Angela Elizabeth Baker

Trademark Trial and Appeal BoardMay 27, 2016

No. 86279815 (T.T.A.B. May. 27, 2016)

This Opinion is Not a Precedent of the TTAB Mailed: May 27, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Angela Elizabeth Baker _____ Serial No. 86279815 _____ Matthew H. Swyers of The Trademark Company, for Angela Elizabeth Baker. Tamara Frazier, Trademark Examining Attorney, Law Office 116, Christine Cooper, Managing Attorney. _____ Before Greenbaum, Adlin and Goodman, Administrative Trademark Judges. Opinion by Greenbaum, Administrative Trademark Judge: Angela Elizabeth Baker (“Applicant”) seeks registration on the Principal Register of the mark YONI OIL (in standard characters, OIL disclaimed) for Medical lubricant, namely, vaginal lubricants; Vaginal moisturizers; Vaginal preparations, namely, antifungals in International Class 5.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the ground that Applicant’s 1 As discussed below, application Serial No. 86276815 was filed on May 13, 2014, with no stated filing basis. Serial No. 86279815 - 2 - mark, when used on or in connection with Applicant’s goods, is likely to cause confusion with the mark YONI BUTTER (in standard characters, BUTTER disclaimed) for “Oil based personal lubricants for humans and animals for skin care treatment” in International Class 5.2 The Examining Attorney also made final the requirement to specify and meet the requirements of at least one filing basis. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal and requirement. I. Requirement to Assert a Filing Basis We turn first to Applicant’s failure to specify a statutory basis for filing her application.3 An applicant will receive a filing date without specifying the statutory filing basis on which it relies. Kraft Grp. LLC v. Harpole, 90 USPQ2d 1837, 1840 (TTAB 2009). However, an applicant must state and meet the requirements of one or more of the five statutory filing bases in order for its application to come within the terms of the Trademark Act, 15 U.S.C. §§ 1051 et seq. See also Trademark Rules 2.32, 2.34(a), 2.47(a), and 2.47(e), 37 C.F.R. §§ 2.32, 2.34(a), 2.47(a), and 2.47(e). If an applicant does not state the statutory basis on which it relies in an original application, the examining attorney will require the applicant to state a basis and comply with the relevant requirements. See TMEP § 806 (April 2016). The examining 2 Registration No. 3226921 issued on April 10, 2007. Section 8 affidavit accepted; Section 15 affidavit acknowledged. 3 We note that the application indicates, in red: “NO FILING BASIS SPECIFIED” and “BASIS REQUIRED.” Serial No. 86279815 - 3 - attorney will issue a final office action if the applicant timely responds to the first office action, but fails to specify a filing basis, or fails to meet the requirements of a particular basis. Id. Where an applicant does not specify and meet the requirements of any statutory basis for filing a trademark application, there is no legal basis upon which to grant a trademark registration. In the September 2, 2014 Office Action, and again in her April 7, 2015 Final Office Action, the Examining Attorney informed Applicant that her application lacked a filing basis, required that Applicant provide a filing basis, and advised Applicant of the various statutory bases that could apply. Applicant, however, failed to respond to this deficiency in her March 2, 2015 Response to Office Action or in her June 5, 2015 Request for Reconsideration.4 Moreover, she did not address the matter in her brief. Applicant has neither specified nor met the requirements of any statutory basis for filing an application under the Trademark Act. We therefore affirm the Examining Attorney’s refusal to register Applicant’s mark on this ground. Although we have refused registration on the ground that Applicant failed to state and meet the requirements of a statutory filing basis, for the sake of completeness, we also address the likelihood of confusion refusal. II. Likelihood of Confusion - Applicable Law 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 4 In her June 30, 2015 Reconsideration Letter, the Examining Attorney noted Applicant’s failure to address this requirement. Serial No. 86279815 - 4 - re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and 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. See 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.”). A. Relatedness of the Goods and Channels of Trade We begin with the du Pont factors of the relatedness of the goods and 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, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). In this case, the broadly worded goods identified in the registration, “[o]il based personal lubricants for humans … for skin care treatment,” encompass the “[m]edical lubricant, namely, vaginal lubricants” and “vaginal moisturizers” identified in the application. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)) (unrestricted and broad Serial No. 86279815 - 5 - identifications are presumed to encompass all goods of the type described). Thus, the identified goods are legally identical in part. Applicant essentially concedes this point in her brief: “Applicant must concede the similarity of the goods or services as recited in the Applicant’s applied-for trademark as well as the registered trademark.”5 Further, because the goods are legally identical and, as identified, are not limited to any specific channels of trade, we must presume that the trade channels and classes of purchasers are the same. Viterra, 101 USPQ2d at 1908 (absent restrictions in an application or registration, the identified goods, if identical, are “presumed to travel in the same channels of trade to the same class of purchasers.”) (quoting Hewlett-Packard, 62 USPQ2d at 1001). See also Stone Lion, 110 USPQ2d at 1161; In re Linkvest, 24 USPQ2d 1716, 1716 (TTAB 1992). In her brief, Applicant does not dispute this presumption. We find that the relatedness of the goods and channels of trade favor a finding of likelihood of confusion. B. Comparison of the Marks Applicant has concentrated her arguments on the first du Pont factor, the similarities and dissimilarities between Applicant’s mark YONI OIL and Registrant’s mark YONI BUTTER. This factor requires us to analyze “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., 5 4 TTABVUE 15. Serial No. 86279815 - 6 - Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In comparing the marks, we are mindful that where, as here, the goods are legally identical in part, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Viterra, 101 USPQ2d at 1912 (citing Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992)). Further, “[t]he 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., 101 USPQ2d at 1721. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). 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 Serial No. 86279815 - 7 - the ultimate conclusion rests on a consideration of the marks in their entireties. Stone Lion, 110 USPQ2d at 1161. The marks YONI OIL and YONI BUTTER are highly similar in appearance, sound, connotation and overall commercial impression. The structure of each mark is the same, differing only in that the last word in Applicant’s mark is OIL rather than BUTTER, which would be perceived simply as a variant of Registrant’s mark, indicating the form or type of lubricant. Applicant argues that her mark YONI OIL “creates a connotation of a type of oil or lubricant used to reduce friction” while Registrant’s mark YONI BUTTER, which is used in connection with “oil based personal lubricants for humans and animals for skin care treatment[,] … creates a connotation of a butter or a balm designed to promote and effectuate healing.”6 Consequently, Applicant contends that the terms OIL and BUTTER are sufficient to distinguish the marks. However, in each instance, the words OIL and BUTTER have greatly reduced source-identifying capacities because they are descriptive of the lubricant and therefore have been disclaimed (see Dixie Rests., 41 USPQ2d at 1533-34), leaving the identical shared word YONI with the most source-identifying significance in each mark. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985) (the “descriptive component of a mark may be given little weight in reaching a conclusion on likelihood of confusion”). The prominence of the word YONI is further enhanced by its placement at the beginning of Applicant’s and Registrant’s marks. See Palm Bay Imps., 73 USPQ2d at 1692; 6 4 TTABVUE 12. Serial No. 86279815 - 8 - Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). For these reasons, we find that YONI is the dominant term in each mark, and accordingly, it is entitled to more weight in our analysis. In coming to this conclusion, we do not discount the presence of the additional wording in each mark. However, for the reasons discussed above, we find that the term YONI in each mark is more likely to be remembered by consumers than the other elements of the marks. As for meaning, the record includes evidence from Wikipedia7 that “yoni” is Sanskrit for “literally ‘vagina’ or womb’,” and that it “is the symbol of the Goddess (Shakti or Devi), the Hindu Divine Mother. Within Shaivism, the sect dedicated to the god Shiva, the yoni symbolizes his consort.” The Wikipedia entry for “yoni” discusses other symbolic meanings of the term, such as “the origin of life” in Hindu philosophy, “a form of life or a species” in Indian religions where “the births and rebirths (the cycle of life) of a human happen in various yonis,” and “the creative power of nature [that] represents the goddess Shakti.” Pointing to this Wikipedia entry, Applicant asserts that “the translation equivalent of the term YONI is vagina,” and argues that this meaning is “descriptive if not highly suggestive” when used “in 7 June 5, 2015 Request for Reconsideration. Although we have recognized the inherent limitations in evidence taken from Wikipedia, the Board will consider such evidence so long as the non-offering party has an opportunity to rebut that evidence by submitting other evidence that may call its accuracy into question. See In re Bay State Brewing Co., 117 USPQ 1958, 1959 n.3 (TTAB 2016); In re Swatch Grp. Mgmt. Servs. AG, 110 USPQ2d 1751, 1754 n.4 (TTAB 2014); In re Carrier Consulting Grp., 84 USPQ2d 1028, 1032 (TTAB 2007). See also TBMP § 1208.03 (2015). In this case, the Examining Attorney had an opportunity to rebut this evidence when she issued her June 30, 2015 Denial of Applicant’s Request for Reconsideration, but she did not do so. Serial No. 86279815 - 9 - reference to products that are used on or about a woman’s vagina.”8 Applicant further contends that “the mere overlap of YONI should be deemed insufficient to uphold a refusal based upon a likelihood of confusion where the products are for the female yoni and the marks, as a whole given the distinct impressions engendered by OIL versus BUTTER, create separate and distinct commercial impressions.”9 Applicant’s argument that the word YONI is “descriptive” is an impermissible collateral attack, and therefore we have considered it only in the context of general conceptual weakness.10 See Dixie Rests., 41 USPQ2d at 1534-35; Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1626 n.1 (TTAB 2007). On this record, we do not find the word YONI highly suggestive or weak for the identified personal lubricants. The registered mark YONI BUTTER has been registered on the Principal Register with a disclaimer of BUTTER, but without a claim that the term YONI has acquired distinctiveness, thereby showing that YONI has been viewed as inherently distinctive. Moreover, other than the cited registration, Applicant has not shown the existence of registrations that include or comprise the term YONI, or evidence of third-party use of the word YONI in connection with similar goods, that could demonstrate that YONI is highly suggestive. Cf. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135-36 (Fed. Cir. 2015) and Juice Gen., 8 4 TTABVUE 14. 9 4 TTABVUE 14. 10 We also note that because the cited registration is over five years old, mere descriptiveness is not available as a ground for cancellation. Section 14 of the Trademark Act, 15 U.S.C. § 1064. Serial No. 86279815 - 10 - Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (emphasizing that a “considerable” or “extensive” number of third-party registrations may well have, in the aggregate, evidentiary value); Institut National Des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (“third party registrations … may show that a particular term has descriptive significance as applied to certain goods or services.”). Instead, we find that when viewed on or in connection with the personal lubricants identified in the application and registration, consumers who are familiar with this Sanskrit term could understand the term YONI in each mark to suggest the vulva. And those members of the purchasing public who are unfamiliar with Sanskrit (or this particular Sanskrit term) may ascribe no meaning to either mark, such that YONI would be viewed as an apparently arbitrary term with respect to personal lubricants. See In re Gina Davia, 110 USPQ2d 1810, 1814-1815 (TTAB 2014). In sum, we find the sound, appearance, meaning and overall commercial impression of the marks YONI OIL and YONI BUTTER to be highly similar. C. Lack of Actual Confusion With regard to Applicant's assertion of no known instances of actual confusion, we first observe that while a showing of actual confusion would be highly probative, the lack thereof is not. “The lack of evidence of actual confusion carries little weight, especially in an ex parte context.” Majestic Distilling, 65 USPQ2d at 1205 (internal citations omitted) (“uncorroborated statements of no known instances of actual confusion are of little evidentiary value”). See also In re Bisset-Berman Corp., 476 Serial No. 86279815 - 11 - F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of applicant's corporate president's unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion); J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). In any event, the record is devoid of probative evidence relating to whether there have been meaningful opportunities for actual confusion to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Accordingly, the du Pont factor of the length of time during and conditions under which there has been contemporaneous use without evidence of actual confusion is neutral. D. Conclusion We have carefully considered all evidence of record and Applicant’s arguments, even if not specifically discussed herein, as they pertain to the relevant du Pont factors. We treat as neutral any du Pont factors for which there is no evidence or argument of record. Because the marks are highly similar when viewed in their entireties, and the goods identified in the application are legally identical, in part, to the goods identified in the registration, we find that confusion is likely between Applicant’s mark YONI OIL and Registrant’s mark YONI BUTTER. Decision: The refusal to register Applicant’s mark YONI OIL under Section 2(d) is affirmed.