Stephen BowlingDownload PDFTrademark Trial and Appeal BoardFeb 3, 2017No. 86613438 (T.T.A.B. Feb. 3, 2017) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: February 3, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Stephen Bowling _____ Serial No. 86613438 _____ David B. Sunshine of Cozen O’Connor P.C. for Stephen Bowling William T. Verhosek, Trademark Examining Attorney, Law Office 114, K. Margaret Le, Managing Attorney. _____ Before Wellington, Goodman and Heasley, Administrative Trademark Judges. Opinion by Heasley, Administrative Trademark Judge: Stephen Bowling (“Applicant”) seeks registration on the Principal Register of the mark FREEDOM FISH (in standard characters, with “FISH” disclaimed) for “farm raised fish, namely, fresh fish fillets, frozen fish fillets, fresh whole fish, frozen whole fish, fresh whole gutted fish, frozen whole gutted fish; seafood” in International Class 29.1 1 Application Serial No. 86613438 was filed on April 29, 2015, 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). Serial No. 86613438 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it so resembles the registered word and design mark (with “FOODS” disclaimed) for “fish”, among other foodstuffs in International Classes 29 and 30, as to be likely to cause confusion or mistake, or to deceive prospective purchasers.2 When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. Analysis We base our determination of likelihood of confusion under 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”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In the course of applying the DuPont factors, we bear in mind the fundamental principles underlying Section 2(d), which are to prevent consumer confusion as to commercial sources and relationships, and to protect registrants from damage caused 2 Registration No. 4173539 issued on the Principal Register on July 17, 2012. Serial No. 86613438 - 3 - by registration of confusingly similar marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995); DuPont, 177 USPQ at 566. We have considered each DuPont factor that is relevant, and have treated any other factors as neutral. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); 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 Group 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”). 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, 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.”). A. Similarity of the Goods and Channels of Trade Under the second and third DuPont factors, we consider the similarity between Applicant and Registrant’s identified goods, as well as the channels of trade through which they would be offered. DuPont, 177 USPQ 567. As the Examining Attorney Serial No. 86613438 - 4 - observes, Registrant’s identification of “fish” encompasses Applicant’s more narrowly- worded identification of “farm raised fish, namely, fresh fish fillets, frozen fish fillets, fresh whole fish, frozen whole fish, fresh whole gutted fish, frozen whole gutted fish.” See In Re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB 2015) (“Applicant and Registrant both offer ‘frozen fish,’ and Registrant's ‘non-live fish’ encompasses Applicant's fresh processed fish.”). Similarly, Applicant’s broadly identified “seafood” goods encompass the cited registration’s “fish.” See 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.’”). Thus, all of Applicant’s goods are legally identical to Registrant’s “fish” goods. In re Aquamar, 115 USPQ2d at 1126. “[I]t 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.” Id. at 1126n.5 (citing Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981)). Where, as here, the goods are identical, and include no trade channel restrictions, we must presume that the channels of trade and classes of purchasers for those goods are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (absent restrictions in an application and/or registration, identical goods are “presumed to travel in the same channels of trade to the same class of purchasers.”) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, Serial No. 86613438 - 5 - 1005 (Fed. Cir. 2002)); In re Yawata Iron & Steel Co., Ltd., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968). Applicant does not contest the identity of the goods or channels of trade. Thus, the second and third DuPont factors weigh heavily in favor of finding a likelihood of confusion. B. Similarity of the Marks Under the first DuPont factor, we determine the similarity or dissimilarity of Applicant’s and Registrant’s marks as compared 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 Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). In comparing the marks, we are mindful that “[w]hen marks … appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.” United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014) (quoting Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)). See also Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). As the Examining Attorney notes, the marks share the identical first word, FREEDOM. That word is arbitrary with respect to the goods, and its placement at the beginning of each mark reinforces its position as the dominant component of the Serial No. 86613438 - 6 - marks. Presto Products Inc. v. Nice-Pak Products, 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….”); see also Palm Bay Imports, 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate, 23 USPQ2d at 1700 (upon encountering the marks, consumers must first notice the identical lead word). The word FREEDOM is followed by a single word in each mark: FOODS in Registrant’s mark and FISH in Applicant’s. Applicant claims that these suffixes differentiate the marks,3 but both suffixes are disclaimed as generic or descriptive of the goods. The Examining Attorney has adduced dictionary definitions of “food” and “fish,” demonstrating how both words are used in their common senses, describing the goods.4 The suffixes are therefore entitled to little or no weight in distinguishing the marks. E.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,” is the dominant portion of the mark THE DELTA CAFE); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“That a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark….”). Hence, FREEDOM remains the dominant common element in both marks. “[T]here is nothing improper 3 Applicant’s brief, p. 8, 7 TTABVUE 13. 4 American Heritage Dictionary, ahdictionary.com, 2/16/2016, Feb. 17, 2016 Office Action pp. 6-7, 9-10. Serial No. 86613438 - 7 - 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.” Id. In sight and sound, the marks share the same structure. Each consists of three syllables: the word FREEDOM followed by an alliterative, single-syllable suffix, FOODS or FISH. Applicant argues that the cited mark features a distinctive design element.5 But that design element is merely a minimalist rectangle framing the generic or descriptive word FOODS, which appears in small type beneath the larger, more prominent and dominant component FREEDOM. In most cases, “when evaluating a composite mark containing both words and designs, the verbal portion of the mark often is more likely to indicate the origin of the goods to which it is affixed because it is the portion of the mark that consumers would use to refer to or request the goods….” Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra, 101 USPQ2d at 1908, 1911). This mark is no exception. Moreover, Applicant’s mark, in standard characters, could be depicted in any font, size, style, or color, including one that approximates the registered mark. See In re Viterra, 101 USPQ2d at 1909; Citigroup v. Capital City Bank, 98 USPQ2d at 1256 (noting that standard character marks are not limited to any particular presentation); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016). Thus, the design element in the registered mark does not distinguish it from Applicant’s mark. 5 Applicant’s brief, p. 8, 7 TTABVUE 13. Serial No. 86613438 - 8 - In connotation and commercial impression, the literal elements of Registrant’s mark, FREEDOM FOODS broadly encompass a number of foods. Applicant’s mark, using the identical word FREEDOM and a specific type of food, FISH, would tend to be seen as a variation of Registrant’s mark, suggesting fish emanating from the same source. See In re Collegian Sportswear, Inc., 224 USPQ 174, 176 (TTAB 1984) (“…customers familiar with registrant’s ‘COLLEGIENNE’ clothing might believe that ‘COLLEGIAN OF CALIFORNIA’ clothing was a new line of clothing from registrant featuring a ‘California’ or west coast style.”); Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977). “[C]areful purchasers who do notice the difference in the marks will not necessarily conclude that there are different sources for the goods, but will see the marks as variations of each other, pointing to a single source.” In re Hitachi High-Technologies Corp., 109 USPQ2d 1769, 1774 (TTAB 2014). Thus, the marks, taken in their entireties, are similar in sight, sound, connotation, and commercial impression, and the first DuPont factor consequently weighs strongly in favor of finding a likelihood of confusion. C. Similar Marks in use on Similar Goods The sixth DuPont factor concerns the number and nature of similar marks used on similar goods. DuPont, 177 USPQ at 567. Applicant points to a score of registered marks consisting of or containing the word FREEDOM, used on various foods, e.g.: Serial No. 86613438 - 9 - Registration/App. No. Mark Goods 4,292,499 FREEDOM VALLEY Extracts for soups; Instant or pre-cooked miso soup; Preparations for making soups; Soup mixes; Soup pastes; Soups 3,982,492 FREEDOM TO SNACK Potato chips 4,752,567 FREEDOM RIDGE Hot and cold beverages, namely, coffee; coffee sold in a single-serving container for use in hot and cold beverage brewing machines; beverage mixes for hot and cold beverages in the nature of coffee 4,375,904 Chocolate bars 5,065,420 FREEDOM COAST Frozen shrimp, fish and seafood 2,884,475 SWEET FREEDOM Frozen confections 2,973,157 FREEDOM TO SHAPE YOUR FIGURE Edible oils and fats 3,121,529 PHILLY FREEDOM Frozen and processed beef, chicken and pork Serial No. 86613438 - 10 - 4,502,451 GLUTEN FREEDOM Grits; kasha; seed meals; almond meal; cereals, namely, breakfast cereals; mixes for baked goods, namely, cakes, brownies, cookies, pie crust, pizza crust, muffin, biscuit, cookie and bread; pancake and waffle mixes; coconut flour; polentas; processed oats; oatmeal, brown rice farina; baking powder; baking soda; yeast; blends of processed whole grains used as a cereal or pilaf; rolled oats; guar gum and xanthan gum for non- nutritional purposes for use as a flavoring ingredient or filler; flours from grains, beans, lentils, roots and tubers, organic and non- organic grains; flax seed meal 5,061,934 FREEDOM FUDGE & Design Fudge and pastries 2,636,959 FREEDOM FUNDRAISING Candy 5,091,152 TASTES LIKE FREEDOM Coffee and tea 4,032,968 AMERICA’S FREEDOM CUPS Cupcakes; muffins; peanut butter cups; cookies featuring a cupcake; cupcakes in the nature of patriotic shapes; bakery goods; pastries; cakes; pies; cheesecakes cookies; cookie bars; breads; and puddings featuring a cupcake6 6 Applicant’s brief, pp. 4-6, 7 TTABVUE 9-11; TESS printouts, Feb. 11, 2016 Response to Office Action pp. 11-26, Aug. 17, 2016 Response to Office Action pp. 11-21, 25-68. Serial No. 86613438 - 11 - From these third-party registrations, Applicant infers that the word FREEDOM is so commonly used in marks for foodstuffs that the registered mark is weak and the purchasing public will look to other elements, such as FISH, to distinguish the source of goods.7 The Examining Attorney rejoins that only one of these registrations, for FREEDOM COAST, covers fish and seafood, and that it is distinguishable from Registrant’s and Applicant’s marks, as it contains a non-generic or -descriptive term, COAST; the remaining registrations, he argues, are too few and too unrelated in their identified goods to weaken the cited Registration.8 Evidence of third parties’ registration and use of similar marks bears on the strength or weakness of a registrant’s mark. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,115 USPQ2d 1671, 1674 (Fed. Cir. 2015). It is relevant to the strength of a registered mark in two ways: conceptually and commercially. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”); In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016). Where, as here, the record evidence refers solely to the existence of third-party registrations of marks, with no evidence of the extent of their use in commerce, it does very little to undermine the commercial strength of Registrant’s mark in the marketplace. Palm Bay Imports, 73 USPQ2d at 1693 (where the “record includes no evidence about the extent of [third-party] uses 7 Applicant’s brief, pp. 2-3, 7 TTABVUE 7-8. 8 Examining Attorney’s brief, 9 TTABVUE 8-9. Serial No. 86613438 - 12 - … [t]he probative value of this evidence is thus minimal.”) (quoting Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1561 (Fed. Cir. 2001)); In re Morinaga, 120 USPQ2d at 1745 (“Applicant’s citation of third-party registrations as evidence of market weakness is unavailing because third-party registrations standing alone, are not evidence that the registered marks are in use on a commercial scale, let alone that consumers have become so accustomed to seeing them in the marketplace that they have learned to distinguish among them by minor differences.”) Third-party registrations can show, however, “that a term is suggestive or descriptive of the relevant goods or services. Such terms may be conceptually weak because the more descriptive a term is, the less likely prospective purchasers are to attach source-identifying significance to it.” In re Morinaga, 120 USPQ2d at 1745-46 (citing Juice Generation, 115 USPQ2d at 1674; Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015)). Here, the record evidence shows some frequency of registration of FREEDOM- formative marks for various foodstuffs, but on closer examination, most are distinguishable from the applied-for and cited marks in this case―either placing FREEDOM in a broader expression, such as FREEDOM TO SHAPE YOUR FIGURE or AMERICA’S FREEDOM CUPS, or adding distinguishing terms, such as Serial No. 86613438 - 13 - FREEDOM FUNDRAISING or FREEDOM COAST. The only mark structured like Registrant’s and Applicant’s is FREEDOM FUDGE & Design, which has the three- syllable, alliterative structure, but adds a distinctive design: Thus, “The probative value of Applicant's evidence is further diminished inasmuch as many of the third-party registrations … also include additional wording and design elements not found in the cited registration or involved application, that engender a different commercial impression from either mark.” In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016). On the whole, we find the evidence for the sixth DuPont factor weighs only very slightly against likely confusion. II. Conclusion On balance, having carefully considered all of the arguments and evidence of record, and all relevant DuPont factors, we find: that the marks, taken in their entireties, are similar in sight, sound, connotation, and commercial impression; that Applicant’s identified goods are identical in part to those identified in the cited Registration, and would travel through the same channels of trade; and that the evidence of third-party registrations does not weaken Registrant’s mark sufficiently to countervail the other DuPont factors. All in all, we find that there is a likelihood of confusion under Section 2(d). Decision: The refusal to register Applicant’s mark FREEDOM FISH is affirmed. Copy with citationCopy as parenthetical citation