Dori Media International, GmbH

Trademark Trial and Appeal BoardOct 17, 2011

No. 77872541 (T.T.A.B. Oct. 17, 2011)

Mailed: October 17, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Dori Media International, GmbH ________ Serial No. 77872541 _______ Dennis L. Wilson of Keats McFarland & Wilson LLP for Dori Media International, GmbH. David H. Stine, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _______ Before Bucher, Taylor and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Dori Media International, GmbH (“applicant”) filed an intent-to-use application for the mark UMAN TAKE CONTROL! and design, shown below for services ultimately identified as follows: Telecommunications services, namely, transmission of webcasts, podcasts, audio, video, movies and/or multimedia THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 77872541 2 content; wireless electronic transmission of voice signals, data, images, games and information; telecommunication services, namely, electronic transmission of streamed and downloadable audio and video files via computer and other communications networks, in Class 38. The examining attorney refused registration 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 the listed services so resembles the registered marks TAKE CONTROL, listed below, in standard character form, as to be likely to cause confusion. The registrations are owned by different registrants. 1. Registration No. 3183123 for “telecommunication services, namely, wireless voice and data transmission,” in Class 38;1 and 2. Registration No. 3047740 for “providing information on computer game and video game hardware and software, film, television, comics, animation and sports via a global computer network; entertainment services, namely, providing online interactive games via a global computer network,” in Class 41.2 1 Issued December 12, 2006. 2 Issued January 24, 2006. Serial No. 77872541 3 As a preliminary matter, the examining attorney, in his brief, noted that applicant had filed an application to register the mark UMAN for the same services identified in the application at issue. Applicant lodged an objection to the reference to the UMAN application as being untimely.3 Trademark Rule 2.142(d) reads as follows: The record in the application should be complete prior to the filing of an appeal. The Trademark Trial and Appeal Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed. The reference to applicant’s UMAN application is, in essence, the submission of additional evidence filed with the brief and, therefore, it is untimely. Applicant’s objection is sustained and we have not considered the UMAN application or the examining attorney’s arguments regarding the mark in that application. Also, because the marks in the cited registration are the same and, as discussed more fully below, because the services in Registration No. 3183123 are in part identical to the services listed in the application, we confine the remainder of our analysis of likelihood of confusion to Registration No. 3183123. If confusion is likely between the marks and services in the application and Registration 3 Applicant’s Reply Brief, p. 4. Serial No. 77872541 4 No. 3183123, there is no need for us to consider the likelihood of confusion with the mark and services in Registration No. 3047740, while if there is no likelihood of confusion between applicant’s mark and the mark and services in Registration No. 3183123, then there would be no likelihood of confusion with the mark and services in Registration No. 3047740 because those services are further removed from the services in the application than the services in Registration No. 3183123. Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors 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); 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 between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Serial No. 77872541 5 A. The similarity or dissimilarity and nature of the services, channels of trade and classes of consumers. Applicant is seeking to register its mark for, inter alia, wireless electronic transmission of voice signals, data, images, games and information. Registration No. 3183123 is registered for “wireless voice and data transmission.” Accordingly, the services are in part identical. Because the services described in the application and Registration No. 3183123 are in part identical, we must presume that the channels of trade and classes of purchasers are the same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); 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”). Serial No. 77872541 6 B. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We now turn to the du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we are mindful that where, as here, the services are in part identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Real Estate One, Inc. v. Real Estate 100 Enterprises Corporation, 212 USPQ 957, 959 (TTAB 1981); ECI Division of E-Systems, Inc. v. Environmental Communications Incorporated, 207 USPQ 443, 449 (TTAB 1980). Moreover, the test 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 Serial No. 77872541 7 terms of overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1835, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). In making this determination, we must consider the recollection of the average purchaser who normally retains only a general, rather than a specific, impression of the marks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). The marks are similar to the extent that they share the term “Take Control,” the registrant’s entire mark. However, as applicant correctly notes, the similarity or dissimilarity of the marks is determined based on the marks in their entireties. The analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. V. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, Serial No. 77872541 8 it must be considered as a whole in determining likelihood of confusion”). In this regard, the dominant portion of applicant’s mark is the word UMAN and the design of the hand holding the human figure is also a significant and distinctive element of the mark. However, the term “Take Control” cannot be ignored just because it is not the dominant part of applicant’s mark. As indicated above, applicant’s mark encompasses the registrant’s entire mark. “Take Control” is an arbitrary term applied to wireless communication services because it neither describes nor suggests the function, quality or characteristics of the services. Consumers may perceive the term “Take Control” in applicant’s mark to be an advertising tagline and associate the sources of the identical services through the use of that term. For example, the term “Take Control” means and engenders the commercial impression that the viewer should exercise authority over his/her wireless communication in the same way that Nike exhorts consumers to JUST DO IT (i.e., exercise). In such circumstances, likelihood of confusion has been found where the entirety of one mark is incorporated within another. See The Wella Corporation v. California Concept Corporation, 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (“When one incorporates the entire Serial No. 77872541 9 arbitrary mark of another into a composite mark, inclusion in the composite mark of a significant, nonsuggestive element will not necessarily preclude a likelihood of confusion”). See also Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s mark BENGAL LANCER for club soda, quinine water and ginger ale is likely to cause confusion with BENGAL for gin); Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155, 156 (TTAB 1982) (applicant’s mark EBONY DRUM for hairdressing and conditioner is likely to cause confusion with EBONY for cosmetics); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (applicant’s mark HEAD START COSVETIC for vitamins for hair conditioners and shampoo is likely to cause confusion with HEAD START for men’s hair lotion and after-shaving lotion); Helga, Inc. v. Helga Howie, Inc., 182 USPQ 629 (TTAB 1974) (applicant’s mark HELGA HOWIE for clothing is likely to cause confusion with opposer’s mark HELGA for clothing); In re Hepperle, 175 USPQ 512 (TTAB 1972) (applicant’s mark ACAPULCO GOLD for suntan lotion is likely to cause confusion with ACAPULCO for lipstick and powder). In view of the foregoing, we find that applicant’s mark UMAN TAKE CONTROL! and design is similar to the mark Serial No. 77872541 10 TAKE CONTROL in the cited registration in terms of appearance, sound, meaning and commercial impression. C. Balancing the factors. The du Pont factors require to us to consider the thirteen factors for which evidence has been made of record in likelihood of confusion cases. In view of the facts that the marks are similar, the services are in part identical and the presumption that the services may move in the same channels of trade and are available to the same classes of consumers, we find that applicant’s mark UMAN TAKE CONTROL! and design for the services listed in the application, specifically wireless electronic transmission of voice signals, data, images, games and information, is likely to cause confusion with the mark TAKE CONTROL for “telecommunication services, namely, wireless voice and data transmission.” Decision: The refusal to register is affirmed.