of confusion under Trademark Act Section
2(d) on an analysis of all of the probative facts in evidence that are relevant to the
factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. __, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019).
We have considered each DuPont factor that is relevant, and have treated other
factors as neutral. See Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.
2 Registration No. 4893732 issued on the Principal Register on January 26, 2016.
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1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are relevant to every case,
and only factors of significance to the particular mark need be considered.”));
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)
(“While we have considered each factor for which we have evidence, we focus our
analysis on those factors we find to be relevant.”).
Varying weights may be assigned to each DuPont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more or less
weighty roles in any particular determination”). Two key considerations are the
similarities between the marks and the relatedness of 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.”); In re
FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018).
A. The Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot
Serial No. 87540077
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Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). “‘Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.’ In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-
Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968)
(“It is sufficient if the similarity in either form, spelling or sound alone is likely to
cause confusion.”) (citation omitted).” In re Inn at St. John’s, LLC, 126 USPQ2d 1742,
1746 (TTAB 2018).
Applicant’s applied-for mark adopts the registered mark VOX in its entirety,
adding an “X” and a semicircular arc and horizontal line design. “Marks have
frequently been found to be similar where one mark incorporates the entirety of
another mark, as is the case here. Coca-Cola Bottling Co. v. Joseph E. Seagram and
Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL is similar to
BENGAL LANCER); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB
1982) (EBONY is similar to EBONY DRUM); In re S. Bend Toy Mfg. Co., 218 USPQ
479, 480 (TTAB 1983) (LIL’ LADY BUG is similar to LITTLE LADY).” TiVo Brands
LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1115 (TTAB 2019). Applicant’s addition of an
“X”, forming “VOXX”, makes little difference in their appearance. See In re Great
Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) (“Moreover, although there are
certain differences between the marks [CAYNA and CANA] in appearance, namely,
the inclusion of the letter ‘Y’ and the design feature in applicant’s mark, there are
also obvious similarities between them.”). And the addition would make no difference
in the marks’ sound, as it merely repeats the letter “X”; both marks could be
Serial No. 87540077
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pronounced the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912
(Fed. Cir. 2012) (any minor differences between XCEED and X-SEED and Design
would go undetected by consumers) “Despite specific differences in spelling ... the
dominant factor for consideration is the likelihood of confusion arising from the
similarity in sound of the two words when spoken.” Krim-Ko Corp. v. Coca-Cola Co.,
390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (Finding the aural similarities of the
marks VEEP and BEEP to be such that confusion would be likely).
Given the marked similarity between VOX and VOXX, it is easy to see why
Applicant’s design elements, a semicircular arc and horizontal line, fail to distinguish
the marks. VOXX is the dominant component of its proposed mark, as that is the part
consumers would use to ask for its brand of cigarettes. In re Viterra, 101 USPQ2d at
1908; In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (the
word part of a composite mark is normally accorded greater weight than the design.).
The design portion of its mark consists of ordinary geometric shapes that do not make
a particularly strong commercial impression. See In re Dixie Rests. Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) cited in In re Morinaga Nyugyo
Kabushiki Kaisha, 120 USPQ2d 1738, 1742 (TTAB 2016). Consequently, consumers,
who retain a general rather than a specific impression of marks, In re Mr. Recipe,
LLC, 118 USPQ2d 1084, 1089 (TTAB 2016), would tend to overlook the minute
differences between the two.
For these reasons, we find that the marks are highly similar. The first DuPont
factor thus weighs heavily in favor of finding a likelihood of confusion.
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B. The Goods, Channels of Trade, and Classes of Customers

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration,” Stone Lion
Capital v. Lion Capital, 110 USPQ2d at 1159, and the third DuPont factor concerns
“[t]he similarity or dissimilarity of established, likely-to-continue trade channels.” Id.
at 1161 (quoting DuPont, 177 USPQ at 567).
With respect to the second DuPont factor, the question of likelihood of confusion
must be determined based on an analysis of the goods identified in Applicant’s
application vis-à-vis the goods identified in the cited registration. See Stone Lion
Capital v. Lion Capital, 110 USPQ2d at 1161; Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston
Computer Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Applicant’s goods are “cigarettes,” and Registrant’s pertinent goods are “electronic
cigarettes” and “cigarettes containing tobacco substitutes not for medical purposes,”
both in International Class 34.
The Examining Attorney contends that the respective goods are legally identical,
as “cigarettes” encompasses “electronic cigarettes.”3 Applicant counters that the two
goods are different by definition. A cigarette is defined as “a slender roll of cut tobacco
enclosed in paper and meant to be smoked” while an electronic cigarette is “a battery-
operated device that is typically designed to resemble a traditional cigarette and is

3 Examining Attorney’s brief, 6 TTABVUE 11 et seq.
Serial No. 87540077
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used to inhale a usually nicotine-containing vapor.”4 We agree that the goods are not
legally identical, as one does not encompass the other. Cf. 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 furniture.’”). They are, however, highly related, as they
perform similar functions—as delivery devices for inhaling smoke or vapor―and one
may substitute for another.
To demonstrate this relatedness, the Examining Attorney has submitted evidence
in the form of 19 use-based third-party registrations identifying the respective goods
offered by the same source under the same mark, e.g.:
Registration
No.
Mark Pertinent Goods
5253857 AUGVAPE Cigarettes, electric cigarettes

5208999

Cigarettes; Cigarettes containing tobacco substitutes,
not for medical purposes; electronic cigarettes

5441692

Cigarettes; cigarettes containing tobacco substitutes,
not for medical purposes; oral vaporizers for smokers;
electronic cigarettes

5415830

Cigarettes; cigarettes containing tobacco substitutes,
not for medical purposes; electronic cigarettes

5442284

POLAR NIGHT
Cigarettes containing tobacco substitutes, not for
medical purposes; electric cigarettes; filter-tipped
cigarettes

5398361

Cigarettes; cigarettes containing tobacco substitutes,
not for medical purposes; electronic cigarettes; filter-
tipped cigarettes5

4 Merriam-Webster.com 4/20/2018, April 30, 2018 Response to Office Action at 6-7.
5 May 14, 2018 Office Action at 7-47, 67-79.
Serial No. 87540077
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“As a general proposition, although use-based, third-party registrations alone are
not evidence that the marks shown therein are in use or that the public is familiar
with them, they nonetheless may have some probative value to the extent they may
serve to suggest that the goods are of a kind that emanate from a single source.” In
re I-Coat Co., LLC, 126 USPQ2d 1730, 1738 (TTAB 2018) (citing Hewlett-Packard v.
Packard Press, 62 USPQ2d at 1004 (evidence that “a single company sells the goods
and services of both parties, if presented, is relevant to the relatedness analysis”)).
Applicant states that it “does not wish to improperly challenge any of the third-
party registrations submitted by the examining attorney.” Yet it challenges their
probative value, arguing that the vast majority of these third-party registrations are
owned by companies based in China―reportedly the source of many recent USPTO
trademark filings with specimens of questionable legitimacy:
[W]hen the weight of this evidence is determined then it must be
considered that the vast majority of these registrations are owned and were
filed pro se by Chinese applicants. As such, the question of whether or not
these trademarks are in actual use in connection with both cigarettes and
electronic cigarettes because if the actual use of these marks is in question,
then there is little remaining evidence submitted by the examining
attorney to demonstrate that these two types of goods are thought to be
related by consumers.6

Applicant’s argument constitutes a collateral attack on the third-party
registrations, which we cannot entertain on this appeal because of the statutory
presumptions that must be accorded to registrations under Section 7(b) of the

6 Applicant’s brief, 4 TTABVUE 4-5.
Serial No. 87540077
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Trademark Act. 15 U.S.C. § 1057(b). In re Solid State Design Inc., 125 USPQ2d 1409,
1410 (TTAB 2018). Moreover, we note that six of the third-party registrations are
owned by United States registrants.
Applicant attempts to counter the Examining Attorney’s third-party registration
evidence with six pairs of registrations purportedly showing that the Office has
allowed two different registrants to register cigarettes on the one hand and electronic
cigarettes on the other, under the same or similar marks.7 As the Examining Attorney
notes, however, Applicant’s third-party evidence fails for two reasons. First,
Applicant did not make these registrations of record during the course of
examination, so they will not be considered. Trademark Rule 2.142(d), 37 CFR §
2.142(d); In re I-Coat, 126 USPQ2d at 1734; TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (“TBMP”) §§ 1203.02(e), 1207.01 (2019). Second, even if they
were considered, the registrations do not prove Applicant’s point, as they show
differing marks for differing products―e.g., IMPORTED DREAMS MENTHOL for
“cigarettes and cigars” versus VANILLA DREAMS for “electronic cigarettes”;
ISLAND LIFESTYLE for “cigar and cigarette boxes” versus FORBIDDEN ISLAND
for “electronic cigarette liquid.”8 Hence, Applicant’s third-party registration evidence
does not disprove the Examining Attorney’s evidence that the goods are related, and
are often sold by the same entity under the same mark. See In re G.B.I. Tile and Stone
Inc., 92 USPQ2d 1366, 1369-70 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634,

7 Applicant’s brief, 4 TTABVUE 5-6.
8 Id., 4 TTABVUE 6.
Serial No. 87540077
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1639 (TTAB 2009) (finding third-party registrations of limited value because goods
identified in the registrations were in fields far removed from the involved products).
In any event, for Applicant’s and Registrant’s identified goods to be related, it is not
necessary that they always emanate from the same source under the same mark. The
fact that they do so frequently is evidence that “the respective products are related in
some manner and/or ... the circumstances surrounding their marketing are such that
they could give rise to the mistaken belief that they emanate from the same source.”
Coach Servs. v. Triumph Learning, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir.
2012).
In the absence of limitations in the application or cited registration, we must
presume that the goods would travel through all usual channels of trade and are
offered to all normal potential customers―in this case, smokers and vapers. In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1750 (Fed. Cir. 2017). The
Examining Attorney has introduced third-party evidence showing that cigarettes and
electronic cigarettes travel through the same channels of trade, such as Smokers-
Mall.com,9 BurnAndBrewVa.com,10 and TobaccoMarts.com,11 to smokers and vapers.
Applicant does not contest this evidence.Therefore, under the second and third
DuPont factors, Applicant’s and Registrant’s goods are considered related, and their
channels of trade are the same or overlap for likelihood of confusion purposes.
C. Conditions of Purchase

9 Smokers-Mall.com 5/14/2016, May 14, 2018 Office Action at 48-53.
10 BurnAndBrewVa.com 5/14/2018, May 14, 2018 at 54-60.
11 TobaccoMarts.com 5/14/2018, May 14, 2018 at 61-63.
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Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont, 177 USPQ at 567.
Applicant asserts that:
the sophistication level of the purchaser should be considered. In this case,
users of both cigarettes and electronic cigarettes are very knowledgeable
about their respective products, and cigarette smokers are especially loyal
to their particular brand or specific type of cigarette that they like. Both
cigarettes and electronic cigarettes target a specific line and unique group
of consumers, and the consumers of these goods are cognizant of the several
tobacco brands and have substantial brand loyalty. Brand recognition and
association is integral in this field of goods. Therefore, there is no chance
of consumer confusion in commerce.12

As the Examining Attorney correctly points out, however, Applicant has presented
no evidence that the relevant consumers are sophisticated.13 Applicant’s argument is
predicated on its attorney’s assertion, which is not evidence. Zheng Cai v. Diamond
Hong, 127 USPQ2d at 1799 cited in Performance Open Wheel Racing, Inc. v. United
States Auto Club Inc., 2019 USPQ2d 20891, *8 n. 62 (TTAB 2019). There is nothing
in the nature of the goods that would imply that its purchasers are particularly
sophisticated or careful. See In re I-Coat, 126 USPQ2d at 1739. In fact, the standard
of care is that of the least sophisticated potential purchaser. Stone Lion Capital v.
Lion Capital, 110 USPQ2d at 1163 cited in In re FCA US LLC, 126 USPQ2d 1214,
1222 (TTAB 2018) (“Board precedent requires our decision to be based on the least
sophisticated potential purchasers.”). In the absence of any evidence relating to the

12 Applicant’s brief, 4 TTABVUE 2-3.
13 Examining Attorney’s brief, 6 TTABVUE 8.
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degree of care purchasers exercise, the similarity of the marks and relatedness of the
goods outweigh Applicant’s assertion that purchasers are sophisticated or careful in
their purchases. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819,
1823 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546,
14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and expensive goods).
All in all, we have no basis to find that ordinary consumers would exercise more
than an ordinary degree of care. The fourth DuPont factor is neutral.
D. Actual Confusion

Under the seventh and eighth DuPont factors, we consider the nature and extent
of any actual confusion, in light of the length of time and conditions under which
there has been contemporaneous use of Applicant’s and Registrant’s subject
marks. DuPont, 177 USPQ at 567.
Applicant argues that:
Applicant has been using the mark “VOX” [sic] in connection with
cigarettes in foreign territories for number of years, and has foreign
trademark registrations up to eight years old. … The Applicant has
established a market presence throughout many notable markets in the
world and has secured registration rights in those markets. Furthermore,
the Applicant is not aware of any actual confusion between its mark and
the cited registration, despite the Applicant’s use of “VOXX” throughout
numerous countries.14

As the Examining Attorney observes, however, the standard is likelihood of
confusion, not actual confusion.15 See In re Detroit Athletic Co., 903 F.3d 1297, 128

14 Applicant’s brief, 4 TTABVUE 3-4.
15 Examining Attorney’s brief, 6 TTABVUE 9.
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USPQ2d 1047, 1053 (Fed. Cir. 2018). “[U]ncorroborated statements of no known
instances of actual confusion are of little evidentiary value.” In re Guild Mortg. Co.,
912 F.3d 1376, 129 USPQ2d 1160, 1163 (Fed. Cir. 2019) (quoting Majestic Distilling,
65 USPQ2d at 1205). This especially holds true in an ex parte context, where there is
no chance for a registrant to show what opportunity for confusion there is based on
registrant’s use and advertising of its mark. See In re Opus One Inc., 60 USPQ2d
1812, 1817 (TTAB 2001); In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1204-05
(TTAB 2009). In this case, for example, Applicant has submitted evidence of its
foreign registrations of VOXX & Design in countries such as Singapore, Jamaica,
Guyana and Sudan,16 but the extent of use of Registrant’s mark in those countries is
unknown. Moreover, Applicant’s present application is on an intent-to-use basis, so
we are at a disadvantage to gauge the opportunity for actual confusion to have
occurred in the U.S. marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1847 (Fed. Cir. 2000); Primrose Ret. Cmtys., LLC v. Edward Rose
Senior Living, LLC, 122 USPQ2d 1030, 1039-40 (TTAB 2016).
Applicant’s assertion of lack of actual confusion thus carries no probative value.
The seventh and eighth DuPont factors are neutral.
E. House Mark

The thirteenth DuPont factor is any other established fact probative of the effect
of use. DuPont, 177 USPQ at 567.

16 April 30, 2018 Response to Office Action at 10-23.
Serial No. 87540077
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Applicant argues that Registrant’s mark VOX is consistently paired with
Registrant’s house mark “VAPORFI.” For instance:
17
“Therefore,” Applicant contends, “there is not a likelihood of confusion between
the Applicant’s applied-for mark and the Registrant’s mark as actually used because
the house mark will always be used as a source identifier to distinguish between the
source of the goods.”18
This “house mark” argument is unavailing for two reasons. First, “we do not
consider how Applicant and Registrant actually use their marks in the marketplace,
but rather how they appear in the registration and the application. We must compare
the marks as they appear in the drawings, and not on any labels that may have
additional wording or information.” In re Aquitaine Wine, 126 USPQ2d at 1186 (citing
In re i.am.symbolic, 123 USPQ2d at 1729). The cited registration is for the standard
character mark VOX. Registrant is under no obligation to pair its VOX mark with
another mark, and is free to use its VOX mark on its goods, standing alone. Second,

17 April 30, 2018 Response to Office Action at 8.
18 Applicant’s brief, 4 TTABVUE 3.
Serial No. 87540077
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use of a house mark does not generally obviate confusion, as it is likely that goods
sold under Registrant’s and Applicant’s marks would be attributed to the same
“house” source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007); Key
West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982)
(finding likelihood of confusion between SKIN SAVERS for face and throat lotion and
MENNEN SKIN SAVER for cosmetic and toilet preparations, namely, hand and body
lotion).
For these reasons, the thirteenth DuPont factor is neutral.
II. Conclusion

When we consider the record and the relevant likelihood of confusion factors, and
all of Applicant’s arguments relating thereto, including those arguments not
specifically addressed herein, we conclude that consumers familiar with Registrant’s
goods offered under its mark would be likely to believe, upon encountering
Applicant’s proposed mark, that the goods originated with or are associated with or
sponsored by the same entity.
Decision: The refusal to register Applicant’s proposed mark is affirmed
under Section 2(d) of the Trademark Act.