Deseret News Publishing Co.

Trademark Trial and Appeal BoardMar 14, 2012

No. 77933056 (T.T.A.B. Mar. 14, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: March 14, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Deseret News Publishing Co. ________ Serial Nos. 77932193; 77933056; and 77933058 _______ Todd E. Zenger of Kirton & McConkie for Deseret News Publishing Co. Sophia Kim, Trademark Examining Attorney, Law Office 106 (Mary Sparrow, Managing Attorney). _______ Before Zervas, Cataldo and Lykos, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, Deseret News Publishing Co., filed three applications to register on the Principal Register the marks shown below: EL OBSERVADOR DE UTAH in standard characters, UTAH disclaimed;1 1 Application Serial No. 77932193 was filed on February 10, 2010 based upon applicant’s assertion of its bona fide intent to use the mark in commerce. Ser. Nos.77932193; 77933056; and 77933058 2 UTAH disclaimed;2 and UTAH disclaimed;3 all for “newspapers” in International Class 16; and “publication of electronic newspapers accessible via a global computer network; providing on-line non-downloadable newspapers; newspaper publication; newspaper publishing” in 2Application Serial No. 77933056 was filed on February 10, 2010 based upon applicant’s assertion of its bona fide intent to use the mark in commerce. “Color is not claimed as a feature of the mark.” “The mark consists of a square background having an ‘O’ with two breaks thereon and having the term ‘Utah’ in the middle thereof and set on top of the words ‘EL OBSERVADOR DE UTAH.’” 3Application Serial No. 77933058 was filed on February 10, 2010 based upon applicant’s assertion of its bona fide intent to use the mark in commerce. “Color is not claimed as a feature of the mark.” “The mark consists of a square background having an ‘O’ with two breaks thereon and set to the left of the words “EL OBSERVADOR DE UTAH.’” Ser. Nos.77932193; 77933056; and 77933058 3 International Class 41. In all three applications, the English translation of “EL OBSERVADOR DE UTAH” is “the Utah observer” or “the observer of Utah.” 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 and services, so resemble the following mark, previously registered on the Principal Register: for “publications; namely, newspapers primarily directed to the Hispanic community” in International Class 16,4 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. In addition, applicant filed reply briefs in each case. The appeals involve common issues of law and fact. Further, the records are essentially 4Registration No. 1768624 issued on February 9, 1993. Section 8 affidavit accepted; Section 15 affidavit acknowledged. Renewed.The English translation of the words “EL OBSERVADOR” is “The Observer.” Ser. Nos.77932193; 77933056; and 77933058 4 identical. Accordingly, we decide the 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. 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). The Goods and Services Turning to our consideration of the recited goods and services, we must determine whether consumers are likely to mistakenly believe that they emanate from a common source. It is not necessary that the goods or services at issue be similar or competitive, or even that they move in the same Ser. Nos.77932193; 77933056; and 77933058 5 channels of trade, to support a holding of likelihood of confusion. It is sufficient instead that the respective goods and services are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods and services 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 and services 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 “newspapers,” and registrant’s goods are identified as “publications; namely, newspapers primarily directed to the Hispanic community.” We therefore must presume that the applicant’s “newspapers” encompass all types of newspapers, including “newspapers directed toward the Hispanic community.” See, e.g., In re Thor Tech, Inc., 90 USPQ2d 1634 (TTAB 2009)(finding “recreational vehicles, namely, travel trailers and fifth wheel trailers” to be encompassed by and legally identical to “trailers”); andIn re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992)(finding “computer software for data integration Ser. Nos.77932193; 77933056; and 77933058 6 and transfer” to be encompassed by and legally identical to “computer programs recorded on magnetic disks”). Similarly, “publication of electronic newspapers accessible via a global computer network; providing on-line non-downloadable newspapers; newspaper publication; newspaper publishing,” are related on their face to registrant’s “newspapers directed toward the Hispanic community” inasmuch as applicant’s broadlyidentified services, all in the field of newspaper publishing without limitation as to the subject matter thereof or the consumers to whom they are directed, must be presumed to include publication and otherwise providing newspapers directed toward the Hispanic community. We observe that the above presumptions are buttressed by the fact that the wording in applicant’s marks as well as that of registrant is in Spanish.5 We further observe that applicant presents no arguments in its briefs regarding the relatedness of the goods and services. The legal identity of applicant’s goods with those of registrant and the relationship between applicant’s services and registrant’s goods weigh in favor of a finding of likelihood of confusion. 5 In her January 7, 2011 Office action, the examining attorney submitted dictionary definitions as well as a translation indicating that “observador” is the Spanish word for “observer.” Ser. Nos.77932193; 77933056; and 77933058 7 Channels of Trade Furthermore, it is settled that in making our determination regarding the relatedness of the parties’ goods and services, we must look to the goods and services 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 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 applicant’s recitation of goods or services as to the channels of trade in which the goods and services may be encountered, or type or class of customer to which the services are marketed. Thus, applicant’s goods and services are presumed to move in all normal channels of trade therefor and be available Ser. Nos.77932193; 77933056; and 77933058 8 to all classes of potential consumers, including consumers of registrant’s more narrowly defined goods that are directed toward the Hispanic community. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). The presumption that the trade channels for applicant’s goods and services include the trade channels in which registrant’s goods may be encountered also favors 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 markare 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. We discuss the similarity between the marks in applicant’s involved applications and the cited Ser. Nos.77932193; 77933056; and 77933058 9 registration below. For the reasons discussed infra, we find in all three cases that the similarities between the marks favor a finding of likelihood of confusion. Application Serial No. 77932193 Applicant’s mark, EL OBSERVADOR DE UTAH, is similar in appearance and sound to registrant’s mark, displayed below in that applicant’s mark wholly incorporates the word portion of the registered mark. In this case, not only does applicant’s mark incorporate the wording in the registered mark, the term EL OBSERVADOR is featured prominently in applicant’s mark as it appears first and is the dominant element therein. Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed in the mind of a purchaser and remembered”). See also Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers must first notice the identical lead word). Ser. Nos.77932193; 77933056; and 77933058 10 While the additional words DE UTAH are also present, the geographically descriptive nature of the disclaimed term UTAH clearly makesit subordinate to EL OBSERVADOR. In other words, EL OBSERVADOR will stand out in applicant’s mark as the literal portion to which consumers will attribute most significant source-indicating value. Consumers are also often known to use shortened forms of names, and it is highly likely that applicant and its goods and services will be referred to as “EL OBSERVADOR.” Cf.In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring: “the users of language have a universal habit of shortening full names –- from haste or laziness or just economy of words”). 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 design in registrant’s mark clearly is subordinate to the wording EL OBSERVADOR that comprises the first portion of applicant’s mark. Ser. Nos.77932193; 77933056; and 77933058 11 We regard to meaning, applicant and the examining attorney agree that the English translation of registrant’s mark is “the observer” while that of applicant’s mark is “the observer of Utah” or “the Utah observer.” We find the respective meanings of these marks to be highly similar, inasmuch as applicant’s “the Utah observer” essentially connotes an observer of a specific region, i.e., Utah whereas registrant’s “the observer” connotes an observer without any limitation as to subject matter. In sum, we conclude that applicant's mark and the registered mark are substantially similar in terms of sound, appearance, and meaning, 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. 77933058 For the reasons discussed above in our consideration of the similarity of registrant’s mark with the mark in application Serial No. 77932193, we find that registrant’s mark is also highly similar to the mark, displayed below, in application Serial No. 77933058. Ser. Nos.77932193; 77933056; and 77933058 12 We further find that the slight stylization of the lettering in the terms EL OBSERVADOR DE UTAH and the mere addition of the stylized letter “O” inside a simple square carrier design are insufficient to create a commercial impression that is separate and distinct from that of registrant’s mark. The stylized letters in applicant’s mark are presented in a plain block lettering that is not particularly distinctive. The addition of the letter “O” simply serves to reinforce the term OBSERVADOR which is the most distinctive portion of applicant’s mark. The simple square design surrounding the letter “O” is neither prominent in size nor stylization such that it creates a distinct commercial impression. As discussed above, consumers will refer to applicant’s goods and services by the word portion of its mark, not the simple design.See In re Appetito Provisions Co., supra. In short, even with the addition of the letter “O,” square 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. Application Serial No. 77933056 For the reasons discussed above in our consideration of the similarity of registrant’s mark with the marks in application Serial Nos. 77932193 and 77932058, we find that Ser. Nos.77932193; 77933056; and 77933058 13 registrant’s mark is also highly similar to the mark, displayed below, in application Serial No. 77933056. We further find that the letter “O,” while visually prominent in applicant’s mark, serves to reinforce the distinctive term OBSERVADOR. The design in applicant’s mark, while larger and thus more visually prominent, nonetheless remains a simple square carrier that is neither distinctive in shape nor likely to be utilized by consumers to refer to or request applicant’s goods or services. Id. Similarly, the repetition of the geographically descriptive and disclaimed term UTAH adds little to the commercial impression of applicant’s mark. Thus, the distinctive portion of applicant’s mark remains the wording EL OBSERVADOR which, as discussed above, the identical to the wording in registrant’s mark. In short, even with the repetition of the term UTAH, and the larger square design Ser. Nos.77932193; 77933056; and 77933058 14 and stylized letter “O,” the similarities between applicant’s mark and registrant’s mark in appearance, sound, meaning and commercial impression far outweigh the differences. Strength of Mark in the Cited Registration Applicant argues that “the term ‘observer’ means one who observes or reports and that the term ‘observer’ is a term of art in the newspaper industry.”6 Applicant further argues that “the term ‘observer’ is not distinct in connection with newspapers, but by itself is weak.”7In support of its position, applicant made of record, inter alia, copies of 10 third-party registrations of OBSERVER- formative marks, the following examples of which are illustrative: Registration No. 2674218 for the mark THE CHARLOTTE OBSERVER (Section 2(f)) for “newspapers for general circulation;” Registration No. 3571003 for the mark THE HUNTERDON OBSERVER (HUNTERDON disclaimed) for “newspapers;” Registration No. 2847371 for the mark OBSERVER for “newspapers;” and 6 Applicant’s brief, p. 9. 7Id. at 11. In addition, applicant presents additional arguments regarding the distinctiveness of the design elements in the marks at issue which are addressed in the above discussion of the similarity of the marks. Ser. Nos.77932193; 77933056; and 77933058 15 Registration No. 3059658 for the mark THE BUSINESS OBSERVER (BUSINESS disclaimed) for “general feature section column of a newspaper for general circulation.” Applicant’s evidence of third-party registrations is entitled to limited probative value. Registrations are not evidence of use of the marks shown therein; thus, they are not proof that consumers are familiar with such marks so as to be accustomed to the existence of the same or similar marks in the marketplace. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1407, 177 USPQ 268 (CCPA 1973); and Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). However, these registrations, similar to a dictionary definition, may be used to demonstrate that a particular term has some significance in an industry. In this case, the third-party registrationevidence, consisting of 10 third-party registrations,tends to indicate that OBSERVER has a significance in the field of newspapers. However, this evidence falls short of establishing that the term has a specific meaning in this field such that consumers would look to other elements to determine source. In addition, and more importantly, all of the third- party registrations made of record include the term Ser. Nos.77932193; 77933056; and 77933058 16 OBSERVER, but none include the term OBSERVADOR. While the record supports a finding that OBSERVADOR is the Spanish equivalent of OBSERVER and shares a common meaning, OBSERVADOR nonetheless is visually less similar in appearance and sound to OBSERVER. Thus, the marks in the third-party registrations are less similar to the marks in the both the cited registration and involved applications than those marks are to each other. It further is settled that while third-party registrations may be used to demonstrate that a term may be weak in a particular field, the existence of such registrations “cannot justify the registration of another confusingly similar mark.”See Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). Even suggestive or weak marks are entitled to protection from the use of a very similar mark for legally identical goods and closely related services. if the word CORAZON, and its English translation, was considered to be highly suggestive of jewelry, it nonetheless is entitled to protection from the use of a very similar mark on jewelry products. “[E]ven weak marks are entitled to protection against registration of similar marks, especially identical ones, for related goods and services.” Ser. Nos.77932193; 77933056; and 77933058 17 See In re Chica Inc., 84 USPQ2d 1845, 1850 (TTAB 2007), quoting In re Colonial Stores, 216 USPQ 793, 795 (TTAB 1982).Finally, we note that none of the marks in the third- party registrations are as similar to the registered mark EL OBSERVADOR and design as the marks in the three applications at issue herein.As a result, this factor is neutral in our likelihood of confusion determination. 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 legal identity of the goods and close relationship between the services, the presumption that applicant’s trade channels encompass those of registrant, and the similarities between the marks, all 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 & Ser. Nos.77932193; 77933056; and 77933058 18 Co. v. Herbert J. Meyer Industries, Inc.,190 USPQ 308 (TTAB 1976). Decision: The refusals of registration are affirmed in all three cases.