Caterina P. Rando

Trademark Trial and Appeal BoardMay 16, 2014

No. 85097443 (T.T.A.B. May. 16, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: May 16, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Caterina P. Rando _____ Serial No. 85097443 _____ Christopher D. Denny of the Law Offices of Christopher D. Denny for Caterina P. Rando. Ingrid C. Eulin, Trademark Examining Attorney, Law Office 111 (Robert L. Lorenzo, Managing Attorney). _____ Before Greenbaum, Adlin and Gorowitz, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Caterina P. Rando (“applicant”) seeks registration of the mark THRIVE PUBLISHING, in standard characters and with PUBLISHING disclaimed, for: Non-fiction books on a variety of topics in International Class 16; and Book publishing; Business education and training services, namely, developing, and facilitating customized in-company leadership and executive development programs, providing executive coaching services, and providing public and in-company keynote presentations to business leaders; Educational and entertainment services, namely, providing motivational speaking services in the field of business development and leadership; Electronic Serial No. 85097443 2 publishing services, namely, publication of text and graphic works of others on the Internet featuring business development and leadership subjects; Professional coaching services in the field of business development and leadership in International Class 41.1 The examining attorney refused registration of the mark 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 applicant’s goods and services, so resembles the following previously-registered marks that use of applicant’s mark in connection with applicant’s goods and services is likely to cause confusion or mistake or to deceive: T.H.R.I.V.E., in standard characters, for “printed matter, namely, instructional, educational, teaching and training manuals, reference books, workbooks, textbooks, catalogs, manuscripts, classroom and independent study guides, pamphlets, leaflets, directories, brochures, charts, fact sheets and practice sheets in the fields of mechanics, engineering, technical sciences, vocational training, computer science, computer programming and computer networking, business and business administration, mechanical and engineering education; calendars; printed matter, namely, instructional, educational, teaching and training manuals for vocational, professional and occupational trades in the field of mechanics, engineering, technical sciences, vocational training, computer science, computer programming and computer networking, business and business administration, mechanical and engineering education; directories, brochures, charts, fact sheets and practice sheets for vocational, professional and occupational trades in the field of mechanics, engineering, technical sciences, vocational training, computer science, computer programming and computer networking, business and business administration, mechanical and engineering education” in International Class 16, owned 1 Application Serial No. 85097443, filed July 30, 2010 under Section 1(b) of the Trademark Act, based on an intent to use the mark in commerce. Serial No. 85097443 3 by Truland Systems Corporation (the “‘622 Registration”)2; T.H.R.I.V.E., in standard characters, for “educational services, namely, work-study programs at the secondary, undergraduate and graduate levels for vocational, professional and occupational trades in the field of mechanics, engineering, technical sciences, computer science, computer programming and computer networking, business and business administration, mechanical and engineering education; educational services, namely, providing mentoring, tutoring, classes, seminars and workshops in for vocational, professional and occupational trades in the field of mechanics, engineering, technical sciences, computer science, computer programming and computer networking, business and business administration, mechanical and engineering education; educational services, namely, business internship and mentoring programs for vocational, professional and occupational trades in the field of mechanics, engineering, technical sciences, computer science, computer programming and computer networking, business and business administration, mechanical and engineering education” in International Class 41 also owned by Truland Systems Corporation (the “‘970 Registration,” and, collectively with the ‘622 Registration, the “Truland Registrations”)3; THRIVE Q, in standard characters, for “Printed matter, namely, questionnaires, reports, brochures, and newsletters in the fields of financial assessment, financial planning and management, legacy planning, and charitable giving” in International Class 16, “Financial analysis and planning tools in the nature of online, interactive questionnaires to assist in financial assessment and making decisions in the areas of financial planning and management, legacy planning, and charitable giving; Information provided by electronic means in the fields of financial assessment, financial planning and management, legacy planning, and charitable giving” in International Class 36 and 2 Registration No. 4183622, issued July 31, 2012. 3 Registration No. 4175970, issued July 17, 2012. Serial No. 85097443 4 “Providing on-line publications in the nature of questionnaires, reports, brochures, and newsletters in the fields of financial assessment, financial planning and management, legacy planning, and charitable giving, all for educational purposes” in International Class 41 owned by Thrivent Financial for Lutherans (the “399 Registration”)4; and THRIVE!!, in typed form, for “Educational consulting; and individual and group coaching, namely consulting services in the field of offering advice regarding customized action and strategic planning, goal setting and achievement, development of successful outcomes, career direction and transition, performance excellence, life design, financial intelligence, systems development, managing progress and accountability, conflict resolution and collaboration, leadership, teamwork, communication skills, risk management, innovation and quality improvement” in International Class 41 owned by Thrivell Incorporated a/k/a Thrivell Coaching Consulting & Training (the “‘912 Registration).5 After the refusal became final, applicant appealed and applicant and the examining attorney filed briefs.6 Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of 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 analysis, two key considerations are the similarities between the marks and the similarities 4 Registration No. 3548399, issued December 16, 2008. 5 Registration No. 2603912, issued August 6, 2002; renewed. 6 The examining attorney also refused registration based on Registration No. 3123928, issued August 1, 2006, but that registration has since been cancelled. Serial No. 85097443 5 between the goods and services. 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.”). Turning first to the marks, they are all quite similar. The dominant element of applicant’s mark is the word THRIVE. Indeed, applicant disclaimed PUBLISHING which is merely descriptive of applicant’s publishing services. Bass Pro Trademarks, LLC v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1851 (TTAB 2008). It is settled that descriptive words such as PUBLISHING are entitled to less weight than arbitrary or suggestive wording such as THRIVE. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed word ROADHOUSE, is dominant element of BINION’S ROADHOUSE); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). Indeed, in this case, consumers may perceive applicant’s mark as referring to a publishing business operated by an owner of one of the cited marks. All of the cited marks, like applicant’s mark, are comprised primarily of the word THRIVE, and thus look and sound similar and convey similar meanings to Serial No. 85097443 6 applicant’s mark. While the cited mark T.H.R.I.V.E. includes periods between its letters, and could therefore be perceived as an acronym, it contains the same letters in the same order as applicant’s mark, therefore looks quite similar to applicant’s mark and would likely be pronounced identically to applicant’s mark. Moreover, the punctuation marks included in T.H.R.I.V.E. and THRIVE!! are insufficient to change the essential meaning of either mark, and both of these marks convey essentially the same commercial impression as applicant’s mark THRIVE. Cf., In re Litehouse Inc., 82 USPQ2d 1471, 1474 (TTAB 2007) (“the presence of the exclamation points in applicant’s mark does not suffice to negate the mere descriptiveness of the mark”) and In re Vanilla Gorilla L.P., 80 USPQ2d 1637, 1639-40 (TTAB 2006) (“the addition of punctuation marks to a descriptive term would not ordinarily change the term into a non-descriptive one”). Further, the inclusion of the single letter Q in the cited mark THRIVE Q does not detract from the dominance of the word THRIVE. In short, while applicant’s mark is not identical to any of the cited marks, the punctuation marks and the letter Q are insufficient to distinguish the cited marks from applicant’s mark. “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). Serial No. 85097443 7 As for the goods and services, they need not be identical or even competitive in order to support a finding of likelihood of confusion. It is enough that the goods and services are related in some manner or that the circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used, to a mistaken belief that applicant’s and registrants’ goods and services originate from or are in some way associated with the same source or that there is an association between the sources of the goods and services. Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1432 (TTAB 1993); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue is not whether purchasers would confuse the goods and services, but rather whether there is a likelihood of confusion as to the source of the goods and services. In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984). Here, applicant’s goods and services are at least related to some of those in each of the cited registrations. Specifically With respect to the ‘622 Registration: • Applicant’s “non-fiction books” encompass goods in the registration, i.e., “printed matter, namely … reference books, workbooks, textbooks … in the fields of … business and business administration” and “printed matter … for vocational, professional and occupational trades; and Serial No. 85097443 8 • Applicant’s “publishing services, namely, publication of text and graphic works of others on the Internet featuring business development and leadership subjects” could be used to publish the “printed matter, namely … reference books, workbooks, textbooks …in the fields of … business and business administration” and “printed matter … for vocational, professional and occupational trades” covered by the registration. With respect to the ‘970 Registration: • Applicant’s “business education and training services, namely … providing executive coaching services” and “professional coaching services in the field of business development and leadership” could encompass or are at least related to the “educational services, namely, providing mentoring … for vocational, professional and occupational trades” and “educational services, namely, business internship and mentoring programs for vocational, professional and occupational trades” in the registration. See Office Action of May 23, 2013 (attaching evidence that “coaching” and “mentoring” services are highly similar, or at the very least related). With respect to the ‘399 Registration: • Applicant’s “non-fiction books” could encompass the goods in the registration consisting of “printed matter … in the fields of financial assessment, financial planning and management legacy planning, and charitable giving,” and are related to the registration’s “information provided by electronic means” and “providing on-line publications … in the fields of financial assessment, financial planning and management legacy planning, and charitable giving;” and • Applicant’s “publishing services, namely, publication of text and graphic works of others on the Internet featuring business development and Serial No. 85097443 9 leadership subjects” could be used to create or are at least related to, “printed matter,” “information provided by electronic means” and “providing on- line publications” in the fields of financial assessment, financial planning and management legacy planning, and charitable giving in the registration. With respect to the ‘912 Registration: • Applicant’s “business education and training services, namely … providing executive coaching services” and “professional coaching services in the field of business development and leadership” are encompassed by or are at least related to the “individual and group coaching, namely consulting services in the field of offering advice regarding customized action and strategic planning, goal setting and achievement, development of successful outcomes, career direction and transition, performance excellence …” in the registration. Office Action of May 23, 2013. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found with respect to a class of goods or services in an application if there is likely to be confusion with respect to any item that comes within the identification of the goods or services in that class); Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (“We need not consider applicant’s remaining goods because likelihood of confusion as to one of the products listed in applicant’s description of goods in that class is sufficient to support a conclusion that the opposition should be sustained.”). Applicant argues and relies on extrinsic evidence that its goods and services are different than those for which the cited marks are used. Office Action response of May 12, 2011 Exs. A-D; Office Action response of April 30, 2013 Exs. A-B. Serial No. 85097443 10 Specifically, applicant “provides the resources, strategy, and know-how, as well as the experienced team” to help others produce “how to” books, while: (1) the mark in the ‘399 Registration is used by a non-profit religious organization for “financial related goods” which are offered to an “expressly limited group of purchasers;” (2) the mark in the ‘912 Registration is “expressly limited to coaching for strategic planning to an expressly limited group of purchasing consumers;” and (3) the mark in the Truland Registrations (‘622 and ‘970) is used by a large electrical contractor and relates “to an obscure summer internship program for students at the ‘Integrated Design Electronics Academy Public Charter School Military Academy.’” Applicant’s Appeal Brief at 6-7. The problem with applicant’s argument and extrinsic evidence is that the limitations applicant refers to are not reflected in the identifications of goods and services in any of the cited registrations. In fact, applicant’s extrinsic evidence is irrelevant, because we must base our decision on the goods and services identified in the involved application and cited registrations, rather than extrinsic evidence. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, ___ F.3d ___, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application”) (quoting Octocom Sys., Inc. v. Houston Comps. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Thor Tech Inc., 90 USPQ2d 1634, 1637-38 (TTAB 2009) (“we must also analyze the similarity or dissimilarity and nature of the goods based on the description of the goods set forth in the Serial No. 85097443 11 application and the registration at issue … we may not limit or restrict the trailers listed in the cited registration based on extrinsic evidence”); In re Bercut- Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986) (“the question of likelihood of confusion must be determined by an analysis of the marks as applied to the goods identified in the application vis-à-vis the goods recited in the registration, rather than what extrinsic evidence shows those goods to be.”). Here, applicant’s goods and services, as identified in the involved application, are not limited to helping others produce “how to” books, and in fact applicant claims rights to “non-fiction books on a variety of topics” and “book publishing,”7 both without any limitations. Similarly, there are no limitations on the goods and services or the purchasers thereof in the ‘399 Registration, the ‘912 Registration or the Truland Registrations. As for the channels of trade, neither applicant’s “non-fiction books” and “book publishing” services, nor the goods and services identified in the cited registrations, include any limitations as to channels of trade, and applicant’s and registrants’ goods and services are therefore presumed to move in all normal channels of trade for those goods and services and to be available to all classes of consumers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); see also, Stone Lion Capital, 110 USPQ2d at 1162 (“Even assuming there is no overlap between Stone Lion’s and Lion’s current customers, the Board correctly declined to look beyond the 7 In applicant’s identification of services, “book publishing” is followed by a semicolon and therefore stands alone, without limitation. In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1166 (TTAB 2013). Serial No. 85097443 12 application and registered marks at issue. An application with ‘no restriction on trade channels’ cannot be ‘narrowed by testimony that the applicant’s use is, in fact, restricted to a particular class of purchasers.’”). Finally, applicant argues that the customers for its goods and services and those for the goods and services identified in the cited registrations are “sophisticated and careful.” This argument is unsupported by any evidence of record, but even if we assume that consumers exercise care in purchasing applicant’s and registrants’ products and services, even careful purchasers can be confused as to source when presented with very similar marks used on related goods and services. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers … are not infallible.”). This factor does not outweigh the similarity of the marks, related goods and services and overlapping channels of trade. There is no relevant evidence or argument concerning the remaining likelihood of confusion factors, and we therefore treat them as neutral. Conclusion After considering all of the evidence of record as it pertains to the relevant du Pont factors, including all of applicant’s arguments and evidence, even if not specifically discussed herein, we find that confusion is likely because the marks are quite similar, the goods and services are related and the channels of trade overlap. Serial No. 85097443 13 Decision: The Section 2(d) refusal to register applicant’s mark is affirmed based on each of the cited registrations.