Whiteflash.com, Inc.

Trademark Trial and Appeal Board

Sep 30, 2009

No. 77353524 (T.T.A.B. Sep. 30, 2009)

Mailed:
Sept. 30, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Whiteflash.com, Inc.
________

Serial No. 77353524
_______

Neil M. Zipkin of Amster, Rothstein & Ebenstein LLP for
Whiteflash.com, Inc.

Lana H. Pham, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Quinn, Grendel and Rogers, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Whiteflash.com, Inc. (applicant) seeks registration on
the Principal Register of the mark WHITEFLASH ACA (in
standard character form) for goods identified in the
application as “jewelry; diamonds; precious stones; jewelry
made of precious stones; rings being jewelry.”1

1 Serial No. 77353524, filed on December 17, 2007. The
application is based on applicant’s asserted bona fide intention
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77353524
2
The Trademark Examining Attorney has issued a final
refusal of registration, on the ground that applicant’s
mark, as applied to the goods identified in the
application, so resembles the mark depicted below,

previously registered on the Principal Register for goods
identified in the registration as “gold chains,” as to be
likely to cause confusion. Trademark Act Section 2(d), 15
U.S.C. §1052(d).
Applicant has appealed the final refusal.
The record consists of the application file, printouts
of thirteen third-party registrations submitted by the
Trademark Examining Attorney, and printouts from several
third-party websites submitted by the Trademark Examining
Attorney.
The appeal is fully briefed.
After careful consideration of the evidence of record
and the arguments of counsel, we affirm the refusal to
register.

to use the mark in commerce. Trademark Act Section 1(b), 15
U.S.C. §1051(b).

Ser. No. 77353524
3
Initially, we reject applicant’s objection in its
reply brief to the third-party registrations referenced by
the Trademark Examining Attorney in her appeal brief.
Applicant is incorrect in contending that these
registrations were not made of record prior to appeal. The
Trademark Examining Attorney attached printouts of these
registrations (among others) to her first Office action of
March 26, 2008 and to her final Office action of September
4, 2008.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relatedness of the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Ser. No. 77353524
4
We begin with the second du Pont factor, which
requires us to determine the similarity or dissimilarity of
the goods as identified in the application and in the cited
registration, respectively. “Likelihood of confusion may
be found based on any item that comes within the
identification of goods in the involved application and
registration.” In re La Peregrina Ltd., 86 USPQ2d 1645,
1647 (TTAB 2008). In comparing the goods identified in the
application and in the cited registration, respectively,
“…it is the identification of goods that controls, not what
extrinsic evidence may show about the specific nature of
the goods. ... An applicant may not restrict the scope of
the goods covered in the cited registration by argument or
extrinsic evidence.” Id., 86 USPQ2d at 1646.
Applying these principles in the present case, we find
as follows.
We find that the goods identified in the cited
registration, “gold chains” are legally encompassed within
the goods identified in applicant’s application as
“jewelry.” We also find that they are related to the other
jewelry items identified in applicant’s application. The
Trademark Examining Attorney has submitted numerous third-
party use-based registrations which include in their
identifications of goods both the goods identified in
Ser. No. 77353524
5
applicant’s application and the goods identified in the
cited registration. Although such registrations are not
evidence that the marks shown therein are in use or that
the public is familiar with them, they nonetheless have
probative value to the extent that they serve to suggest
that the goods listed therein are of a kind which may
emanate from a single source under a single mark. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993);
and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB
1988). Based on this evidence, and on the nature of the
goods themselves, we find that applicant’s goods and the
goods identified in the cited registration are legally
identical in part and otherwise closely related. The
second du Pont factor therefore weighs in favor of a
finding of likelihood of confusion.
Under the third du Pont factor, we consider evidence
pertaining to the similarity or dissimilarity of the trade
channels in which and classes of purchasers to whom the
goods identified in applicant’s application and in
registrant’s registration are marketed. There are no trade
channel or purchaser restrictions or limitations in either
applicant’s identification of goods or registrant’s
identification of goods, and we therefore presume that the
goods would be marketed in all of the normal trade channels
Ser. No. 77353524
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and to all of the normal classes of purchasers for such
goods. In re Elbaum, 211 USPQ 639 (TTAB 1981). Moreover,
to the extent that applicant’s goods are legally identical
to the goods identified in the cited registration, we find
that the goods also move in identical trade channels and to
identical classes of purchasers. In re Smith & Mehaffey,
31 USPQ2d 1531 (TTAB 1994). Also, the Trademark Examining
Attorney has submitted evidence from third-party jewelry
retailers such as Kay Jewelers and Zales which shows that
goods such as those of applicant and registrant are sold
together on the stores’ websites. For all of these
reasons, we find that the respective goods are marketed in
the same trade channels and to the same classes of
purchasers. The third du Pont factor therefore weighs in
favor of a finding of likelihood of confusion.
Under the fourth du Pont factor, we consider
conditions of purchase. Although jewelry items might be
expensive in some instances, they are not necessarily so.
As pointed out by the Trademark Examining Attorney, the
website of Kay Jewelers offers for sale a diamond necklace
for under fifty dollars. We also find that the purchasers
of jewelry items would include ordinary consumers who would
exercise only a normal degree of care in making their
purchasing decisions for these goods when they are
Ser. No. 77353524
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relatively inexpensive in price. Moreover, it is well-
settled that even sophisticated purchasers who are
knowledgeable as to the goods are not necessarily
knowledgeable in the field of trademarks or immune to
source confusion arising from the use of confusingly
similar marks on or in connection with the goods. See
Giersch v. Scripps Networks Inc., 90 USPQ2d 1020 (TTAB
2009); In re Wilson, 57 USPQ2d 1863 (TTAB 2001); In re
Decombe, 9 USPQ2d 1812 (TTAB 1988). Even if we were to
assume that applicant’s and registrant’s goods sold at
different price points, consumers would likely perceive the
variations in the marks as indicating different product
lines from a single source. For these reasons, we find
that the fourth du Pont factor weighs in favor of a finding
of likelihood of confusion in this case.
We turn finally to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc., supra. The test, under the first
du Pont factor, 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 that confusion
Ser. No. 77353524
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as to the source of the goods offered under the respective
marks is likely to result. 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). Finally, in cases such as this, where the
applicant’s goods are legally identical to the goods
identified in the cited registration, the degree of
similarity between the marks which is required to support a
finding of likelihood of confusion is less than it would be
if the goods were not identical. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
Applying these principles in the present case, we find
as follows.
In terms of appearance, we find that the marks are
similar to the extent that they both include the letters
“ACA.” We are not persuaded by applicant’s argument that
the cited registered mark is so highly stylized that it
would not be readily recognized as a depiction of the
letters “ACA.” Applicant’s mark looks different than
registrant’s mark to the extent that applicant’s mark also
includes the word WHITEFLASH. On balance, we find that the
Ser. No. 77353524
9
marks viewed in their entireties are somewhat similar in
terms of appearance.
In terms of sound, we find that the marks are
different to the extent that applicant’s mark includes the
word WHITEFLASH. The marks sound identical to the extent
that both of them include the letters “ACA.” We are not
persuaded by applicant’s argument that the cited registered
mark is so highly stylized that it would not be recognized
as the letters “ACA” and therefore would not be pronounced
at all. As noted above, the cited registered mark clearly
depicts the letters “ACA,” and those letters would be
pronounced the same in applicant’s mark and in the cited
registered mark. On balance, we find that the marks sound
somewhat similar.
In terms of connotation, we find that the letters
“ACA” in both marks constitute an arbitrary designation as
applied to jewelry products. Applicant’s contention that,
as applied to jewelry products generally, the letters would
be recognized by purchasers as standing for “a cut above”
is without support in the record and therefore
unpersuasive. The word WHITEFLASH in applicant’s mark does
not appear to have any particular or readily-recognized
connotation. On balance, we find that the marks are
somewhat similar in terms of connotation.
Ser. No. 77353524
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We find that the marks are quite similar in terms of
their overall commercial impressions as source-indicators.
As noted above, the cited registered mark would readily be
recognized as the letters “ACA.” Also as noted above, the
letters “ACA” are arbitrary as applied to jewelry items.
Applicant’s mark WHITEFLASH ACA incorporates the whole of
registrant’s “ACA” mark. The addition of the word
WHITEFLASH does not adequately distinguish the commercial
impressions of the marks which is created by the arbitrary
letters ACA common to both marks.
Comparing the marks in their entireties in terms of
appearance, sound, connotation and commercial impression,
we find that the marks are similar. As noted above, where
the goods are legally identical as they are here, the
similarity between the marks which is necessary to support
a finding that the marks are similar is less than it would
be if the goods were less similar. We find that, as
applied to the legally identical goods involved here, the
marks are sufficiently similar that confusion is likely to
result. The first du Pont factor weighs in favor of a
finding of likelihood of confusion.
Considering all of the evidence of record as it
pertains to the relevant du Pont factors, we find that a
likelihood of confusion exists. In order to conclude
Ser. No. 77353524
11
otherwise, we would have to find that the marks are so
fundamentally dissimilar that confusion is unlikely
notwithstanding the identical nature of the goods, trade
channels and classes of purchasers, and the fact that the
goods would be purchased by ordinary consumers without a
great deal of care. See, e.g., Kellogg Co. v. Pack’em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991). We cannot make that finding in this case.
We have considered all of applicant’s arguments in
opposition to the likelihood of confusion refusal,
including any arguments not specifically discussed in this
opinion, but we find them to be unpersuasive. To the
extent that any doubts might exist as to the correctness of
our conclusion that confusion is likely, we resolve such
doubts against applicant, as we must. See In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); 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 (Fed. Cir. 1984).
Decision: The refusal of registration is affirmed.