DN Leadership, Inc.

Trademark Trial and Appeal Board

Jan 25, 2022

88942112 (T.T.A.B. Jan. 25, 2022)

Mailed: January 25, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ---- In re DN Leadership, Inc. _____ Serial No. 88942112 _____ Matthew A. Williams and Julie Laemmle Watts of Wyatt, Tarrant & Combs, LLP, for DN Leadership, Inc. Kyle D. Simcox, Trademark Examining Attorney, Law Office 128, Travis Wheatley, Managing Attorney. _____ Before Shaw, Adlin and Pologeorgis, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Applicant DN Leadership, Inc. seeks a Principal Register registration for the standard character mark HOW LEADERS LEAD WITH DAVID NOVAK for: entertainment services, namely, providing podcasts in the field of leadership; entertainment services, namely, providing online, non-downloadable videos in the field of leadership; leadership development training for business persons and individuals; leadership development training, namely, professional development training services in the fields of business management, leadership development, leadership readiness, decision-making, teamwork, motivation and communication, and distribution of educational materials in connection therewith; providing educational presentations in the field of leadership development; leadership development training, namely, providing professional development training services in the field of leadership and executive development through This Opinion is Not a Precedent of the TTAB Serial No. 88942112 2 online, non-downloadable blogs and online, nondownloadable media publications in the nature of blogs, newsletters, assessments, and online, non- downloadable videos; leadership development training services in the field of executive training; educational training services, namely, conducting business education programs to employees and executives, in International Class 41.1 The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the previously registered mark LEADERS LEAD, in standard characters, for: workshops and seminars in the field of professional and business development; arranging and conducting educational conferences; arranging professional workshop and training courses; business training in the field of enterpreneurial development; conducting workshops and seminars in personal awareness; conducting workshops and seminars in self awareness; conducting workshops and seminars in professional and business development; education services, namely, providing non-downloadable webinars in the field of professional and business development; educational and entertainment services, namely, providing motivational and educational speakers in the field of self- and personal improvement; educational services, namely, conducting classes, seminars, conferences, workshops, retreats, camps and field trips in the field of professional and business development and distribution of training material in connection therewith; educational services, namely, conducting seminars, lectures, teleseminars, teleclasses, and workshops in personal awareness; educational services, namely, developing, arranging, and conducting educational conferences and programs and providing courses of instruction in the field of professional and business development; membership club services, namely, providing 1 Application Serial No. 88942112, filed June 1, 2020 under Section 1(b) of the Trademark Act, based on an alleged bona fide intent to use the mark in commerce. According to the application, “[t]he name(s), portrait(s), and/or signature(s) shown in the mark identifies ‘David Novak’, whose consent(s) to register is made of record.” Serial No. 88942112 3 training to members in the field of professional, personal, and business development; money coaching services; peer to peer coaching services in the field of professional and business development; personal coaching services in the field of professional and business development; professional coaching services in the field of business development; providing group coaching and in-person learning forums in the field of leadership development; providing group coaching in the field of professional and business development; providing on-line publications in the nature of e-books in the field of professional and business development; providing on-line training webinars and seminars in the field of professional and business development, in International Class 41,2 that it is likely to cause confusion.3 After the refusal became final, Applicant appealed; the appeal is fully briefed. 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 analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper 2 Registration No. 5787252, issued June 25, 2019. 3 The Examining Attorney effectively withdrew the refusal based on Registration No. 5833220, because that registration was cancelled. 8 TTABVUE 4-5. Serial No. 88942112 4 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 [or services] and differences in the marks.”). A. The Services, Channels of Trade and Classes of Consumers The services are legally identical in-part because Applicant and Registrant both provide leadership, professional and business development training. More specifically: (1) Applicant’s “leadership development training for business persons and individuals” and “leadership development training, namely, professional development training services in the fields of business management, leadership development … and distribution of educational materials in connection therewith” are broadly identified and encompass Registrant’s “providing group coaching and in- person learning forums in the field of leadership development;” and (2) Applicant’s “educational training services, namely, conducting business education programs to employees and executives” is broadly identified and encompasses Registrant’s “workshops and seminars in the field of professional and business development,” as well as Registrant’s other “professional and business development” services.4 See S.W. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (where services are broadly identified, they are deemed to encompass all of the services of the nature and type described); In re Hughes Furniture Indus., Inc., 114 USPQ2d 4 In addition, the Examining Attorney introduced evidence showing that the services are closely related. September 12, 2020 Office Action TSDR 9-24; July 20, 2021 Office Action TSDR 7-41. Citations to the application file are to USPTO’s Trademark Status & Document Retrieval (“TSDR”) online database, by page number, in the downloadable .pdf format. Serial No. 88942112 5 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture’”). This factor therefore not only weighs heavily in favor of finding a likelihood of confusion, but it also reduces the degree of similarity between the marks necessary to find a likelihood of confusion. In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). Furthermore, because the services are in-part legally identical, we presume that the channels of trade and classes of purchasers for Applicant’s and Registrant’s legally identical services also overlap. See In re Viterra, 101 USPQ2d at 1908 (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). These DuPont factors therefore also weigh heavily in favor of finding a likelihood of confusion. B. The Marks The marks, LEADERS LEAD and HOW LEADERS LEAD WITH DAVID NOVAK are more similar than dissimilar “in their entireties as to appearance, sound, Serial No. 88942112 6 connotation and commercial impression.” 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, they could very well be perceived as different versions of the same mark (LEADERS LEAD). As the Examining Attorney points out, “the issue is not whether the respective marks themselves are likely to be confused with one another. Rather, the question is whether there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon.” 6 TTABVUE 10.5 Stated differently, the question is “‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). Here, while Applicant is of course correct that the words HOW and WITH DAVID NOVAK result in Applicant’s and Registrant’s marks looking and sounding somewhat different, at the same time the marks are sufficiently similar that some consumers would be likely to assume that Applicant and Registrant are somehow connected. Consumer confusion regarding the source of the services offered under these marks is likely in part because Applicant and Registrant use LEADERS LEAD 5 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. Serial No. 88942112 7 in marks for legally identical leadership development services, and professional and business development services. Indeed, the marks look and sound in-part identical because they both contain LEADERS LEAD. Moreover, while the words Applicant has added to LEADERS LEAD result in some visual and aural differences between Applicant’s and Registrant’s marks, these differences and the additional words in Applicant’s mark change neither the meaning conveyed by, nor the commercial impression created by, Registrant’s mark. Specifically, the leading term HOW in Applicant’s mark could be perceived as identifying a new course/workshop/seminar offered by Registrant, one which focuses specifically on leadership methods or styles, i.e. “how leaders lead.” As Applicant puts it, the term “HOW” in its mark “answers questions of leadership by connoting the unique manner, degree, focus, style, and viewpoint of leadership as told by Applicant’s founder and former Fortune 500 Chief Executive Officer, David Novak, and other industry leaders who appear on his podcast and educational programs.” 7 TTABVUE 3. As a tagline on Applicant’s promotional materials puts it, “Everyone Has Their Style.” March 10, 2021 Office Action response TSDR 19. Relatedly, the phrase WITH DAVID NOVAK in Applicant’s mark merely conveys that Applicant’s course/workshop/seminar will be conducted by Mr. Novak. In other words, Applicant’s mark may convey to some consumers, and particularly those familiar with Registrant’s mark, that Mr. Novak is the “previously anonymous” source of Registrant’s LEADERS LEAD services. See e.g. In re Fiesta Palms LLC, 85 USPQ2d 1360, 1367 (TTAB 2007) (affirming refusal to register CLUB PALMS MVP Serial No. 88942112 8 based on prior registration of MVP, finding consumers “likely to believe that the CLUB PALMS MVP casino services is simply the now identified source of the previously anonymous MVP casino services”); In re Chica Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007) (affirming refusal to register CORAZON BY CHICA & Design based on a registration of CORAZON in stylized format, stating “to many consumers, applicant’s mark for the identical word ‘Corazon’ followed by the phrase ‘BY CHICA’ will simply be viewed as the identification of the previously anonymous source of the goods sold under the mark CORAZON”); In re Pierce Foods Corp., 230 USPQ 307, 309 (TTAB 1986) (in dicta, stating that even if Applicant’s proposed amendment to its drawing was accepted, “Applicant’s institutional purchasers, aware of registrant’s CHICKEN BAKE coating mix, may well believe that applicant’s PIERCE CHICK’N BAKE pre-seasoned chicken is a product produced under license from registrant or otherwise sponsored or produced by registrant.”); In re Apparel Ventures, Inc. 229 USPQ 225, 226 (TTAB 1986) (“Applicant has chosen as its mark the same word already registered by registrant and simply added ‘by sassafras’ to it. The words ‘by sassafras’ indicate to prospective purchasers that ‘sassafras’ is the name of the entity which is the source of the ‘SPARKS’ brand clothing. Prospective purchasers do not necessarily know or care which business calls itself ‘sassafras,’ but they would assume that when ‘SPARKS’ appears on two similar products they both come from the same source.”). When we consider Applicant’s mark in its entirety, we find that its essence is the phrase LEADERS LEAD, which conveys what Applicant’s training and education Serial No. 88942112 9 services are about-leadership. The HOW that precedes LEADERS LEAD in Applicant’s mark, and the WITH DAVID NOVAK that follows it, merely specify details about Applicant’s leadership-related training and educational services, and as such are subsidiary to LEADERS LEAD, which is identical to Registrant’s mark. Here, as in Fiesta Palms, Chica, Pierce Foods and Apparel Ventures, the addition of the word HOW and the phrase WITH DAVID NOVAK will not prevent the confusion likely to arise from Applicant’s use of a mark including LEADERS LEAD for services legally identical to those Registrant offers under LEADERS LEAD. See also In re Riddle 225 USPQ 630 (TTAB 1985) (affirming refusal to register RICHARD PETTY’S ACCU TUNE & Design based on registration for ACCU-TUNE); In re Christian Dior, 225 USPQ at 533 (LE CACHET DE DIOR for men’s dress shirts likely to be confused with CACHET for toilet soap, dresses and cologne); Key West Fragrance & Cosmetic Factory, Inc. v. The Mennen Co., 216 USPQ 168 (TTAB 1982) (finding likelihood of confusion between SKIN SAVERS for face and throat lotion and MENNEN SKIN SAVER for cosmetic and toilet preparations, namely, hand and body lotion); In re Champion Int’l Corp., 196 USPQ 48 (TTAB 1977) (affirming refusal to register CHECK MATE based on registration of HAMMERMILL MICR CHECK-MATE); In re C.F. Hathaway, 190 USPQ 343 (TTAB 1976) (affirming refusal to register HATHAWAY GOLF CLASSIC based on registration of GOLF CLASSIC). This factor also weighs in favor of finding a likelihood of confusion. C. Purchaser Sophistication and Care Applicant argues in its Appeal Brief, without any evidentiary support, that “[e]xecutives are highly educated and savvy business people, and other business Serial No. 88942112 10 professionals, who are also target consumers, likely are highly educated or savvy business people as well and, therefore, are granted a higher standard of consumer sophistication when it comes to business-related services such as those offered by Applicant.” 4 TTABVUE 13. This mere argument is unpersuasive. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (“Attorney argument is no substitute for evidence.”) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)); see also In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2006 (TTAB 2014) (finding that there was no proof to support the statements in the record by counsel). It is perhaps also inconsistent with the services at issue, which as identified are focused on professionals and executives who require training and education, and thus may not already be “highly educated or savvy.” Professionals and executives who are “highly educated or savvy business people” may not require the types of training and education Applicant offers. In any event, we accept that Applicant’s services are unlikely to be purchased on impulse, and we infer from Applicant’s identification that most of the services are not inexpensive. Thus, we accept that this factor weighs slightly in Applicant’s favor. II. Conclusion The services are legally identical, the channels of trade and classes of consumers are presumed to overlap and the marks are similar. These factors outweigh any consumer sophistication or care in purchasing. 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 Serial No. 88942112 11 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). Confusion is likely. Decision: The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act is affirmed.