American Covers, Inc.

Trademark Trial and Appeal BoardMar 31, 2011

No. 77486668 (T.T.A.B. Mar. 31, 2011)

Mailed: March 31, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re American Covers, Inc. ________ Serial No. 77486668 _______ Peter M. De Jonge, Thorpe North and Western LLP, for American Covers, Inc. Katherine S. Chang, Trademark Examining Attorney, Law Office 115 (John T. Lincoski, Managing Attorney). _______ Before Bucher, Kuhlke and Wolfson, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: American Covers, Inc. has filed an application to register the standard character mark REFRESH for goods identified as “air fresheners and air deodorizers” in International Class 5.1 Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that 1 Application Serial No. 77486668, filed May 29, 2008, alleging October 30, 2006, as the date of first use and first use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a). THIS OPINION IS NOT PRECEDENT OF THE TTAB Serial No. 77486668 2 applicant’s mark, when used on its identified goods, so resembles each of the two registered marks as to be likely to cause confusion, mistake or deception. The two registered standard character marks are VANILLA REFRESH for “aromatherapy products, namely, aromatherapy oils used in electrical scent dispensers” in International Class 3 and “room deodorizers and air fresheners” in International Class 5 owned by The Procter & Gamble Company,2 and ROOM REFRESH for “scented room spray” in International Class 3 owned by Barcelona Bath & Body.3 When the refusals were made final, applicant appealed and briefs have been filed. We affirm the refusals to register as to each of the cited registrations. As a preliminary matter, the examining attorney’s objection to evidence presented for the first time attached to applicant’s brief is sustained. Trademark Rule 2.142(d) (record should be complete prior to filing of appeal).4 2 Registration No. 3155040, issued on October 10, 2006, the word VANILLA is disclaimed. 3 Registration No. 3198567, issued on January 16, 2007, the word ROOM is disclaimed. 4 With regard to the third-party registration that had not issued prior to applicant’s request for reconsideration, the proper method to have new evidence examined is to request remand. See TBMP §1207.02 (2d ed. rev. 2004). We hasten to add that consideration of that evidence would not alter our determination. Serial No. 77486668 3 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). We find that applicant’s “air fresheners and air deodorizers” are identical to the “room deodorizers and air fresheners” in Reg. No. 3155040 and encompass or, at a minimum, are closely related to, the “scented room spray” in Reg. No. 3198567. Applicant does not contend otherwise. Moreover, because the goods are identical or very closely related, we must presume that they travel in the same channels of trade and are offered to the same classes of purchasers. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d Serial No. 77486668 4 937, 16 USPQ2d 1783 (Fed. Cir. 1987) (If the identification in an application or a cited registration describes goods or services broadly, and there is no limitation as to the nature, type, channels of trade or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all channels of trade normal for these goods and services, and that they are available to all classes of purchasers for the described goods and services.) See also In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). In view of the above, the du Pont factors of the similarity of the goods, the channels of trade, and classes of purchasers favor a finding of likelihood of confusion as to the cited registrations. We turn then to the du Pont factor of the similarity of the marks, i.e., whether applicant’s mark REFRESH and registrants’ marks VANILLA REFRESH and ROOM REFRESH are similar or dissimilar when compared in their entireties in terms of appearance, sound, connotation and commercial impression. In making our determination, we keep in mind that the more closely related the goods are, “the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines.” Century 21 Real Serial No. 77486668 5 Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). It is well settled that marks must be considered in their entireties, not dissected or split into component parts and each part compared with other parts. It is the impression created by the involved marks, each considered as a whole, that is important. See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992). However, “[t]hat a particular feature is descriptive [or otherwise lacking in distinctiveness] ... with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark...” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The strongest source-identifying element in both registered marks is the word REFRESH, making it the more dominant and most memorable element. The word VANILLA merely describes the scent of registrant’s air freshener and the word ROOM merely describes the intended use of registrant’s product for interior rooms. In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); and In re Rexel Inc., 223 USPQ 830 (TTAB 1984). As such, applicant’s mark REFRESH consists in its entirety of the dominant element of each of the registered marks. Applicant’s mark contains no Serial No. 77486668 6 other matter by which to distinguish it from registrants’ marks. We acknowledge that the common term REFRESH is the second word in the registrants’ marks; however, in this case we find that the word placement is not sufficient to distinguish the marks. Thus, viewing the marks in their entireties, applicant’s mark is very similar in sound, appearance, connotation and commercial impression to each of the registrants’ marks. Applicant acknowledges that weak marks are entitled to protection. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974) (weak marks afforded protection, in particular where marks and goods are very similar). See also In re Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA 1978) (marks on the Supplemental Register are afforded protection). However, applicant asserts that the scope here is sufficiently narrow to accommodate its REFRESH mark. Applicant argues that the term “refresh” is very weak in connection with air fresheners and points to various third-party registrations, in addition to the two cited registrations, that contain the words “refresh” or “refreshing” in the marks, and a couple of third-party uses on websites of the terms Serial No. 77486668 7 “refresh” or “refreshing” in connection with similar products. We agree that the term REFRESH is highly suggestive when used in connection with air fresheners. However, in every third-party registration and website printout submitted by applicant, the marks contained other elements by which consumers may distinguish one “refresh” mark from another.5 Applicant’s mark has no such distinguishing element. We are not persuaded by applicant’s argument that it is this very absence of other matter from applicant’s mark that constitutes the distinguishing element in its mark and “[c]onsumers will recognize this difference as distinguishing the source of the goods.” Reply Br. p. 5. Rather, as the examining attorney stated, because of the absence of distinguishing matter in applicant’s REFRESH mark, consumers are likely to perceive VANILLA REFRESH as “the vanilla-scented version of applicant’s product” and ROOM REFRESH as “the version of applicant’s product for use in interior rooms.” Br. p. 8. 5 Applicant relies on In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910 (TTAB 1988)(IMPERIAL for “automotive products, namely, fans, fan blades, fan spacers, fan spacer kits, idler pulleys, idler assemblies, transmission fluid coolers, oil coolers, and combination coolers” not confusingly similar to IMPERIAL for “automobiles and structural parts thereof” in view of weak, laudatory nature of term in vehicular field). However, in Dayco, the goods were not as similar as they are in this case and the record included third-party marks of IMPERIAL by itself. Serial No. 77486668 8 Finally, we add that the nature of the products are such that they are more vulnerable to confusion because they are inexpensive and subject to a lesser standard of purchasing care. In balancing the relevant du Pont factors in this case, we find that because the marks are very similar, the goods are identical or otherwise closely related, the channels of trade and classes of consumers are the same, and the goods are subject to a lesser standard of purchasing care, confusion is likely between applicant’s mark and the marks in the cited registrations. To the extent there are any doubts, we resolve them, as we must, in favor of the registrants. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988). Decision: The refusals to register under Section 2(d) of the Trademark Act are affirmed.