CRP LMC PROP Co., LLC

Trademark Trial and Appeal Board

Jan 7, 2022

88834639 (T.T.A.B. Jan. 7, 2022)

Mailed: January 7, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ---- In re CRP LMC Prop Co., L.L.C. _____ Serial Nos. 88834639 and 88834641 _____ Augusto Ramon Lopez of SMGQ Law for CRP LMC Prop Co., L.L.C. Alison Keeley, Trademark Examining Attorney, Law Office 113, Myriah Habeeb, Managing Attorney. _____ Before Cataldo, Adlin and Goodman, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Applicant CRP LMC Prop Co., L.L.C. seeks registration of the marks and , both for “marina services” in International Class 39.1 The Examining Attorney refused registration in both applications under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s marks 1 Application Serial Nos. 8834639 (the “’639 Application”) and 8834641 (the “’641 Application”), respectively, each filed March 14, 2020 under Section 1(a) of the Trademark Act, based on first use dates of January 1, 2017. The ’641 Application includes this description of the mark: “The mark consists of the stylized letters ‘LMC’ with a stylized design of the front view of a yacht placed within the empty circular space inside the letter ‘C’ of the ‘LMC’.” This Opinion is Not a Precedent of the TTAB Serial Nos. 88834639 and 88834641 2 so resemble the commonly-owned registered marks LMC, in standard characters,2 and the mark shown below (with “S.S.” and “A HISTORIC LANDMARK” disclaimed): ,3 both for “ferry-boat transport” in International Class 39, that they are likely to cause confusion. After the refusals became final, Applicant appealed, the Board consolidated the appeals at the Examining Attorney’s request, and Applicant and the Examining Attorney filed briefs. I. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) (setting forth factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor about which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion 2 Registration No. 5176104, issued April 4, 2017. 3 Registration No. 5185288, issued April 18, 2017. Serial Nos. 88834639 and 88834641 3 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 mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). We focus here on Registrant’s standard character mark LMC. If we find confusion likely between Registrant’s standard character mark and Applicant’s involved marks, we need not consider the likelihood of confusion between Applicant’s marks and Registrant’s design mark. On the other hand, if we find no likelihood of confusion between Registrant’s standard character mark and Applicant’s marks, we would not find confusion likely between Applicant’s marks and Registrant’s design mark. In re Max Capital Grp., 93 USPQ2d 1243, 1245 (TTAB 2010). A. The Marks The marks are obviously highly similar “in their entireties as to appearance, sound, connotation and commercial impression” because they share and consist of the same, sole literal element - “LMC.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). In fact, the only difference between the marks is that LMC is stylized in both of Applicant’s marks, and Applicant’s design mark includes “the front view of a yacht placed within the empty circular space inside the letter ‘C’.” These differences are relatively insignificant when compared to the obvious similarities between the marks. Serial Nos. 88834639 and 88834641 4 In fact, the mark in Applicant’s ’639 Application and Registrant’s standard character mark are legally identical. That is, the stylization in Applicant’s marks is essentially irrelevant, because Registrant’s LMC mark is in standard characters, meaning Registrant’s mark could be displayed in a style similar (or identical) to Applicant’s displays of LMC in its marks. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011); In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012). As the Federal Circuit held in analogous circumstances, “Symbolic does not, and cannot, dispute that the mark, I AM in standard character form, and the registrants’ marks, I AM in standard character, typed, or stylized form, are pronounced the same way and, at a minimum, legally identical.” In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017). Here, as in i.am.symbolic, Applicant’s and Registrant’s marks will be pronounced the same way. They also convey the same meaning and commercial impression, because both marks consist of an identical initialism, and the stylization of Applicant’s mark is minor, pedestrian and changes nothing about what LMC conveys. Applicant argues that consumers viewing Registrant’s website will understand Registrant’s “LMC” to stand for “Lake Michigan Carferry,” and that those viewing Applicant’s website will understand Applicant’s “LMC” to stand for “Lauderdale Marine Center,” and that as a result the marks convey different meanings. 4 TTABVUE 23-24; November 25, 2020 Serial Nos. 88834639 and 88834641 5 Office Action response TSDR 27-32.4 The problem with this argument is that many consumers will be exposed to only the marks, not the websites or other indications of what LMC stands for, and none of the marks, standing alone, reveal what words the “LMC” initialism stand for, if any.5 Furthermore, consumers familiar with Registrant’s mark who encounter Applicant’s may very well assume that Applicant’s mark is a stylized version of Registrant’s, or that Applicant’s mark identifies an extension of Registrant’s brand into marina services. Alternatively, those familiar with Applicant’s mark may perceive Registrant’s as a version of Applicant’s mark, or an extension of Applicant’s brand into boat transportation. Applicant’s design mark is also likely to be confused with Registrant’s standard character LMC mark, for essentially the same reasons. Indeed, 4 Citations to the appeal record are to TTABVUE, the Board’s online docketing system. The number preceding TTABVUE corresponds to the docket entry number, and any numbers following TTABVUE refer to the page(s) of the docket entry where the cited materials appear. Citations to the application file are to USPTO’s Trademark Status & Document Retrieval (“TSDR”) online database, by page number, in the downloadable .pdf format. 5 Our task is not to review particular displays of the marks, on websites or elsewhere. Rather, we must compare Applicant’s mark, as presented in the drawings submitted with its applications, to Registrant’s mark as depicted in the cited registration. SCM Corp. v. Royal McBee Corp., 395 F.2d 1018, 158 USPQ 36, 37 n.4 (CCPA 1968) (“Certain exhibits reflect the parties’ current practice of associating their house marks ‘SCM’ and ‘Royal’ with ‘ELECTRA’ and ‘ELECTRESS’, respectively. However, our concern here, of course, is whether ‘ELECTRA’, the mark actually registered, and ‘ELECTRESS’, the mark for which registration is sought, are confusingly similar when applied to the instant goods.”); Denney v. Elizabeth Arden Sales Corp., 263 F.2d 347, 120 USPQ 480, 481 (CCPA 1959) (“In determining the applicant’s right to registration, only the mark as set forth in the application may be considered ….”); Bellbrook Dairies, Inc. v. Hawthorn-Mellody Farms Dairy, Inc., 253 F.2d 431, 117 USPQ 213, 214 (CCPA 1958) (“The fact that each of the parties applies an additional name or trademark to its product is not sufficient to remove the likelihood of confusion. The right to register a trademark must be determined on the basis of what is set forth in the application rather than the manner in which the mark may be actually used.”). Serial Nos. 88834639 and 88834641 6 as is typically the case, the literal element of Applicant’s LMC & Design mark is dominant. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal portion of a word and design mark likely will be the dominant portion”); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the marks comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services” and “because applicant’s mark shares with registrant’s mark that element responsible for creating its overall commercial impression, the marks are confusingly similar”). More specifically, the boat design in Applicant’s mark is not only smaller than the letters, but a boat design is not particularly distinctive when used in connection with Applicant’s “marina services.” It is therefore entitled to less weight in our analysis. Of course, Applicant’s design mark and the cited LMC mark will be pronounced the same, as the boat design element of Applicant’s mark would not be pronounced. Furthermore, if the boat design in Applicant’s mark conveys the meaning and commercial impression of something boat-related, that would not necessarily distinguish the mark’s meaning and commercial impression from Registrant’s mark, at least not for consumers who know that Registrant offers “ferry-boat transport,” or for consumers seeking other boat-related services. In short, both of Applicant’s involved marks are highly similar to Registrant’s standard character mark in appearance, sound, meaning and commercial impression. This factor weighs heavily in support of finding a likelihood of confusion. Serial Nos. 88834639 and 88834641 7 B. The Services, Channels of Trade and Classes of Consumers The services need not be identical or even competitive in order to find a likelihood of confusion. Rather, the question is whether the services are marketed in a manner that “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)). See also Hewlett-Packard Co. v. Packard Press Inc., 227 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.”); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods”); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1109 (2007). Here, the Examining Attorney has established that services such as those identified in the cited registration (ferry-boat transport) and services such as those identified in the involved application (marina services) are offered under the same marks, and travel in the same channels of trade to the same consumers. In fact, an Outer Banks company is even named for its marina and ferry services, as shown in this printout from MORRIS MARINA & FERRY SERVICE’s website: Serial Nos. 88834639 and 88834641 8 January 14, 2021 Office Action TSDR 66 (emphasis added). As shown, “Morris Marina is the homeport for the ferries … The ferries offer transportation ….” Similarly, CAPE POINTE MARINA is also the source of CAPE POINTE FERRY services, as shown below: Serial Nos. 88834639 and 88834641 9 Id. at 68 (emphasis added). As shown, according to this website, “Cape Pointe Marina is your one stop shop for all fishing, boating and camping needs! … As one of the closest marinas to Cape Lookout National Seashore, we offer convenient ferry rides to Cape Lookout.” Id. Like Morris Marina and Ferry Service and Cape Pointe Marina, Bull River Marina offers a water taxi to Daufuskie Island and other islands, known as the BULL RIVER MARINA WATER TAXI: Id. at 74 (emphasis added). Other examples of record include: Harbor Point Marinas, which offers a “free water taxi” during summer months; Sailfish Marina Resort, which offers its Palm Beach Water Taxi (as well as the Peanut Island [boat] Shuttle); and Hubbards Marina, which offers the Egmont Key Ferry. Id. at 78-84, 88-90. This third-party use evidence establishes a relationship between the services. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (crediting relatedness evidence showing that third parties use the same mark for the Serial Nos. 88834639 and 88834641 10 goods and services at issue because “[t]his evidence suggests that consumers are accustomed to seeing a single mark associated with a source that sells both”); Hewlett- Packard Co., 62 USPQ2d at 1004 (evidence that “a single company sells the goods and services of both parties, if presented, is relevant to a relatedness analysis”). In addition, the Examining Attorney introduced a number of use-based third- party registrations showing that the same marks are registered in connection with Registrant’s services (or similar services) on the one hand and Applicant’s services (or similar services) on the other. The following are typical: (Reg. No. 3255807) is registered for “ferryboat operating, ferry-boat transport” and “marina services.” BRIDGE MARINA (Reg. No. 4391351) is registered for “boat cruises,” “boat transport”6 and “marina services.” HIGH SIERRA MARINE (Reg. No. 4608961) is registered for “boat transport” and “marina services.” ANTELOPE POINT MARINA (Reg. No. 5072720) is registered for “boat transport services” and “marina services.” KNOTTY OAR (Reg. No. 6023241) is registered for “boat transport” and “marina services.” BULLFROG (Reg. No. 1807973) is registered for “transportation services [,] namely, ferry services, marina services.” (Reg. No. 4391226) is registered for “boat transport” and “marina services.” 6 “Boat transport” is broad enough to encompass “ferry-boat transport.” Serial Nos. 88834639 and 88834641 11 BIMINI SUPERFAST (Reg. No. 4544794) is registered for “transportation services, namely, transport by ferry, boat, and shuttle bus; marina services.” (Reg. No. 4831784) is registered for “pleasure boat transport” and “marina services.” SUNTEX MARINAS (Reg. No. 5243859) is registered for “boat transportation services” and “marina services.” #YOURPLACEINTHESUN (Reg. No. 5612661) is registered for “boat transportation services” and “marina services.” (Reg. No. 6190207) is registered for “transportation services, namely, transport by ferry, boat, and shuttle bus; marina services.” BITTER END (Reg. No. 6158694) is registered for “marina services, featuring berthing, mooring, docking, and storage; boat cruises; providing transport for boat excursions by boat, namely, sailboats and yachts.” June 9, 2020 Office Action TSDR 11-23; January 4, 2021 Office Action TSDR 8-9, 13- 33. “Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may nevertheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998). This evidence supports and bolsters the third-party use evidence. The third-party use evidence also establishes that the channels of trade and classes of consumers overlap, because marinas offer their customers both marina Serial Nos. 88834639 and 88834641 12 services and boat transport services via the Internet and other means. Thus, the services are related and their channels of trade and classes of consumers overlap. These factors also weigh in favor of finding a likelihood of confusion.7 C. Purchaser Sophistication and Care Applicant’s argument that the relevant consumers are sophisticated and will exercise care in purchasing, 4 TTABVUE 21-22, is unsupported by any evidence. Furthermore, the record reveals that Registrant’s mark is used for a ferry that transports people, including apparently tourists, as well as their vehicles, 60 miles across Lake Michigan. November 25, 2020 Office Action response TSDR 27-29. In other words, it appears to be targeted to the general public, and there is no evidence or basis for assuming that Registrant’s customers are more sophisticated or careful than the public at large. However, with respect to Applicant’s marina services, we accept Applicant’s argument that at least some of the relevant consumers will make their purchasing decisions carefully, given that many boats are expensive to purchase, store and maintain, and that Applicant’s customers appear to include yacht owners. Id. at 31- 32. Nevertheless, to the extent this factor weighs in Applicant’s favor, it is outweighed 7 Applicant’s argument that confusion is unlikely because Registrant operates a Lake Michigan ferry that travels between Michigan and Wisconsin while Applicant is a Ft. Lauderdale marina, and its reliance on concurrent use cases, 4 TTABVUE 18-20, is not well- taken. Indeed, the cited registration and involved applications are all geographically unrestricted. In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 n.4 (TTAB 1987) (territorial separation of the use of the cited registered mark from the applicant is irrelevant to determining likelihood of confusion in a geographically unrestricted application); Peopleware Sys., Inc. v. Peopleware, Inc., 226 USPQ 320, 321 (TTAB 1985) (while opposer and applicant may currently be geographically separated in their uses, this is irrelevant where applicant seeks a nationwide unrestricted registration). Serial Nos. 88834639 and 88834641 13 by the close similarity of the marks, as well as the relationship between the services and their overlapping channels of trade and classes of consumers. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986); Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970); see also, HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweighed sophisticated purchasers, careful purchasing decision, and expensive goods). D. Lack of Actual Confusion Applicant provides testimony and argues that there has been no actual confusion. 4 TTABVUE 24-25; November 25, 2020 Office Action response TSDR 34-39. This evidence is unpersuasive, however, because we cannot gauge whether or the extent to which there has been a meaningful opportunity for confusion to occur. See Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The absence of any showing of actual confusion is of very little, if any, probative value here because (1) no evidence was presented as to the extent of ETF’s use of the VITTORIO RICCI mark on the merchandise in question in prior years ….”); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). More specifically, while Applicant’s focus on the parties’ geographic separation is not relevant to our assessment of the channels of trade because the involved applications and cited registrations are geographically unrestricted, the geographic separation Applicant documents is relevant to the question of actual confusion. Chutter, Inc. v. Great Mgt. Grp., LLC, 2021 USPQ2d 1001 at *44-45 (TTAB 2021) (while “geographic disparity” Serial Nos. 88834639 and 88834641 14 is not “a basis to find that there is no likelihood of confusion,” nevertheless “we may consider geographic scope when assessing whether there was a significant opportunity for actual confusion to occur in the same markets”). Cf. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1164 (Fed. Cir. 2019) (in which the applicant introduced declaration testimony concerning the lack of actual confusion “for a particularly long period of time - over 40 years - in which the two businesses operated in the same geographic market - southern California - without any evidence of actual confusion”). This factor is neutral. E. Applicant’s Good Faith Finally, Applicant’s witnesses all testify that Applicant began using its involved marks “with no intent to infringe or capitalize on” Registrant’s cited marks. November 25, 2020 Office Action response TSDR 34-39. While an intent to “capitalize on” Registrant’s marks could be relevant, Applicant’s innocence is not. J&J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991) (“Whether there is evidence of intent to trade on the goodwill of another is a factor to be considered, but the absence of such evidence does not avoid a ruling of likelihood of confusion). This factor is also neutral. II. Conclusion The marks are highly similar, the goods are related, and the channels of trade and classes of consumers overlap. These factors outweigh any assumed consumer sophistication or care in purchasing. Confusion is likely. Serial Nos. 88834639 and 88834641 15 Decision: The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act is affirmed.