Bimca Y Asociados, S.A. De C.V.

Trademark Trial and Appeal BoardJan 12, 2012

No. 77360365 (T.T.A.B. Jan. 12, 2012)

Mailed: January 12, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Bimca Y Asociados, S.A. De C.V. ________ Serial No. 77360365 _______ Kathleen A. Pasulka of Procopio Cory Hargreaves & Savitch LLP for Bimca Y Asociados, S.A. De C.V. Cristina M. Sobral, Trademark Examining Attorney, Law Office 109 (Gwen Stokols, Acting Managing Attorney). _______ Before Holtzman, Taylor and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Bimca Y Asociados, S.A. De C.V. (“applicant”) filed an intent-to-use application for the mark GRAVITA and design, shown below for the following goods, as amended: Goods made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 77360365 2 meerschaum and substitutes for all these materials, or of plastic, namely, picture frames, furniture fittings, bolsters, in Class 20. In the application, applicant stated that “[t]he foreign wording in the mark translates into English as ‘It Gravitates.’” The examining attorney refused registration under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark, when used in connection with the listed goods, so resembles the registered mark GRAVITA, in standard character form, for “furniture; recliners; seating furniture,” in Class 20,1 as to be likely to cause confusion. The registration states that “[t]he foreign wording in the mark translates into English as ‘gravity.’” Our determination of likelihood of confusion 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. 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 1 Registration No. 3702192, issued October 27, 2009. Serial No. 77360365 3 analysis, two key considerations are the similarities between the marks and the similarities between the goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). A. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We turn first to the du Pont factor focusing on 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, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). 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 overall commercial impression so that confusion as to the source of the goods 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 1835, Serial No. 77360365 4 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). Although the applicant’s mark is displayed in a stylized script, the mark in both the application and the cited registration is the word “Gravita.” Thus, the primary question is whether the difference in appearance caused by applicant's stylized script is sufficient to distinguish its mark from the cited mark. In this regard, it is a well-established principle that 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 the ultimate conclusion rests on a consideration of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Dixie Rest., 105 F.3d at 1407, 41 USPQ2d 1531 (affirming TTAB finding that DELTA was the dominant feature of the mark THE DELTA CAFE and design, and that the design element and generic word “CAFE” were insufficient to overcome likelihood of confusion with the registered mark DELTA). We conclude that the word “Gravita” is the dominant portion of applicant’s mark and is entitled to greater weight than its display because it is the word “Gravita” by which consumers would refer to applicant’s goods. See In Serial No. 77360365 5 re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). See also CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed”); Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395-396 (Fed. Cir. 1983). Although applicant’s mark is highly stylized, this difference does not alter the manner in which consumers would view or pronounce the mark. A customer that has been satisfied with applicant's goods would recommend them by calling them GRAVITA picture frames, furniture fittings. Despite the stylization, the word “Gravita” is still a recognizable part of the mark. Therefore, it is highly unlikely that consumers would differentiate applicant’s mark from the registered mark. Moreover, because the registrant’s mark is displayed in standard character form, it is not limited to any special stylization and we must assume that it could be displayed in a script style that is similar to the display adopted by applicant. In re RSI Systems LLC, 88 USPQ2d 1445, 1448 (TTAB 2008). Serial No. 77360365 6 In view of the foregoing, we find that the marks are similar in terms appearance, sound, meaning and commercial impression. B. The similarity or dissimilarity and nature of the goods, channels of trade and classes of consumers. The mark in the cited registration is for furniture and applicant is seeking to register its mark for picture frames, furniture fittings, and bolsters.2 It is well settled that applicant’s goods and the registrant’s goods do not have to be identical or directly competitive to support a finding that there is a likelihood of confusion. It is sufficient if the respective products are related in some manner and/or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks used in connection therewith, give rise to the mistaken belief that they emanate from or are associated with a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); In re 2 A “bolster” is “a long, often cylindrical, cushion or pillow for a bed, sofa, etc. … any pillow, cushion, or pad.” The Random House Dictionary of the English Language (Unabridged), p. 235 (2nd ed. 1987). The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 77360365 7 International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The Examining Attorney has submitted numerous use- based, third-party registrations for products listed in both the application and registration at issue. Third- party registrations which individually cover a number of different services that are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed goods are of a type which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d at 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The registrations listed below are representative.3 Mark Reg. No. Goods PRINCE MUMBAI INDIA 239700 Furniture, namely picture frames, chairs, seats, furniture fittings STARBAY and design 3190501 Furniture, furniture fittings in the nature of furniture handles and plastic and wood knobs OSTAVIDO 3532197 Furniture fittings, beds, chairs, tables, seats and bolsters “Chinese letters” 3610114 Furniture, furniture fittings, cushions TSR DESIGN 3649860 Furniture, furniture fittings 3 We have not included the entire description of goods for each of the registrations. Only the goods in both applicant’s application and registrant’s registration are listed. Serial No. 77360365 8 The Examining Attorney also submitted the following evidence to show that the goods in the application and registration move in the same channels of trade and are sold to the same classes of consumers: 1. Excerpts from the RESTORATION HARDWARE website (restorationhardware.com) advertising the sale of picture frames and furniture; 2. Excerpts from the CRATE & BARREL website (crateandbarrel.com) advertising the sale of picture frames, furniture and bolsters; and 3. Excerpts from the POTTERY BARN website (potterybarn.com) advertising the sale of furniture, picture frames, and bolsters. This evidence is sufficient to establish a prima facie case that the goods are related, that they move in the same channels of trade and that they are sold to same classes of consumers. In its brief, applicant did not address the similarity of the goods, channels of trade or classes of consumers. C. Balancing the factors. The du Pont factors require to us to consider the thirteen factors for which evidence has been made of record in likelihood of confusion cases. In view of the facts that the marks are similar and the goods are related, move Serial No. 77360365 9 in the same channels of trade and are sold to the same classes of consumer, we find that applicant’s mark GRAVITA and design for “goods made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl, meerschaum and substitutes for all these materials, or of plastic, namely, picture frames, furniture fittings, bolsters” is likely to cause confusion with the mark GRAVITA, in standard character form, for “furniture; recliners; seating furniture.” Decision: The refusal to register is affirmed.