CityCenter Land, LLC

Trademark Trial and Appeal BoardMar 19, 2013

No. 77626840 (T.T.A.B. Mar. 19, 2013)

Michael Ameen Managi Before B Opinion C register namely sweat sh dress pa UNIT J. McCue Imam, Tr ng Attorne ergsman, by Bergsm ityCenter the mark t-shirts, t irts, swea nts, caps, P ED STAT Trad of Lewis a ademark y). Wellington an, Admi Land, LL ARIA L ank tops, t pants, sh hats and b THIS OPI RECEDEN ES PATEN emark Tr In re CityC Serial nd Roca L Examining and Ritch nistrative C (“appli AS VEGA collared ort pants andanas, NION IS N T OF TH T AND T _____ ial and Ap _____ enter Lan _____ No. 776268 _____ LP for City Attorney _____ ie, Admin Trademark cant”) file S and de golf shirts , swim we headwear, OT A E TTAB M M RADEMAR peal Board d, LLC 40 Center La , Law Off istrative T Judge: d an inte sign, show , sweaters ar, dress s shoes,” in ailed: arch 19, 2 K OFFIC nd, LLC. ice 113 (O rademark nt-to-use n below, , jackets, hirts, skits Class 25. 013 E dette Bon Judges. applicatio for “cloth jogging s [sic], blou net, n to ing, uits, ses, Serial No. 77626840 2 Applicant disclaimed the exclusive right to use the term “Las Vegas.” The Trademark Examining Attorney refused to register applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicants mark so resembles the registered mark ARIA, in typed drawing form, for “clothing, namely, women’s sleepwear, robes, loungewear,” in Class 25, as to be likely to cause confusion.1 Preliminary Issue On August 7, 2012, applicant filed a supplemental brief arguing that registrant changed the mark in the cited registration to ARIA COLLECTION from ARIA when it filed its Section 8 declaration of continued use and Section 9 renewal application. Applicant contends that the change in the mark “transforms the original meaning of the [registered mark] so much that it results in a material alteration. Accordingly, the Office should have refused the cited registrant’s § 8 specimen on the basis that it is deficient.” However, Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce in connection with the goods specified in the certificate. During ex parte prosecution, an applicant will not be heard on matters that constitute a collateral attack on the cited registration (e.g., a registrant’s abandonment or nonuse of the mark). See In re Dixie Rests., Inc., 105 F.3d 1405, 1408, 41 USPQ2d 1 Registration No. 1687167, issued May 12, 1992; second renewal. Serial No. 77626840 3 1531, 1534-35 (Fed. Cir. 1997) (“Dixie’s argument that DELTA is not actually used in connection with restaurant services amounts to a thinly-veiled attack on the validity of the registration.”); In re Fiesta Palms, LLC, 85 USPQ2d 1360, 1363 (TTAB 2007); In re Peebles Inc. 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988). The presumption of validity may be rebutted. However, an ex parte appeal is not the appropriate forum for such a challenge. As long as the cited registration remains uncanceled, it is treated as valid and entitled to the above-noted statutory presumptions. If applicant believes that a valid ground for cancellation of the cited registration exists, the better practice would have been to file a petition to cancel the cited registration and request that the prosecution of the application be suspended pending the disposition of the cancellation proceeding. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the 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 between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry Serial No. 77626840 4 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 entirety in terms of appearance, sound, connotation and commercial impression. We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that 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 so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Since the goods at issue are clothing, we are dealing with average consumers. Serial No. 77626840 5 The marks are similar to the extent that they both include the word ARIA. Because registrant’s mark is in typed drawing form, the rights associated with the mark reside in the wording and not in any particular display. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988). Accordingly, registrant could display its mark in a style that is similar to applicant’s mark. In any event, the display of applicant’s mark is not so distinctive as to distinguish the marks. It is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood of confusion, 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., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this case, the term ARIA is the dominant part of applicant’s mark. The name LAS VEGAS, which has been disclaimed, is geographically descriptive. In addition, the word ARIA is the largest and most prominent part of applicant’s mark. Furthermore, applicant’s mark incorporates registrant’s entire mark and, in this case, the structure of applicant’s mark suggests that applicant’s products are a variation of registrant’s products emanating from Las Vegas. See Saks & Co. v. TFM Indus. Inc., 5 USPQ2d 1762, 1764 (TTAB 1987) (“the use of the phrase BY FIRE ISLANDER [in FOLIO BY FIRE ISLANDER] may only tend to increase and Serial No. 77626840 6 not decrease the likelihood of confusion” with FOLIO); In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986)(SPARKS BY SASSAFRAS for women’s clothing is likely to cause confusion with SPARKS for shoes, boots and slippers, in part, because “[t]he 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.”); In re Riddle, 225 USPQ 630 (TTAB 1985)(“Richard Petty's Accu Tune” for automotive service centers specializing in engine tune-ups and oil changes, is likely to cause confusion with “Accutune” automotive testing equipment.”). Applicant argues that its addition of the name “Las Vegas” distinguishes the marks and applicant points to the numerous third-party registrations it made of record that share a common word and that are distinguished only by the addition of a geographical term. However, it is well settled that each case must be decided on its own merits based on the evidence of record. As the Board stated in In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986): The cases are legion holding that each application for registration of a mark for particular goods or services must be separately evaluated. See, for example, In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed.Cir. 1985) [other citations omitted]. Section 20 of the Trademark Act, 15 USC §1070, gives the Board the authority and duty to decide an appeal from an adverse final decision of the Examining Attorney. This duty may not and should not be delegated by the adoption of Serial No. 77626840 7 conclusions reached by Examining Attorneys on different records. Accordingly, the third-party registrations have limited probative value in determining whether applicant’s mark and the mark in the cited registration are similar. In view of the foregoing, we find that consumers will look to ARIA as the source-identifying part of the mark. As a result, when the marks are considered in their entireties, they are similar in appearance, sound, connotation and commercial impression. B. The similarity or dissimilarity and nature of the goods described in the application and the registration. The Trademark Examining Attorney has submitted numerous use-based, third-party registrations for clothing items listed in both the application and registration at issue. Third-party registrations which individually cover a number of different products that are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed goods are of a type which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The registrations listed below are representative.2 Mark Reg. No. Relevant Overlapping Goods ATWATER 3185056 t-shirts, sweat shirts, sweat pants, bandanas, swim wear, caps, hats, blouses, robes, sleepwear, loungewear 2 For purposes of this list, we have included only the relevant overlapping goods as identified in either the application or the cited registration. Serial No. 77626840 8 Mark Reg. No. Goods SKIN ADDRESSING THE BODY 3543666 Sleepwear, lounge wear, robes, t-shirts, shorts, pants BODY COUTURE 3386569 Caps, hats, lounge wear, pants, shorts, robes, polo shirts, sleepwear, sweatshirts, blouses, footwear, t-shirts P 3505323 Blouses, loungewear, jackets, robes, sleepwear, Dog design 3464403 Pants, dress shirts, t-shirts, sweaters, sweat shirts, sweat pants, blouses, skirts, sleepwear, robes, shoes, loungewear The Trademark Examining Attorney also submitted excerpts from numerous websites advertising the sale of branded clothing items appearing in registrant’s and applicant’s description of goods, including, inter alia, Brooks Brothers (brooksbrothers.com), Mark Shale (markshale.com), and Eddie Bauer (eddiebauer.com). Applicant argues that the goods at issue are not related and may be distinguished from each other because applicant’s goods are collateral merchandise used to promote a resort hotel and casino. The problem with applicant’s argument is that this appeal concerns applicant’s right to registration of a trademark, not applicant’s actual trademark use. Because the scope of the registration applicant seeks is defined by its application (and not by its actual use) it is the application (and not actual use) that we must look to in determining applicant’s right to register: The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the Serial No. 77626840 9 identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed. Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). In view of the foregoing, we find that the goods are related. C. The similarity or dissimilarity of established likely-to-continue channels of trade and classes of consumers. Because there are no limitations as to channels of trade or classes of purchasers in the description of goods in the cited registration or application, it is presumed that registrant’s clothing and applicant’s clothing move in all channels of trade normal for those goods, and that they are available to all classes of purchasers for those goods. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Taking notice of the fact that the products at issue are common clothing items, we may presume that they may be sold in the same retail outlets and purchased by the same class of purchasers. If purchasers were to encounter t-shirts, tank tops, collared golf shirts, sweaters, jackets, jogging suits, sweat shirts, sweat pants, short pants, swim wear, dress shirts, skirts, blouses, dress pants, caps, hats and bandanas, headwear, shoes and women’s sleepwear, robes, loungewear under similar marks, it would not be unreasonable for them to assume mistakenly that the originate from the same source. Serial No. 77626840 10 D. Balancing the factors. In view of the facts that the marks are very similar, the goods are related and the presumption that the goods move in the same channels of trade and are sold to the same classes of consumers, we find that applicant’s mark ARIA LAS VEGAS and design for is likely to cause confusion with ARIA for “clothing, namely t-shirts, tank tops, collared golf shirts, sweaters, jackets, jogging suits, sweat shirts, sweat pants, short pants, swim wear, dress shirts, skits [sic], blouses, dress pants, caps, hats and bandanas, headwear, shoes” is likely to cause confusion with the mark ARIA for “clothing, namely, women’s sleepwear, robes, loungewear.” Decision: The refusal to register is affirmed.