No. 85544001 (T.T.A.B. Jan. 7, 2014)

True Story Studios, LLC

Trademark Trial and Appeal BoardJan 7, 2014

No. 85544001 (T.T.A.B. Jan. 7, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Hearing: Mailed: December 17, 2013 January 7, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re True Story Studios, LLC _____ Serial No. 85544001 _____ Holly B. Lance of Buchanan Ingersoll & Rooney PC for True Story Studios, LLC. Jennifer Button, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _____ Before Bergsman, Lykos and Kuczma, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: True Story Studios, LLC (“applicant”) filed a use-based application to register the mark TS TRUE STORY STUDIOS and design, shown below, for the following services, as amended, “non-commercial portrait and wedding photography services,” in Class 41. Applicant disclaimed the exclusive right to use the word “Studios.” Serial No. 85544001 2 The Trademark Examining Attorney refused to register applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark so resembles the mark True story., in stylized form, for “graphic design services,” in Class 42, as to be likely to cause confusion.1 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 the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. 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”). These factors, and any other relevant du Pont factors in the proceeding now before us, will be considered in this decision. A. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression. We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be 1 Registration No. 3724567, registered on December 15, 2009 on the Principal Register. Serial No. 85544001 3 critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that 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 so that confusion as to the source of the goods or services offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). While the marks are not identical, they are similar because both marks contain the term “True Story.” However, our analysis of the similarity or dissimilarity of the marks cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re National 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 dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion”). On the other hand, different features may be analyzed to determine whether the marks are similar. Price Candy Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, there is nothing improper in stating that, for rational reasons, more or less Serial No. 85544001 4 weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re National Data Corp., 224 USPQ at 751. We find that the term “True Story” is the dominant element of applicant’s mark. The word “Studio” is descriptive when used in connection with photography services and it has been disclaimed.2 It is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re National Data Corp., 224 USPQ at 752 (“Regarding descriptive terms, this court has noted that the descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion”); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). Another reason, we find that the term “True Story” is the dominant element of applicant’s mark is that the letters “TS” in applicant’s mark serve to emphasize or reinforce the term “True Story.” Finally, the design element of applicant’s mark is not so distinctive that consumers would focus on that feature of the mark. In the case of marks consisting of words and a design, the words are normally given greater weight because they 2 The word “studio” is defined inter alia as “a place where a photographer takes and produces photographs.” MACMILLAN DICTIONARY (2009-2012) (macmillandictionary.com) attached to the May 30, 2012 Office action. Serial No. 85544001 5 would be used by consumers to request the products. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). The period at the end of the registrant’s mark, if it is even noticed, does not alter the meaning or commercial impression of the term “True Story” or otherwise serve to distinguish the marks. The purchasing public will react to True story. as if it were TRUE STORY. See, e.g., B.V.D. Licensing v. Body Action Design, 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (B.A.D. will be viewed as the word “bad”); and Henry I. Siegel Co., Inc. v. Highlander, Ltd., 183 USPQ 496, 499 (TTAB 1974) (H.I.S. will be viewed as “his”). See also Winn’s Stores, Incorporated v. Hi-Lo, Inc., 203 USPQ 140 (TTAB 1979) (little if any trademark significance can be attributed to apostrophe and letter “s” in opposer’s mark “Winn’s” when compared with applicant’s mark “Win-Way.”); Goodyear Tire & Rubber Company v. Dayco Corporation, 201 USPQ 485, 489 n.4 (TTAB 1978) (“Fast-Finder” with hyphen is in legal contemplation substantially identical to “Fastfinder” without hyphen). In comparing the marks, we note that applicant’s mark TS TRUE STORY STUDIOS and design encompasses registrant’s entire mark True story. In such circumstances, likelihood of confusion has been found where the entirety of one mark is incorporated within another. See Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 Serial No. 85544001 6 (CCPA 1975) (applicant’s mark BENGAL LANCER for club soda, quinine water and ginger ale is likely to cause confusion with BENGAL for gin); Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155, 156 (TTAB 1982) (applicant’s mark EBONY DRUM for hairdressing and conditioner is likely to cause confusion with EBONY for cosmetics); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (applicant’s mark HEAD START COSVETIC for vitamins for hair conditioners and shampoo is likely to cause confusion with HEAD START for men’s hair lotion and after-shaving lotion). With respect to the meaning and commercial impression, both marks have the same meaning and engender the same commercial impression; that is, an accurate account, description or display. In view of the foregoing, we find that the marks are similar in terms of appearance, sound, connotation and commercial impression. B. The similarity or dissimilarity and nature of the services, established likely- to-continue channels of trade and classes of consumers. Applicant is seeking to register its mark for “non-commercial portrait and wedding photography services.” The recitation of services in the cited registration is “graphic design services.” Graphic design services “encompass all aspects of design for print advertising, web marketing, catalog and brochures.”3 It includes 3 Rowell Design Inc. (rowelldesign.com) attached to the December 16, 2012 Office action. Serial N the colo cards, le T registra Third-p that are that the from the TTAB 1 1988). R Mark 4 Design Graphic and imag Webster definitio (TTAB 1 dictionar GmbH, 7 5 Eyler C 6 We hav the servi listed. o. 8554400 r, layout, tterhead o Grap graph audie symb repre make he Trade tions for s arty regist based on y serve to same sou 993); In re epresenta ography (de design is de es) to conv Dictionary ns, Univ. of 982), aff’d, ies that exi 8 USPQ2d reative (ey e not includ ces that are 1 images, fon r a postca hic design ically con nce. Gra ols, imag sentation s stuff look mark Ex ervices lis rations w use in co suggest th rce. In re Mucky D tive regist signograph fined as “th ey informat (m-w.com). Notre Dam 703 F.2d 13 st in printe 1375, 1377 lercreative. ed the enti recited in t size and rd.4 is a cre vey a sp phic desi es and of ideas an pretty.5 amining A ted in bot hich indiv mmerce m at the list Albert Tro uck Musta rations ar Reg. No. 3394503 y.com) atta e art or pro ion or creat The Board e du Lac v. 72, 217 US d format or (TTAB 200 com) attach re recitatio applicant’s 7 style of p ative pro ecific me gn can be photos t d messag ttorney h the app idually cov ay have s ed service stel & Son rd Co. Inc e listed bel Servic Portra Graph ched to the fession of u e an effect; may take j J.C. Gourm PQ 505 (Fe have regul 6). ed to the M n of service application rint work cess. It ssage to compose o create es. … gra submitted lication an er a num ome proba s are of a t s Co., 29 U ., 6 USPQ2 ow.6 es it photogra ic design s December sing design also: a prod udicial noti et Food Im d. Cir. 1983 ar fixed edi arch 25, 20 s for each o and registr , including is used a targete d of word a visu phic desig numerou d the cite ber of dif tive value ype which SPQ2d 17 d 1467, 1 phy; ervices 16, 2012 Of elements uct of this ce of dictio p. Co., 213 ), including tions. In re 13 Office A f the registr ant’s regist ads, busi to d s, al n s third-p d registra ferent serv to the ex may ema 83, 1785- 470 n.6 (T fice action. (as typograp art.” Merr nary USPQ 594 online Red Bull ction. ations. On ration are ness arty tion. ices tent nate 1786 TAB hy iam- ly Serial N Mark GRAPH O photogr broadly of the a Inc., 92 limitatio of roofin 97 USP excavat ‘excavat a cited identific o. 8554400 ISTUDIO nly two aphy.” H described, ctivities em USPQ2d ns in the g tiles reg Q2d 1408 ors, and ors’”); In r registrati ation of g 1 of the th owever, w we must braced by 1366, 13 identificat ardless of , 1409 (T crawler e Elbaum, on are br oods as t Reg. No. 4196700 3575429 3198182 3139146 3229422 ird-party here the presume t the broad 68 (TTAB ion of good their mat TAB 2010 excavator 211 USPQ oadly desc o their na 8 Servic Portra Graph Photog Graph Photog Graph Photog Graph Photog Graph registratio services a hat the rec terminolo 2009) (b s, registra erial comp ) (applica s’ are l 639, 640 ribed and ture, type es it photogra ic design s raphy ser ic design s raphy ser ic design s raph and ic design s raphy ser ic design s ns specif s identifie itation of gy. See In ecause th nt’s roofin osition); I nt’s “‘com egally id (TTAB 19 there ar , channel phy; ervices vices; ervices vices; ervices digital ima ervices vices; ervices ically ide d in a re services en re G.B.I. e Board g tiles inc n re Wack pact exca entical t 81) (“wher e no limi s of trade ging servi ntify “por gistration compasse Tile and S does not ludes all t er Neuson vators, m o registra e the good tations in or classe ces; trait are s all tone read ypes SE, obile nt’s s in the s of Serial N purchas of the n 216 USP the inhe for ball limitatio design s exclude T showing services 1 7 Decemb o. 8554400 ers, it is p ature and Q 937, 94 rent natu oons to p ns into th ervices are portrait ph he Tradem the same . The exce . Desig er 16, 2012 1 resumed t type descr 0 (Fed. Ci re of Squir romotion e registra related to otography ark Exam company rpts set fo nography Office acti hat the sc ibed.”). Se r. 1983)(“T tco’s mark of soft d tion”). Th photogra . ining Att advertisin rth below (designogr on. 9 ope of the e also Squ here is no or goods t rinks. T us, to th phy servic orney also g photogr are represe aphy.webs registratio irtco v. To specific l hat restri he Board, e extent th es, the reg submitted aphy serv ntative. .com)7 n encomp my Corp., imitation cts the usa thus, im e record istration is excerpts ices and asses all g 697 F.2d 1 and nothin ge of SQU properly shows gra not limite from web graphic de oods 038, g in IRT read phic d to sites sign Serial N 2 3 8 Id. 9 Id. o. 8554400 . Dani . Rubic welc I beg photo forms grap I prov organ are consi pers I love enjoy Chihu 1 elle Moss ( at design ome to ru an as a w grapher, . … hic and w ide friend izations. starting f stent look onable ph capturin photograp ahuas. M daniellemo and photog bicat riter. I for it’s a eb design ly design s Whether y rom scrat and appro otograph g persona hing ever y photogr 10 ssportfolio raphy (ru evolved in ll commu . ervices for ou have an ch, I can ach to reac y. lities of pe ything fro aphy is cre .com)8 bicat.com) to a desi nication i small bus establish help yo h your aud ts and pe m big even ative and 9 gner and n differen inesses an ed brand u create ience. … ople, and ts to sma casual. … a t d or a I ll Serial N 4 5 10 Id. 11 March o. 8554400 . Rowe Los A Servi and m Grap Ange Photo Rowe photo studi fashi and m Grap Rowe all as catalo solut comp . Ck D 25, 2013 O 1 ll Design I ngeles Ph ng the nee odels. hic Desig les graphy ll Design graphy se o, we shoo on. We als odels. hic Design ll Design pects of de gs and ion-based any’s need esign (ckde ffice action nc. (rowell otography ds of Los A n and P * Inc. off rvices. A t everythin o offer por Inc.’s gra sign for p brochures. marketin s. sign.net)1 . 11 design.com and Graph ngeles sm rofessiona * * ers a fu t our Los g from in tfolios and phic desig rint advert We re g materi 1 )10 ic Design all busine l Photog ll range Angeles p dustrial e head sho n services ising, web search a als based Company. sses, acto raphy Lo of digit hotograph quipment ts for acto encompa marketin nd produc on you rs s al y to rs ss g, e r Serial No. 85544001 12 6. Dilberto photo & design (dilbertophotoanddesign.com),12 “a full service graphic design and photography studio in Houston, TX.” It’s our motto that each thing in life deserves to be well designed: from logos and corporate branding to kid’s birthday parties and invitations. Graphic Design for Businesses Our commercial graphic design services include: logo design and branding, advertising and marketing strategy development, print and web design, commercial photography, SEO, and social and creative marketing. … Graphic Design for Home When it comes to party designs and photography designs the sky is the limit. We can work with you to create something completely custom or you can choose from our contact [sic] us with any design project, no project is too big or too small. Dilberto photo & design also advertises personal photography services including weddings and portraits. The websites show graphic design services and photography services, including portrait photography, being advertised together (e.g., Dilberto photo & design; Ck Design: “custom graphic design & portrait photography”; and Graphic Design and Photography by Liza Franco). This shows that the two services move in the same channels of trade and are sold to the same classes of consumers. Applicant argues that the inherent nature of the parties’ services (“non- commercial portrait and wedding photography services” vs. “graphic design 12 Id. Serial No. 85544001 13 services”) “are completely different.”13 However, the issue is not whether consumers would confuse the services, but rather whether they would be confused as to the source of the services. Thus, “the degree of ‘relatedness’ must be viewed in the context of all the factors, in determining whether the services are sufficiently related that a reasonable consumer would be confused as to source or sponsorship. It is relevant to consider the degree of overlap of consumers exposed to the respective services, for as discussed in Philip Morris Inc. v. K2 Corp., 555 F.2d 815, 194 USPQ 81, 82 (CCPA 1977), even when goods or services are not competitive or intrinsically related, the use of similar marks can lead to the assumption that there is a common source.” In re Shell Oil Co., 992 F.2d 1204, 16 USPQ2d 1687, 1689 (Fed. Cir. 1993). In this case, the evidence shows that “graphic design services” and photography services, including portrait and personal event photography services, are rendered by the same entities and advertised together. Applicant argues that the third-party registrations and website evidence are not sufficient to show that the services are related because they comprise only a small percentage of graphic designers and photographers.14 With respect to the third-party registration evidence, applicant contends that there are 2554 live registrations for photography services, 2745 live registrations for graphic design services and only 71 active registrations for both graphic design and photography services in the USPTO database. With respect to the Internet evidence, applicant 13 Applicant’s Brief, pp. 2-3. 14 Applicant’s Brief, pp. 4-5. Serial No. 85544001 14 argues that in view of the millions of websites on the Internet, it is not difficult to find widely disparate services sold under the same mark by a single source.15 The fact that applicant was able to show that only a small percentage of registrations for graphic design services also include photographic services and vice versa does not rebut the Trademark Examining Attorney’s evidence showing the existence of third-party registrations for the same mark for both services and that the services are related. Applicant’s evidence merely shows that there are many registrations that are not registered for both services. See In re G.B.I. Tile and Stone Inc., 92 USPQ2d at 1370. With respect to the third-party Internet websites, it is not necessary that the examining attorney submit every third-party website advertising both photography services and graphic design services. Indeed, this would be impossible. The Board discourages submissions that are unnecessarily cumulative. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010) (Board criticized applicant for submitting over 300 pages of Internet material, much of which was duplicative or irrelevant); In re Couture, 60 USPQ2d 1317, 1318 n.2 (TTAB 1999) (many excerpts of articles retrieved by NEXIS search were repetitive or used the searched term for services not related to the applicant’s). See also TBMP § 1208.03 (June 2013) (“The Board discourages submissions of Internet material that are unnecessarily 15 In its February 26, 2013 response to an Office action, applicant submitted excerpts from websites advertising disparate services such as medical services and artwork, miniature golf and funeral home services, and tires and furniture. Serial No. 85544001 15 cumulative or not probative.”); Fed. R. Evid. 403 (the court may exclude relevant evidence if it is needlessly presenting cumulative evidence). In view of the foregoing, we find that the services are related, they move in the same channels of trade and are sold to the same classes of consumers. C. Degree of consumer care. Applicant argues that the relevant consumers will exercise a high degree of care and this minimizes any likelihood of confusion. According to applicant, the “selection of a photographer for portraits and weddings can be painstaking [sic] process, involving hours of pouring over photographer’s blogs, reading reviews and meeting with vendors. … Professional photography services are an investment and depending on the package, can cost hundreds to thousands of dollars.”16 In addition, “consumers of graphic design services will also spend substantial time and funds prior to selecting an artist. … [I]t is likely that Registrant would require its clients to sign a contract, and submit a deposit.”17 While many relevant consumers may exercise a high degree of care, the third-party registrations, whose recitation of services is unrestricted, and Internet evidence indicate that the services may be rendered to many different consumers who exercise varying degrees of care. With a wide range of consumers, not all can be expected to exercise a high degree of care as applicant contends. See In re Pierce Foods Corporation, 230 USPQ 307, 309 (TTAB 1986). See also Humana, Inc. v. Humanomics, Inc., 3 USPQ2d 1696, 1699 (TTAB 1987) (“while benefits managers 16 Applicant’s Brief, p. 10. 17 Id. Serial No. 85544001 16 might be considered to be careful purchasers of the respective services, the subscribers at the second level of contact are ordinary persons of diverse backgrounds and levels of expertise. Accordingly, no special standard of care is applicable to the confusion issue.”). In view thereof, we find that the degree of consumer care is a neutral factor. D. Balancing the factors. Because the marks are similar, the services are related and the services move in the same channels of trade and are sold to the same classes of consumers, we find that applicant’s mark TS TRUE STORY STUDIOS and design for “non-commercial portrait and wedding photography services” is likely to cause confusion with the mark True story. for “graphic design services.” Decision: The Section 2(d) refusal to register is affirmed.