Thomas W. Sherwood

Trademark Trial and Appeal Board

Sep 22, 2003

No. 76157184 (T.T.A.B. Sep. 22, 2003)

Mailed:
Sept. 22, 2003
Hearing: Paper No.
August 12, 2003 Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Thomas W. Sherwood
________
Serial No. 76/157,184
_______
Manny D. Pokotilow of Caesar, Rivise, Bernstein, Cohen &
Pokotilow, Ltd. for Thomas W. Sherwood.
Georgia Ann Carty, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Hohein, Bottorff and Holtzman, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark depicted below
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/157,184
2
for services identified in the application, as amended, as
“manufacture of digital video discs to the order and/or
specification of others,” in Class 40.1 Applicant has
disclaimed the exclusive right to use “DVD” apart from the
mark as shown.
The Trademark Examining Attorney has issued final
refusals to applicant’s mark under Trademark Act Section
2(d), 15 U.S.C. §1052(d), citing two previous Principal
Register registrations (owned by the same registrant) of
the mark depicted below
for “optical disc players; compact discs containing digital
information for display of filmed products,” in Class 9,2
and for “compact discs containing digital information for
1 Application Serial No. 76/157,184, filed October 31, 2000. The
application is based on applicant’s alleged bona fide intention
to use the mark in commerce, under Trademark Act Section 1(b), 15
U.S.C. §1051(b).
2 Registration No. 2,295,726, issued November 30, 1999.
Registrant has disclaimed the exclusive right to use “DVD” apart
from the mark as shown.
Ser. No. 76/157,184
3
display of filmed products,” also in Class 9.3
(Hereinafter, we shall refer to these registered marks in
the singular, e.g., as “the registered mark.”)
Applicant has appealed the final refusals of
registration. Applicant and the Trademark Examining
Attorney have filed main appeal briefs, but applicant did
not file a reply brief. At applicant’s request, an oral
hearing was held on August 12, 2003, at which applicant’s
attorney and the Trademark Examining Attorney presented
arguments. After careful consideration of counsel’s
arguments and the evidence of record, and for the reasons
discussed below, we affirm the Trademark Examining
Attorney’s Section 2(d) refusals to register applicant’s
mark.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E. I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
3 Registration No. 2,381,677, issued August 29, 2000. Registrant
has disclaimed the exclusive right to use “DVD” apart from the
mark as shown.
Ser. No. 76/157,184
4
mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We first shall determine whether applicant’s mark and
the cited registered mark, when compared in their
entireties in terms of appearance, sound and connotation,
are similar or dissimilar in their overall commercial
impressions. The test 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 offered under the respective
marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). Furthermore, although the marks at issue must be
considered in their entireties, it is well-settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
Ser. No. 76/157,184
5
the mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).
Applying these principles in the present case, we find
that applicant’s mark is highly similar to the cited
registered mark. In view of the generic nature of the term
“DVD”, the dominant feature in the commercial impression
created by the cited registered mark is the distinctive
stylization of the mark’s lettering and design. The
letters “DVD” in the mark are connected to each other, with
the central “V” extending to form the top of the “D” on
either side of it. The “D”’s in the mark are left open in
their upper-left corners, with a space between the top of
the left-hand vertical line and the top horizontal line of
the letter. The central “V” is elongated at its lower
point in a manner which suggests a stylus which is directed
to the center of the disc or which perhaps is “playing” the
disc. Each of these distinctive, indeed, arbitrary
elements of the registered mark’s design is replicated
almost exactly in applicant’s mark.
The slight differences which might be apparent upon
side-by-side comparison of the marks (such as the slightly
more pronounced ellipsoid shape of the disc in the
registered mark, the “reflective” or more shiny
representation of the disc in applicant’s mark, and the
Ser. No. 76/157,184
6
fact that the tip of the “V” does not extend all the way to
contact with the center of the disc in the registered mark)
do not suffice to distinguish the marks. As noted above,
such a side-by-side comparison is not the proper test for
determining confusing similarity. Likewise, we find that
applicant’s mere addition of the term “Mr.” to its mark
does not suffice to distinguish the marks. The term is
merely a courtesy title which is subordinate to, and would
be perceived as referring directly to, the remainder of the
mark, i.e., the stylized “DVD” and disc design.
In short, we find that the marks are highly similar in
terms of appearance, sound, connotation and overall
commercial impression. The presence of the term “Mr.” in
applicant’s mark renders the marks non-identical in
appearance, sound and connotation, but the marks
nonetheless are more similar than dissimilar when viewed in
their entireties and in terms of their overall commercial
impressions. This similarity arises not from the presence
in each mark of the generic and disclaimed term “DVD” in
conjunction with the depiction of a disc (elements which
applicant could have utilized and displayed in his mark in
any number of ways), but rather from the fact that those
elements are displayed in each mark in a very similar
highly distinctive manner. The interconnected letters, the
Ser. No. 76/157,184
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open “D”’s, and the elongated “V” suggesting a stylus
pointed at the disc; these arbitrary design features are
the essence of the registered mark’s commercial impression.
Applicant’s mark incorporates them all. Purchasers
familiar with the registered mark are likely to assume, if
they encounter applicant’s highly similar mark on related
services, that a source or sponsorship connection exists.
We turn next to the issue of the similarity or
dissimilarity of applicant’s services, i.e., “manufacture
of digital video discs to the order and/or specification of
others,” and registrant’s goods, especially those
identified as “compact discs containing digital information
for display of filmed products.” It is not necessary that
the respective goods and services be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is sufficient that the goods and
services are related in some manner, or that the
circumstances surrounding their marketing are such, that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source or that
there is an association or connection between the sources
of the respective goods and services. See In re Martin’s
Ser. No. 76/157,184
8
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ2d 910 (TTAB 1978).
Applying these principles in the present case, we find
that applicant’s services are similar and related to
registrant’s goods. Applicant’s services involve the
custom manufacture of goods of the type identified in
registrant’s registration. Purchasers familiar with
registrant’s mark for digital video discs are likely to
assume, upon encountering applicant’s digital video disc
custom manufacturing services offered under a similar mark,
that applicant’s services involve or utilize discs
manufactured, distributed or approved by registrant or that
some other source or sponsorship relationship exists.
Applicant has not argued that its services and
registrant’s goods are dissimilar or unrelated. Instead,
applicant argues that the purchasers of its services are
sophisticated and knowledgeable purchasers, i.e.,
professional photographers and videographers, who are
unlikely to be confused as to the source of the services.
We are not persuaded. In the absence of any restriction in
applicant’s identification of services, we must presume
that applicant’s services will be marketed to all normal
Ser. No. 76/157,184
9
classes of purchasers of such services. See In re Elbaum,
211 USPQ 639 (TTAB 1981). Nothing in the record supports a
finding that the normal classes of purchasers of
applicant’s services would not include ordinary consumers,
who can use applicant’s services to convert their
photographs or home video content to a DVD format.
Moreover, in view of the similarity of the marks and the
relatedness of the respective goods and services, we find
that even sophisticated purchasers are likely to be
confused as to source or sponsorship in this case. See In
re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49
(Fed. Cir. 1986); In re Decombe, 9 USPQ2d 182 (TTAB 1988);
and In re Pellerin Milnor Corporation, 221 USPQ 558 (TTAB
1983).
Applicant notes that the Office has issued to
applicant a registration of the mark depicted below
Ser. No. 76/157,184
10
for “online retail and wholesale store services featuring
digital video discs,” in Class 35,4 and argues that the
present refusal is inconsistent with the Office’s issuance
to applicant of the prior registration. However, the
Office’s issuance of applicant’s prior registration does
not mandate or warrant reversal of the Trademark Examining
Attorney’s refusal of registration in the present case.
It is well-settled that the Board is not bound by prior
decisions of Trademark Examining Attorneys, and that we
must decide each case on its own merits and on the record
before us. See, e.g., In re International Flavors &
Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir.
1999); In re Cooper, 117 USPQ 396 (CCPA 1958)(“…the
decision of this case in accordance with sound law is not
governed by possibly erroneous past decisions by the Patent
Office); In re Wilson, 57 USPQ2d 1863 (TTAB 2001); In re
Perez, 21 USPQ2d 1075 (TTAB 1991)(§2(d) refusal based on
prior conflicting registration affirmed, despite fact that
the conflicting registration had not been cited as bar to
applicant’s previous registration (now expired) of same
mark for same goods; Board not bound by decisions of prior
4 Registration No. 2,601,893, issued July 30, 2002. The
registration includes a disclaimer of the exclusive right to use
“DVD” apart from the mark as shown.
Ser. No. 76/157,184
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Examining Attorneys); In re BankAmerica Corporation, 231
USPQ 873, 876 (TTAB 1986)(“Section 20 of the Trademark Act,
15 USC §1070, gives the Board the authority and duty to
decide an appeal from an adverse final decision of the
Examining Attorney. This duty may not and should not be
delegated by the adoption of conclusions reached by
Examining Attorneys on different records”); and In re
National Retail Hardware Association, 219 USPQ 851, 854
(TTAB 1983)(“As in Cooper, we do not here have sufficient
facts before us on which to evaluate whether the previous
action of the Examiner which resulted in issuance of the
previous registration was or was not erroneous.
Nevertheless, as Cooper held, it is sufficient that the
facts now before us and the application to them of sound
law persuade us that the mark does not meet the
requirements for registration set forth in Sections 2(d)
and 2(e)(1) of the statute”). For the reasons discussed at
length above, we find that a likelihood of confusion exists
in this case and that refusal of registration under Section
2(d) therefore is proper, notwithstanding the Office’s
issuance of applicant’s previous registration.
Finally, applicant notes that the owner of the cited
registrations (hereinafter “registrant”) did not file an
opposition to issuance of applicant’s prior registration,
Ser. No. 76/157,184
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and argues that such failure is evidence of an absence of
likely confusion in the marketplace. Although we have
taken registrant’s failure to oppose applicant’s prior
application into account in our analysis (under the tenth
du Pont factor; see In re Collegian Sportswear Inc., 224
USPQ 174 (TTAB 1984)), we do not find that it is entitled
to significant, much less dispositive, weight. We cannot
determine from this record that registrant’s lack of
opposition to the prior application was due to a business-
driven belief on registrant’s part that confusion is
unlikely, rather than to some other cause. See In re Opus
One Inc., 60 USPQ2d 1812 (TTAB 2001). We note as well that
applicant’s prior registration is less than five years old
and therefore is still vulnerable to challenge by
registrant on any ground permitted by Trademark Act Section
14(1), 15 U.S.C. §1065(1), including priority of use and
likelihood of confusion. We find that the fact of
registrant’s failure to oppose applicant’s prior mark is
outweighed, in our likelihood of confusion analysis, by the
evidence pertaining to the other du Pont factors, discussed
above, which weighs heavily in favor of a finding of
likelihood of confusion.
In summary, we find that a likelihood of confusion
exists and that registration of applicant’s mark therefore
Ser. No. 76/157,184
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is barred by Section 2(d). Any doubt as to that result
must be resolved against applicant. See In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988); In re Martin’s Famous Pastry Shoppe, Inc., supra.
Decision: Each of the Section 2(d) refusals to
register is affirmed.