Tricom Media Holdings, Inc.

Trademark Trial and Appeal Board

Dec 18, 2008

No. 76668320 (T.T.A.B. Dec. 18, 2008)

Mailed: December 18, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tricom Media Holdings, Inc.

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Serial No. 76668320
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Myron Amer of Myron Amer, P.C. for Tricom Media Holdings,
Inc.

Caryn Glasser, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Holtzman, Taylor, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Tricom Media Holdings, Inc., applicant, filed an
application to register the mark 24 HORAS USA (in standard
character form) on the Principal Register for goods
identified as “newspapers, magazines, namely, general
feature magazines” in International Class 16.1 The
application contains a disclaimer of USA. Applicant also

1 Application Serial No. 76668320 is based on a statement of
first use in commerce and anywhere on June 1, 2006.
THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Serial No. 76668320
2
submitted a statement that the English translation of the
word “horas” is “hours.”2
The examining attorney has refused registration of
applicant's mark pursuant to 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 24HOURS (in
typed characters) for “magazine dealing with nighttime
human interest stories and sources of goods and services”
in International Class 16,3 that, as used on applicant’s
identified goods, applicant's mark is likely to cause
confusion or mistake or to deceive.
Applicant appealed the final refusal and briefs were
filed.4 We affirm the refusal to register.

2 The translation was provided in applicant’s July 12, 2007
response; however, the statement does not appear to have been
entered into the database for the application.

3 Registration No. 1590841 issued April 10, 1990; renewed.

4 The examining attorney also issued a final refusal based on
applicant’s failure to comply with a requirement for a
clarification of the goods, i.e., specify the subject of the
magazines. On July 28, 2008, two weeks after filing its appeal,
applicant filed an amendment to the identification of goods (to
read as stated in the first paragraph of this decision).
Applicant’s amendment was not filed with the Board. In her
brief, the examining attorney noted and accepted the amendment.
Accordingly, that refusal is not an issue before us.
Nonetheless, we would be remiss if we did not point out to
counsel for applicant that post-appeal amendments to applications
in ex parte proceedings are to be filed with the Board. See TBMP
§ 1205 (2d ed. rev. 2004). It would behoove counsel to
familiarize himself with the Board rules and procedure (available
on Office website, www.uspto.gov).
Serial No. 76668320
3
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in 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,
however, two key, although not exclusive, considerations
are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
We first consider the du Pont factor involving the
similarity of the marks. Our focus is on whether the marks
are similar in sound, appearance, meaning, and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). Again, our analysis here involves
applicant’s mark, 24 HORAS USA, versus the registered mark,
24HOURS.
Upon review of the marks as a whole, we find that they
have nearly identical meaning and create the same
commercial impression. Under the doctrine of “foreign
equivalents” foreign words from common languages are
Serial No. 76668320
4
translated into English in order to determine their
confusing similarity to English word marks. In re Ithaca
Industries, Inc., 230 USPQ 702 (TTAB 1986); see also J.T.
McCarthy, McCarthy on Trademarks and Unfair Competition,
§23:36 (4th ed. 2006). In this case, there is no dispute
that the term HORAS in applicant’s mark is the Spanish word
for “hours,” which we add is not an obscure word and may
even be understood by even those with limited knowledge of
Spanish. As a result, the initial and dominant portion of
applicant’s mark has the same meaning as registrant’s mark,
namely, “24 hours.” This same meaning in turn creates the
same connotation in relation to the respective goods, i.e.,
suggesting that the subject matter of the magazines
involves stories covering “the whole day” or “both night
and day.” The fact that the marks have the same meaning,
resulting in a highly similar overall commercial
impression, is sufficient for us to conclude that confusion
is likely, despite the differences in their sound. See In
re American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987).
The marks are also very similar visually. Although
there is a space between 24 and HORAS in applicant’s mark,
whereas registrant combines the terms 24 and HOURS, such
difference is insignificant. Visually, there is also not a
Serial No. 76668320
5
radical difference between the Spanish word “horas” and
“hours.”
We consider the marks as whole, as we must, and have
taken into consideration the addition of the term USA in
applicant’s mark. However, we note that this
geographically descriptive (and therefore disclaimed) term
is placed at the end of applicant’s mark. Thus, for two
reasons, the term USA is accorded less weight in our
evaluation as to the overall similarity of the marks.
First, descriptive and disclaimed components of marks are
generally given less weight than non-descriptive elements
in reaching a conclusion on the likelihood of confusion.
See, e.g., In re Code Consultants, Inc., 60 USPQ2d 1699,
1702 (TTAB 2001) (disclaimed matter is often “less
significant in creating the mark's commercial impression”).
Second, it is the initial, non-descriptive terms (in this
case, 24 HORAS and 24HOURS) that are most likely to be
impressed upon the mind of a purchaser and will be
remembered and used when calling for the goods. See Presto
Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988).
Even if we were to allow for a slight difference in
the appearance of the marks and applicant’s addition of the
Serial No. 76668320
6
term USA, we find that, on balance, the du Pont factor of
the similarity of marks weighs strongly against applicant.
We now turn to the du Pont factors regarding the
goods, trade channels and classes of purchasers. In an ex
parte appeal, likelihood of confusion is determined on the
basis of the goods as they are identified in the
application and the cited registration. Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1004 (Fed. Cir. 2002); In re Elbaum, 211 USPQ 639, 640
(TTAB 1981); In re William Hodges & Co., Inc., 190 USPQ 47,
48 (TTAB 1976). Applicant and registrant’s goods are
nearly identical inasmuch as they both cover magazines.
The subject matter of applicant’s magazines is identified
as “general feature magazines,” whereas registrant’s
magazines involve “nighttime human interest stories and
sources of goods and services.” As the examining attorney
correctly pointed out, there is certainly a potential for
overlap in the content of the respective magazines because
“general feature magazines encompass subjects such as human
interest stories and sources for goods and services.”
Brief, (unnumbered) p. 14.
We further find that applicant’s newspapers are
closely related to registrant’s magazines. Applicant’s
newspapers are not limited at all as to subject matter.
Serial No. 76668320
7
Thus, we must presume that at one point or another, or in
one particular section of applicant’s newspapers, they will
contain the same types of articles or stories as
registrant’s magazines, e.g., nighttime human interest
stories and/or sources for goods and services. Also, in
support of her contention that magazines and newspapers are
related, the examining attorney submitted copies of several
use-based, third-party registrations covering magazines and
newspapers. Copies of use-based, third-party registrations
may serve to suggest that the goods are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
In view thereof, we conclude that applicant’s goods,
in part, are legally identical to registrant’s goods
inasmuch as they both cover magazines that could possibly
contain the same type of articles or stories. Otherwise,
applicant’s newspapers are substantially related to
registrant’s magazines. This factor therefore weighs
strongly in favor of finding a likelihood of confusion.
Because the goods in the application and the cited
registration both cover magazines with subject matter that
effectively does not restrict either’s trade channels, we
must presume that the channels of trade and classes of
purchasers at least in part are the same. Genesco Inc. v.
Serial No. 76668320
8
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications
thereof as to trade channels and purchasers, these clothing
items could be offered and sold to the same classes of
purchasers through the same channels of trade”); In re
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”). Even where the
goods are not identical, namely, newspapers vis-à-vis
magazines, the common trade channels for these goods may be
the same, e.g., newsstands. Likewise, the classes of
purchasers for both applicant’s newspapers and registrant’s
magazines will also be the same, including the ordinary
consumer exercising an ordinary amount of care. Thus, the
du Pont factors involving trade channels and classes of
purchasers also favor a finding of likelihood of confusion.
When we consider the record and the relevant
likelihood of confusion factors, we conclude that potential
purchasers of applicant’s and registrant’s goods, upon
encountering the marks 24 HORAS USA and 24HOURS for the
respective goods, are likely to believe that the sources of
Serial No. 76668320
9
these goods are in some way related or associated. As a
result, there is a likelihood of confusion.
DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act in view of Registration
No. 1590841 is affirmed.