Chin Kuk Kim

Trademark Trial and Appeal BoardAug 13, 2020

86473087 (T.T.A.B. Aug. 13, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: August 13, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Chin Kuk Kim _____ Serial Nos. 86473005 & 864730871 _____ Tailim Song of Tailim Song Law Firm for Chin Kuk Kim. Kelley L. Wells, Trademark Examining Attorney, Law Office 118, Michael W. Baird, Managing Attorney. _____ Before Wellington, Wolfson, and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: 1 Because the cases have common questions of fact and law, and have similar records, the appeals are hereby consolidated. See, e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (The Board sua sponte consolidated two appeals). Citations to the TSDR and TTABVUE record are to Application Serial No. 86473005, except where otherwise indicated. Serial Nos. 86473005 & 86473087 - 2 - I. Background and Evidentiary Issue Chin Kuk Kim (“Applicant”) seeks registration on the Principal Register of the marks AMY’S DONUTS in standard characters and 2 (both with DONUTS disclaimed), both for “doughnuts and bakery products; doughnut holes; cakes; kolaches; rolls; muffins; sandwiches; bagels; chocolate based topping and fillings for doughnuts, cakes, pies, and kolaches; glazed and fruit topped and filled doughnuts, cakes, and kolaches; sugar; flour; yeast; baking powder; food flavoring extracts; spice; coffee and coffee based beverages; tea and tea based beverages” in International Class 30 and “restaurant services; cafe services; snack bar services; fast food restaurant services” in International Class 43.3 The Examining Attorney refused registration in both cases under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with the following three marks that are registered to a common owner: AMY’S in standard characters for “candy bars; cookies” in Int. Cl. 30;4 2 The description of the composite mark states: “The mark consists of the stylized wording, ‘AMY’S’ in all caps, above the stylized orange term ‘DONUTS’ in all caps, with the letter, ‘O’ in ‘DONUTS’ displaying a pink frosting covered with sprinkles in the colors green, blue, yellow, white, red, and orange.” The colors purple, orange, pink, white, blue, green, yellow, and red are claimed as a feature of the mark. 3 Application Serial Nos. 86473087 and 86473005 were filed December 5, 2014, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on use of the marks in commerce. Both applications indicate that the name ‘AMY’S’ in the mark identifies Amy Kim, whose consent to register is of record. 4 Registration No. 4923010 issued on March 22, 2016. Serial Nos. 86473005 & 86473087 - 3 - AMY’S DRIVE THRU in standard characters (DRIVE THRU disclaimed) for “restaurant services featuring non-dessert items” in Int. Cl. 43;5 and (DRIVE THRU disclaimed) for “restaurant services featuring non- dessert items” in Int. Cl. 43.6 After the Examining Attorney made the refusals final, Applicant appealed. Both appeals have been briefed. Applicant attached numerous exhibits to its Appeal Briefs and seeks to rely on them as evidence.7 The Examining Attorney objects to the new evidence on the ground that it is untimely. We sustain the objection. As required by Trademark Rule 2.142(d), the record should be complete before an appeal is filed. 37 C.F.R. § 2.142(d). We therefore do not consider Applicant’s new evidence, which should have been submitted during prosecution. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §§ 1203.02(e), 1207.01 (2020); TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 710.01(c) (Oct. 2018). For the reasons set forth below, we affirm the refusals to register in both appeals. 5 Registration No. 5176820 issued on April 4, 2017. 6 Registration No. 5368786 issued on January 2, 2018. The description of the mark states: “The mark consists of a stylized version of the word ‘AMY'S’ in large cursive font above the words ‘DRIVE THRU’ in sans serif font.” Color is not claimed as a feature of the mark. 7 4 TTABVUE 27-123 (Application Serial No. 86473005); 4 TTABVUE 26-122 (Application Serial No. 86473087). Serial Nos. 86473005 & 86473087 - 4 - II. Likelihood of Confusion Our determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Applicant argues that “the Federal Circuit has required that the Board consider all thirteen (13) factors in DuPont in making its determination regarding a likelihood of confusion.”8 Applicant is mistaken because “[n]ot all DuPont factors are relevant in each case.” Stratus Networks, Inc. v. UBTA-UBET Communs. Inc., 955 F.3d 994, 2020 USPQ2d 10341 **7 (Fed. Cir. 2020). The Board considers only those DuPont factors for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Two key considerations are the similarities between the marks and the relatedness of the services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); 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. Similarity of the Marks We compare the marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison 8 4 TTABVUE 9 (Applicant’s Brief). Serial Nos. 86473005 & 86473087 - 5 - Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). We assess not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the services offered under the respective marks is likely to result. Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). In our analysis, we need not address the cited mark . The wording in the mark is identical to the cited standard-character mark AMY’S DRIVE THRU, and the registrations have the same identification of services. If we find a likelihood of confusion as to AMY’S DRIVE THRU (in standard characters) and the services identified in that registration, we need not find it as to the registration. Conversely, if we do not find a likelihood of confusion as to AMY’S DRIVE THRU, we would not find it as to . See In re I-Coat Co., 126 USPQ2d 1730, 1734 (TTAB 2018) (citing In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)). Thus, we focus on the cited marks AMY’S for “candy bars; cookies” and AMY’S DRIVE Serial Nos. 86473005 & 86473087 - 6 - THRU (DRIVE THRU disclaimed) for “restaurant services featuring non-dessert items.” Because we sustain the objection to Applicant’s untimely exhibits attached to its Briefs, its arguments about similarity of the marks based on the exhibits lack support. For example, Applicant makes contentions based on TESS search results and third-party registrations that have been excluded.9 We give the arguments no consideration. Along the same lines, relying on the excluded exhibits, Applicant seeks to inform the comparison of the marks based on its alleged geographic area of use10 and degree of fame relative to Registrant. We also disregard these arguments and the evidence upon which they are based. 1. The Cited Registration for AMY’S We first compare Applicant’s AMY’S DONUTS and marks (both with DONUTS disclaimed) to the cited mark AMY’S. Because the cited mark is in standard characters, it could appear in any font or color, including the same font and colors as the wording in Applicant’s stylized . See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012) (holding that the specific font style of a mark cannot serve as the basis to distinguish it from a mark in standard 9 4 TTABVUE 10 (Applicant’s Brief). 10 Regardless, Applicant seeks to register its marks without geographical restrictions, and the cited registered marks are registered without geographical restrictions. “Geographic limitations will be considered and determined by the Trademark Trial and Appeal Board only in the context of a concurrent use registration proceeding.” Trademark Rule 2.133(c), 37 C.F.R. §2.133(c). Serial Nos. 86473005 & 86473087 - 7 - character form); Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (registrant “entitled to depictions of the standard character mark regardless of font style, size, or color”). Thus, the stylization and color cannot serve as points of distinction. We find that the marks look and sound alike in large part because of the identical wording AMY’S that forms the entirety of the cited mark, and the beginning portion of Applicant’s marks. For rational reasons, we may give more or less weight to a particular feature of a mark, such as a common dominant element, provided the ultimate conclusion rests on a consideration of the marks in their entireties. Viterra, Inc., 101 USPQ2d at 1908. As the first part of Applicant’s marks, AMY’S is their dominant term. Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (first part of a mark “is most likely to be impressed upon the mind of a purchaser and remembered.”); see also Palm Bay Imps., 73 USPQ2d at 1692.11 The dominance of AMY’S in Applicant’s marks is reinforced because the second word, DONUTS, is merely descriptive or generic for Applicant’s goods and services, and has been disclaimed. This reduces its significance in the likelihood of confusion analysis because consumers are less likely to rely on descriptive or generic wording to indicate source. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (in comparing THE DELTA CAFÉ to DELTA, the generic term CAFÉ lacks sufficient distinctiveness to create a different commercial impression). So, while we 11 We are not persuaded by Applicant’s assertion that Palm Bay Imps. and other cases should not be relied on for this proposition because of factual differences in those cases and this case, such as the marks at issue or the degree of fame of the registrant. Serial Nos. 86473005 & 86473087 - 8 - do not ignore the additional wording in the analysis, “the non-source identifying nature of the words and the disclaimers thereof constitute rational reasons for giving those terms less weight in the analysis.” In re Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018). To the extent that contains a design of a donut, its visual impact is minimal because it forms the letter O in “DONUTS” and does not stand out in terms of size or visual prominence. As to the marks’ connotations and commercial impressions, we also find them similar. Consumers would attribute the same meaning to, and derive the same impression from, the shared wording AMY’S in Applicant’s marks as they would in the cited mark. The additional word DONUTS in Applicant’s marks merely refers to one of the identified goods, likely a featured food item at Applicant’s restaurants, and thus only minimally contributes to the overall meaning and connotation of Applicant’s marks, and does not change the meaning or impression of AMY’S. Also, because the donut design in merely depicts the generic or descriptive word in the mark, it adds little to the connotation and commercial impression. Consumers familiar with the cited mark AMY’S likely would view Applicant’s marks as variations from the same source, tailored to a particular food item – donuts. We remain mindful that “marks must be considered in light of the fallibility of memory and not on the basis of side-by-side comparison.” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014). Given the resemblance in sound, Serial Nos. 86473005 & 86473087 - 9 - appearance, connotation and commercial impression when viewed in their entireties, we find both of Applicant’s marks very similar to AMY’S. 2. The Cited Registration for AMY’S DRIVE THRU We also find Applicant’s AMY’S DONUTS and similar to the cited mark AMY’S DRIVE THRU. Because the cited mark is in standard characters, it could appear in any font or color, including the same font and colors as the wording in Applicant’s stylized . In this cited mark, AMY’S dominates, both because it is the first word of the mark and because it is distinctive, relative to the other wording. For the same reasons previously discussed for giving the DONUTS portion of Applicant’s marks less weight in the comparison of marks, we also give DRIVE THRU in the cited mark less weight, as the term has been disclaimed as descriptive of or generic for Registrant’s restaurant services. So while the wording other than AMY’S in each mark creates some visual and phonetic differences in the marks, overall the marks still look and sound similar because of the shared dominant word AMY’S. As to the marks’ connotations and commercial impressions, we also find them similar. Both are dominated by the possessive form of the personal name, AMY’S, and nothing about the additional wording changes the meaning or impression of the shared dominant term. While the DRIVE THRU portion of the cited mark conveys the type of restaurant services offered and the DONUTS portion of Applicant’s marks conveys a type of food item offered by Applicant and likely featured at Applicant’s Serial Nos. 86473005 & 86473087 - 10 - restaurants, consumers would not rely on this wording to distinguish source. Rather, consumers familiar with the cited mark AMY’S DRIVE THRU likely would view Applicant’s marks as variations from the same source focused on a featured food item. Given the resemblance in sound, appearance, connotation and commercial impression when viewed in their entireties, we find both of Applicant’s marks very similar to AMY’S DRIVE THRU. B. The Goods and Services “[L]ikelihood of confusion can be found ‘if the respective goods [and services] are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs., 101 USPQ2d at 1722 (internal citations omitted). In analyzing the second DuPont factor, we look to the identifications in the applications and cited registrations. See Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It is sufficient for a finding of likelihood of confusion as to a particular class if relatedness is established for any item of identified goods or services within that class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). The goods and services in the applications and cited registrations overlap in part. Applicant’s “bakery products” in Class 30 encompass Registrant’s “cookies,” a type of bakery product. See Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 Serial Nos. 86473005 & 86473087 - 11 - (TTAB 2015) (where the goods in an application or registration are broadly described, they are deemed to encompass all the goods of the nature and type described therein). While Applicant implies that “bakery products” are limited to baking ingredients such as sugar, flour, yeast and baking powder,12 we disagree. A “bakery” is “a baker’s shop,” “a place where baked goods are made.”13 A “cookie” is “a small, usually round and flat cake, the size of an individual portion, made from stiff, sweetened dough, and baked.”14 Thus, a cookie is a baked good of the type made in a bakery. The Examining Attorney also submitted numerous bakery websites featuring cookies among their bakery product offerings.15 Thus, Applicant’s and Registrant’s goods in Class 30 are legally identical in part. Applicant’s unrestricted recitation of “restaurant services” in Class 43 encompasses the cited registrations’ recitation of “restaurant services featuring non- dessert items” in Class 43. See, e.g., In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ 12 4 TTABVUE 14 (Applicant’s Brief). 13 Dictionary.com entry for “bakery” (sourced from The Random House Unabridged Dictionary), accessed August 11, 2020. https://www.dictionary.com/browse/bakery?s=t. cooThe Board may take judicial notice of dictionary definitions from online sources when the definitions themselves are derived from dictionaries that exist in printed form. See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may take judicial notice of online dictionaries that exist in printed format or have regular fixed editions); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). 14 Dictionary.com entry for “cookie”, accessed August 11, 2020. https://www.dictionary.com/browse/cookie?s=t. 15 See, e.g., November 19, 2018 Office Action at 13-14 (Shortcake Bakery offering cookies), 17 (Sugar Plum Bakery offering cookies), 18-19 (Red Truck Rural Bakery offering cookies); June 16, 2019 Office Action at 5-6 (Magnolia Bakery offering cookies and chocolate bars), 7 (Sweet Bar Bakery offering holiday cookies), 10-11 Jenny Cakes Bakery offering a cookie platter). Serial Nos. 86473005 & 86473087 - 12 - necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) (“Registrant’s goods are broadly identified as computer programs recorded on magnetic disks, without any limitation as to the kind of programs or the field of use. Therefore, we must assume that registrant’s goods encompass all such computer programs including those which are for data integration and transfer.”). While Applicant seeks to distinguish the services based on the alleged marketplace, “[t]he authority is legion that the question of registrability of an applicant ’s mark must be decided on the basis of the identification of goods [and services] set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods [and services], the particular channels of trade or the class of purchasers to which sales of the goods [and services] are directed.” Octocom Syst., 16 USPQ2d at 1787. Thus, because Applicant chose a broader identification that includes “restaurant services” of all kinds, we cannot consider Applicant’s characterization of its own services merely as “a donut shop that sells donuts” to differentiate it from the cited registrations ’ restaurants that sell “non-dessert items.”16 Similarly, even if we considered Applicant’s untimely evidence from Registrant’s website (which we excluded, above), we cannot read limitations into the recitation of services in the cited registration to limit it to “sustainably focused” restaurant services offered “in barnlike digs,” as Applicant contends.17 16 4 TTABVUE 20 (Applicant’s Brief). 17 4 TTABVUE 20 (Applicant’s Brief). Serial Nos. 86473005 & 86473087 - 13 - The second DuPont factor weighs in favor of likely confusion. C. The Trade Channels and Classes of Consumers Turning to the trade channels and consumers, because the goods and services are legally identical in part, we may presume that the trade channels and classes of consumers for those overlapping goods and services are identical. Viterra, 101 USPQ2d at 1908 (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); see also Inter IKEA Sys. B.V. v. Akea, 110 USPQ2d 1734, 1743 (TTAB 2014); L. & J.G. Stickley, Inc. v. Cosser, 81 USPQ2d 1956, 1971 (TTAB 2007) (“Because the goods of both parties are at least overlapping, we must presume that the purchasers and channels of trade would at least overlap.”). The Examining Attorney also submitted third-party bakery website evidence demonstrating that goods such as Applicant’s donuts, pies and cakes travel in the same trade channels as goods such as Registrant’s cookies.18 As noted above, Applicant attempts to read trade channel limitations into the identifications of goods and services by resorting to extrinsic evidence, but we must rely on the identifications. Octocom Syst., 16 USPQ2d at 1787. We cannot consider alleged marketplace realities not reflected in the identifications. See Cunningham v. 18 See, e.g., November 19, 2018 Office Action at 13-19; June 16, 2019 Office Action at 5-11. Given the presumption flowing from legally identical goods and services, and the principle noted above that if relatedness is established for any item of identified goods or services within a class, that suffices for the entire class, Tuxedo Monopoly, 209 USPQ at 988, we need not address Applicant’s arguments under this factor about whether the third-party bakeries actually sell other particular goods in the identifications. Serial Nos. 86473005 & 86473087 - 14 - Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where the identification is unrestricted, “we must deem the goods to travel in all appropriate trade channels to all potential purchasers of such goods”). Thus, the third DuPont factor weighs in favor of likely confusion. D. Other DuPont Factors Applicant makes improper or unsupported arguments under almost all of the remaining DuPont factors. For example, under the fourth, fifth, ninth, eleventh,19 and twelfth factors, Applicant improperly relies on limitations not reflected in the identifications, and alleged marketplace realities that cannot be considered as they rest on the now-excluded exhibits attached to its Briefs, such as the social media pages it cites under the eleventh factor. See Octocom Syst., 16 USPQ2d at 1787. Under the sixth factor, Applicant also relies on excluded third-party registration evidence, and has offered no third-party use evidence. Under the seventh and eighth factors, we have no evidence regarding lack of actual confusion, and no contextual evidence “such that we could make a finding as to the ‘length of time during and conditions under which there has been concurrent use without evidence of actual confusion.’” In re Guild Mortg. Co., 2020 USPQ2d 10279 *25 (TTAB 2020). Although Applicant makes assertions in its Briefs, “[a]ttorney argument is no substitute for evidence.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. 19 Applicant’s bald assertion of priority based on common law rights in certain areas has no bearing on this appeal. In the context of an ex parte refusal, priority is not an issue. In re Calgon Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971) (Section 2(d) “proscribes registration of a trademark which so resembles, inter alia, a mark registered in the Patent Office ... that portion of § 2(d) does not speak of priority but of a ‘mark registered’”). Serial Nos. 86473005 & 86473087 - 15 - Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)). We also note that “in this ex parte context, there has been no opportunity to hear from Registrant about whether it is aware of any reported instances of confusion.” Guild Mortg., 2020 USPQ2d 10279 at *23. We find these DuPont factors neutral. III. Conclusion The overall similarity of the marks for in-part legally identical goods and services that move in the same channels of trade to the same classes of customers as those in the cited standard-character registrations renders confusion likely. Decision: The refusal to register Applicant’s mark is affirmed in both appeals, based on Registration No. 4923010 and Registration No. 5176820.