Vision Works LLC

Trademark Trial and Appeal Board

Jul 2, 2013

No. 85467149 (T.T.A.B. Jul. 2, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: July 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Vision Works LLC
________

Serial No. 85467149
_______

Jonathan O. Owens of Haverstock & Owens LLP for Vision
Works LLP.

John D. Dalier, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Bucher, Cataldo and Wolfson,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Vision Works LLC filed, on November 8, 2011, an
intent-to-use application, under Section 1(b) of the
Trademark Act, 15 U.S.C. 1051(b), to register on the
Principal Register the mark TIME DOT (in standard
characters) for “time expiration devices, namely, self-
adhesive tabs and strips for automatic notification of
elapsed time” in International Class 16. In response to
the trademark examining attorney’s requirement, applicant
disclaimed “TIME” apart from the mark as shown.
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In addition, the examining attorney refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when
applied to applicant’s goods, so resembles the previously
registered mark TIMESTRIP (in typed or standard characters)
for “adhesive time expiration labels, stickers and self
adhesive pads for automatic notification of lapsed time” in
International Class 16.1
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that the marks are dissimilar; that
due to the descriptive or suggestive nature of the word
“TIME” as applied to related goods, third-party
registration of similar marks indicates that “TIME”
formative marks can coexist on the register as applied to
such goods; and that because of the foregoing, there is no
likelihood of confusion, even as to related or overlapping
goods. In support if its contention, applicant has made of
record copies of four third-party registrations, excerpted
below:2

1 Registration No. 2720739 issued on June 3, 2002. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.
2 Applicant also made of record a pending third-party
application, which possesses no probative value. See
Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463
(TTAB 2003)(applications show only that they have been filed).

Ex Parte Appeal No. 85467149

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Registration No. 2145139 for the mark TIMEBADGE
for “computer printable badges and supplies,
namely, self-adhesive name badges, security
badges, parking control stickers, self-adhesive
security badge labels, inventory control labels,
forms for meeting and convention badges, card and
card inserts for plastic holders, identification
badges, photo identification badges; membership
cards, seasonal and recreational passes, tickets,
parking permits and preferred customer cards;”

Registration No. 2449870 for the mark TIME’S UP
for “paper name badges and name badge holders;”

Registration No. 3343824 for the mark TIMETRACKER
for “daily planners, binders for daily planners;”
and

Registration No. 2246145 for the mark TIMEWISE
for “Telephone and mail order catalogs in the
field of scheduling, organizing and time
management products; and scheduling, organizing
and time management products, namely, scheduling
and tracking planners hung on a wall; planning
and data tracking boards hung on a wall; magnetic
boards.”

The examining attorney maintains that the goods are
virtually identical or at least closely related, their
trade channels unlimited, and that the marks are similar.
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
Ex Parte Appeal No. 85467149

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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, 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 turn to consider the du Pont factor regarding
the similarity/dissimilarity between the goods. When
comparing the goods, the respective identifications in the
application and the cited registration control the
analysis. In re Giovanni Food Co., 97 USPQ2d 1990, 1991
(TTAB 2011). In this case, applicant does not argue that
the goods are dissimilar. Indeed, both identifications
include adhesive tabs and strips on the one hand, and
adhesive labels, stickers and pads on the other, for
“automatic notification of (e)lapsed time.” Thus, on the
face of their respective identifications, applicant’s goods
are highly similar, if not virtually identical, to those in
the cited registration.
Turning now to our determination regarding the
relatedness of the parties’ channels of trade and classes
of consumers, again we must look to the goods as identified
Ex Parte Appeal No. 85467149

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in the involved application and cited registration. See
Octocom Systems, Inc. v. Houston Computers Services Inc.,
16 USPQ2d at 1787 (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 177 USPQ 76, 77
(CCPA 1973).
In this case, neither applicant’s nor registrant’s
identification of goods recites any limitations on the
channels of trade in which the goods may be encountered or
the classes of consumers to whom they may be marketed.
Thus, absent any restrictions in the identifications of
goods, registrant’s goods are presumed to move in all
normal channels of trade and be available to all classes of
potential consumers, including the trade channels in which
applicant’s goods may be encountered. See In re Elbaum,
211 USPQ 639, 640 (TTAB 1981).
The close similarity, if not virtual identity, between
the goods, trade channels and classes of purchasers are
Ex Parte Appeal No. 85467149

6
factors that weigh heavily in favor of a finding of
likelihood of confusion.
We next turn to the du Pont 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 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 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); and Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Under actual
marketing conditions, consumers do not necessarily have the
luxury of making side-by-side comparisons between marks,
and must rely upon their imperfect recollections. See
Ex Parte Appeal No. 85467149

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Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259
(TTAB 1980).
In this case, applicant’s TIME DOT mark is similar to
registrant’s TIMESTRIP mark to the extent that both share
the identical term “TIME” as the first word thereof. We
observe that “TIME” is disclaimed in applicant’s mark and
appears to be, at best, highly suggestive of the goods
recited in both the application and registration.
Nonetheless, the significance of the word “TIME” is
reinforced by its location as the first word in the marks.
Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d
1895, 1897) TTAB 1988)(“it is often the first part of a
mark which is most likely to be impressed in the mind of a
purchaser and remembered”). See also Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992)(upon encountering the
marks, consumers must first notice the identical lead
word).
We agree with applicant that the second word in the
marks at issue, namely “DOT” and “STRIP,” differ in
appearance and sound. However, both suggest the shape of
the goods, i.e., that applicant’s goods may resemble an
adhesive dot while registrant’s goods may resemble an
adhesive strip. As a result, when the marks TIME DOT and
Ex Parte Appeal No. 85467149

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TIMESTRIP are viewed in their entireties, they convey a
similar connotation, namely, that of adhesive dots or
strips used for automatic notification of (e)lapsed time.
Similarity in any one of the elements of sound, appearance,
meaning, or commercial impression is sufficient to support
a determination of likelihood of confusion. See Krim-Ko
Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526
(CCPA 1968) (“It is sufficient if the similarity in either
form, spelling or sound alone is likely to cause
confusion”); and In re White Swan Ltd., 8 USPQ2d 1534, 1535
(TTAB 1988) (“In appropriate cases, a finding of similarity
as to any one factor (sight, sound or meaning) alone ‘may
be sufficient to support a holding that the marks are
confusingly similar’”) (citations omitted)).
In view of the foregoing, we find that the
similarities in the marks outweigh the differences, and
that this factor further weighs in favor of a finding of
likelihood of confusion.
In coming to our determination herein, we have
considered applicant’s evidence of four third-party
registrations for “TIME” formative marks. However, such
evidence is entitled to limited probative value. The
registrations are not evidence of use of the marks shown
therein. Thus, they are not proof that consumers are
Ex Parte Appeal No. 85467149

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familiar with such marks so as to be accustomed to the
existence of the same or similar marks in the marketplace.
See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004,
177 USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc. v.
Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). The Federal
Circuit has made it clear that:
The probative value of third-party trademarks depends
entirely upon their usage. E.g., Scarves by Vera,
Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 1173 (2d
Cir. 1976) (“The significance of third-party
trademarks depends wholly upon their usage. Defendant
introduced no evidence that these trademarks were
actually used by third parties, that they were well
promoted or that they were recognized by consumers.”)…
As this court has previously recognized where the
“record includes no evidence about the extent of
[third-party] uses … [t]he probative value of this
evidence is thus minimal.” Han Beauty, Inc. v.
Alberto-Culver Co., 236 F.3d 1333, 1338 (Fed. Cir.
2001) (emphasis added).

Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1689, 73 USPQ2d 1689, 1693 (Fed.
Cir. 2005).
Here, applicant has presented no evidence of use so we
must accord this evidence minimal weight. Even if we
considered the registrations, we note that they recite less
similar goods such as self-adhesive name badges and
security badge labels (No. 2145139), paper name badges and
badge holders (No. 2449870), daily planners and binders
therefor (No. 3343824), and scheduling and tracking
Ex Parte Appeal No. 85467149

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planners and boards hung on a wall (No. 2246145). We add
that it is proper to consider these types of registrations
as a form of a dictionary definition. In re Box Solutions
Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (“[T]hird-party
registrations can be used in the manner of a dictionary
definition to illustrate how a term is perceived in the
trade or industry”). See also In re J.M. Originals Inc., 6
USPQ2d 1393, 1394 (TTAB 1987) (“[T]hird party registrations
are of use only if they tend to demonstrate that a mark or
a portion thereof is suggestive or descriptive of certain
goods and hence is entitled to a narrow scope of
protection”). However, the existence of these four
registrations is insufficient to support a finding in this
case that the mark in the cited registration is weak or
entitled only to a narrow scope of registration.
Finally, the coexistence of the cited registration
with applicant’s prior application for the same mark and
goods as recited in the application at issue herein, which
was approved for publication and abandoned after the Office
issued a notice of allowance, does not compel a different
result. As often stated, each case must be decided on its
own facts, and occasionally an applicant even with
registrations for the same or very similar marks may be
unable to obtain subsequent registrations. See In re
Ex Parte Appeal No. 85467149

11
Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994). See also
In re Nett Designs Inc., 236 F.3d 139, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001) (“Even if prior registrations had some
characteristics similar to [applicant’s] application, the
PTO’s allowance of such prior registrations does not bind
the Board or this court.”). Further, any suggestion that
there has been no actual confusion between the marks, based
on the coexistence of applicant’s previously allowed
application and the cited registration, is entitled to
little probative value in the context of this ex parte
appeal. In re Majestic Distilling Co., Inc., 65 USPQ2d at
1205.
In sum, the relevant du Pont factors weigh in favor of
affirming the refusal. We conclude that purchasers
familiar with registrant’s adhesive time expiration labels,
stickers and self adhesive pads sold under the mark
TIMESTRIP would be likely to believe, upon encountering
applicant’s mark TIME DOT for adhesive time expiration tabs
and strips, that the goods originated with or are somehow
associated with or sponsored by the same entity. That is
to say, purchasers familiar with registrant’s mark and
goods are likely to view applicant’s mark TIME DOT for
closely related or virtually identical goods as a brand
Ex Parte Appeal No. 85467149

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extension of registrant’s line of adhesive time expiration
devices sold under its mark TIMESTRIP.
To the extent that any of applicant’s points raises a
doubt about likelihood of confusion, that doubt is required
to be resolved in favor of the prior registrant. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988); and In re Martin's Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.