Anthony L&S, LLC

Trademark Trial and Appeal BoardMar 23, 2012

No. 77967215 (T.T.A.B. Mar. 23, 2012)

Mailed: March 23, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Anthony L&S, LLC. ________ Serial No. 77967215 _______ William H. Cox of Gordon Herlands Randolph & Cox, for Anthony L&S, LLC. Mark Shiner, Trademark Examining Attorney, Law Office 102 (Karen M. Strzyz, Managing Attorney). _______ Before Kuhlke, Bergsman, and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Anthony L&S, LLC (“applicant”) filed an application to register the mark BFFL!, BEST FRIENDS FOR LIFE! and design, as shown below, for goods identified as “footwear, shirts, pants, jackets, and headwear,” in International Class 25:1 1 Serial No. 77967215, file March 24, 2010, pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77967215 2 The Trademark Examining Attorney refused registration of applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so resembles the registered mark BFFLZ,2 in standard character form, for “footwear,” in International Class 25, that when used on or in connection with applicant’s identified goods, it is likely to cause confusion or mistake or to deceive. Upon final refusal of registration, applicant filed a timely appeal. Both applicant and the examining attorney filed briefs, and applicant filed a reply brief. For the reasons discussed herein, the Board affirms the refusal to register. We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a 2 Registration No. 3743191, issued January 26, 2010. Serial No. 77967215 3 likelihood of confusion. 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 Company, Inc., 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 or services. 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”). The Goods and Channels of Trade The application identifies solely “footwear,” which is also included in the cited registration. The examining attorney has also submitted numerous third-party registrations that include both “footwear,” as identified by the application, along with goods identified in the cited registration. Evidence of use- based, third-party registrations serves to suggest that the goods are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). We find the goods to be in-part identical and otherwise closely related. Because the goods described in the application and the cited registration are in-part identical, we must presume that the channels of trade and classes of purchasers are the same. Serial No. 77967215 4 See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”). Additionally, there is nothing in the recital of goods in either the cited registration or the application that limits either registrant’s or applicant’s channels of trade. See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) (because there are no limitations as to channels of trade or classes of purchasers in either the application or the cited registration, it is presumed that the registration and the application move in all channels of trade normal for those services, and that the services are available to all classes of purchasers for the listed services). In other words, there is nothing that prevents the applicant’s “footwear” from being sold in the same stores and to the same classes of consumers that purchase registrant’s “footwear” as well. Accordingly, we find that these du Pont factors weigh heavily in favor of finding a likelihood of consumer confusion. The Marks Preliminarily, we note that the more similar the goods at issue, the less similar the marks need to be for the Board to Serial No. 77967215 5 find a likelihood of confusion. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). In comparing the marks, we are mindful that the test 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 so that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). The mark in the cited registration consists solely of the letters “BFFLZ,” in standard character form. As this is simply a string of letters, it has no clear connotation or commercial impression. However, the examining attorney has submitted several entries into the record, showing that consumers perceive Serial No. 77967215 6 the term “BFFLZ” to mean “Best Friends for Life.” Some examples include the following: What does BFFLz mean? Best Answer: Best friends for life. . . . they think its [sic] even cooler to add the z. Other Answers: best friends for life Yahoo Answers; answers.yahoo.com. BFFLz stands for Best friends for life. Sweethearts.blogspots.com Bfflz=best friends for life; You Tube; www.youtube.com Oh yea my bfflz (Best friends for life) are so awesome and funny I absolutely luv them there [sic] so awesome and they certinly [sic] know how to dance!! http//cuteycinnamon.blogspot.com BFFLZ is Best Friends for Life. Best Friends for life. Haha. I heard my sister use it, she’s fourteen. Had to steal it. The Z on the end makes it THAT much cooler. Mylifeisaverage.com Applicant’s mark includes the term BFFL, BEST FRIENDS FOR LIFE! and design. This is in sight and sound somewhat longer than the mark in the cited registration. However, it incorporates the letters “BFFL” from the mark in the cited registration. In addition, consumers are often known to use shortened forms of names, and it is likely that applicant’s mark, also, will be referred to – especially by those most likely to be attracted to these products -- by the shortened “BFFL.” See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring: “the users of language have a universal habit of shortening full names – from haste or laziness or just economy of words”). Serial No. 77967215 7 Furthermore, as the evidence shows that the connotation and commercial impression of the mark in the cited registration is likely to be “best friends for life,” it would appear that the commercial impression of both marks is the same. In this regard, applicant argued in its August 20, 2010 response to office action that “the cited mark means BEST FEET FOR LIFE as evidenced by the print out of a web page from the registrant’s web site attached hereto as Exhibit A.” However, applicant did not attach the exhibit, and there is no evidence of record of any other meaning, connotation, or commercial impression of “BFFLZ” besides “best friends for life.” Applicant agrees that the BFFLZ mark is arbitrary for the goods in the cited registration. Id. Regarding the design aspect of applicant’s mark, we find the slight flower design to be a less significant portion of the mark, since consumers are likely to call for, or refer to, the goods by their name. CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir. 1983); In re Dakin’s Miniatures Inc., 59 UPSQ2d 1593, 1596 (TTAB 2001); In re Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). The flower design, because it is small and surrounds the letters “BFFL,” serves to draw attention to the word portion. Meanwhile, since the mark in the cited registration is registered in standard character format, it might be displayed in any of a number of different ways, including one resembling applicant’s mark. See Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (“If the registrant ... obtains a standard character mark Serial No. 77967215 8 without claim to ‘any particular font style, size or color,’ the registrant is entitled to depictions of the standard character mark regardless of font, style, size, or color, not merely ‘reasonable manners’ of depicting its standard character mark.”) Viewing the marks in their entireties, we find that the strong similarities in commercial impression outweigh the differences of the marks as to their sight and sound, and this du Pont factor weighs in favor of finding a likelihood of consumer confusion. Conclusion In summary, we have carefully considered all of the evidence and arguments of record relevant to the pertinent du Pont likelihood of confusion factors. We conclude that with legally identical goods travelling in the same channels of trade, and similar marks with similar connotations, there is a likelihood of confusion between applicant’s mark BFFL! BEST FRIEND FOR LIFE! and design, for which it seeks registration for “footwear, shirts, pants, jackets and headwear,” and the registered mark BFFLZ for “footwear.” Decision: The refusal to register is affirmed.