University Frames, Inc.

Trademark Trial and Appeal Board

May 16, 2019

87747335 (T.T.A.B. May. 16, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 16, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re University Frames, Inc.
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Serial No. 87747335
_____

Joseph G. Chu of JCIP
for University Frames, Inc.
Alex Seong Keam, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____

Before Kuhlke, Lykos and Larkin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
University Frames, Inc. (“Applicant”) seeks to register on the Principal Register
the standard character mark CELEBRATION FRAMES (FRAMES disclaimed) for
goods ultimately identified as “[f]rames for diplomas and certificates; frames for
pictures and photographs; wooden frames for diplomas, certificates, artwork, pictures
and photographs; moldings for picture frames; picture frame brackets; memorabilia
display frames to hold college pictures, college memorabilia, sports memorabilia, art
Serial No. 87747335
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memorabilia and family memorabilia, including photographs, prints and artwork;
frames for artwork” in International Class 20.1
The Trademark Examining Attorney 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 registered standard character mark
CELEBRATIONS BY MIKASA for “picture frames,” in International Class 20,2 that
when used on or in connection with Applicant’s identified goods, it is likely to cause
confusion or mistake or to deceive.
Applicant appealed, and filed a request for reconsideration which was denied. The
case is fully briefed. For the reasons set forth below, we affirm the Section 2(d)
refusal.
I. Evidentiary Issue
Before discussing the substance of this appeal, we shall address the Examining
Attorney’s objection to Applicant’s submission with its appeal brief of pages from
Registrant’s website as untimely. Applicant counters that during prosecution, it
timely made of record 26 pages from Registrant’s website with its July 17, 2018
Response to Office Action, meaning that “numerous pages” from Registrant’s website
“have been part of the official record” since that date. Applicant asserts that the
submission of “updated images of Registrant’s website” with its appeal brief is

1 Application Serial No. 87747335, filed January 8, 2018 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), alleging 2011 as the date of first use anywhere and in commerce.
2 Registration No. 3754203, issued on March 2, 2010 on the Principal Register; Trademark
Act Sections 8 and 15 combined declaration accepted and acknowledged.
Serial No. 87747335
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“irrelevant” and “was used as a matter of convenience only.” Reply Brief, p. 2; 10
TTABVUE 3. Applicant justifies the late submission because it “did not identify any
particular new product in the updated images to discuss in detail for the Examining
Attorney to argue their inclusion should be barred here.” Id.
Applicant’s position represents a misunderstanding of Board rules and procedure
regarding the submission of Internet evidence. Making specific pages from a
particular website properly of record during prosecution does not mean that any
updated or additional pages from that website are automatically of record, or can be
made of record on appeal. It is only those pages that were retrieved on a particular
date, properly identified, and timely submitted that are of record. Cf. TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1208.03 (2018)
(“[Internet materials] should be identified by the full address (url) for the web page,
and the date it was downloaded, either by the information printed on the web page
itself, or by providing this information in an Office action or an applicant’s
response.”). If Applicant wished to submit updated pages from Registrant’s website,
it should have filed with the Board a separately captioned request for remand for the
purpose of submitting additional evidence to rebut the likelihood of confusion refusal.
See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“If the appellant or the examining
attorney desires to introduce additional evidence after an appeal is filed, the
appellant or the examining attorney should submit a request to the Board to suspend
the appeal and to remand the application for further examination.”). See, e.g., In re
Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1696 (TTAB 1992). Such a request
Serial No. 87747335
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for remand would also have to include a showing of “good cause” (i.e., a satisfactory
explanation as to why the evidence was not made of record prior to appeal), along
with the additional evidence sought to be introduced. See TBMP §§ 1207.01, 1207.02
and 1209.04.
In view thereof, the Examining Attorney’s objection is sustained and the objected-
to evidence submitted concurrently with Applicant’s appeal brief has been given no
consideration. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“[t]he record in the
application should be complete prior to the filing of an appeal. Evidence should not
be filed with the Board after the filing of a notice of appeal.”).
II. Likelihood of Confusion Refusal
We base our determination under Section 2(d) on an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also In re
Majestic Distilling Co., 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 goods. See In re Chatam Int’l Inc., 380
F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re i.am.symbolic,
llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of
confusion analysis considers all DuPont factors for which there is record evidence but
‘may focus … on dispositive factors, such as similarity of the marks and relatedness
of the goods [or services]’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
Serial No. 87747335
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1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). These factors and others are discussed
below. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944
(Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant and of
record” need be considered).
A. The Relatedness of the Goods and Similarity of Established, Likely to Continue
Trade Channels

Applicant’s and Registrant’s respective goods must be compared as they are
identified in the application and the cited registration. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Octocom Sys., Inc. v. Hous. Comps. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). Registrant’s goods consist solely of “picture frames,” while
Applicant’s goods include “frames for pictures.” While worded slightly differently, to
state the obvious, these goods are identical.
Applicant contends that the goods are marketed in disparate trade channels
because Applicant’s picture frames are specially ordered to customized specifications
while Registrant’s picture frames are prefabricated and sold via Registrant’s own
business-to-consumer (B2C) website as well as various online and brick-and-mortar
retailers such as Macy’s and Bed, Bath and Beyond. Applicant’s argument is
unconvincing. Because the goods, as identified, are in part identical and unrestricted
as to trade channels, we must presume that those particular goods travel in the same
ordinary trade and distribution channels and will be marketed to the same potential
consumers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (even though there was no evidence regarding channels of trade and classes of
Serial No. 87747335
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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); Am. Lebanese Syrian Associated
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
Accordingly, the du Pont factors pertaining to the relatedness of the goods3 as
described in the application and registration and the similarity of established, likely-
to-continue trade channels weigh in favor of finding a likelihood of confusion.
B. Strength of the Cited Mark
Applicant argues that the cited mark CELEBRATIONS BY MIKASA is entitled
to a narrow scope of protection because the consuming public is exposed to third-party
registrations of similar marks on similar goods or services. In support thereof,
Applicant made of record the following third-party registrations:
TM/RN/Disclaimer Register Services Owner

Principal
Register

“Retail store services
featuring engraved wooden
picture frames, engraved
metal picture frames,
engraved glassware such as
wine glasses, mugs, shot
glasses, glass jars, imprinted
t-shirts, embroidered caps,
embroidered bags,
embroidered shirts,
embroidered pants,
imprinted picture frames,
sublimated mugs, engraved
acrylic keepsakes, engraved
ETC Trade, LLC

3 See In re La Peregrina Ltd., 80 USPQ2d 1645, 1646 (TTAB 2008) (“[l]ikelihood of confusion
may be found based on any item that comes within the identification of goods [or services] in
the involved application and registration.”); see also, Tuxedo Monopoly, Inc. v. Gen. Mills Fun
Grp., 648 F.2d 1335 , 209 USPQ 986, 988 (CCPA 1981 ).
Serial No. 87747335
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Reg. No. 4670174
keychains, engraved desktop
accessories such as
notepads, card holders,
clocks, engraved wooden
pens, imprinted golf balls” in
International Class 35

CELEBRATIONS
REMINDERS

Reg. No. 4963185
Principal
Register
“Reminder services, namely,
providing periodic alerts to
customers for upcoming gift
giving events, occasions, and
holidays, to promote the sale
of artificial, fresh cut, and
dried flowers, wreaths, floral
bouquets and arrangements,
plants, trees, gifts, gift
baskets, gift boxes,
personalized gifts, gourmet
foods, wine, meats, fish,
cheeses, coffee, tea, nuts,
fresh fruit, dipped fruit,
popcorn, candy, chocolate,
cookies, brownies, cakes,
bakery items, home
decorating items and
accessories, bar ware,
collectibles, aromatherapy
gift baskets, jewelry, candles
and candle accessories,
plush toys and animals,
books, picture frames, photo
albums, arrangements made
of cut fruit and
arrangements made of fruit”
in International Class 45

1-800-
FLOWERS.COM,
INC.
CELEBRATIONS REWARDS

Reg. No. 4859831
Principal
Register
“Providing an incentive
rewards program which
enables a purchaser to earn
rewards, member discounts,
and redeem the rewards and
discounts, to promote the
sale of artificial, fresh cut,
and dried flowers, wreaths,
floral bouquets and
arrangements, plants, trees,
gifts, gift baskets, gift boxes,
personalized gifts, gourmet
foods, wine, meats, fish,
cheeses, coffee, tea, nuts,
fresh fruit, dipped fruit,
popcorn, candy, chocolate,
1-800-
FLOWERS.COM,
INC.
Serial No. 87747335
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cookies, brownies, cakes,
bakery items, home
decorating items and
accessories, bar ware,
collectibles, aromatherapy
gift baskets, jewelry, candles
and candle accessories,
plush toys and animals,
books, picture frames, photo
albums, arrangements made
of cut fruit and
arrangements made of fruit”
in International Class 35
CELEBRATIONS PASSPORT

Reg. No. 4855791
Principal
Register

“Customer loyalty and
discount membership
program services featuring
rewards in the “Form of
member discounts,
discounted shipping services
and discounted service
charges for artificial, fresh
cut, and dried flowers,
wreaths, floral bouquets and
arrangements, plants, trees,
gifts, gift baskets, gift boxes,
personalized gifts, gourmet
foods, wine, meats, fish,
cheeses, coffee, tea, nuts,
fresh fruit, dipped fruit,
popcorn, candy, chocolate,
cookies, brownies, cakes,
bakery items, home
decorating items and
accessories, bar ware,
collectibles, aromatherapy
gift baskets, jewelry, candles
and candle accessories,
plush toys and animals,
books, picture frames, photo
albums, arrangements made
of cut fruit and
arrangements made of fruit”
in International Class 35
1-800-
FLOWERS.COM,
INC.

See September 27, 2018 Request for Reconsiderations, pp. 14, 16, 18 and 20.
Active third-party registrations may be relevant to show that a mark or a portion
of a mark is descriptive, suggestive, or so commonly used that the public will look to
other elements to distinguish the source of the goods. See Jack Wolfskin Ausrustung
Serial No. 87747335
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Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F3d 1363,
116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC,
794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015); In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991); In re Dayco Prods.-Eaglemotive Inc., 9 USPQ2d
1910, 1911-12 (TTAB 1988); Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544
(TTAB 1983). “[The] real evidentiary value of third-party registrations per se is to
show the sense in which … a mark is used in ordinary parlance.” Juice Generation,
115 USPQ2d at 1674 (internal citation omitted). Even if “there is no evidence of actual
use” of “third-party registrations,” such registrations “may be given some weight to
show the meaning of a mark in the same way that dictionaries are used.” Tektronix,
Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ2d 693 (CCPA 1976).
In this case, three of the four third-party registrations are owned by the same
entity, diminishing their probative value. None of the above third-party registrations
are for marks identifying the actual goods of picture frames; rather, each registration
identifies a service involving these goods. But even assuming that the services listed
above are closely related to picture frames, we cannot find based on this very limited
number of marks owned by two entities incorporating the word “celebration” or the
plural thereof that consumers will look to the BY MIKASA element of Registrant’s
mark to distinguish the source of the goods. See Jack Wolfskin, 116 USPQ2d at 1136
(“extensive” evidence not only of third-party registrations but also “of these marks
being used in internet commerce” for the relevant goods); Juice Generation, 115
Serial No. 87747335
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USPQ2d at 1671 (uncontradicted testimony of “a considerable number” of third party
uses of similar marks, along with third-party registrations).
Thus, the evidence before us falls short of a showing that would allow us to
conclude that the CELEBRATIONS portion of the cited mark is diluted or weak for
picture frames. Accordingly, we deem this du Pont factor neutral.
C. The Marks
Next we compare the similarity or dissimilarity of the marks “in their entireties
as to appearance, sound, connotation and commercial impression.” Palm Bay Imps.
Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side
comparison of the marks, but instead ‘whether the marks are sufficiently similar in
terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs., 101
USPQ2d at 1721 (citation omitted). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ
39, 40 (CCPA 1971); In re Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). In other words, “marks ‘must be
considered … in light of the fallibility of memory’ and ‘not on the basis of side-by-side
comparison.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir.
2014) (citation omitted).
Our analysis cannot be predicated on dissection of the involved marks. See Stone
Serial No. 87747335
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Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014). Rather, we are obliged to consider the marks in their entireties.
Id. 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.”). Nonetheless, there is nothing improper 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 a consideration of the marks in their entireties. Stone
Lion, 110 USPQ2d at 1161.
We hasten to add that where, as here, the goods are identical, less similarity
between the marks is needed for us to find a likelihood of confusion. See, e.g., Viterra,
101 USPQ2d at 1908; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (“When marks would appear on virtually
identical goods or services, the degree of similarity necessary to support a conclusion
of likely confusion declines.”).
As noted above, the involved marks are CELEBRATION FRAMES and
CELEBRATIONS BY MIKASA. Applicant argues that the involved marks are
visually and audibly distinct, and engender different meanings. Applicant points to
specific differences: for example, that Applicant’s mark is comprised of three words,
not two; that the cited mark has “17% more letters” than Applicant’s mark; and that
both marks end with different letters of the alphabet. Brief, pp. 8-9; 7 TTABVUE 17-
Serial No. 87747335
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18. In addition, Applicant contends that the dominant portion of the cited mark is
“BY MIKASA” because Mikasa refers to Registrant and is a well-known brand.
Applicant’s arguments amount to a dissection of the marks and ignore their
overall similarities. The dominant portion of Applicant’s mark is the shared term
CELEBRATION or the plural thereof. Consumers are generally more inclined to
focus on the first word, prefix, or syllable in any trademark or service mark. See
Hunter Indus., Inc. v. The Toro Co., 110 USPQ2d 1651, 1660 (TTAB 2014); Presto
Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (stating that
“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 Imps., 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 23
USPQ2d at 1700 (upon encountering the marks, consumers will first notice the
identical lead word). We acknowledge that the addition of the generic word FRAMES
in Applicant’s mark results in visual and phonetic differences. However, the
disclaimed term FRAMES has greatly reduced source-identifying capacity because it
names Applicant’s products. See In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 752 (Fed. Cir. 1985). Consumers are more likely to look to the first term
CELEBRATION as identifying the source of Applicant’s goods
With regard to the cited mark, CELEBRATIONS BY MIKASA, likelihood of
confusion is not necessarily avoided between otherwise confusingly similar marks
merely by adding a house mark; if the dominant portion of both marks is the same,
Serial No. 87747335
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then the marks may be confusingly similar notwithstanding peripheral differences.
See, e.g., In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding
CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225
USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET
confusingly similar); In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986)
(holding applicant’s mark, SPARKS BY SASSAFRAS (stylized), for clothing, and
registrant’s mark, SPARKS (stylized), for footwear, likely to cause confusion, noting
that “[t]hose already familiar with registrant’s use of its mark in connection with its
goods, upon encountering applicant’s mark on applicant’s goods, could easily assume
that ‘sassafras’ is some sort of house mark that may be used with only some of the
‘SPARKS’ goods”).
Again, we acknowledge the specific differences in sound and appearance pointed
out by Applicant. These differences, however, are outweighed by the marks’
similarities. Thus, keeping in mind that the involved goods are in part identical, when
comparing the marks overall, they are similar in connotation and commercial
impression. This du Pont factor therefore weighs in favor of finding a likelihood of
confusion.
D. Buying Conditions
Lastly, we consider the du Pont factor involving the conditions under which the
goods are likely to be purchased, e.g., whether on impulse or after careful
consideration, as well as the degree, if any, of sophistication of the consumers.
Applicant argues that purchasers of both Applicant’s and Registrant’s high-end
Serial No. 87747335
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picture frames fall in the market segment of sophisticated, knowledgeable consumers,
making confusion “virtually impossible.” Brief, p. 19; 7 TTABVUE 28. Applicant
states that its frames range from $70 to “several hundred dollars” and Registrant’s
flatware and dinnerware products are priced at $100-$1000. In addition, Applicant
emphasizes that the size and materials for its picture frames are custom ordered,
meaning that there is a higher level of consumer engagement than with a “run-of-
the-mill” frame provider. Brief, p. 18; 7 TTABVUE 27.
Applicant’s arguments are unpersuasive. At the outset we note that Applicant’s
reliance on the pricing of Registrant’s dinnerware and flatware items is misplaced,
since these are not the identified goods in the cited registration. The record shows
Registrant’s picture frames ranging in price from $9.99-$300. See July 17, 2018
Response to Office Action, Exhibit B, pp. 45-46.
Notwithstanding the above, because the involved application and registration are
unrestricted, we must assume both that Applicant’s and Registrant’s brands of
picture frames would include those sold at all price points and manufactured from all
types of materials, and that they would be sold to the general public under the same
conditions. See Stone Lion, 110 USPQ2d at 1161. While we acknowledge that
consumers are likely to exercise a higher degree of care in the purchase of an
expensive picture frame or one that is custom-made, because neither Applicant’s nor
Registrant’s identifications are limited to custom made picture frames or picture
frames sold at relatively high prices, we must consider all types, including those mass
produced and sold at lower prices to the less knowledgeable consumer. See In re Jump
Serial No. 87747335
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Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (unrestricted and broad
identifications are presumed to encompass all goods of the type described). Moreover,
although picture frames in general may not be an “impulse purchase,” there is not
sufficient evidence in the record to support a finding that potential purchasers
exercise a degree of care such that the conditions of sale would weigh against a
likelihood of confusion, given the absence of any restrictions in the identifications.
We deem this factor neutral.
III. Conclusion
As noted above, Applicant’s goods are in part identical, meaning that we must
presume that these goods will be sold in the same trade channels. The marks overall
are similar in connotation and commercial impression, despite visual and phonetic
differences. The remaining du Pont factors discussed above are neutral. Accordingly,
we find that there is a likelihood of confusion.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.