E Century LLC

Trademark Trial and Appeal BoardSep 30, 2017

No. 86888917 (T.T.A.B. Sep. 30, 2017)

This Opinion is Not a Precedent of the TTAB Mailed: September 30, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re E Century LLC _____ Serial No. 86888917 _____ Daniel M. Cislo and Kristin B. Kosinski of Cislo & Thomas LLP for E Century LLC. Rebecca Gilbert, Trademark Examining Attorney, Law Office 103, Michael Hamilton, Managing Attorney. _____ Before Quinn, Kuczma, and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background E Century LLC (“Applicant”) seeks registration on the Principal Register of the mark shown below for “sport utility belts, namely specialty belt holsters specially Serial No. 86888917 - 2 - adapted for carrying cell phones while participating in sports” in International Class 9.1 The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark 10TERRA in standard characters for “Carrying cases for mobile computers; Protective covers and cases for cell phones, laptops and portable media players; Protective covers and cases for tablet computers” in International Class 9.2 After the Examining Attorney made the refusal final, Applicant appealed and requested reconsideration. On remand, the Examining Attorney denied the request. This appeal then resumed. We affirm the refusal. II. Likelihood of Confusion The determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, hereinafter referred to as “du Pont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between 1 Application Serial No. 86888917 was filed January 27, 2016, based on use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). 2 Registration No. 4375130 issued July 30, 2013. Serial No. 86888917 - 3 - the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); 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.”). A. Number and Nature of Similar Marks for Similar Goods Before we turn to the comparison of marks, we address Applicant’s argument in its brief that the cited mark is weak, based on the following third-party registrations:3 • TERRA PEAK (Reg. No. 5155414) for goods that include “All purpose sport bags” • [wording in the mark reads “TERRA MOUSE.. THE WORLD IS YOUR HOUSE] (Reg. No. 4526139) for goods that include “Sports bags” • TERRA LINDA (Reg. No. 3407055) for a variety of printed items in International Class 16 • TERRA MUSE (Reg. No. 5156111) for goods that include “Cloth bags for storage” and “Sacks or bags for the transportation or storage of materials in bulk” 3 March 14, 2017 Request for Reconsideration at 24-31. We have not considered the TESS list, to which the Examining Attorney has objected. See In re 1st USA Realty Professionals, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007). TESS listings do not suffice to make the listed registrations or applications part of the record. See Edom Labs Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012). Serial No. 86888917 - 4 - The Federal Circuit has held that evidence of the extensive registration and use of a term by others for similar goods can show the term’s weakness. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Third-party registrations and uses may “show that the common term [between two marks] has an accepted meaning in a given field and that marks containing the term have been registered and used for related goods because the remaining portions of the mark may be sufficient to distinguish the marks as a whole from one another.” Promark v. GFA Brands, Inc., 114 USPQ2d 1232, 1244 (TTAB 2015); see also In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (“Third-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry”). As an initial matter, we note that in this case, Applicant offered no third-party use evidence, instead relying only on registration evidence, to support weakness. Thus, Applicant’s evidence does not demonstrate actual consumer exposure to other marks containing or consisting of “terra,” because in this regard, “[t]he probative value of third-party trademarks depends entirely upon their usage.” See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). Turning to the third-party registration evidence, we find it lacking to demonstrate the conceptual weakness of “terra” in the relevant industry. We have no basis in the record to find the printed items and bags Serial No. 86888917 - 5 - – or any other goods in the third-party registrations – sufficiently similar to the goods at issue, so as to bear on the strength or weakness of TERRA in the field of cell phone cases or other goods in the cited registration. See In re i.am.symbolic llc, 866 USPQ2d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (the applicant “has neither introduced evidence, nor provided adequate explanation to support a determination that the existence of I AM marks for goods in other classes … support a finding that registrants’ marks are weak with respect to the goods identified in their registrations”). We therefore find the sixth du Pont factor neutral. B. Similarity of the Marks Bearing in mind our finding regarding the strength of the cited mark, we turn next to the first du Pont factor, comparison of the applied-for and cited marks, we consider them “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imports, 73 USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567). The test assesses not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the goods offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Labs, 102 USPQ2d at 1551. Comparing to 10TERRA, we must disregard Applicant’s arguments based on the color and script of its mark or the alleged “hard, angular Serial No. 86888917 - 6 - edges” of Registrant’s,4 as the standard character mark in the cited registration could be presented in any color, font style or size, including in the same color and script used in Applicant’s mark. See In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); see also 37 C.F.R. § 2.52(a). Thus, the difference between the marks essentially consists of the number “10” preceding TERRA in the registered mark. Although this single-syllable, two-digit number creates some variation in the appearance and sound of the marks, we find that the word TERRA, which means “earth; land,”5 stands out more than 10 in the cited mark. See Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000) (“Once all the features of the mark are considered, . . . it is not improper to state that, for rational reasons, more or less weight has been given to a particular feature of the mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties.”). Although Applicant correctly notes that the number 10 portion of the mark comes first, there is no absolute rule that the first component dominates. We instead find that TERRA dominates the visual appearance and sound of the registered mark. Given the nature of the word and its meaning, it plays a more significant role than the number in the commercial impression of the mark. 4 7 TTABVUE 5-6 (Applicant’s Brief). 5 We take judicial notice of the Dictionary.com entry for “terra,” based on the Random House Dictionary. See University of Norte Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed Cir. 1983). The Board may take judicial notice of online dictionary definitions that exist in print format. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). Serial No. 86888917 - 7 - Overall, considering the marks in their entireties, we find the connotations and commercial impressions to be close because of the shared term “terra,” which also creates a visual resemblance between the two marks and makes them sound similar. See Viterra, 101 USPQ2d at 1911 (noting the significance of how similar the marks sound, used by consumers to “call for” the goods). We do not agree with Applicant’s contention that its mark conjures up “a sense of a utility belt,”6 as we find nothing in the visual appearance or meaning of “terra” that calls to mind a sport utility belt. Applicant also argues that the “10” component of the registered mark might signify to consumers “the strength or size” of the goods.7 Even if we accept Applicant’s characterization, we find that consumers familiar with Registrant’s 10TERRA mark likely would view Applicant’s mark as indicating Registrant as the source while also denoting a smaller or lower strength version of goods. Given the overall resemblance in sound, appearance, connotation and commercial impression, we find the two marks similar, weighing in favor of likely confusion. C. The Goods, Trade Channels, and Classes of Consumers As to the goods, we must determine whether their degree of relatedness rises to such a level that consumers would mistakenly believe the parties’ goods emanate from the same source. In making this analysis of the second du Pont factor, we look to the identifications of goods in the pleaded and challenged registrations. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 6 7 TTABVUE 6 (Applicant’s Brief). 7 7 TTABVUE 7 (Applicant’s Brief). Serial No. 86888917 - 8 - 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Registrant’s broadly identified cases for cell phones would encompass all types of such goods. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). The record includes a definition of “case” as “[a] container designed to hold or protect something.”8 Applicant has identified sport utility belts, namely, specialty belt holsters adapted for carrying cell phones while participating in sports. The Examining Attorney contends that sport utility belts featuring holsters for cell phones constitute a type of cell phone case, and therefore fall within the scope of the cited registration. We take judicial notice of the definition of “holster” as “a case for carrying a usually small item on the person.”9 To the extent Applicant’s goods may not directly overlap with Registrant’s, the Examining Attorney also argues they are highly related. In support thereof, the Examining Attorney submitted 20 third-party use-based registrations that identify both Applicant’s and Registrant’s goods under the same mark.10 Examples include the following: • PILLO for “cellular telephones and cellular telephone accessories, namely, cases and holsters” (Reg. No. 4527146) • for goods that include “cell phone cases” and “specialty holster for carrying cellular phones” (Reg. No. 4587305) 8 Sept. 20, 2016 Office Action at 11. 9 Merriam-webster.com/dictionary/holster, entry for “holster.” See Univ. of Norte Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 10 Sept. 20, 2016 Office Action at 14-73. Serial No. 86888917 - 9 - • for goods that include “cell phone and tablet cases, cell phone holsters” (Reg. No. 4679702) • for goods that include “specialty holsters for carrying or attaching mobile telephones” and “carrying cases for mobile telephones” (Reg. No. 4773727) • GRIFFIN for goods including “Protective cases for portable electronic devices, namely, … smart phones,” “specialty holsters for carrying personal electronic devices, namely, smartphones,” and “mobile telephone accessories, namely, belt clips” (Reg. No. 4837702) • MAXBOOST ATOMIC for goods including “waterproof cases, waterproof pouches, protective cases, carrying cases, belt holsters, sleeves and covers for portable electronic devices, namely cell phones” (Reg. No. 4956900) • ELLENA for goods that include “Protective cases, carrying cases, belt holsters, sleeves and covers for portable electronic devices, namely cell phones” (Reg. No. 5014271) Applicant disputes that the goods overlap, emphasizing the sport utility belt aspect of its goods, and taking the position that the cases identified in the registration differ because they are only protective cases. Also, Applicant notes that the record lacks evidence of third-party marks used or registered for both cell phone cases and sport utility belts. We find Applicant’s and Registrant’s goods at least related, if not overlapping. Registrant’s identification of “cases for cell phones” is not restricted, and therefore includes all types of cell phone cases. In the broadest sense of the term “cases for cell phones,” they encompass belt holsters for cell phones, which constitute a type of case that is part of a belt. Even if we accepted Applicant’s contention that the goods do not directly overlap, Applicant’s belt holsters certainly are a type of cell phone holster, and the third-party registration evidence suggests that cases for cell phones and cell Serial No. 86888917 - 10 - phone holsters commonly emanate from the same source. Third-party registrations based on use in commerce that cover the same types of goods suggest that the listed goods and services may emanate from the same source. In re Aquamar, Inc., 115 USPQ26 1122, 1126 n.5 (TTAB 2015); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Turning to the trade channels, we presume, as we must, that Applicant’s and Registrant’s goods are available to all potential classes of ordinary consumers and move in all the normal channels of trade. See i.am.symbolic, 123 USPQ2d at 1751 (“In the absence of meaningful limitations in either the application or the cited registrations, the Board properly presumed that the goods travel through all usual channels of trade and are offered to all normal potential purchasers”). Because Applicant’s cell phone holsters are a type of cell phone case, we find that the goods would travel through overlapping channels of trade to at least some of the same purchasers, considerations under the third du Pont factor. See Am. Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion). While the goods in the application may travel in trade channels for sports equipment, the cell phone cases in the cited registration are not limited in their trade channels. Thus, we cannot give credence to Applicant’s unsupported arguments that Registrant’s trade channels would be limited to “stores that sell electronics, electronic Serial No. 86888917 - 11 - accessories, and travel accessories.”11 Registrant’s cell phone cases presumably move in channels of trade that include those for cases used while participating in sports. These factors weigh in favor of likely confusion. D. Actual Confusion Applicant argues that the lack of actual confusion evidence weighs against likely confusion. The seventh and eighth du Pont factors concern “[t]he nature and extent of any actual confusion,” and “[t]he length of time during and conditions under which there has been concurrent use without evidence of actual confusion”). du Pont, 177 USPQ at 567. While evidence of actual confusion can be persuasive, “[t]he lack of evidence of actual confusion carries little weight, especially in an ex parte context.” Majestic Distilling Co., 65 USPQ2d at 1205 (internal citations omitted) (“uncorroborated statements of no known instances of actual confusion are of little evidentiary value”). Moreover, lack of actual confusion does not equate to no likelihood of confusion. See Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991). We find these factors neutral. 11 11 TTABVUE 6 (Applicant’s Reply Brief). Serial No. 86888917 - 12 - Conclusion The overall similarity of the marks for overlapping and related goods that move in the same channels of trade to the same classes of customers renders confusion likely. Decision: The refusal to register Applicant’s mark is affirmed.