87749874 (T.T.A.B. Sep. 16, 2019)

Wendy Widoff

Trademark Trial and Appeal BoardSep 16, 2019

87749874 (T.T.A.B. Sep. 16, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: September 16, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Widoff _____ Serial No. 87749874 _____ Zachary D. Messa of Johnson Pope Bokor Ruppel & Burns LLP for Wendy Widoff. Bianca Allen, Trademark Examining Attorney, Law Office 123, Susan Hayash, Managing Attorney. _____ Before Kuhlke, Lykos and Coggins, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: Wendy Widoff (“Applicant”) seeks to register on the Principal Register the standard character mark FREE-RANGE CHICKS for “t-shirts, shirts and hats” in International Class 25.1 Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s applied-for mark so resembles the 1 Application Serial No. 87749874, filed January 10, 2018 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), claiming a bona fide intent to use the mark in commerce. Serial No. 87749874 - 2 - registered mark FREE RANGE in standard characters on the Principal Register for “Undershirts; Underwear” in International Class 25,2 that it is likely to cause confusion or mistake or to deceive. Applicant’s Request for Reconsideration was denied, and the appeal of the final refusal is now fully briefed.3 For the reasons explained below, we affirm the refusal to register. I. Likelihood of Confusion Our determination under Section 2(d) is based 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). We must consider each du Pont factor for which there is evidence or argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). When analyzing these factors, the overriding concerns are not only to prevent buyer confusion as to the source of the goods, but also to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). 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 2 Registration No. 5131103, registered January 31, 2017. 3 Applicant’s submission of portions of the record with its appeal brief was superfluous. See, e.g., In re Lorillard Licensing Co., 99 USPQ2d 1312, 1315 (TTAB 2011) (attachment to brief of hundreds of pages of exhibits already of record not helpful). Serial No. 87749874 - 3 - F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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 the other relevant du Pont factors, are discussed below. A. The Marks The first du Pont likelihood of confusion factor involves an analysis of 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 Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (citing du Pont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d, Slip Op. No. 18–2236 (Fed. Cir. Sept. 13, 2019) (mem) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). “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., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Our analysis 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 Nat’l 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 Serial No. 87749874 - 4 - 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.”). To state the obvious, Applicant’s and Registrant’s standard character marks are highly similar in appearance and sound. Both marks commence with the same term “free range.”4 See Palm Bay, 73 USPQ2d at 1692 (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Applicant, however, argues that the first du Pont factor is dispositive because the involved marks project divergent meanings and commercial impressions due to the addition of the word CHICKS to its mark. See Kellogg Co. v. Pack’em Enter. Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). Applicant analogizes this case to In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) (no likelihood of confusion found between BOTTOMS UP for ladies’ and children’s underwear and BOTTOMS UP for 4 The hyphen in Applicant’s mark is a minor distinction. Cf. In re Vanilla Gorilla, L.P., 80 USPQ2d 1637 (TTAB 2006) (finding that the presence of a hyphen in the mark "3-0’s" does not negate mere descriptiveness of mark for automobile wheel rims). Serial No. 87749874 - 5 - men’s suits, coats and trousers) and In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (PLAYERS for men’s underwear and PLAYERS for shoes not likely to cause confusion because the term “players” implies a fit, style, color, and durability suitable for outdoor activities when applied to shoes, but “implies something else, primarily indoors in nature” when applied to men’s underwear) in which the Board found that identical marks projected different meanings and commercial impressions when considered in relation to the identified goods. Similarly, Applicant asserts that its FREE-RANGE CHICKS mark creates a double entendre, because it can refer to either “small hatchling allowed to range and forage with relative freedom” or “social commentary regarding women’s rights.” Applicant’s Brief, p. 2; 4 TTABVUE 6. Elaborating on this theme: [T]he juxtaposition of offensive use of the term “chicks” (referring to a woman or girl) with the term “free range” connotes that offensive or derogatory words do not define women or restrict their freedoms in any way. In fact the use of Applicant’s mark for clothing further empowers Applicant’s message by shedding the stereotype that fashion imbues women with strength. The double entendre is especially powerful in the current political climate where short quips and sound bites are routinely used in political commentary with the resurgence of the women’s movement . . . . (internal record citations omitted). Id. at 2-3; 4 TTABVUE 6-7. In support thereof, Applicant cites to an online article from THE GUARDIAN, a British newspaper, “regarding the offensiveness of the term ‘chick;’” an online article entitled “Strong Women Aren’t Defined by Fashion” from GuelphMercury.com; and an online article entitled “The Year Feminism Fought Back” posted on CNN.com about the #MeTooMovement and growing political power Serial No. 87749874 - 6 - of women. See October 22, 2018 Response to Office Action, pp. 43-54.5 The record further shows that “chick” may be used as an “informal, sometimes offensive” term for “girl [or] woman” according to the U.S. English version of MERRIAM-WEBSTER. See April 20, 2018 Office Action, p. 15. Applicant asserts that by contrast, the cited mark FREE RANGE, when used in connection with the identified goods, implies “freedom of movement of its users’ body parts within its underwear and undershirts.” Brief, p. 6; 4 TTABVUE 10. The evidence of record fails to support the double meaning Applicant urges us to find. “A “double entendre” is a word or expression capable of more than one interpretation. For trademark purposes, a “double entendre” is an expression that has a double connotation or significance as applied to the goods or services.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1213.05(c) (Oct. 2018). See, e.g., In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for bakery products); In re Tea and Sympathy, Inc., 88 USPQ2d 1062 (TTAB 2008) (holding THE FARMACY for retail store services featuring natural herbs and organic products and related health and information services relating to dietary supplements and nutrition); In re Simmons Co., 189 USPQ 352 (TTAB 1976) (THE HARD LINE for mattresses and bed springs). Even assuming that THE GUARDIAN enjoys a wide readership in the United States, a single article from a foreign publication, a U.S. English dictionary entry for “chick,” and articles about the 5 Record citations are to the downloadable .pdf version of the Trademark Search and Data Retrieval (“TSDR”) database. See, e.g., In re United Trademark Holdings, Inc., 122 USPQ2d 1796, 1797 n.5 (TTAB 2017) (Board in its opinion cited to the TSDR record in .pdf format). Serial No. 87749874 - 7 - #MeTooMovement and women’s fashion fail to support Applicant’s contention that U.S. consumers will distinguish the marks on this basis. As aptly put by the Examining Attorney: The Guardian is a British publication, and though it is written in English, differing connotations of words in British English and American English indicate that it is not clear that the U.S. consumer impression of the wording “chick” would be the same. Moreover, even if U.S. consumers may view the word “chick” derogatorily, it is not clear, and the applicant has not provided evidence, that those consumers would view the applied-for FREE-RANGE CHICKS as a social commentary on women’s rights, and particularly that consumers would view this message in relation to the applicant’s clothing goods. Even if we accept Applicant’s position as to the connotation and commercial impression of its mark, a similar connotation of social commentary on women’s rights could be applied to Registrant’s identified goods of “Underwear,” a clothing item that can also be worn by women. For this reason, it is likely that consumers will perceive Applicant’s mark FREE-RANGE CHICKS as a product line extension of the cited mark FREE RANGE. As such, Applicant’s and Registrant’s marks engender similar connotations and commercial impressions as well. This first du Pont factor therefore weighs in favor of finding a likelihood of confusion. B. The Goods Next, we compare the goods as they are identified in the involved application and cited registration, the second du Pont factor.6 See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom 6 Applicant presented no arguments regarding this du Pont factor in her brief. Serial No. 87749874 - 8 - Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). The goods need not be identical or even competitive to find a likelihood of confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Evidence of relatedness may include news articles and/or evidence from computer databases showing that the relevant goods are used together or used by the same purchasers; advertisements showing that the relevant goods are advertised together or sold by the same manufacturer or dealer; and/or copies of prior use-based registrations of the same mark for both applicant’s goods and the goods listed in the cited registration. See, e.g., In re Davia, 110 USPQ2d at 1817 (finding pepper sauce and agave related where evidence showed both were used for the same purpose in the same recipes and thus consumers were likely to purchase the products at the same time and in the same stores). As identified, the clothing items in the application and cited registration are unrestricted as to gender. Consistent therewith, the Examining Attorney has submitted substantial evidence demonstrating that it is not uncommon for Serial No. 87749874 - 9 - Applicant’s and Registrant’s goods to be sold under the same mark by entities manufacturing both sets of goods: J. Crew (https//www.jcrew.com) offering women’s underwear as well as women’s t-shirts, shirts and hats under the J. Crew mark. April 20, 2018 Office Action pp. 17-23. Old Navy (http://www.oldnavy.com) offering men’s underwear as well as women’s t-shirts, shirts and hats under the Old Navy mark. See id. at 31-37. Calvin Klein (http://www.calvinklein.com) offering men’s underwear and undershirts as well as men’s t-shirts, shirts and hats under the Calvin Klein mark. See November 8, 2018 Office Action, pp. 6-10. H&M (http://ww2.hm.com) offering women’s underwear as well as women’s t-shirts, shirts and hats under the H&M mark. See id. at 11-14. Ralph Lauren (https://www.ralphlauren.com) offering men’s underwear as well as men’s hats and shirts under the Ralph Lauren mark. See id. at 15-18. In view thereof, we find that the goods identified in the application and registration are related. Additionally, Applicant’s identification of “shirts” encompasses Registrant’s “undershirts”; therefore, these goods are legally identical. 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.”’). As such, this second du Pont factor also favors a finding of likelihood of confusion. C. Channels of Trade We direct our attention now to the established, likely-to-continue channels of trade, the third du Pont factor. Because the identifications in the application and Serial No. 87749874 - 10 - cited registration have no restrictions on channels of trade, we must presume that the goods travel in all channels of trade appropriate for such goods, which the record shows include direct business to consumer (“B2C”) manufacturer operated web sites specializing in clothing. In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 62 USPQ2d at 1005). In addition, both parties’ goods may be encountered by the same prospective consumers, which includes members of the general public shopping for t- shirts, shirts, hats, undershirts and underwear. Moreover, when as here, the respective identifications contain in part legally identical goods, without additional restrictions as to nature, type, channels of trade, or classes of purchasers, the goods are presumed to travel in the same channels of trade to the same class of purchasers. Viterra, 101 USPQ2d at 1908 (“[A]bsent restrictions in the application and registration, goods and services are presumed to travel in the same channels of trade to the same class of purchasers.”). Accordingly, the third du Pont factor regarding the similarity or dissimilarity of established, likely to continue trade channels favors a finding of likelihood of confusion. D. Strength of the Cited Mark We will now consider the number and nature of similar marks in use on similar goods and the commercial strength of the cited mark. In an ex parte appeal, “[t]he purpose of [an applicant] introducing third-party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers have been Serial No. 87749874 - 11 - educated to distinguish between different such marks on the bases of minute distinctions.” Palm Bay, 73 USPQ2d at 1694. See also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted). “[T]he strength of a mark is not a binary factor” and “varies along a spectrum from very strong to very weak.” Juice Generation, 115 USPQ2d at 1675-76 (internal citations omitted). “The weaker [the Registrant’s] mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Id. at 1676 (internal citations omitted). See also Palm Bay, 73 USPQ2d at 1693 (“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.”). “In determining the strength of a mark, we consider both its inherent strength based on the nature of the mark itself and its commercial strength, based on the marketplace recognition value of the mark.” Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011) (citing Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) and MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83 (4th ed. 2011) (“The first enquiry focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another’s use.”)). Serial No. 87749874 - 12 - Active third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive or suggestive. See, e.g., also Jack Wolfskin, 116 USPQ2d at 1136; Juice Generation, 115 USPQ2d at 1675-76; In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB 1988); Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). Properly used in this limited manner, third-party registrations are similar to dictionaries showing how language is generally used. See, e.g., Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987). Relying on a single third-party registration for the mark FREE RANGE for “Downloadable computer sports games” in International Class 9 and a wide variety of sporting goods in International Class 28, Applicant argues that the cited mark is weak for clothing. See Registration No. 5055645 submitted with October 22, 2018 Response, pp. 13-14. A single third-party registration for no items of clothing, with no evidence of third-party uses for clothing, fails to show that “customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different such marks on the bases of minute distinctions.” Palm Bay, 73 USPQ2d at 1694. See also Jack Wolfskin, 116 USPQ2d at 1136; Juice Generation, 115 USPQ2d at 1675-76 (internal citations omitted). Indeed, Applicant appears to misunderstand the appropriate level of evidence to support a Serial No. 87749874 - 13 - determination that a cited mark is weak. See In re Inn at St. John’s, 126 USPQ2d at 1745-46 (discussing limited probative value of a few third-party registrations in absence of evidence of third-party use). Accordingly, this factor is neutral. E. Other Factors The thirteenth and final du Pont factor pertains to “any other established fact probative of the effect of use.” du Pont, 177 USPQ at 567. Applicant contends that because the Examining Attorney withdrew its initial Section 2(d) refusal based on Registration No. 5175360 for the standard character mark MADE BY FREE RANGE HUMANS for “Clothing, namely, t-shirts, shirts, tank tops, sweatshirts, sweaters, jerseys, jumpers, pants, sweatpants, shorts, skirts, dresses, jackets, coats, vests, underwear, socks, warm-up suits, bodysuits, leotards, tights, leggings, leg warmers; headwear, namely, hats, caps, headbands, bandanas; clothing accessories, namely, belts, scarves, shawls, shoulder wraps, arm warmers, mittens, gloves; sandals” in International Class 25, Applicant’s mark is also entitled to registration. Applicant postulates that the presence of the word CHICKS in its mark negates any likelihood of confusion in the same manner that the addition of MADE BY and HUMANS negates any likelihood of confusion with Applicant’s mark. Applicant misses the point that MADE BY FREE RANGE HUMANS is a phrase with an entirely different appearance, sound, connotation and meaning. This factor is therefore neutral. Serial No. 87749874 - 14 - II. Conclusion We have carefully considered all of the evidence made of record, as well as all of the arguments related thereto. The similarities of the marks coupled with the related and legally identical nature of the goods and overlapping, presumptively identical trade channels leads us to the conclusion that prospective consumers are likely to confuse the involved goods as originating from or associated with or sponsored by the same entity. The remaining factors discussed above are neutral, and we treat as neutral any du Pont factors for which there is no evidence of record. While an addition to a mark may be sufficient to avoid a likelihood of confusion if the marks in their entireties convey significantly different commercial impressions (see, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression)) such is not the case here. Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.