Apex Furniture LLC

Trademark Trial and Appeal BoardMar 17, 2020

87044056 (T.T.A.B. Mar. 17, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: March 17, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Apex Furniture LLC _____ Serial No. 87044056 _____ Laura J. Winston of Offit Kurman, P.A. for Apex Furniture LLC. Alicia Collins Edwards, Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney. _____ Before Zervas, Lykos and Larkin, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: Apex Furniture LLC (“Applicant”) seeks to register on the Principal Register the standard character mark APEXDESK1 for “Ergonomic electric height adjustable 1 The applied-for mark appears on the drawing page as “apexdesk” in all lowercase letters but retains a claim as to standard characters and not special form. The presentation of the mark on the drawing page does not change the nature of the mark from a standard character mark to a special form mark. See Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a) (setting forth requirements for standard character mark). See also In re Calphalon Corp., 122 USPQ2d 1153, 1158-61 (TTAB 2017) (applicant’s amendment of mark from SHARPIN to “SharpIn” did not transform mark from standard character to special form). Our references to Registrant’s mark in this opinion in all uppercase letters reflects the fact that a term registered as a mark in standard character format is not limited to any particular font style, size, or color. See In re Calphalon Corp., 122 USPQ2d at 1153 n.1. Serial No. 87044056 - 2 - desks” in International Class 36.2 Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s applied-for mark so resembles the registered standard character marks APEX STORES (STORES disclaimed) and APEX ONLINE (ONLINE disclaimed) on the Principal Register, both for retail store, mail order purchase and computerized on-line retail services, featuring, domestics, furniture, bedding, kitchenware, major appliances, small appliances, housewares, bathroom accessories, living room and bedroom accessories, table top accessories, flatware, power equipment, electronics, photography, jewelry, cosmetics, toys, giftware, music and video, gardening, handbags, sporting goods, clocks, luggage, home office, grills, clothing, men's and ladies' accessories, shoes, athletic footwear, novelties, food and Christmas items in International Class 35,3 that it is likely to cause confusion or mistake or to deceive. The appeal is briefed. We affirm. I. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor for which there is evidence and 2 Application Serial No. 87044056, filed May 19, 2016, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming April 1, 2015 as the date of first use anywhere and in commerce. 3 Registration Nos. 2443933 and 2562812, registered April 17, 2001 and April 23, 2002; renewed. Serial No. 87044056 - 3 - argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162- 63 (Fed. Cir. 2019). When analyzing these factors, the overriding concerns are not only to prevent buyer confusion as to the source of the services, but also to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (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.”). These DuPont factors, and the others raised by Applicant and/or the Examining Attorney, are discussed below. A. The Goods and Services First we compare the goods and services as they are identified in the involved application and cited registrations. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is well recognized that confusion may be likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those Serial No. 87044056 - 4 - goods, on the other. See In re Detroit Athletic Co., 128 USPQ2d at 1052 (Fed. Cir. 2018) (“[W]e have held that confusion is likely where one party engages in retail services that sell goods of the type produced by the other party . . . .”); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S (stylized) for retail grocery and general merchandise store services and BIGGS and design for furniture likely to cause confusion). Such is the case here. Registrant’s “retail store, mail order purchase and computerized on-line retail services,” feature a variety of goods, including “furniture.” As identified, “furniture” is unrestricted as to any particular type. As such, “furniture” necessarily encompasses all types of furniture, including Applicant’s “ergonomic electric height adjustable desks.” 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.’”). See also Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); Paula Payne Prods. Co. v. Johnson Publ’g Co., Inc., 473 F.2d 901, 177 USPQ 76, 77-78 (CCPA 1973). Thus, based on the identifications alone, Applicant’s goods may be sold via Registrant’s retail services, making them related. Our determination is confirmed by the evidence of record showing that multiple entities have registered a single mark identifying at least one of Registrant’s retail services featuring furniture and also identifying goods that include “furniture” or “office furniture.” See November 14, 2016, Office Action, pp. 2-30 (Registration Nos. Serial No. 87044056 - 5 - 4482847, 4884169, 4980744, 5046400, 5074166, 5055475, 4881478, 4999855, 5060701, and 5048362).4 As a general proposition, third-party registrations that cover goods and services from both the cited registration and an Applicant’s application are relevant to show that the goods and services are of a type that may emanate from a single source under one mark. See, e.g., Detroit Athletic, 128 USPQ2d at 1051; Hewlett-Packard, 62 USPQ2d at 1004; In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Just as we must consider the full scope of the goods and services as set forth in the application and registration under consideration, we must consider the full scope of the goods and services described in a third-party registration. Because the benefits of registration are commensurate with the scope of the goods specified in the certificate of registration, a registration that describes goods or services broadly is presumed to encompass all goods or services of the type described. See Stone Lion, 110 USPQ2d at 1161. Thus, “furniture” in the third-party registrations is sufficiently broad to encompass Applicant’s more specialized type of desk. See, e.g., In re Country Oven, Inc., 2019 USPQ2d 443903, *5-6 (TTAB 2019) (the terms “bakery goods” and “bakery products” in third-party registrations were sufficiently broad to encompass “bread 4 Citations to the prosecution history in the USPTO’s TSDR database are to the downloadable .pdf version. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1402 n.4 (TTAB 2018). Serial No. 87044056 - 6 - buns.”). Applicant, pointing to printouts from Registrant’s website as evidence, argues that the goods and services cannot be related because Registrant does not sell desks of any type. Applicant’s Response to Office Action dated October 10, 2016, Exhibits 4 and 5, pp. 55-61. Notwithstanding Applicant’s argument and evidence regarding the actual scope of the cited Registrant’s commercial use of its marks, we may not limit, by resort to extrinsic evidence, the scope of services as identified in the cited registrations. E.g., In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Fisher Sci. Co., 440 F.2d 43, 169 USPQ 436, 437 (CCPA 1971); In re La Peregrina Ltd., 86 SPQ2d 1645, 1646 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). We therefore find this DuPont factor supports a finding of a likelihood of confusion. B. Established, Likely-to-Continue Channels of Trade Next we consider the established, likely-to-continue channels of trade. The application contains no restriction on the channels of trade or classes of purchasers. We can therefore assume that Applicant’s “ergonomic electric height adjustable desks” move in all relevant trade channels for such goods, including Registrant’s “retail store, mail order purchase and computerized on-line retail services,” and to all relevant consumers of such goods. See Detroit Athletic Co., 128 USPQ2d at 1052 (“the registration does not set forth any restrictions on use and therefore cannot be narrowed by testimony that the applicant’s use is, in fact, restricted to a particular Serial No. 87044056 - 7 - class of purchasers”) (citation omitted); Citigroup, 98 USPQ2d at 1261 (“Because the parties’ trade channels and classes of consumers are unrestricted, the third and fourth DuPont factors also favor Citigroup.”). Indeed, where one party uses its mark on goods that are sold in retail stores that customarily vend those goods, it is clear that the trade channels and customers overlap. See, e.g., Hyper Shoppes (Ohio), 6 USPQ2d at 1026. This presumption is consistent with the evidence discussed in the preceding section. Accordingly, we find this DuPont factor also favors a finding of likelihood of confusion. C. The Marks This DuPont factor involves an analysis of the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (citing DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, 126 USPQ2d at 1746) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). “The 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., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Our analysis cannot be predicated on dissecting the marks into their various Serial No. 87044056 - 8 - components; that is, the decision must be based on a comparison of the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). 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.”). Applicant directs our attention to the obvious visual differences, observing that its mark is displayed in compound form while the cited marks consist of two separate words. Applicant also points to the differences in sound, and the fact that Applicant’s mark consists of two syllables whereas Registrant’s marks consist of three. Elaborating further on the distinctions in pronunciation, Applicant argues that the single-word nature of Applicant’s mark means that it does not incorporate any pauses and thus sounds completely different from the Cited Marks when spoken out loud. Moreover, the hard “x” in the middle of Applicant's Mark and the hard “k” note on which it ends create a distinctive near-rhyme with a lyrical quality (“…ex … desk…”), which is a memorable auditory feature entirely absent from the Cited Marks. Appeal Brief, p. 4; 8 TTABVUE 9. Lastly, Applicant asserts that the involved marks have different connotations and commercial impressions. In Applicant’s view, the APEX element in its mark signifies how the user is able to stand while working due to the adjustability of its desk. By contrast, according to company lore, the APEX element in the cited marks was chosen by the founder because his initials were A.P and because the word “apex” is defined as the “highest point” or “highest level or degree attained, suggesting superiority. Applicant’s Office Action Response dated Serial No. 87044056 - 9 - October 10, 2016, Ex. 1, p. 45 (AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 5th Edition 2016 posted online via THE FREE DICTIONARY) and Exhibit 2, pp. 52-53 (Jeanette Barnes, “He Saw Start, Now End for Apex,” Jan. 25, 2001, CRANSTON HERALD). Applicant’s position is unconvincing. In considering the marks, we agree with the Examining Attorney’s assessment that the word APEX, the initial element in each mark, is dominant. Purchasers are inclined to focus on the first word or portion in a trademark. See Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[It is] a matter of some importance since it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.”); see also, Palm Bay, 73 USPQ2d at 1692 (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”). The wording that follows APEX in each mark, DESK, STORES and ONLINE, is generic, and in the cited mark it is properly disclaimed; and therefore it is of diminished significance for purposes of comparing the marks on the likelihood of confusion question. See, e.g., Cunningham, 55 USPQ2d at 1846 (quoting Nat’l Data, 224 USPQ at 752) (“Regarding descriptive terms, this court has noted that the descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.”); see also In re Dixie Rests., Inc., 41 USPQ2d at 1533- 34 (“DELTA,” not the disclaimed generic term “CAFE,” is the dominant portion of the mark THE DELTA CAFE). Serial No. 87044056 - 10 - Although we have pointed to the identical dominant portions of the marks, we acknowledge the fundamental rule that the marks must be considered in their entireties. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015). Nevertheless, it is likely that consumers, when encountering Registrant’s mark, will focus on the dominant literal portion, namely the word APEX, just as they would focus on the dominant APEX portion in Applicant’s mark. The distinctions in each mark, namely that the generic terms that follow APEX look and sound different, are likely to be overlooked when consumers consider the marks in their entireties. Consumers do not focus on minutia such as the counting of the number of syllables in each mark, but rather on overall impressions. See In re John Scarne Games, Inc., 120 USPQ 315, 315-16 (TTAB 1959) (“Purchasers of game boards do not engage in trademark syllable counting — they are governed by general impressions made by appearance or sound, or both.”). And the fact that Applicant’s mark appears in compound form is of little significance. Again, the emphasis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009) (citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975)). In this regard, consumers familiar with Registrant’s retail services encountering Applicant’s APEXDESK branded goods may mistakenly believe that Applicant’s goods are manufactured and sold by Registrant in its retail channels. Serial No. 87044056 - 11 - In sum, we acknowledge the specific differences in sound and appearance pointed out by Applicant. These differences, however, are outweighed by the similarities of the marks. Thus, when comparing the marks overall, they are similar in sight, sound, connotation and commercial impression. We find this DuPont factor also weighs in favor of finding a likelihood of confusion. D. Conceptual Strength or Weakness of Cited Marks Applicant, relying on four (4) third-party registered marks that incorporate the term APEX, argues that the marks in the cited registrations are conceptually weak and entitled to only a narrow scope of protection. See Applicant’s Response to Office Action dated October 10, 2016, Exhibit 7 (Reg. Nos. 3820062, 3881706, 4570586, and 4538786). Active third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services. See, e.g., In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); Jack Wolfskin, 116 USPQ2d at 1136; Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015). In other words, “[t]hird party registrations are relevant to prove that some segment of the [marks] has a normally understood and well recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.” Id. at 1675 (internal quotation marks omitted). See also Jack Wolfskin, 116 USPQ2d at 1136. In this case, however, none of the third-party registrations are for furniture or services related to the retail sale of furniture. In any event, four third-party Serial No. 87044056 - 12 - registrations fall short of the “voluminous” evidence required to establish that APEX is so commonly registered in connection with Registrant’s retail services featuring furniture that the public will look to other elements in the marks here to distinguish the source of those services. See Juice Generation, 115 USPQ2d at 1673; Jack Wolfskin, 116 USPQ2d at 1136 (discussing “voluminous evidence” of registration and use of paw print design elements). See also Inn at St. John’s, 126 USPQ2d at 1746 (four third-party registrations of varying probative value, including “two for non- identical terms,” found to be “a far cry from the large quantum of evidence of third- party use and third-party registrations that was held to be significant in both” Jack Wolfskin and Juice Generation). The APEX portion of the cited marks is inherently distinctive as evidenced by the registration of the marks on the Principal Register without a claim, in part, of acquired distinctiveness under Section 2(f) of the Trademark Act. Thus, on this record, the cited marks for the identified services are conceptually strong, and Applicant has not shown that the marks have been weakened. E. Conditions of Purchase We consider now the fourth DuPont factor, the conditions under which the goods are likely to be purchased, e.g., whether on impulse or after careful consideration, as well as the degree, if any, of sophistication of the consumers. Purchaser sophistication or degree of care may tend to minimize likelihood of confusion. Conversely, impulse purchases of inexpensive items may tend to have the opposite effect. Palm Bay, 73 Serial No. 87044056 - 13 - USPQ2d at 1695. Applicant contends that the purchasers of its ergonomic desks are highly discriminating. As Applicant explains: Consumers who are looking to spend money on ergonomic desks are doing so for their health and comfort. For example, those with chronic back pain may find it difficult or impossible to sit at a desk for eight hours or possibly even more, and seek out Applicant’s electronic desk, which allows consumers the option to work standing up and thus alleviate their pain and discomfort. Moreover, consumers purchase Applicant's goods with the intent to use the electric desk for many years. When making such a significant and long-term investment, consumers do not make purchasing decisions on impulse but only after deliberate and careful consideration. Applicant’s Brief, p. 13; 8 TTABVUE 18. We agree that due to the intrinsic nature of Applicant’s goods, prospective consumers are likely to make careful, well-researched purchasing decisions. In addition, according to Applicant’s specimen of record, one particular model bearing Applicant’s APEXDESK mark retails for close to $800. For these reasons, this DuPont factor weighs against a finding of a likelihood of confusion. F. Fame Applicant erroneously states that because the record is devoid of fame of the registered marks, this DuPont factor weighs in favor of finding no likelihood of confusion. The absence of such evidence has minimal significance in an ex parte appeal. See In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1086 (TTAB 2016); In re Serial No. 87044056 - 14 - Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006). This factor is therefore neutral. G. Actual Confusion and Contemporaneous Use Lastly, we consider the seventh and eighth DuPont factors. Applicant, relying on its claimed date of first use in its application of April 1, 2015 points to contemporaneous use of its mark with Registrant’s marks and the absence of evidence of actual confusion. A showing of actual confusion would of course be highly probative, if not conclusive, of a likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight. J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). The issue before us is the likelihood of confusion, not actual confusion. Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (actual confusion not required). Further, any suggestion that there has been no actual confusion between the marks based on the coexistence of Applicant’s mark and the cited registration is entitled to little probative value in the context of an ex parte appeal, especially where Applicant has introduced no evidence of actual marketplace conditions. These DuPont factors are therefore neutral. H. Balancing the Factors We have carefully considered all of the evidence made of record, as well as all of the arguments related thereto. The sales conditions and care of the buyers for Applicant’s goods weigh against finding a likelihood of confusion. However, this is outweighed by the similarities of the marks coupled with the sale of Applicant’s goods in Registrant’s retail services. As discussed above, there is no evidence that the cited Serial No. 87044056 - 15 - marks are conceptually weak, and the remaining DuPont factors are neutral. The fact that purchasers are careful does not necessarily mean that they are immune from source confusion. See In re Cynosure, 90 USPQ2d at 1647. Even a more careful, consumer is not likely to understand that the goods and services emanate from different sources. See, e.g., In re Johns-Manville Corp., 180 USPQ 661, 662 (TTAB 1973) (“While the average purchaser of [building doors and asphalt shingles] may be skilled craftsmen, it does not necessarily follow therefrom that they are equally informed as to the source of the products that they use and are, unlike customers for other products, immune from the likelihood of confusion or deception that the statute is attempting to preclude.”). Thus, while there are instances where a single DuPont factor is dispositive, we do not think the fourth DuPont factor plays such a role here, given the similarity in the marks when compared as a whole as applied to retail services involving the sale of Applicant’s goods. See HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods). Weighing these factors, we find confusion likely. Decision: The Section 2(d) refusal is affirmed.