Belcaro Group, Inc.

Trademark Trial and Appeal Board

Nov 22, 2004

No. 75926911 (T.T.A.B. Nov. 22, 2004)

Mailed: November 22, 2004
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Belcaro Group. Inc.
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Serial No. 75926911
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David A. Weinstein, Esq. for Belcaro Group, Inc.
Martha L. Fromm, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______
Before Hairston, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Belcaro Group, Inc. has filed a trademark application
to register the mark SHOPATHOME.COM for, as amended,
“marketing services, namely, providing qualified sales
leads to businesses that sell via direct marketing in print
and electronic form; [and] promoting the goods and services
of others through the provision of a web site featuring
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75926911
2
links to the on-line catalogs and web sites of a wide
variety of direct marketing retailers.”1
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), in view of the mark shown below,
previously registered for “computerized on-line and
interactive television retail services featuring the goods
and services of others in the field of consumer retail
products, including but not limited to health and beauty
products, exercise items, collectible items, autographed
memorabilia, jewelry, sports cards and other memorabilia;
and entertainment services in the nature of ongoing
1 Serial No. 75926911, filed February 22, 2000 under Section 2(f)
of the Trademark Act, and asserting first use and first use in
commerce at least as early as 1994.
Ser No. 75926911
3
television programs in a home-shopping television format
and information programming in the nature of product
information and collectible news which promotes the goods
and services of others for retail sale.”2
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
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 likelihood of
confusion issue. In re E. I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering
the evidence of record on these factors, we keep in mind
that “[t]he fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
2 Registration No. 2,679,341 issued January 28, 2003, with a
Section 2(f) claim as to the words “SHOP AT HOME”. In addition,
the word “NETWORK” is disclaimed apart from the mark as shown.
The Examining Attorney also initially refused registration in
view of a second registration, No. 2,480,194 issued August 21,
2001 for the mark MUSEUMSHOP@HOME for promotion and information
services concerning museums via a global computer network, owned
by a different entity. The Examining Attorney withdrew this
refusal in the final office action.
Ser No. 75926911
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The Examining Attorney contends that applicant’s mark
and the cited mark are similar because each “begin[s] with
the identical three words, ‘SHOP AT HOME.’ The last word
in each mark is simply a term which refers to online
services. Therefore, the proposed and cited marks create a
highly similar commercial impression.” (Brief, p. 6).
Further, the Examining Attorney maintains that applicant’s
services of “promoting the goods and services of others
through the provision of a web site featuring links to the
on-line catalogs and web sites of a wide variety of direct
marketing retailers” and registrant’s “computerized on-line
and interactive television retail services featuring the
goods and services of others in the filed of consumer
retail products” are closely related. In support of her
position with respect to the relatedness of the services,
the Examining Attorney submitted copies of 20 third-party
registrations that cover on-line retail services, on the
one hand, and the services of promoting the goods and
services of others on-line by providing links to the web
sites of others, on the other hand.
Applicant, in urging reversal of the refusal to
register, contends that the Examining Attorney has
improperly dissected the marks and has failed to consider
that applicant’s mark consists of the combined term
Ser No. 75926911
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SHOPATHOME.COM. Further, applicant argues that its
services of providing links to third-party on-line catalogs
differ from the on-line retail services in the cited
registration. Also, applicant contends that its mark is
entitled to registration inasmuch as the PTO allowed the
mark MUSEUMSHOP@HOME to register over the cited mark.
We first consider the services rendered under the
marks. At the outset, it should be noted that it is not
necessary that the services be identical or even
competitive in nature in order to support a finding of
likelihood of confusion. It is sufficient that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under circumstances that would give rise, because of the
marks used in connection therewith, to the mistaken belief
that the services originate from or are in some way
associated with the same source. In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
In the present case, we find that the record supports
the Examining Attorney’s position that applicant’s services
of promoting the goods and services of others through the
provision of a web site featuring links to the on-line
catalogs and web sites of a variety of direct marketing
retailers are closely related to registrant’s computerized
Ser No. 75926911
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on-line and interactive television retail services
featuring the goods and services of others in the field of
consumer retail products. The Examining Attorney has
introduced copies of 20 use-based third-party registrations
to demonstrate the relationship between these services, by
showing in each instance that a single entity has adopted
one mark for both on-line retail store services and the
services of promoting the goods and services of others on-
line by providing links to web sites of others.
Although these registrations are not evidence that the
marks shown therein are in commercial use, or that the
public is familiar with them, they nevertheless are
probative evidence to the extent that they suggest that the
services identified therein are of a type which may emanate
from a single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); and
In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470, n.
6 (TTAB 1988).
We consider next the marks. In determining whether
marks are dissimilar or similar, 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 that confusion as to the source of the goods
Ser No. 75926911
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and/or services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Corp., 190 USPQ 106 (TTAB 1975).
Furthermore, although the marks at issue must be
considered in their entireties, it is well-settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985). For example, “that a
particular feature is descriptive or generic with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark ….”
Id. At 751.
Applying these principles to the present case, we find
that applicant’s mark SHOPATHOME.COM and registrant’s mark
SHOP AT HOME NETWORK and design, when compared in their
entireties are highly similar in sound, appearance,
connotation and overall commercial impression. The
disclaimed word NETWORK in registrant’s mark is highly
descriptive/generic for the type of services rendered by
registrant. Also, NETWORK appears below SHOP AT HOME in
Ser No. 75926911
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much smaller lettering. Thus, the word NETWORK, as it
appears in registrant’s mark, plays a subordinate role in
our likelihood of confusion analysis. With respect to
applicant’s mark, the top-level domain indicator therein
“.COM” has no source-identifying significance. Thus, it is
the SHOPATHOME portion of applicant’s mark that it
dominant. Although applicant has eliminated the spaces
between the words, the individual words remain evident, and
are reinforced by the way the mark would be read by
consumers. That is, SHOPATHOME would be understood as SHOP
AT HOME. Thus, the dominant portions of the marks are
virtually identical. Further, both marks have similar
connotations, namely, to “shop at home”, either on-line or
via a television network. When the marks are considered in
their entireties, and giving appropriate weight to the
dominant portion of each mark, we find that they are highly
similar in terms of sound, appearance, connotation and
overall commercial impression.
Purchasers familiar with registrant’s computerized on-
line and interactive television retail services featuring
the goods and services of others in the field of consumer
retail products rendered under the mark SHOP AT HOME
NETWORK and design, upon encountering applicant’s mark
SHOPATHOME.COM in connection with its services of promoting
Ser No. 75926911
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the goods and services of others through the provision of a
web site featuring links to the on-line catalogs and web
sites of a wide variety of direct marketing retailers,
would be likely to believe that applicant’s services
originate from the same source as registrant’s services or
are somehow affiliated with or sponsored by registrant.
Finally, registration of the mark MUSEUMSHOP@HOME over
the cited mark does not compel us to reach a different
result here. As often noted by the Board, each case must
be decided on its own merits and there is nothing in this
record to indicate the reasons for the allowance of the
registration of the mark MUSEUMSHOP@HOME. See In re Nett
Designs, Inc., 57 USPQ2d 1564 (Fed. Cir. 2001). [“Even if
some prior registrations had some characteristics similar
to [applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board”].
Furthermore, we note that the services in the
MUSEUMSHOP@HOME registration are different from the
services in applicant’s application and the cited
registration.
Decision: The refusal to register is affirmed.