Ariix, LLC

Trademark Trial and Appeal BoardSep 9, 2016

No. 86135227 (T.T.A.B. Sep. 9, 2016)

This Opinion is not a Precedent of the TTAB Mailed: September 9, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Ariix, LLC _____ Serial No. 86135227 _____ Tyler B. Jones, Esq. for Ariix, LLC. Anne C. Gustason, Trademark Examining Attorney, Law Office 117, Hellen Bryan-Johnson, Managing Attorney. _____ Before Wellington, Wolfson, and Kuczma, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Ariix, LLC (“Applicant”) seek to register the standard character mark REVIIVE on the Principal Register for “aromatic shampoo and Serial No. 86135227 - 2 - conditioner sold through Applicant's exclusive network of direct sales distributors” in International Class 3.1 The Trademark Examining Attorney refused registration of the mark on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). The Examining Attorney’s position is that Applicant’s mark so resembles the registered mark RÉ VIVE for goods that include “non-medicated skin products, namely, creams, lotions, gels, toners, cleaners and peels” in International Class 3, that it is likely to cause confusion or mistake or to deceive prospective purchasers.2 After the Trademark Examining Attorney made the refusal final, Applicant appealed. We affirm the refusal to register. Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. 1 Application Serial No. 86135227 was filed on December 4, 2013, under Section 1(b) of the Trademark Act, based on an allegation of a bona fide intent to use the mark in commerce. 2 Registration No. 2539403, issued on February 19, 2002; renewed. The mark was registered in “typeset” form. Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended to replace the term “typed” drawing with “standard character” drawing. A mark depicted as a typed drawing is the legal equivalent of a standard character mark. See In re Brack, 114 USPQ2d 1338, 1339 n.2 (TTAB 2015). Serial No. 86135227 - 3 - 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. The similarity of the marks. We first consider the du Pont likelihood of confusion factor involving the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, “two marks may be found to be confusingly similar if there are sufficient similarities in terms of sound or visual appearance or connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int'l, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), aff'd mem., 979 F.2d 216 (Fed. Cir. 1992) (citation omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1519 (TTAB 2009) (citing Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”)). Serial No. 86135227 - 4 - Moreover, “[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. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). See also 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 mem., 972 F.2d 1353 (Fed. Cir. 1992). We find the involved marks to be extremely similar because they are both likely to be perceived by consumers as intentional misspellings of the word “revive,” with little differences to distinguish them. Applicant’s mark, REVIIVE, merely contains an additional letter “I” whereas Registrant’s mark, RÉ VIVE, contains an accent mark on the first “E” followed by a space. Because the marks so closely resemble the word “revive,” they are not only visually similar but will also likely be pronounced in a similar manner. In addition, the meaning of the word “revive” has some suggestive value in the context of the involved goods and helps impart a similar connotation and commercial impression for the two marks.3 That is, consumers will understand both marks as 3 We take judicial notice that the word “revive” is defined as follows: “to make (someone or something) strong, healthy, or active again.” Merriam-Webster’s Learner’s Dictionary (from online version www.merriam-webster.com). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame Serial No. 86135227 - 5 - suggestive of a rejuvenating or reinvigorating quality to the skin care and hair products. Applicant acknowledges that its mark “appears to be a misspelling of the English word ‘revive,’” but asserts that the registered mark is “broken into two distinct word parts and has [an] acute accent (l’accent aigu) over the ‘e,’ giving a reasonable consumer the commercial impression that RÉ VIVE is a French word, perhaps a misspelling of the French word ‘revivre.’”4 We are not persuaded that the accent and space play a significant role for purposes of distinguishing the two marks. Because there is no correct pronunciation of a mark which is not a common English word, it is impossible to predict how the public will pronounce the registered mark. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1409 (TTAB 2010); In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984). Thus, there is no certainty that the two marks will be pronounced any differently by consumers, even those who speak French. Even if there are consumers who perceive the registered mark as a misspelling of the French word “revivre,” as Applicant suggests, there is no further explanation or evidence showing that the meaning of the French term is significantly different from the English 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), including online dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 4 Brief, p. 3, 4 TTABVUE 4. Serial No. 86135227 - 6 - word “revive.”5 Ultimately, we find it remains more likely that the two marks will be verbalized in a very similar, if not the same, manner due to the near identity in spelling; both marks will also be understood as intentional misspellings of the English word “revive,” and project similar connotations. In assessing the degree of similarity of the marks, we further note that there is no argument, let alone evidence, showing that the term “revive” is diluted in the field of skin or hair care products. Thus, we cannot make a finding that there may be more trademarks with the term REVIVE as part thereof being used in connection with the relevant goods and that, as a consequence, consumers might be accustomed to distinguishing the marks based on otherwise different elements in the marks. Finally, Applicant argues that the use of the “ii” element in its mark “creates a distinct commercial impression” because Applicant employs “a specific branding strategy that points back to the source of the goods … by deliberately nam[ing] its products by incorporating the ‘-ii’ spelling into its product names.”6 Applicant makes reference to two registered marks it owns that also contain the “ii” element. In essence, Applicant 5 According to the Collins French-English Dictionary (online version at www.collinsdictionary.com), the French word “revivre” may be defined as “to be revived.” 6 Brief, p. 4, 4 TTABVUE 5. Serial No. 86135227 - 7 - is attempting to raise a family of marks argument and the Board has long held that this argument is “not available to an applicant seeking to overcome a likelihood-of-confusion refusal.” In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009). See also In re Hitachi High- Technologies Corp., 1772 (TTAB 2014) (establishment of a “family of marks” requires consideration of use of the marks, which usually is beyond the scope of examination in an ex parte proceeding). In an ex parte proceeding, the focus of a likelihood of confusion analysis must be on the mark Applicant seeks to register vis-à-vis the cited mark, and not other marks Applicant may have used or registered. In sum, we find that the marks are extremely similar in appearance, sound, connotation and commercial impression. B. The similarity or dissimilarity and nature of the goods In support of the refusal, the Examining Attorney submitted printouts from five different websites.7 These include: • “Xocai Healthy Chocolate Co.” website (www.mxicorp.com) that advertises a Xophoria-brand anti-aging skin cream alongside a Xophoria-branded shampoo and conditioner product. The following is an excerpt from the website: 7 Submitted with Office action issued on August 18, 2015. The Examining Attorney submitted additional website printouts with her previous Office action (issued on July 7, 2014); however, these materials were being relied upon to show a relationship between goods that were previously identified in the application, i.e., body lotion and body care products, that were later deleted by amendment. Regardless, all materials are of record and we have carefully considered their relevance to the issue now on appeal. Serial No. 86135227 - 8 - • “Garden Isle Bath & Body LLC” website (www.gardenislebathand body.com) offering products in categories such as “shampoo/ conditioner” and “body frosting/ dry skin cream … butter creams & lotions … aloe moisturizers … children’s skin care” • “Aurora Naturally” website (www.warmskin.com) that describes itself as a company that manufactures “high quality skin and hair care products, formulated with natural ingredients.” • “Healing Moringa Tree” website (www.healingmoringatree.com) provides “A-Z Moringa Beauty Products Shampoo, Conditioner, Soap, Oils, Lotions and more … Moringa hair and skin care products that restores [sic] and nourishes [sic] your hair.” The following is an excerpt from the website: • “Walgreens” website (www.walgreens.com) advertising skin and moisturizing cream products alongside a medicated psoriasis “shampoo plus conditioner” product: Serial No. 86135227 - 9 - The evidence is sufficient for purposes of demonstrating a close relationship between Applicant’s goods, namely, shampoo and conditioner and those of Registrant, namely, skin products, such as creams, lotions and gels. Indeed, the record shows that there are “bath and body” companies like Garden Isle and Healing Moringa Tree that specialize in skin and hair care products. The evidence also demonstrates there is the possibility that the same entity may use a single brand for both skin creams as well as hair shampoo and conditioner, e.g., Xophoria shampoo/conditioner and anti-aging skin cream. Accordingly, the du Pont factor involving the similarity of the goods favors a finding of a likelihood of confusion. C. The established and likely-to-continue channels of trade and sophistication of consumers. Applicant’s identification of goods is expressly limited to goods “sold through Applicant’s exclusive network of direct-sales distributors” and it argues that this restriction makes it “impossible for consumers to encounter Applicant’s goods in the same commercial setting as those covered by the registered mark.”8 Applicant also argues that its “exclusive channel of trade forces consumers to make careful, sophisticated, and deliberate choices when purchasing REVIIVE.”9 8 Brief, p. 6, 4 TTABVUE 7. 9 Id. Serial No. 86135227 - 10 - As is evident from the Board’s decision in In re Shoe Works, Inc., 6 USPQ2d 1890 (TTAB 1988), cited by Applicant, the ultimate finding of no likelihood of confusion in that case was based on various relevant factors, and not just the trade channel limitation. The Board particularly placed some emphasis on the fact that Applicant was able to submit a detailed consent agreement between itself and the owner of the cited registration. The Board also acknowledged the differences in the involved goods, i.e., shoes versus pants. In this case, the trade channel restriction for Applicant’s identified goods is a factor that favors a finding of no likelihood of confusion. However, inasmuch as Registrant’s identification of goods is not restricted, its goods may be sold in all other normal trade channels, and prospective consumers who are familiar with Applicant’s goods but unfamiliar with Applicant’s marketing approach may, upon encountering Registrant’s goods, mistakenly believe that Applicant has expanded its distribution network. Moreover, this factor is not outcome determinative; as explained infra, we balance all relevant factors involving a likelihood of confusion based on the record before us. We also disagree with Applicant’s assertion that the trade channel restriction results in consumers being more careful or sophisticated in their purchasing decisions. The relevant consumer for both Applicant’s and Registrant’s goods is anyone interested in purchasing hair shampoo and Serial No. 86135227 - 11 - conditioner, skin cream, skin lotion, skin gels, etc., and this includes the general public. The goods themselves are of a type that may be relatively inexpensive.10 Consequently, although consumers are limited to purchasing Applicant’s goods through Applicant’s “exclusive network,” this does not mean that they are sophisticated purchasers or will be exercising a higher degree of care in their purchasing selections. Balancing the factors. Because the marks are very similar and the goods are related, we find that Applicant's mark, REVIIVE, when used on hair shampoo and conditioner, is likely to cause confusion with the registered mark, RÉ VIVE, for skin products, namely, creams, lotions, gels, toners, cleaners and peels, despite Applicant’s goods being sold via Applicant’s exclusive network of direct sales distributors. As mentioned, the goods are relatively inexpensive and consumers are not necessarily aware of this channel of trade restriction. Consumers already familiar with Registrant’s RÉ VIVE skin creams and lotions, upon encountering Applicant’s REVIIVE hair shampoo and conditioner products, albeit via one of Applicant’s distributors, may mistakenly believe these goods emanate from a common source. Decision: The refusal to register Applicant’s mark is affirmed. 10 As shown above in the evidence excerpt, the Walgreen’s website advertises “shampoo and conditioner” and skin cream for under $ 8.00.