Aheto-Tosu, Agbeko-KwasiDownload PDFTrademark Trial and Appeal BoardSep 30, 2014No. 85604586 (T.T.A.B. Sep. 30, 2014) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: September 30, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Aheto-Tosu, Agbeko-Kwasi _____ Serial No. 85604586 _____ Luke Brean of Breanlaw, LLC, for Aheto-Tosu, Agbeko-Kwasi April K. Roach, Trademark Examining Attorney, Law Office 115, John Lincoski, Managing Attorney. _____ Before Quinn, Zervas and Gorowitz, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: Aheto-Tosu, Agbeko-Kwasi (“Applicant”) seeks registration on the Principal Register of the mark for A-shirts; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Dress pants; Dress shirts; Long-sleeved shirts; Open-necked shirts; Over shirts; Pants; Shirts and short-sleeved shirts; Shirts Serial N T wording today k the ma ALKEB T mark un that Ap for “app jackets, applican 1 Applica Register applicati first use 2 The ori ‘ALEK B continen exaggera 3 Reg. No was not o. 85604586 for s sleev Sport Class he descrip ‘ALKE B nown as A in Alkebu ULAN has he Tradem der Sectio plicant's m arel and coats, sk t's identif tion Serial . No basis fo on to the P anywhere a ginal descri U LAN’ bro t with the w ted period . 2838252 i disclaimed. uits; Shor ed shirts; s shirts w 25.1 tion of th U LAN’ in frica and t -Lan (Afri been disc ark Exam n 2(d) of ark so re sportswear irts and p ied goods, No. 856045 r filing wa rincipal Reg nd use in c ption of the ken up in t ord Expres at the end o ssued on M t-sleeved Sport shir ith short s e mark, forming he wordin ca) island laimed. ining Att the Tradem sembles th , namely, ants” in it is likely 86 was file s provided. ister and b ommerce si mark was hree parts sion stylize f the letter ay 4, 2004 - 2 - or long sl ts; Sports leeves; T-s as amende the shape g ‘EXPRE , today kn orney has ark Act, e register shirts, sw Class 253 to cause d on April 2 On August ased the ap nce at least : “The mark forming an d in half cu ‘n’ in Expre and was ren eeved t-sh pants; Sp hirts in In d, is: “Th of the m SSION’ at own as M refused re 15 U.S.C. ed mark, eatshirts, that, as u confusion 1, 2012 on 28, 2012, A plication u as early as consists of icon of the rve at the b ssion.” ewed. The irts; Shor orts shirt ternation e mark c ainland of the bottom adagasca gistration § 1052(d) sweatpan sed in co or mistake the Supple pplicant am pon Applica July 19, 20 [s]tylized i today know ottom of ic word, “ALK t- s; al onsists of the conti stretchin r.”2 The w of Applica on the gro ts, hats, c nnection or to dec mental ended the nt’s claim o 07. n bold lette n African on forming EBU-LAN the nent g to ord nt’s und aps, with eive. f rs an ” Serial No. 85604586 - 3 - In addition, the Examining Attorney objected to the amendment of the drawing from: to on the ground that the deletion of the shape of the white hang tag and the green stitching on applicant’s shirt constitutes a material alteration of the mark. After the Examining Attorney made the refusal and the requirement final, Applicant appealed. We affirm the refusal to register under Section 2(d) and reverse the requirement for an amended drawing and claim of color. I. Amendment of the Drawing. As depicted, supra, the drawing originally submitted by Applicant consisted of a photograph that included a depiction of a portion of the front of a black shirt with green stitching around the collar and green laces down the front. Next to the green stitching was a white hang tag on which the following was depicted: . The photograph was taken on a white surface. The Examining Attorney considers the green stitching, the black shirt, the white background of the hang tag and the white surface on which the shirt lies to be a portion of the mark. As Applicant described in the application, “[t]he mark consists of [s]tylized in bold Serial No. 85604586 - 4 - letters ‘ALEK BU LAN’ broken up in three parts forming an icon of the today known African continent with the word Expression stylized in half curve at the bottom of icon forming an exaggerated period at the end of the letter ‘n’ in Expression.”4 When the application was filed, instead of filing an appropriate drawing, Applicant filing pro se, erroneously filed a photograph of a black shirt with green stitching on a white surface. On the top of shirt is a white hang tag bearing the following depiction .5 Applicant, through her attorney, submitted an amended drawing in which the shirt, stitching, white surface and hang tag were deleted. The request to accept the amended drawing was denied on the ground that the amendment constituted a material alteration of the mark and was thus prohibited. It is not necessary for us to determine whether the amendment constitutes a material alteration of the mark. Instead, we must determine whether the shirt, stitching, white surface and hang tag were intended to be parts of the mark. 4 As requested by the Examining Attorney in the Office Action dated August 8, 2012, Applicant amended the description to: “The mark consists of the wording ‘ALKE BU LAN’ forming the shape of the continent of Africa and the wording ‘EXPRESSION’ in black on a white hang tag attached to a green cord necklace on a black surface with white at the bottom corners.” In the Response dated April 8, 2013, the statement was amended to: “The mark consists of the wording ‘ALKE BU LAN’ in forming the shape of the mainland of the continent today known as Africa and the wording ‘EXPRESSION’ at the bottom stretching to the main Alkebu-Lan (Africa) island, today known as Madagascar.” 5 The original drawing is identical to the specimen filed on April 8, 2013, which is identified as “shirt with a hang tag.” Serial No. 85604586 - 5 - “Applicants often submit drawings and descriptions of marks depicting trade dress and containing matter that is: (1) not part of the mark; (2) functional; (3) nondistinctive and capable; (4) nondistinctive and incapable; (5) inherently distinctive; or (6) a combination of these factors.” TMEP §1202.02(c) (2014). Further, to satisfy the requirements of Trademark Rule 2.52, the drawing and description of such a mark must accurately depict the mark the Applicant intends to register.” Trademark Rule, 2.52, 37 C.F.R. §2.52. If the drawing does not meet the requirements of Trademark Rule 2.52, the Examining Attorney must require the applicant to submit a substitute drawing and a substitute description of the mark. As discussed, supra, in the application, Applicant’s description of the mark limited it to: the term “ALKE BU LAN” in a stylized and highlighted form, broken up into three parts forming a depiction of “the today known African continent” with the word “Expression” in stylized form under the depiction of the continent with “an exaggerated period at the end of the letter ‘n’.” This description accurately describes the depiction on the hang tag. Instead of requesting that Applicant submit a substitute drawing to reflect the mark depicted on the hang tag, the Examining Attorney requested the Applicant, who was pro se, to enter a new description of the mark to include the other matter in the original drawing. Applicant attempted to comply with the Examining Attorney’s requirements in her response to the second Office Action. She retained counsel prior to responding to the third Office Action. Counsel verified that the shirt (black background), hang tag, and “green cord Serial No. 85604586 - 6 - necklace” were not parts of the mark and Counsel submitted a new drawing depicting only the content on the hang tag. We agree that the amended drawing accurately depicts the mark the Applicant intends to register. Accordingly, we accept the amended drawing filed on August 8, 2013. II. Likelihood of Confusion. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). While Applicant restricted her arguments regarding likelihood of confusion to the similarities between the marks, the Examining Attorney properly also addressed both the similarities in the goods and the channels of trade, all of which are relevant to our determination. We start our analysis with the second du Pont factor, the similarity or dissimilarity of the goods. Our determination must be based on the goods as they are identified in the registration and application. In re Dixie Restaurants Inc., 41 USPQ2d at 1534. See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d Serial No. 85604586 - 7 - 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The identification of goods in both the application and the cited registration include the following identical articles of clothing: “shirts, jackets, pants, hats, and caps.” Because these goods are legally identical, we may find that there is a likelihood of confusion under Section 2(d) with respect to all of the goods (other articles of clothing) in the application. See, e.g., Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (If there is a likelihood of confusion involving any of the goods set forth in the application and cited registration, the refusal applies to all of the goods in the same class).; and Shunk Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA 1963). Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (“We need not consider applicant’s remaining goods because likelihood of confusion as to one of the products listed in applicant’s description of goods in that class is sufficient to support a conclusion that the opposition should be sustained.”). Accordingly, we find that the second du Pont factor heavily favors a finding of likelihood of confusion. We look next at the third du Pont factor, the similarity or dissimilarity of established, likely to continue trade channels, noting that Applicant’s and Registrant’s identifications of goods contain no limitations as to channels of trade. Therefore, they are presumed to encompass all goods of the type described, and the goods are presumed to move in all normal channels of trade and be available to all classes of consumers for those goods. Stone Lion Capital Partners, L.P. v. Lion Serial No. 85604586 - 8 - Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“An application with ‘no restriction on trade channels’ cannot be ‘narrowed by testimony that the applicant’s use is, in fact, restricted to a particular class of purchasers.’”); Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). The legally identical nature of Applicant’s and Registrant’s goods and their overlapping channels of trade not only weigh heavily in favor of a finding of likelihood of confusion, but also reduce the degree of similarity of the marks necessary to find a likelihood of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). With that in mind, we turn to the first du Pont factor, the similarity of the marks. In comparing the marks we consider the appearance, sound, connotation and commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Serial N T A To e recollect specific, (TTAB 2 1975). W the ma rational mark, p their en (Fed. Ci In literal p words a the orig that con USPQ2d T incorpor o. 85604586 he marks pplicant’s valuate th ion of the impressio 009), citin hile “the rks in the reasons, rovided th tireties.” r. 1985). this case ortion an nd designs in of the g sumers w at 1908 a he verbal ates the at issue ar an mark e similar average p n of trade g Sealed A similarity ir entireti more or le e ultimat In re Nati , both ma d a design , the verb oods to w ould use t nd 1911 (F portion entire ve e: d Regi ities betw urchaser marks. In ir Corp. v or dissim es … the ss weight e conclusi onal Data rks are com . When ev al portion hich it is o refer to ed. Cir. 20 of Applica rbal porti - 9 - strant’s m een mark who norm re Cynos . Scott Pap ilarity of re is noth has been on rests o Corp., 75 posite m aluating of the mar affixed bec or request 12). nt’s mark on of cite ark. s, the em ally retain ure, Inc., er Co., 19 the marks ing impro given to a n a consid 3 F.2d 10 arks each a composit k is the on ause it is the good , “ALKEB d mark, phasis mu s a genera 90 USPQ 0 USPQ 1 is determ per in sta particula eration of 56, 224 U consisting e mark co e most lik the portio s. In re Vi ULAN E ALKEBUL st be on l, rather t 2d 1644, 06, 108 (T ined base ting that r feature the mark SPQ 749, of a verb ntaining ely to indi n of the m terra Inc., XPRESSIO AN. Furt the han 1645 TAB d on , for of a s in 751 al or both cate ark 101 N,” her, Serial No. 85604586 - 10 - “ALKEBULAN” is the first word in Applicant’s mark and is depicted in larger and bolder font. As stated in an article introduced by the Examining Attorney, “Alkebulan” is the “mother of mankind,” “cradle of creation,” and “land of the spirit people”; and was “the name recognized and used by the majority of inhabitants of the [African] continent prior to systemic renaming of places by then European leaderships during what was known as ‘New World’ expansion initiatives.”6 Rather than requesting Applicant to translate “’Alkebulan’ as ‘mother of mankind,’ ‘cradle of creation,’ and ‘land of the spirit people,’” the Examining Attorney, relying on this article, required Applicant to submit the following translation: “The English translation of ‘Alkebulan’ in the mark is ‘Africa.’” Office Action dated August 8, 2012. The Examining Attorney did not provide either a dictionary definition for “Alkebulan” or a translation from any foreign dictionary to support her translation requirement. Moreover, we were unable to find any English dictionary definition for “Alkebulan.”7 However, Applicant did not contest the translation requirement and in her response, dated August 28, 2012, Applicant entered the requested translation (“The 6 Article on the Transformative Thinking website (www.aktosu.com), entitled “Alkebu-Lan: Reconnecting Values,” Exhibit to Office Action dated August 8, 2012. 7 Since the Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or have regular fixed editions, we reviewed a number of on-line dictionaries, including Merriam Webster Online (www.merriam- webster.com), Dictionary.com (dictionary.reference.com), Cambridge Free English Dictionary (Dictioanry.combridge.org.us) and OneLook Dictionary (www.onelook.com). See 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); See also In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 85604586 - 11 - English translation of ‘Alkebulan’ is “Africa.”). It is of note that “Alkebulan” is also translated as “Africa” in the cited registration. In the Office Action dated August 8, 2012, the Examining Attorney also advised the Applicant that the mark was not eligible for registration on the Supplemental Register and that amendment to the Principal Register was required. Again, Applicant complied with the requirement. While not requested, Applicant voluntarily disclaimed the term “ALKEBULAN.”8 There is nothing in the record indicating why Applicant entered the disclaimer. Further, “ALKEBULAN” is not disclaimed in the cited registration. Based on the foregoing, we find that “ALKEBULAN” is inherently distinctive when used on or in connection with Applicant’s and Registrant’s articles of clothing. As our primary reviewing Court has stated: [T]he presence of an additional term in the mark does not necessarily eliminate the likelihood of confusion if some terms are identical. See, e.g., China Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 1341 [83 USPQ2d 1123] (Fed. Cir. 2007) (the common word in CHI and CHI PLUS is likely to cause confusion despite differences in the marks’ designs); In re West Point–Pepperell, Inc., 468 F.2d 200, 201 [175 USPQ 558] (CCPA 1972) (WEST POINT PEPPERELL likely to cause confusion with WEST POINT for similar goods); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324 [153 USPQ 406] (CCPA 1967) (THE LILLY as a mark for women's dresses is likely to be confused with LILLI ANN for women's apparel including dresses); In re United States Shoe Corp., 229 USPQ 707 8 While not requested by the Examining Attorney, Applicant voluntarily disclaimed the word “ALKEBULAN” in its Response dated August 28, 2012. Voluntary disclaimers of any component of a mark sought to be registered are permitted. Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a); TMEP § 1213.01(c). See In re MCI Commc’ns Corp., 21 USPQ2d 1534 (Comm’r Pats. 1991) (Section 6(a) permits an applicant to disclaim matter voluntarily, regardless of whether the matter is registrable or unregistrable). Serial No. 85604586 - 12 - (TTAB 1985) (CAREER IMAGE for women's clothing stores and women's clothing likely to cause confusion with CREST CAREER IMAGES for uniforms including items of women's clothing).” In re Mighty Leaf Tea, 94 USPQ2d at 1260 (finding likelihood of confusion between the mark ML for personal care and skin care products and for skin care products.). In this case, Applicant’s mark and the mark in the cited registration contain the identical word, and the addition of the word “EXPRESSION” does not eliminate the likelihood of confusion between the two marks, nor does the design elements, which we note both include depictions of the continent of Africa. Thus, the first du Pont element weighs in favor of a finding of likelihood of confusion. Having considered all the evidence and argument on the relevant du Pont factors, we find that Applicant’s mark is likely to cause confusion with the cited registration. Decision: The refusal to register Applicant’s mark ALKEBULAN EXPRESSION & design under Section 2(d) is affirmed and the rejection of the amended drawing is reversed. Copy with citationCopy as parenthetical citation