Eagle Investment SICAV plc, acting on behalf of ITT Fund

Trademark Trial and Appeal BoardJul 12, 2018

No. 79195994 (T.T.A.B. Jul. 12, 2018)

This Opinion is Not a Precedent of the TTAB Mailed: July 12, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Eagle Investment SICAV plc, acting on behalf of ITT Fund _____ Serial No. 79195994 _____ Robert E. Bushnell of R. E. Bushnell & Law Firm, for Eagle Investment SICAV p.c, acting on behalf of ITT Fund. Jillian R. Cantor, Trademark Examining Attorney, Law Office 117, Mike Baird, Managing Attorney. _____ Before Cataldo, Wellington and Greenbaum, Administrative Trademark Judges. Opinion by Greenbaum, Administrative Trademark Judge: Eagle Investment SICAV p.c, acting on behalf of ITT Fund (“Applicant”) seeks registration on the Principal Register of the mark APOLLO GAMES (in standard characters, GAMES disclaimed) for Entertainment, sporting and cultural activities and services, namely Operating lotteries; Organization of lotteries; Amusement arcade services; Provision of casino facilities; Organizing and operating lottery and tombola services; Organizing and operating contests; Gaming services in the nature of casino gaming; Services, namely, operating winning and non-winning gaming machines; Operating winning and non-winning casino gaming Serial No. 79195994 - 2 - machines; providing and operating on-line games of chance; Services, namely, arranging of contests featuring prizes in casino gaming; Services namely gambling, operating lotteries, organizing and conducting lotteries, casino gaming services, providing casino facilities and casino gaming facilities, providing amusement arcade services, video arcade services, casino services, gaming at a casino, and gambling services, and providing games of chance at a casino; Entertainment services, namely, casino gaming; Services, namely, providing games of chance via the Internet; Services, namely, lotteries and casino gaming; Providing facilities featuring equipment for video arcade services, casino, gaming, lottery, gambling and games of chance services in International Class 41.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used on Applicant’s services, so resembles the previously registered standard character marks APOLLO THEATER, APOLLO LIVE, and APOLLO MUSIC CAFÉ,2 all for live performances featuring music, singing, drama, comedy, dance, and the spoken word, and APOLLO COMEDY CLUB3 for live comedy performances and shows, and all owned by one registrant, as to be likely to cause confusion, mistake, or deception. After the Examining Attorney made the refusal final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for 1 Application Serial No. 79195994 was filed on April 24, 2016 based upon a request for extension of protection filed under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141(f). 2 Registration Nos. 3395687 (registered March 11, 2008, renewed; THEATER disclaimed), 4384612 (registered August 13, 2013; LIVE disclaimed), and 4547859 (registered June 10, 2014; MUSIC CAFÉ disclaimed), respectively. 3 Registration No. 4964208 (registered May 24, 2016; COMEDY CLUB disclaimed). Serial No. 79195994 - 3 - reconsideration, the appeal was resumed. The case is fully briefed. We affirm the refusal to register. I. Applicable Law – Likelihood of Confusion When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out 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., 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 or services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (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.”). We discuss below these and other relevant factors. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant and of record” need be considered); see also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). Serial No. 79195994 - 4 - A. Similarity of the Marks We begin with the first du Pont factor, i.e., whether Applicant’s mark APOLLO GAMES and Registrant’s marks APOLLO THEATER, APOLLO LIVE, APOLLO MUSIC CAFÉ, and APOLLO COMEDY CLUB, all in standard characters, are similar or dissimilar when viewed “in their entireties as to appearance, sound, connotation and commercial impression.” In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting du Pont, 177 USPQ at 567). See also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks, but instead 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) (quotation omitted). Further, marks “‘must be considered … in light of the fallibility of memory ….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). “[S]imilarity is not a binary factor but is a matter of degree.” St. Helena Hosp., 113 USPQ2d at 1085 (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 Serial No. 79195994 - 5 - USPQ2d 1059, 1062 (Fed. Cir. 2003)). Here, the average customer includes members of the general public. Applicant argues that the Examining Attorney has dissected the marks and that she has not compared Applicant’s mark to any of the cited registered marks in their entireties. The Examining Attorney focuses on the visual and aural similarities between Applicant’s mark and each of the cited registered marks due to the shared term APOLLO, which she contends is the most distinctive portion, and therefore the strongest source identifying element, of each of the marks, combined with a term that is descriptive or generic of the identified entertainment services. We agree with the Examining Attorney’s assessment of the similarity of the marks. Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, our 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 Nat’l 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 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). On the other hand, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). For instance, as the Federal Serial No. 79195994 - 6 - Circuit has observed, “[t]hat a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark….” Nat’l Data, 224 USPQ at 751. We find Applicant’s mark APOLLO GAMES and each of Registrant’s marks, APOLLO THEATER, APOLLO LIVE, APOLLO MUSIC CAFÉ, and APOLLO COMEDY CLUB, to be highly similar in appearance, sound, connotation, and overall commercial impression. The structure of each mark is the same: the word APOLLO in the initial position, followed by words which would be perceived simply as indicating the type of entertainment services. In each instance, the terms following the lead term APOLLO have greatly reduced source-identifying capacities because they are descriptive, if not generic, of the type of entertainment service. For example, the word GAMES in Applicant’s mark is at least highly descriptive of the identified “games of chance” services. Likewise, the words THEATER and LIVE are generic of the identified services, which include “staging live performances,” the wording MUSIC CAFÉ is at least highly descriptive of the identified musical performances, and the wording COMEDY CLUB is generic for the identified comedy shows. Indeed, all of the trailing terms have been disclaimed, see In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997), leaving the identical common wording APOLLO with the most source-identifying significance in each mark. Nat’l Data, 224 USPQ at 752. On the other hand, there is no evidence that the shared term APOLLO is anything other than arbitrary with respect to any of the services identified in the Serial No. 79195994 - 7 - application or registrations.4 The prominence of the word APOLLO is further enhanced by its placement at the beginning of Applicant’s and Registrant’s marks. See Palm Bay Imps., 73 USPQ2d at 1692; Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). For these reasons, we find that APOLLO is the dominant term in each mark, and accordingly, it is entitled to more weight in our analysis. In coming to this conclusion, we do not discount the presence of the additional wording in each mark. However, for the reasons discussed above, we find that the term APOLLO in each mark is more likely to be remembered by consumers than the other elements of the marks. Finally, all of the marks are in standard characters and thus not limited to any particular depiction. The rights associated with a standard character mark reside in the wording and not in any particular display. In re RSI Sys. LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Trademark Manual of Examining Procedure (“TMEP”) § 1207.01(c)(iii) (Oct. 2017). We must consider Applicant’s and Registrant’s standard character marks “regardless of font style, size, or color,” Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011), including iterations emphasizing the shared lead term APOLLO. 4 During prosecution, Applicant argued that the term APOLLO is weak, justifying only a narrow scope of protection, but abandoned this argument in its brief. See In re E5 LLC, 103 USPQ2d 1578, 1579 n.2 (TTAB 2012) (during prosecution, applicant argued that the mark was unitary but did not maintain the argument in its appeal brief). Cf. In re Gibson Guitar Corp., 61 USPQ2d 1948, 1950 n.2 (TTAB 2001) (in its appeal brief, applicant did not pursue claim of inherent distinctiveness, and therefore Board did not consider the claim). In any event, Applicant did not introduce sufficient evidence of the asserted weakness of the term APOLLO during prosecution of the involved application. Serial No. 79195994 - 8 - In sum, we find the sound, appearance, meaning and overall commercial impression of Applicant’s mark APOLLO GAMES to be highly similar to each of Registrant’s marks APOLLO THEATER, APOLLO LIVE, APOLLO MUSIC CAFÉ, and APOLLO COMEDY CLUB. Viewing the marks in their entireties, we note in particular their structural similarity, where the word APOLLO modifies the trailing words GAMES, THEATER, LIVE, MUSIC CAFÉ, and COMEDY CLUB, all of which are descriptive or generic of entertainment services. The similarity in structure creates marks with highly similar connotations and commercial impressions. The trailing words in each mark simply create subcategories of entertainment services that point to a common source identified as APOLLO. This du Pont factor supports a finding of a likelihood of confusion. B. Similarity of the Services and Channels of Trade With regard to the services and channels of trade, we must make our determinations under these factors based on the services as they are identified in the application and registrations. See Dixie Rests., 41 USPQ2d at 1534; see also Stone Lion, 110 USPQ2d at 1161; Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). 1. Similarity of Services The second du Pont factor “considers whether the consuming public may perceive [the respective goods and services of the parties] as related enough to cause confusion about the source or origin of the goods and services.” St. Helena Hosp., 113 USPQ2d Serial No. 79195994 - 9 - at 1086 (quoting Hewlett-Packard, 62 USPQ2d at 1004). The services identified in the application include “casino gaming services” and other related services such as “providing casino gaming facilities,” while the services identified in the registrations for the marks APOLLO THEATER, APOLLO LIVE, and APOLLO MUSIC CAFÉ all include “live performances featuring music, singing, drama, comedy, dance, [and] the spoken word,” and the services identified in the registration for the mark APOLLO COMEDY CLUB comprise “live comedy performances and shows.” Although the services identified in the application are not identical to the services identified in the registrations, identity is not required to support a finding of likelihood of confusion. Coach Servs., 101 USPQ2d at 1722 (“[I]t is not necessary that the products [or services] of the parties be similar or even competitive to support a finding of likelihood of confusion.”) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000) (the goods and services need not be identical or even competitive to find a likelihood of confusion). Rather, “likelihood of confusion can be found ‘if the respective products [or services] are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.”’ Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven, 83 USPQ2d at 1724). The issue is whether there is a likelihood of confusion as to the source of the services, not whether purchasers would confuse the services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). In addition, under Serial No. 79195994 - 10 - this du Pont factor, the Examining Attorney need not prove, and we need not find, similarity as to each and every product listed in the description of services. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods in a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In this case, the Examining Attorney submitted a number of Internet web pages from third-party commercial websites demonstrating that a single entity is likely to provide or feature casino gaming services, such as those identified in the application, and entertainment services such as those identified in the registrations, under the same mark. In particular, Maryland Live, Mohegan Sun, Foxwoods, Hollywood Casino Charlestown, and Horseshoe Baltimore (owned by Caesars) offer casino services and live entertainment shows and performances under the same mark,5 and Pechanga, Borgata, Edgewater Casino, and The Casino at Dania Beach offer casino services as well as comedy shows under the same mark.6 See, e.g., In re C.H. Hanson Co., 115 USPQ2d 1351, 1355-56 (TTAB 2015); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). This evidence contradicts Applicant’s assertion that casinos provide casino services and live-entertainment performance services under different marks.7 Further, since the services are not the same, we are not 5 November 18, 2016 Office Action, TSDR 25-71. Citations to the TSDR database are to the downloadable .pdf format. 6 June 7, 2017 Final Office Action, TSDR 8-37. 7 4 TTABVUE 16. Serial No. 79195994 - 11 - surprised or troubled that, as Applicant asserts, “it also appears that these casinos provide such services separately, on different and readily distinguishable webpages.”8 Again, the identified services need not be identical to find a likelihood of confusion. Coach Servs., 101 USPQ2d at 1722. In any event, the separate web pages advertise the services under the same mark and being rendered by the same entity. The Examining Attorney also made of record a number of use-based, third-party registrations from the USPTO’s electronic database to show that it is common for a single entity to register the same mark for services that are the same as, or very similar to, those at issue.9 For example, Reg. No. 4627468 for DIAMOND JO identifies casinos and live performances and comedy shows, Reg. No. 4575355 for NORMANDIE CASINO identifies casinos and various live performances, Reg. No. 5178807 for PAHRUMP NUGGET HOTEL – CASINO identifies casinos, theater productions, live music concerts, and live variety and comedy shows, and Reg. No. 4688169 for GRATON RESORT & CASINO identifies casino services and live musical performances.10 While third-party registrations are not evidence that the marks shown therein are in commercial use, or that the public is familiar with them, such registrations that individually cover a number of different items and are based on use in commerce may 8 Id. 9 June 7, 2017 Final Office Action, TSDR 38-77. Contrary to Applicant’s assertions in its brief (4 TTABVUE 15-17), such evidence does not constitute inadmissible hearsay because they include URLs and access dates, and the Examining Attorney explained the relevance of the evidence. See Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2). See also In re Mueller Sports Medicine, Inc., 126 USPQ2d 1584, 1587 (TTAB 2018). 10 Id. at 41-52. Serial No. 79195994 - 12 - have some probative value to the extent that they serve to suggest that the listed services are of a type which may emanate from a single source. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); see also In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Applicant argues that it is a Czech entity that manufactures gaming machines, and Applicant’s arguments center on the purported dissimilarity of casino-style gaming machines and the manufacture thereof, and the entertainment services identified in the registrations. Applicant’s arguments are unavailing because the identification of services in the application does not include casino-style gaming machines or manufacturing of gaming machines. As we stated above, we are bound by the services as they are identified in the application. Stone Lion, 110 USPQ2d at 1634. Based upon the identifications of services in the application and registrations, and the ample evidence of record, we find that consumers would believe that the services identified in the application are closely related to the services identified in the registrations, and that they may emanate from a common source. 2. Channels of Trade Considering the channels of trade and classes of purchasers, because there are no limitations or restrictions as to trade channels or classes of purchasers in the identification of services in the application or cited registrations, we presume that the identified services are or would be marketed in all normal trade channels for such Serial No. 79195994 - 13 - services and to all normal classes of purchasers of such services. Stone Lion, 110 USPQ2d at 1161. See also Coach Servs., 101 USPQ2d at 1723 (absent limitation “goods are presumed to travel in all normal channels … for the relevant goods.”). The trade channels for the services identified in application and registrations would include casinos with performance venues. The relevant class of consumers for the identified services also is the same, i.e., those who are interested in gambling and attending live entertainment performances or comedy shows. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where the identification is unrestricted, “we must deem the goods to travel in all appropriate trade channels to all potential purchasers of such goods”); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). The relatedness evidence from the commercial websites listed above (e.g., Maryland Live, Mohegan Sun, Pechanga, and Borgata) confirms that casino and gaming services travel in the same channels of trade and are offered to the same classes of consumer as live entertainment such as live music and comedy shows. See Anderson, 101 USPQ2d at 1920. The similarities of the services and their channels of trade weigh heavily in favor of a finding of likelihood of confusion. C. Purchasing Conditions Finally, we address Applicant’s contentions concerning consumer sophistication. This argument concerns the fourth du Pont factor, the “conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” du Pont, 177 USPQ at 567. Applicant argues that Registrant is “a historic Serial No. 79195994 - 14 - performance venue in Harlem, New York,” and the services identified in the registrations “are site-, location-, and venue-dependent and unique; and additionally require a basic level of consumer sophistication in terms of planning, scheduling, ticket-purchasing, making appropriate travel arrangements in advance according to scheduling considerations, et. cetera.”11 Applicant appears to be arguing that the services identified in the registration would not be purchased on impulse. While some purchasers of Registrant’s services undoubtedly are aware of Registrant’s identity, and they would be expected to exercise at least some degree of care to ensure they are purchasing tickets to an event at the venue they desire, it is settled that even sophisticated purchasers are not immune from source confusion, especially where the marks are so similar and the services are closely related. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers … are not infallible.”)). Moreover, there is no evidence concerning the conditions under which and buyers to whom Applicant’s services are sold. Because there are no limitations in the application or cited registrations, we presume that the services identified in the application and registrations are available to all potential classes of ordinary consumers. See Citigroup, 98 USPQ2d at 1261; In re Integrated Embedded, 120 USPQ2d 1504, 1515 (TTAB 2016). When relevant consumers include both discerning purchasers and the general public, precedent requires that we base our 11 4 TTABVUE 20. Serial No. 79195994 - 15 - decision on the least sophisticated potential purchasers. Stone Lion, 110 USPQ2d at 1163. This du Pont factor is neutral. D. Conclusion We have considered all of the arguments and evidence of record, including those not specifically discussed herein, as they pertain to the relevant du Pont factors. To the extent that any other du Pont factors not discussed by Applicant may nonetheless be applicable, we treat them as neutral. We conclude that Applicant’s standard character mark APOLLO GAMES is highly similar to each of the cited registered standard character marks, APOLLO THEATER, APOLLO LIVE, APOLLO MUSIC CAFÉ, and APOLLO COMEDY CLUB. We further conclude that the services identified in the application and cited registrations are closely related and that they move through the same channels of trade to the same classes of purchasers. In addition, we find that the purchasing conditions are neutral, and do not outweigh the other factors. We therefore find that Applicant’s mark is likely to cause confusion with the cited registered marks when used in connection with the services identified in the application. Decision: The Section 2(d) refusal to register is affirmed.