Bogdan Miltchev

Trademark Trial and Appeal BoardJun 9, 2017

No. 86870335 (T.T.A.B. Jun. 9, 2017)

This Opinion is Not a Precedent of the TTAB Mailed: June 9, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Bogdan Miltchev _____ Serial No. 86870335 _____ Luke Brean of Breanlaw, LLC, for Bogdan Miltchev. Timothy J. Callery, Trademark Examining Attorney, Law Office 121, Alyssa Steel, Managing Attorney. _____ Before Zervas, Cataldo and Pologeorgis, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Bogdan Miltchev (“Applicant”) seeks registration on the Principal Register of the standard character mark CORELLI MOTOGEAR for “motorcycle apparel, namely, motorcycle gloves, motorcycle jackets, and motorcycle rain suits” in International Class 25.1 1 Application Serial No. 86870335, filed on January 8, 2016 pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), asserting a bona fide intent to use the mark in commerce. Serial No. 86870335 - 2 - The Examining Attorney refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on Registration No. 34863552 for the standard character mark MOTOGEAR for the following International Class 12 goods: accessories for motorized vehicles, namely, fitted covers for vehicles, cargo packs, cargo bags, cargo organizers, namely, bags, packs, racks, rack storage containers for motorized vehicles, storage containers for motorized vehicles, storage cases for motorized vehicles; accessories for motorized vehicles, namely, bags, packs, racks, rack storage containers for motorized vehicles, storage containers for motorized vehicles, storage cases for motorized vehicles; motorcycle fitted covers, power equipment fitted covers for vehicles. After the Examining Attorney issued a final Office Action, Applicant appealed the refusal to register. Both Applicant and the Examining Attorney filed briefs. We affirm the refusal to register. Likelihood of Confusion Our determination under Section 2(d) of the Trademark Act is based on an analysis of the probative facts in evidence that are relevant to the factors bearing on a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the 2 Registered August 12, 2008, Section 8 and 15 affidavits accepted (April 1, 2014). Serial No. 86870335 - 3 - 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); see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). Strength of registrant’s mark “In determining the strength of a mark, we consider both its inherent strength based on the nature of the mark itself and its commercial strength, based on the marketplace recognition value of the mark.” American Lebanese Syrian Assoc., 101 USPQ2d 1022, 1028 (TTAB 2011) (citing Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) and McCarthy on Trademarks and Unfair Competition § 11:83 (4th ed. 2011) (“The first enquiry focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another’s use.”)). Applicant argues that “motogear” “is broadly used in the motorized vehicle industry.”3 Applicant cites to (i) a one page listing of ten search results from the Google search engine for the term “motogear,” which also states that a total of 462,000 hits were located, and (ii) “screenshots of four different motorcycle retailers who have adopted the ‘motogear’ moniker in common law usage.”4 The sheer number of search 3 Applicant’s brief at 6, 4 TTABVUE 7. 4 Id. Serial No. 86870335 - 4 - engine hits has limited probative value because we do not know of the context in which “motogear” is used, whether the websites included in that number are active or are duplicates and whether they pertain to goods of the kind involved in this proceeding. Further, while each of the ten search results use the term “motogear” in the motorcycle context, two are from amazon.com and two are from walmart.com. From their descriptions, they likely refer to registrant’s motorcycle accessories (three, in fact, refer to a MOTOGEAR motorcycle cover). Of the four screenshots submitted, one is from corellimotogear.com, presumably Applicant’s, and the remaining three do not depict goods bearing MOTOGEAR but rather offer retail sale of motorcycle- related goods.5 This evidence does not establish commercial weakness of MOTOGEAR. As far as inherent weakness of the term, Applicant states that registrant’s mark “bring[s] to mind accessories and gear targeting motor-sports.”6 MOTOGEAR is a combination of “moto” and “gear.” “Gear” is defined in Merriam-Webster’s Dictionary as “1 a : clothing, garments b : movable property : goods .”7 There is no indication 5 Mredsmoto.com website stating, “We offer jackets, pants, helmets, boots, gloves, for all weather conditions. Name brands you can rely on - Rev’lt, Olympia, Scorpion and more! Arai, Shoei, Schuberth and Scorpion helmets.” August 18, 2016 Resp., TSDR 13; and webpage from TT Moto Gear stating, “Owned and operated by a knowledgeable, passionate and experienced sport bike expert, TT Moto Gear is now the exclusive East Coast distributor for Kushitani products, as well as an authorized dealer for RS-Taichi, Arai, Sidi boots, and Forcefield body armor.” Id. at 15. 6 Applicant’s brief at 6, 4 TTABVUE 7. 7 Accessed from https://www.merriam-webster.com/dictionary/gear. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). Serial No. 86870335 - 5 - that “moto” is a defined English language term, but in view of its proximity in sound and appearance to “motor” as well as the few listings on the Google page of search results which use “moto” in the context of motorcycling goods, we find that the combined term is slightly suggestive of garments and “moveable property” used in connection with motorcycles. Applicant has established only three active uses of “moto” or “motogear” by third parties. We also keep in mind that MOTOGEAR is a registered mark, and must be accorded all of the presumptions that are to be accorded a registered mark pursuant to Section 7(b) of the Trademark Act, 15, U.S.C. § 1057(b). We therefore recognize the registration as prima facie evidence of the validity of the registered mark and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods specified in the registration. Similarity of the Marks We now compare the marks for similarities and dissimilarities in appearance, sound, connotation and commercial impression. Palm Bay Imps., 73 USPQ2d at 1692. 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 offered under the respective marks is likely to result. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Under actual marketing conditions, consumers do not necessarily have the luxury of making side- by-side comparisons between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB Serial No. 86870335 - 6 - 1980). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re Assoc. of the United States Army, 85 USPQ2d 1264 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Registrant’s mark is contained in its entirety within Applicant’s two-term mark. Likelihood of confusion has been found where a term is added to a registered mark. In re Chica Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007) (affirming refusal to register CORAZON BY CHICA & Design based on a registration of CORAZON in stylized format, stating “to many consumers, applicant’s mark for the identical word ‘Corazon’ followed by the phrase ‘BY CHICA’ will simply be viewed as the identification of the previously anonymous source of the goods sold under the mark CORAZON”); In re Apparel Ventures, Inc. 229 USPQ 225, 226 (TTAB 1986) (“Applicant has chosen as its mark the same word already registered by registrant and simply added ‘by sassafras’ to it. The words ‘by sassafras’ indicate to prospective purchasers that ‘sassafras’ is the name of the entity which is the source of the ‘SPARKS’ brand clothing. Prospective purchasers do not necessarily know or care which business calls itself ‘sassafras,’ but they would assume that when ‘SPARKS’ appears on two similar products they both come from the same source.”). Both the Examining Attorney and Applicant consider the term CORELLI an Italian surname and we have no reason to disagree with them. Applicant adds, “registrant’s mark presents no commercial impression that brings to mind a Serial No. 86870335 - 7 - particular Italian family nor does it bring to mind Italy.”8 The Examining Attorney responds, that “[a]dding a term to a registered mark, … generally does not obviate the similarity between the compared marks, nor does it overcome a likelihood of confusion under Section 2(d)” and “the only exceptions to the general rule outlined above apply when (1) the matter common to the marks is merely descriptive or diluted, and not likely to be perceived by purchasers as distinguishing source, or (2) the compared marks in their entireties convey a significantly different commercial impression—neither of which is the case here,” citing TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1207.01(b)(iii); Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); and Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004). McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition, § 23:50 (4th ed.) offers the following: [A]s a general rule, infringement cannot be avoided by adding a personal name or company name to a mark similar to a senior user’s trademark. For example, those who encounter the hypothetical junior user’s mark JOSEPH’S STARBUCKS on a coffee shop will be likely to think that this is another outlet in the senior user’s chain of shops, not something different and independent. However, if the basic mark is a relatively weak term and the impression of the overall marks is different, there will be no likelihood of confusion. Lane Limited v. Martin Brinkmann Aktiengesellschaft, 145 USPQ 158, 160 (CCPA 1965), is instructive on the question of weakness of common term(s): 8 Applicant’s brief at 6, 4 TTABVUE 7. Serial No. 86870335 - 8 - While we recognize that the word “mixture” is highly descriptive of tobacco products and that the word “royal” is a highly suggestive term which has been frequently used to indicate high quality, this does not necessarily preclude opposer from acquiring some protectible rights in “ROYAL MIXTURE”. Cf. King-Kup Candies, Inc., v. King Candy Company, 129 USPQ 272 (CCPA, 1961). Where, as here, applicant has appropriated opposer’s mark in its entirety and merely added the surname “BRINKMANN” thereto, it is our opinion that such an addition is insufficient to distinguish the marks of the parties. See: Richard Hellmann, Inc. v. Oakford & Fahnestock, 12 USPQ 31 (CCPA, 1932); and Celanese Corporation of America v. E. I. du Pont de Nemours & Company, 69 USPQ 69 (CCPA, 1946), and cases cited therein. It is concluded, therefore, that as applied to tobacco products applicant’s mark so resembles the mark of opposer as to cause a likelihood of confusion or mistake or to deceive. On the present record, we have found MOTOGEAR to be slightly suggestive, not weak. Applicant’s mark merely adds an Italian-sounding surname to registrant’s mark, leading consumers to mistakenly believe that CORELLI MOTOGEAR is related to registrant’s line of goods, and specifically identifies the source of motorcycle apparel, now offered by registrant. This addition does not give the impression that the overall marks point to different sources, even if CORELLI is an Italian-sounding surname. In comparing the marks under the first du Pont factor, we must take into account the fallibility of purchasers’ memory over time and the fact that purchasers tend to retain a general rather than a specific impression of the many trademarks they encounter. While Applicant’s and registrant’s marks are not identical, that is not the test under the first du Pont factor. See In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1468 (TTAB 1988). We find that any distinction in the marks caused by the Serial No. 86870335 - 9 - additional term CORELLI is outweighed by the overall similarity resulting from the shared identical term MOTOGEAR. The du Pont factor regarding the similar of the marks hence favors a finding of likelihood of confusion. Similarity of goods, channels of trade and classes of consumers We now turn to the goods as they are identified in the application and cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (goods as identified in involved application and cited registration compared); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also, Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). If the goods are described broadly, and there is no limitation as to the nature, type, channels of trade or class of purchasers, it is presumed that the registration encompasses all goods of the type described, that they move in all channels of trade normal for these goods, and that they are available to all usual classes of purchasers. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). The Examining Attorney relies on several webpages in the record in support of his contention that the same entity is often the source of motorcycle apparel, accessories and covers, and markets such goods under the same mark. See, for example, the following submitted with the September 12, 2016 Office Action: harley-davidson.com Offering motorcycle jackets, gloves, bags, packs, racks and rack storage containers for motorcycles, bearing the same mark. Serial No. 86870335 - 10 - ducati.com Offering fitted covers, motorcycle jackets and gloves, bearing the same mark. victorymotorcycles.com Offering packs, motorcycle fitted covers, saddlebags, motorcycle rain suits, gloves and jackets under the same mark. suzukicycles.com Offering fitted covers, packs and motorcycle jackets on manufacturer’s website. store.indianmotorcycle.com Offering luggage racks, bags, jackets and gloves on manufacturer website. The Examining Attorney’s evidence persuades us that there is a commercial relationship among the goods. The websites demonstrate that the goods identified in Applicant’s and registrant’s respective identifications of goods are manufactured by the same entities and may be sold under the same mark and offered on the same websites. Applicant argues that there are differences among the goods: Registrant produces a wide range of storage related accessories, including bags, storage cases, packs and racks, and fitted covers for a variety of motorized vehicles. In contrast, Applicant produces highly specialized protective apparel for motorcycling racing, namely racing jackets and racing suits. … Applicant’s racing leathers are highly technical protective equipment made of thick leather and technical fabrics such as Kevlar. Their purpose is to protect motorcycle riders from severe injury and abrasion in cases of high-speed crashes. Given the dissimilar nature of the goods of both parties, there is little likelihood of confusion.9 9 Applicant’s brief at 7, 4 TTABVUE 8. Serial No. 86870335 - 11 - It is well settled, however, that the fact that the goods may differ is not controlling. The issue to be determined is whether there is a likelihood of confusion as to the source of the goods, not as to the goods themselves. In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). The Examining Attorney also argues that the channels of trade and the classes of consumers are the same for both Applicant’s and registrant’s goods. (Applicant is silent on the issue of trade channels and classes of consumers.) Given that there are no limitations in the identifications in the applications or registration, the webpages introduced by the Examining Attorney persuades us that the channels of trade and classes of purchasers (members of the motorcycle riding public) overlap. See Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). In view of the evidence of record and for the reasons stated, and because the goods are both used in connection with motorcycles, we find that the du Pont factors regarding the similarity of the goods, as well as established, likely to continue trade channels and classes of purchasers, favor a finding of likelihood of confusion. Balancing the factors Applicant’s mark and the cited mark are similar, and the goods, trade channels and classes of consumers are related. Thus, upon consideration of all of the arguments offered by the Examining Attorney and Applicant, and all the evidence in the record, including evidence and arguments not specifically mentioned in this decision, we find Serial No. 86870335 - 12 - that there is a likelihood of confusion between Applicant’s and registrant’s marks for their respective goods. Decision: The refusal to register under Section 2(d) is affirmed.