Burlington Merchandising Corporation

Trademark Trial and Appeal BoardAug 24, 2016

No. 86428339 (T.T.A.B. Aug. 24, 2016)

This Opinion is not a Precedent of the TTAB Mailed: August 24, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Burlington Merchandising Corporation1 _____ Serial Nos. 86428339 and 864283542 _____ Karl S. Sawyer, Jr. of Nelson Mullins Riley & Scarborough LLP for Burlington Merchandising Corporation. Lyndsey Kuykendall, Trademark Examining Attorney, Law Office 102, Mitchell Front, Managing Attorney. _____ Before Quinn, Lykos and Hightower, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: On October 20, 2014, Burlington Merchandising Corporation (“Applicant”) filed applications to register the marks SOPHIA & KATE and SOPHIA & KATE COLLECTION in standard characters on the Principal Register for “jewelry” in 1 Burlington Merchandising Corporation is the assignee of Burlington Coat Factory Warehouse Corporation. See Reel/Frame Nos. 5657 / 0383 of the Trademark Office Assignment Recordation Branch records. 2 Because the Board deems the cases to have common questions of fact and of law, and the records are largely identical, the appeals are hereby consolidated. See, e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (Board sua sponte consolidated two appeals). Citations are to the record in Application Serial No. 86428339. Serial Nos. 86428339 and 86428354 - 2 - International Class 14.3 The word COLLECTION in the mark SOPHIA & KATE COLLECTION has been disclaimed. The Trademark Examining Attorney refused registration of Applicant’s marks pursuant to Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that Applicant’s marks so resemble the registered mark SOPHIE & KATE in standard characters on the Principal Register for “[c]lothing, namely, shoes, dresses, tops, shirts, t-shirts, shorts, skirts, jumpers, pants, jeans, bermuda shorts, scarves, belts, boots” in International Class 25,4 that, when used on or in connection with Applicant’s identified goods, they are likely to cause confusion or mistake or to deceive. When the refusal was made final, Applicant appealed and requested reconsideration. The Trademark Examining Attorney maintained the refusal to register and denied the request for reconsideration. Thereafter, the appeal was resumed and is now briefed. For the reasons set forth below, we affirm the Section 2(d) refusal. I. Applicable Law We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See 3 Application Serial Nos. 86428339 and 86428354, filed under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). 4 Registration No. 3733924, issued on January 5, 2010; Section 8 affidavit accepted. Serial Nos. 86428339 and 86428354 - 3 - also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors and others are discussed below. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant and of record” need be considered). A. The Marks First we consider the du Pont likelihood of confusion factor regarding the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “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) (citation omitted). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re Jack B. Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Serial Nos. 86428339 and 86428354 - 4 - That being said, our analysis cannot be predicated on dissection of the involved marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Rather, we are obliged to consider the marks in their entireties. Id. 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.”). Different features may be analyzed to determine whether the marks are similar. Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, 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., 224 USPQ at 751. Applicant concedes that its applied-for marks are “nearly the same” as the cited mark. Applicant’s Brief, p. 3; 12 TTABVUE 6. “Sophie” is a well-recognized nickname for the given name “Sophia,” and looks and sounds very similar. When coupled with the name “Kate,” Applicant’s applied-for mark SOPHIA & KATE is virtually identical to the cited mark SOPHIE & KATE. In addition, the registered mark SOPHIE & KATE is arbitrary in relationship to Registrant’s identified goods meaning that it is entitled to a wider scope of protection than less distinctive, weaker, suggestive or descriptive marks. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (when word marks are Serial Nos. 86428339 and 86428354 - 5 - identical but neither suggestive nor descriptive of the goods, the first du Pont factor weighs heavily against the applicant). With regard to Applicant’s mark SOPHIA & KATE COLLECTION, the initial portion SOPHIA & KATE, is nearly identical to the entirety of the registered mark. “[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.” Palm Bay Imps., Inc., 73 USPQ2d at 1692. See also Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). In addition, the descriptive word COLLECTION in Applicant’s mark is disclaimed. Disclaimed matter that is descriptive of or generic for an Applicant’s goods is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 224 USPQ at 752. We therefore find that the dominant portion of the mark SOPHIA & KATE COLLECTION are the two given names “Sophia” and “Kate,” joined together with the ampersand, making it highly similar to Registrant’s mark SOPHIE & KATE. Thus, because Applicant’s applied-for marks are highly similar in appearance, sound, connotation and commercial impression to the registered mark, the first du Pont factor weighs in favor of finding a likelihood of confusion. B. The Goods The next step in our analysis is a comparison of the goods identified in Applicant’s applications vis-à-vis the goods identified in the cited registration. Applicant emphasizes that the goods in question are not identical. However, it is Serial Nos. 86428339 and 86428354 - 6 - well established that the respective goods do not have to be identical or even competitive in order to determine that there is a likelihood of confusion; rather, it is sufficient that the respective goods are related in some manner, or the conditions surrounding their marketing are such that the goods will be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that they originate from the same source. Coach Servs., Inc., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., supra. It is the Examining Attorney’s burden to establish that the goods are related to support a finding of likelihood of confusion. See, e.g., In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding Office had failed to establish that wine and vodka infused with caffeine are related goods). Evidence of relatedness may include news articles and/or evidence from computer databases showing that the relevant goods are used together or used by the same purchasers; advertisements showing that the relevant goods are advertised together or sold by the same manufacturer or dealer; and/or copies of prior use-based registrations of the same mark for both applicant’s goods and the goods listed in the cited registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding pepper sauce and agave related where evidence showed both were used for the same purpose in the same recipes and thus consumers were likely to purchase the products at the same time and in the same stores). Serial Nos. 86428339 and 86428354 - 7 - In this case, the Examining Attorney has submitted evidence to show that Applicant’s and Registrant’s goods are related, complementary goods. Specifically, the Examining Attorney introduced third-party Internet websites showing that it is not uncommon for the types of Applicant’s and Registrant’s goods to be sold together in the same retail outlet or website under the same mark or sold by entities manufacturing both sets of goods. We highlight the following examples: Francesca’s (https://www.francescas.com): A retail store and online retailer specializing in women’s fashions offering jewelry, shirts, skirts and jeans under the same mark Francesca’s offers jewelry and clothing. See Final Office Action dated September 1, 2015. GoFish Clothing & Jewelry Co. (http://www.shopgofish.com): An online retailer specializing in women’s fashions and offering jewelry, dresses, skirts and tops under the same mark GoFish. See id. Free People (http://www.freepeople.com): A retail store and online retailer specializing in women’s fashions offering jewelry, dresses, shorts, skirts and shoes under the same mark Free People. See Denial of Request for Reconsideration dated April 8, 2016. Lilly Pulitzer (http://www.lillypulitzer.com): A retail store and online retailer specializing in women’s fashions offering jewelry, dresses, tops, shorts and shoes under the same mark Lilly Pulitzer. See id. Raven & Lily (http://www.ravenandlily.com): An online retailer specializing in women’s fashions offering jewelry, dresses, tops, t-shirts, skirts and pants under the same mark Raven & Lily. See Final Office Action dated September 1, 2015. Other examples include retailers such as Talbots, Sundance, and PoshMark. See Denial of Request for Reconsideration dated April 8, 2016. As the aforementioned evidence demonstrates, it is not uncommon for clothing manufacturers/retailers to make and offer for sale jewelry under the same mark and vice-versa. Nor is it uncommon for traditional brick and mortar retail stores as well as their online Serial Nos. 86428339 and 86428354 - 8 - counterparts to offer for sale both types of items under the same brand name. The evidence also shows that women’s apparel and jewelry are marketed together as coordinating fashion items, making them complementary products. This establishes that consumers may expect to find both Applicant’s and Registrant’s goods emanating from a common source. In addition, the Examining Attorney made of record numerous third-party, used- based registrations showing that the same entity has registered a single mark identifying both jewelry and clothing items. See, e.g., Registration No. 4708953 (“jewelry” and “[p]ants; … [s]hirts; [s]horts; …[t]-shirts…); Registration No. 4760895 (“jewelry” and “shirts; … shorts; … [t]-shirts for men, women and children; women’s clothing, namely, shirts, dresses, skirts…”); Registration No. 4782575, (“jewelry” and “…[j]eans; [s]hirts; … [t]-shirts; [t]ops; …); Registration No. 4767813 (“jewelry” and “[t]ops; [w]earable garments and clothing, namely, shirts; [w]omen’s clothing, namely, shirts, dresses, skirts, …”);, and Registration No. 4697342 (“jewelry” and “[f]ootwear for men and women; [j]eans; [s]hirts; [t]-shirts; …[t]ops; [w]omen’s clothing, namely, shirts, dresses, skirts, blouses” attached to September 1, 2015 Final Office Action. As a general proposition, although use-based third- party registrations alone are not evidence that the marks shown therein are in use or that the public is familiar with them, they nonetheless may have probative value to the extent they may serve to suggest that the goods are of a kind that emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB Serial Nos. 86428339 and 86428354 - 9 - 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Applicant criticizes the Examining Attorney’s third-party registration evidence on the basis that of all marks registered with the USPTO for apparel items, only 5.8% contain marks filed in both International Class 25 and International Class 14, and that International Class 14 includes goods other than jewelry. See Applicant’s Brief p. 6; 12 TTABVUE 9. As explained above, we acknowledge that the third-party registrations are of some limited probative value and this is why we have also emphasized the evidence of use obtained from third-party websites. Nonetheless, by Applicant’s own count, more than 8,500 existing registrations identify both clothing and jewelry. We find this to be persuasive evidence that the goods are related. In addition, Applicant argues that because the USPTO permitted the registration of various marks sharing the same term to identify both clothing and jewelry, consumers are unlikely to confuse Applicant’s and Registrant’s marks. In support thereof, Applicant relies on copies of registrations obtained from the USPTO database. See Request for Reconsideration dated March 1, 2016. We are unable to determine, however, from the face of the registration certificates the context under which these third-party registrations were permitted. Cf. In re Nett Designs, Inc., 263 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to Nett Design’s application, the PTO’s allowance of such registrations does not bind the Board or this court.”). Serial Nos. 86428339 and 86428354 - 10 - Furthermore, none of the marks referenced by Applicant are for marks that are similar to the applied-for mark or the cited mark. (i.e., GALACTIC, RENDITIONS, BROTHERHOOD, SPOTLIGHT, BREATHLESS). For these reasons, Applicant’s evidence is of limited utility. In view of the foregoing, we find that the goods identified in the applications and registration are related. As such, the second du Pont factor also weighs in favor of finding a likelihood of confusion. C. Trade Channels Next we consider the established, likely-to-continue channels of trade, the third du Pont factor. Applicant argues that jewelry is not commonly sold in apparel stores but instead is most typically sold through specialty jewelry stores which do not commonly carry apparel items. In addition, Applicant maintains that jewelry and clothing are sold more typically in “big-box” stores, large department stores and Internet stores where consumers are able to distinguish that these goods originate from different sources because they are sold by “literally thousands of different unrelated manufacturers.” Applicant’s Appeal Brief, p. 5; 12 TTABVUE 7. Applicant’s arguments are belied by the evidence of record as summarized above showing jewelry and clothing offered through the same trade channels. In addition, because the identifications in the application and cited registration have no restrictions on channels of trade, we must presume that the goods travel in all channels of trade normal for such goods, which the record shows includes both brick and mortar and online retail stores specializing in women’s fashions. See In re Serial Nos. 86428339 and 86428354 - 11 - Elbaum, 211 USPQ 639, 640 (TTAB 1981). As such, the third du Pont factor regarding the similarity or dissimilarity of established, likely to continue trade channels also favors a finding of likelihood of confusion. II. Conclusion After considering all of the evidence of record and arguments pertaining to the du Pont likelihood of confusion factors, the first, second and third du Pont factors discussed above favor a finding of likelihood of confusion. We treat as neutral any du Pont factors for which there is no evidence of record. We therefore find that there is a likelihood of confusion between Applicant’s marks SOPHIA & KATE and SOPHIA & KATE COLLECTION for “jewelry” and Registrant’s mark SOPHIE & KATE in standard characters on the Principal Register for “[c]lothing, namely, shoes, dresses, tops, shirts, t-shirts, shorts, skirts, jumpers, pants, jeans, bermuda shorts, scarves, belts, boots.” Decision: The likelihood of confusion refusal under Section 2(d) is affirmed.