Tim Delaney

Trademark Trial and Appeal Board

Jul 26, 2017

No. 87158202 (T.T.A.B. Jul. 26, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: July 26, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Delaney

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Serial No. 87158202
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Gene Bolmarcich of Law Offices of Gene Bolmarcich,
for Tim Delaney.

Laura Golden, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
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Before Ritchie, Adlin and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Tim Delaney (“Applicant”) seeks registration on the Principal Register of the mark
for “optical glasses; sunglasses” in International Class 9.1

1 Application Serial No. 87158202 was filed on September 1, 2016 based upon Applicant’s
claim of first use anywhere on July 2, 2016 and use in commerce since at least as early as
July 31, 2016. The description of the mark is: “The mark consists of the stylized word
"Islander" with the letter “L” replaced by a palm tree trunk and branches, forming the letter
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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
Applicant’s mark so resembles the previously registered mark ISLANDER EYES
(typed drawing) for “sunglasses” in International Class 9 as to be likely to cause
confusion, mistake, or deception.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Section 2(d)
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 likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Majestic Distilling Co., Inc., 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). These factors, and the other relevant du Pont factors now before us, are
discussed below. We treat the other du Pont factors, for which no argument or
evidence was presented, as neutral.

“L”. There is a patch of sand at the base of the tree trunk and five [5] stylized birds flying
over the word ‘Islander’.” Color is not claimed as a feature of the mark.
2 Registration No. 2754251, issued August 19, 2003; Section 8 accepted; Section 15
acknowledged; renewed. “Eyes” disclaimed. A mark in typed form is the legal equivalent of a
standard character mark. ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1236
n.5 (TTAB 2015) (citing Trademark Manual of Examining Procedure § 807.03(i)).
Serial No. 87158202
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A. Similarity of the Goods and Channels of Trade
Applicant’s “sunglasses” are identical to Registrant’s “sunglasses.” The fact that
there are some differences in the description of goods for the application and cited
registration does not obviate the fact that both descriptions of goods are in part
identical. Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely
to be confusion with respect to any items that come within the identification of goods
in the application).
Because the identifications of goods in the application and registration are in part
identical and unrestricted as to trade channels, we must presume that Applicant’s
and Registrant’s sunglasses travel in the same ordinary trade and distribution
channels and will be marketed to the same potential consumers. In re Viterra Inc.,
671 F3d 1358, 101 USPQ2d at 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); In
re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where
there are legally identical goods, the channels of trade and classes of purchasers are
considered to be the same); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
2003) (finding goods, which were in part identical and in part related as being offered
and sold to the same classes of purchasers and channels of trade). These du Pont
factors favor a finding of likelihood of confusion.
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B. Similarity of the Marks
Applicant’s mark is and Registrant’s mark is ISLANDER
EYES. The Examining Attorney argues that “the phrase ISLANDER EYES [in the
cited registration] indicates that goods for the eyes are being sold under the
ISLANDER brand” while Applicant argues that Registrant’s mark “evokes an image
of ‘the eyes of an Islander’” which is a different connotation from its mark which
depicts “a tropical island” and includes “an image of a palm tree and birds.” 6
TTABVUE 5; 4 TTABVUE 3.
We analyze “the marks 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. While the marks must be considered in their
entireties, including any disclaimed matter and designs, it is nevertheless
appropriate, for rational reasons, to regard certain features of the marks as being
more dominant or otherwise significant, and therefore to give those features greater
weight. Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014); In re Nat'l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
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dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”).
In the case of marks which consist of words and a design, the words are normally
accorded greater weight because they would be used by purchasers to request the
goods. See In re Viterra, 101 USPQ2d at 1908 (“In the case of a composite mark
containing both words and a design, ‘the verbal portion of the mark is the one most
likely to indicate the origin of the goods to which it is affixed.’”) (quoting CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)); In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 2001) (“words are normally accorded
greater weight because they would be used by purchasers to request the goods”). Also,
disclaimed or otherwise descriptive matter is generally viewed as a less dominant or
significant feature of a mark. See In re National Data Corp., 224 USPQ at 751-52.
Finally, where, as here, the goods are in-part identical, the degree of similarity
between the marks which is necessary to support a finding of likelihood of confusion
declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992).
The word ISLANDER is the most dominant element in both marks. As to the cited
mark, the word ISLANDER is dominant because the word EYES is descriptive of
eyewear and disclaimed. Even if EYES is only suggestive rather than descriptive,
that term is nevertheless accorded less weight. As for Applicant’s mark, although it
consists of a design as well as a literal element, it is the words which will be used by
consumers to call for or refer to the goods. The image of a palm tree in place of the
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letter “L” draws attention to and reinforces the significance of the term ISLANDER,
and the five stylized birds are quite small and do not sufficiently distinguish the
mark.
We find that the marks are more similar than dissimilar in appearance, sound
and meaning, and have substantially similar overall commercial impressions. The
dominant portion of both marks is the term ISLANDER which is identical in sound
and appearance and appears to have no meaning or significance with respect to the
identified goods. The term ISLANDER also conveys the same connotation and
commercial impression in both marks, which are used for identical goods. Although
we have focused on the dominant portion of the marks, which, as indicated, are
identical, we also have considered the marks in their entireties. In doing so, we find
that they are more similar than dissimilar and engender similar overall commercial
impressions.
This du Pont factor also favors a finding of likelihood of confusion.
II. Conclusion
After considering all of the evidence of record as it pertains to the relevant du Pont
factors, including all of Applicant’s arguments and evidence, even if not specifically
discussed herein, we find that confusion is likely because the marks are similar, the
goods are in-part identical, and we must presume the trade channels are the same.

Decision: The refusal to register Applicant’s mark is affirmed.