Cookware for Life, LLC

Trademark Trial and Appeal BoardApr 18, 2012

No. 77967789 (T.T.A.B. Apr. 18, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: April 18, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Cookware for Life, LLC ________ Serial Nos. 77967789 and 77967795 _______ Jeffrey M. Furr of Furr Law Firm for Cookware for Life, LLC. Jeffrey C. Coward, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow, Managing Attorney). _______ Before Holtzman, Cataldo and Wellington, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, Cookware for Life, LLC, filed applications to register on the Principal Register the marks shown below: FOR LIFE in standard characters,1 and 1 Application Serial No. 77967789 was filed on March 24, 2010 based upon applicant’s assertion of its bona fide intent to use the mark in commerce. Ser. Nos. 77967789 and 77967795 2 2 both for “Pans; Kitchen utensils, namely, salad spinners, mixing bowls and serving spoons all sold solely through home demonstrations” in International Class 21. The trademark examining attorney refused registration under Section 2(d) of the Trademark Act on the ground that applicant’s marks, as used in connection with its goods, so resemble the following marks, previously registered on the Principal Register: COOKWARE FOR LIFE in typed or standard characters (COOKWARE disclaimed) for “cookware, namely, cast metal pots, pans, grills, and griddles” in International Class 21;3 and 2 Application Serial No. 77967795 was filed on March 24, 2010 based upon applicant’s assertion of its bona fide intent to use the mark in commerce. “The color(s) red, blue, white, black is/are claimed as a feature of the mark.” “The mark consists of the words ‘FOR LIFE’ appearing in blue, on a red circular background that is outlined in black and with a white middle on which appears a blue water drop.” 3 Registration No. 3036591 issued to Logan Outdoor Products LLC on December 27, 2005. Section 8 affidavit accepted; Section 15 affidavit acknowledged. Ser. Nos. 77967789 and 77967795 3 for “Housewares, namely cups, dishes, and containers for food” in International Class 21,4 as to be likely to cause confusion. When the refusals were made final, applicant appealed. Applicant and the examining attorney filed briefs on the issues under appeal. The appeals involve common issues of law and fact. Further, the records are essentially identical. Accordingly, we decide both appeals in this single opinion. See, for example, In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009). See also TBMP § 1214 (3d ed. 2011) and authorities cited therein. For purposes of the du Pont factors that are relevant to these appeals we will consider applicant’s involved marks and the mark that is the subject of cited Registration No. 3248808. If likelihood of confusion is found as to the mark and goods 4 Registration No. 3248808 issued to Masa Fuji on June 5, 2007. “The mark consists of: A background in black with the word, FORLIFE in white in rectangular shape with rounded corners.” Ser. Nos. 77967789 and 77967795 4 in this registration, it is unnecessary to consider the other cited registration.5 Conversely, if likelihood of confusion is not found as to the mark and goods in this registration, we would not find likelihood of confusion as to the mark and goods in the other cited registration. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in 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 Co., Inc., 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 and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). 5 We note that the two cited registrations are owned by different entities. However, we are not privy to the facts surrounding the registration of these marks, including any agreements that may exist between the owners thereof. Ser. Nos. 77967789 and 77967795 5 The Goods Turning to our consideration of the recited goods, we must determine whether consumers are likely to mistakenly believe that they emanate from a common source. It is not necessary that the goods at issue be similar or competitive, or even that they move in the same channels of trade, to support a holding of likelihood of confusion. It is sufficient instead that the respective goods are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could give rise to the mistaken belief that they originate from the same producer. See In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). In ex parte cases, we must compare applicant’s goods as set forth in its applications with the goods as set forth in the cited registration. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In the present case, applicant’s goods are identified as “Pans; Kitchen utensils, namely, salad spinners, mixing bowls and serving spoons all sold solely through home demonstrations,” and registrant’s goods are identified as “Housewares, namely cups, dishes, and containers for food.” We observe initially that Ser. Nos. 77967789 and 77967795 6 applicant’s goods appear to be related on their face to those of registrant inasmuch as applicant’s goods are used to prepare and serve food and registrant’s goods are used to serve and store food. In addition, the examining attorney submitted with his Office actions numerous copies of use-based, third-party registrations reciting goods of a similar type to those identified in the involved applications and cited registration. The following examples are illustrative: Registration No. 3377206 for goods including “dinnerware and dishes made of china and of earthenware, namely … cups; pans; salad spinners; containers for food storage”; Registration No. 3144747 for goods including “cooking pots and pans; cups; dishes; salad spinners; serving spoons”; Registration No. 3464524 for goods including “serving spoons; household containers for food; dishes; pans; cups”; and Registration No. 3985486 for goods including “cups; dishes; pans; serving spoons; salad spinners”. These registrations suggest, in general, that applicant’s various items of cookware are related to registrant’s various items of housewares. See In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001). Although these registrations are not evidence that the marks shown therein are in use or that the public is Ser. Nos. 77967789 and 77967795 7 familiar with them, they nevertheless have probative value to the extent that they serve to suggest that the goods listed therein are of a kind which may emanate from a single source. See, e.g., In re Albert Trestle & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 at n. 6 (TTAB 1988). Based upon the goods recited in the involved applications and the cited registration, as well as the evidence made of record by the examining attorney, we find that applicant’s goods are related to those provided by registrant. The relatedness of the goods is a factor that weighs in favor of a finding of likelihood of confusion. Channels of Trade Furthermore, it is settled that in making our determination regarding the relatedness of the parties’ goods, we must look to the goods as identified in the involved applications and cited registration. See Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that 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 regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular Ser. Nos. 77967789 and 77967795 8 channels of trade or the class of purchasers to which the sales of goods are directed”). See also Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods”). In this case, there are no restrictions in registrant’s recitation of goods as to the channels of trade in which the goods may be encountered, or type or class of customer to which the services are marketed. Thus, registrant’s goods must be presumed to move in all normal channels of trade therefor and be available to all classes of potential consumers, including consumers who would encounter applicant’s goods sold through its more narrowly defined trade channels of “home demonstrations.” See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In that regard, we note there is no evidence of record to indicate whether “home demonstrations” are a usual trade channel for such goods. We further note, however, that it is not particularly significant whether or not applicant’s and registrant’s goods may typically be purchased through the same channels of trade inasmuch as the goods need not even be purchased at the same time. A purchaser of applicant’s food service items through a home Ser. Nos. 77967789 and 77967795 9 demonstration, who later encounters registrant’s related food service items in a retail store or other venue, may well believe that there is some connection as to source if the goods are offered under a similar mark. As a result, even if the trade channels for registrant’s goods do not include the trade channels in which applicant’s goods may be encountered, this factor is, at best, neutral or only slightly mitigates against a finding of likelihood of confusion. The Marks We turn to the first du Pont factor, i.e., whether applicant’s marks and registrant’s mark are similar or dissimilar when viewed in their entireties in terms of appearance, sound, connotation and overall 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 test, under the first du Pont factor, 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 that confusion as to the source of the services offered under the respective marks is likely to result. Ser. Nos. 77967789 and 77967795 10 We discuss the similarity between the marks in applicant’s involved applications and the cited registration below. For the reasons discussed infra, we find in both cases that the similarities between the marks favor a finding of likelihood of confusion. Application Serial No. 77967789 Applicant’s mark, FOR LIFE, is identical in sound and similar in appearance to registrant’s mark, displayed below in that applicant’s mark wholly incorporates the wording of the registered mark. The presence or absence of a space between virtually the same words is not a significant difference. Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar. The word marks are phonetically identical and visually almost identical”); In re Best Western Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”). In addition, there is Ser. Nos. 77967789 and 77967795 11 no evidence of record that the wording FOR LIFE or FORLIFE conveys a different meaning when applied to applicant’s goods than when applied to those of registrant. Thus, the marks are identical in meaning or connotation. With regard to the minor design in registrant’s mark we must keep in mind that the literal portions of marks, rather than design elements, are generally regarded by consumers as the principal source-signifying portion of the mark. See In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987) (if a mark comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request or refer to the services). In this case, the simple rectangular carrier design in registrant’s mark clearly is subordinate to the wording FOR LIFE that comprises the literal portion of both marks. In sum, we conclude that applicant's mark and the registered mark are substantially similar in terms of appearance, identical in sound and meaning, and overall convey highly similar commercial impressions. That is to say, the marks are likely to be viewed as variations of each other, but pointing to the same source. Application Serial No. 77967795 Ser. Nos. 77967789 and 77967795 12 For the reasons discussed above in our consideration of the similarity of registrant’s mark with the mark in application Serial No. 77967789, we find that registrant’s mark is also highly similar to the mark, displayed below, in application Serial No. 779677795. The wording FOR LIFE or FORLIFE is identical in sound and meaning or connotation in both marks, and somewhat similar in appearance. We further find that the slight stylization of the lettering and the addition of stylized drop of water and simple circular carrier design to applicant’s mark are insufficient to create a commercial impression that is separate and distinct from that of registrant’s mark. The drop of water in applicant’s mark, though distinctive, is framed by the wording FOR LIFE and serves to draw the Ser. Nos. 77967789 and 77967795 13 viewer’s attention toward those words. Further, and as discussed above, consumers will refer to applicant’s goods by the word portion of its mark, not the design. See In re Appetito Provisions Co., supra. In short, even with the addition of the design of a drop of water and a circular carrier design and stylized lettering, the similarities between applicant’s mark and registrant’s mark in appearance, sound, meaning and commercial impression far outweigh the differences. Summary In our determination of the refusal to register, we have considered all of the arguments and evidence submitted by applicant and the examining attorney, including any arguments and evidence not specifically discussed in this decision. In these cases, the similarity of the goods and the similarities between the marks favor a finding of likelihood of confusion. It is well established that one who adopts a mark similar to the mark of another for the same or closely related goods or services does so at his own peril. See J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed Cir. 1988); and W.R. Grace & Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308 (TTAB 1976). Ser. Nos. 77967789 and 77967795 14 Decision: The refusal of registration is affirmed in both cases.