Damian Higgins

Trademark Trial and Appeal BoardApr 9, 2014

No. 85454873 (T.T.A.B. Apr. 9, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: April 9, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Damian Higgins _____ Serial No. 85454873 _____ Jeffrey R. Cohen of Millen, White, Zelano & Branigan, P.C. for Damian Higgins. Kimberly Frye, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _____ Before Bucher, Greenbaum and Adlin, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Damian Higgins (“applicant”) seeks registration of the mark PLANET HUMAN, in standard characters, for “Musical recordings; Musical sound recordings; Musical video recordings” in International Class 9, and “Caps; T-Shirts” in International Class 25.1 The examining attorney refused registration of the mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when used in connection with applicant’s goods, so 1 Application Serial No. 85454873, filed October 24, 2011 under Section 1(b) of the Trademark Act, based on applicant’s intent to use the mark in commerce. Serial No. 85454873 2 resembles The British Broadcasting Corporation’s (“registrant”) previously- registered mark HUMAN PLANET, in standard characters, for, inter alia, “Prerecorded magnetic data carriers featuring data recordings of audio, video … music … live concerts and events …” and “Clothing, namely, shirts, t-shirts … headgear, namely, caps …,” in International Classes 9 and 25, respectively,2 that use of applicant’s mark in connection with applicant’s goods is likely to cause confusion or mistake or to deceive. After the refusal became final, applicant appealed and filed a motion for reconsideration which was denied, followed by a “request for remand” including additional evidence which was treated as a second motion for reconsideration and also denied. Applicant and the examining attorney filed briefs. We affirm the refusal to register. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all 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 2 Registration No. 4027757, issued September 20, 2011, under Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e), based upon a British registration. Applicant also claimed a priority date of November 30, 2009 under Section 44(d) of the Trademark Act, 15 U.S.C. § 1126(d), based on the filing date of the underlying British application. The cited mark is registered for a large number of additional goods and services in International Classes 9, 14, 16, 18, 25, 28, 38 and 41 in addition to the above abbreviated listing of goods in International Classes 9 and 25. Serial No. 85454873 3 between the goods. 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.”). Turning first to the goods, applicant’s main argument is that the goods are not similar because registrant uses “Human Planet” to identify a television series which “travels to eighty of the most remote locations on Earth to find stories about man’s remarkable relationship with the natural world,” while applicant is a “dubstep DJ.” First Request for Reconsideration, April 15, 2013 (printout from “humanplanetblog.com”); Response to Office Action, August 13, 2012. However, we must compare the goods for which applicant seeks registration to the goods identified in the cited registration. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, ___ F.3d ___, 2014 WL 1229530 (Fed. Cir. March 26, 2014) (“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”) (quoting Octocom Sys., Inc. v. Houston Comp. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). Therefore, even if registrant actually uses its mark for a television series, and applicant actually uses his mark in connection with his activities as a “dubstep DJ,” in the context of this ex parte appeal, such actual use is not relevant to our likelihood of confusion analysis, and in particular, the relatedness of the goods.3 In 3 We acknowledge that consumers would not necessarily be confused between a television series and DJ services, even if those services were provided under the same or similar marks, but neither of those services is before us. Serial No. 85454873 4 re Thor Tech Inc., 90 USPQ2d 1634, 1637-38 (TTAB 2009) (“we must also analyze the similarity or dissimilarity and nature of the goods based on the description of the goods set forth in the application and the registration at issue … we may not limit or restrict the trailers listed in the cited registration based on extrinsic evidence”); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986) (“the question of likelihood of confusion must be determined by an analysis of the marks as applied to the goods identified in the application vis-à-vis the goods recited in the registration, rather than what extrinsic evidence shows those goods to be.”). Here, the “Musical recordings; Musical sound recordings; Musical video recordings” identified in the application are legally identical to the “Prerecorded magnetic data carriers featuring data recordings of audio, video … music” identified in the registration, and the “Caps; T-shirts” identified in the application are legally identical to the “Clothing, namely, shirts, t-shirts … headgear, namely, caps …” identified in the registration. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found with respect to a class of goods or services in an application if there is likely to be confusion with respect to any item that comes within the identification of the goods or services in that class). Serial No. 85454873 5 Moreover, where, as here, applicant’s and registrant’s identifications of goods contain no limitations,4 they are presumed to encompass all goods of the type described, and the goods are presumed to move in all normal channels of trade and be available to all classes of consumers for those goods. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); see also, Stone Lion Capital at * 5 (“Even assuming there is no overlap between Stone Lion’s and Lion’s current customers, the Board correctly declined to look beyond the application and registered marks at issue. An application with ‘no restriction on trade channels’ cannot be ‘narrowed by testimony that the applicant’s use is, in fact, restricted to a particular class of purchasers.’”). Because the goods identified in the application and cited registration include legally identical products, we must presume that the channels of trade and classes of customers are the same. See In re Yawata Iron & Steel Co., Ltd., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence 4 While registrant’s identification of audio recordings is limited to a variety of specific fields, those fields include “music” and “live concerts and events” and therefore registrant’s audio music recordings encompass applicant’s “musical sound recordings” and vice versa. Serial No. 85454873 6 regarding channels of trade, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). The legal identity of applicant’s and registrant’s goods and their overlapping channels of trade not only weighs heavily in favor of a finding of likelihood of confusion, but also reduces the degree of similarity of the marks necessary to find a likelihood of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). As for the marks, they are what we have referred to as “reverse combinations” of the same words or elements or a “transposition of the words” comprising the marks. See e.g., In re Wine Society of America Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (affirming refusal to register THE WINE SOCIETY OF AMERICA & Design based on registration of AMERICAN WINE SOCIETY 1967 & Design, finding that “the transposition of words does not change the overall commercial impression”) and Bank of America National Trust and Savings Ass’n v. The American National Bank of St. Joseph, 201 USPQ 842, 845 (TTAB 1978) (“the words ‘BANKAMERICA’ and ‘BANK OF AMERICA’, on the one hand, and ‘AMERIBANC’, on the other, convey the same meaning and create substantially similar commercial impressions”). In In re Nationwide Industries, Inc., 6 USPQ2d 1882, 1884 (TTAB 1988), which affirmed the refusal to register RUST BUSTER for rust-penetrating spray lubricant based on the mark BUST RUST for penetrating oil, we held that “the reversal in one mark of the essential elements of another Serial No. 85454873 7 mark may serve as a basis for a finding of no likelihood of confusion only if the transposed marks create distinctly different commercial impressions.” Where transposed marks do not convey different commercial impressions, likelihood of confusion is ordinarily found. See Carlisle Chemical Works, Inc. v. Hardman & Holden, 434 F.2d 1403, 168 USPQ 110 (CCPA 1970) (reversing dismissal of oppositions to registration of COZIRC based on use of ZIRCO for related goods, finding that the marks “are substantially similar, the difference being in a reversal of syllables which are essentially the same”); In re General Tire & Rubber Company, 213 USPQ 870 (TTAB 1982) (affirming refusal to register SPRINT STEEL RADIAL for pneumatic tires based on registration for RADIAL SPRINT for vehicle tires, finding that the marks “convey the same meaning, that is, a steel radial tire called ‘SPRINT’ or a radial tire called ‘SPRINT’ both of which could emanate from the same source”); Plus Products v. Physicians Formula Cosmetics, Inc., 198 USPQ 111, 114 (TTAB 1978) (“… the use of identical terms in inverse order as we have in the present case is likely to cause confusion in trade when used on such closely related cosmetic products”); Fisher Scientific Company v. Ipco Hospital Supply Corporation, 165 USPQ 471, 472 (TTAB 1970) (sustaining opposition to MIX O THERM based on THERMIX used for identical goods, stating “they are in their essentials merely reverse combinations of the same words, and such being the case, would more than likely convey substantially the same commercial impressions”); Royal Crown Cola Co. v. Bakers Franchise, 150 USPQ 698 (TTAB 1966), aff’d, 404 F.2d 985, 160 USPQ 192 (CCPA 1969) (“… the applicant’s compound mark includes the same words Serial No. 85454873 8 which make up opposer’s mark, that is to say ‘RITE DIET’ is merely ‘DIET-RITE’ transposed. The marks of the parties create substantially the same commercial impressions …”). Cf. In re Akzona Incorporated, 219 USPQ 94, 96 (TTAB 1983) (“Applicant’s mark ‘SILKY TOUCH,’ conveys the impression that applicant’s synthetic yarns are silky to the touch. On the other hand, registrant’s mark ‘TOUCH O’ SILK,’ suggests that registrant’s clothing products contain a small amount of silk.”) and Murphy, Brill and Sahner, Inc. v. New Jersey Rubber Company, 102 USPQ 420 (Commr. Pat. 1954) (finding that TOPFLITE for shoe soles conveys a different meaning than FLITE TOP for hosiery). Both applicant and the examining attorney agree that the crux of this case is therefore whether PLANET HUMAN and HUMAN PLANET create similar commercial impressions. The examining attorney relies on the following dictionary definitions: “planet” — “a celestial body that orbits the sun”; “the collection of life forms supported on earth”; “people as a whole, humankind, or the general public” “human” – “a member of the species Homo sapiens”; “of, relating to, or characteristic of humans” Office Action of Feb. 13, 2012 Attachments 2 and 3 (The American Heritage Dictionary of the English Language). She argues that the impression of both applicant’s mark and the cited mark “is of a celestial body populated by or characteristic of humans,” and that the marks would be perceived “as indicating human life on the planet or the planet specifically as it relates to humans, as opposed to the other life forms on earth.” Examining Attorney’s Brief at 5. Serial No. 85454873 9 Applicant argues, however, that in its mark the word “planet” is an “attributive adjective” which “attributes planetary characteristics to humans, both scientific (a celestial body moving in an elliptical orbit around a star) and esoteric (bodies moving around each other). The latter, more relatively esoteric attribute is particularly applicable to Applicant’s goods, in light of Applicant’s focus on electronic dance music (or ‘EDM’).” Applicant’s Brief at 9. By contrast, according to applicant, in the cited mark, “human” is used as an adjective “to ascribe human characteristics to planets.” Applicant’s argument about the meaning of his mark appears strained. More importantly, it is completely unsupported by the evidence of record. The dictionary definition of “planet” reveals that it is a noun only, not, as applicant claims, an adjective. While applicant introduced with his second motion for reconsideration a dictionary definition of “planetary” indicating that it is an adjective (Exhibit 5), applicant’s mark is PLANET HUMAN, not PLANETARY HUMAN, and the definition of “planetary” is therefore of little if any relevance compared to the definition of “planet.” Furthermore, applicant’s website belies his arguments about the impression PLANET HUMAN conveys. Second Motion for Reconsideration, August 12, 2013 Ex. 6. The site’s domain name is “destroyplanethuman.com” and “Destroy Planet Human” appears at the top of the site. Id. This phrase makes clear that applicant Serial No. 85454873 10 is using “planet” as a noun rather than an adjective, and is consistent with the dictionary evidence of record.5 In short, we find that the marks convey similar meanings. And because they include the exact same words, in reverse order, they look and sound similar. This factor therefore also weighs in favor of finding a likelihood of confusion. See e.g., In re Sybron Corporation, 165 USPQ 410 (TTAB 1970) (finding that VACUUM AIRE and AIRVAC “engender the same suggestive connotation” and therefore “persons familiar with ‘AIRVAC’ dental equipment, upon encountering dental apparatus bearing the mark ‘VACUUM AIRE’, are reasonably likely to mistakenly assume that they originate from the same source”). Finally, applicant relies on evidence that marks which “transpose the term PLANET” are registered for what applicant argues are related products and services, as follows: PLANET NINE (Reg. No. 3265868) for, inter alia, “pre- recorded DVD’s, compact discs, featuring musical sound recordings” and 9TH PLANET (Reg. No. 4364756) for “Downloadable video recordings featuring behavior modeling to teach social and adaptive skills to teenagers and young adults on the autism spectrum”; PLANET BLUE (Reg. No. 3805577) for “promoting public awareness of environmental issues and energy consumption” and BLUE PLANET & Design (Reg. No. 5 Moreover, if either the “scientific” or “esoteric” meaning applicant ascribes to his mark was correct, the site’s “Destroy Planet Human” heading and domain name would refer to the destruction of applicant’s fans, i.e. the human “celestial body moving in an elliptical orbit around a star” in the scientific meaning or the human “bodies moving around each other” in the esoteric, electronic dance music meaning which applicant seems to suggest is more apt. It seems unlikely that consumers familiar with applicant’s use of “Destroy Planet Human” would ascribe applicant’s apparently intended meaning to the mark PLANET HUMAN. Serial No. 85454873 11 4054512) for, inter alia, “… advertising and promotion of scientific projects for others … * all these services being strictly intended for use with a device for centralizing satellite survey data feeding into databases that allow the Earth to be viewed with an array of aerial and satellite photographs in the context of a global program named e- CORCE and excluding all activity linked directly or indirectly to audiovisual technology, television, cinema and shows that do not enter into this framework”; PLANET FINANCIAL (Reg. No. 4052005) for “financial services, namely, the acquisition and sale of financial and mortgage related assets, the issuance of mortgage backed securities and the origination and servicing of consumer and commercial loans, namely, mortgage loans” and FINANCIAL PLANET (Reg. No. 4252974) for, inter alia, “financial planning advocacy, namely, promoting the public awareness of the importance of financial planning” and “providing a website featuring blogs and non- downloadable publications in the nature of articles, publications and news in the field of financial planning”; and PLANET CLEAN (Reg. No. 3539445) for, inter alia, “retail store services and online retail store services featuring sanitation and janitorial supplies, chemicals, equipment, clothing supplies, and safety equipment” and CLEAN PLANET & Design (Reg. No. 4366700) for “Detergent soap; detergents for household use; hand soaps; laundry detergent; soaps and detergents.” Second Request for Reconsideration, August 12, 2013 Ex. 5. We do not agree that all or even most of these sets of transposed marks are used for related goods and services (and not all of the sets of marks are as similar to each other as are applicant’s and registrant’s marks in this case). However, even assuming that they were all used for related goods and services, and all standard character marks which transposed the exact same words, it is settled that “[t]he Board must decide each case on its own merits” and “the PTO’s allowance of such prior registrations Serial No. 85454873 12 does not bind the Board or this court.” In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). The fact that there are other third party marks including the term PLANET registered for related goods or services, Second Request for Reconsideration, August 12, 2013 Ex. 5, is similarly unpersuasive. As the examining attorney established in denying applicant’s second motion for reconsideration, there is no evidence of any live third party pending or registered marks (or for that matter common law marks) including both “human” and “planet.” Denial of Second Motion for Reconsideration, September 4, 2013. There is no relevant evidence or argument concerning the remaining likelihood of confusion factors, and we therefore treat them as neutral. Conclusion After considering all of the evidence of record as it pertains to the relevant du Pont factors, including applicant’s arguments and evidence, even if not specifically discussed herein, we find that confusion is likely based on the legal identity of the goods and channels of trade and the close similarity of the marks. Decision: The Section 2(d) refusal to register applicant’s mark is affirmed.