No. 87750167 (T.T.A.B. Jan. 18, 2019)

Yongxin Li

Trademark Trial and Appeal BoardJan 18, 2019

No. 87750167 (T.T.A.B. Jan. 18, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: January 18, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Yongxin Li _____ Serial No. 87750167 _____ Gene Bolmarcich of Law Offices of Gene Bolmarcich, for Yongxin Li. John Sullivan, Trademark Examining Attorney, Law Office 114, Laurie Kaufman, Managing Attorney. _____ Before Wellington, Greenbaum and Heasley, Administrative Trademark Judges. Opinion by Greenbaum, Administrative Trademark Judge: Yongxin Li (“Applicant”) seeks registration on the Principal Register of the mark E TAI CHI (in standard characters, TAI CHI disclaimed) for Educational kits sold as a unit in the field of exercise, fitness and tai chi consisting primarily of educational books and also including DVDs and t-shirts; Exercise books relating to tai chi; Printed books in the field of exercise, fitness and tai chi; Printed pamphlets, brochures, manuals, books, booklets, leaflets, informational flyers, informational sheets and newsletters, adhesive backed stickers, and kits comprised solely of one or more of the Serial No. 87750167 - 2 - foregoing materials in the field of exercise, fitness and tai chi, in International Class 16.1 The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark E, in stylized form displayed as , for “Printed instructional or teaching material, except apparatus, in the field of athletics and physical fitness; manuals and handbooks in the field of athletics and physical fitness; user manuals for fitness apparatus” in International Class 16.2 After the refusal was made final, Applicant requested reconsideration and appealed to this Board. Reconsideration was denied, proceedings resumed, and the appeal is fully briefed. We affirm the refusal to register. I. Applicable Law 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). 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. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945- 1 Application Serial No. 87750167 was filed on January 10, 2018, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as November 1, 2016. 2 Registration No. 5273380 issued on August 29, 2017, and includes the following description of the mark: “The mark consists of a letter ‘E’ with a horn forming the top of the letter.” Color is not claimed as a feature of the mark. The registration also identifies goods and services in other International Classes, none of which are involved in this appeal. Serial No. 87750167 - 3 - 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.”). We discuss below these and other relevant factors. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant and of record” need be considered). See also 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 Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). A. Relatedness of the Goods and Channels of Trade We begin with the du Pont factors involving the relatedness of the goods and the similarity of channels of trade. We base our evaluation on the goods as they are identified in the application and the cited registration. See In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); see also 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 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The cited registration identifies “printed instructional or teaching material, … manuals and handbooks in the field of athletics and physical fitness,” and the Serial No. 87750167 - 4 - application identifies “printed books,” “manuals,” and other printed materials “in the field of exercise, fitness and tai chi.” To the extent indicated, the identified goods are identical or legally identical, as they cover the same types of printed materials in the same fields, namely, fitness/physical fitness and exercise. Moreover, the broad term “physical fitness” in the registration encompasses all types of physical fitness activities, including “tai chi,” which is defined as “an ancient Chinese discipline of meditative movements practiced as a system of exercises.”3 See 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.’”). The goods identified in the registration also encompass the main components of Applicant’s other identified goods. Applicant argues that “All of Applicant’s identified goods relate to Tai Chi and there is no evidence that any of the goods of the Cited Mark also do.” 4 TTABVUE 4. While possibly true, Registrant’s actual use of the mark is not relevant to this analysis. As stated above, we must assess this du Pont factor according to the identifications of the respective goods in the application and cited registration, not on extrinsic evidence of actual use. See, e.g., Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom, 16 USPQ at 1787; 3 The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016). We take judicial notice of this dictionary entry from Merriam-Webster.com, accessed January 15, 2019. Serial No. 87750167 - 5 - In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAG 2009) (“We have no authority to read any restrictions or limitations into the registrant’s description of goods.”). Because tai chi is practiced as a system of exercises, the printed materials in the field of physical fitness identified in the registration encompass the printed materials in the field of tai chi identified in the application. Given the legal identity of the goods in part, and the lack of restrictions or limitations in the application and registration as to their nature, channels of trade, or classes of purchasers, we presume that the goods travel through the same channels of trade (e.g., online and brick-and-mortar book stores) and that they are offered to the same potential purchasers (e.g., ordinary consumers who are interested in improving their health and well-being). See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same). These du Pont factors weigh heavily in favor of a finding of likelihood of confusion. B. The similarity or dissimilarity of the marks Next, we compare the marks “in their entireties as to appearance, sound, connotation and commercial impression.” Viterra, 101 USPQ2d at 1908 (quoting du Pont, 177 USPQ at 567); see also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks, but instead whether the Serial No. 87750167 - 6 - 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., 101 USPQ2d at 1721. The marks “‘must be considered … in light of the fallibility of memory ….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See St. Helena Hosp., 113 USPQ2d at 1085; Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971). Here, the average customers are members of the general public who are health conscious. Our analysis cannot be predicated on dissection of the involved marks. Stone Lion, 110 USPQ2d at 1161. Rather, we are obliged to consider the marks in their entireties. Id.; see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 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.”). Nonetheless, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. Stone Lion, 110 USPQ2d at 1161. For instance, as the Federal Circuit has observed, “[t]hat a particular feature is descriptive or generic with respect to the involved goods or Serial No. 87750167 - 7 - services is one commonly accepted rationale for giving less weight to a portion of a mark ….” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In addition, and of particular relevance here, where the parties use their marks in connection with legally identical goods, the similarity between the marks necessary to support a determination that confusion is likely declines. Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). Considered in their entireties, we find Applicant’s E TAI CHI mark and the registered mark to be very similar in appearance, sound, connotation and commercial impression, due to the shared letter E. There is no evidence that the letter E has any meaning or significance when applied to the identified goods, and there is no evidence of use by third parties of similar marks on similar goods that might dilute the source-identifying capacity of the letter E for those goods. On the other hand, the term TAI CHI is highly descriptive, if not generic, of the subject matter of some the printed materials identified in the application, and has been disclaimed accordingly. See Dixie Rests., 41 USPQ2d at 1533-34. Descriptive matter typically is less significant or less dominant when comparing marks. See Cunningham v. Laser Golf Corp., 55 USPQ2d at 1846 (quoting Nat’l Data Corp., 224 USPQ at 752 (the “descriptive component of a mark may be given little weight in reaching a conclusion on likelihood of confusion”)). We find that to be the case here, where consumers likely will view the term TAI CHI in Applicant’s mark in its descriptive sense, rather than Serial No. 87750167 - 8 - as a source-distinguishing element. Consequently, we reject Applicant’s unsupported argument that consumers would view E TAI CHI “as conveying the meaning of a type of TAI CHI (proprietary to Applicant)” because tai chi “is a type of martial art, not a service or good.” 4 TTABVUE 3-4 (emphasis in original). The prominence of the letter E is further enhanced by its placement in the lead position in Applicant’s mark. See Palm Bay Imps., 73 USPQ2d at 1692; Presto Prods., Inc. v. Nice-Pak Prods., 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., 23 USPQ2d at 1700 (upon encountering the marks, consumers must first notice the identical lead word). The registered mark is in stylized form, with a horn design forming the top horizontal segment of the letter E. We do not find the stylization and horn design significant for purposes of differentiating Applicant's mark E TAI CHI from the registered mark. Although we bear in mind that there is no per se rule on this point, In re Electrolyte Labs., Inc., 929 F.2d 645, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990), in most cases, the literal element in a composite word and design mark dominates over the design element because purchasers will use the word portion of the mark to call for the goods. See CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“[I]n a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.”). We find that to be case here, where consumers likely will use the letter “E” alone to request the identified printed materials, and they would not articulate the Serial No. 87750167 - 9 - horn design element. Viterra, 101 USPQ2d at 1908 (normally according greater weight to the word in composite word and design marks because purchasers would use the word to request or refer to the goods or services). We find unpersuasive Applicant’s argument that its mark E TAI CHI is unitary because E and CHI rhyme. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1992) (finding EUROPEAN FORMULA and design for cosmetic products not unitary since the “elements are not so merged together that they cannot be regarded as separate” and the proximity of the words to the design feature “does not endow the whole with a single, integrated, and distinct commercial impression.”). Applicant’s mark is simply a combination of an arbitrary and a merely descriptive or generic term. Nor do we agree with Applicant that the Examining Attorney dissected the marks into isolated elements, without considering them in their entireties. Rather, we find that the Examining Attorney properly weighed the individual components of each mark to determine the overall impression and in the case of Applicant’s mark, the descriptiveness of the mark, and its various components in accordance with legal precedence. See In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004). Applicant also argues that the marks are dissimilar because single letter marks are rare, and therefore the letter E in the registered mark “is extremely likely to be an initial for another word, so that consumers would not think that the Cited Mark ‘refers to’ the ‘E’ in ‘E TAI CHI.’” 4 TTABVUE 4 (emphasis in original). This argument, however, is not supported with evidence and is mostly conjecture. In any Serial No. 87750167 - 10 - event, to the extent a consumer believes the letter E in the cited mark is an initial for a name, the same can be said with regard to the letter E in the cited mark. Accordingly, we find that E is the dominant element in Applicant’s mark, and accord that term more weight than the term TAI CHI in our likelihood of confusion analysis. In making this finding, we do not ignore the presence of the wording TAI CHI in Applicant’s mark. However, for the reasons discussed above, consumers are more likely to remember the term E than the term TAI CHI in Applicant’s mark E TAI CHI. Nat’l Data Corp., 224 USPQ at 751. While there are some specific differences between the marks, we find that Applicant’s mark E TAI CHI and the registered mark are similar in sound, appearance, meaning and overall commercial impression, taking into account the identity/legal identity of many of the goods. The addition of the descriptive or generic term TAI CHI in Applicant’s mark is not sufficient to distinguish it from the registered mark . Rather, purchasers who are familiar with both marks likely would perceive Applicant’s mark E TAI CHI as a subset, product line extension or variant of the registered mark , with both marks identifying printed materials in the field of physical fitness made by a single source known as . See, e.g., In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (holding VANTAGE TITAN for MRI diagnostic apparatus, and TITAN for medical ultrasound device, Serial No. 87750167 - 11 - likely to cause confusion, noting that the marks are more similar than they are different and that the addition of applicant’s “product mark,” VANTAGE, to the registered mark would not avoid confusion). The du Pont factor of the similarity of the marks also weighs in favor of a finding that confusion is likely. II. Conclusion We have considered all of the evidence properly in the record and the arguments bearing on the relevant du Pont factors. In view of the similarity of the marks and the identity of the goods in part, as well as the purchasers and channels of trade, we conclude that confusion is likely between Applicant’s mark and the cited registered mark for the identified goods. Decision: The refusal to register Applicant’s mark E TAI CHI is affirmed.