Wendy, Inc.

Trademark Trial and Appeal Board

Jun 29, 2018

No. 86947908 (T.T.A.B. Jun. 29, 2018)

This Opinion is not a Precedent of the TTAB Mailed: June 29, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Wendy, Inc. _____ Serial No. 86947908 _____ Christine C. Washington for Wendy, Inc. David I, Trademark Examining Attorney, Law Office 114, Laurie Kaufman, Acting Managing Attorney. _____ Before Kuhlke, Ritchie and Hightower, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Wendy, Inc. (“Applicant”) seeks registration on the Principal Register of the mark for goods ultimately identified as “Career, cocktail, afterwork, formal attire, namely, jumpsuits, jumpers, dresses, gowns, skirts, slacks, pants, blouses, shoes, boots, hosiery, hats, socks, undergarments, lingerie, Serial No. 86947908 - 2 - swimwear,” in International Class 25.1 The application includes the following description of the mark and name consent: The mark consists of “Wendy Williams” in fanciful lettering with exaggerated “y” tail. The name(s), portrait(s), and/or signature(s) shown in the mark identifies “Wendy Williams” Hunter, whose consent(s) to register is made of record. 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, when used in connection with the identified goods, so resembles the mark WENDY O. WILLIAMS in standard characters, registered on the Principal Register for “T-shirts,” in International Class 25,2 as to be likely to cause confusion, mistake or deception. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration the Board resumed the appeal and briefs were filed. We affirm the refusal to register. As a preliminary matter, the Examining Attorney’s objection to evidence first submitted with the appeal brief is sustained. Trademark Rule 2.142(d), 37 C.F.R. 1 Application Serial No. 86947908 was filed on March 22, 2016, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. 2 Registration No. 3259731, issued on July 10, 2007, combined declaration of use and incontestability under Sections 8 & 15 accepted and acknowledged, renewed. The Registration also includes “series of pre-recorded audio tapes and compact discs featuring primarily punk music,” in International Class 9, but the Examining Attorney does not rely on these goods for the refusal. The Registration includes the following name statement: The name WENDY O. WILLIAMS does not identify a living individual. Serial No. 86947908 - 3 - § 2.142(d) (record in application should be complete prior to filing an appeal); In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014). To the extent any of the material was already of record, Applicant is advised that such practice is discouraged as it is of little utility to the Board. In re Allegiance Staffing, 115 USPQ2d 1319, 1323 (TTAB 2015); In re Sela Products LLC, 107 USPQ2d 1580, 1584 (TTAB 2013). I. Likelihood of Confusion When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Even within the du Pont list, only factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See 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.’”) (quoting Serial No. 86947908 - 4 - Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); 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.”). A. Similarity of the Goods/Channels of Trade/Consumers/Customer Care With regard to the goods, channels of trade, classes of consumers and customer care (the conditions under which sales are made), we must make our determinations based on the goods as they are identified in the application and cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming public may perceive [the respective goods of the parties] as related enough to cause confusion about the source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press Inc., 62 USPQ2d at 1004). Applicant’s identified goods, “Career, cocktail, afterwork, formal attire, namely, jumpsuits, jumpers, dresses, gowns, skirts, slacks, pants, blouses, shoes, boots, hosiery, hats, socks, undergarments, lingerie, swimwear,” are somewhat limited in their nature by the wording “Career, cocktail, afterwork, formal attire.” Registrant’s goods “t-shirts” are not limited in any manner. While it may be that Registrant’s t- Serial No. 86947908 - 5 - shirts are “tour memorabilia styled tee-shirts,” as Applicant asserts in its brief (13 TTABVUE 14), we cannot read such limitations into the registration.3 In addition, although it may be that “t-shirts” are not generally in the category of “career, cocktail, afterwork, formal attire,”4 the examples in the record show t-shirts and Applicant’s type of clothing items sold under the same mark, and sometimes worn together. To show the relationship between “t-shirts” and Applicant’s types of clothing items, the Examining Attorney submitted printouts of websites of Gucci, Banana Republic, and J Crew, showing clothing brands selling t-shirts and Applicant’s various items under the same mark. In addition, the record includes printouts from the website of the retail department store Bloomingdales, offering t-shirts and clothing, as identified by Applicant, under the same trademark.5 In some cases, the “career, cocktail, 3 While the registration also alludes to the connection with music in that the other identified goods are “series of pre-recorded audio tapes and compact discs featuring primarily punk music,” in International Class 9, each class in a registration stands separately and they do not serve to limit each other in terms of, for example, a trade channel restriction. General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1588 n.1 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (“Each International Class stands on its own for all practical purposes like a separate application, and we must make determinations for each separate class.”) (citing G&W Laboratories, Inc. v. G W Pharma Limited, 89 USPQ2d 1571, 1574 (TTAB 2009)). 4 Defined as “a lightweight, usually knitted, pullover shirt, close-fitting and with a round neckline and short sleeves, worn as an undershirt or outer garment,” RANDOM HOUSE UNABRIDGED DICTIONARY (2018) retrieved from www.dictionary.com. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 5 November 15, 2017 Office Action. Serial No. 86947908 - 6 - afterwork, formal attire” type skirts are paired with t-shirts illustrating the compatibility of such goods, as shown below:6 We agree with Applicant that the example of a high end designer such as Gucci may not be as probative, but the other examples are sufficiently probative to find “t- shirts” are sold under the same brand name as Applicant’s type of clothing, and as such these types of goods are related for likelihood of confusion purposes. Because there are no limitations as to channels of trade or classes of purchasers in either the application or cited registration, we must presume that Applicant’s and Registrant’s goods would move in all normal channels of trade and are available to 6 November 15, 2017 Office Action at 55, 59. Serial No. 86947908 - 7 - all classes of purchasers for such goods. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions or limitations into the registrant’s description of goods.”). As shown by the examples discussed above, the ordinary channels of trade for Applicant’s “career, cocktail, afterwork, formal attire” type of clothing and t-shirts both include online clothing retailers and department stores.7 Similarly, because there is no restriction in the identifications of goods in either the registration or the application Applicant’s arguments that the respective consumers (celebrity fans v. music fans) would exercise heightened care in the purchasing process are not persuasive.8 In view of the above, these du Pont factors weigh in favor a finding of likelihood of confusion. B. The Number and Nature of Similar Marks in Use on Similar Goods Applicant argues that the surname WILLIAMS is common in the clothing field and listed 75 registrations that incorporate the name WILLIAM/S in the mark asserted to be in class 25.9 In addition, Applicant listed 8 registrations also asserted 7 See Sept. 2, 2016 Office Action; Mar. 24, 2017 Office Action. 8 We note that Applicant’s offer to further amend its identification of goods is not only untimely, as noted by the Examining Attorney, but in all likelihood unavailing inasmuch as Registrant’s identification is broad and not restricted by trade channels. 9 October 4, 2017 Request for Reconsideration at 6-8. Serial No. 86947908 - 8 - to be for class 25 goods that incorporate the first name WENDY in the mark.10 We begin by noting that lists of registrations, in general, are of limited probative value because we do not have the information as to whether the list includes cancelled registrations which are generally not probative. Moreover, Applicant did not provide examples of use (e.g., printouts from retail sites on the Internet) and registrations alone are not evidence of use in the marketplace. AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) (“The existence of these registrations is not evidence of what happens in the market place or that customers are familiar with them nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive.”). 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 or services. See, e.g., In re i.am.symbolic, 123 USPQ2d at 1751; Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015). However, these third-party registrations submitted by Applicant have only one element in Registrant’s mark. They have no value in evaluating the strength or weakness of a 10 Id. at 8. Lists of registrations do not make registrations of record. Trademark Trial and Appeal Board Manual of Procedure § 1208.02 (June 2017). However, the Examining Attorney did not object to the lists but discussed them in his brief; therefore we have considered them for whatever probative value they may have. In re Total Quality Group Inc., 51 USPQ2d 1474, 1477 n.6 (TTAB 1999). Serial No. 86947908 - 9 - mark that contains WENDY as a first name and WILLIAMS as a last name registered together. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (emphasis added) (“Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”). We find this du Pont factor neutral. C. Similarity/Dissimilarity of the Marks Under this factor, we compare Applicant’s and Registrant’s marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imports v. Veuve Clicquot, 73 USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). While Applicant’s goods are somewhat restricted by the wording “career, cocktail, afterwork, formal attire,” this restriction does not remove these goods from being available to the ordinary clothing consumer, including those purchasing t-shirts, thus the average customer is an ordinary consumer of the respective goods. Applicant’s mark includes some stylization ; however, because Registrant’s mark is in standard characters it is not limited to any particular Serial No. 86947908 - 10 - depiction. The rights associated with a mark in standard characters reside in the wording and not in any particular display. In re RSI Sys., LLC, 88 USPQ2d 1445 (TTAB 2008); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); TMEP 1207.01(c)(iii) (Oct. 2017). Thus, we must consider Registrant’s mark “regardless of font style, size, or color.” Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011). The only difference in the marks in appearance and sound is the addition of the initial O. in the mark WENDY O. WILLIAMS. Turning to meaning and connotation, as noted above, the application includes the acknowledgment that WENDY WILLIAMS is a specific living individual whose consent is of record.11 The record also establishes that Wendy Williams is a media personality on radio and television. While the registration indicates WENDY O. WILLIAMS is not a living individual, the record demonstrates that the mark in this registration does name a specific individual. Wendy O. Williams is reported to have been a punk rock musician and performance artist who is deceased.12 Although it may be that the fan base of these individuals will be aware of the difference in connotation 11 We note, however, that the technicality of the name consent does not affect our analysis on the issue of likelihood of confusion. Cf. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (disclaimer has no legal effect on the issue of likelihood of confusion, public is unaware of what words have been disclaimed). 12 October 4, 2017 Request for Reconsideration at 16 Exh. A-2. This exhibit consists of a search result summary on the search terms “wendy o williams.” In general, such lists have little probative value because there may be insufficient text to show the context within which a term is used. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007). However, in this case, there is sufficient information from which to understand that, at a minimum, consumers are exposed to the information that Wendy O. Williams was an American singer, songwriter and actress and was the lead singer of the shock-punk band the Plasmatics. Serial No. 86947908 - 11 - and commercial impression and not be confused,13 we must consider those consumers who are not familiar with either or both Wendy Williams and Wendy O. Williams. The addition of the initial to separate the first and last names is not sufficient to distinguish these marks. Applicant argues that Registrant emphasizes the O in its mark in its other uses (e.g., using it in the shortened forms Wendy O or WOW),14 however we are constricted to analyze the applied-for mark which is the full name WENDY O. WILLIAMS. Moreover, to the extent Applicant argues that the marks may be used differently, such arguments are not within the purview of registration. J. Thomas McCarthy, 3 MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 19:3 (5th ed. 2018). We find the marks, taken in their entireties, to be more similar than dissimilar in appearance, sound, connotation and commercial impression such that this du Pont factor weighs in favor of finding a likelihood of confusion. II. Balancing of Factors When we consider that the goods are related, the channels of trade and consumers overlap, and the marks are similar, we find that confusion is likely. Decision: The refusal to register Applicant’s mark is affirmed. 13 Applicant’s arguments regarding how well known the Applicant is, and the fan base of Registrant touch on the factor of fame. In the context of an ex parte appeal, the Board generally finds the factor of fame to be neutral. In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009). However, we have considered these arguments in the context of the connotation and commercial impression of the marks, which is how Applicant presented the arguments in its brief. 14 See Exhs. A-2 and B-2 attached to October 24, 2017 Request for Reconsideration at 16, 19- 20.