VCM Products LLC

Trademark Trial and Appeal Board

Jun 28, 2017

No. 86702329 (T.T.A.B. Jun. 28, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: June 28, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re VCM Products LLC
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Serial No. 86702329
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Joseph E. Sutton of Law Offices of Ezra Sutton, P.A.,
for VCM Products LLC.
John M. Gartner, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Mermelstein, Masiello, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant VCM Products LLC seeks registration on the Principal Register of the
mark BUGGYBANDS, in standard characters, for “insect repellants contained in
bracelets, arm bands and leg bands.”1
The Trademark Examining Attorney has refused registration under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), due to a likelihood of confusion with the

1 Application Serial No. 86702329 was filed on July 23, 2015 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce.
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marks BUG BAND in standard characters2 and ,3 both previously
registered on the Principal Register to the same owner for “insect repellants” in
International Class 5. The Examining Attorney also made final a requirement that
the classification of the goods in the subject application be amended from
International Class 26 to International Class 5.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
First, the Board will not review a requirement for amendment of the classification
of goods because it is not a substantive issue. In re Faucher Indus. Inc., 107 USPQ2d
1355, 1357-58 (TTAB 2013); In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969) (“It is
apparent that the question of proper classification is not a substantive one and
therefore not a matter for appeal.”); see also TMEP § 1704 (April 2017) (stating that
“a requirement for amendment of the classification is a procedural matter that may
only be reviewed on petition” to the Director). Classification is within the sole
discretion of the Office, and Examining Attorneys are authorized to reclassify goods
or services recited in an application without an applicant’s approval. Groening v.

2 Registration No. 3626228, issued May 26, 2009; combined Section 8 & 15 declaration
accepted and acknowledged July 12, 2014. The registration issued pursuant to a claim of
acquired distinctiveness as to the mark as a whole.
3 Registration No. 2855276, issued June 15, 2004; renewed June 15, 2014. The description of
the mark states: “The mark consists of 4 insects playing instruments over the words ‘BUG
BAND’.” Color is not claimed as a feature of the mark.
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Missouri Botanical Garden, 59 USPQ2d 1601, 1603 (Comm’r Pat. 1999); see also
TMEP § 1401.03(b) (April 2017) (“The examining attorney may amend or correct
classification through an examiner’s amendment, without prior authorization by the
applicant.”).4
Turning to the substantive refusal, our determination under Section 2(d) is based
on an analysis of all 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 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 or 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.”).
We first consider the second and third du Pont factors, the similarity of the goods,
channels of trade, and classes of customers. We must look to the goods as identified
in the involved application and cited registration, not to any extrinsic evidence of
actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1162 (Fed. Cir. 2014).

4 We note that the following identification was added to the USPTO Acceptable Identification
of Goods and Services Manual (ID Manual) in Class 5 in November 2016, while this appeal
was pending: “Wearable insect repelling devices in the nature of {specify, e.g., bracelets,
bands, etc.} sold pre-filled with insect repelling preparations.”
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Registrant’s identified goods, “insect repellants,” encompass Applicant’s more
narrowly identified “insect repellants contained in bracelets, arm bands and leg
bands.” See, e.g., In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB
2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily
encompasses Registrant’s narrowly identified ‘residential and commercial
furniture.’”). Thus, the identified goods are legally identical, and the second du Pont
factor weighs heavily in favor of finding a likelihood of confusion.
Because there are no limitations as to channels of trade or classes of purchasers
in the description of goods in the cited registration, we presume that Registrant’s
goods move in all channels of trade normal for such goods and are available to all
potential classes of ordinary consumers. See Citigroup Inc. v. Capital City Bank
Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Integrated
Embedded, 120 USPQ2d 1504, 1515 (TTAB 2016). Moreover, because the goods
described in the application and the cited registration are legally identical, we must
presume that the channels of trade and classes of purchasers are the same. In re Fat
Boys Water Sports LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016); see also In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board
entitled to rely on this legal presumption in determining likelihood of confusion). In
our likelihood of confusion analysis, these findings under the third du Pont factor also
strongly support a finding that confusion is likely.
We next address the first du Pont likelihood of confusion factor, focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
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connotation and commercial impression.” Palm Bay Imps. 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). Where, as here, the marks would appear
on legally identical goods, the degree of similarity necessary to support a conclusion
of likely confusion declines. In re Viterra, 101 USPQ2d at 1908; In re Bay State
Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016).
Here, we focus on Registration No. 3626228 for the mark BUG BAND in standard
characters, which we find to be the cited mark more relevant to our analysis.
Accordingly, if we find a likelihood of confusion as to this mark, we need not find it
as to Registrant’s composite mark . On the other hand, if we do not
find a likelihood of confusion with Registrant’s standard character mark, we also
would not reach that conclusion as to the other cited registration. See In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
We find Applicant’s mark, BUGGYBANDS, to be highly similar to the cited mark
BUG BAND. Applicant’s mark is easily recognizable as the concatenated words
“buggy” and “bands,” which are nearly identical to the terms in Registrant’s mark
BUG BAND. That Applicant’s mark is in plural form while Registrant’s mark is
singular does not distinguish the two. See, e.g., Weider Publ’ns, LLC v. D&D Beauty
Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (“It is will established that
trademarks . . . consisting of the singular and plural forms of the same term are
essentially the same mark.”). The only material difference is the syllable “-gy” added
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to “bug” in Applicant’s mark. Although this slightly distinguishes the two marks
visually and aurally, it does not significantly differentiate their meanings within the
context of the identified goods. Indeed, Applicant argues that its mark “connotes
bands that are worn to repel bugs, or ‘buggys.’” Appeal Brief at 5, 8 TTABVUE 8. The
same can be said of Registrant’s mark BUG BAND. We find that the marks make
very similar commercial impressions. For all of these reasons, the first du Pont factor
supports a finding that confusion is likely.
We have found that the first, second, and third du Pont factors favor a likelihood
of confusion. Applicant and the Examining Attorney have not presented evidence
regarding other du Pont factors. To the extent that such du Pont factors may
nonetheless be applicable, we treat them as neutral.
We find that Applicant’s mark is likely to cause confusion with the mark in cited
Registration No. 3626228 when used for the goods identified in the application.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.