Carl Jarecki

Trademark Trial and Appeal BoardJun 22, 2018

No. 87150843 (T.T.A.B. Jun. 22, 2018)

This Opinion is not a Precedent of the TTAB Hearing: May 1, 2018 Mailed: June 22, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Carl Jarecki _____ Serial No. 87150843 _____ Carl Jarecki, pro se. Anna H. Rosenblatt, Trademark Examining Attorney, Law Office 120, David Miller, Managing Attorney. _____ Before Shaw, Kuczma, and Adlin, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: Carl Jarecki (“Applicant”) seeks registration on the Principal Register of the mark for “Rubber or silicon wristbands in the nature of a bracelet for holding hair ties therein; Rubber or silicon based finger wraps in the nature of a ring,” in International Class 14.1 The description of the mark reads: “The mark consists of the stylized 1 Application Serial No. 87150843, filed on August 25, 2016, is based on Applicant’s allegation of a bona fide intent to use the mark in commerce, pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 87150843 - 2 - wording ‘SAVI’ followed by a circle containing the letters ‘SS’, wherein the second ‘S’ is reversed. The circle is followed with the stylized wording ‘STYLE.’” Applicant has disclaimed the exclusive right to use STYLE apart from the mark as shown. Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used in connection with the identified goods, so resembles the mark SAVI, in standard characters, for “Rings, earrings, necklaces and pendants set with diamonds or other precious stones,” in International Class 14, as to be likely to cause confusion, mistake or deception.2 When the refusal was made final, Applicant appealed and requested reconsideration. The Examining Attorney denied the request for reconsideration, and the appeal was resumed. We affirm the refusal to register. I. Evidentiary Objection In his brief on Appeal, Applicant submitted printouts from the Trademark Electronic Search System (TESS) of his other pending applications, excerpts from his savistyle.com website, and excerpts purportedly from Registrant’s Facebook page and website.3 The Examining Attorney objects to the evidence on the ground of untimeliness. However, the foregoing evidence was previously submitted by Applicant with his request for reconsideration on September 25, 2017. Thus, the evidence, although duplicative, is not untimely. See Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 1203.01 (June 2017) (“[T]he appeal brief is associated with the application file, so papers that are already in the application 2 Registration No. 2620014, issued September 17, 2002, renewed. 3 7 TTABVUE 10-23. Serial No. 87150843 - 3 - should not, as a matter of course, be resubmitted as exhibits to the brief.”). The objection is overruled. II. Likelihood of confusion Our determination of the issue of likelihood of confusion is based on an analysis of all the probative facts in evidence relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the goods and the similarities between the marks. 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 or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression First, we consider the similarity of the marks. In comparing the marks we must consider their appearance, sound, connotation and commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Our analysis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. Although we consider the mark as a whole, “in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular Serial No. 87150843 - 4 - feature of a mark. . . .” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Registrant’s mark is the term SAVI in standard characters. Applicant’s mark comprises the wording SAVI STYLE with a mirror-image “S” design inside a circle: We find that Applicant’s mark incorporates Registrant’s mark in its entirety and merely adds descriptive wording and a design element. Incorporating the entirety of one mark within another typically does not obviate the similarity between the marks, nor does it overcome a likelihood of confusion under Section 2(d). See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (“[T]he presence of an additional term in the mark does not necessarily eliminate the likelihood of confusion if some terms are identical.”); see also China Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 83 USPQ2d 1123, (Fed. Cir. 2007) (The common word in CHI and CHI PLUS is likely to cause confusion despite differences in the marks’ designs). In this case, neither the design element nor the term STYLE sufficiently distinguishes Applicant’s mark from Registrant’s. Applicant argues that “[w]hen confronted with these visually distinct marks in commerce, the consumers will be able to easily distinguish them based on their appearance alone. Also, the pronunciation of each mark will be different when viewed as a whole.”4 4 Applicant’s Br., 7 TTABVUE 7. Serial No. 87150843 - 5 - This argument is unpersuasive. Consumers are more likely to focus on the first word in the marks, SAVI, which reduces the possible influence of the additional wording in Applicant’s mark. Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (consumers often first notice the identical lead word); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[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”). Regarding the addition of the mirror-image “S” design, it is well settled that when comparing marks the word portion is often considered the dominant feature and is typically accorded greater weight in determining whether marks are confusingly similar. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012). Regarding the addition of the descriptive term “style,” it is also well settled that descriptive language is normally less significant in comparing marks. See Hewlett- Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (disclaimed descriptive matter may be less significant than more distinctive elements of marks). Here, we find the term SAVI to be the dominant element of both Applicant’s and Registrant’s marks. In appearance, the dominant elements of both marks are identical because the cited mark is depicted in standard characters and, therefore, may appear in any typeface including one similar to Applicant’s. See Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011) (“[T]he registrant is entitled to depictions of the standard character mark regardless of font Serial No. 87150843 - 6 - style, size, or color.”). In sound, because the dominant element of each mark, SAVI, is identical and comes first, the marks are similar in pronunciation. In connotation and commercial impression, the record does not indicate whether the term SAVI has any meaning. It could be perceived as a name, or a misspelling of “savvy.” Regardless of the exact meaning, it is likely that consumers would give the same meaning to the term SAVI in both marks. Applicant’s addition of the term STYLE and the mirror- image “S” design may very well be perceived by consumers as an extension of Registrant’s SAVI brand. In sum, when we consider the marks in their entireties in terms of appearance, sound, connotation and commercial impression, we find them to be similar. This du Pont factor weighs in favor of a finding of likelihood of confusion. B. Similarity of the goods, trade channels, and classes of purchasers We next consider the similarity of Registrant’s and Applicant’s goods, keeping in mind that the goods need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); TMEP §1207.01(a)(i). The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [they] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Applicant’s goods are “Rubber or silicon wristbands in the nature of a bracelet for holding hair ties therein; Rubber or silicon based finger wraps in the nature of a ring.” Serial No. 87150843 - 7 - Registrant’s goods are “rings, earrings, necklaces and pendants set with diamonds or other precious stones.” The Examining Attorney argues that the respective goods are related because “the same entity commonly provides a variety of jewelry, including rubber jewelry and rings, earrings, necklaces and pendants set with diamonds or other precious stones, and markets these goods under the same mark.”5 To support the refusal, the Examining Attorney introduced copies of five third-party registrations.6 Although such third-party registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, they nonetheless have probative value to the extent they are based on use in commerce and serve to suggest that the goods identified therein are of a kind which may emanate from a single source under a single mark. See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). The Examining Attorney also introduced excerpts from third-party websites showing that rubber rings and bracelets sometimes feature precious stones and are sold under the same mark as non-rubber jewelry. The most relevant excerpts are:7 • The website of “Belle Etoile” offering a variety of rubber bracelets and rings set with precious or imitation jewels; • Http://www.davidyurman.com, showing that the same entity provides rubber and precious metal bracelets, as well as rings set with precious stones; • Https://www.avianneandco.com, offering rubber bracelets set with diamonds, as well as rings and other jewelry set with precious stones; and 5 Examining Attorney’s Br., 10 TTABVUE 10. 6 Office Action of September 29, 2017, pp. 15-36. 7 Id. at 2-14. Serial No. 87150843 - 8 - • Https://www.traxnyc.com, showing that the same entity offers rubber rings with white gold, as well as rings set with precious stones. Applicant argues that the difference in Registrant’s and Applicant’s goods avoids a likelihood of confusion because the respective purchasers are different: It is very clear that the registrant is mainly into high class, expensive jewelry business involving diamond and other precious stones whereas Applicant’s goods as described in amended identification relates to Silicon or rubber based bracelets for holding hair ties therein and finger wraps in the form of ring [sic] so it is highly unlikely customers will ever come across these two marks confusingly or by mistake. . . . Applicant intends to use the mark in the context of promoting silicon or rubber based ornamental products, specifically in the nature of bracelet and rings to be used as sportswear products.8 (Emphasis in original). This argument is unpersuasive. The third-party registrations and website evidence demonstrate that rubber rings and bracelets, such as Applicant’s, are sometimes set with jewels. Therefore, Registrant’s wording “rings . . . set with diamonds or other precious stones” overlaps in part with Applicant’s rubber or silicon “finger wraps in the nature of a ring.” The evidence also shows that bracelets and rings, earrings, necklaces and pendants are commonly sold under the same mark as rubber bracelets or rings. Considering the channels of trade and classes of purchasers, because the goods are overlapping in part, and otherwise related, and contain no limitations, it is presumed that they move in all channels of trade normal for those goods, and that they are available to all classes of purchasers, including consumers seeking to 8 Applicant’s Br., 7 TTABVUE 8-9. Serial No. 87150843 - 9 - purchase rings and bracelets regardless of composition. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). See also Coach Servs., 101 USPQ2d at 1723 (absent limitation “goods are presumed to travel in all normal channels . . . for the relevant goods.”). Accordingly, we find the Examining Attorney’s evidence establishes that Applicant’s and Registrant’s goods are related, that the respective goods travel in the same trade channels, and they are likely to be purchased by the same consumers. See Anderson, 101 USPQ2d at 1919; In re Albert Trostel, 29 USPQ2d at 1785-86. The du Pont factors relating to the similarity of the goods, channels of trade, and classes of purchasers favor a finding of likelihood of confusion. C. The number and nature of similar marks in use on similar goods. During oral argument, Applicant argued that the existence of two third-party registrations containing the term SAVI for “lapel pins” establishes that the term SAVI is weak and therefore is entitled to a narrower scope of protection. Applicant specifically relies on Registration No. 4004837 for the standard character mark SAVI SISTERS and Registration No. 4047688 for the mark SAVI SISTERS and design for, inter alia, “Lapel pins distributed exclusively to breast cancer survivors and their physicians and hospital staff in connection with medical devices and services provided by [registrant].”9 9 These marks also were cited as a bar to registration of Applicant’s mark in the initial office action. The Examining Attorney withdrew the refusal to register as to these marks in her denial of Applicant’s request for reconsideration on September 29, 2017. Serial No. 87150843 - 10 - Under the sixth du Pont factor, we consider “[t]he number and nature of similar marks in use on similar goods.” Du Pont, 177 USPQ at 567. Evidence of third-party use bears on the strength or weakness of a registrant’s mark. In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017). If the evidence establishes that the consuming public is exposed to third-party uses of similar marks for similar goods, it “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay, 73 USPQ2d at 1693. Evidence of extensive registration and use by others of a term on the same or very similar goods can be “powerful” evidence of weakness. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). Here, we have only two other SAVI-formative registrations which are owned by a single entity and used on lapel pins given to “cancer survivors and their physicians and hospital staff in connection with medical devices and services provided by [registrant].” Suffice it to say, these two SAVI-formative registrations for narrowly- described goods do not support a finding that Registrant’s mark is weak. First, the registrations are not evidence of use in the marketplace. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) (“The existence of [third- party] registrations is not evidence of what happens in the market place or that customers are familiar with them nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive.”). Second, the two commonly-owned registrations Serial No. 87150843 - 11 - provide nowhere near the quantum of evidence required to show that SAVI is weak for jewelry. See Jack Wolfskin, 116 USPQ2d at 1136 (“[Applicant] presented extensive evidence of third-party registrations depicting paw prints and evidence of these marks being used in internet commerce for clothing.”); Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030 (TTAB 2016) (weakness found based on, inter alia, at least 85 actual uses of ROSE-formative marks for similar services, eight similar third-party registrations, and expert testimony and other evidence regarding the common nature of ROSE-formative marks in the industry). This du Pont factor is neutral. D. Family of marks Applicant also argues that confusion is unlikely because Applicant owns a family of marks comprised of the term SAVI or the mirror-image “S” design which “will certainly help consumers recognize [the] source of origin of such unique product line.”10 However, the family of marks doctrine is unavailable to applicants seeking to overcome a likelihood of confusion refusal in an ex parte proceeding; the focus is on the mark an applicant is seeking to register and not on any other marks the applicant may have used or registered. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009), citing In re Lar Mor Int’l, Inc., 221 USPQ 180, 183 (TTAB 1983); In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965). 10 Applicant’s Br., 7 TTABVUE 8. Serial No. 87150843 - 12 - E. Balancing the factors In summary, we have carefully considered all of the evidence and arguments of record relevant to the pertinent du Pont likelihood of confusion factors. Given the similarity of the marks, the relatedness of the goods and their channels of trade and classes of consumers, we find that the Office has met its burden in showing a likelihood of confusion between Applicant’s mark and the cited mark. Decision: The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act is affirmed.