Crystal Clear Cleaning, Inc.v.Window Ninjas, LLC v. Window Ninjas, LLC

Trademark Trial and Appeal BoardSep 21, 2020

94002944 (T.T.A.B. Sep. 21, 2020)

Mailed: September 21, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Window Ninjas, LLC v. Crystal Clear Cleaning, Inc. ___ Concurrent Use No. 94002944 ___ Before Bergsman, Coggins, and Johnson, Administrative Trademark Judges. Opinion by Coggins, Administrative Trademark Judge: Window Ninjas, LLC (“Ninjas”) seeks concurrent use registrations for the mark WINDOW NINJAS (with WINDOW disclaimed) in both standard characters and the composite form shown below for: Chimney sweeping; Cleaning of external surfaces of buildings; Cleaning of facades; Cleaning of industrial premises; Interior sealing and caulking services; Power washing services; Window cleaning; Rain gutter cleaning; THIS OPINION IS NOT A PRECEDENT OF THE TTAB Concurrent Use No. 94002944 2 Dryer vent cleaning; Building restoration services for restoration of glass; Deck cleaning; Building restoration services for restoration of decks; Installation of non-slip flooring products; Roof cleaning; Cleaning services, namely, high dusting within buildings and other under- roof structures; in International Class 37.1 In each application, Ninjas claims “the exclusive right to use the mark in the area comprising the entire United States except the state of Kentucky,” and in each application, Ninjas identifies Crystal Clear Cleaning, Inc. (“Crystal Clear”) as an exception to Ninjas’ exclusive right to use its marks in commerce. Crystal Clear owns a geographically unrestricted registration for the mark WINDOW NINJAS, in standard characters with WINDOW disclaimed, for “window and gutter cleaning,” the underlying application for which is identified in each of Ninjas’ involved applications.2 Now before the Board is the parties’ August 25, 2020 stipulated motion for judgment granting concurrent registration based on settlement agreement, which was accompanied by the parties’ Settlement Agreement.3 3 TTABVUE. Pursuant to the agreement: Ninjas “agrees to limit its use of the marks . . . to the area comprising the entire United States, excluding the state of 1 Application Serial Nos. 88675470 and 88675493, respectively, each filed October 31, 2019, under Section 1(a) of the Trademark Act, alleging first use dates of December 15, 2017. The application to register the composite mark includes this description: “The mark consists of a design of a ninja raising a squeegee in his left hand with a circle behind him and crouching on top of the stylized word ‘WINDOW’, which is set on top of the stylized word ‘NINJAS’.” 2 Registration No. 5988017, issued February 18, 2020, from Application Serial No. 88319634. 3 Counsel for Ninjas filed the motion and subsequently confirmed in a telephone conference with the Board on September 18, 2020, that the Settlement Agreement as filed is the complete agreement. Concurrent Use No. 94002944 3 Kentucky.” Settlement Agreement ¶ 1. Crystal Clear “agrees to limit its use of the mark WINDOW NINJAS . . . to the state of Kentucky.” Id. ¶ 2. Ninjas and Crystal Clear each “agrees not to use marks consisting of or including WINDOW NINJAS in connection with any goods or services in the trade territory reserved to the other.” Id. ¶ 3. Ninjas and Crystal Clear each “agrees not to advertise or promote any goods or services under marks consisting of or including WINDOW NINJAS in the trade territory reserved to the other” party; however, each may continue to operate its website and promote goods and services on social media. Id. ¶ 4. Ninjas and Crystal Clear each “agrees to cooperate and to take any steps deemed necessary to eliminate any instances of confusion or mistake arising out of the concurrent use marks consisting of or including WINDOW NINJAS,” including utilizing “disclaimers on their websites and social media pages.” Id. ¶ 5. Ninjas and Crystal Clear each agrees “that the limitations and conditions set forth in [their] Settlement Agreement are sufficient to avoid any likelihood of confusion arising from concurrent use of marks consisting of or including WINDOW NINJAS” Id. ¶ 6. Ninjas and Crystal Clear each agrees “that both parties are entitled to concurrent use registrations in accordance with the terms of [their] Settlement Agreement[,]” id., and Crystal Clear “does not object to the concurrent use registrations sought by [Ninjas].” Id. at preamble. Based upon the Settlement Agreement, we find that concurrent use of the parties’ marks is not likely to cause confusion, mistake, or deception under 15 U.S.C. § 1052(d). The parties, who are most knowledgeable about their respective businesses and the use of their respective marks, agree that confusion is unlikely based on the Concurrent Use No. 94002944 4 geographic limitations and conditions set forth in the Settlement Agreement. Amalgamated Bank of N.Y. v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir. 1988); Bongrain Int’l Corp. v. Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987). And, should confusion arise, the parties agree to “to take any steps necessary to eliminate” such confusion or mistake, Settlement Agreement ¶ 5, including utilization of disclaimers on websites and social media pages. See CDS, Inc. v. I.C.E.D. Mgmt., Inc., 80 USPQ2d 1572, 1583-84 (TTAB 2006) (presence of a disclaimer on website is helpful in avoiding confusion). For these reasons the parties’ stipulated motion seeking issuance of concurrent registrations including geographic restrictions is hereby granted. Ninjas is entitled to concurrent use registration of the marks WINDOW NINJAS (Serial No. 88675470) and (Serial No. 88675493) for: Chimney sweeping; Cleaning of external surfaces of buildings; Cleaning of facades; Cleaning of industrial premises; Interior sealing and caulking services; Power washing services; Window cleaning; Rain gutter cleaning; Dryer vent cleaning; Building restoration services for restoration of glass; Deck cleaning; Building restoration services for restoration of decks; Installation of non-slip flooring products; Roof cleaning; Cleaning services, namely, high dusting within buildings and other under- roof structures; in International Class 37; in the entire United States except the state of Kentucky. Crystal Clear’s Registration No. 5988017 will be restricted by the addition of the following statement: “Registration limited to the geographic area comprising the State of Kentucky pursuant to Concurrent Use Proceeding No. 94002944.”

Crystal Clear Cleaning, Inc. v. Window Ninjas, LLC v. Window Ninjas, LLC